Archive for January, 2015

What would Chief Justice Marshall say?

Saturday, January 31st, 2015

I was reminded of Chief Justice Marshall’s statement for the Court in Marbury v. Madison:

It is emphatically the province and duty of the judicial department to say what the law is. Those who apply the rule to particular cases, must of necessity expound and interpret that rule.

Chief Justice John Marshall for the Court, Marbury v. Madison, 5 U.S. 137, 177 (1803).

One wonders what Chief Justice Marshall would think of the Court’s opinions in recent patent and copyright cases:

The question before us is whether the claims do significantly more than simply describe these natural relations. To put the matter more precisely, do the patent claims add enough to their statements of the correlations to allow the processes they describe to qualify as patent-eligible processes that apply natural laws? We believe that the answer to this question is no.

Justice Breyer for the Court, Mayo Collaborative v. Prometheus Labs., 132 S. Ct. 1289, 566 U.S. 10, 182 L. Ed. 2d 321 (2012)(emphasis in the original).

In any event, we need not labor to delimit the precise contours of the “abstract ideas” category in this case. It is enough to recognize that there is no meaningful distinction between the concept of risk hedging in Bilski and the concept of intermediated settlement at issue here. Both are squarely within the realm of “abstract ideas” as we have used that term.

Justice Thomas for the Court, Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. 2347, 573 U.S., 189 L. Ed. 2d 296 (2014).

In other cases involving different kinds of service or technology providers, a user’s involvement in the operation of the provider’s equipment and selection of the content transmitted may well bear on whether the provider performs within the meaning of the Act. But the many similarities between Aereo and cable companies, considered in light of Congress’ basic purposes in amending the Copyright Act, convince us that this difference is not critical here. We conclude that Aereo is not just an equipment supplier and that Aereo “perform[s].”

Justice Breyer for the Court, American Broadcasting v. Aereo, Inc., 134 S. Ct. 2498, 573 U.S., 189 L. Ed. 2d 476 (2014). (The dissenting opinion characterized this as the “looks like cable TV standard.”)

Insofar as there are differences, those differences concern not the nature of the service that Aereo provides so much as the technological manner in which it provides the service. We conclude that those differences are not adequate to place Aereo’s activities outside the scope of the Act.

Justice Breyer for the Court, American Broadcasting v. Aereo, Inc., 134 S. Ct. 2498, 573 U.S., 189 L. Ed. 2d 476 (2014).

USPTO Patent Eligibility Examples

Wednesday, January 28th, 2015

Here’s a link to the new USPTO patent eligibility examples, if you were looking for them:  [Link].

Judge Pfaelzer’s §101 opinion in Enfish v. Microsoft

Saturday, January 24th, 2015

Here is another §101 opinion by Judge Pfaelzer, from the case of Enfish v. Microsoft:  [Enfish].

Judge Pfaelzer’s Opinion in Cal. Tech. v. Hughes

Friday, January 23rd, 2015

If you are feeling beaten down by all the §101 cases finding inventions patent-ineligible, you might find Judge Pfaelzer’s opinion in Cal. Inst. of Tech. v. Hughes Communs., Inc. refreshing.

I couldn’t find a copy of the opinion on the internet; so, you can view it [here].

More Gifts for the Discerning Patent Professional

Tuesday, January 20th, 2015

With Valentine’s Day approaching you may be wondering what to get that special patent professional in your life.  Here are a few options:

1)  An oldie, but a goodie:  The IP Man movie poster.

2)  The Mayo v. Prometheus T-Shirt

Was your Valentine an amicus in Mayo v. Prometheus?  Celebrate the Supreme Court and the clarity that it has brought to 35 U.S.C. §101.

t-shirt-front1 t-shirt-back

3)  Special Effects Nose Wax

A patent attorney can always use more nose wax despite what the Supreme Court said in White v. Dunbar, 119 U.S. 47 (1886):

Some persons seem to suppose that a claim in a patent is like a nose of wax, which may be turned and twisted in any direction, by merely referring to the specification, so as to make it include something more than, or something different from, what its words express. The context may undoubtedly be resorted to, and often is resorted to, for the purpose of better understanding the meaning of the claim, but not for the purpose of changing it and making it different from what it is. The claim is a statutory requirement, prescribed for the very purpose of making the patentee define precisely what his invention is, and it is unjust to the public, as well as an evasion of the law, to construe it in a manner different from the plain import of its terms.”



Monday, January 12th, 2015

Interesting quote from Octane Fitness v. Icon Health & Fitness, 134 S. Ct. 1749, 1758 (2014):

We reject Brooks Furniture for another reason: It is so demanding that it would appear to render § 285 largely superfluous. We have long recognized a common-law exception to the general “American rule” against fee-shifting — an exception, “inherent” in the “power [of] the courts” that applies for “`willful disobedience of a court order'” or “when the losing party has `acted in bad faith, vexatiously, wantonly, or for oppressive reasons….'” Alyeska Pipeline Service Co. v. Wilderness Society,421 U.S. 240, 258-259, 95 S.Ct. 1612, 44 L.Ed.2d 141 (1975). We have twice declined to construe fee-shifting provisions narrowly on the basis that doing so would render them superfluous, given the background exception to the American rule, seeChristiansburg Garment Co. v. EEOC, 434 U.S. 412, 419, 98 S.Ct. 694, 54 L.Ed.2d 648 (1978); Newman v. Piggie Park Enterprises, Inc., 390 U.S. 400, 402, n. 4, 88 S.Ct. 964, 19 L.Ed.2d 1263 (1968) (per curiam), and we again decline to do so here.

Something to keep in mind the next time you are considering whether Alice v. CLS Bank renders 35 U.S.C. §103 largely superfluous for certain types of inventions.

Perhaps Mackey v. Lanier Collection Agency & Service, Inc., 486 U.S. 825, 108 S. Ct. 2182, 100 L. Ed. 2d 836 (1988) is more on point:

As our cases have noted in the past, we are hesitant to adopt an interpretation of a congressional enactment which renders superfluous another portion of that same law.

Id. (citing Massachusetts Mutual Life Ins. Co. v. Russell, 473 U. S. 134, 142 (1985); FEC v.National Conservative Political Action Committee, 470 U. S. 480, 486 (1985); Park ‘N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U. S. 189, 197 (1985); United States v. Generix Drug Corp., 460 U. S. 453, 458-459 (1983); Dickerson v. New Banner Institute, 460 U. S. 103, 118 (1983)).

    UPDATED January 24, 2015:

Perhaps better still is this statement from Bilski v. Kappos, 130 S.Ct. 3218, 3228-29 (2010):

A conclusion that business methods are not patentable in any circumstances would render § 273 meaningless. This would violate the canon against interpreting any statutory provision in a manner that would render another provision superfluous. See Corley v. United States, 556 U.S. ___, ___, 129 S.Ct. 1558, 1566, 173 L.Ed.2d 443 (2009). This principle, of course, applies to interpreting any two provisions in the U.S.Code, even when Congress enacted the provisions at different times. See, e.g., Hague v. Committee for Industrial Organization, 307 U.S. 496, 529-530, 59 S.Ct. 954, 83 L.Ed. 1423 (1939) (opinion of Stone, J.). This established rule of statutory interpretation cannot be overcome by judicial speculation as to the subjective intent of various legislators in enacting the subsequent provision. Finally, while § 273 appears to leave open the possibility of some business method patents, it does not suggest broad patentability of such claimed inventions.