March 12th, 2015

Just a quick reminder that comments on the PTO’s interim guidance on patent subject matter eligibility are due by March 16th.  From the PTO website:


The USPTO is interested in receiving public feedback on all aspect of the Interim Eligibility Guidance, including the Guidance itself, the claim examples, and the training slides.

Any member of the public may submit written comments by electronic mail message over the Internet addressed to 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.

Ariosa v. Sequenom Oral Argument

March 4th, 2015

Listening to the AIPLA presentation on patent eligibility a few weeks ago, it sounded as though one of the Federal Circuit cases that the PTO is watching is Ariosa Diagnostics, Inc. v. Sequenom, Inc. That case was argued on November 7, 2014 and has not yet been decided.

The parties drew a thoughtful panel — judges Reyna, Linn, and Wallach.

You can listen to the oral argument here: [Listen].

A Connecticut Yankee in King Arthur’s Court

March 1st, 2015

At the opening ceremonies for the Denver patent office, Denver’s mayor told the story of his first day on the job and receiving a call from a local patent attorney.  The patent attorney was calling to recruit the mayor’s help in encouraging the USPTO to select Denver as one of the regional locations for the Patent Office. I forget if the mayor mentioned this or not; but, that has an uncanny parallel to Mark Twain’s A Connecticut Yankee in King Arthur’s Court:

That reminds me to remark, in passing, that the very first official thing I did in my administration — and it was on the very first day of it, too — was to start a patent office; for I knew that a country without a patent office and good patent laws was just a crab, and couldn’t travel any way but sideways or backways.

By the way, here is an update on the local patent rules being implemented by the U.S.District Court for the District of Colorado:

The United States District Court for the District of Colorado on June 4, 2014, formally adopted a Pilot Program that Implements Proposed Patent Rules. The Pilot Program is designed to facilitate the efficient management of patent cases through the use of local rules collaboratively developed with members of the local patent bar and with input from public comment. Patent cases following the procedures and deadlines set forth in the Pilot Project Local Patent Rules, began August 1, 2014.

The details of the Pilot Program, the Pilot Project Local Patent Rules, and the form Proposed Scheduling Order for a Patent Case can be found at the U.S. District Court’s website at: or can be obtained at the office of the Clerk of the Court at the Alfred A. Arraj U.S. Courthouse Annex located at 901 19th Street, Denver, Colorado 80294.

GW §101 Symposium

February 26th, 2015

Lisa Larrimore Ouellette has a post on the recent GW symposium on patent eligible subject matter.  Looks like good material.  Chief Judge Michel (ret.) took part.  Here’s the link: [Link].

Non-dispositive claim construction arguments

February 10th, 2015

Sometimes the Federal Circuit seems to send mixed messages.  In the oral argument of Cradle IP, LLC v. Texas Instruments, Inc. that took place on December 2, 2014, Judge Dyk chastised the appellant for challenging claim constructions by the district court that were unnecessary for reviewing the judgment in the case.  [Listen].  However, yesterday in Lexington Luminance, LLP v., Inc., Judge Lourie writing for the court noted:

On appeal, Lexington challenges all five constructions. Amazon asks us to decline review because those constructions are unrelated to the invalidity judgment. In the alterative, Amazon argues that those constructions should generally be affirmed.

Under our precedent, we have the discretion to review a non-dispositive claim construction in the interest of judicial economy, if the construction may become important on remand. Interval Licensing, 766 F.3d at 1376 (citing Deere & Co. v. Bush Hog, LLC, 603 F.3d 1349, 1357 (Fed. Cir. 2012); Advanced Software Design Corp. v. Fiserv, Inc., 641 F.3d 1368, 1378 (Fed. Cir. 2011)). Because we now vacate the invalidity judgment and remand for further proceedings at the district court, we address the claim construction issues raised by the parties.

By the way, the Cradle IP v. Texas Instruments case is a “configuration” case. So, even though the Federal Circuit issued a rule 36 decision, the oral argument recording has some discussion of Nazomi, Typhoon Touch, and other configuration cases. There was no mention of Finjan, however.

What would Chief Justice Marshall say?

January 31st, 2015

I was reminded of Chief Justice Marshall’s statement for the Court in Marbury v. Madison:

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.

Chief Justice John Marshall for the Court, Marbury v. Madison, 5 U.S. 137, 177 (1803).

One wonders what Chief Justice Marshall would think of the Court’s opinions in recent patent and copyright cases:

The question before us is whether the claims do significantly more than simply describe these natural relations. To put the matter more precisely, do the patent claims add enough to their statements of the correlations to allow the processes they describe to qualify as patent-eligible processes that apply natural laws? We believe that the answer to this question is no.

Justice Breyer for the Court, Mayo Collaborative v. Prometheus Labs., 132 S. Ct. 1289, 566 U.S. 10, 182 L. Ed. 2d 321 (2012)(emphasis in the original).

In any event, we need not labor to delimit the precise contours of the “abstract ideas” category in this case. It is enough to recognize that there is no meaningful distinction between the concept of risk hedging in Bilski and the concept of intermediated settlement at issue here. Both are squarely within the realm of “abstract ideas” as we have used that term.

Justice Thomas for the Court, Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. 2347, 573 U.S., 189 L. Ed. 2d 296 (2014).

In other cases involving different kinds of service or technology providers, a user’s involvement in the operation of the provider’s equipment and selection of the content transmitted may well bear on whether the provider performs within the meaning of the Act. But the many similarities between Aereo and cable companies, considered in light of Congress’ basic purposes in amending the Copyright Act, convince us that this difference is not critical here. We conclude that Aereo is not just an equipment supplier and that Aereo “perform[s].”

Justice Breyer for the Court, American Broadcasting v. Aereo, Inc., 134 S. Ct. 2498, 573 U.S., 189 L. Ed. 2d 476 (2014). (The dissenting opinion characterized this as the “looks like cable TV standard.”)

Insofar as there are differences, those differences concern not the nature of the service that Aereo provides so much as the technological manner in which it provides the service. We conclude that those differences are not adequate to place Aereo’s activities outside the scope of the Act.

Justice Breyer for the Court, American Broadcasting v. Aereo, Inc., 134 S. Ct. 2498, 573 U.S., 189 L. Ed. 2d 476 (2014).

USPTO Patent Eligibility Examples

January 28th, 2015

Here’s a link to the new USPTO patent eligibility examples, if you were looking for them:  [Link].

Judge Pfaelzer’s §101 opinion in Enfish v. Microsoft

January 24th, 2015

Here is another §101 opinion by Judge Pfaelzer, from the case of Enfish v. Microsoft:  [Enfish].

Judge Pfaelzer’s Opinion in Cal. Tech. v. Hughes

January 23rd, 2015

If you are feeling beaten down by all the §101 cases finding inventions patent-ineligible, you might find Judge Pfaelzer’s opinion in Cal. Inst. of Tech. v. Hughes Communs., Inc. refreshing.

I couldn’t find a copy of the opinion on the internet; so, you can view it [here].

More Gifts for the Discerning Patent Professional

January 20th, 2015

With Valentine’s Day approaching you may be wondering what to get that special patent professional in your life.  Here are a few options:

1)  An oldie, but a goodie:  The IP Man movie poster.

2)  The Mayo v. Prometheus T-Shirt

Was your Valentine an amicus in Mayo v. Prometheus?  Celebrate the Supreme Court and the clarity that it has brought to 35 U.S.C. §101.

t-shirt-front1 t-shirt-back

3)  Special Effects Nose Wax

A patent attorney can always use more nose wax despite what the Supreme Court said in White v. Dunbar, 119 U.S. 47 (1886):

Some persons seem to suppose that a claim in a patent is like a nose of wax, which may be turned and twisted in any direction, by merely referring to the specification, so as to make it include something more than, or something different from, what its words express. The context may undoubtedly be resorted to, and often is resorted to, for the purpose of better understanding the meaning of the claim, but not for the purpose of changing it and making it different from what it is. The claim is a statutory requirement, prescribed for the very purpose of making the patentee define precisely what his invention is, and it is unjust to the public, as well as an evasion of the law, to construe it in a manner different from the plain import of its terms.”