Warning: include(wp-includes/class-wp-query-update.php) [function.include]: failed to open stream: No such file or directory in /home/content/47/4534047/html/wp-settings.php on line 473

Warning: include() [function.include]: Failed opening 'wp-includes/class-wp-query-update.php' for inclusion (include_path='.:/usr/local/php5/lib/php') in /home/content/47/4534047/html/wp-settings.php on line 473

Warning: include(wp-includes/class-wp-term-connect.php) [function.include]: failed to open stream: No such file or directory in /home/content/47/4534047/html/wp-config.php on line 80

Warning: include() [function.include]: Failed opening 'wp-includes/class-wp-term-connect.php' for inclusion (include_path='.:/usr/local/php5/lib/php') in /home/content/47/4534047/html/wp-config.php on line 80
717 Madison Place

Patent Eligibility Guidance Update: Vanda memorandum

June 18th, 2018

The USPTO has posted its memorandum to the examining corps following the Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals decision.  The memorandum is available [here].

The Federal Circuit decision is available [here].

The oral argument at the Federal Circuit is available below:

Oral Argument of the Month: St. Regis Mohawk Tribe v. Mylan Pharmaceuticals

June 11th, 2018

The Federal Circuit heard oral argument in St. Regis Mohawk Tribe v. Mylan Pharmaceuticals last week.  The oral argument focuses on whether tribal sovereign immunity applies to IPR proceedings.  The panel consists of Judges Dyk, Moore, and Reyna. You can listen to the oral argument here:

I will add some sound bites in the future, if time permits.


June 7th, 2018

In the last few weeks, the Federal Circuit has been publishing opinions via its web site that include a date that follows the case name.  You can see some examples below:

The dates tend to be one or two working days before the opinions are released to the public.  So, they are not actually the date of the opinions.  The Federal Circuit has not published any explanation on its web site for this new procedure.  My best guess is that perhaps it reflects the date that the opinions are submitted to the clerk’s office.  And, perhaps the dates are intended to be one mode of precedential tie-breaker, if two opinions are released officially on the same day but with opposing viewpoints on an issue.  See Patently-O, “Priority of Precedent: When Same-Day Federal Circuit Opinions are in Tension” [Link].

Update June 19, 2018:

Curiously, the Federal Circuit is now publishing the list of cases without dates.  And, the court has removed the dates that were previously listed.  So, we are back to the old system.

Video of Judge O’Malley sitting by designation with the 9th Circuit

June 5th, 2018

Judge O’Malley also sat by designation with the 9th Circuit in 2017.  You can watch a video of one of the oral arguments below (Altera v. CIR).  From what I could glean, the case deals with taxation issues concerning cost sharing arrangements for the development of intangible property.


Video of Judge Linn Sitting by Designation with the Ninth Circuit

May 31st, 2018

Judge Linn of the Federal Circuit has a lot fans throughout the country from his work with the American Inns of Court, as well as the sound judicial reasoning in his opinions for the court.  He sat by designation with the Ninth Circuit back in November in the following cases:

The video below is from the oral argument in one of those cases — a copyright case, ABS Entertainment, Inc. v. CBS Corp.:


Director Andrei Iancu’s testimony before the House Judiciary Committee on 5/22/18

May 22nd, 2018


Director Iancu’s written statement is available [here].

USPTO Webinar on Revised Guidance in View of Berkheimer

May 16th, 2018

If you missed last week’s USPTO webinar on the revised guidance in view of Berkheimer v. HP, the video  recording of the webinar is available below:


The slides are available here: [Link].

Quote of the Day

May 15th, 2018

The machine-or-transformation test may well provide a sufficient basis for evaluating processes similar to those in the Industrial Age—for example, inventions grounded in a physical or other tangible form. But there are reasons to doubt whether the test should be the sole criterion for determining the patentability of inventions in the Information Age. As numerous amicus briefs argue, the machine-or-transformation test would create uncertainty as to the patentability of software, advanced diagnostic medicine techniques, and inventions based on linear programming, data compression, and the manipulation of digital signals. See, e.g., Brief for Business Software Alliance 24-25; Brief for Biotechnology Industry Organization et al. 14-27; Brief for Boston Patent Law Association 8-15; Brief for Houston Intellectual Property Law Association 17-22; Brief for Dolby Labs., Inc., et al. 9-10.

In the course of applying the machine-or-transformation test to emerging technologies, courts may pose questions of such intricacy and refinement that they risk obscuring the larger object of securing patents for valuable inventions without transgressing the public domain. The dissent by Judge Rader refers to some of these difficulties. 545 F.3d, at 1015. As a result, in deciding whether previously unforeseen inventions qualify as patentable 3228*3228 “process[es],” it may not make sense to require courts to confine themselves to asking the questions posed by the machine-or-transformation test. Section 101’s terms suggest that new technologies may call for new inquiries. See Benson, supra, at 71, 93 S.Ct. 253 (to “freeze process patents to old technologies, leaving no room for the revelations of the new, onrushing technology[,] . . . is not our purpose”).

Bilski v. Kappos, 130 S. Ct. 3218, 3227-28 (2010)(Justice Kennedy writing for himself, Chief Justice Roberts, and Justices Thomas and Alito).

Oil States and SAS Institute recap

May 7th, 2018

The SCOTUSblog discussed the recent Oil States and SAS Institute decisions in a recent podcast.  You can access the podcast here: Link.

Oral argument of the day: Dialware Communications, LLC v. Hasbro, Inc.

May 7th, 2018

The oral argument of the day comes from Dialware Communications, LLC v. Hasbro, Inc.  This is yet another patent eligibility case.  From the oral argument, it appears that the claims were for toys that respond to sounds made by other toys — for example, use of the doppler effect to determine if another toy is moving toward the sound-receiving toy.

Despite the Rule 36 affirmance that all 250+ claims are patent ineligible based on a single representative claim, one argument theme that appears to be getting some traction these days is the theme of “over-reductionism.”  Over-reductionism was an issue raised by Judge Hughes in the oral argument of Dialware as well as Judge Linn in the oral argument of Finjan.

After listening to Judge Hughes’ questions raised during the oral argument, you might find yourself curious as to how the Federal Circuit reached its decision in its de novo review of the patent ineligibility determination.  Unfortunately, the Rule 36 Judgment will not fill the void for you.

The oral argument is available here:


The Rule 36 Judgment is available [here].