Archive for the ‘Humorous’ Category

Which body of law do you find less clear — patent law or trademark law?

Wednesday, November 21st, 2018

During the oral argument for the recent Converse/Chuck Taylor case, Judge Dyk was asking appellant’s counsel about a nuance of the test for secondary meaning under trademark law.  It caused Judge Dyk to note that he thought patent law sometimes seems pretty clear when compared to some of the spongy concepts in trademark law.  That prompted laughter from the courtroom, as did Judge O’Malley’s follow-on comment that it was a scary thought.  You can listen to those comments here:



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Happy Thanksgiving!

Tang vs. Bourbon

Thursday, April 24th, 2014

There was a humorous moment recently during oral argument at the Federal Circuit when Judge Plager suggested that the advocate for the appellant might want to replace Tang with bourbon in the analogy being posited: [Listen].

Judge Plager speaking recently at Indiana University School of Law where he was dean from 1977-84

Judge Plager speaking recently at Indiana University School of Law, where he was Dean from 1977-84

To listen to some other humorous moments at the Federal Circuit, click on the “Humorous” category link.

Abstract Idea

Sunday, August 25th, 2013

The oral argument of Digitech Information Systems v. BWM Auto Leasing will interest some readers.  The patentee appealed a summary judgment of invalidity under 35 U.S.C. §101.  Much of the oral argument focused on what was the definition of an abstract idea.

I thought this oral argument was notable for several reasons.  For one, Chief Judge Rader seemed to be less focused on trying to determine patent eligibility based on the “subject matter” of the specification rather than the claims.  Chief Judge Rader focused most of his questioning on trying to elicit a definition of “abstract idea”  from appellee’s counsel.  That led to this humorous moment when the fire alarm went off during the oral argument: [Listen].  Judge Dee Benson, sitting by designation, joked that the alarm was an abstract idea, while Chief Judge Rader jokingly cast suspicion on appellee’s counsel for triggering the alarm in an attempt to avoid providing a definition of an “abstract idea.”

Judge Moore again championed software patents during the oral argument.  She inquired if claims can be distilled down to a series of steps by discounting structure and other meaningful limitations, then doesn’t every software patent distill down to an algorithm.  Chief Judge Rader followed that comment with observations about the software economy that we live in: [Listen].  Their points are well-taken.  One only hopes the Supreme Court will some day recognize that we no longer live in an age dominated by combines, reapers, and other mechanical inventions.  We live in the information age and need to provide innovators the ability to protect their inventions.

Given the makeup of the panel and the tenor of the oral argument, I was a little bit surprised that the panel not only affirmed the district court but also issued a Rule 36 Judgment.  You can listen to the entire oral argument here:  [Listen].

Grandmothers are off-limits

Monday, January 23rd, 2012

Oral argument was running along smoothly for this advocate when she happened to throw in an extraneous fact that the one person purported to evidence actual confusion in a trademark case was a grandmother.  Whether in jest or in defense of grandmothers everywhere, Judge Lourie noted that there was nothing the matter with grandmothers, producing this somewhat humorous exchange:  [Listen].

I thought there might be a nice quote about grandmothers that would make a fitting addition to this post.  I didn’t find what I was looking for.  But, I did find these:

My grandmother started walking five miles a day when she was sixty. She’s ninety-seven now, and we don’t know where the hell she is. ~Ellen DeGeneres

My grandmother is over eighty and still doesn’t need glasses. Drinks right out of the bottle. ~Henry Youngman

I want to die in my sleep like my grandfather – not screaming and yelling like the passengers in his car. ~Will Shriner

IP Man

Monday, October 17th, 2011


I finally got a frame for my “IP Man” movie poster.  Food for thought if you are looking for that unique gift for the discerning IP professional.

I believe that in this particular shot, IP Man is shown wielding the “Staff of Beauregard” just in case he should encounter the Cybersource panel and have to engage them in a battle of wits.  (A peculiar feature of the “Staff of Beauregard” is that although it appears to be a physical article of manufacture, to some it is just an abstract idea.)

Here’s a better look at the IP Man movie poster: [Link].

Hans Gruber and the Federal Circuit

Sunday, September 18th, 2011

Yes, that Hans Gruber. 

A panel of the Federal Circuit was trying to evaluate the construction of the term “bearer instrument” in a recent oral argument.  Counsel for the defendant-appellee was explaining that, with respect to bearer instruments, title passes by delivery  without endorsement.  As an illustration, he used the example of Hans Gruber trying to steal bearer bonds in the movie Die Hard.  [Listen].  While the analogy resonated with me, I couldn’t tell from the recording if it did with the panel.   As it turns out, Hans Gruber is a very well-known character.  He is the 46th most notorious villain in the last 100 years of the movies, according to the American Film Institute.

You can listen to the entire oral argument in Privacash, Inc. v. American Express Co. et al. [here].

You can read the court’s opinion [here].

“Before you expire …”

Friday, July 1st, 2011

An advocate appearing before the court last summer must have been looking a little bit peaked during oral argument.  Judge Bryson inquired if he could ask a question before counsel expired:  [Listen].

Happy Anniversary

Thursday, June 16th, 2011

The 717 Madison Place blog is celebrating its two-year anniversary today.  Thanks for tuning in!  Looking back over the last two years, I think my favorite sound bite comes from the very first post.  If you haven’t listened to that one, here it is again: [“This is a brother-in-law case, your Honor”].  That sound bite comes from Crater Corp. v. Lucent Technologies.

Chuck Norris and the Federal Circuit

Wednesday, May 18th, 2011

Did you know the Federal Circuit sat en banc last week?  Indeed it did without much fanfare from the patent community.  The court sat en banc in two appeals from the Court of Federal Claims dealing with partnership/tax issues.  The appeals were tangentially related to the movies “Lone Wolf McQuade,”  “Terminator,”  “Return of the Living Dead,” and “Howling II” [Listen]. 

You can listen to the entire en banc oral argument here: [Listen].

Things they don’t teach you in law school . . .

Wednesday, March 16th, 2011

Demonstrating gloves can be tricky business during oral argument.  In response to a question from Judge Moore, one appellant was recently demonstrating how language describing the “proximal A2 pulley region” of a finger should be construed.  Before he started, she warned him off from using his middle finger to demonstrate.  [Listen].

In case you’re curious how the case turned out, you can read the court’s opinion here: [Read].

“Has the Temple of Justice been Defiled?”

Wednesday, January 19th, 2011

     One of the issues that came up in the oral argument of the recently decided case of iLOR v. Google, 2010-1117 (Fed. Cir. Jan. 11, 2011) was whether the district court was in error in awarding expert fees to Google.  To award such fees is beyond 35 U.S.C. §285 alone and requires invoking the inherent powers of the court.  However, the standard to be applied by the court to invoke such inherent powers is whether “fraud has been practiced upon it, or that the very temple of justice has been defiled.”   So, during the oral argument, Chief Judge Rader inquired whether the temple of justice had been defiled: [Listen].

“Your Honor, I’m hoping you’re buying.”

Monday, November 1st, 2010

Judge Lourie was calling the case of Auction Management Solutions v. Manheim Auctions, a patent case related to internet auctioning, when he asked counsel for the appellant if he was buying or selling.  Counsel for the appellant (Don Dunner) quickly remarked “Your Honor, I’m hoping you’re buying.” [Listen].

The Rule 36 Opinion is available here: [Read].

Eli Lilly v. Teva

Thursday, October 7th, 2010

In the oral argument of Eli Lilly v. Teva, 2010-1005 (Fed. Cir. Sept. 1, 2010), Chief Judge Rader noted a “supreme irony” that Lilly was the target of a written description defense shortly after Lilly relied on a written description defense in Ariad v. Eli Lilly: [Listen].

You can read the opinion here: [Read].

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

Alice in Wonderland — Part II

Friday, September 17th, 2010

Alice in Wonderland made an encore appearance at the Federal Circuit recently during the oral argument of Daiichi Sankyo Co. v. Mylan Pharma, 2009-1511 (Fed. Cir. Sept. 9, 2010).  The panel was trying to assess whether one would have chosen an example in a patent reference as a motivation to modify another reference, when the example was the 118th example in the patent reference.  This prompted Judge Friedman to make the following analogy to Alice in Wonderland: [Listen].

References to Alice in Wonderland are made quite often in judicial opinions.  If you have access to Lexis, see “Wondering about Alice: Judicial References to Alice in Wonderland and Through the Looking Glass,” Parker B. Potter, Jr., 28 Whittier L. Rev. 175 (2006).

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

You can read the opinion here: [Read].

Judge Newman Stands Up for Texas

Tuesday, August 10th, 2010

I’m not sure Chief Judge Rader will be invited back to Texas after this recent swearing-in ceremony.  Judge Newman stood up for Texas, though,  or at least for her law clerk: [Listen].

If you would like to be admitted to the United States Court of Appeals for the Federal Circuit bar, here is the link for the admission form: [Link].  The application fee is listed as $200.