Archive for the ‘Uncategorized’ Category

Quote for the day

Tuesday, April 7th, 2020

The quote for the day comes from Cheese Systems, Inc. v. Tetra Pak Cheese and Powder Sys., Inc., 725 F.3d 1341 (Fed. Cir. 2013):

Among the difficult challenges of applying the doctrine of obviousness is avoidance of even a hint of hindsight. Obviousness “cannot be based on the hindsight combination of components selectively culled from the prior art to fit the parameters of the patented invention.” ATD Corp. v. Lydall, Inc., 159 F.3d 534, 546 (Fed.Cir.1998). In this regard, objective evidence operates as a beneficial check on hindsight. As the court recently explained in describing these “essential components” of the obviousness analysis:

Objective evidence of nonobviousness can include copying, long felt but unsolved need, failure of others, commercial success, unexpected results created 1353*1353 by the claimed invention, unexpected properties of the claimed invention, licenses showing industry respect for the invention, and skepticism of skilled artisans before the invention. These objective considerations can protect against the prejudice of hindsight bias, which often overlooks that “[t]he genius of invention is often a combination of known elements which in hindsight seems preordained.” McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1351 (Fed. Cir.2001).

Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 711 F.3d 1348, 1368 (Fed.Cir.2013) (citations omitted).

Oral Argument of the Day: Corning Optical Communications v. Panduit

Tuesday, April 7th, 2020

The oral argument of the day comes from Corning Optical Communications v. Panduit. I enjoyed this oral argument for its discussion of hindsight in the §103 context. The appellant argued that the patent owner’s claim was simply being used as a template to locate art to reconstruct the claimed invention.

If you put your ear to the ground, you can probably hear a mournful wail from the ghosts of patent-prosecutors-past saying “We feel your pain.”

You can listen to the oral argument here:

You can read the Federal Circuit’s Rule 36 Judgment [here].

Oral argument by telephone

Sunday, March 22nd, 2020

Many of the April oral arguments at the Federal Circuit are scheduled to be conducted by telephone. The court has rarely conducted oral arguments by telephone in the past. If you would like to listen to an example of an oral argument at the Federal Circuit that was conducted by telephone, see this previous post from 2013: [Link].

Jurisdictional statements

Friday, March 13th, 2020

The first step in any precedential opinion issued by the Federal Circuit is an explanation of why it has jurisdiction. The court clearly takes that step seriously and a party cannot even waive the jurisdictional issue. It occurred to me in reading yesterday’s short per curiam disposition that the jurisdictional statement was not present. And, the basis for the court finding that it has jurisdiction is certainly not explained in Rule 36 judgments. Like all things with respect to Rule 36 judgments, we have to assume the court got it right . . . because it didn’t say so.

Quote for the day

Wednesday, March 4th, 2020

“The patent law is designed to serve the small inventor as well as the giant research organization.”

Arkie Lures, Inc. v. Gene Larew Tackle, Inc., 119 F.3d 953 (Fed. Cir. 1997)(Judge Newman, author).


Friday, February 28th, 2020 celebrated a milestone yesterday by reaching one thousand posts.

Thank you for reading and listening!

En banc review requested in Polaris v. Kingston, on Arthrex issues

Thursday, February 27th, 2020

Both the United States and Polaris have requested en banc review in the recent Federal Circuit decision of Polaris v. Kingston. This case presents substantially similar issues as those that were presented in Arthrex. Namely, should PTAB judges be considered principal officers of the United States, who must be nominated by the “President” and confirmed by the Senate? My understanding is that Polaris actually raised this issue in its appeal briefing before the parties in Arthrex did so; but, due to the timing of oral arguments, the Federal Circuit panel in Arthrex was able to rule first (in a very speedy opinion after oral argument). During its oral argument, Polaris argued that its case would be a better vehicle for en banc review than the Arthrex case. I tend to agree; although, I personally would like to see both cases considered together in a joint en banc review.

You can read Solicitor Krause’s en banc petition for the PTO here:

You can read Polaris’ en banc petition here:

Video of oral argument in FTC v. Qualcomm

Saturday, February 22nd, 2020

I seem to remember that someone once commented that the Federal Circuit courtrooms could easily implement video recordings of their oral arguments — if the court chose to do so. The Ninth Circuit has been doing so for many years. Do you think the Federal Circuit should add video recordings?

Here is the video of the recent oral argument at the Ninth Circuit in FTC v. Qualcomm:

Oral argument of the month: In re Google

Thursday, February 13th, 2020

The oral argument of the month is from the order today in In re Google, 2019-126 (Fed. Cir. February 13, 2020). [Link]. The subject matter concerns the rather dry subject of venue; but, the oral argument is very interesting. Moreover, it highlights how the courts are being forced to think carefully about how laws written in the 19th and 20th centuries should be applied in the information age.

A careful listener will hear a reference to The Scarlet Pimpernel by Judge Wallach.

Who is left from the In re Alappat panel?

Friday, January 31st, 2020

Back on Friday, July 29, 1994, the CAFC decided In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994). (A memorable date for me, as I was taking the Colorado bar exam on that date.) The opinion was a highly fractured one with multiple dissents. One of the main issues of contention was whether the Federal Circuit had jurisdiction to hear the appeal, because it stemmed from an enlarged panel decision at the Board. Whether the USPTO had the authority to use such enlarged panels under the statute in place back then had to be determined to decide if the appellate court had jurisdiction.

Judges RICH, NEWMAN, LOURIE and RADER, voted in favor of the court having jurisdiction.

Judges ARCHER, Chief Judge, NIES and PLAGER, concurred in the conclusion.


This issue seems relevant to me because Alappat was mentioned again today in the concurrence in Polaris v. Kingston.

The Arthrex panel’s underestimation of the Director’s power is particularly evident in light of this court’s prior en banc decision in In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994), abrogated on other grounds by In re Bilski, 545 F.3d 943 (Fed. Cir. 2008). Alappat contained strong language about the ability to control the composition and size of panels. See, at 1535 (noting that “the Board is merely the highest level of the Examining Corps, and like all other members of the Examining Corps, the Board operates subject to the Commissioner’s overall ultimate authority and responsibility”). While the duties of the Board and the Director have changed since Alappat was decided, the authority to determine the Board’s composition for reconsideration of an examiner’s patentability determination mirrors the current authority with respect to inter partes review. Compare 35 U.S.C. § 6(c) (2012) (giving the Director authority to designate “at least 3 members of the Patent Trial and Appeal Board” to review “[e]ach appeal, derivation proceeding, post-grant review, and inter partes review”), with 35 U.S.C. §7(b) (1988) (giving the Commissioner power to designate “at least three members of the Board of Appeals and Interferences” to review “adverse decisions of examiners upon applications for patents”). Therefore, I believe the panel should have at least discussed how Alappat’s view of the power to control the Board might impact the Appointments Clause analysis.

Polaris v. Kingston, slip opinion at footnote 5 (Fed. Cir. January 31, 2020)(Judges Hughes and Wallach in concurrence).

One should keep in mind that the Alappat decision was highly fractured. Three of the majority remain on the court, as do three of the dissenters. However, an en banc panel from an appeal of either Arthrex or Polaris would only include full time circuit judges — not senior judges. Therefore, Judges Newman and Lourie would be the only surviving members from Alappat to serve on such an en banc panel.

This prior post provides some historical context for Alappat, as well: [In 1992, 75% of the BPAI judges objected to the manipulation of the composition of Board panels].

Since Judge Hughes compared the current statute to a previous statute with respect to the Board, I wonder if there is any merit in going back further in time to when the Supreme Court decided Brenner v. Manson? See this earlier post for more on that, including Supreme Court audio: [Brenner v. Manson — footnote 6.].

Oral argument of the week: Telesign v. Twilio

Monday, January 27th, 2020

The oral argument of the week is from TELESIGN CORPORATION v. TWILIO, INC., No. 2019-1312 (Fed. Cir. Jan. 9, 2020).

I thought this oral argument might interest those of you who like to follow patent eligibility issues.

The panel of Judges Dyk, Taranto, and Chen issued a Rule 36 Judgment [Link].

The oral argument is available here:

Denver Patent Office to host biotech roundtable

Saturday, January 25th, 2020

If you are in Denver on Thursday, January 30th, the Denver Patent Office is hosting a biotech roundtable:


Thursday, January 30, 2020

1:30 p.m. – 4:00 p.m.

Registration & Networking begins at 1:00 p.m.

United States Patent and Trademark Offices

1961 Stout St

15th Floor Conference Room

Denver, CO 80294

1:00 p.m. – 1:30 p.m. Registration and Networking

1:30 p.m. – 1:40 p.m. Introductions

•     Molly Kolcialski, Director of the Rocky Mountain Regional Office of the USPTO

•     Jerry Lorengo, Director of TC3700 (medical, surgical, and diagnostic instruments)

•     Andrew Wang, Director of TC1610 (organic compounds: bio-affecting, body treating, drug delivery, steroids, herbicides, pesticides, cosmetics, and drugs)

1:40 p.m. – 2:10 p.m. Restriction Practice, Renee Claytor, SPE 1651 (Fermentation, Microbiology, Isolated and Recombinant Proteins/Enzymes)

2:10 p.m. – 2:30 p.m. Application Initiatives/Online resources, Ram Shukla, Acting Assistant Regional Director of the Rocky Mountain Regional Office of the USPTO

2:30 p.m. – 2:45 p.m. After-final practice, Raul Tamayo, Senior Legal Advisor, Office of Patent Legal Administration

2:45 p.m. – 3:00 p.m. Break

3:00 p.m. – 4:00 p.m. Question and Answer Session, Roundtable Discussion to include discussions on 101, written description, and enablement

Registration Link.

Updated Federal Circuit Oral Argument Guidelines

Monday, January 20th, 2020

The Federal Circuit has updated its guidelines for oral arguments. From the Federal Circuit website:


The Clerk’s Office has released an updated version of its Guide for Oral Argument, which incorporates several changes including a revised Courtroom Decorum Policy and new Guidelines for Counsel During Argument.  This document and other resources are available on the Argument Resources page of the court’s website.   

Among other changes, the guide has added a new section VI:

VI. Guidelines for Counsel During Argument

The following guidelines are provided to assist counsel in making the best use of the allotted time at argument.

  • Counsel should not interrupt a judge.
  • Assume the court is familiar with the facts of the case.
  • Minimize reading.
  • Have a copy of the appendix and be familiar with the location of items.
  • Assume the court is familiar with the briefs and appendix contents.
  • When raising new authority at argument, provide a copy to opposing counsel ahead of time.
  • Stop your argument when your time expires unless the court permits you to continue.
  • Answer questions directly.
  • Avoid pejoratives.
  • When referring to specific portions of the appendix, provided accurate page citations.
  • Do not respond to a question with an unqualified citation to your brief in response to a question
  • Counsel seated at counsel tables should neither make inappropriate facial gestures nor engage in exaggerated gesticulation.

Utah IP Summit

Wednesday, January 15th, 2020

It looks like the Utah State Bar has another outstanding line-up of speakers for its IP Summit on February 21st. [Link]. Chief Judge Prost and Director Iancu are a couple of the keynote speakers, as well.

Windy City

Monday, December 30th, 2019

It seems as though the decision in Facebook v. Windy City Innovations (CJ Prost, O’Malley, Plager) should be handed down soon. I noted the oral argument of this case back in August; but, you might want to check out the oral argument if you missed that earlier post. It is an interesting and well-argued oral argument. The case concerned statutory interpretation of the AIA’s joinder statute.

A few of the issues that cropped up in the oral argument were:

  1. Why didn’t the PTO intervene in the case to address whether its precedential opinion should be given Chevron deference?
  2. Should the PTO’s precedential opinion panel (POP) decisions be given Chevron deference?
  3. Did Congress error by referring to infringement of a patent vs. infringement of a patent claim(s) in the AIA?
  4. Is the statute ambiguous?
  5. Is there a clerical error in the statute?
  6. Should the court ask the PTO for its thoughts — even though the PTO chose not to weigh-in in the first instance? (Note: I seem to recall that the court did later ask the PTO for its thoughts.)

Judge Plager expressed the view that the USPTO’s precedential opinion panel decisions were not entitled to Chevron deference:

You can listen to the entire oral argument here:

The briefing in an earlier iteration of this case is available at this prior post: [ ].