Archive for the ‘Uncategorized’ Category

Federal Circuit Riding Circuit to Dallas

Friday, August 2nd, 2019

The Federal Circuit will sit in Dallas this October for part of its oral argument session.

The schedule announced on the Federal Circuit website is below [link]:



The court also sat for oral arguments in Minnesota in April 2019.

Go back and tell the PTAB to write clearer opinions

Wednesday, July 31st, 2019

A couple of the Federal Circuit judges have expressed some frustration with certain recent PTAB opinions. During oral arguments, Judges Clevenger and Moore suggested to the PTO’s Solicitor’s Office that the PTAB could write clearer opinions.

In the oral argument of Smart Modular v. Iancu, Judge Clevenger had this to say about the “skinny” presentation in the PTAB opinion at issue:

In the oral argument of In re Lilleness, Judge Moore had this to say:

It is interesting to note that Judge Moore appears to be of the opinion that the Solicitor’s Office has some sort of supervisory power over the Board (“go back; send a memo to everybody in the Solicitor’s Office to never allow the Board to write opinions like this”). I think it is still an undecided issue as to whether the Director, let alone the Solicitor’s Office, can dictate to the PTAB how to decide cases.

Both cases were decided by Rule 36 Judgments, skinny in their own right.

A look back at Judge Newman’s eulogy of Judge Daniel Friedman

Thursday, July 25th, 2019

I was grabbing a piece of chocolate today and an image of the late Judge Daniel Friedman popped into my mind. Apparently, he was very fond of chocolate. Given the passage of time, I thought it might be nice to relate, again, Judge Newman’s eulogy of Judge Friedman:

Judge Friedman, our colleague and friend, has moved to the banks of memory. We treasure his memory. And we extend our condolences to Judge Friedman’s family, and his friends.

I’m honored to speak for the court, for at this moment Chief Judge Rader is performing a wedding in California – a schedule he couldn’t change. He wrote, from the wedding site: “Please carry my respect and love for Dan in your hearts at his service”. We do indeed.

Respect and love are the markers of our memories of our friend and colleague. We shall not forget Judge Friedman’s dignity, his warmth, his humor. We remember his lifetime of scholarship, his brilliance and his wisdom, all generously shared.

His seventy years of public service started long before he came to the judiciary. In the office of solicitor general, his legal advice to the nation, and his representation as its advocate, had already ensconced him in the annals of good government. So it was fitting that in 1978 President Carter called him to be Chief Judge of the United States Court of Claims — the eleventh chief judge since 1858.

The Court of Claims was at the foundation of nation’s rule of law – that the people can sue their government, and receive even-handed justice. Judge Friedman told me that he expected to finish his career in that role – and then, about a year later, the idea popped up of this curious new judicial structure, supposed to move the court system into the era of science and technology, and somehow incorporating the reputation of the historic Court of Claims.

Judge Friedman knew that I’d been involved in those early efforts, and he told me that he still wondered what the Court of Claims had to do with the progress of science. But I knew that as Chief Judge he had supported the change. He knew – we all knew — that if he did not, it would not have happened.

I thought then, and now — that Judge Friedman had an unusually clear vision of the role of the courts in service to a great nation – and if that service was somehow thought to be slipping, we should do whatever’s in our power to fix it. And he did. I also saw that Judge Friedman’s intellectual curiosity embraced the culture of science. He was fascinated by the movement of electrons, and the advances of chemistry and biology.

Still, with the transition from the Court of Claims, he assured that the precedents of history were preserved, not only by the formality of adopting them, as the Federal Circuit did as its first judicial act — but by reinforcing their truths.

I was the first judge appointed to the new court, and my chambers were next-door to Judge Friedman’s, on the ninth floor. He made sure I felt welcome, as the first intruder into the domain of the Court of Claims. I soon came upon a case involving a claim against the United States, and I mentioned my uneasiness with deciding against the government. He twinkled – we all remember his twinkle – and he said “that’s our job”, and he quoted Abraham Lincoln — about the duty of government to render justice against itself.

I haven’t wavered since.

Yesterday I talked to Judge Gajarsa in New Hampshire. Before I could ask him, he said “Dan was the epitome of what a judge will be.”

Dan’s opinions are a treat to read, not just because they advance the law in some very difficult areas, but because of their elegance of style and the purity of their reasoning.

It would be easy to assume that the scholarly tradition from which Judge Friedman came would be remote from the world of applied science, at least in the arcane new areas of intellectual property law. Instead, he was intensely practical, wise and savvy in the law and the world — with a powerful a sense of justice.

Judge Friedman had, as one would expect, a deep understanding of the judicial process. As a judge, he showed the most profound respect for our inherited law, without diverging from the statutory law. His standards were never compromised. He was a model of judicial elegance. He never showed off, never embarrassed counsel or his colleagues.

Maybe the word is “urbane”. I never saw him badger a lawyer. He never took advantage of his position, looking down at counsel, who can’t answer back.

In bearing and temperament he was made to be a judge. He always listened, and I never saw him show impatience or inattention. He would draw out his colleagues, even as he had the knowledge and confidence of vast experience.

In every way, he will be missed. Dan Friedman’s life was a life of service. He served the law and the nation with a wisdom that’s rare, even among judges. It was a joy to be in his company. We remember his kindness and his smile – and his scholarship, his balance, his sensitivity.

We mourn the loss of our dear colleague, and the nation’s loss of a powerful intellect. He moves to the memory of history.

You can listen to then Assistant Solicitor General Daniel Friedman argue before the Supreme Court in 1959 here:

Oral Argument of Barr v. Matteo before the Supreme Court of the United States, April 20, 1959

8th Grade Inventor

Wednesday, July 24th, 2019

I thought this was a fun story about a local student inventor here in Colorado, Gitanjali Rao. My understanding is that she is a student at the STEM School Highlands Ranch where there was a school shooting earlier this year. One embodiment of her invention relates to testing for early signs of opioid addiction in the human body:

Judges sitting for oral argument this month at the Federal Circuit

Thursday, July 18th, 2019

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.

Fifth Circuit Oral Argument in State of Texas v. USA (Obamacare/Affordable Care Act)

Tuesday, July 9th, 2019

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:

State of Texas v. USA

The Finger to the Wind test

Tuesday, July 9th, 2019

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].

Article suggestion: Challenging attorney fee awards in other than the Federal Circuit

Saturday, July 6th, 2019

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.

Oral argument of the day: In re Conrad

Thursday, July 4th, 2019

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:

Judge Chen asks: Would a method of predicting earthquakes be patent eligible?

Tuesday, July 2nd, 2019

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.