717 Madison Place

I believe Monday was the first time that Judge Tiffany Cunningham has sat for oral argument as the Federal Circuit’s newest judge. In her initial panel, she was paired with the Chief Judge and Judge Dyk. I’m not sure if that pairing was the Federal Circuit’s version of hazing or of moral support. Judge Cunningham clerked for Judge Dyk after law school.

Judge Cunningham asked a few questions during the first case for oral argument. You can hear some samples here:

There had been some discussion during the oral argument of not wanting to issue an opinion that ruined the law. During rebuttal, one of the advocates tried to reassure Chief Judge Moore that she would not ruin the law by ruling in his client’s favor. Chief Judge Moore quickly quipped that she knew she wasn’t going to ruin the law. Listen:

I was looking for a recording on YOUTUBE of yesterday’s symposium on patent law by the SMU Dedman School of Law and instead ran across this previous symposium session about the PTAB:

One of the interesting tidbits from the video is when Professor Semet shares some of her research about the backgrounds of the PTAB judges. You can see her discussion beginning about the 23 minute mark of the video.

Through a FOIA request and follow-on research she has reviewed the backgrounds of about one half of the PTAB judges and determined the following statistics:

38% are female;

23% were former examiners;

13% were formerly PTAB lawyers or from the USPTO Solicitor’s Office;

19% were former Federal Circuit clerks;

85% have private practice experience;

40% are engineers/scientists;

48 is the median age;

29% attended D.C. area law schools;

74% did not attend T14 law schools.

Here’s a link to an earlier video where Professor Semet discusses the research (beginning about the 10 minute mark) [Link].

I’m surprised by the “40% are engineers/scientists” number. That’s all? Perhaps that statistic is actual work experience as an engineer/scientist, rather than just degree earned.

There is an interesting virtual symposium scheduled for this Friday. It is being hosted by SMU Dedman School of Law, the FedCircuit Blog, and the Tsai Center for Law, Science, and Innovation.

The three topics look really interesting.

Panel I: The Rise of the Western District of Texas: Forum Selling and Forum Shopping in Patent Trial Courts; Or, the Failure of T.C. Heartland

Panel II: Arthrex, the PTAB, and the USPTO Director’s New (Temporary?) Authority over Patent Opposition Proceedings 

Panel III: The Federal Circuit: Is Its Exclusive Jurisdiction Still Needed Given the Supreme Court’s Renewed Interest in Resolving Disputes over Patent Law?

More details and registration information are available at this [LINK].

I thought the third panel looked particularly intriguing. That panel is focused on the impact of the Supreme Court in patent law and whether there is a continuing necessity for the Federal Circuit. It would seem that there are some other factors at play, as well, when it comes to whether there is a continuing necessity for the Federal Circuit. For example, given the Federal Circuit’s ineptitude in framing a workable rule for §101 that fosters innovation in today’s information economy, is the CAFC really serving the purpose it was designed for? The Federal Circuit hasn’t voted to take a patent case en banc in over three years — again, is it really serving the purpose it was designed for? The Federal Circuit has to rely heavily on Rule 36 Judgments to dispose of its docket of cases. Would it be better to distribute that workload of cases across the other circuits so that the case law could be developed with more written opinions? (I’m just being a gadfly with these questions; but, I do see them as significant failures by the court in recent years.)

The oral argument of the day is from the CAFC oral argument in TYLER RESEARCH CORPORATION v. ENVACON, INC., No. 2020-2081 (Fed. Cir. Apr. 7, 2021). I enjoyed listening to this oral argument recording because it dealt with forum non conveniens issues. It brought back memories of first year civil procedure class.

You can listen to the oral argument here:

The Rule 36 Judgment is available here: [Link].

Judge Dyk provided a historical overview of forum non conveniens in

The Federal Circuit updated its web site the other day. The new oral argument list shows that one of the first oral arguments that was made available to the public by the Federal Circuit web site is from SmithKline Beecham Corp. v. Apotex Corp., 365 F.3d 1306 (Fed. Cir. 2004).

I thought this might be an interesting “Oral Argument of the Day” for several reasons. First, it was one of the last oral arguments made by Ford Farabow of Finnegan Henderson Farabow Garrett and Dunner at the Federal Circuit. Second, Judge Rader (retired) was the presiding judge and he always held lively oral arguments. This is no exception. Third, it was an appeal from a Northern District of Illinois trial where it appears that Judge Posner of the Seventh Circuit sat by designation. Fourth, the claim recited only four words with no preamble: “Crystalline paroxetine hydrochloride hemihydrate.” 

I’m not sure why this oral argument was recorded in January of 2004. Perhaps the Federal Circuit was experimenting with recording oral arguments at that time. During 2006, the Federal Circuit began a regular practice of recording oral arguments.

The opinion for the court is available here: [Link].

One interesting sound bite by Judge Rader, commenting on the district court’s claim construction as being policy driven, is available here:

The recording of the entire oral argument is available here:

The patent is available here: [Link].

C.    Review the Claims

The claims define the property rights provided by a patent, and thus require careful scrutiny. The goal of claim analysis is to identify the boundaries of the protection sought by the applicant and to understand how the claims relate to and define what the applicant has indicated is the invention. Examiners must first determine the scope of a claim by thoroughly analyzing the language of the claim before determining if the claim complies with each statutory requirement for patentability. See In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998) (“[T]he name of the game is the claim.”).

MPEP Section 2103 (I)(C).

Finally, when evaluating the scope of a claim, every limitation in the claim must be considered. Examiners may not dissect a claimed invention into discrete elements and then evaluate the elements in isolation. Instead, the claim as a whole must be considered. See, e.g., Diamond v. Diehr, 450 U.S. 175, 188-89, 209 USPQ 1, 9 (1981) (“In determining the eligibility of respondents’ claimed process for patent protection under § 101, their claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made.”).

MPEP Section 2103(I)(C).

Query: Would analogous paragraphs be helpful footnotes for the Federal Circuit’s internal operating procedures?

In today’s split-decision in Mobility Workx v. Unified Patents, LLC, I thought the majority decision and the dissent were interesting for their discussion of previous cases and scholarly work describing where there is a potential for decision maker bias to occur. In a cursory review of the decision, I did not see any discussion of the Federal Circuit’s decision in Eolas Technologies, Inc. v. Microsoft Corp., 457 F.3d 1279 (Fed. Cir. 2006). In that case, the Federal Circuit discussed the Seventh Circuit’s practice of reassigning cases to a new district court judge upon remand for retrial from the Seventh Circuit or from the Federal Circuit.

The Seventh Circuit appears unique among the circuit courts of appeals because it sets forth its law on judicial reassignment in the form of a rule. Thus, contrary to Eolas’ arguments, Circuit Rule 36 is not merely an internal glossary for construing silence in Seventh Circuit opinions as a direction to reassign a case on remand. Rather, the Seventh Circuit rule makes reassignment the norm, unless our sister circuit alters the default rule with an express assignment back to the same judge. “The purpose of Rule 36 is to avoid, on retrial after reversal, any bias or mindset the judge may have developed during the first trial.” Cange v. Stotler and Co., 913 F.2d 1204 (7th Cir.1990) (emphases added). Because the operation of Rule 36 avoids “any bias or mindset” that “may have developed,” the law of the Seventh Circuit differs from that of other circuits. See, e.g., Procter & Gamble Co. v. Haugen, 427 F.3d 727, 744 (10th Cir.2005) (“[W]e will remand with instructions for assignment of a different judge only when there is proof of personal bias or under extreme circumstances.”) (internal quotes and citation omitted); Glen Holly Entm’t v. Tektronix Inc., 343 F.3d 1000, 1017-18 (9th Cir.2003) (explaining that reassignment considerations include “whether the district court judge would have substantial difficulty in putting out of his or her mind previously expressed views”); United States v. Microsoft Corp., 56 F.3d 1448, 1463 (D.C.Cir.1995) (explaining that reassignment does not require a finding of actual bias or prejudice, “but only that the facts might reasonably cause an objective observer to question the judge’s impartiality”) (internal quotes and citation omitted).

Eolas Technologies, Inc. v. Microsoft Corp., 457 F.3d 1279, 1283 (Fed. Cir. 2006).

You can read that Federal Circuit opinion [here]. I think it is interesting to note the steps that are taken to avoid the appearance of bias even at a level as high as the district court level.

I’m always interested to see the word “each” come up in claim construction or infringement cases. The Federal Circuit’s decision in Traxcell Technologies, LLC v. Nokia Solutions and Networks OY et al., 2020, 1440, 2020-1443 (Fed. Cir. Oct. 12, 2021) addressed the word “each” again. This time around the court appears to treat the word “each” as merely superfluous and thus providing no distinguishing effect in a doctrine of claim differentiation analysis. That is to say, the court concluded that the various claims all say the same thing, just differently phrased — not to be confused with the various claims saying different things, just differently phrased.

Judge Prost writing for the court stated:

Traxcell first argues that the claims don’t require location to be tied to specific devices. On this point, Traxcell relies on the doctrine of claim differentiation. Because some claims recite the “location for each . . . device,” it says, the claims without “each” do not require per-device locations. But claim differentiation is “a guide, not a rigid rule,” especially if the claim language is clearly to the contrary. Wi-LAN USA, Inc. v. Apple Inc., 830 F.3d 1374, 1391 (Fed. Cir. 2016) (quoting Marine Polymer Techs., Inc. v. HemCon, Inc., 672 F.3d 1350, 1359 (Fed. Cir. 2012)). And Traxcell provides no adequate reason why the mere presence of “each” should have this importance—especially where the various claims all just seem to say the same thing differently phrased. As we explained, each claim recites the location of a device, or “locating” a device. See, e.g., ’284 patent claim 1 (“locating at least one said wireless device”). Not the average of many locations. The fact that some claims require multiple device locations (i.e., locations for “each” device) does not mean that broader claims only requiring a single device location need not be tied to a specific device.

Traxcell Technologies, LLC v. Nokia Solutions and Networks OY et al., 2020, 1440, 2020-1443 (Fed. Cir. Oct. 12, 2021)(slip op. at pages 9-10).

Here are some previous posts where the word “each” came up:

[“Each” — Hard cases make bad law],

[The meaning of “each” ….],

[“Each of a plurality”], and

[Oral Argument of the Month: Timebase v. Thomson].

By the way, I seem to recall that there was another “each” case recently. If I run across it in the future, I’ll add it here.

It is kind of interesting to compare the recent statement in Trust ID v. Next Caller by the Federal Circuit — an intermediate appellate court, rather than a court of last resort — with the Federal Circuit’s Rule 36 practice.

“[T]he Board is obligated to provide an administrative record showing the evidence on which the findings are based, accompanied by the agency’s reasoning in reaching its conclusions.” Alacritech, Inc. v. Intel Corp., 966 F.3d 1367, 1370 (Fed. Cir. 2020) (quoting TQ Delta, LLC v. Cisco Sys., Inc., 942 F.3d 1352, 1358 (Fed. Cir. 2019)). “We do not require ‘perfect explanations,’ and ‘we will uphold a decision of less than ideal clarity if the agency’s path may reasonably be discerned.’” Id. at 1370–71 (quoting NuVasive, 842 F.3d at 1382–83). “We do, however, require that the Board’s own explanation be sufficient ‘for us to see that the agency has done its job.’” Id. (quoting NuVasive, 842 F.3d at 1383). Here, the Board merely partially reiterated and summarily rejected Next Caller’s arguments without explanation. This is not sufficient under the APA and our precedent. NuVasive, 842 F.3d at 1383 (explaining that the Board cannot “summarize and reject arguments without explaining why [it] accepts the prevailing argument.”). Thus, while there is no legal basis to require that the Board have deferred to the examiner’s reasoning, the Board did need to have provided its own reasoning.

TrustID, Inc. v. Next Caller, Inc., 2020-1950 (Fed. Cir. September 27, 2021)(slip op. at 18).

The evening news here in Colorado shared this video clip the other night of some local bears sparring in a mud puddle. I’m not entirely sure how Federal Circuit panel discussions operate immediately following oral argument; but, I suppose it could be something similar to this. Particularly when inventorship rears its head during a case:

One court has said that the “exact parameters of what constitutes joint inventorship are quite difficult to define. It is one of the muddiest concepts in the muddy metaphysics of patent law.”

In re VerHoef, 888 F.3d 1362, 1365 (Fed. Cir. 2018)(quoting  Mueller Brass Co. v. Reading Indus., Inc., 352 F.Supp. 1357, 1372 (E.D. Pa. 1972)).

The quote of the day comes from the dissent in Scientific Plastic Products, Inc. v. Biotage AG:

It is troubling that the majority and the Board rely on the inventors’ disclosure of the problem their inventions solve as the primary basis for modifying the prior art. This is hindsight of the worst kind, “wherein that which only the invention taught is used against its teacher.” W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed.Cir.1983). The patents 1363*1363 do not indicate that leakage was a problem identified in the prior art or a problem known to those of skill in the art. Rather they indicate that the claimed design will avoid leakage. These inventors identified a design problem, articulated it, and solved it. There is absolutely no evidence of the existence of a known leakage problem that would have motivated skilled artisans to modify Yamada. The Board is taking the ingenuity of these inventors and, without any record basis, attributing that knowledge to all skilled artisans as the motivation to make the inventions at issue. Hindsight, hindsight, hindsight.

Scientific Plastic Products, Inc. v. BIOTAGE AB, 766 F.3d 1355 (Fed. Cir. 2014)(J. Moore dissenting).

The Solicitor General is often referred to as “The Tenth Justice.” I was looking to see if the Solicitor General’s Office had yet filed its requested brief in American Axle and came across this recent Senate confirmation hearing for Solicitor General nominee Elizabeth Prelogar. The introduction begins at the 4:00 minute mark; the questioning begins at the 2:17:20 minute mark.

I thought the discussion of parties that the Solicitor General’s Office consults with before determining its position on a matter, including “agencies with equities” in the matter, was interesting at the 2:36:18 minute mark.

Link to video: [Link].

The Federal Circuit announced that Judge Tiffany Cunningham was sworn-in on September 1, 2021. More details are available at this link: [Announcement].

Judge Cunningham’s bio is now on the court’s website at this link and reads:

TIFFANY P. CUNNINGHAM was appointed by President Joseph R. Biden in 2021 and assumed duties of her office on September 1, 2021.  Prior to her appointment, she served as trial and appellate counsel for companies and individuals in complex patent and trade secret disputes.  From 2014 to 2021, Judge Cunningham served as a partner at Perkins Coie LLP in Chicago, Illinois.  She also was a member of the Executive Committee of Perkins Coie LLP from 2020 to 2021.  She served as a partner at the Chicago office of Kirkland & Ellis LLP from 2007 to 2014 and as an associate at the same office from 2002 to 2007.  During her time in private practice, she was recognized on The Best Lawyers in America, Super Lawyers, and Leading Lawyers lists.  Judge Cunningham clerked from 2001 to 2002 for the Honorable Timothy B. Dyk, Circuit Judge of the United States Court of Appeals for the Federal Circuit.  

Judge Cunningham received her S.B. in Chemical Engineering from the Massachusetts Institute of Technology in 1998, and her J.D. from Harvard Law School in 2001.  She is a member of the Phi Beta Kappa and Tau Beta Pi honor societies.

One of the things I particularly like about the FedCircuitBlog is the page dedicated to en banc Federal Circuit cases. It makes it very easy to see what the Federal Circuit has been focusing its attention on. Apparently, over the past few years that focus of attention has been on veterans cases. You have to go all the way back to 2018 in Click-to-Call v. Ingenio to find a Federal Circuit en banc decision on patent law. The Federal Circuit granted en banc review in another veterans case just last month in Taylor v. McDonough — its fifth veterans en banc case since 2018.

I guess it makes sense, patent law is already very clear. 😉

In AMERICAN AXLE & MANUFACTURING v. NEAPCO HOLDINGS, 966 F.3d 1347 (Fed. Cir. 2020), Judge Dyk wrote a concurring opinion in the denial of rehearing en banc. He notes that with respect to step one in the Alice inquiry there can be a factual issue.

“The step-one “directed to” inquiry in this case, as in O’Reilly, is what the claim says. As to that question, the panel does not suggest that there can never be a factual issue, but there is no such factual issue here.”

I have updated this earlier post (Alice Step 1 — an issue of law based on underlying facts) with this quote.