The oral argument of the month is from IPLEARN-FOCUS, LLC v. Microsoft Corp., No. 2015-1863 (Fed. Cir. July 11, 2016). The issue in dispute was step two of the Alice/Mayo test. The Appellant argued that the claims, while broad, nevertheless did not recite a conventional system when considered as an ordered combination.
The oral argument recording has a lot of interesting sound bites. For example, Judge Linn made the astute point that under the current state of affairs, a claimed system that is entirely patent eligible under 35 U.S.C. §101 suddenly becomes patent ineligible when the claim is narrowed to perform an arguably abstract function. [Listen].
The fact that a broad claim can become patent ineligible by making the claim narrower illustrates just how nonsensical the Supreme Court’s jurisprudence has become with respect to 35 U.S.C. §101 and how the Court has strayed from its original concerns about preemption. The test for judicial exceptions is now the tail that wags the dog of patent eligibility.
Judge O’Malley also proposed an example of a drone for delivering packages and asked why the function of package delivery should make a normally patent eligible drone suddenly patent ineligible. At the 35 minute, 6 second mark, she also talks briefly about her change in position in the Ultramercial case.
At the 20 minute, 17 second mark, Judge Moore proposed a new claim based on the Appellant’s specification, in which facial feature recognition techniques could be used to detect when a user’s attention has drifted away from a computer screen. In jest, she suggested that her system could be used to monitor the PTAB’s hoteling judges. [Listen]. I suppose their retort, equally in jest, might be: ”Thank you for the helpful suggestion on how we can improve our production. Some day we hope to have a small brigade of judicial clerks of our own and a heavy club like your Rule 36 to help us attack our workload.”
The panel decided the case by a Rule 36 Judgment, available [here].
You can listen to the entire oral argument [here].