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Kingston filed its brief this week in the Polaris v. Kingston case pending at the Federal Circuit. The brief had some sort of informality and has not been accepted yet by the court; but, I thought it was worth posting anyway. You can review the brief here:

As I mentioned before, it will be interesting to follow this case. Kingston’s brief not surprisingly agrees with the DOJ’s brief that PTAB judges are inferior officers under the control of the Director. Therefore, the argument goes that they do not need to be appointed by the President and confirmed by the Senate, in contrast to Polaris’ position.

I thought it was interesting that the brief mentions that the Director currently sits on some IPR panels:

Indeed, the Director currently sits on a number of active IPR panels. See, e.g., Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, -00063, -00064, -00065, -00074, -00084; HTC Corp. et al v. Elec. Scripting Prods., Inc., IPR2018-01031; -01032; Lite-On Tech. Corp. v. Darfon Elecs. Corp., IPR2018-01062.

There is an interesting case wending its way through the briefing process at the Federal Circuit, Polaris v. Kingston. In its opening brief Polaris asserts that APJ’s cannot extinguish patent rights via an IPR because they have not been appointed by the President and confirmed by the Senate.

The USPTO has intervened in the case. In its brief filed last week, the USPTO asserts that APJ’s are “Inferior Officers whose appointment Congress permissibly vested in the Secretary of Commerce.”

It sounds as if this will be an interesting case to follow.

Polaris’ opening brief is available here:

The USPTO’s intervenor brief is available here:

The oral argument of the day comes from BLACKBIRD TECH LLC v. LULULEMON ATHLETICA, INC., No. 2017-2350 (Fed. Cir. Sept. 6, 2018). One of the issues on appeal was how the following statement in the specification should be interpreted:

“Typically the sports bra will be constructed of two or more plies of material sewn or otherwise laminated together to provide sufficient tensile strength”

Should it be interpreted as the patent drafter being a lexicographer and redefining “laminated” to include “sewn”? The oral argument suggests that Judges Dyk, Wallach, and Hughes did not agree that such a statement was enough to make “sewn” a species of the genus “laminated.” However, the Rule 36 Judgment is rather brief on that topic.

There is an interesting similarity in the Blackbird language to the language that was in dispute in the Helsinn v. Teva case:

“invention [that] was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention”

and whether the use of “otherwise” put a gloss on the “on sale” language.

You can listen to the oral argument here:

If you enjoy listening to the point-counterpoint exchange during oral arguments, you might also enjoy watching the debates that take place on the floor of Britain’s Parliament each week. Each Wednesday, the Prime Minister fields questions from Parliament. The sessions tend to be rather raucous. Here’s the most recent one:

You can see previous sessions at this [link].

I think a lot of practitioners will take note of Chief Judge Prost’s precedential opinion for the court today in TEK Global, S.R.L., et al. v. Sealant Systems Int’l. Inc., et al. In assessing whether a phrase invoked 112¶6/112¶(f), Chief Judge Prost looked to the dependent claims to see if they indicated that the purported means plus function phrase was structural:

Even more, the dependent claims suggest that § 112, ¶ 6 does not govern. Indeed, they “add limitations that either describe particular structural features or flesh out whether the term has a particular structural meaning.”Diebold, 899 F.3d at 1298. For example, dependent claim 27 recites “at least one of said conduits . . . comprises a hose.” ’110 patent col. 8 ll. 12–14. And SSI does not dispute that the “hose” disclosed in the ’110 patent is structural.

You can read Chief Judge Prost’s precedential opinion for the court [here].

You can read the referenced Diebold Nixdorf v. ITC opinion [here].

The PTO might want to take note that its recent guidance entitled “Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. 112” does not mention the Diebold case from August 2018 nor the use of dependent claims to analyze purported MPF terms. A discussion of Diebold and TEK Global would be a useful addition to the recent guidance.

I don’t know if the data is available; but, I think it would be a powerful article if someone could tabulate the number of patent eligibility rejections that have been made in the past year relative to inventor city. Interested advocates could then send the data to each congressional member. A congressional member might have a heightened awareness when he/she realized how many inventors, businesses, potential businesses, and potential jobs in that congressional member’s city are being impacted by the patent eligibility quagmire.

I was talking with one of my clients today about how patent law allows multiple references to be combined together. His mind immediately jumped to the mythological Chimera — a fire-breathing creature formed from the body of a lion, head of a goat, and tail of a snake. That struck me as quite an appropriate characterization of many §103 invalidity arguments — three things that have nothing to do with one another that are merely cobbled together to make a fire-breathing monstrosity.

I checked the CCPA and CAFC decisions and do not see any references to the mythological Chimera. Perhaps a decision in the future will note that “the section 103 analysis relied upon Chimeric hindsight and is therefore reversed.”

See also [Frankenstraction].

The USPTO has issued a memorandum to the patent examining corps in response to the Supreme Court’s decision in Helsinn Healthcare, S.A. v. Teva Pharamaceuticals USA, Inc.

The memorandum is available at this [link].

The Supreme Court of the United States heard oral argument in the case of Return Mail, Inc. v. United States Postal Service last week. You can listen to the recording of the oral argument here:

To an electrical engineer like me, the Hachimoji DNA discussed in this New York Times article [link] (https://www.nytimes.com/2019/02/21/science/dna-hachimoji-genetic-alphabet.html ) seems pretty groundbreaking.

It will be interesting to see how it influences patent claiming for my friends in the biotech area. In a quick search, I did not see any issued patents that reference “Hachimoji.”

The Supreme Court heard oral argument today in the the patent case of Return Mail, Inc. v. United States Postal Service, et al. The transcript of the oral argument is available [here].

The question presented is:

1.  Whether the government is a “person” who may petition to institute review proceedings under the AIA.

The oral argument of the week is from the September oral argument of AUTOMATION MIDDLEWARE SOLUTIONS, INC. v. INVENSYS SYSTEMS, INC., No. 2017-2187 (Fed. Cir. Sept. 17, 2018). I thought this oral argument was particularly interesting for Judge Hughes’ comments about where one should draw the line when claims are related to software.

You can listen to the oral argument [here].

You can read the CAFC’s Rule 36 Judgment (Newman, Wallach, Hughes) [here].

Having survived the most recent polar vortex, the Federal Circuit will be traveling to Minnesota in April to hear oral arguments. You can read more about the visit [here].

The Denver Patent Office will be offering a free three-day course in March titled STEPP, or Stakeholder Training on Examination Practice and Procedure. Here is more info from the Colorado Bar Association’s IP Section:

STEPP – Agent/Attorney 3-Day Course in Denver
March 5-7, 2019 at the Denver USPTO

Please email STEPPTraining@USPTO.gov to sign up for this free training.
About the Course:
STEPP, or Stakeholder Training on Examination Practice and Procedure, is designed to provide external stakeholders with a better understanding of how, and why, an examiner makes decisions while examining a patent application. Courses provided are free to attend.  In addition, CLE credit may be available. 

The STEPP program is an important part of the USPTO’s mission to deliver intellectual property information and education to external stakeholders. It is administered by theOffice of Patent Training (OPT).
Agent/ Attorney 3-Day Course on Examination Practice and Procedure
This course is limited to those who have passed the Patent Bar for the purpose of representing applicants before the USPTO.  The training makes use of statutes, rules, and guidelines relevant to practicing before the USPTO. Training focuses on how patent examiners examine patent applications according to the Manual of Patent Examining Procedure (MPEP).  The training is broken into three separate modules: Day 1, Day 2, and Day 3.  Day 1 focuses on the role of an examiner and the steps an examiner takes when reading an application for the first time.  Claim interpretation and 35 USC 101 and 112 are emphasized on Day 1.  Day 2  uses the information gathered during Day 1 to plan a search, conduct a search, and map prior art to claims using 35 USC 102 and 103.  Day 3 focuses on writing of an office action, as well as post-examination options such as the Patent Trial and Appeal Board (PTAB) and the Central Reexamination Unit (CRU).  Similar to the training of entry level examiners, a sample application will be provided to each trainee and will be the focus of exercises during each module which build upon each other.  For a detailed scheduled please view the Agent/Attorney 3-Day Course Schedule.  Please note, the content and schedule of this course is subject to change. 
What is the purpose of the STEPP program? 
Increase transparency by making USPTO training on examination practice and procedure available to external stakeholders
Provide perspective to external stakeholders by detailing what an examiner considers in preparing an office action
Aid in compact prosecution by disclosing to external stakeholders how examiners are taught to use the MPEP to interpret an applicant’s disclosure 
What is NOT the purpose of the STEPP program?   
The STEPP program is not intended for applicants to discuss pending applications with patent examiners or to circumvent normal communications between applicants or applicants’ representatives and patent examiners. Applicants should continue to resolve any application-specific issues through the examiner of record or the Ombudsman program, as appropriate.

I am no fan of Rule 36 judgments. However, I often wonder how backed up the Federal Circuit’s docket would be if the court did not rely on them so heavily. It might make for an interesting article if someone were to use some rough assumptions and calculate how backed up the court’s docket would be today if the court did not use Rule 36 judgments so enthusiastically.

I suspect that such an article would be cited quite a bit in Supreme Court appellate advocacy.