Archive for February, 2017

Decision Envy

Sunday, February 26th, 2017

There was a funny sound bite from back in June, shortly after the Enfish decision had been issued.  Judge Lourie initially noted that everybody cites Enfish in 101 proceedings.  Judge Chen quipped “not so much attention to DDR Holdings though” — Judge Chen authored DDR Holdings for the court.  [Listen].

Ex Parte Schulhauser

Thursday, February 23rd, 2017

The IPO has scheduled for March 1, 2017 what looks to be an interesting seminar on the PTAB’s recent precedential decision in Ex Parte Schulhauser:  [Link]

Here is a list of the PTAB’s precedential decisions listed on their web page as of February 23, 2017:

Video of Ninth Circuit Oral Argument in SEAL SHIELD, LLC v. OTTER PRODUCTS, LLC

Friday, February 17th, 2017

The Ninth Circuit has close to 3,500 oral arguments on video these days.  Below is a video of a recent oral argument in a trademark dispute:

The Ninth Circuit opinion is available [here].

Redacted oral arguments

Thursday, February 16th, 2017

The oral argument in SANY HEAVY INDUSTRY CO., LTD. v. International Trade Commission, No. 2015-1780 (Fed. Cir. Oct. 11, 2016) is a bit of a mystery.  It is not available on the Federal Circuit web site.  When I inquired about this a few months ago, I was told that it was sealed until it could be redacted.  Still, it has not shown up on the court’s web site as of today.  The court issued a Rule 36 Judgment in the case; so, the slate is pretty clean in that respect, as well.

Quote of the day: Pioneer Patents

Monday, February 13th, 2017

To what liberality of construction these claims are entitled depends to a certain extent upon the character of the invention, and whether it is what is termed in ordinary parlance a “pioneer.” This word, although used somewhat loosely, is commonly understood to denote a patent covering a function never before-performed, a wholly novel device, or one of such novelty and importance as to mark a distinct step in the progress of the art, as distinguished from a mere improvement or perfection of what had gone before. Most conspicuous examples of such patents are: The one to Howe of the sewing machine; to Morse of the electrical telegraph; and to Bell of the telephone. The record in this case would indicate that the same honorable appellation might be safely bestowed upon the original air-brake of Westinghouse, and perhaps also upon his automatic brake.

Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45, 43 S. Ct. 322, 67 L. Ed. 523 (1923).

The Patent Office treated the Dickinson invention as a primary or generic one. So did the Court of Appeals of the District of Columbia (25 App. D.C. 316), Judge Rose of the District Court of Maryland (Hildreth v. Lauer & Suter Co., 208 Fed. 1005), and the Circuit Court of Appeals of the Fourth Circuit (Lauter & Suter Co. v. Hildreth, 219 Fed. 753). In this view, after a consideration of the record, and for the reasons stated, we concur. The history of the art shows that Dickinson took the important but long delayed and therefore not obvious step from the pulling of candy by two hands guided by a human mind and will to the performance of the same function by machine. The ultimate effect of this step with the mechanical or patentable improvements of his device was to make candy pulling more sanitary, to reduce 35*35 its cost to one-tenth of what it had been before him, and to enlarge the field of the art. He was, therefore, a pioneer.

Hildreth v. Mastoras, 257 U.S. 27, 34-35 (1921)(emphasis added).

Odds and Ends

Friday, February 10th, 2017
  • Judge Stoll of the Federal Circuit will be the featured speaker at a CLE event at the Denver Patent Office next Friday.  The link is available [here].
  • The Federal Circuit’s opinion in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc. should be coming out soon.  It has been roughly four months since the oral argument.
  • I wonder what duty the USPTO owes to the Supreme Court to notify the Court when leadership changes at the USPTO. When certiorari was granted in Bilski, the appeal was captioned Bilski v. Doll [Link].  By the time the decision issued, Director Kappos had taken over and the decision was captioned Bilski v. Kappos.  Currently, the Tam (perhaps “Doe” v. Tam) case is pending at the Supreme Court.
  • If you missed it, the Klingon language copyright case settled last month.
  • The monkey selfie copyright appeal is pending at the Ninth Circuit.

En banc oral argument of Parkinson v. DOJ

Tuesday, February 7th, 2017

The Federal Circuit sat en banc today to hear the oral argument of Parkinson v. DOJ.  While not an intellectual property case, I think it is always interesting to listen to the CAFC’s en banc proceedings.

The recording of the oral argument is available [here ].

The original panel decision is available [here].

As a reminder, the audio key to the voices of the judges is avaialble [here].

Oral Argument of the Day: Golden Bridge Technology, Inc. v. APPLE INC.

Sunday, February 5th, 2017

The oral argument of the day is Golden Bridge Technology, Inc. v. APPLE INC., No. 2016-1537 (Fed. Cir. Jan. 27, 2017).

The oral argument in this case raises the issue of whether the Federal Circuit’s decision in Shum v. Intel should be overruled in view of recent Supreme Court decisions.  Recent Supreme Court decisions emphasize the discretion of a district court to award attorney’s fees in patent and copyright cases  (Octane Fitness and Kirtsaeng II) as well as enhanced damages in patent cases (Halo) — as opposed to more rigid and rules-based approaches.

The recording of the oral argument is available [here].

The CAFC’s Rule 36 Judgment is available [here].

The Shum v. Intel decision is available [here].

Oral Argument of the day: FO2GO v. Pinterest

Friday, February 3rd, 2017

The oral argument of the day is FO2GO v. Pinterest.  This case concerns §112, ¶f (fka §112, ¶6) issues.

The recording of the oral argument is available [here].

The Federal Circuit’s Rule 36 Judgment is available [here].

Oral Argument of the Day: In re Schweickert

Wednesday, February 1st, 2017

The oral argument of the day is from In re Schweickert.  The case concerns motivation to combine references in an obviousness rejection by the USPTO.

The recording is available [here].

The court’s opinion is available [here].

I believe the attorney for the appellant is undefeated in arguing cases at the Federal Circuit.