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Several news agencies reporting on the petitions for writ of certiorari concerning the DACA program have noted that the Supreme Court has presumably finalized its docket of cases that it will hear this term. So, it appears that no additional patent cases will be added to the Court’s docket this term.

The In re Kollman oral argument from October is an interesting analogous arts appeal. There is an extensive discussion about the appropriate procedure for selecting a reference that is not from the inventor’s field of endeavor — i.e., prong 2 of the two prong test for analogous art. In the Federal Circuit case of In re Klein, 647 F.3d 1343 (Fed. Cir. 2011), the court stated that “[a] reference qualifies as prior art for an obviousness determination under §103 only when it is analogous to the claimed invention. . . . Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed; and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.”

The oral argument is also quite interesting for Judge O’Malley’s comments to the Solicitor’s Office that asking the court to rely upon a new rationale for rejecting a claim — when that rationale was not relied upon by the PTAB judges — presents a Chenery problem in view of the Administrative Procedure Act.

You can listen to the oral argument of In re Kollman below. After listening to the oral argument, I was quite surprised that the court issued a Rule 36 judgment.

The court’s Rule 36 Judgment is available [here].

It seems like some examiners and judges are afflicted by “Electric-Power-of-the-brain,” where they apply the Electric Power case in an overly broad manner.

I was pleased to hear Judge Stoll’s remarks about Electric Power in the oral argument of Gaelco, S.A. v. Arachnid 360, LLC. During the oral argument she remarked:

It seems to me that you’re arguing that Electric Power stands for the proposition that anytime there is collecting, analyzing, and displaying data that it’s abstract. I don’t think that’s what Electric Power stands for. Is that what you’re arguing?

You can listen to the entire oral argument here:

In celebration of the many works finally coming off copyright protection, I thought I’d publish one of those works — Robert Frost’s The Road Not Taken. I feel a little bit odd publishing this; but, isn’t this the way that our IP system is supposed to work? Rather than denying inventors, authors, artists, etc. rights to their creations, they are granted an exclusive right for a limited period of time. After that time period lapses, the public then has the right to enjoy the creation.

Unfortunately, the patent system, through all of its §101 shenanigans, seems to have lost sight of that bargain.

by Robert Frost

Two roads diverged in a yellow wood,
And sorry I could not travel both
And be one traveler, long I stood
And looked down one as far as I could
To where it bent in the undergrowth;

Then took the other, as just as fair,
And having perhaps the better claim,
Because it was grassy and wanted wear;
Though as for that the passing there
Had worn them really about the same,

And both that morning equally lay
In leaves no step had trodden black.
Oh, I kept the first for another day!
Yet knowing how way leads on to way,
I doubted if I should ever come back.

I shall be telling this with a sigh
Somewhere ages and ages hence:
Two roads diverged in a wood, and I—
I took the one less traveled by,
And that has made all the difference.

The USPTO has petitioned for Supreme Court review of the Federal Circuit’s en banc decision in Iancu v. Nantkwest, Inc.

The question presented is:

Whether the phrase “[a]ll the expenses of the proceedings” in 35 U.S.C. 145 encompasses the personnel expenses the USPTO incurs when its employees, including attorneys, defend the agency in Section 145 litigation.

You can review the petition for certiorari [here].

Whether a claim is directed to statutory subject matter is a question of law. Although determination of this question may require findings of underlying facts specific to the particular subject matter and its mode of claiming . . . .

Arrhythmia Research Technology v. Corazonix Corp., 958 F.2d 1053 (Fed. Cir. 1992).

It is well-established that “whether the asserted claims … are invalid for failure to claim statutory subject matter under 35 U.S.C. § 101, is a question of law which we review without deference.” AT & T Corp. v. Excel Commc’ns, Inc.,172 F.3d 1352, 1355 (Fed.Cir.1999). As a question of law, lack of statutory subject matter is a “ground [for affirmance] within the power of the appellate court to formulate.” Chenery, 318 U.S. at 88, 63 S.Ct. 454. While there may be cases in which the legal question as to patentable subject matter may turn on subsidiary factual issues, Comiskey has not identified any relevant fact issues that must be resolved in order to address the patentability of the subject matter of Comiskey’s application. Moreover, since we would review a Board decision on the issue of patentability without deference, see AT & T, 172 F.3d at 1355, the legal issue concerning patentability is not “a determination of policy or judgment which the agency alone is authorized to make.” Chenery, 318 U.S. at 88, 63 S.Ct. 454.

In re Comiskey, 554 F.3d 967 (Fed. Cir. 2009)(Judge Dyk writing for the court).

2. Claims Directed To

Claim 1 of the ’576 patent is focused on a specific asserted improvement in computer animation, i.e., the automatic use of rules of a particular type. We disagree with Defendants’ arguments that the claims simply use a computer as a tool to automate conventional activity. While the rules are embodied in computer software that is processed by general-purpose computers, Defendants provided no evidence that the process previously used by animators is the same as the process required by the claims.

McRO v. Bandai, 837 F.3d 1299, 1314 (Fed. Cir. 2016)(emphasis added).

The section 101 analysis applied by the PTAB was not legally erroneous under Mayo and Alice. And its underlying fact findings and credibility determinations are supported by substantial evidence in the record. See Microsoft Corp. v. Proxyconn, Inc., Nos. 14-1542, -1543, 789 F.3d 1292, 1297, 2015 WL 3747257, at *2 (Fed.Cir. June 16, 2015)(noting that as a general matter, we review the PTAB’s findings of fact for substantial supporting evidence in the record).

Versata Dev. Group, Inc. v. SAP America, Inc. (“Versata II”), 793 F.3d 1306, 1336 (2015).

In other news, Judge Mayer penned a concurring opinion today in IN RE: MARCO GULDENAAR HOLDING B.V. arguing that that the court’s precedent has established that patent eligibility is a pure question of law. The best argument the concurring opinion appears to muster is the open-ended statement from OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015) that: “Patent eligibility under 35 U.S.C. § 101 is an issue of law reviewed de novo.” How one arrives at “pure question of law” from “an issue of law” is unclear. Neither Arrhythmia nor Comiskey were mentioned in the concurring opinion. Judges Chen and Bryson did not join Judge Mayer’s concurring opinion.

If you are heading out to Colorado for the CLE and SKI! in Snowmass next week, you might find yourself dining at Gwyn’s High Alpine Restaurant while hitting the slopes. The Gwyn’s High Alpine Restaurant trademark application was the subject of a recent Federal Circuit oral argument. The oral argument is a good example of how the Federal Circuit will sometimes ask friendly questions.

You can listen to the oral argument here:

You can read the court’s Rule 36 judgment [here].

More about Gwyn’s restaurant: [ Link ].

An interesting article from the Smithsonian on copyrighted works finally entering the public domain: For the First Time in More Than 20 Years, Copyrighted Works Will Enter the Public Domain.

The SCOTUS blog ran an interesting article last week titled:  “Empirical SCOTUS: The heightened importance of the Federal Circuit.”  

You can read the article [here].

Apparently, Judge Newman is the author of the most dissents from Federal Circuit opinions that were later reversed by the Supreme Court.  

The Federal Circuit sat en banc last Friday in Procopio v. Wilkie.  Like others before it, this en banc oral argument was interesting — even though it was not a patent case. The case dealt with statutory interpretation — particularly whether the statute in dispute conferred benefits on “blue water” navy veterans who possibly suffered from exposure to herbicides like Agent Orange during their service in the Republic of Vietnam. [Link]. For more background on the case with links to the briefs, see this [link].

Some of the issues discussed were: what is the difference between off-shore waters, waters adjacent, waters off-shore, and territorial seas; what is the definition of the Republic of Vietnam; what weight should the court give to dictionaries and atlases when interpreting terms in a statute; sovereignty; how should definitions from the international court of justice be used in interpreting a statute; the Supreme Court’s decision in SAS; Chevron deference; the sovereign boundary of Purpleland; and others.

What really caught my ear was the discussion of the “pro-veteran canon of construction.”  There are certain “pro” canons that have developed through jurisprudence, such as pro-veteran, pro-elderly, pro-Indian, etc. Given the venerable position that inventors/entrepreneurs occupy in American society, I was trying to think if there is anything akin to the pro-veteran canon of construction in patent law.  I suppose to some extent the doctrine of equivalents benefits inventors.  But, I think of that as an equitable doctrine rather than a canon of statutory construction.  Is there any place for a pro-inventor canon of construction when applying exceptions to 35 U.S.C. §101? To the AIA? To the AIPA, i.e., the American Inventors Protection Act?

Judge Hughes did not take part in the decision to grant en banc review and I did not hear him during the oral argument; so, it appears that he has recused himself from this case.  You might recall that Judge Hughes has an extensive background in prior Agent Orange cases, arguing for the DOJ and the Veteran’s Administration.  In his Senate questionnaire he listed Haas v. Peake, 525 F.3d 1168 (Fed. Cir. 2008) as his most significant case during his DOJ career prior to joining the court.  He was awarded a commendation for his handling of that case which “resulted in several billions of dollars in monetary savings.” [Link].  It would seem this case puts that decision in its cross-hairs.

You might get a chuckle over Judge Newman’s phrase:  “take your judicial hands off this statute and leave it to the agency” — around the 56:00+ mark.  I’m not sure if she was using a Charlton Heston accent or not.

There were lots of questions about past and pending attempts at legislation and epidemiological studies — it was unclear if those questions were directed at record evidence.

Update 12/18/17:

I thought it might be of interest to include below the link to the oral argument from Haas v. Peake, 525 F.3d 1168 (Fed. Cir. 2008).  There are at least two benefits to this.  First, it is interesting to hear then-attorney, now-Judge, Hughes argue the case.  Second, it is always a treat to listen to Chief Judge Michel (retired) at an oral argument.