Archive for August, 2016

Federal Circuit Is Headed to Malibu

Tuesday, August 23rd, 2016

The Federal Circuit will be sitting in southern California this October, with sessions in Los Angeles, Orange County, Irvine, and Malibu.  I’m guessing that the Malibu stop will be at Pepperdine University School of Law.  The schedule from the CAFC web site is shown below:

Sitting in Los Angeles, CA
Panel A:  Tuesday, October 04, 2016, 10:00 A.M.
15-1672 PATO NuVasive, Inc. v. Medtronic, Inc. [argued]
15-1670 PATO NuVasive, Inc. v. Medtronic, Inc. [argued]
16-1054 DCT Blue Spike, LLC v. Google Inc. [argued]
16-1068 CFC Agility Defense v. US [argued]
16-2041 MSPB Evans v. MSPB [on the briefs]
Panel C:  Wednesday, October 05, 2016, 10:00 A.M.
16-1208 PATO Affinity Labs of Texas, LLC v. Samsung Electronics Co Ltd [argued]
16-1216 DCT ProFoot, Inc. v. Merck & Co., Inc. [argued]
16-1278 CFC Rocky Mountain Helium, LLC v. US [argued]
16-1785 DCT Shire Development, LLC v. Watson Pharmaceuticals, Inc. [argued]
16-1986 MSPB Hambrick v. USPS [on the briefs]
16-2148 CFC Chittenden v. US [on the briefs]
Panel D:  Wednesday, October 05, 2016, 10:00 A.M.
16-1046 PATO DataTreasury Corporation v. Fidelity National Information [argued]
16-1050 PATO DataTreasury Corporation v. Jack Henry and Associates, Inc [argued]
16-1229 PATO DataTreasury Corporation v. Fiserv, Inc. [argued]
16-1250 PATO In Re DataTreasury Corporation [argued]
16-1933 MSPB Hernandez v. MSPB [on the briefs]
16-1934 MSPB Hernandez v. MSPB [on the briefs]
Sitting in Malibu, CA
Panel B:  Tuesday, October 04, 2016, 10:00 A.M.
15-1410 DCT Universal Electronics, Inc. v. Universal Remote Control, Inc. [argued]
15-1907 DCT Tranxition, Inc. v. Lenovo (United States) Inc. [argued]
15-3233 MSPB Howard v. Air Force [argued]
16-1298 CFC Estes Express Lines v. US [argued]
16-1557 MSPB El v. MSPB [on the briefs]
16-1660 MSPB Pistilli v. MSPB [on the briefs]
Sitting in Irvine, CA
Panel E:  Thursday, October 06, 2016, 10:00 A.M.
15-3225 MSPB Wilson v. Navy [argued]
16-1062 PATO In Re Villena [argued]
16-1184 PATO Knauf Insulation, Inc. v. Rockwool International A/S [argued]
16-1370 DCT Red Dog Mobile Shelters, LLC v. Kat Industries, Inc. [argued]
16-1849 CAVC Harris v. McDonald [on the briefs]
16-1910 MSPB Scrivens v. OPM [on the briefs]
Sitting in Orange, CA
Panel F:  Thursday, October 06, 2016, 10:00 A.M.
16-1077 DCT Intellectual Ventures I LLC v. Capital One Financial Corp. [argued]
16-1128 DCT Intellectual Ventures I LLC v. Erie Indemnity Company [argued]
16-1143 PATO Cisco Systems, Inc. v. Cirrex Systems, LLC [argued]
16-1313 CFC Sandoval Lua v. US [argued]
16-1667 MSPB Edwards v. USPS [on the briefs]

Supreme Court Oral Argument Recordings

Thursday, August 18th, 2016

The OYEZ site is a great site for listening to recordings of oral arguments from the Supreme Court (going back to at least 1956).

Here is a link to the oral arguments from patent cases at the Supreme Court: [Link].

Here is a link to the oral arguments from trademark cases at the Supreme Court [Link].

And, here is a link to the oral arguments from copyright cases at the Supreme Court [Link].

All content on and other sites and projects maintained by Oyez is released under the Creative Commons Attribution-NonCommercial 4.0 International License.

Secondary Indicia of Patent Eligibility

Saturday, August 13th, 2016

I believe it was the oral argument of LendingTree v. Zillow in which the patent owner mentioned “secondary indicia of patent eligibility.”  Because the Supreme Court has conflated patent eligibility with obviousness in its Bilski-Mayo-Alice line of cases, I suppose it is a natural evolution for the patent bar to begin to rely on traditional 103 arguments to establish patent eligibility.

The argument would be that if the elements of a claim as an ordered combination recite something that has achieved, for example, commercial success, then the claimed invention must not have been well-understood, routine, and conventional, as of the date of its invention.  Therefore, the nature of the claim has been transformed into a patent eligible application.

Coordinate Adjectives:”Well-understood, routine, conventional”

Monday, August 8th, 2016

From time to time during oral arguments at the Federal Circuit, grammatical issues arise.  Sometimes a judge will instruct an advocate about what the proper grammatical interpretation of something is (according to that particular judge).  And, at least one judge is a self-described “grammar nerd.”  I’m curious if any of the judges will ever put their grammar credentials on the line to assess the proper grammatical interpretation of “well-understood, routine, conventional activity” from the MayoAlice cases.

It seems clear to me that in the phrase “well-understood, routine, conventional activity” that “well-understood, routine, conventional”  are being used as coordinate adjectives.  The site gives this definition for coordinate adjectives:

Coordinate adjectives are two adjectives, of equal weight, modifying the same noun. Generally, you should separate the adjectives with a comma. A good test to use: Put the word and between the two adjectives and see if that makes sense. If so, the adjectives are coordinate adjectives.

Consider this example:

It was a long, hot summer.

See (last accessed August 7, 2016).

As the test makes clear, “well-understood, routine, conventional” is the equivalent of “well-understood, routine, and conventional” — a conjunctive phrase.

The Federal Circuit has noted that a conjunctive test requires that all parts of the test be met.  For example, in Luigi Bormioli v. United States, 304 F.3d 1362 (2002), after determining that Bormioli did not satisfy a criterion of a conjunctive test,  a panel of Judges Dyk, Clevenger, and Archer stated for the Federal Circuit:

We conclude that the Court of International Trade correctly held that Bormioli did not demonstrate that it met TD 85-111’s criterion that its financing arrangement with Bormioli Italy for the subject charges was in writing.

Because the TD 85-111 requirements are conjunctive, we need not address whether Bormioli satisfied the final requirement: that “where required by Customs, the buyer can demonstrate that [1][t]he goods undergoing appraisement are actually sold at the price declared as the price actually paid or payable, and [2][t]he claimed rate of interest does not exceed the level for such transaction prevailing in the country where, and at the time, when the financing was provided.” See TD 85-111. For these reasons, the judgment of the Court of International Trade is


Luigi Bormioli v. United States, 304 F.3d 1362 (2002)(emphasis added).

Other circuits have applied conjunctive principles as well.  For example, in US v. SOTO-MATEO, No. 13-2031 (1st Cir. Aug. 26, 2015), Judges Kayatta, Selya, and Dyk stated for the First Circuit:

A defendant facing a charge of illegal reentry after removal may, under some circumstances, challenge the validity of the underlying order of removal. See 8 U.S.C. § 1326(d); United States v. Luna, 436 F.3d 312, 317 (1st Cir. 2006). To wage such a collateral attack, he must demonstrate that

(1) [he] exhausted any administrative remedies that may have been available to seek relief against the order;

(2) the deportation proceedings at which the order was issued improperly deprived [him] of the opportunity for judicial review; and

(3) the entry of the order was fundamentally unfair.

8 U.S.C. § 1326(d). In reviewing a district court’s determination as to whether a particular defendant has satisfied these requirements, we assay the district court’s subsidiary factual determinations for clear error, see United States v. DeLeon, 444 F.3d 41, 48 (1st Cir. 2006), and afford plenary review to its conclusions of law, see Luna, 436 F.3d at 316. Moreover, when “performing the collateral attack analysis under § 1326(d), [an inquiring] court ordinarily should address the initial test of exhaustion of administrative remedies before going on to the other two tests.” DeLeon, 444 F.3d at 45. The elements of section 1326(d) are conjunctive, and an appellant must satisfy all of those elements in order to prevail on a collateral challenge to his removal order. See Luna, 436 F.3d at 317.

US v. SOTO-MATEO, No. 13-2031 (1st Cir. Aug. 26, 2015)(emphasis added).

If the grammarists on the Federal Circuit choose to apply proper rules of grammar to the “well-understood, routine, conventional activity” test so as to treat it as a tripartite conjunctive test, they could rein in much of the overzealous application of Mayo/Alice that runs rampant today in assessing patent eligibility under 35 U.S.C. §101.