It is interesting how rarely the Federal Circuit has issued Rule 36 judgments in appeals from the Court of Federal Claims in the last two months — only two. The CAFC issued opinions in appeals from the CFC in the ratio of 8 opinions to 1 Rule 36 judgment over the last two months.
In contrast, the court issued ten Rule 36 judgments in appeals from district courts over roughly the same period. The CAFC issued opinions in appeals from district courts in the ratio of 7 opinions to 10 Rule 36 judgment over the last two months.
And, in the last two months, the court has issued sixteen Rule 36 judgments in appeals from the PTO. The CAFC issued opinions in appeals from the Patent Office in the ratio of 19 opinions to 16 Rule 36 judgments over the last two months.
The oral argument of the week is from ZEROCLICK, LLC v. APPLE INC., No. 2017-1267 (Fed. Cir. June 1, 2018). This oral argument was interesting in that the panel seemed a bit suspicious about Apple’s motives for asserting that the words “program” and “code” were nonce words. While the claims were not written in Beauregard format, some questioning from the panel — namely, Judge Taranto — suggested that it was suspicious that Apple was seeking a holding that would convert Beauregard claims into means plus function claims. Namely, if the court were to declare that “program” and “code” are nonce words, it would open up many Beauregard claims to 112¶6/112¶(f) attacks. The panel sounded leery of making such a significant change to the law.
Beauregard claims take many forms these days; but, as one example, one might take the form such as that recited in INTERVAL LICENSING LLC v. AOL, INC., No. 2016-2502 (Fed. Cir. July 20, 2018):
18. A computer readable medium, for use by a content display system, encoded with one or more computer programs for enabling acquisition of a set of content data and display of an image or images generated from the set of content data on a display device during operation of an attention manager, comprising:
[1] acquisition instructions for enabling acquisition of a set of content data from a specified information source;
[2] user interface installation instructions for enabling provision of a user interface that allows a person to request the set of content data from the specified information source;
[3] content data scheduling instructions for providing temporal constraints on the display of the image or images generated from the set of content data;
[4] display instructions for enabling display of the image or images generated from the set of content data;
[5] content data update instructions for enabling acquisition of an updated set of content data from an information source that corresponds to a previously acquired set of content data;
[6] operating instructions for beginning, managing and terminating the display on the display device of an image generated from a set of content data;
[7] content display system scheduling instructions for scheduling the display of the image or images on the display device;
[8] installation instructions for installing the operating instructions and content display system scheduling instructions on the content display system; and
[9] audit instructions for monitoring usage of the content display system to selectively display an image or images generated from a set of content data.
Judge Taranto had these exchanges during the oral argument of ZEROCLICK, for example:
And, Judge Hughes had these comments, for example:
You can listen to the entire oral argument below:
In an apparent adjustment to distributed processing, some practitioners now begin their Beauregard claims by reciting: “One or more computer-readable storage media . . .” or the like.
The oral argument of the week is from EQUISTAR CHEMICALS, LP v. WESTLAKE CHEMICAL CORPORATION, No. 2017-1548 (Fed. Cir. July 3, 2018). The panel spent most of the hour long oral argument inquiring into the on-sale bar issue. Questioning got fast and furious at one point with the judges stepping on one another’s questions. Cases discussed included Medicines (en banc), Helsinn, and Plumtree.
The panel remanded the on-sale bar issue back to the district court with instructions to address the following issues:
What were the offers for sale of the product, and when were they made?
Did the offers require the product to be made by the patented method?
If the offers were accepted, was Equistar obligated to supply product made by the patented method?
Before the critical date, did Equistar decide to fill orders with the patented method?
Before the critical date, could orders be filled with products produced by the conventional process or was only product produced by the patented method available?
Was the product produced before the critical date by the patented method made to enable the patentee to make offers before the critical date?
The oral argument of the day is from AMERICAN VEHICULAR SCIENCES LLC v. UNIFIED PATENTS INC., No. 2017-2307 (Fed. Cir. June 19, 2018). The CAFC issued a Rule 36 Judgment in this case. From what I could glean, an important issue concerned whether the Board panel in an IPR properly applied K/S HIMPP v. Hear-Wear Technologies, LLC, 751 F.3d 1362, 1366 (Fed. Cir. 2014) in an obviousness “rejection.”
In K/S HIMPP v. Hear-Wear Technologies, LLC, Judge Lourie, writing for the court, stated:
We recognize that the Board has subject matter expertise, but the Board cannot accept general conclusions about what is “basic knowledge” or “common sense” as a replacement for documentary evidence for core factual findings in a determination of patentability. Zurko, 258 F.3d at 1385-86. To hold otherwise would be to embark down a slippery slope which would permit the examining process to deviate from the well-established and time-honored requirement that rejections be supported by evidence. It would also ultimately “render the process of appellate review for substantial evidence on the record a meaningless exercise.” Id. at 1386 (citing Baltimore & Ohio R.R. Co. v. Aberdeen & Rockfish R.R. Co., 393 U.S. 87, 91-92, 89 S.Ct. 280, 21 L.Ed.2d 219 (1968)).
The Supreme Court has set the date for oral argument in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA Inc. as December 4, 2018.
Last week the Court also granted leave for the Solicitor General to participate in the oral argument as amicus curiae. And, Teva Pharmaceuticals filed its brief, available [here]. Also, an interesting admixture of intellectual property professors have signed on to what appears to be the single an amicus brief in support of Teva.
You can see the briefs at the SCOTUS blog: [Link].
The oral argument of the day is from SIRONA DENTAL SYS. v. Institut Straumann AG, 892 F.3d 1349 (Fed. Cir. 2018). I thought this oral argument was interesting for the comments by Judge Moore about the property rights conveyed by a patent and the potential due process rights of the patentee. It is also interesting for her comments about the rights of a patent challenger in an IPR to be heard with respect to a Board’s proposed combination of references applied to an amended claim (perhaps about 7/9ths through the oral argument). Note that the oral argument took place in February of 2018 — before the Oil States decision by the Supreme Court.
Sorry, I don’t have time to splice out the particular sound bites on this one.
I ran across a C-span video of Professor Constance Jordan discussing her grandfather, Judge Billings Learned Hand. She remarks at one point in the video that Judge Hand’s family nickname was “Jowly Pips,” which was shortened to “J.”
My grandfather, whom we called J — by the way, it was not because he was Judge that we called him J. We called him J because everyone in the family had nicknames, and his nickname was Jowly Pips and it was shortened to J. Don’t ask me why. That is what it was.
Professor Constance Jordan, granddaughter of Judge Learned Hand.
The oral argument of the day is from PGS GEOPHYSICAL AS v. IANCU, No. 2016-2470 (Fed. Cir. June 7, 2018). I thought this was a particularly well-argued case. The oral argument focuses on whether the PTAB made a proper obviousness ruling in view of a combination of references.
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.
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).
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).
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.
