717 Madison Place

Chief Judge Prost and Judges Newman, Lourie, O’Malley, Wallach, Chen, Reyna, and Hughes.

Senior Judges Schall, Bryson, Linn, and Clevenger.

Judges Dyk, Moore, Taranto, and Stoll did not have oral arguments at the Federal Circuit this month.

The Fifth Circuit heard oral argument today in State of Texas v. USA concerning the Affordable Care Act. I thought it might be of interest to some of you:

The oral argument of the day is from Performance Pricing Holdings v. Google. The arguments against the Federal Circuit’s application of Alice are getting more and more articulate. I thought this oral argument was a great example. The rebuttal argument by the appellant/patent owner’s attorney is presented below. I was particularly fond of the comparison of the Alice test to “a finger to the wind.”

You can listen to the entire oral argument here:

You can study the court’s Rule 36 Judgment here: [link].

This is probably one of those posts where I will stick my foot in my mouth for not knowing enough about the subject matter. Nevertheless, I have been listening to some recordings of oral arguments recently where constitutional challenges have been made to the award of attorneys’ fees. I believe at least two of the oral arguments focused on the winning litigant failing to sufficiently disclose attorney time records for inspection by the non-prevailing party. The appellants raised due process concerns when the respective courts failed to let each non-prevailing party inspect the time records. That caused me to wonder whether a party must appeal a constitutional issue to the Federal Circuit or whether the appeal of that issue could be lodged with the regional circuit court of appeal. It might make for an interesting article as to whether an appeal limited to constitutional issues can be brought in the regional circuit court of appeal when a patent case is involved.

One of the cases recently decided by the Federal Circuit was MAX SOUND CORPORATION v. GOOGLE LLC, No. 2018-1039 (Fed. Cir. Mar. 12, 2019). During that oral argument, Judge Moore made the following comment about due process and access to detailed billing records for the attorney’s fee issue:

You can listen to the entire oral argument here:

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

The Federal Circuit apparently felt that the appellant had waived the due process issue in this case. That makes for an interesting data point in the Federal Circuit’s Rule 36 odyssey. The Federal Circuit apparently is now quite comfortable deciding constitutional issues, like waiver of due process, by summary affirmance Rule 36 judgments.

The oral argument of the day is from In re Conrad. In this case, the inventor identified a previously unrecognized problem. The Patent Office rejected the inventor’s claim under §103 by proffering a hypothetical problem that could have caused a PHOSITA to combine references. Under the KSR v. Teleflex and In re Beattie line of cases, the Federal Circuit affirmed the rejection of the claim.

The inventor/appellant argued that there should be a weighing of the merits of the facts, taking into account the inventor’s recognition of an actual problem versus the PTO’s proffering of a hypothetical problem/solution during examination. I think that raises an interesting issue. If the PTO cannot show by evidence that its problem was previously identified in the art, should its hypothetical problem/solution outweigh the inventor’s actual identified problem/solution? Should there be a presumption in favor of the inventor when the inventor identifies a problem not previously identified in the art? Wouldn’t such a process guard against hindsight examination?

The oral argument is interesting and has a few entertaining one-liners. As the opinion notes, the government at times appeared to agree with the appellant about the appellant’s legal argument. Some questioning by Judge Chen helped to rehabilitate the government’s position at the end of the government’s presentation. Judge Moore even remarked about Judge Chen’s “rehabilitation of the witness.”

You can hear Judge Chen’s questioning here:

You can hear Judge Moore’s comment here:

You can read the court’s opinion here: [Link].

You can listen to the entire oral argument here:

In a recent oral argument, Judge Chen noted the confusion caused by the Federal Circuit’s §101 case law. He posited a hypothetical as to whether an earthquake prediction system should be patent eligible? You can listen to his hypothetical here:

Judge Moore chimed in that she hopes a case like that will make its way to the Supreme Court, as the Court might actually find something patent eligible and there would be a bookend.

I will add this sound bite to the audio key page for Judge Chen.

The topic of “when is a journal available to the public?” seems to come up from time to time. So, I thought some people might be interested in the oral argument of ABS GLOBAL, INC. v. INGURAN LLC, No. 2018-1240 (Fed. Cir. Feb. 7, 2019). This oral argument from a Rule 36 judgment addresses some of the issues involved in making that determination.

You can access the court’s Rule 36 judgment here: [link].

Believe it or not, today marks the fifth anniversary of the Supreme Court’s Alice v. CLS decision. During that time the Federal Circuit has failed rather famously to come up with a definition of what is an abstract idea. You might remember that the Supreme Court punted on that issue as well, stating:

In any event, we need not labor to delimit the precise contours of the “abstract ideas” category in this case.

Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. 2347, 2357 (2014).

Polaris has now filed its reply brief in the pending appeal of Polaris Innovations Ltd. v. Kingston Technology Co., Inc. at the Federal Circuit. You can read the reply brief here:

Earlier briefs filed in this appeal are available here:

Appellant’s Principal Brief 

USPTO’s Intervenor Brief

Kingston Response Brief

This appeal should be pretty interesting to follow. It raises several interesting questions about whether APJ’s are constitutionally appointed principal officers, as well as how broad is the authority of the Director of the USPTO with respect to the Board — master and commander or just captain of the team.

The Reply Brief cites a forthcoming article: The AIA Through a Constitutional Lens, 26 Geo. Mason U. L. Rev. (forthcoming), manuscript at 45, available athttps://ssrn.com/abstract=3105511.

It has been a few years since I last checked; but, I believe it takes about four months for a case to come up for oral argument after the completion of briefing. So, look for the oral argument to take place near the end of 2019.

I was watching to see if footnote 6 from the Supreme Court’s decision in Brenner v. Manson would make its way into one of the briefs. It does not look like it did. Footnote 6 of Brenner v. Manson makes a comment about whether the then-Commissioner of the USPTO was bound by determinations of the Board of Patent Appeals and Interferences.  The footnote reads:

[6] We find no warrant for this curious limitation either in the statutory language or in the legislative history of § 1256. Nor do we find persuasive the circumstance that the Commissioner may not appeal adverse decisions of the Board of Appeals. 35 U. S. C. §§ 141, 142, and 145 (1964 ed.). As a member of the Board and the official responsible for selecting the membership of its panels, 35 U. S. C. § 7 (1964 ed.), the Commissioner may be appropriately considered as bound by Board determinations. No such consideration operates to prevent his seeking review of adverse decisions rendered by the CCPA.

See more comments from the oral argument of Brenner v. Manson at this previous post: [link].

Should the pending patent legislation in Congress be amended to include a provision to reinstate patent applications that were lapsed by their owners due to §101 rejections? It is an interesting question. The need for legislation and public outcry over §101 makes clear that the Supreme Court and Federal Circuit made a mess of §101. Unsuspecting inventors disclosed their inventions to the public via their patent applications. Many subsequently abandoned their applications when faced with a drawn out battle over §101 issues. So, should Congress now reward those inventors by allowing their inventions to be patented? It could easily be accomplished to some extent by making an inventor show that they were facing a §101 rejection in an office action at the time the application was allowed to lapse. They would then need to complete prosecution under the new (hopefully) statute.

There’s an obvious downside to this. Others who have entered the market — particularly upon seeing a published application lapse — would be disadvantaged. I suppose the middle ground would be to make those who already had taken steps to practice a lapsed application immune from infringement.

The prospect of such a provision creates an interesting speculator’s market. All those abandoned and currently worthless applications could be snapped up with the prospect of becoming valuable if Congress were to enact such a provision.

What about patents invalidated by CBM’s or the courts for §101 reasons? After all, if they were being litigated, they were likely pretty valuable. Should there be a provision to reinstate them if they can be shown to satisfy a new patent eligibility standard and to meet the other requirements of patentability? What kind of prospective value would the invalidated patent in Ariosa v. Sequenom have at this point, for example?

Would the Director have authority to apply a new standard retroactively, if he should so choose? Historically, the USPTO seems to have had broad discretion to revive patents that missed their maintenance fee payments, for example. If I remember correctly, those decisions are not reviewable.