Archive for July, 2019

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.