Director Michelle Lee testifying before Congress

September 13th, 2016

Director Michelle Lee testified before Congress today. Her testimony is available here:

Oral Argument of the Month: IPLEARN-FOCUS, LLC v. Microsoft Corp.

September 7th, 2016

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].


September 4th, 2016

Concurrent use proceedings under trademark law are fact-intensive proceedings.  They are also relatively rare.  In SOUTHWESTERN MANAGEMENT, INC. v. OCINOMLED, LTD., No. 2015-1939 (Fed. Cir. June 15, 2016), the Federal Circuit heard oral argument with respect to a concurrent use proceeding over the mark –DELMONICO’S– for restaurant services.

You can listen to the oral argument [here].

The Rule 36 Judgment is available [here].

You can read the precedential TTAB decision [here].

Federal Circuit Is Headed to Malibu

August 23rd, 2016

The Federal Circuit will be sitting in southern California this October, with sessions in Los Angeles, Orange County, Irvine, and Malibu.  I’m guessing that the Malibu stop will be at Pepperdine University School of Law.  The schedule from the CAFC web site is shown below:

Sitting in Los Angeles, CA
Panel A:  Tuesday, October 04, 2016, 10:00 A.M.
15-1672 PATO NuVasive, Inc. v. Medtronic, Inc. [argued]
15-1670 PATO NuVasive, Inc. v. Medtronic, Inc. [argued]
16-1054 DCT Blue Spike, LLC v. Google Inc. [argued]
16-1068 CFC Agility Defense v. US [argued]
16-2041 MSPB Evans v. MSPB [on the briefs]
Panel C:  Wednesday, October 05, 2016, 10:00 A.M.
16-1208 PATO Affinity Labs of Texas, LLC v. Samsung Electronics Co Ltd [argued]
16-1216 DCT ProFoot, Inc. v. Merck & Co., Inc. [argued]
16-1278 CFC Rocky Mountain Helium, LLC v. US [argued]
16-1785 DCT Shire Development, LLC v. Watson Pharmaceuticals, Inc. [argued]
16-1986 MSPB Hambrick v. USPS [on the briefs]
16-2148 CFC Chittenden v. US [on the briefs]
Panel D:  Wednesday, October 05, 2016, 10:00 A.M.
16-1046 PATO DataTreasury Corporation v. Fidelity National Information [argued]
16-1050 PATO DataTreasury Corporation v. Jack Henry and Associates, Inc [argued]
16-1229 PATO DataTreasury Corporation v. Fiserv, Inc. [argued]
16-1250 PATO In Re DataTreasury Corporation [argued]
16-1933 MSPB Hernandez v. MSPB [on the briefs]
16-1934 MSPB Hernandez v. MSPB [on the briefs]
Sitting in Malibu, CA
Panel B:  Tuesday, October 04, 2016, 10:00 A.M.
15-1410 DCT Universal Electronics, Inc. v. Universal Remote Control, Inc. [argued]
15-1907 DCT Tranxition, Inc. v. Lenovo (United States) Inc. [argued]
15-3233 MSPB Howard v. Air Force [argued]
16-1298 CFC Estes Express Lines v. US [argued]
16-1557 MSPB El v. MSPB [on the briefs]
16-1660 MSPB Pistilli v. MSPB [on the briefs]
Sitting in Irvine, CA
Panel E:  Thursday, October 06, 2016, 10:00 A.M.
15-3225 MSPB Wilson v. Navy [argued]
16-1062 PATO In Re Villena [argued]
16-1184 PATO Knauf Insulation, Inc. v. Rockwool International A/S [argued]
16-1370 DCT Red Dog Mobile Shelters, LLC v. Kat Industries, Inc. [argued]
16-1849 CAVC Harris v. McDonald [on the briefs]
16-1910 MSPB Scrivens v. OPM [on the briefs]
Sitting in Orange, CA
Panel F:  Thursday, October 06, 2016, 10:00 A.M.
16-1077 DCT Intellectual Ventures I LLC v. Capital One Financial Corp. [argued]
16-1128 DCT Intellectual Ventures I LLC v. Erie Indemnity Company [argued]
16-1143 PATO Cisco Systems, Inc. v. Cirrex Systems, LLC [argued]
16-1313 CFC Sandoval Lua v. US [argued]
16-1667 MSPB Edwards v. USPS [on the briefs]

Supreme Court Oral Argument Recordings

August 18th, 2016

The OYEZ site is a great site for listening to recordings of oral arguments from the Supreme Court (going back to at least 1956).

Here is a link to the oral arguments from patent cases at the Supreme Court: [Link].

Here is a link to the oral arguments from trademark cases at the Supreme Court [Link].

And, here is a link to the oral arguments from copyright cases at the Supreme Court [Link].

All content on and other sites and projects maintained by Oyez is released under the Creative Commons Attribution-NonCommercial 4.0 International License.

Secondary Indicia of Patent Eligibility

August 13th, 2016

I believe it was the oral argument of LendingTree v. Zillow in which the patent owner mentioned “secondary indicia of patent eligibility.”  Because the Supreme Court has conflated patent eligibility with obviousness in its Bilski-Mayo-Alice line of cases, I suppose it is a natural evolution for the patent bar to begin to rely on traditional 103 arguments to establish patent eligibility.

The argument would be that if the elements of a claim as an ordered combination recite something that has achieved, for example, commercial success, then the claimed invention must not have been well-understood, routine, and conventional, as of the date of its invention.  Therefore, the nature of the claim has been transformed into a patent eligible application.

Coordinate Adjectives:”Well-understood, routine, conventional”

August 8th, 2016

From time to time during oral arguments at the Federal Circuit, grammatical issues arise.  Sometimes a judge will instruct an advocate about what the proper grammatical interpretation of something is (according to that particular judge).  And, at least one judge is a self-described “grammar nerd.”  I’m curious if any of the judges will ever put their grammar credentials on the line to assess the proper grammatical interpretation of “well-understood, routine, conventional activity” from the MayoAlice cases.

It seems clear to me that in the phrase “well-understood, routine, conventional activity” that “well-understood, routine, conventional”  are being used as coordinate adjectives.  The site gives this definition for coordinate adjectives:

Coordinate adjectives are two adjectives, of equal weight, modifying the same noun. Generally, you should separate the adjectives with a comma. A good test to use: Put the word and between the two adjectives and see if that makes sense. If so, the adjectives are coordinate adjectives.

Consider this example:

It was a long, hot summer.

See (last accessed August 7, 2016).

As the test makes clear, “well-understood, routine, conventional” is the equivalent of “well-understood, routine, and conventional” — a conjunctive phrase.

The Federal Circuit has noted that a conjunctive test requires that all parts of the test be met.  For example, in Luigi Bormioli v. United States, 304 F.3d 1362 (2002), after determining that Bormioli did not satisfy a criterion of a conjunctive test,  a panel of Judges Dyk, Clevenger, and Archer stated for the Federal Circuit:

We conclude that the Court of International Trade correctly held that Bormioli did not demonstrate that it met TD 85-111’s criterion that its financing arrangement with Bormioli Italy for the subject charges was in writing.

Because the TD 85-111 requirements are conjunctive, we need not address whether Bormioli satisfied the final requirement: that “where required by Customs, the buyer can demonstrate that [1][t]he goods undergoing appraisement are actually sold at the price declared as the price actually paid or payable, and [2][t]he claimed rate of interest does not exceed the level for such transaction prevailing in the country where, and at the time, when the financing was provided.” See TD 85-111. For these reasons, the judgment of the Court of International Trade is


Luigi Bormioli v. United States, 304 F.3d 1362 (2002)(emphasis added).

Other circuits have applied conjunctive principles as well.  For example, in US v. SOTO-MATEO, No. 13-2031 (1st Cir. Aug. 26, 2015), Judges Kayatta, Selya, and Dyk stated for the First Circuit:

A defendant facing a charge of illegal reentry after removal may, under some circumstances, challenge the validity of the underlying order of removal. See 8 U.S.C. § 1326(d); United States v. Luna, 436 F.3d 312, 317 (1st Cir. 2006). To wage such a collateral attack, he must demonstrate that

(1) [he] exhausted any administrative remedies that may have been available to seek relief against the order;

(2) the deportation proceedings at which the order was issued improperly deprived [him] of the opportunity for judicial review; and

(3) the entry of the order was fundamentally unfair.

8 U.S.C. § 1326(d). In reviewing a district court’s determination as to whether a particular defendant has satisfied these requirements, we assay the district court’s subsidiary factual determinations for clear error, see United States v. DeLeon, 444 F.3d 41, 48 (1st Cir. 2006), and afford plenary review to its conclusions of law, see Luna, 436 F.3d at 316. Moreover, when “performing the collateral attack analysis under § 1326(d), [an inquiring] court ordinarily should address the initial test of exhaustion of administrative remedies before going on to the other two tests.” DeLeon, 444 F.3d at 45. The elements of section 1326(d) are conjunctive, and an appellant must satisfy all of those elements in order to prevail on a collateral challenge to his removal order. See Luna, 436 F.3d at 317.

US v. SOTO-MATEO, No. 13-2031 (1st Cir. Aug. 26, 2015)(emphasis added).

If the grammarists on the Federal Circuit choose to apply proper rules of grammar to the “well-understood, routine, conventional activity” test so as to treat it as a tripartite conjunctive test, they could reign in much of the overzealous application of Mayo/Alice that runs rampant today in assessing patent eligibility under 35 U.S.C. §101.

Supreme Court patent case of the week: Carver v. Hyde

July 30th, 2016

The Supreme Court “patent case of the week” for this week is Carver v. Hyde, 41 U.S. 513 (1842). Readers of this case will find it interesting for several reasons.  First, the language used by the Court sounds very similar to modern day Doctrine of Equivalents cases.  Second, from a functional claiming perspective, it includes a statement that one cannot patent a desired result: “Now the end to be accomplished is not the subject of a patent. The invention consists in the new and useful means of obtaining it.” Carver v. Hyde, 41 U.S. 513, 519 (1842).  Third, the patent was written in a problem-solution format.  And, fourth, to some degree the Court looked to the advantages and object of the invention stated in the specification.  The Court also looked to the “summing” section of the patent; but, that summing section is the modern day equivalent of the”claims” section.

The Carver v. Hyde case, along with other authority, was later cited by the Court for the proposition that the end or purpose sought to be accomplished is not the subject of a patent.  Rather, an invention is the new and useful means of obtaining that end:

The use and purpose sought to be accomplished by the Hall patent was the radial expansion of the dress form, but it is well settled by the authorities that the end or purpose sought to be accomplished by the device is not the subject of a patent. The invention covered thereby must consist of new and useful means of obtaining that end. In other words, the subject of a patent is the device or mechanical means by which the desired 228*228 result is to be secured. Carver v. Hyde, 16 Pet. 513, 519; LeRoy v. Tatham, 14 How. 156; Corning v. Burden, 15 How. 252; Barr v. Duryee, 1 Wall. 531; Fuller v. Yentzer, 94 U.S. 288.

Knapp v. Morss, 150 U.S. 221, 227-28  (1893).

It is interesting to contrast that statement from Knapp v. Morss with modern day subject matter eligibility analyses, where courts characterize detailed claim language as being “directed to” abstract ideas.  For example, one could imagine that a modern day subject matter eligibility analysis would begin by characterizing the Knapp v. Morss claim as being directed to “radial expansion of a dress form”– exactly what the Knapp v. Morss court instructed was not the invention in that case.

You can read Carver v. Hyde below:

41 U.S. 513 (____)16 Pet. 513


Supreme Court of United States.

The case was submitted to the Court, on printed arguments, by Dexter, for the plaintiff in error; and by Messrs. Fletcher and Phillips, for the defendants.

Mr. Chief Justice TANEY delivered the opinion of the Court.

This case is brought here by writ of error, directed to the Circuit Court of the United States for the district of Massachusetts. It is an action by the plaintiff in error against the defendants, to recover damages for the infringement of a patent right, obtained by the plaintiff on the 16th of November, 1839. The patent is in the usual form, and the questions before us depend upon the construction of the specification, which is in the following words,

“Be it known, that I, Eleazer Carver, of Bridgewater, in the county of Plymouth, and state of Massachusetts, have invented a certain improvement in the manner of forming the ribs of sawgins, for the ginning of cotton; and I do hereby declare that the following is a full and exact description thereof.

“In the cotton-gin, as heretofore known and used, the fibres of the cotton are drawn by the teeth of circular saws, through 514*514 a grating formed of a number of parallel bars, or ribs, having spaces between them sufficient to allow the saws to pass, carrying the fibres of the cotton with them, (which are then brushed off by a revolving brush,) but not wide enough to let the seeds, and other foreign substances, pass through. Above the saws the ribs come in close contract, thus forming a shoulder at the top of the space between them. Various forms have been given to the bars or ribs, with a view to procure a free passage of the cotton; but the cotton-gin, as heretofore made, has been always subject to the inconvenience of the grate becoming choked by hard masses of cotton and motes, or false seeds, collecting in the upper part of the spaces between the ribs, and impeding the action of the saws, and also preventing the mass of cotton which is drawn by the saws up to the top of the spaces, but not drawn through them, from rolling back freely, so as to pass again over the saws, as it should do.

“My improvement, which I am about to describe, is intended to obviate these difficulties; and it consists in giving a new form to the ribs composing the grate. Instead of making the ribs of a bar of iron of equal thickness throughout, so that the upper and under surfaces shall be parallel, I so form the rib, that at the part where the saws pass through, carrying the cotton with them, the space, or depth between the upper and outer surface, and the lower, or inner surface, shall be grater than the thickness of the rib in other parts has heretofore been, or needs to be, and so great as to be equal to the length of the fibre of the cotton to be ginned, so that the fibre shall be kept extended between the ribs for about its full length, while it is drawn through them by the saws. This mill, of course, requires, either that the rib should be as thick at that part as the length of the fibre, or that the rib should be forked, or divided, about that part, so that the upper, or outer surface, and the under, or inner surface, shall diverge to that distance of each other, instead of being parallel as formerly, when the rib was made of one bar of uniform thickness. This under, or inner surface, then takes a new direction upwards, and slopes towards the upper, or outer surface, until the two surfaces meet above the periphery of the saw. This last described part of the under surface is fastened against the framework of the gin. The operation of this improvement is, that those fibres of 515*515 the cotton which are so firmly caught by the teeth of the saws as to be disengaged from the mass of the cotton to be ginned, are drawn out to their full length, and pass clear through the grate, and are then brushed off by the revolving brush, while the fibres that are drawn into the grate, but not caught by the teeth of the saws firmly enough to be carried quite through, are disengaged, and pass up to where the under surface meets the upper surface, above the saws, and finding no obstruction there, pass back out of the grate without choking it, and roll down again with the mass of unginned cotton, and are caught below by the saws, and carried up again, and so on until all the fibres are drawn through.”

The specification then proceeds to describe the invention more particularly, by referring to and explaining the drawings annexed to it, showing the advantages of his improvement, the manner of arranging the ribs in the gin, and the mode of inserting and fastening them in the framework. This description could not be comprehended without an exact drawing; nor is it necessary, in order to understand the questions of law in dispute between the parties. It is therefore omitted. After giving this description, the specification states the improvement, of which the patentee claims to be the inventor, as follows.

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July 25th, 2016

Oral arguments debating the meaning of the claim limitation “real-time” are always interesting.  Here’s a recent one: [Emblaze Ltd. v. Apple, Inc.].

You can read the court’s Rule 36 Judgment here: [Link].

Post-Prosecution Pilot (P3) Program

July 15th, 2016

Here is a link to the Federal Register Notice for the USPTO’s new Post-Prosection Pilot (P3) Program [Link].

Here is a link to the USPTO page [Link].