Oral Argument of the Week: CMG Financial Services v. Pacific Trust Bank

October 22nd, 2015

In Microsoft Corp. v. i4i Ltd. Partnership, 131 S. Ct. 2238, 564 U.S., 180 L. Ed. 2d 131 (2011) the Supreme Court of the United States stated:

Under §282 of the Patent Act of 1952, “[a] patent shall be presumed valid” and “[t]he burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.” 35 U. S. C. §282. We consider whether §282 requires an invalidity defense to be proved by clear and convincing evidence. We hold that it does.

Microsoft Corp. v. i4i Ltd. Partnership, 131 S. Ct. 2238 (2011) (emphasis added).

The issue of evidence with respect to 35 U.S.C. §101 takes center stage in the oral argument of  CMG FINANCIAL SERVICES, INC. v. PACIFIC TRUST BANK, FSB, No. 2014-1855 (Fed. Cir. Sept. 15, 2015). [Link]

As you can see from the Rule 36 Judgment [link], the panel punted on the issue — which reminds me of another quote:

It is emphatically the province and duty of the judicial department to say what the law is. Those who apply the rule to particular cases, must of necessity expound and interpret that rule.

Marbury v. Madison, 5 U.S. 137, 177 (1803).

Updated List of Patent Subject Matter Eligibility Decisions

October 22nd, 2015

The USPTO updated its list of subject matter eligibility decisions in September.  The link is available [here].

One curious feature of the list is that the USPTO relies upon Rule 36 decisions from the Federal Circuit for some of the entries.

Speak up

October 11th, 2015

Just a reminder that the deadline to comment on the USPTO’s July Patent Eligibility Guidance is coming up on October 28, 2015 — October 27th to be safe.

From the USPTO website:



The USPTO is interested in receiving public feedback on the July 2015 Update:  Subject Matter Eligibility, including the claim examples.

Any member of the public may submit written comments by electronic mail message over the Internet addressed to 2014_interim_guidance@uspto.gov (link sends e-mail). Electronic comments submitted in plain text are preferred, but also may be submitted in ADOBE® portable document format or MICROSOFT WORD® format. The comments will be available for public inspection here at this Web page. Because comments will be available for public inspection, information that is not desired to be made public, such as an address or a phone number, should not be included in the comments. Comments will be accepted until October 28, 2015.


Portraits of Federal Circuit Judges

October 8th, 2015

Here are links to some of the portraits of the Federal Circuit judges:

Judge Newman [Link]

Judge Lourie [Link]

Judge Bryson [Link]

Chief Judge Rader (ret.)  [Link]

Chief Judge Michel (ret.)  [Link]

Judge Gajarsa (ret.)  [Link]

Oral Arguments and Stock Prices

October 6th, 2015

Rovi Corp. is another great example of how important patents are to companies in the computer age.  When five of Rovi’s patents were initially declared patent ineligible by a district court this past July, Rovi’s stock dropped dramatically relative to the NASDAQ:


Hypothetically, assuming this decision is reversed by the Federal Circuit and the patents are later challenged under 35 U.S.C. §103, it would be interesting to see if the change in stock price could be used as evidence of commercial success.  It would be hard to say that there is no nexus.

It will also be interesting to watch Rovi’s stock price on the day of the oral argument at the Federal Circuit.  For example, will the price fluctuate significantly not only during the oral argument but also when the panel for the case is announced on the morning of the oral argument.  Given how panel dependent patent eligibility outcomes can be, a Mayer, Dyk, Lourie panel might produce an entirely different swing than a Newman, Moore, Linn panel.

Obviously, this post and all other posts on this blog are not investment advice.

Updated Audio Key to the Voices of the Federal Circuit Judges

October 4th, 2015

If you have been listening to oral argument recordings and have been wondering to whom a particular voice belongs, you should use the link to the audio key page, located on the upper right-hand portion of the home page.  The audio key has been updated to include the voices of the recently appointed Federal Circuit judges.

If you are curious which judge is speaking during an oral argument recording, my suggestion is to:

(1) pull up the opinion;*

(2) note from the opinion who the judges on the panel are; and

(3) use the sound bites on the audio key page to identify the speaker.

*Alternatively, if no opinion has issued and the case was recently argued, you can likely determine the panel from the “Upcoming Oral Arguments” link on the Federal Circuit web site.

En banc oral arguments

October 3rd, 2015

The Federal Circuit convened to hear oral arguments in two en banc cases on Friday October 2, 2015.

The oral arguments are available here:

In re Tam:  [Listen]

Lexmark International, Inc. v. Impression Products, Inc.:  [Listen].

Denver PTAB Firing on All Cylinders

September 30th, 2015

The Denver PTAB appears to be firing on all cylinders these days.  This past month the PTAB conducted its first hearing in which the entire panel of judges was located in Denver.  As luck would have it, I happened to be arguing one of the two cases heard that day.  So, I got to be a little part of Denver PTAB history.

Oral Argument of the Week: Retirement Capital Access v. US Bancorp

September 24th, 2015

The oral argument of the week was argued about seven weeks ago and received a Rule 36 decision.  It covers several interesting issues, such as whether the presence of a means plus function limitation should make a claim patent eligible.  The one issue that I thought got lost in the discussion of means plus function claims, however, is the the issue of preemption.  Namely, if a claim includes a means plus function claim and the means is limited to the structure disclosed in the specification, how could such a claim possibly preempt all the other means of performing that function?  Therefore, how could the claim as a whole preempt the purported abstract idea?

The oral argument also addressed whether evidence should be required to prove that something was an abstract idea.

And, Judge Lourie endeared himself to patent prosecutors everywhere by inquiring whether all business methods should be deemed patent ineligible:  [Listen].

You can listen to the entire oral argument [here].

You can read the Rule 36 decision [here].

Pope Closes Federal Circuit

September 23rd, 2015

From the Federal Circuit web site:

Due to the anticipated disruption of access to the Court by its facilities falling inside the security perimeter during the Papal visit, by order of the Court, the Clerk’s Office of United States Court of Appeals for the Federal Circuit will close on Tuesday, September 22, 2015, at 3:30 p.m., ET. The Court will remain closed Wednesday, September 23, 2015, and will reopen on Thursday, September 24, 2015, at 8:30 a.m. For purposes of computing time, and for motions to enlarge time under Fed. R. App. Proc. 26 and Fed. Cir. R. 26, Wednesday, September 23, 2015, will be considered a “legal holiday.”