Alice — Five years on

June 19th, 2019

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).

Reply brief filed in Polaris v. Kingston — are APJ’s unconstitutionally appointed principal officers?

June 12th, 2019

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 at

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].

Revival of patent applications lapsed due to §101?

June 10th, 2019

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.

Patent inspired horse names

May 4th, 2019

With the running of the Kentucky Derby today, my mind wandered to prospective horse names inspired by patent law. Here are some candidates:

  1. Patent Ineligible
  2. Inequitable Conduct
  3. E-stoppel-able
  4. Treble Damages
  5. Frustoconical
  6. Rule 36’d
  7. Unclean Hands
  8. Terminal Disclaimer
  9. Comprising
  10. Affirmed (wait, that one might be taken)
  11. You Got Mayer’d
  12. Rebuttal
  13. Contributory Infringement
  14. Please Release Your Time
  15. Certiorari
  16. Sua Sponte
  17. Charming Betsy
  18. The Argument is Moot
  19. I’ll Be Brief
  20. WIPO!

Audio of Supreme Court oral argument in Iancu v. Brunetti

April 20th, 2019

The Supreme Court has released the audio recording of the oral argument in Iancu v. Brunetti — the case that addresses whether the USPTO must register scandalous marks.

The recording of the oral argument is available here:

The transcript of the oral argument is available here: [Transcript].

Kingston files brief in Polaris v. Kingston and addresses the role of PTAB judges

April 17th, 2019

Kingston filed its brief this week in the Polaris v. Kingston case pending at the Federal Circuit. The brief had some sort of informality and has not been accepted yet by the court; but, I thought it was worth posting anyway. You can review the brief here:

As I mentioned before, it will be interesting to follow this case. Kingston’s brief not surprisingly agrees with the DOJ’s brief that PTAB judges are inferior officers under the control of the Director. Therefore, the argument goes that they do not need to be appointed by the President and confirmed by the Senate, in contrast to Polaris’ position.

I thought it was interesting that the brief mentions that the Director currently sits on some IPR panels:

Indeed, the Director currently sits on a number of active IPR panels. See, e.g.Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, -00063, -00064, -00065, -00074, -00084; HTC Corp. et al v. Elec. Scripting Prods., Inc., IPR2018-01031; -01032; Lite-On Tech. Corp. v. Darfon Elecs. Corp., IPR2018-01062.

Pending case of note: Polaris v. Kingston

April 10th, 2019

There is an interesting case wending its way through the briefing process at the Federal Circuit, Polaris v. Kingston. In its opening brief Polaris asserts that APJ’s cannot extinguish patent rights via an IPR because they have not been appointed by the President and confirmed by the Senate.

The USPTO has intervened in the case. In its brief filed last week, the USPTO asserts that APJ’s are “Inferior Officers whose appointment Congress permissibly vested in the Secretary of Commerce.”

It sounds as if this will be an interesting case to follow.

Polaris’ opening brief is available here:

The USPTO’s intervenor brief is available here:

Blue or otherwise Yellow

April 3rd, 2019

The oral argument of the day comes from BLACKBIRD TECH LLC v. LULULEMON ATHLETICA, INC., No. 2017-2350 (Fed. Cir. Sept. 6, 2018). One of the issues on appeal was how the following statement in the specification should be interpreted:

“Typically the sports bra will be constructed of two or more plies of material sewn or otherwise laminated together to provide sufficient tensile strength”

Should it be interpreted as the patent drafter being a lexicographer and redefining “laminated” to include “sewn”? The oral argument suggests that Judges Dyk, Wallach, and Hughes did not agree that such a statement was enough to make “sewn” a species of the genus “laminated.” However, the Rule 36 Judgment is rather brief on that topic.

There is an interesting similarity in the Blackbird language to the language that was in dispute in the Helsinn v. Teva case:

“invention [that] was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention”

and whether the use of “otherwise” put a gloss on the “on sale” language.

You can listen to the oral argument here:

Prime Minister’s Questions

April 2nd, 2019

If you enjoy listening to the point-counterpoint exchange during oral arguments, you might also enjoy watching the debates that take place on the floor of Britain’s Parliament each week. Each Wednesday, the Prime Minister fields questions from Parliament. The sessions tend to be rather raucous. Here’s the most recent one:

You can see previous sessions at this [link].

Using dependent claims to emphasize that an alleged claim term is structural and not MPF

March 29th, 2019

I think a lot of practitioners will take note of Chief Judge Prost’s precedential opinion for the court today in TEK Global, S.R.L., et al. v. Sealant Systems Int’l. Inc., et al. In assessing whether a phrase invoked 112¶6/112¶(f), Chief Judge Prost looked to the dependent claims to see if they indicated that the purported means plus function phrase was structural:

Even more, the dependent claims suggest that § 112, ¶ 6 does not govern. Indeed, they “add limitations that either describe particular structural features or flesh out whether the term has a particular structural meaning.”Diebold, 899 F.3d at 1298. For example, dependent claim 27 recites “at least one of said conduits . . . comprises a hose.” ’110 patent col. 8 ll. 12–14. And SSI does not dispute that the “hose” disclosed in the ’110 patent is structural.

You can read Chief Judge Prost’s precedential opinion for the court [here].

You can read the referenced Diebold Nixdorf v. ITC opinion [here].

The PTO might want to take note that its recent guidance entitled “Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. 112” does not mention the Diebold case from August 2018 nor the use of dependent claims to analyze purported MPF terms. A discussion of Diebold and TEK Global would be a useful addition to the recent guidance.