Primary reference/secondary reference

May 21st, 2024

The Federal Circuit overruled the Rosen-reference test today with respect to design patents. The Rosen-reference test utilized a “primary” reference for obviousness analysis. In some oral arguments concerning utility patents, I think some of the younger Federal Circuit judges have infused “primary reference” into oral arguments when informally discussing utility patent obviousness. That always alarmed me, as it seemed improper. Today, however, I saw this quote from Judge Rich:

In a case of this type where a rejection is predicated on two references each containing pertinent disclosure which has been pointed out to the applicant, we deem it to be of no significance, but merely a matter of exposition, that the rejection is stated to be on A in view of B instead of on B in view of A, or to term one reference primary and the other secondary. It would perhaps have saved much argument of the kind we have before us if the Patent Office had stayed with its rejection of the claims as unpatentable over A and B “considered together” and had merely stated its reasons for such rejection without formal alinement of the references. Fifteen years ago this court pointed out in In re Cowles, 156 F.2d 551, 554, 33 CCPA 1236, that such differing forms of expression did not constitute different grounds of rejection, were of little consequence, and that basing arguments on them was “attempting to make a mountain out of a mole-hill.”

Application of Bush, 296 F.2d 491, 496 (C.C.P.A. 1961).

Oral Arguments of the Federal Circuit’s Precedential IP Opinions of 2023 (Part I)

May 5th, 2024

 Opinion LinkOral Argument Link
1DIONEX SOFTRON GMBH v. AGILENT TECHNOLOGIES, INC.Dionex Softron GmbH v. Agilent Technologies, Inc. (mp3)  
2In Re GOOGLE LLCIn Re Google LLC  
3GRACE INSTRUMENT INDUSTRIES, LLC v. CHANDLER INSTRUMENTS COMPANY, LLCGrace Instrument Industries, LLC v. Chandler Instruments Company, LLC  
4PERSONALIZED MEDIA COMMUNICATIONS, LLC v. APPLE INC.Personalized Media Communications, LLC v. Apple Inc.      
5CYWEE GROUP LTD. v. GOOGLE LLCCyWee Group Ltd. v. Google LLC  
6CHROMADEX, INC. v. ELYSIUM HEALTH, INC.ChromaDex, Inc. v. Elysium Health, Inc.  
7SSI TECHNOLOGIES, LLC v. DONGGUAN ZHENGYANG ELECTRONIC MECHANICAL LTD.SSI Technologies, LLC v. Dongguan Zhengyang Electronic Mechanical Ltd.  
8MINERVA SURGICAL, INC. v. HOLOGIC, INC.Minerva Surgical, Inc. v. Hologic, Inc.  
9LITE-NETICS, LLC v. NU TSAI CAPITAL LLCLite-Netics, LLC v. Nu Tsai Capital LLC  
11JAZZ PHARMACEUTICALS, INC. v. AVADEL CNS PHARMACEUTICALS, LLCJazz Pharmaceuticals, Inc. v. Avadel CNS Pharmaceuticals, LLC  
12REGENTS OF THE UNIVERSITY OF MINNESOTA v. GILEAD SCIENCES, INC.Regents of the University of Minnesota v. Gilead Sciences, Inc.  
13APPLE INC. v. VIDALApple Inc. v. Vidal  
15ALTERWAN, INC. v. AMAZON.COM, INC.AlterWAN, Inc. v., Inc.  
16ROKU, INC. v. UNIVERSAL ELECTRONICS, INC.Roku, Inc. v. Universal Electronics, Inc.  
17PHILIP MORRIS PRODUCTS S.A. v. ITCPhilip Morris Products S.A. v. ITC  
18IRONBURG INVENTIONS LTD. v. VALVE CORPORATIONIronburg Inventions Ltd. v. Valve Corporation  
19SALAZAR v. AT&T MOBILITY LLCSalazar v. AT&T Mobility LLC  
20SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITEDSAS Institute, Inc. v. World Programming Limited  

Don’t forget that you can increase the playback speed in order to decrease the time it takes to listen to an oral argument recording.

Just kinda cool

May 2nd, 2024

I saw this invention mentioned in a news story today. Just thought it was kinda cool.

Happy 20th Birthday Patently-O

April 6th, 2024

Congratulations to Patently-O on turning twenty years old today!

Time flies.

Two years between oral argument and opinion in the Fourth Circuit

February 23rd, 2024

One thing I like about some of the circuits other than the Federal Circuit is that they print the date of oral argument on the published opinion. The Fourth Circuit is one such circuit. In Sony Music Entertainment v. COX COMMUNICATIONS, INCORPORATED, No. 21-1168 (4th Cir. Feb. 20, 2024), the Fourth Circuit heard oral argument on March 9, 2022 and decided the appeal on February 20, 2024 — roughly two years between oral argument and decision. At the Federal Circuit, you might be the target of a formal complaint if you took that long to complete your opinion.

IPWatchdog highlighted this case earlier today. I thought the oral argument might be of interest given that a billion dollar damages award for copyright infringement was reversed for a new damages trial.

[It is interesting to note how the Fourth Circuit records its oral arguments. I’m not sure what the technical term is for the audio technique, perhaps “stereo”; but, the attorneys are recorded on one channel while the judges are recorded on a second channel. Thus, during playback, it is much easier to hear the conversational flow between the attorneys and the judges. At least on my computer, the attorneys’ voices are coming out of the left speaker and the judges’ voices are coming out of the right speaker. The Federal Circuit and perhaps the Supreme Court seem to record their oral arguments in mono.]

Chevron deference

January 17th, 2024

The Supreme Court of the United States heard oral argument today in two cases challenging the doctrine of Chevron deference.

I queried back in May of 2023 what would be the impact on patent law if Chevron deference is removed by the Court — and, in December of 2018 whether there should be a pro-inventor/pro-entrepreneur canon of construction when a patent statute is ambiguous.

You can listen to today’s oral arguments here:

Relentless, Inc. v. Dept. of Commerce

Loper Bright Enterprises, Inc. v. Raimondo, Sec. of Comm.

Season’s Greetings

December 27th, 2023

Anderson et al. v. Griswold oral argument

December 19th, 2023

The Supreme Court of the State of Colorado (my home state) decided Anderson et al. v. Griswold today. I thought the oral argument might be of interest.

Supreme Court Oral Argument of SEC v. Jarkesy

November 29th, 2023

The Supreme Court held oral argument today in SEC v. Jarkesy. The importance of the case and the potential impact on administrative law is perhaps reflected by the fact that the Court devoted an unusually long 2 hours and 17 minutes to oral argument.

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

The transcript is available here: [Link].

Briefing continues in Securities and Exchange Commission v. Jarkesy

September 15th, 2023

The Supreme Court is midway through its briefing in Securities and Exchange Commission v. Jarkesy. Readers might find some of the briefing interesting for the references to the Supreme Court decision in United States v. Arthrex. [Link to briefs].

Oral argument date to be determined.

Trespass to Chattels

September 14th, 2023

The Ninth Circuit heard oral argument in Best Carpet Values, Inc. v. Google, LLC, yesterday. The plaintiffs below asserted trespass to chattels (among other things) based on alteration of a website display.

The district court framed trespass to chattels as follows:

Trespass to chattels lies where an intentional interference with the possession of personal property has caused injury. Intel Corp. v. Hamidi, 30 Cal. 4th 1342, 1350-51 (2003)see also Brodsky v. Apple Inc., 2019 U.S. Dist. LEXIS 148808, at *8 (N.D. Cal. Aug. 30, 2019). “Dubbed by Prosser the `little brother of conversion,’ the tort of trespass to chattels allows recovery for interferences with possession of personal property `not sufficiently important to be classed as conversion, and so to compel the defendant to pay the full value of the thing with which he has interfered.'” Hamidi, 30 Cal. 4th at 1350(quoting Prosser & Keeton, Torts (5th ed. 1984) ยง 14, pp. 85-86). Under California law, “[i]n cases of interference with possession of personal property not amounting to conversion, `the owner has a cause of action for trespass or case [sic], and may recover only the actual damages suffered by reason of the impairment of the property or the loss of its use.'” In re iPhone Application Litig., 844 F. Supp. 2d 1040, 1069 (N.D. Cal. 2012)(quoting Hamidi, 30 Cal. 4th at 1351).

BEST CARPET VALUES, INC. v. GOOGLE LLC, No. 5: 20-cv-04700-EJD (N.D. Cal. Sept. 24, 2021) [Link].

You can watch yesterday’s oral argument at the Ninth Circuit here:

Quiz: Farrago of Fumblings

August 11th, 2023

Today’s quiz asks what area of legal precedents was this quote describing:

a farrago of fumblings which have suffered too long from a surfeit of deficient theories.

A: Takings law

B: Patent eligibility law

C: Patent eligibility law

D: Patent eligibility law

Read the rest of this entry »

The Black Hole of Patent Eligibility

August 2nd, 2023

by Bill Vobach

I ran this cartoon back in 2020; but, I thought today might be a good day to run it again [Link].

Audio bites of the day

July 14th, 2023

There were some fun audio bites in the oral argument of CR BARD, INC. v. Medical Components, Inc., No. 2022-1136 (Fed. Cir. Feb. 17, 2023).

Judge Hughes had some frank comments about the court injecting printed matter into patent eligibility determinations:

You can listen to the entire oral argument here:

Oral argument of the day: Ill-gotten gains and the Fifth Circuit

July 11th, 2023

I saw a blurb yesterday in IPLaw360 that highlighted an appeal from a Fifth Circuit case that will be heard by the Supreme Court next term. The case is Jarkesy v. SEC, 34 F.4th 446 (5th Cir. 2022).

Some of the issues raised in the oral argument at the Fifth Circuit are somewhat related to those that were raised in the Arthrex and Oil States decisions. The Oil States decision is also discussed in the briefing to the Supreme Court, as well as in the dissenting opinion at the Fifth Circuit.

You can listen to the Fifth Circuit oral argument here:

The issues presented in the appeal to the Supreme Court are:


  1. Whether statutory provisions that empower the
    Securities and Exchange Commission (SEC) to initiate
    and adjudicate administrative enforcement proceedings
    seeking civil penalties violate the Seventh Amendment.
  2. Whether statutory provisions that authorize the
    SEC to choose to enforce the securities laws through an
    agency adjudication instead of filing a district court ac-
    tion violate the nondelegation doctrine.
  3. Whether Congress violated Article II by granting
    for-cause removal protection to administrative law
    judges in agencies whose heads enjoy for-cause removal