Weird fact of the day

January 23rd, 2017

I always enjoy listening to oral arguments that feature Judge Clevenger.  He is very smart, direct, and knows how to turn a phrase.  He often interjects a few idiomatic expressions into the oral arguments.  For example, I don’t know that he has ever said this one but it would be apropos:  Mr. Solicitor, the combination of the two references that the PTO proposed is like putting socks on a rooster.

Judge Clevenger’s exchanges with the PTO can be interesting; so, over the weekend I was trying to generate a playlist of past oral arguments.  This is where the weird fact of the day comes in.  To my surprise, there was a period between 2006 and 2008 where Judge Clevenger did not sit on any appeals arising out of the USPTO.  This is quite curious, as he did hear appeals from other cases.  At first, I suspected that he simply chose not to hear appeals from the USPTO once he took senior status in February of 2006. However, then I noticed that two other senior judges, Judges Archer and Plager, only heard one appeal each (directly from the USPTO) during that same three year interval.  A third senior judge, Judge Friedman, similarly heard only one patent appeal arising out of the USPTO, as well as one trademark appeal.  It is too bad, as it deprived the patent bar of some of the most experienced judges hearing appeals from the USPTO during that time period.

If you want to double-check my work, I used Google Scholar, the judge’s last name in combination with “solicitor” and filtered by year.  Then, it was an easy process of eliminating inapplicable hits.

Audio of Supreme Court Oral Argument in Lee v. Tam

January 20th, 2017

The audio recording from the Supreme Court oral argument in Lee v. Tam is available below. I have divided the argument into the petitioner’s opening argument, the respondent’s argument, and the petitioner’s rebuttal argument.

Petitioner’s Opening Argument:  [Listen]

Respondent’s Argument:  [Listen]

Petitioner’s Rebuttal Argument:  [Listen].

The transcript is available [here].

Madonna at the Ninth Circuit

January 20th, 2017

Here is another video of a Ninth Circuit oral argument.  The case is VMG SALSOUL, LLC v. Ciccone, 824 F.3d 871 (9th Cir. 2016). One of the issues in the case was whether Madonna Ciccone’s (aka Madonna) use of a 0.23 second horn recording from another artist’s song in Madonna’s song Vogue constituted “de minimis” use under copyright law.  In a split from the Sixth Circuit, the Ninth Circuit said that Madonna’s use was “de minimis” use. This is believed to be the first time that the Ninth Circuit has applied the “de minimis” use exception to sound recordings.  You can read the Ninth Circuit opinion [here].

Clear and Convincing Evidence Requirement for Patent Ineligibility

January 19th, 2017

In Trading Technologies v. CQG [link], the Federal Circuit panel punted on the issue of what burden of proof is required to hold a patent claim to be ineligible subject matter.  Notably, in footnote 2, the panel said:

2.  The parties dispute whether the district court erred in requiring proof of ineligibility under § 101 by clear and convincing evidence. Because our review is de novo, and because under either standard the legal requirements for patentability are satisfied, we need not address this dispute.

The district court was not shy to say what the law is.  In her district court opinion, Judge Coleman stated:

Legal Standard

At the outset, this Court acknowledges that the section 101 jurisprudence is a recently evolving and unsettled area of law as it applies particularly to software patents. There is some dispute over the level of proof required in a section 101 patent-eligibility inquiry. CQG asserts that “[a]s a matter of law, patent-eligibility is not subject to the `clear and convincing’ burden of proof.” (Dkt. 898 at 3) (quoting Microsoft Corp. v. i4i Ltd. P’ship, 131 S. Ct. 2238, 2253 (2011) (Breyer, Scalia, Alito, JJ, concurring)). TT submits that rather than a preponderance of the evidence burden of proof the appropriate standard should be “clear and convincing.” (Dkt. 962 at 11) (quoting Card Verification Solutions, LLC v. Citigroup Inc., 2014 WL 4922524, at *5 (N.D. Ill. Sept. 29, 2014)).

This Court recognizes the persuasiveness of Justice Breyer’s reasoning that because the section 101 eligibility inquiry is purely a question of law and there is no statutory presumption of eligibility, it should not be subject to the clear and convincing burden of proof. However, 35 U.S.C. § 282 provides that patents are presumed valid and it is well established that a party seeking to overcome that presumption must do so by clear and convincing evidence. See Nystrom v. Trex Co., 424 F.3d 1136, 1149 (Fed. Cir. 2005). This Court is “duty-bound to apply the law as enacted by Congress and signed by the President, and in light of the Federal Circuit’s interpretation thereof. Defendants have not presented any authority indicating that the presumption of validity no longer applies to challenges to a patent’s validity under section 101.” CertusView Techs., LLC v. S&N Locating Servs., LLC, 2015 U.S. Dist. LEXIS 7126, *42 n.6, Slip Copy, 2015 WL 269427 (E.D. Va. Jan. 21, 2015). Accordingly, this Court concludes that, until the Federal Circuit or the United Supreme Court mandates otherwise, CQG must show by clear and convincing evidence that the patents-in-suit claim patent-ineligible subject matter.

Ten Law Professors’ Brief in Trading Technologies v. CQG

January 19th, 2017

The Federal Circuit issued another decision affirming patent eligibility yesterday in Trading Technologies v. CQG.  I was curious what the amicus brief (Ten Law Professors’ Brief) said; so, I downloaded it from PACER.  It is available [here].

Business method examples added to USPTO Patent Eligibility Page

January 18th, 2017

The USPTO added some business method examples to its patent eligibility page in mid-December.  The new examples are available at this [link].

Cameras in the courtroom

January 16th, 2017

Here is a link to the SCOTUSblog discussing a bill that would compel the Supreme Court to televise its court proceedings: [Link].

I believe the Ninth Circuit is the only circuit court to provide video recordings of some of its proceedings, as well as live streams. It has been doing so for several years now.  In contrast, the Second Circuit just started adding audio recordings of its oral arguments to its website this past August.

Oral Argument This Week in Lee v. Tam

January 15th, 2017

The Supreme Court will hear oral argument in Lee* v. Tam on January 18, 2017.  The question presented is:

Whether the disparagement provision of the Lanham Act, 15 U.S.C. 1052(a), which provides that no trademark shall be refused registration on account of its nature unless, inter alia, it “[c]onsists of . . . matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute” is facially invalid under the Free Speech Clause of the First Amendment.

If Director Lee decides to leave the USPTO before the decision issues, I suspect the decision will issue under a different caption.

Upcoming En Banc Argument

January 13th, 2017

The Federal Circuit will be sitting en banc in a non-patent case on February 7, 2017.  In Parkinson v. DOJ, the Federal Circuit will consider the following issue:

Whether a preference eligible employee of the Federal Bureau of Investigation challenging an adverse employment action before the Merit Systems Protection Board under 5 U.S.C. § 7513(d) may raise whistleblower reprisal in violation of 5 U.S.C. § 2303 as an affirmative defense under 5 U.S.C. § 7701(c)(2)(C).

The date for oral argument in WI-FI ONE, LLC v. BROADCOM CORPORATION has not yet been set.  The Federal Circuit has phrased the issue in that en banc case as:

Should this court overrule Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015) and hold that judicial review is available for a patent owner to challenge the PTO’s determination that the petitioner satisfied the timeliness requirement of 35 U.S.C. § 315(b) governing the filing of petitions for inter partes review?

Ninth Circuit Oral Argument in App Store Antitrust Litigation

January 12th, 2017

There was a decision from the Ninth Circuit today that deals with an antitrust suit brought against Apple with respect to the Apple App Store.  You can review the decision here: [Link].  You can review the oral argument below: