The Federal Circuit is Coming, The Federal Circuit is Coming . . . .

August 1st, 2015

The Federal Circuit will be sitting in Boston this October.  From the Federal Circuit website:


BOSTON, OCT 6-8, 2015

Pursuant to 28 U.S.C. § 48, six panels of the Federal Circuit Court of Appeals will hear oral arguments in Boston, Massachusetts, on October 6 through 8, 2015. In accordance with routine practice, the names of the panel judges will not be released prior to the morning of scheduled arguments.

The schedule and location of the panels is as follows:


Panel A: 10 a.m. John J. Moakley U.S. Courthouse
Panel B: 2:30 p.m. Boston College School of Law


Panel C: 10 a.m. Boston Univ. School of Law
Panel D: 10 a.m. Northeastern Univ. School of Law


Panel E: 10 a.m. Suffolk Law School
Panel F: 2 p.m. Harvard Law School

Webcast on Anticipating Future Challenges on Chinese IP

July 20th, 2015

Mark Cohen of the USPTO will be presenting a webcast from the Denver PTO this Friday titled “Anticipating Future Challenges on Chinese IP, Why Being Up-to-Date is Not Enough.”  I understand from a colleague that Mr. Cohen is an extremely accomplished individual with respect to China.  The webcast information is shown below:

Topic: Mark Cohen Challenges on Chinese IP
Host: Digital Multimedia5
Date and Time:
Friday, July 24, 2015 4:00 pm, Eastern Daylight Time (New York, GMT-04:00)
Event number: 642 259 613
Event password: 12345

Event address for attendees:

To join the audio conference only
1. Provide your number when you join the event to receive a call back. Alternatively, you can call one of the following numbers:
Dial In: 1-571-270-7000
2. Follow the instructions that you hear on the phone.
Your Cisco Unified MeetingPlace meeting ID: 642 259 613

The Circuit Court Appointment Process, Post Senate Confirmation

July 9th, 2015

The Congressional Research Service explains the appointment process for circuit court nominees, after Senate confirmation, as follows [Link]:

After Confirmation of a Nomination Reconsideration

Senate Rule XXXI provides that, after the Senate has confirmed a nomination, any Senator who voted with the majority has the option of moving to reconsider the vote. Only one motion to reconsider is in order on the nomination, and it must be made on the day of the vote or on one of the next two days the Senate meets in executive session. Typically, however, the Senate, before the vote on confirmation has occurred, preempts the motion to reconsider, arranging beforehand by unanimous consent for it to be considered tabled in the event the nomination is confirmed. It is typical, for example, for the Senate, in a unanimous consent time agreement for a confirmation vote on a circuit or district court nomination, to include the provision that, after the vote, “the motion to reconsider be considered made and laid upon the table.” Similarly, UC agreements concerning upcoming cloture votes on nominations often provide for the tabling of the motion to reconsider in the event cloture is invoked and the nominee then confirmed. In either case, tabling the motion prevents any subsequent attempt to reconsider.152

Resolution of Confirmation

With the motion to reconsider tabled, the Secretary of the Senate attests to a resolution of confirmation and transmits it to the White House. (In the rare instance of the Senate voting against confirmation, the Secretary will transmit to the President a resolution of disapproval.) Senate Rule XXXI requires that the Secretary wait until the time for moving to reconsider has expired before notifying the President that a nomination has been confirmed. Such notice, however, in practice “is usually sent immediately, permitted by unanimous consent.”153

Post-Senate Appointment Steps President Signs Commission154

Upon notification of a nominee’s confirmation, the President performs the next step in the appointment process—the signing of the nominee’s commission. The commission is a formal document empowering the nominee to assume the judicial office, which the President must sign before the nominee may begin his or her new duties. The date of a nominee’s commission is the date the President signs it, which usually occurs within a few days of Senate confirmation (but can also occur on the same date as the confirmation itself). The commission is transmitted to the Department of Justice, which then sends it, as well as a packet of other documents, to the nominee.

Oath of Office

The appointment commission packet sent by the Department of Justice includes various forms to accompany the statutory oath of office, which each circuit and district judge must take before exercising the judicial authority of the United States. The oath of office is orally administered by someone legally authorized by state or federal law to administer oaths, including the chief judge or another judge on the court to which the nominee is assuming his or her position. Additionally, in some cases, the home state Senator of a nominee has administered the oath of office. The oath is a combination of the judicial oath of office required of every Justice and judge of the United States under 28 U.S.C. 453 and the general oath administered to all federal government officials, set forth in 5 U.S.C. 3331.155

At the time the oath of office is executed, the nominee himself or herself must also sign and date the commission. If two or more confirmed nominees to the same court sign their commissions on the same date, seniority is determined by seniority of age of the nominees. If, for example, Judges A and B both sign on the same date and Judge A is older than Judge B, then Judge A is considered more senior than Judge B.156

This process—receipt of the packet from the Department of Justice, administering the oath of office to the nominee, including obtaining his or her signature on the commission—typically occurs within a week or two of Senate confirmation. In some cases, however, a nominee might wait longer, for professional reasons, to take the oath and sign his or her commission. For example, a law professor who is confirmed as a U.S. district court judge might wait to sign her commission until after she has finished teaching for the semester.


Typically, the last step in the appointment process is the investiture. At this ceremonial event, attended by family and friends, the new judge is sworn in yet again, in the courtroom. The ceremony, however, is not required for the nominee to assume office and can take place weeks or months after the oath of office is executed.

Kara Stoll Confirmed by US Senate

July 7th, 2015


According to C-Span (Link), Kara Stoll was confirmed today by the US Senate to be the newest member of the United States Court of Appeals for the Federal Circuit.  Ninety-five members of the Senate voted “yea” and five did not vote.

Colorado’s New Anti-Patent Troll Law

June 27th, 2015

If you were curious about Colorado’s new anti-patent troll law, the details are at this [Link].

Avoiding Recusal?

June 16th, 2015

Whenever there is a rash of Rule 36 decisions, it seems as though an unanticipated en banc decision is soon to follow.  Lately, the Federal Circuit has issued what seems like a large number of Rule 36 decisions — and, sure enough, today it issued an en banc decision in Williamson v. Citrix.

The cynic in me wonders if the reason that the court takes some cases en banc without oral argument is to avoid the opportunity for further amicus briefing that could cause recusal of some of its members.  Both judges O’Malley and Moore are at risk of being gamed out of en banc decisions when their respective husbands’ firms are enlisted to submit amicus briefs.  Once judicial candidate Stoll is confirmed by the Senate, a third judge will be at risk of recusal during en banc cases due to at least one close relative practicing in the patent field.

Perhaps the Federal Circuit should consider an internal rule to address this issue.

Chief Judge Prost Refers to New Practice as “A little troubling”

June 10th, 2015

During the recent oral argument of In re Gross, Chief Judge Prost asked the associate solicitor about the Solicitor’s Office relatively new practice of adding a discussion of Alice v. CLS to appeals in which §101 was not addressed below by the PTAB.  The associate solicitor noted that the discussion of Alice in this appeal was just being made to let the court  know that the “[PTO] was familiar with the Alice issue”….?  In addition to flagging the issue at the start of the PTO’s oral argument, Chief Judge Prost noted that the new practice was “a little troubling.”  [Listen].

From what I could tell, Chief Judge Prost finds the practice a little troubling at least because the appellant only has an opportunity to respond to the §101 issue for the first time in the appellant’s reply brief.

I suppose there are other issues to consider as well.  As a general rule, new issues are not supposed to be raised on appeal.  Typically, it is the appellant that has a tendency to raise new issues.  In this instance, it was the PTO in the role of appellee that raised a new issue not addressed below.  There might be an exception for this case, however, because the Supreme Court decided Alice after the PTAB rendered its decision.

In addition, the Federal Circuit has noted that while 35 U.S.C. §101 is an issue of law, it can be informed by underlying or subsidiary factual issues.  See Arrhythmia Research Technology v. Corazonix Corp., 958 F.2d 1053 (Fed. Cir. 1992) and In re Comiskey, 499 F.3d 1365, 1373 (Fed. Cir. 2007). So, raising the issue on appeal does not give the applicant any opportunity to present factual evidence with respect to those underlying or subsidiary factual issues.

The practice might be a little troubling to the PTAB and public, as well.  The determination of patent eligibility by the PTO is really the province of the PTAB judges — more specifically it is the province of a majority of judges on at least a three judge panel.  Each judge is required to meet specific qualifications (both legal and technical) and be sworn into office before making adjudications.  When the Solicitor’s Office, i.e., the advocacy branch as opposed to the judicial branch of the PTO,  asserts on behalf of the PTO for the first time that “Gross’ Claimed Invention Is Ineligible For Patent Protection Under The Supreme Court’s Recent Decision In Alice Corp. v. CLS Bank” — see page twenty-five of the USPTO brief – it appears to be invading the province of the PTAB.

You can’t fault the Solicitor’s Office for being zealous advocates.  But, perhaps the CAFC will have more to say about this new practice in the future.


As an aside, it is interesting to compare the Federal Circuit’s In re Comiskey opinion — in which the Federal Circuit sua sponte raised a §101 theory — with the Supreme Court’s opinions in Singleton v. Wulff, 428 U.S. 106, 120 (1976) and Hormel v. Helvering, 312 U.S. 552, 556-57 (1941):

It is the general rule, of course, that a federal appellate court does not consider an issue not passed upon below. In Hormel v. Helvering, 312 U. S. 552, 556 (1941),the Court explained that this is “essential in order that parties may have the opportunity to offer all the evidence they believe relevant to the issues . . . [and] in order that litigants may not be surprised on appeal by final decision there of issues upon which they have had no opportunity to introduce evidence.” We have no idea what evidence, if any, petitioner would, or could, offer in defense of this statute, but this is only because petitioner has had no opportunity to proffer such evidence. Moreover, even assuming that there is no such evidence, petitioner should have the opportunity to present whatever legal arguments he may have in defense of the statute. We think he was justified in not presenting those arguments to the Court of Appeals, and in assuming, rather, that he would at least be allowed to answer the complaint, should the Court of Appeals reinstate it.

Singleton v. Wulff, 428 U.S. 106, 120 (1976);

Ordinarily an appellate court does not give consideration to issues not raised below. For our procedural scheme contemplates that parties shall come to issue in the trial forum vested with authority to determine questions of fact. This is essential in order that parties may have the opportunity to offer all the evidence they believe relevant to the issues which the trial tribunal is alone competent to decide; it is equally essential in order that litigants may not be surprised on appeal by final decision there of issues upon which they have had no opportunity to introduce evidence. And the basic reasons which support this general principle applicable to trial courts make it equally desirable that parties should have an opportunity to offer evidence on the general issues involved in the less formal proceedings before administrative agencies entrusted with the responsibility of fact finding. Recognition of this general principle has caused this Court to say on a number of occasions that the reviewing court should pass by, without decision, questions which were not urged before the Board of Tax Appeals. But those cases do not announce an inflexible practice as indeed they could not without 557*557 doing violence to the statutes which give to Circuit Courts of Appeals reviewing decisions of the Board of Tax Appeals the power to modify, reverse or remand decisions not in accordance with law “as justice may require.” There may always be exceptional cases or particular circumstances which will prompt a reviewing or appellate court, where injustice might otherwise result, to consider questions of law which were neither pressed nor passed upon by the court or administrative agency below. See Blair v. Oesterlein Machine Co., 275 U.S. 220, 225.

Hormel v. Helvering, 312 U.S. 552, 556-57 (1941).

Don’t Miss It

June 3rd, 2015

Michael Risch over at the Written Description blog has an interesting post today titled “Do Venture Capitalists Value Patents?” which covers Celia Lerman’s article “Patent Strategies of Technology Startups: An Empirical Study.”  [Link]

Recording Telephone Conversations

May 30th, 2015

During a recent oral argument, Judge Wallach asked counsel about a recording that had been made of a telephone call  without the other side’s consent. Apparently, the telephone call was presented as evidence at trial.  As you may know, states take different positions on whether notice must be given to the other party of a telephone conversation when a recording is being made. Thirty-eight states are single-party-consent states, whereas twelve states are two-party-consent states.  Judge Wallach emphasized that regardless of whether a state is a lenient single-party-consent state, that state’s bar opinions might take a stronger position.  In such an instance, the state bar opinions trump the criminal statute for purposes of controlling conduct of lawyers within the state.

Here’s a link to a presentation on Colorado law that illustrates the issue in more detail:  [Link].

USPTO Updates Patent Eligibility Guidance Web Page

May 23rd, 2015

The PTO has updated its Patent Eligibility Guidance page with Abstract Idea Workshop Materials for use with the previously published Abstract Idea Examples.  Also provided is the USPTO’s case law summary.  What appears below is from the PTO website [Link].