Downturn in visiting judges at the Federal Circuit

October 5th, 2018

It is interesting to note that there has been a significant downturn in the number of visiting judges at the Federal Circuit since Chief Judge Michel retired.  My sense is that even more so than the “Rader” court, the “Prost” court has had fewer visiting judges than the “Michel” court.  During the visit to Chicago this week, no Seventh Circuit or N.D. of Illinois judges sat with the Federal Circuit to hear oral arguments.

That being said, I don’t think it is necessarily a bad thing. On more than one occasion I have looked up questionable precedent of the Federal Circuit or CCPA and chalked up the odd ruling to the fact that it was a split decision with a visiting judge making up part of the majority.

Information Age Patent Eligibility

October 4th, 2018

Justice Scalia did not sign on to the portion of Bilski v. Kappos cited below. With Justice Scalia having been replaced by Justice Gorsuch, it will be interesting to see if the subject matter of the below quote gets more traction or even categorical approval once Justice Kennedy’s replacement is installed.

The machine-or-transformation test may well provide a sufficient basis for evaluating processes similar to those in the Industrial Age—for example, inventions grounded in a physical or other tangible form. But there are reasons to doubt whether the test should be the sole criterion for determining the patentability of inventions in the Information Age. As numerous amicus briefs argue, the machine-or-transformation test would create uncertainty as to the patentability of software, advanced diagnostic medicine techniques, and inventions based on linear programming, data compression, and the manipulation of digital signals. See, e.g., Brief for Business Software Alliance 24-25; Brief for Biotechnology Industry Organization et al. 14-27; Brief for Boston Patent Law Association 8-15; Brief for Houston Intellectual Property Law Association 17-22; Brief for Dolby Labs., Inc., et al. 9-10.

In the course of applying the machine-or-transformation test to emerging technologies, courts may pose questions of such intricacy and refinement that they risk obscuring the larger object of securing patents for valuable inventions without transgressing the public domain. The dissent by Judge Rader refers to some of these difficulties. 545 F.3d, at 1015. As a result, in deciding whether previously unforeseen inventions qualify as patentable 3228*3228 “process[es],” it may not make sense to require courts to confine themselves to asking the questions posed by the machine-or-transformation test. Section 101’s terms suggest that new technologies may call for new inquiries. See Benson, supra, at 71, 93 S.Ct. 253 (to “freeze process patents to old technologies, leaving no room for the revelations of the new, onrushing technology[,] . . . is not our purpose”).

Bilski v. Kappos, 130 S. Ct. 3218, 3227-28 (2010)(Justice Kennedy writing for himself, Chief Justice Roberts, and Justices Thomas and Alito).

Mark Your Calendar

September 29th, 2018

On the heels of his address to the IPO in Chicago this past week, Director Iancu will also be a featured speaker at the AIPLA annual meeting.

Quote of the day: GUST v. ALPHACAP

September 28th, 2018

The quote of the day comes from today’s opinion in Gust v. Alphacap, __ F.3d __ (Fed. Cir. 2018)(slip op. at page 11):

Our case law recognizes that there is no bright line exclusion of software patents or business method patents from patent eligibility. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (“[W]e do not purport to state that all claims in all software-based patents will necessarily be directed to an abstract idea.”); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354 (Fed. Cir. 2014) (recognizing that Bilski v. Kappos, 561 U.S. 593, 611 (2010) did not create a general business method exception for patent eligibility).

Gust v. Alphacap, __ F.3d __ (Fed. Cir. 2018)(slip op. at page 11)(Judge Linn writing for the court).

Quiz of the day — name this case

September 24th, 2018

Can you name the case for the quote that appears below:

In taking this step we are moved, to some extent, by the fact that the doctrine has been shown not to proceed from its purported well-springs. Even so, we would leave it undisturbed were it not the product of an essentially illogical distinction unwarranted by, and at odds with, the basic purposes of the patent system and productive of a range of undesirable results from the harshly inequitable to the silly.


Answer below the break

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Revised procedure for docketing judgments and opinions

September 21st, 2018

From the Federal Circuit web site:

Marvin Gaye haunts Federal Circuit oral argument

September 20th, 2018

Marvin Gaye made a special appearance at the Federal Circuit oral arguments a few months ago.  During the oral argument of GLG FARMS LLC v. BRANDT AGRICULTURAL PRODUCTS, LTD., No. 2017-1937 (Fed. Cir. Aug. 2, 2018), the audio equipment in the courtroom picked up an audio transmission from somewhere in the neighboring area.  At one point in the oral argument, you can plainly hear Marvin Gaye’s “I heard it through the grapevine, not much longer would you be mine” playing in the background.

The court later granted a rehearing of the oral argument, because the interference was significant at certain points throughout the oral argument.


I hope the Federal Circuit’s ASCAP license is paid up.

Outer boundary of “reasonably pertinent”

September 17th, 2018

The oral argument of the day is IN RE LIN, No. 2017-2263 (Fed. Cir. July 17, 2018).  The oral argument was interesting in that the panel was searching for an outer boundary of what is pertinent art in the analogous art test.

In Wyers v. Master Lock, the court stated:

Two criteria are relevant in determining whether prior art is analogous: “(1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1351 (Fed.Cir.2010) (quoting In re Clay, 966 F.2d 656, 658-59 (Fed.Cir.1992)).

Wyers v. Master Lock Co., 616 F.3d 1231 (Fed. Cir. 2010).

The court only issued a Rule 36 Judgment for In re Lin [Link]; but, you can listen to the oral argument here:


Certain Methods of Organizing Human Activity

September 15th, 2018

Judge Taranto commented on what “organizing human behavior” means to him, in the oral argument of Interval Licensing v. AOL.

My impression was that his definition is much more limited than the broad categorical net that the USPTO has cast in its quick reference sheet:

I like how the USPTO has labeled this, however.  Rather than saying that all methods of organizing human activity are abstract ideas, the USPTO has noted that only certain methods of organizing human activity have been found by the CAFC to meet step 1.  In fact the USPTO has cautioned its examining corps with specific instructions not to generalize the “human activity” language:


The court have used the phrase “methods of organizing human activity” to describe concepts relating to interpersonal and intrapersonal activities, such as managing relationships or transactions between people, social activities, and human behavior; satisfying or avoiding a legal obligation; advertising, marketing, and sales activities or behaviors; and managing human mental activity. The term “certain” qualifies this category description as a reminder that (1) not all methods of organizing human activity are abstract ideas, and (2) this category description does not cover human operation of machines.

MPEP §2106.04(a)(2).

You can listen to the entire oral argument of Interval Licensing v. AOL here:

You can read the court’s opinion here: [Link].

A presumption of a technical advance

September 13th, 2018

It seems to be more and more common for claims to pass muster under 35 USC §103 only to be shot down by the muddy metaphysics of 35 USC §101.  I wonder if a panel of the Federal Circuit will someday pronounce a rule that if a claim satisfies 35 USC §103, then there is presumption that the claim is a technical advance.  The burden would then be on the party challenging the claim to rebut that presumption.

For example, in Interval Licensing v. AOL, Judge Chen wrote for the court:

Considered as a whole, the claims fail under § 101’s abstract idea exception because they lack any arguable technical advance over conventional computer and network technology for performing the recited functions of acquiring and displaying information.

INTERVAL LICENSING LLC v. AOL, INC., No. 2016-2502 (Fed. Cir. July 20, 2018).