Archive for January, 2013

Historical Supreme Court Oral Arguments

Wednesday, January 23rd, 2013

The OYEZ Project site has updated its patent content significantly over the past few months.  The oral arguments from most of the historical patent cases on the site are now available.

Listen to the Marshal of the Supreme Court open court proceedings here:  [Link].  Please consider supporting the OYEZ project:  [here].

I’ve recently been listening to the oral argument from the 1961 case of Aro Mfg. Co. v. Convertible Top Co. (Aro I) where the Court took exception to a “heart of the invention” analysis.  You can listen to the Aro I oral arguments here: [Part I], [Part 2].


For if anything is settled in the patent law, it is that the combination patent covers only the totality of the elements in the claim, and that no element, separately viewed, is within the grant. See the Mercoid cases, supra, 320 U.S. at 320 U. S. 667; 320 U.S. at 320 U. S. 684. [Footnote 10] The basic fallacy in respondent’s position is that it requires the ascribing to one element of the patented combination the status of patented invention in itself. Yet this Court has made it clear in the twoMercoid cases that there is no legally recognizable or protected “essential” element, “gist” or “heart” of the invention in a combination patent. In Mercoid Corp. v. Mid-Continent Co., supra, the Court said:

“That result may not be obviated in the present case by calling the combustion stoker switch the ‘heart of the invention’ or the ‘advance in the art.’ The patent is for a combination only. Since none of the separate elements of the combination is claimed as the invention, none of them, when dealt with separately, is protected by the patent monopoly.”

320 U.S. at 320 U. S. 667. And in Mercoid Corp. v. Minneapolis-Honeywell Regulator Co., supra, the Court said:

“The fact that an unpatented part of a combination patent may distinguish the invention does not draw to it the privileges of a patent. That may be done only in the manner provided by law. However worthy it may be, however essential to the patent, an unpatented part of a combination patent is no more entitled to monopolistic protection than any other unpatented device.”

Aro Mfg. Co., Inc. v. Convertible Top Co., 365 U.S. 336, 344-45 (1961).

Band “DeNovo” Rocks Beijing

Thursday, January 10th, 2013

Professor Sean O’Connor has posted some photos of Chief Judge Rader’s band DeNovo performing in Beijing this past October: [Link].

I understand there is no truth to the rumor that the opening act for De Novo is the Ipse Dixit Chicks.

En Banc Oral Arguments One Month Away

Tuesday, January 8th, 2013

The Federal Circuit will sit en banc and hear oral argument in the cases of CLS v. Alice and Bosch v. Pylon in exactly one month.

The questions presented in CLS v. Alice are:

a. What test should the court adopt to determine whether a computer-implemented invention is a patent ineligible “abstract idea”; and when, if ever, does the presence of a computer in a claim lend patent eligibility to an otherwise patent-ineligible idea?

b. In assessing patent eligibility under 35 U.S.C. § 101 of a computer-implemented invention, should it matter whether the invention is claimed as a method, system, or storage medium; and should such claims at times be considered equivalent for § 101 purposes?

At this stage, the big questions in my mind are whether: (1) Richard Taranto will have been confirmed and sworn-in by February 8th; and (2) whether either Judge O’Malley or Judge Moore will have any reason to recuse themselves.  With respect to this second issue, I hope not.

In the en banc appeal of Bosch v. Pylon, the court will consider:

a. Does 28 U.S.C. § 1292(c)(2) confer jurisdiction on this Court to entertain appeals from patent infringement liability determinations when a trial on damages has not yet occurred?

b. Does 28 U.S.C. § 1292(c)(2) confer jurisdiction on this Court to entertain appeals from patent infringement liability determinations when willfulness issues are outstanding and remain undecided?

Richard Taranto Re-nominated to Federal Circuit

Thursday, January 3rd, 2013

Richard Taranto was re-nominated for a seat on the Federal Circuit on Thursday.  You can read the press release from the White House [here].