Archive for December, 2016

White v. Dunbar Sesquicentennial

Friday, December 30th, 2016

An advocate noted in a recent oral argument at the Federal Circuit that we are celebrating the 150th anniversary of White v. Dunbar.  White v. Dunbar is known for its “nose of wax” statement.  The case was decided by the Supreme Court on November 15, 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. This has been so often expressed in the opinions of this court that it is unnecessary to pursue the subject further. See Keystone Bridge Co. v. Phoenix Iron Co., 95 U. S. 274, 278; James v. Campbell, 104 U. S. 356, 370.

White v. Dunbar, 119 U.S. 47, 7 S. Ct. 72, 30 L. Ed. 303 (1886).


Thursday, December 22nd, 2016

I created a “Hot Bench” category to identify oral arguments that I post that had a particularly “hot bench.”  The en banc oral argument in the In Re Aqua Products case was a particularly hot bench for the PTO.  The questioning showed little love for the PTO’s arguments.

That got me to thinking about all the valuable patents that have been invalidated by the PTO due to the PTO’s refusal to accept some amendments during IPR’s.  I know very little about “takings” law; but, I wonder if there is a cause of action for administrative taking of a patent right by the federal government due to improper application or improper promulgation of a rule that results in loss of a patent right?

En banc oral argument of In re Aqua Products

Monday, December 19th, 2016

The Federal Circuit sat en banc on December 9th to hear the en banc oral argument in In re Aqua Products, Inc.   Aqua challenges the Patent Trial and Appeal Board’s amendment procedures, which require the patentee to demonstrate that amended claims would be patentable over art of record.

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

You can review the vacated panel opinion [here].

Aqua Products’ supplemental brief is available [here].

Oral Argument from O’Bannon v. NCAA

Monday, December 12th, 2016

The Supreme Court denied certiorari in the antitrust case O’Bannon v. NCAA a couple of months ago.  I thought the oral argument from the Ninth Circuit case might be of interest:


PTO cites lack of evidence of “routine” and “conventional” to support PTAB’s confirmation of claims under §101

Friday, December 9th, 2016

I have been listening to the oral argument of the Ameranth v. Apple case.  In the underlying PTAB decision, the PTAB granted CBM review  of some claims and denied CBM review of other claims.  Those decisions were appealed by the parties and the USPTO Solicitor’s Office intervened.  That put the Solicitor’s Office in the unusual position of arguing that the party that had been denied review of some claims under §101 by the PTAB had not met its burden.

As part of its brief, the PTO cited a lack of evidence that the claims recited routine and conventional [sic: and well-understood] activities:

“Finally, with respect to the claims that the Board confirmed, the petitioners failed to meet their burden of showing that these claims recite ineligible subject matter. Although the petitioners showed that the claims are directed to an abstract idea, they failed to present any evidence or analysis that the claims’ recited technologies are routine and conventional.”

USPTO Brief in Apple et al. v. Ameranth at page 20.

The PTO’s brief in Ameranth is available [here].

For comparison purposes, the PTO’s brief from In re Villena is available [here].

In its In re Villena brief, the PTO argues that the §101 inquiry is a “pure” question of law.  That assertion seems to be belied by a whole host of cases from the Federal Circuit and district courts that have stated that the §101 analysis is a question of law informed by underlying facts. See Arrhythmia Research Technology v. Corazonix Corp., 958 F.2d 1053 (Fed. Cir. 1992); In re Comiskey, 554 F.3d 967 (Fed. Cir. 2009); SINCLAIR-ALLISON, INC. v. FIFTH AVENUE PHYSICIAN SERVICES, LLC, No. CIV-12-360-M (W.D. Okla. Dec. 19, 2012); PROTOSTORM, LLC v. ANTONELLI, TERRY, STOUT & KRAUS, LLP, No. 08-CV-931 (PKC)(JO) (E.D.N.Y. June 5, 2015); WIRELESS MEDIA INNOVATIONS, LLC v. MAHER TERMINALS, LLC, Civil Action No. 14-7004 (D.N.Y. Apr. 20, 2015); EXECWARE, LLC v. BJ’S WHOLESALE CLUB, INC., Civil Action No. 14-233-LPS (D. Del. July 15, 2015); TRIPLAY, INC. v. WhatsAPP INC., Civil Action No. 13-1703-LPS (D. Del. Apr. 28, 2015); VS TECHNOLOGIES, LLC v. TWITTER, INC., Civil Action No. 2: 11cv43 (E.D. Va. Apr. 26, 2012); Cyberfone Systems, LLC v. Cellco Partnership, 885 F. Supp. 2d 710 (D. Del. 2012) — not to mention the PTAB’s decision in PNC Bank v. Secure Axcess, CBM2014-0100 (PTAB Sept. 9, 2014) citing a lack of evidence of a fundamental economic practice.

Oral Argument of the Week: Bose Corp. v. SDI Technologies, Inc.

Thursday, December 8th, 2016

The oral argument of the week is Bose Corp. v. SDI Technologies, Inc.  It was argued on November 7, 2016 and decided by Rule 36 Judgment on November 14, 2016.  I think you might enjoy listening to this oral argument because it discusses use of materials from the “Way Back Machine” on, as well as hearsay issues.

The oral argument is available [here].

The Rule 36 Judgment is available [here].

By the way, I just noticed that now has quite a library of old time radio programs, such as Dragnet.  I bet Joe Friday would have considered “well-known,” “conventional,” and “routine” to all be factual inquiries. []


Wednesday, December 7th, 2016

If you were curious about the two-judge decision in Impulse Technology Ltd. v. Microsoft Corporation decided today, it appears that the Federal Circuit judge that recused herself was Judge Moore.  From listening to the initial part of the oral argument, it appears that one of the parties raised a possible conflict issue upon learning the morning of oral argument that Judge Moore was to be part of the panel to hear the case. [Listen]

If memory serves correctly, it seems that the list of judges that have recused themselves since 2007 includes at least Judge Moore, Judge O’Malley, Judge Clevenger, Judge Michel (now retired), Judge Chen, Judge Taranto, and Judge Stoll.

PTO Position on Evidence in a §101 Rejection

Friday, December 2nd, 2016

The PTO has been notably silent on the issue of what evidence is required from the PTO in a §101 analysis.  The PTO Solicitor’s Office did express some views on the issue in its briefing of the In re Villena appeal.  Perhaps they have changed their mind after McRO v. Bandai.  You can access the PTO’s brief [here].  This might be helpful material to anyone that is planning on attending the upcoming PTO roundtable on Monday on subject matter eligibility.

The Federal Circuit issued a Rule 36 Judgment on the appeal.  Because the PTAB rejected the claims for 102 and 103 reasons in addition to 101, one cannot say that the Federal Circuit was endorsing the Solicitor’s Office views on patent eligibility.  The Federal Circuit does not always address all issues on appeal to reach an affirmance of the Board.  For example, in In re Gleave the court stated:

Therefore, we affirm the Board’s rejection of claims 1, 4, 15, and 18-21 of the ‘493 application under § 102(b). We need not reach the § 103 obviousness rejection.

In re Gleave, 560 F. 3d 1331, 1338 (Fed. Cir. 2009)

Frankenstein’s Monster and the Federal Circuit

Thursday, December 1st, 2016

While the Federal Circuit makes reference to literary characters from time to time, it is rare that Frankenstein’s monster has ever come up in Federal Circuit or CCPA opinions.  I thought it was a creative expression in a recent oral argument where the patent owner referred to the PTAB’s rejection as a “Frankenstein hodge-podge collection of citations.”  [Listen]

I am familiar with a “rolling 103 rejection.”  Perhaps we should add a “Frankenstein’s monster rejection” to the list.