Archive for August, 2018

Federal Circuit captions

Wednesday, August 29th, 2018

It is curious that the Federal Circuit publishes the names of administrative judges in some appeal decisions but not in others.  For example, in a recent appeal from the Board of Contract Appeals, the caption of the court’s decision in Truckla Services v. US Army Corps of Engineers recites:

Appeal from the Armed Services Board of Contract Appeals in Nos. 57564, 57752, Administrative Judge Elizabeth W. Newsom, Administrative Judge Mark N. Stempler, Administrative Judge Owen C. Wilson, Admin- istrative Judge Richard Shackleford.

However, in appeals from some other tribunals, the names of the administrative judges are not recited in the caption.  This appears to be the case for ITC and PTAB appeals.

Quotes of the day

Tuesday, August 28th, 2018

The first question, i.e., whether software may be a “component” of a patented invention under § 271(f), was answered in the affirmative in Eolas Techs. Inc. v. Microsoft Corp., 399 F.3d 1325 (Fed.Cir.2005), which issued while the instant appeal was pending. In that case, we held that “[w]ithout question, software code alone qualifies as an invention eligible for patenting,” and that the “statutory language did not limit section 271(f) to patented `machines’ or patented `physical structures,'” such that software could very well be a “component” of a patented invention for the purposes of § 271(f). Id. at 1339.

AT & T CORP. v. Microsoft Corp., 414 F.3d 1366, 1369 (Fed. Cir. 2005)(Judge Lourie writing for the court), cert. granted 127 S.Ct. 467 (U.S. 2006) and judgment rev’d on other grounds, 127 S.Ct. 1746 (U.S. 2007).


Exact duplicates of the software code on the golden master disk are incorporated as an operating element of the ultimate device. This part of the software code is much more than a prototype, mold, or detailed set of instructions. This operating element in effect drives the “functional nucleus of the finished computer product.” Imagexpo, L.L.C. v. Microsoft, Corp., 299 F.Supp.2d 550, 553 (E.D.Va.2003). Without this aspect of the patented invention, the invention would not work at all and thus would not even qualify as new and “useful.” Thus, the software code on the golden master disk is not only a component, it is probably the key part of this patented invention. Therefore, the language of section 271(f) in the context of Title 35 shows that this part of the claimed computer product is a “component of a patented invention.”

Eolas Technologies Inc. v. Microsoft Corp., 399 F.3d 1325, 1338-39 (Fed. Cir. 2005).


Section 271(f) refers to “components of a patented invention.” This statutory language uses the broad and inclusive term “patented invention.” Title 35, in the definitions section, defines “invention” to mean “invention or discovery” — again broad and inclusive terminology. 35 U.S.C. § 100(a) (2000). The next section in Title 35, section 101, explains that an invention 1339*1339 includes “any new and useful process, machine, manufacture or composition of matter.” 35 U.S.C. § 101 (2000). Without question, software code alone qualifies as an invention eligible for patenting under these categories, at least as processes. See In re Alappat, 33 F.3d 1526 (Fed.Cir.1994); AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352 (Fed.Cir.1999); MPEP § 2106.IV.B.1.a. (8th ed., rev. 2 2001). The patented invention in this case is such a software product. ‘906 patent, col. 17, ll. 58 — col. 18, ll. 30. Thus, this software code claimed in conjunction with a physical structure, such as a disk, fits within at least those two categories of subject matter within the broad statutory label of “patented invention.”

Eolas Technologies Inc. v. Microsoft Corp., 399 F.3d 1325, 1338-39 (Fed. Cir. 2005).


Color coded briefs to explain a claim’s evolution

Sunday, August 26th, 2018

During the oral argument of PERSONALIZED MEDIA COMMUNICATIONS, LLC v. Amazon. com, Inc., No. 2017-1441 (Fed. Cir. Mar. 13, 2018), the Federal Circuit seemed rather receptive of Amazon’s color coded brief reflecting the evolution of a claim during prosecution.

You can see the brief [here].

Judicial Canons

Thursday, August 23rd, 2018

I was wondering to myself how panel stacking and panel manipulation would be viewed under the canons of judicial ethics.  The site has a good link to the Code of Conduct for US Judges.  It is available [here].

At the top of the list is Canon 1; it emphasizes preserving the independence of the judiciary:

Canon 1: A Judge Should Uphold the Integrity and Independence of the Judiciary

An independent and honorable judiciary is indispensable to justice in our society. A judge should maintain and enforce high standards of conduct and should personally observe those standards, so that the integrity and independence of the judiciary may be preserved. The provisions of this Code should be construed and applied to further that objective.


Deference to the judgments and rulings of courts depends on public confidence in the integrity and independence of judges. The integrity and independence of judges depend in turn on their acting without fear or favor. Although judges should be independent, they must comply with the law and should comply with this Code. Adherence to this responsibility helps to maintain public confidence in the impartiality of the judiciary. Conversely, violation of this Code diminishes public confidence in the judiciary and injures our system of government under law.

The Canons are rules of reason. They should be applied consistently with constitutional requirements, statutes, other court rules and decisional law, and in the context of all relevant circumstances. The Code is to be construed so it does not impinge on the essential independence of judges in making judicial decisions.

The Code is designed to provide guidance to judges and nominees for judicial office. It may also provide standards of conduct for application in proceedings under the Judicial Councils Reform and Judicial Conduct and Disability Act of 1980 (28 U.S.C. §§ 332(d)(1), 351-364). Not every violation of the Code should lead to disciplinary action. Whether disciplinary action is appropriate, and the degree of discipline, should be determined through a reasonable application of the text and should depend on such factors as the seriousness of the improper activity, the intent of the judge, whether there is a pattern of improper activity, and the effect of the improper activity on others or on the judicial system. Many of the restrictions in the Code are necessarily cast in general terms, and judges may reasonably differ in their interpretation. Furthermore, the Code is not designed or intended as a basis for civil liability or criminal prosecution. Finally, the Code is not intended to be used for tactical advantage.

Fed Circuit sets sail for the Windy City

Tuesday, August 21st, 2018

The Federal Circuit will be hearing some of its oral arguments in Chicago in October.  You can see more information about the Chicago visit at this [link].

Pros and cons of inviting retired Justice Anthony Kennedy to sit by designation with the Federal Circuit

Tuesday, August 21st, 2018

Retired Justices of the Supreme Court have sat by designation with the US Courts of Appeal from time to time.  Justice O’Connor, for example, has sat with all but two of the US Courts of Appeal  — one of those being the Federal Circuit [link].  Perhaps the Federal Circuit should invite recently retired Justice Kennedy to sit with the Federal Circuit.

There would be pros and cons to such a move.

The pros that jump out at me are:

  1.  It would be a good opportunity for a person of influence to see the docket demands of the Federal Circuit.
  2. It would provide the judges on the Federal Circuit with better insight into the thinking of the Supreme Court.
  3. It would allow the judges of the Federal Circuit an opportunity to show a person of influence just how messed up the law of patent eligibility has become.
  4. It would also allow the judges of the Federal Circuit to explain why they have to issue so many Rule 36 decisions each month.

The main con of such a move would be that the Federal Circuit might have to explain why some of its cases have marginalized the role of preemption in the patent eligibility analysis.

In the Supreme Court’s opinion in Alice v. CLS, the Court wrote:

“We have long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.” Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. ___, ___, 133 S.Ct. 2107, 2116, 186 L.Ed.2d 124 (2013) (internal quotation marks and brackets omitted). We have interpreted § 101 and its predecessors in light of this exception for more than 150 years. Bilski, supra, at 601-602, 130 S.Ct. 3218; see also O’Reilly v. Morse, 15 How. 62, 112-120, 14 L.Ed. 601 (1854); Le Roy v. Tatham, 14 How. 156, 174-175, 14 L.Ed. 367 (1853).

We have described the concern that drives this exclusionary principle as one of pre-emption. See, e.g., Bilski, supra, at 611-612, 130 S.Ct. 3218 (upholding the patent “would pre-empt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea”). Laws of nature, natural phenomena, and abstract ideas are “`”the basic tools of scientific and technological work.”‘” Myriad, supra, at ___, 133 S.Ct., at 2116. “[M]onopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it,” thereby thwarting the primary object of the patent laws. Mayo, supra,at ___, 132 S.Ct., at 1923; see U.S. Const., Art. I, § 8, cl. 8 (Congress “shall have Power … To promote the Progress of Science and useful Arts”). We have “repeatedly emphasized this … concern that patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity. Mayo, supra, at ___, 132 S.Ct., at 1301 (citing Morse, supra, at 113).

At the same time, we tread carefully in construing this exclusionary principle lest it swallow all of patent law. Mayo, 566 U.S., at ___, 132 S.Ct., at 1293-1294. At some level, “all inventions… embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Id., at ___, 132 S.Ct., at 1293. Thus, an invention is not rendered ineligible for patent simply because it involves an abstract concept. See Diamond v. Diehr, 450 U.S. 175, 187, 101 S.Ct. 1048, 67 L.Ed.2d 155 (1981). “[A]pplication[s]” of such concepts “`to a new and useful end,'” we have said, remain eligible for patent protection. Gottschalk v. Benson, 409 U.S. 63, 67, 93 S.Ct. 253, 34 L.Ed.2d 273 (1972).

Accordingly, in applying the § 101 exception, we must distinguish between patents that claim the “`buildin[g] block[s]'” of human ingenuity and those that integrate the building blocks into something more, Mayo, 566 U.S., at ___, 132 S.Ct., at 1303,thereby “transform[ing]” them into a patent-eligible invention, id., at ___, 132 S.Ct., at 1294. The former “would risk disproportionately tying up the use of the underlying” ideas, 2355*2355 id., at ___, 132 S.Ct., at 1294, and are therefore ineligible for patent protection. The latter pose no comparable risk of pre-emption, and therefore remain eligible for the monopoly granted under our patent laws.

Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. 2347, 2354-55 (2014).


In 2015 in Ariosa v. Sequenom, the Federal Circuit had this to say about preemption:

The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability. Alice, 134 S.Ct. at 2354 (“We have described the concern that drives this exclusionary principal as one of pre-emption”). For this reason, questions on preemption are inherent in and resolved by the § 101 analysis. The concern is that “patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity.” Id. (internal quotations omitted). In other words, patent claims should not prevent the use of the basic building blocks of technology—abstract ideas, naturally occurring phenomena, and natural laws. While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility. In this case, Sequenom’s attempt to limit the breadth of the claims by showing alternative uses of cffDNA outside of the scope of the claims does not change the conclusion that the claims are directed to patent ineligible subject matter. Where a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot.

Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)(emphasis added).


In 2017, the Federal Circuit made these comments about preemption:

But we have consistently held that claims that are otherwise directed to patent-ineligible subject matter cannot be saved by arguing the absence of complete preemption. See, e.g., Synopsys, 839 F.3d at 1150 (holding that an argument about the absence of complete preemption “misses the mark”); FairWarning, 839 F.3d at 1098 (“But even assuming that the . . . patent does not preempt the field, its lack of preemption does not save these claims.”); Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1320-31 (Fed. Cir. 2016) (same); OIP Techs., Inc. v., Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015), cert. denied, ___ U.S. ___, 136 S.Ct. 701, 193 L.Ed.2d 522 (2015) (“[T]hat the claims do not preempt all price optimization or may be limited to [a particular] setting do not make them any less abstract.”). As we have explained, “questions on preemption are inherent in and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015), cert. denied, ___ U.S. ___, 136 S.Ct. 2511, 195 L.Ed.2d 841 (2016). “While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Id. Arguments about the lack of preemption risk cannot save claims that are deemed to only be directed to patent-ineligible subject matter.

Return Mail, Inc. v. US Postal Service, 868 F.3d 1350, 1370 (Fed. Cir. 2017).


And, in 2018, it is interesting that one of the judges who formed the Ariosa panel referred to a preemption argument as “irrelevant” during an oral argument.  Namely, in the oral argument of EVERYMD. COM LLC v. FACEBOOK INC., No. 2017-2105 (Fed. Cir. Mar. 9, 2018) back in March, Judge Wallach made this comment:


So, on the list of cons, it might be a little awkward for the Federal Circuit to explain to Justice Kennedy how the concern that forms the basis for excluding abstract ideas, namely preemption, can be deemed “irrelevant” and moot, and has effectively been marginalized in multiple court decisions.

I don’t know how far-fetched of an idea it is that Justice Kennedy might sit by designation with the Federal Circuit.  For those writing briefs for future appeals, they might not want to discount the preemption argument — when oral argument rolls around they might just be looking up at a retired Supreme Court Justice.

By the way, whether a claim preempts an abstract idea sounds an awful lot like a factual inquiry.






Quote of the week

Monday, August 20th, 2018

“I guess the question I’m asked the most often is: “When you were sitting in that capsule listening to the count-down, how did you feel?” Well, the answer to that one is easy. I felt exactly how you would feel if you were getting ready to launch and knew you were sitting on top of two million parts — all built by the lowest bidder on a government contract.”

John Glenn

Judge Dyk sitting by designation in U.S. District Court of Delaware

Monday, August 20th, 2018

Judge Dyk has apparently been loaned out to the U.S.District Court of Delaware where he is sitting by designation.  You might have noticed that he did not hear oral arguments at the Federal Circuit in August — nor in July if I remember correctly.

You can read Judge Dyk’s recent district court opinion and order in BAXALTA INCORPORATED v. GENENTECH, INC., Civil Action No. 17-509-TBD (D. Del. Aug. 7, 2018) at this [link].

I suppose it is somewhat fun for appellate judges to be fact finders in district court bench trials — fact finding expeditions are not something they have an opportunity to do at the appellate level . . . .

A little bit married

Wednesday, August 15th, 2018

A little bit married

a little bit pregnant

limited nuclear war

clean coal

quite unique

complete preemption**



partially preempted?


partially anticipated?

partially obvious?

partially invalid?

partially infringed?


**”While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.”

Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).



The Troll of Breckenridge

Friday, August 10th, 2018

If you find yourself near Breckenridge, Colorado, you might want to check out the town’s newest troll: