The Federal Circuit will be visiting Georgetown University Law Center in March. The CAFC will be hearing oral arguments there on March 6, 2017. From the Federal Circuit website (as of January 29, 2017):
Panel A: Monday, March 06, 2017, 10:00 A.M., Georgetown University Law Center,
I always enjoy the Docket Report’s posts on patent eligibility decisions. They are available at this [link]. While not scientific by any stretch of the imagination, it is interesting to look at how the posts seem to reflect that more and more patents are being found patent eligible by the district courts. For example, in July of 2015, all nine cases covered had a decision reflecting patent ineligibility (0-9). In January 2016, the cases covered were (3-4) — three cases favoring patent eligibility and four favoring patent ineligibility. In January 2017, the cases covered went (5-2) — five decisions favoring patent eligibility and two cases reflecting patent ineligibility. The links are below. I think my favorite one is from December 1, 2016 “Newly Assigned Judge Vacates Earlier Summary Judgment Invalidating Advertising Campaign Analysis Patents Under 35 U.S.C. § 101.”
The Scotusblog had an article the other day indicating that Tenth Circuit Judge Neil Gorsuch was on the three-judge short-list for Justice Scalia’s seat on the Supreme Court. I was writing a paper earlier this month where I came across one of Judge Gorsuch’s trademark opinions that he authored for the Tenth Circuit. In that opinion, there is a rather humorous discussion of the weight to be given the TTAB’s Manual of Procedure:
At this juncture, Hatch Chile and Mizkan reply by directing us to a sub-regulatory manual. And whether by virtue of the operation of § 23 or thanks only to judge-made doctrines of deference like Chevron or Auer, they suggest we owe this subregulatory manual our obeisance. And, they say, this manual does forbid TTAB parties from issuing document subpoenas to nonparties unless they are accompanied by a demand for a needless deposition. It seems the district court found this argument most persuasive for it is the one on which its opinion appears to rest.
But here too we just don’t see it. The relevant portion of the manual, called the Trademark Trial and Appeal Board Manual of Procedure (TBMP), says this:
Requests for production may not be served on a non-party. [Note 4[: See Fed. R. Civ. P. 34(a).]] However, if a discovery deposition deponent is a non-party witness residing in the United States, production of designated documents by the witness at the deposition may be obtained by means of a subpoena duces tecum. [Note 5[: 35 U.S.C. § 24; Fed. R. Civ. P. 45. But see Dan Foam ApS v. Sleep Innovations Inc., 106 U.S.P.Q.2d 1939, 1942-43 (TTAB 2013)(discussing notice requirement to adverse party under Fed. R. Civ. P. 45(b)(1) for a subpoena duces tecum (without deposition) issued to nonparty and noting that respondent could have sought its own subpoena of the nonparty to obtain additional documents and/or a discovery deposition).]]
TBMP § 406.01 (June 2014).
What exactly does this language mean? Hatch Chile and Mizkan suggest that the first sentence generally prohibits a party from seeking documents from nonparties and that the second sentence provides a limited exception for situations when the nonparty is being deposed. Maybe. But El Encanto offers another plausible reading that yields a very different conclusion. On this reading, the first sentence alerts parties to the truism that requests for production of documents under Rule 34 may be directed only to parties, not nonparties. And the second sentence proceeds to explain how to get documents from nonparties. Allowing, on El Encanto’s view, parties to seek documents from nonparties either at a deposition or, as the footnote seems to explain, however permitted by Rule 45. After all, El Encanto notes, the footnote expressly acknowledges that a party used a Rule 45 subpoena without an attendant deposition in the Dan Foam litigation before the TTAB.
Who is right about the optimal reading of this most opaque of sub-regulatory guidance? In the end, we think this is just another debate that doesn’t matter. It doesn’t matter because the TBMP itself disavows any suggestion that it seeks to offer authoritative interpretive guidance about § 23 or § 24 that might possibly command our deference. The manual states quite plainly that it doesn’t purport to “bind” the TTAB or the PTO or anyone else and doesn’t purport to “have the force and effect of law.” TBMP Introduction (June 2014). Instead the TBMP says it aspires only to serve as a sort of rough-and-ready handbook, supplying some “basic information” that may prove “generally useful” to TTAB practitioners. Id. And we are aware of nothing that might require a federal court to afford deference to such a self-effacing agency document, one that not only doesn’t demand deference but actually disclaims it. Maybe especially when another circuit has already found this manual not “particularly persuasive.” Rosenruist-Gestao, 511 F.3d at 448. And maybe especially when, if we were to read the TBMP as Hatch Chile and Mizkan suggest, it would only wind up creating a conflict between this sub-regulatory handbook and the PTO’s promulgated Administrative Procedure Act notice-and-comment regulations that clearly permit the use of document-only subpoenas. For surely if the agency is indeed so confused that it has spoken out of both sides of its regulatory mouth, it has to be the side speaking unambiguously through formal rulemaking, rather than the side speaking in garbled terms so quickly disavowed, that speaks the more loudly.
El Encanto, Inc. v. HATCH CHILE COMPANY, INC., 825 F.3d 1161, 1165-66 (10th Cir. 2016).
The oral argument of the week is Zond, LLC v. Advanced Micro Devices, Inc. One of the issues at play was whether there was substantial evidence presented to the PTAB that it is reasonable to surmise that a Russian thesis was publicly accessible prior to the critical date.
The oral argument is available [here]. (It is a big file)
I always enjoy listening to oral arguments that feature Judge Clevenger. He is very smart, direct, and knows how to turn a phrase. He often interjects a few idiomatic expressions into the oral arguments. For example, I don’t know that he has ever said this one but it would be apropos: Mr. Solicitor, the combination of the two references that the PTO proposed is like putting socks on a rooster.
Judge Clevenger’s exchanges with the PTO can be interesting; so, over the weekend I was trying to generate a playlist of past oral arguments. This is where the weird fact of the day comes in. To my surprise, there was a period between 2006 and 2008 where Judge Clevenger did not sit on any appeals arising out of the USPTO. This is quite curious, as he did hear appeals from other cases. At first, I suspected that he simply chose not to hear appeals from the USPTO once he took senior status in February of 2006. However, then I noticed that two other senior judges, Judges Archer and Plager, only heard one appeal each (directly from the USPTO) during that same three year interval. A third senior judge, Judge Friedman, similarly heard only one patent appeal arising out of the USPTO, as well as one trademark appeal. It is too bad, as it deprived the patent bar of some of the most experienced judges hearing appeals from the USPTO during that time period.
If you want to double-check my work, I used Google Scholar, the judge’s last name in combination with “solicitor” and filtered by year. Then, it was an easy process of eliminating inapplicable hits.
The audio recording from the Supreme Court oral argument in Lee v. Tam is available below. I have divided the argument into the petitioner’s opening argument, the respondent’s argument, and the petitioner’s rebuttal argument.
Here is another video of a Ninth Circuit oral argument. The case is VMG SALSOUL, LLC v. Ciccone, 824 F.3d 871 (9th Cir. 2016). One of the issues in the case was whether Madonna Ciccone’s (aka Madonna) use of a 0.23 second horn recording from another artist’s song in Madonna’s song Vogue constituted “de minimis” use under copyright law. In a split from the Sixth Circuit, the Ninth Circuit said that Madonna’s use was “de minimis” use. This is believed to be the first time that the Ninth Circuit has applied the “de minimis” use exception to sound recordings. You can read the Ninth Circuit opinion [here].
In Trading Technologies v. CQG [link], the Federal Circuit panel punted on the issue of what burden of proof is required to hold a patent claim to be ineligible subject matter. Notably, in footnote 2, the panel said:
2. The parties dispute whether the district court erred in requiring proof of ineligibility under § 101 by clear and convincing evidence. Because our review is de novo, and because under either standard the legal requirements for patentability are satisfied, we need not address this dispute.
The district court was not shy to say what the law is. In her district court opinion, Judge Coleman stated:
This Court recognizes the persuasiveness of Justice Breyer’s reasoning that because the section 101 eligibility inquiry is purely a question of law and there is no statutory presumption of eligibility, it should not be subject to the clear and convincing burden of proof. However, 35 U.S.C. § 282 provides that patents are presumed valid and it is well established that a party seeking to overcome that presumption must do so by clear and convincing evidence.See Nystrom v. Trex Co., 424 F.3d 1136, 1149 (Fed. Cir. 2005). This Court is “duty-bound to apply the law as enacted by Congress and signed by the President, and in light of the Federal Circuit’s interpretation thereof. Defendants have not presented any authority indicating that the presumption of validity no longer applies to challenges to a patent’s validity under section 101.”CertusView Techs., LLC v. S&N Locating Servs., LLC,2015 U.S. Dist. LEXIS 7126, *42 n.6, Slip Copy, 2015 WL 269427 (E.D. Va. Jan. 21, 2015). Accordingly, this Court concludes that, until the Federal Circuit or the United Supreme Court mandates otherwise, CQG must show by clear and convincing evidence that the patents-in-suit claim patent-ineligible subject matter.
The Federal Circuit issued another decision affirming patent eligibility yesterday in Trading Technologies v. CQG. I was curious what the amicus brief (Ten Law Professors’ Brief) said; so, I downloaded it from PACER. It is available [here].