Archive for May, 2010

Judge Rader on Judicial Confirmation Hearings

Wednesday, May 26th, 2010

With the nominations of Judge Kathleen O’Malley and Edward DuMont to the Federal Circuit as well as Solicitor General Elena Kagan to the United States Supreme Court, I thought that this C-Span video from way back in 1994 of Judge Randall Rader discussing confirmation hearings before the Senate Judiciary Committee might be of interest:

Riding Circuit

Tuesday, May 25th, 2010

Chief Judge Michel reported in his State of the Court address on May 20, 2010 that the Federal Circuit will be sitting in Atlanta, Georgia this November.  The Federal Circuit usually makes at least one visit outside of D.C. each year.  If you are curious when the last time was that the Federal Circuit sat in your city, you can view the list here: [Link].

Court of Errors

Tuesday, May 25th, 2010

I thought this was a humorous comment by Judge Plager during the oral argument of Orion IP, LLC v. Hyundai Motor America, 2009-1130 (Fed. Cir. May 17, 2010), : “We’re a court of errors. We don’t make ’em –we correct ’em.” [Listen].

Does Wall Street Follow Oral Arguments?

Sunday, May 23rd, 2010
Tivo 5-Year Stock Price

Tivo 5-Year Stock Price

I’ve been curious whether there is any indication that institutional investors follow the oral arguments of patent cases at the Federal Circuit. The litigation between Tivo and Echostar finally presented an opportunity to explore this further.

As you can see from the chart above and the following court events in the Tivo/Echostar litigation, the price of Tivo’s stock has reacted quite significantly to the Tivo/Echostar litigation:

A: August 17, 2006, Judge Folsom issues an injunction against Echostar.

B: October 4, 2007, the Federal Circuit hears oral argument in the appeal of the injunction.

C: January 31, 2008, the Federal Circuit reverses-in-part (hardware infringement) and affirms-in-part (software infringement, damages, injunction) Judge Folsom’s decision.

D: June 2, 2009, Judge Folsom issues a contempt ruling in regard to Echostar’s design around design.

E: November 2, 2009, the Federal Circuit hears oral argument in the appeal of the contempt ruling.

F: March 4, 2010, a three member panel affirms the contempt ruling.

G: May 14, 2010, the Federal Circuit grants en banc review of contempt ruling.

A better graphic would show that Tivo’s stock price reacted significantly following events A, C, D, F, and G. It did not appear to react significantly in response to the oral arguments. Obviously, this offers just a couple of data points; but, it may indicate that institutional investors are not taking full advantage of their opportunities to evaluate patent litigation.

Regardless of the outcome of the Tivo/Echostar litigation, Tivo’s stock performance is a strong reminder that some investors value the power of patents.

(For the record, none of the above should be considered investment advice.)

In re Zurko re-emphasized

Thursday, May 20th, 2010

With the CAFC’s decision in Perfect Web Technologies, Inc. v. InfoUSA, Inc., 2009-1105 (Fed. Cir. Dec. 2, 2009), it struck me that the court was easing away from its precedent in In re Zurko, 258 F.3d1379 (Fed. Cir. 2001) that required some factual underpinning for an assertion of “common sense.”  Indeed, in the oral argument of Perfect Web, the panel (Judges Linn, Dyk, and Prost) seemed curious about the applicability of In re Zurko in light of the Supreme Court’s KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007) decision:  [Listen].

Yesterday, a panel of the court in In re Ravi Vaidyanathan, 2009-1404 (Fed. Cir. 2010) re-emphasized the principles of In re Zurko.  Judge Newman writing for herself and Chief Judge Michel wrote:

We agree with the Solicitor that an explicit statement of the level of ordinary skill is not always necessary in evaluating the obviousness of a new technologic advance. But whether or not stated explicitly, the perspective of a person of ordinary skill must frame the obviousness inquiry, and assertions of what such a person of ordinary skill would have found to be obvious require sufficient explanation to permit meaningful appellate review. In this case, not only the Board but also the examiner announced their conclusions of obviousness without providing any evidentiary support or reasoning for why a person of ordinary skill in the field of the invention would have deemed it obvious to select and combine various steps from different references, in the manner of the applicant. This court explained in In re Zurko, 258 F.3d 1379 (Fed. Cir. 2001), that the entry of the PTO into the deferential review of the Administrative Procedure Act requires the agency to provide support for its findings:


With respect to core factual findings in a determination of patentability, . . . the Board cannot simply reach conclusions based on its own understanding or experience—or on its assessment of what would be basic knowledge or common sense. Rather, the Board must point to some concrete evidence in the record in support of these findings. To hold otherwise would render the process of appellate review for substantial evidence on the record a meaningless exercise.

Id. at 1386.


The PTO Solicitor argues that the Court in KSR held that a combination of elements from different prior art references is likely to be unpatentable if it would involve nothing more than “the predictable use of prior art elements according to their established functions,” KSR, 550 U.S. at 417, and that the Board applied this reasoning to the combination of Biggers and Johnson. KSR also clarified that recourse to “common sense,” viewed through the perspective of a person of ordinary skill, is not barred in the obviousness inquiry. As the applicant states, while KSR relaxed some of the formalism of earlier decisions requiring a “teaching, suggestion, or motivation” to combine prior art references, it did not remove the need to anchor the analysis in explanation of how a person of ordinary skill would select and apply the teachings of the references. See, e.g., id. at 417 (“If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”).


The applicant complains that the Board simply reasoned from the hindsight knowledge of his successful invention; he stresses that, unlike the facts in KSR, the various steps that he combined were not known to be combinable, and the result of increased precision in missile guidance to the target was not previously known or predictable.


Obviousness is determined as a matter of foresight, not hindsight. See id. at 421 (citing Graham, 383 U.S. at 36). KSR did not free the PTO’s examination process from explaining its reasoning. In making an obviousness rejection, the examiner should not rely on conclusory statements that a particular feature of the invention would have been obvious or was well known. Instead, the examiner should elaborate, discussing the evidence or reasoning that leads the examiner to such a conclusion. Generally, the examiner cites prior art references to demonstrate the state of knowledge. See 37 C.F.R. §1.104(c)(2) (“In rejecting claims for want of novelty or obviousness, the examiner must cite the best references at his or her command.”); Manual of Patent Examining Procedure (MPEP) §706.02 (8th ed., rev. July 2008) (“Prior art rejections should ordinarily be confined strictly to the best available art. [citing exceptions] Such rejec-tions should be backed up by the best other art rejections available.”). If it is not possible for the examiner to provide this type of information, the examiner might choose instead to provide an affidavit detailing the examiner’s own personal knowledge (as a person approximating one of ordinary skill in the art) of the technology in question. See 37 C.F.R. §1.104(d)(2) (“When a rejection in an application is based on facts within the personal knowledge of an employee of the Office, the data shall be as specific as possible, and the reference must be supported, when called for by the applicant, by the affidavit of such employee, and such affidavit shall be subject to contradiction or explanation by the affidavits of the applicant and other persons.”). Where, as here, prior art references are cited to support an obviousness rejection, the references themselves need not in every case provide a “specific hint or suggestion” of the alteration needed to arrive at the claimed invention; the examiner’s analysis “may include recourse to logic, judgment, and common sense available to a person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Perfect Web Techs. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). In these cases the examiner should at least explain the logic or common sense that leads the examiner to believe the claim would have been obvious. Anything less than this results in a record that is insulated from meaningful appellate review. Zurko, 258 F.3d at 1386. If the examiner is able to render a claim obvious simply by saying it is so, neither the Board nor this court is capable of reviewing that determination. See KSR, 550 U.S. at 418, citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”).

It is interesting to note that Judge Dyk, who seemed somewhat concerned about the viability of In re Zurko after KSR during the oral argument of Perfect Web, merely concurred in the judgment of the panel in In re Vaidyanathan rather than joining in the opinion.  I wonder if that signals that  there is more to come in regard to the viability of In re Zurko

My two cents: In re Zurko is the public’s best defense against  the arbitrary use of a “common sense” analysis under KSR.

You can read the court’s decision in In re Vaidyanathan here:  [Read].

You can read the court’s decision in Perfect Web Technologies, Inc. v. InfoUSA, Inc. here: [Read].

You can read the court’s decision in In re Zurko here: [Read].

The First Patent Related to Software

Wednesday, May 19th, 2010

I’ve been reading the new book “Patent Law for Computer Scientists: Steps to Protect Computer Implemented Inventions” (Springer publishing 2010) which was written by European Patent Examiners Daniel Closa, Alex Gardiner, Falk Giemsa, and Jörg Machek.  One of the interesting observations that they make in the book is that the first  patent ever granted that related to software is GB1039141  granted in 1966 and titled “A Computer Arranged for the Automatic Solution of Linear Programming Problems.”  The assignee — British Petroleum Company.

Details of AIPLA Electronics and Computer Law Road Show

Monday, May 17th, 2010

The AIPLA has posted its list of speakers for the Electronics and Computer Law Road Show in Denver, CO on June 24th.  Judge Linn will be speaking along with some of my favorite speakers in Steve Kunin, Tom Irving, David Hricik, Carl Moy, and others.

Details of the program are available here:  [Brochure].

Federal Circuit Nominees’ Public Questionnaires

Friday, May 14th, 2010

As part of the confirmation process, judicial nominees submit a public questionnaire to the Senate Judiciary Committee. 

This is a link to the public questionnaire for Judge Kathleen O’Malley’s nomination to the Federal Circuit:  [Link].

This is a link to the public questionnaire for Edward C. DuMont’s nomination to the Federal Circuit: [Link].

No dates have been set yet for Judge O’Malley’s or Mr. DuMont’s hearings before the Senate Judiciary Committee.

Wikipedia and the Federal Circuit

Tuesday, May 11th, 2010
The magnetic field around an infinite Halbach array of cube magnets

The magnetic field around an infinite Halbach array of cube magnets

The website recently ran an article about the case of United States v. Bari, 09-1074-cr (2d. Cir March 22, 2010) in which the defendant in a criminal case challenged the district court judge’s decision as being in violation of Rule 605 of the Federal Rules of Evidence.  The district court judge had apparently conducted a Google search to confirm his intuition on a “matter of common knowledge” (i.e., how many rain hats were available in the marketplace).

The judges of the Federal Circuit have been known to remark on the use of the internet.  For example, some have been heard to reference Google searches,, and Wikipedia.  In Intamin Ltd. v. Magnetar Technologies, Inc., 483 F.3d 1328 (2007), Judge Rader references Wikipedia as teaching the basic operation of a Halbach array.  [Listen]

You can read the Intamin decision from 2007 and learn more about Halbach arrays here: [Read].

You can read the U.S. v. Bari decision here: [Read].

Benefits of a Broad Interpretation of 35 U.S.C. §101

Thursday, May 6th, 2010

Aoil-covered-wildlife4s the nation begins to appreciate the impact of the oil spill in the Gulf of Mexico and the Supreme Court prepares to wade in on the issue of patentable subject matter in Bilski v. Kappos, one can’t help but be reminded of the Diamond v. Chakrabarty, 447 U.S. 303 (1980) case.  In that case the Supreme Court dealt with the scope of  section 101 and whether a living organism constituted patentable subject matter.  Dr. Chakrabarty’s invention dealt with an oil digesting bacteria that could digest about two-thirds of the hydrocarbons found in a typical oil spill.  With its landmark decision, the Supreme Court declared Dr. Chakrabarty’s invention patentable.  That bacteria would later be used to remediate the oil spill from the Exxon Valdez and presumably will be used on the oil spill in the Gulf, as well.

Dr. Chakrabarty’s invention and the Diamond v. Chakarabarty decision underscore the benefits of an expansive interpretation of 35 U.S.C. §101 — an interpretation that encourages innovation and promotes the disclosure of new ideas. 

You can listen to the oral argument in Diamond v. Chakrabarty here: [Listen].

You can read the Court’s opinion here: [Read].