Archive for the ‘Uncategorized’ Category

Judge William Bryson — Foreign Intelligence Surveillance Court of Review

Wednesday, March 29th, 2017

It is interesting to note that Senior Judge Bryson of the Federal Circuit is the presiding judge of the three-judge “Foreign Intelligence Surveillance Court of Review” which hears appeals from the “Foreign Intelligence Surveillance Court.”

The Foreign Intelligence Surveillance Court was established by Congress in 1978.  The Court entertains applications made by the United States Government for approval of electronic surveillance, physical search, and certain other forms of investigative actions for foreign intelligence purposes.

See http://www.fisc.uscourts.gov (last accessed March 29, 2017).

Given current events, I wonder if we will hear more about the court in the coming months.

New Subject Matter Eligibility Chart

Wednesday, March 29th, 2017

The USPTO has updated its chart of subject matter eligibility decisions.  The new chart from the PTO website is available [here].

The USPTO continues to include Rule 36 judgments in the chart despite cases like Rates Tech., Inc. v. Mediatrix Telecom, Inc., 688 F.3d 742, 750 (Fed.Cir. 2012) and TecSec, Inc. v. International Business Machines Corp., 731 F.3d 1336 (Fed. Cir. 2013).

Rule 36 allows us to “enter a judgment of affirmance without opinion” under certain circumstances. Since there is no opinion, a Rule 36 judgment simply confirms that the trial court entered the correct judgment. It does not endorse or reject any specific part of the trial court’s reasoning. In addition, a judgment entered under Rule 36 has no precedential value and cannot establish “applicable Federal Circuit law.” See, e.g., U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1556 (Fed.Cir.1997)

Rates Tech., Inc. v. Mediatrix Telecom, Inc., 688 F.3d 742, 750 (Fed.Cir. 2012)

Similarly, our Rule 36 judgments only affirm the judgment of the lower tribunal. “[A] Rule 36 judgment simply confirms that the trial court entered the correct judgment. It does not endorse or reject any specific part of the trial court’s reasoning.” Rates Tech., Inc. v. Mediatrix Telecom, Inc., 688 F.3d 742, 750 (Fed.Cir. 2012).

TecSec, Inc. v. International Business Machines Corp., 731 F.3d 1336 (Fed. Cir. 2013).

As one example, the In re Alsabah case presented in the chart was an appeal of both 101 and 103 issues.

Query whether a rejection based on one of the Rule 36 Judgments in the chart could satisfy the requisite agency reasoning required by In re Sang-Su Lee:

Judicial review of a Board decision denying an application for patent is thus founded on the obligation of the agency to make the necessary findings and to provide an administrative record showing the evidence on which the findings are based, accompanied by the agency’s reasoning in reaching its conclusions. See In re Zurko, 258 F.3d 1379, 1386, 59 USPQ2d 1693, 1697 (Fed. Cir.2001) (review is on the administrative record); In re Gartside, 203 F.3d 1305, 1314, 53 USPQ2d 1769, 1774 (Fed.Cir. 2000) (Board decision “must be justified within the four corners of the record”).

In re Sang-Su Lee, 277 F.3d 1338 (Fed. Cir. 2002).

TC Heartland Oral Argument

Monday, March 27th, 2017

The Supreme Court heard oral argument today in the case of TC Heartland v. Kraft Foods.

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

Fantasy Federal Circuit

Sunday, March 26th, 2017

I was trying to think of a way to create greater awareness of the Federal Circuit’s rulings.  If greater attention could be drawn to the Federal Circuit’s workload predicament and the resulting need to issue so many Rule 36 judgments, Congress might act to increase the number of judgeships allocated to the court.  Moreover, if there were a competitive aspect to reviewing Federal Circuit opinions, even those derelict patent attorneys we all encounter from time to time might be more interested in staying abreast of Federal Circuit developments.

So, one thought that occurs to me is a Fantasy Football-like game with an educational bent, “Fantasy Federal Circuit.”  The rules of “Fantasy Federal Circuit” may be tailored to your liking; but, here is one proposed set of rules:

1. Draft or pick 5 judges per team roster;

2. Every week two teams go head to head;

3. 4 Points awarded to a team for an opinion authored for the court during the week by a judge on the roster;

4. 3 points awarded for a panel opinion issued during the week in which a judge on the roster participates in the majority (not including the author);

5. 5 points awarded for an opinion issued during the week in which a judge on the roster authors a dissenting opinion;

6. 7 points awarded for an opinion issued during the week in which a judge on the roster authors an en banc opinion for the majority;

7. Negative 1 point awarded for a judgment issued during the week in which a judge on the roster forms part of a Rule 36 judgment panel;

8. Negative 10 points if the Supreme Court reverses during the week an opinion authored for the majority by a judge on the roster, regardless of when the Federal Circuit opinion was authored and with respect to one or more issues;

9. Points received for one judge’s participation in an opinion/judgment does not prevent points being awarded for a second or third judge’s role in that opinion/judgment;

10. The team that has the highest score at the end of the week — even if a negative number — wins the match;

11.  Only CAFC rulings from appeals of IP cases from the USPTO, district courts, ITC, and Court of Federal Claims are utilized.

12.  Per curiam opinions are treated as if there is no author.

13.  No wagering.

Alternative version: Play solitaire.

I tried a practice round this past week and did not fare too well — my team scored -11 points.  But, I doubt you can beat it . . . .

The end of the word is here: In re Alsabah

Friday, March 24th, 2017

The oral argument of the day is In re Alsabah.  I hope the appellant requested rehearing in this rule 36 judgment.  The outcome seems inconsistent with the Federal Circuit’s statement in In re Smith:

That is not to say that all inventions in the gaming arts would be foreclosed from patent protection under § 101. We could envisage, for example, claims directed to conducting a game using a new or original deck of cards potentially surviving step two of Alice. The Government acknowledged as much during oral argument. See Oral Argument at 14:59-15:31, available at http://oralarguments.cafc.uscourts.gov/default.aspx?fl=2015-1664.mp3.

In re Smith, 815 F.3d 816, 819 (Fed. Cir. 2016)(cited excerpt of oral argument available [here]).

From what I could discern from the oral argument, it is hard to believe that the claim as a whole recites routine, conventional, and well-understood subject matter, under Step 2 of Alice or Step 2B of the PTO guidelines.

The oral argument is available [here].

The Rule 36 judgment is available [here].

Patents as property rights — mining patents, that is

Friday, March 24th, 2017

The Federal Circuit issued a different kind of patent opinion last week — a decision relating to patents on mining claims.  Apparently, the patents that the US government issues for mining claims are considered property rights in the full sense:

Once established, a mining claimant receives “a `patent,’ that is, an official document issued by the United States attesting that fee title to the land is in the private owner.” Kunkes v. United States, 78 F.3d 1549, 1551 (Fed. Cir. 1996). A patented mining claim is “a property right in the full sense.” Union Oil Co. v. Smith,249 U.S. 337, 349 (1919).

REOFORCE, INC. v. US, No. 2015-5084 (Fed. Cir. Mar. 17, 2017)(slip op. at page 4).

The court’s opinion in REOFORCE, INC. v. US, No. 2015-5084 (Fed. Cir. Mar. 17, 2017) is available [here] and [here].

Oral Argument of the day: Trader Joe’s v. Hallatt

Wednesday, March 22nd, 2017

With the extraterritoriality issues being argued today in the Lexmark patent case, I am reminded of the extraterritoriality trademark case of Trader Joe’s v. Hallatt from the Ninth Circuit.  The Ninth Circuit’s 2016 opinion is available [here].

Oral Argument of the Day: CRST Van Expedited, Inc. v. EEOC

Monday, March 20th, 2017

The oral argument of the day comes from a Supreme Court case argued last term, CRST Van Expedited, Inc. v. EEOC, 136 S. Ct. 1642, 578 U.S., 194 L. Ed. 2d 707 (2016).  The Court held that a favorable ruling on the merits is not a necessary predicate to find that a defendant has prevailed.

The oral argument is available [here].

The Court’s opinion is available [here].

This case came up in the Federal Circuit oral argument of Advanced Video Technologies v. HTC et al.

Quote for the day

Tuesday, March 14th, 2017
The quote for the day comes from the Supreme Court’s recent decision in LIFE TECHNOLOGIES CORPORATION v. PROMEGA CORPORATION, No. 14-1538 (U.S. Feb. 22, 2017).  In that decision the Court was attempting to discern whether Section 271(f)(1)’s phrase “substantial portion” refers to a qualitative or a quantitative analysis.  The Court said:

As a more general matter, moreover, we cannot accept Promega’s suggestion that the Court adopt a different analytical framework entirely—one that accounts for both the quantitative and qualitative aspects of the components. Promega reads §271(f)(1) to mean that the answer to whether a given portion of the components is “substantial” depends not only on the number of components involved but also on their qualitative importance to the invention overall. At first blush, there is some appeal to the idea that, in close cases, a subjective analysis of the qualitative importance of a component may help determine whether it is a “substantial portion” of the components of a patent. But, for the reasons discussed above, the statute’s structure provides little support for a qualitative interpretation of the term.

Nor would considering the qualitative importance of a component necessarily help resolve close cases. To the contrary, it might just as easily complicate the factfinder’s review. Surely a great many components of an invention (if not every component) are important. Few inventions, including the one at issue here, would function at all without any one of their components. Indeed, Promega has not identified any component covered by the Tautz patent that would not satisfy Promega’s “importance” litmus test. How are courts—or, for that matter, market participants attempting to avoid liability—to determine the relative importance of the components of an invention? Neither Promega nor the Federal Circuit offers an easy way to make this decision. Accordingly, we conclude that a quantitative interpretation hews most closely to the text of the statute and provides an administrable construction.

LIFE TECHNOLOGIES CORPORATION v. PROMEGA CORPORATION, No. 14-1538 (U.S. Feb. 22, 2017)(emphasis added).

Isn’t it interesting how outside of the context of §101, all claim limitations take on a renewed sense of importance.  Indeed, the Court states that “a great many components of an invention (if not every component) are important.  Few inventions . . . would function at all without any one of their components.”  There is no wave of the hand to dismiss mere pre-solution activity or post-solution activity.  Rather, as it should be, every component of a claim is once again deemed important.  How refreshing.

Moreover, the Court noted how difficult it could be for a factfinder to assess the qualitative importance of a particular claim element.  This “qualitative importance” language sounds a little bit like the “significantly more” language of Mayo.  Interesting that the Court had a problem with “qualitative importance” being too difficult for a factfinder to apply, yet left the patent bar twisting in the wind with its “significantly more” test.

It will be interesting to see if this quote from Life Technologies makes its way into any §101 opinions of the Federal Circuit.  After all, it is the most recent pronouncement from the Supreme Court that all claim limitations are important.


De novo review

Thursday, March 9th, 2017

If you were an appellate judge, I imagine that you would prefer to review a lot of matters as “issues of law.”  The great thing about issues of law is that issues of law make the appellate court the final arbiter of a determination.  As you know, issues of law are reviewed de novo.  Issues of fact are reviewed with some level of deference to the factfinder.

In the previous post, I explained that there are several issues percolating at the Federal Circuit with respect to §101 that have not yet been resolved as issues of law or issues of fact.  Perhaps the prospect of giving up de novo review has something to do with that delay.

Retired Chief Judge Rader was a staunch critic of the doctrine of claim vitiation.  He explained that the tests for vitiation and equivalents are coterminous.  The only difference was that the doctrine of claim vitiation was an issue of law (reviewed de novo) while the doctrine of equivalents was an issue of fact (not reviewed de novo).  Therefore, one could assert the doctrine of claim vitiation for purposes of summary judgment, since there could be no fact issue to dispute.  You can hear him explain this in the 2007 oral argument of Wleklinski v. Targus [Listen]. See also his “Additional views” in the Nystrom v. Trex case.

While Judge Rader does not mention it, the adoption of de novo review for the doctrine of claim vitiation also made the appellate judges the final arbiters of a doctrine of claim vitiation analysis.  They do not need to defer to any factfinder.

We will have to wait and see how the Federal Circuit resolves the §101 issues.