Archive for the ‘Uncategorized’ Category

Oral Argument in Mandarin at the Federal Circuit

Wednesday, September 21st, 2016

A pro se appellant recently showed up at the Federal Circuit to present oral argument — the only problem was that he only speaks Mandarin.  I don’t know if there is an official rule; but, generally oral arguments at the Federal Circuit are conducted in English.  As luck* would have it, one of Judge O’Malley’s clerks, Dr. Glenn Cheng, was able to step in and translate for the appellant.

The oral argument is short, approximately five minutes, and is available [here].

The decision is available [here].

*Perhaps “luck” isn’t the best word choice — Mandarin is the world’s most popular language and spoken by 14% of the world’s population.  English comes in a distant third at 5.5%.

Federal Circuit to visit six law schools in LA area

Monday, September 19th, 2016
The Federal Circuit has posted more details about its upcoming visit to the LA area to conduct oral arguments.  The information from the Federal Circuit Announcement page (last visited 9/19/2016) is shown below.  This visit is somewhat unique in that the Federal Circuit is not sitting at any federal courthouses during this trip — all the appearances will be at law schools.

Pursuant to 28 U.S.C. § 48, six panels of the Federal Circuit Court of Appeals will hear oral arguments in Los Angeles on October 4 and 5 and in Orange County on October 6. In accordance with routine practice, the names of the panel judges will not be released prior to the morning of scheduled arguments.

The schedule and location of the panels is as follows:

Tuesday, October 4

Panel A: 10:00 a.m.
USC Gould School of Law
Ackerman Courtroom
699 Exposition Boulevard
Los Angeles, CA 90089
(213) 740-7331 is external)

Panel B: 10:00 a.m.
Pepperdine University School of Law
24255 Pacific Coast Highway
Malibu, CA 90263
(310) 506-4611 is external)

Wednesday, October 5

Panel C: 10:00 a.m.
Loyola Law School
The Robinson Courtroom
919 Albany Street
Los Angeles, CA 90015
(213) 736-1000 is external)

Panel D: 10:00 a.m.
UCLA School of Law
A. Barry Capello Courtroom
385 Charles E. Young Drive E
Los Angeles, CA 90095
(310) 825-4841 is external)

Thursday, October 6

Panel E: 2:00 p.m.
UC Irvine School of Law
Mark P. Robinson, Jr. Courtroom
401 East Peltason Drive
Irvine, CA 92697
(949) 824-0066 is external)

Panel F: 2:00 p.m.
Chapman University Fowler School of Law
Appellate Courtroom
One University Drive
Orange, CA 92866
(714) 997-6815 is external)

McRO v. Bandai — Lack of Evidence

Wednesday, September 14th, 2016

Others, as well as myself, have submitted comments to the PTO in the past commenting on the PTO’s Subject Matter Eligibility Guidance and highlighting to the PTO that, under Zurko, evidence is required in the assessment of whether a claim is limited to an abstract idea or natural phenomenon. [Link][Link].  Yesterday’s opinion in McRO v. Bandai supports that observation.

In assessing whether the claim in question was directed to an abstract idea, the Federal Circuit stated:

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, __ F.3d __ (Fed. Cir. 2016)(slip opinion at page 24)(emphasis added).

The defendants didn’t show by evidence that the claimed process was previously practiced — let alone practiced conventionally.  Thus, the defendants failed to prove that the claimed process was merely automating a conventional activity.

The PTAB has previously commented on the need for evidence in Ex Parte Poisson [Link].  One quote from Ex Parte Poisson that might be of interest relates to “rules” as well:

Thus, in the first step of the Alice analysis, the question is whether claim 1, i.e., as a simulation of a football game using a table and cards, is directed to an abstract idea. That determination has not been made in this case based on evidence. Instead, the Examiner merely expresses an opinion that “a set of rules qualifies as an abstract idea.” Yet, absent supporting evidence in the record — of which there is none, the Examiner’s opinion is an inadequate finding of fact on which to base the Alice analysis.

Ex Parte Poisson, Appeal No. Appeal 2012-011084 (PTAB Feb. 27, 2015)

You can listen to the oral argument of McRO v. Bandai here: [Link].

Judge Reyna’s well-reasoned opinion for the court in McRO v. Bandai is available [here].

Director Michelle Lee testifying before Congress

Tuesday, September 13th, 2016

Director Michelle Lee testified before Congress today. Her testimony is available here:


Sunday, September 4th, 2016

Concurrent use proceedings under trademark law are fact-intensive proceedings.  They are also relatively rare.  In SOUTHWESTERN MANAGEMENT, INC. v. OCINOMLED, LTD., No. 2015-1939 (Fed. Cir. June 15, 2016), the Federal Circuit heard oral argument with respect to a concurrent use proceeding over the mark –DELMONICO’S– for restaurant services.

You can listen to the oral argument [here].

The Rule 36 Judgment is available [here].

You can read the precedential TTAB decision [here].

Federal Circuit Is Headed to Malibu

Tuesday, August 23rd, 2016

The Federal Circuit will be sitting in southern California this October, with sessions in Los Angeles, Orange County, Irvine, and Malibu.  I’m guessing that the Malibu stop will be at Pepperdine University School of Law.  The schedule from the CAFC web site is shown below:

Sitting in Los Angeles, CA
Panel A:  Tuesday, October 04, 2016, 10:00 A.M.
15-1672 PATO NuVasive, Inc. v. Medtronic, Inc. [argued]
15-1670 PATO NuVasive, Inc. v. Medtronic, Inc. [argued]
16-1054 DCT Blue Spike, LLC v. Google Inc. [argued]
16-1068 CFC Agility Defense v. US [argued]
16-2041 MSPB Evans v. MSPB [on the briefs]
Panel C:  Wednesday, October 05, 2016, 10:00 A.M.
16-1208 PATO Affinity Labs of Texas, LLC v. Samsung Electronics Co Ltd [argued]
16-1216 DCT ProFoot, Inc. v. Merck & Co., Inc. [argued]
16-1278 CFC Rocky Mountain Helium, LLC v. US [argued]
16-1785 DCT Shire Development, LLC v. Watson Pharmaceuticals, Inc. [argued]
16-1986 MSPB Hambrick v. USPS [on the briefs]
16-2148 CFC Chittenden v. US [on the briefs]
Panel D:  Wednesday, October 05, 2016, 10:00 A.M.
16-1046 PATO DataTreasury Corporation v. Fidelity National Information [argued]
16-1050 PATO DataTreasury Corporation v. Jack Henry and Associates, Inc [argued]
16-1229 PATO DataTreasury Corporation v. Fiserv, Inc. [argued]
16-1250 PATO In Re DataTreasury Corporation [argued]
16-1933 MSPB Hernandez v. MSPB [on the briefs]
16-1934 MSPB Hernandez v. MSPB [on the briefs]
Sitting in Malibu, CA
Panel B:  Tuesday, October 04, 2016, 10:00 A.M.
15-1410 DCT Universal Electronics, Inc. v. Universal Remote Control, Inc. [argued]
15-1907 DCT Tranxition, Inc. v. Lenovo (United States) Inc. [argued]
15-3233 MSPB Howard v. Air Force [argued]
16-1298 CFC Estes Express Lines v. US [argued]
16-1557 MSPB El v. MSPB [on the briefs]
16-1660 MSPB Pistilli v. MSPB [on the briefs]
Sitting in Irvine, CA
Panel E:  Thursday, October 06, 2016, 10:00 A.M.
15-3225 MSPB Wilson v. Navy [argued]
16-1062 PATO In Re Villena [argued]
16-1184 PATO Knauf Insulation, Inc. v. Rockwool International A/S [argued]
16-1370 DCT Red Dog Mobile Shelters, LLC v. Kat Industries, Inc. [argued]
16-1849 CAVC Harris v. McDonald [on the briefs]
16-1910 MSPB Scrivens v. OPM [on the briefs]
Sitting in Orange, CA
Panel F:  Thursday, October 06, 2016, 10:00 A.M.
16-1077 DCT Intellectual Ventures I LLC v. Capital One Financial Corp. [argued]
16-1128 DCT Intellectual Ventures I LLC v. Erie Indemnity Company [argued]
16-1143 PATO Cisco Systems, Inc. v. Cirrex Systems, LLC [argued]
16-1313 CFC Sandoval Lua v. US [argued]
16-1667 MSPB Edwards v. USPS [on the briefs]

Supreme Court Oral Argument Recordings

Thursday, August 18th, 2016

The OYEZ site is a great site for listening to recordings of oral arguments from the Supreme Court (going back to at least 1956).

Here is a link to the oral arguments from patent cases at the Supreme Court: [Link].

Here is a link to the oral arguments from trademark cases at the Supreme Court [Link].

And, here is a link to the oral arguments from copyright cases at the Supreme Court [Link].

All content on and other sites and projects maintained by Oyez is released under the Creative Commons Attribution-NonCommercial 4.0 International License.

Secondary Indicia of Patent Eligibility

Saturday, August 13th, 2016

I believe it was the oral argument of LendingTree v. Zillow in which the patent owner mentioned “secondary indicia of patent eligibility.”  Because the Supreme Court has conflated patent eligibility with obviousness in its Bilski-Mayo-Alice line of cases, I suppose it is a natural evolution for the patent bar to begin to rely on traditional 103 arguments to establish patent eligibility.

The argument would be that if the elements of a claim as an ordered combination recite something that has achieved, for example, commercial success, then the claimed invention must not have been well-understood, routine, and conventional, as of the date of its invention.  Therefore, the nature of the claim has been transformed into a patent eligible application.

Coordinate Adjectives:”Well-understood, routine, conventional”

Monday, August 8th, 2016

From time to time during oral arguments at the Federal Circuit, grammatical issues arise.  Sometimes a judge will instruct an advocate about what the proper grammatical interpretation of something is (according to that particular judge).  And, at least one judge is a self-described “grammar nerd.”  I’m curious if any of the judges will ever put their grammar credentials on the line to assess the proper grammatical interpretation of “well-understood, routine, conventional activity” from the MayoAlice cases.

It seems clear to me that in the phrase “well-understood, routine, conventional activity” that “well-understood, routine, conventional”  are being used as coordinate adjectives.  The site gives this definition for coordinate adjectives:

Coordinate adjectives are two adjectives, of equal weight, modifying the same noun. Generally, you should separate the adjectives with a comma. A good test to use: Put the word and between the two adjectives and see if that makes sense. If so, the adjectives are coordinate adjectives.

Consider this example:

It was a long, hot summer.

See (last accessed August 7, 2016).

As the test makes clear, “well-understood, routine, conventional” is the equivalent of “well-understood, routine, and conventional” — a conjunctive phrase.

The Federal Circuit has noted that a conjunctive test requires that all parts of the test be met.  For example, in Luigi Bormioli v. United States, 304 F.3d 1362 (2002), after determining that Bormioli did not satisfy a criterion of a conjunctive test,  a panel of Judges Dyk, Clevenger, and Archer stated for the Federal Circuit:

We conclude that the Court of International Trade correctly held that Bormioli did not demonstrate that it met TD 85-111’s criterion that its financing arrangement with Bormioli Italy for the subject charges was in writing.

Because the TD 85-111 requirements are conjunctive, we need not address whether Bormioli satisfied the final requirement: that “where required by Customs, the buyer can demonstrate that [1][t]he goods undergoing appraisement are actually sold at the price declared as the price actually paid or payable, and [2][t]he claimed rate of interest does not exceed the level for such transaction prevailing in the country where, and at the time, when the financing was provided.” See TD 85-111. For these reasons, the judgment of the Court of International Trade is


Luigi Bormioli v. United States, 304 F.3d 1362 (2002)(emphasis added).

Other circuits have applied conjunctive principles as well.  For example, in US v. SOTO-MATEO, No. 13-2031 (1st Cir. Aug. 26, 2015), Judges Kayatta, Selya, and Dyk stated for the First Circuit:

A defendant facing a charge of illegal reentry after removal may, under some circumstances, challenge the validity of the underlying order of removal. See 8 U.S.C. § 1326(d); United States v. Luna, 436 F.3d 312, 317 (1st Cir. 2006). To wage such a collateral attack, he must demonstrate that

(1) [he] exhausted any administrative remedies that may have been available to seek relief against the order;

(2) the deportation proceedings at which the order was issued improperly deprived [him] of the opportunity for judicial review; and

(3) the entry of the order was fundamentally unfair.

8 U.S.C. § 1326(d). In reviewing a district court’s determination as to whether a particular defendant has satisfied these requirements, we assay the district court’s subsidiary factual determinations for clear error, see United States v. DeLeon, 444 F.3d 41, 48 (1st Cir. 2006), and afford plenary review to its conclusions of law, see Luna, 436 F.3d at 316. Moreover, when “performing the collateral attack analysis under § 1326(d), [an inquiring] court ordinarily should address the initial test of exhaustion of administrative remedies before going on to the other two tests.” DeLeon, 444 F.3d at 45. The elements of section 1326(d) are conjunctive, and an appellant must satisfy all of those elements in order to prevail on a collateral challenge to his removal order. See Luna, 436 F.3d at 317.

US v. SOTO-MATEO, No. 13-2031 (1st Cir. Aug. 26, 2015)(emphasis added).

If the grammarists on the Federal Circuit choose to apply proper rules of grammar to the “well-understood, routine, conventional activity” test so as to treat it as a tripartite conjunctive test, they could reign in much of the overzealous application of Mayo/Alice that runs rampant today in assessing patent eligibility under 35 U.S.C. §101.


Monday, July 25th, 2016

Oral arguments debating the meaning of the claim limitation “real-time” are always interesting.  Here’s a recent one: [Emblaze Ltd. v. Apple, Inc.].

You can read the court’s Rule 36 Judgment here: [Link].