Archive for October, 2015

New Comments on July 2015 Updated Guidance on Subject Matter Eligibility

Saturday, October 31st, 2015

The USPTO has begun adding to its patent eligibility page comments received with respect to the July 2015 Updated Guidance on Subject Matter Eligibility.

The AIPLA comments have a nice flow chart that explains how evidence should be used to support an assertion of patent ineligibility:


The comments available from the USPTO site at the time of this posting are available here:

A.  Intellectual Property Organizations

B.  Government Agencies

C. Academic and Research Institutions

D.  Law Firms

E.  Companies

F.  Individuals

The Intersection of Inherency and Obviousness

Tuesday, October 27th, 2015

The oral argument in KANEKA CORPORATION v. SKC KOLON PI, INC., No. 2015-1223 (Fed. Cir. Sept. 15, 2015) [Listen] will interest those of you who have ever had to address the role of inherency in an obviousness challenge.

My favorite quote about the role of inherency in an obviousness context is illustrated in Irah Donner’s excellent three book treatise, Patent Prosecution Law, Practice, and Procedure, Eighth Edition, Volume II at page 2776:

“That which may be inherent is not necessarily known. Obviousness cannot be predicated on what is unknown.”

In re Spormann, 363 F.2d 444, 150 USPQ 449, 452 (C.C.P.A. 1966).

The rule 36 judgment is available [here].

Oral Argument of the Week: CMG Financial Services v. Pacific Trust Bank

Thursday, October 22nd, 2015

In Microsoft Corp. v. i4i Ltd. Partnership, 131 S. Ct. 2238, 564 U.S., 180 L. Ed. 2d 131 (2011) the Supreme Court of the United States stated:

Under §282 of the Patent Act of 1952, “[a] patent shall be presumed valid” and “[t]he burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.” 35 U. S. C. §282. We consider whether §282 requires an invalidity defense to be proved by clear and convincing evidence. We hold that it does.

Microsoft Corp. v. i4i Ltd. Partnership, 131 S. Ct. 2238 (2011) (emphasis added).

The issue of evidence with respect to 35 U.S.C. §101 takes center stage in the oral argument of  CMG FINANCIAL SERVICES, INC. v. PACIFIC TRUST BANK, FSB, No. 2014-1855 (Fed. Cir. Sept. 15, 2015). [Link]

As you can see from the Rule 36 Judgment [link], the panel punted on the issue — which reminds me of another quote:

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.

Marbury v. Madison, 5 U.S. 137, 177 (1803).

Updated List of Patent Subject Matter Eligibility Decisions

Thursday, October 22nd, 2015

The USPTO updated its list of subject matter eligibility decisions in September.  The link is available [here].

One curious feature of the list is that the USPTO relies upon Rule 36 decisions from the Federal Circuit for some of the entries.

Speak up

Sunday, October 11th, 2015

Just a reminder that the deadline to comment on the USPTO’s July Patent Eligibility Guidance is coming up on October 28, 2015 — October 27th to be safe.

From the USPTO website:



The USPTO is interested in receiving public feedback on the July 2015 Update:  Subject Matter Eligibility, including the claim examples.

Any member of the public may submit written comments by electronic mail message over the Internet addressed to (link sends e-mail). Electronic comments submitted in plain text are preferred, but also may be submitted in ADOBE® portable document format or MICROSOFT WORD® format. The comments will be available for public inspection here at this Web page. Because comments will be available for public inspection, information that is not desired to be made public, such as an address or a phone number, should not be included in the comments. Comments will be accepted until October 28, 2015.


Portraits of Federal Circuit Judges

Thursday, October 8th, 2015

Here are links to some of the portraits of the Federal Circuit judges:

Judge Newman [Link]

Judge Mayer [Link]

Judge Lourie [Link]

Judge Bryson [Link]

Judge Wallach (Court of International Trade) [Link]

Chief Judge Rader (ret.)  [Link]

Chief Judge Michel (ret.)  [Link]

Judge Gajarsa (ret.)  [Link]

Oral Arguments and Stock Prices

Tuesday, October 6th, 2015

Rovi Corp. is another great example of how important patents are to companies in the computer age.  When five of Rovi’s patents were initially declared patent ineligible by a district court this past July, Rovi’s stock dropped dramatically relative to the NASDAQ:


Hypothetically, assuming this decision is reversed by the Federal Circuit and the patents are later challenged under 35 U.S.C. §103, it would be interesting to see if the change in stock price could be used as evidence of commercial success.  It would be hard to say that there is no nexus.

It will also be interesting to watch Rovi’s stock price on the day of the oral argument at the Federal Circuit.  For example, will the price fluctuate significantly not only during the oral argument but also when the panel for the case is announced on the morning of the oral argument.  Given how panel dependent patent eligibility outcomes can be, a Mayer, Dyk, Lourie panel might produce an entirely different swing than a Newman, Moore, Linn panel.

Obviously, this post and all other posts on this blog are not investment advice.

Updated Audio Key to the Voices of the Federal Circuit Judges

Sunday, October 4th, 2015

If you have been listening to oral argument recordings and have been wondering to whom a particular voice belongs, you should use the link to the audio key page, located on the upper right-hand portion of the home page.  The audio key has been updated to include the voices of the recently appointed Federal Circuit judges.

If you are curious which judge is speaking during an oral argument recording, my suggestion is to:

(1) pull up the opinion;*

(2) note from the opinion who the judges on the panel are; and

(3) use the sound bites on the audio key page to identify the speaker.

*Alternatively, if no opinion has issued and the case was recently argued, you can likely determine the panel from the “Upcoming Oral Arguments” link on the Federal Circuit web site.

En banc oral arguments

Saturday, October 3rd, 2015

The Federal Circuit convened to hear oral arguments in two en banc cases on Friday October 2, 2015.

The oral arguments are available here:

In re Tam:  [Listen]

Lexmark International, Inc. v. Impression Products, Inc.:  [Listen].