The oral argument of the day comes from this month’s Federal Circuit decision in THALES VISIONIX INC. v. US, No. 2015-5150 (Fed. Cir. Mar. 8, 2017) (reversing a holding of patent ineligibility). This reversal has not gotten as much coverage as other patent eligibility cases, I suspect — probably because it is the result of an appeal of a decision by the Court of Federal Claims. Appeals of patent cases from the Court of Federal Claims are a bit of rarity.
It is interesting to note that Senior Judge Bryson of the Federal Circuit is the presiding judge of the three-judge “Foreign Intelligence Surveillance Court of Review” which hears appeals from the “Foreign Intelligence Surveillance Court.”
The Foreign Intelligence Surveillance Court was established by Congress in 1978. The Court entertains applications made by the United States Government for approval of electronic surveillance, physical search, and certain other forms of investigative actions for foreign intelligence purposes.
See http://www.fisc.uscourts.gov (last accessed March 29, 2017).
Given current events, I wonder if we will hear more about the court in the coming months.
Rule 36 allows us to “enter a judgment of affirmance without opinion” under certain circumstances. Since there is no opinion, a Rule 36 judgment simply confirms that the trial court entered the correct judgment. It does not endorse or reject any specific part of the trial court’s reasoning. In addition, a judgment entered under Rule 36 has no precedential value and cannot establish “applicable Federal Circuit law.” See, e.g., U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1556 (Fed.Cir.1997)
Similarly, our Rule 36 judgments only affirm the judgment of the lower tribunal. “[A] Rule 36 judgment simply confirms that the trial court entered the correct judgment. It does not endorse or reject any specific part of the trial court’s reasoning.” Rates Tech., Inc. v. Mediatrix Telecom, Inc., 688 F.3d 742, 750 (Fed.Cir. 2012).
TecSec, Inc. v. International Business Machines Corp., 731 F.3d 1336 (Fed. Cir. 2013).
As one example, the In re Alsabah case presented in the chart was an appeal of both 101 and 103 issues.
Query whether a rejection based on one of the Rule 36 Judgments in the chart could satisfy the requisite agency reasoning required by In re Sang-Su Lee:
Judicial review of a Board decision denying an application for patent is thus founded on the obligation of the agency to make the necessary findings and to provide an administrative record showing the evidence on which the findings are based, accompanied by the agency’s reasoning in reaching its conclusions. See In re Zurko, 258 F.3d 1379, 1386, 59 USPQ2d 1693, 1697 (Fed. Cir.2001) (review is on the administrative record); In re Gartside, 203 F.3d 1305, 1314, 53 USPQ2d 1769, 1774 (Fed.Cir. 2000) (Board decision “must be justified within the four corners of the record”).
In re Sang-Su Lee, 277 F.3d 1338 (Fed. Cir. 2002).
I was trying to think of a way to create greater awareness of the Federal Circuit’s rulings. If greater attention could be drawn to the Federal Circuit’s workload predicament and the resulting need to issue so many Rule 36 judgments, Congress might act to increase the number of judgeships allocated to the court. Moreover, if there were a competitive aspect to reviewing Federal Circuit opinions, even those derelict patent attorneys we all encounter from time to time might be more interested in staying abreast of Federal Circuit developments.
So, one thought that occurs to me is a Fantasy Football-like game with an educational bent, “Fantasy Federal Circuit.” The rules of “Fantasy Federal Circuit” may be tailored to your liking; but, here is one proposed set of rules:
1.Draft or pick 5 judges per team roster;
2.Every week two teams go head to head;
3.4 Points awarded to a team for an opinion authored for the court during the week by a judge on the roster;
4.3 points awarded for a panel opinion issued during the week in which a judge on the roster participates in the majority (not including the author);
5.5 points awarded for an opinion issued during the week in which a judge on the roster authors a dissenting opinion;
6.7 points awarded for an opinion issued during the week in which a judge on the roster authors an en banc opinion for the majority;
7.Negative 1 point awarded for a judgment issued during the week in which a judge on the roster forms part of a Rule 36 judgment panel;
8.Negative 10 points if the Supreme Court reverses during the week an opinion authored for the majority by a judge on the roster, regardless of when the Federal Circuit opinion was authored and with respect to one or more issues;
9. Points received for one judge’s participation in an opinion/judgment does not prevent points being awarded for a second or third judge’s role in that opinion/judgment;
10.The team that has the highest score at the end of the week — even if a negative number — wins the match;
11. Only CAFC rulings from appeals of IP cases from the USPTO, district courts, ITC, and Court of Federal Claims are utilized.
12. Per curiam opinions are treated as if there is no author.
13. No wagering.
Alternative version:Play solitaire.
I tried a practice round this past week and did not fare too well — my team scored -11 points. But, I doubt you can beat it . . . .
The oral argument of the day is In re Alsabah. I hope the appellant requested rehearing in this rule 36 judgment. The outcome seems inconsistent with the Federal Circuit’s statement in In re Smith:
That is not to say that all inventions in the gaming arts would be foreclosed from patent protection under § 101. We could envisage, for example, claims directed to conducting a game using a new or original deck of cards potentially surviving step two of Alice. The Government acknowledged as much during oral argument. See Oral Argument at 14:59-15:31, available at http://oralarguments.cafc.uscourts.gov/default.aspx?fl=2015-1664.mp3.
In re Smith, 815 F.3d 816, 819 (Fed. Cir. 2016)(cited excerpt of oral argument available [here]).
From what I could discern from the oral argument, it is hard to believe that the claim as a whole recites routine, conventional, and well-understood subject matter, under Step 2 of Alice or Step 2B of the PTO guidelines.
The Federal Circuit issued an errata with respect to the Reoforce opinion on April 28, 2017. The errata significantly changes the language of the decision in some respects: [Link]. For example, the correction now states that an unpatented mining claim is a property right in the full sense:
The Mining Law allows the holder of a valid mining claim to apply for “a ‘patent,’ that is, an official document issued by the United States attesting that fee title to the land is in the private owner.” Kunkes v. United States, 78 F.3d 1549, 1551 (Fed. Cir. 1996). [in- sert footnote 1] Until a patent issues, however, the mining claimant has an “unpatented” mining claim, a “unique form of property.” Best, 371 U.S. at 335– 36; see also Union Oil Co. v. Smith, 249 U.S. 337, 349 (1919) (an unpatented mining claim is “a property right in the full sense”).
The Federal Circuit issued a different kind of patent opinion last week — a decision relating to patents on mining claims. Apparently, the patents that the US government issues for mining claims are considered property rights in the full sense:
With the extraterritoriality issues being argued today in the Lexmark patent case, I am reminded of the extraterritoriality trademark case of Trader Joe’s v. Hallatt from the Ninth Circuit. The Ninth Circuit’s 2016 opinion is available [here].
The oral argument of the day comes from a Supreme Court case argued last term, CRST Van Expedited, Inc. v. EEOC, 136 S. Ct. 1642, 578 U.S., 194 L. Ed. 2d 707 (2016). The Court held that a favorable ruling on the merits is not a necessary predicate to find that a defendant has prevailed.
The quote for the day comes from the Supreme Court’s recent decision in LIFE TECHNOLOGIES CORPORATION v. PROMEGA CORPORATION, No. 14-1538 (U.S. Feb. 22, 2017). In that decision the Court was attempting to discern whether Section 271(f)(1)’s phrase “substantial portion” refers to a qualitative or a quantitative analysis. The Court said:
As a more general matter, moreover, we cannot accept Promega’s suggestion that the Court adopt a different analytical framework entirely—one that accounts for both the quantitative and qualitative aspects of the components. Promega reads §271(f)(1) to mean that the answer to whether a given portion of the components is “substantial” depends not only on the number of components involved but also on their qualitative importance to the invention overall. At first blush, there is some appeal to the idea that, in close cases, a subjective analysis of the qualitative importance of a component may help determine whether it is a “substantial portion” of the components of a patent. But, for the reasons discussed above, the statute’s structure provides little support for a qualitative interpretation of the term.
Nor would considering the qualitative importance of a component necessarily help resolve close cases. To the contrary, it might just as easily complicate the factfinder’s review. Surely a great many components of an invention (if not every component) are important. Few inventions, including the one at issue here, would function at all without any one of their components. Indeed, Promega has not identified any component covered by the Tautz patent that would not satisfy Promega’s “importance” litmus test.How are courts—or, for that matter, market participants attempting to avoid liability—to determine the relative importance of the components of an invention? Neither Promega nor the Federal Circuit offers an easy way to make this decision. Accordingly, we conclude that a quantitative interpretation hews most closely to the text of the statute and provides an administrable construction.
LIFE TECHNOLOGIES CORPORATION v. PROMEGA CORPORATION, No. 14-1538 (U.S. Feb. 22, 2017)(emphasis added).
Isn’t it interesting how outside of the context of §101, all claim limitations take on a renewed sense of importance. Indeed, the Court states that “a great many components of an invention (if not every component) are important. Few inventions . . . would function at all without any one of their components.” There is no wave of the hand to dismiss mere pre-solution activity or post-solution activity. Rather, as it should be, every component of a claim is once again deemed important. How refreshing.
Moreover, the Court noted how difficult it could be for a factfinder to assess the qualitative importance of a particular claim element. This “qualitative importance” language sounds a little bit like the “significantly more” language of Mayo. Interesting that the Court had a problem with “qualitative importance” being too difficult for a factfinder to apply, yet left the patent bar twisting in the wind with its “significantly more” test.
It will be interesting to see if this quote from Life Technologies makes its way into any §101 opinions of the Federal Circuit. After all, it is the most recent pronouncement from the Supreme Court that all claim limitations are important.
If you were an appellate judge, I imagine that you would prefer to review a lot of matters as “issues of law.” The great thing about issues of law is that issues of law make the appellate court the final arbiter of a determination. As you know, issues of law are reviewed de novo. Issues of fact are reviewed with some level of deference to the factfinder.
In the previous post, I explained that there are several issues percolating at the Federal Circuit with respect to §101 that have not yet been resolved as issues of law or issues of fact. Perhaps the prospect of giving up de novo review has something to do with that delay.
Retired Chief Judge Rader was a staunch critic of the doctrine of claim vitiation. He explained that the tests for vitiation and equivalents are coterminous. The only difference was that the doctrine of claim vitiation was an issue of law (reviewed de novo) while the doctrine of equivalents was an issue of fact (not reviewed de novo). Therefore, one could assert the doctrine of claim vitiation for purposes of summary judgment, since there could be no fact issue to dispute. You can hear him explain this in the 2007 oral argument of Wleklinski v. Targus: [Listen]. See also his “Additional views” in the Nystrom v. Trex case.
While Judge Rader does not mention it, the adoption of de novo review for the doctrine of claim vitiation also made the appellate judges the final arbiters of a doctrine of claim vitiation analysis. They do not need to defer to any factfinder.
We will have to wait and see how the Federal Circuit resolves the §101 issues.
It is no secret that the Supreme Court has made a dog’s breakfast out of 35 U.S.C. §101. But, the Federal Circuit’s jurisprudence in this area of the law has not been the court’s finest hour, either. For example, while McRo v. Bandai was a good start, the Federal Circuit has been hesitant to address the role of facts/evidence in a patent eligibility analysis, in several ways.
As an aside, I made the mistake of working on this post while watching a video of Allen Iverson’s famous “Practice” press conference. Now every time that I think about these issues, I envision Allen Iverson sitting at the dais dressed in a black robe and my mind substitutes “evidence” for “practice” and “patent eligibility” for “game”:
Some of the ways that the Federal Circuit seems hesitant to address the role of facts/evidence of patent eligibility in its opinions are:
1) Acknowledging that patent eligibility is a question of law informed by underlying factual findings
While patent eligibility is a question of law, Federal Circuit opinions rarely recognize that previous CAFC panels have stated that there are underlying factual issues that can inform the analysis:
Whether a claim is directed to statutory subject matter is a question of law. Although determination of this question may require findings of underlying facts specific to the particular subject matter and its mode of claiming . . . .
Arrhythmia Research Technology v. Corazonix Corp., 958 F.2d 1053 (Fed. Cir. 1992).
It is well-established that “whether the asserted claims … are invalid for failure to claim statutory subject matter under 35 U.S.C. § 101, is a question of law which we review without deference.” AT & T Corp. v. Excel Commc’ns, Inc., 172 F.3d 1352, 1355 (Fed.Cir.1999). As a question of law, lack of statutory subject matter is a “ground [for affirmance] within the power of the appellate court to formulate.” Chenery, 318 U.S. at 88, 63 S.Ct. 454. While there may be cases in which the legal question as to patentable subject matter may turn on subsidiary factual issues, Comiskey has not identified any relevant fact issues that must be resolved in order to address the patentability of the subject matter of Comiskey’s application. Moreover, since we would review a Board decision on the issue of patentability without deference, see AT & T, 172 F.3d at 1355, the legal issue concerning patentability is not “a determination of policy or judgment which the agency alone is authorized to make.” Chenery, 318 U.S. at 88, 63 S.Ct. 454.
In re Comiskey, 554 F.3d 967 (Fed. Cir. 2009)(Judge Dyk writing for the court).
To their credit, many district court judges have not been shy to cite precedent that stand for the proposition that §101 is an issue of law informed by underlying factual issues. See, e.g., 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).
2) Identification of an abstract idea.
Despite the Supreme Court pointing to factual sources to support its conclusions that the claims in Bilski1 and Alice2 were directed to abstract ideas and that Mayo3 was directed to a natural phenomenon, the Federal Circuit has yet to confirm that a tribunal must always support an assertion of an abstract idea with factual evidence.
To its credit, the PTAB required such evidence in PNC Bank v. Secure Axcess, CBM2014-0100 (PTAB Sept. 9, 2014). And, the PTAB noted that the Supreme Court supported its determination in the Alice decision:
“We also find that Petitioner does not provide sufficient persuasive evidentiary support that the placing of a trusted stamp or seal on a document is “a fundamental economic practice” or a “building block of the modern economy.” SeeAlice, 134 S. Ct. at 2356 (citing various references concerning the concept of intermediated settlement, including an 1896 reference).”
PNC Bank v. Secure Axcess, CBM2014-0100 (PTAB Sept. 9, 2014).
This issue was before the court, for example, in IN RE VILLENA, No. 2016-1062 (Fed. Cir. Oct. 13, 2016). However, the court chose to decide that case by a Rule 36 Judgment;
3) Proof of (i) conventional, (ii) routine, and (3) well-understood activity in the “significantly more” analysis
The Federal Circuit has yet to confirm that factual evidence must be provided in order to prove that an ordered combination of claim elements is a (i) conventional, (ii) routine, and (iii) well-understood activity. At least this issue is on the radar screen of some of the judges. For example, in the oral argument of Apple v. Ameranth, Judges Reyna and Chen inquired about this type of inquiry. [Listen] and [Listen]. And, the USPTO Solicitor’s Office addressed the impact of a lack of evidence, as well: [Listen]. In IPLearn v. Microsoft, Judge Moore asked about evidence of conventionality: [Listen]. Unfortunately, the court issued a Rule 36 Judgment in that case.
The question of whether the “significantly more” inquiry — under step 2A of the Alice/Mayo test — is an “issue of law” or an “issue of fact” was before the Federal Circuit in January 2017 in America’s Collectibles Network v. The Jewelry Channel, Inc. USA. In this sound bite, you can listen to the appellant clearly tee up the issue for the Federal Circuit. [Listen] The court issued a Rule 36 Judgment, however.
Similarly, in In re Villena, Judge Taranto asked whether the inquiry into whether something is “conventional” could be anything other than a fact question: [Listen]. Unfortunately, the court issued a Rule 36 Judgment.
4) Secondary indicia of patent eligibility
Despite the opportunities to do so, the Federal Circuit has yet to recognize a principle of “secondary indicia of patent-eligibility.” Just as evidence of “secondary indicia of non-obviousness” can be used in a 35 U.S.C. §103 analysis, evidence of “secondary indicia of patent eligibility” should be permitted in a 35 U.S.C. §101 analysis. For example, if there is a nexus between a claimed invention and the claimed invention’s significant commercial success, it must not have been a (i) conventional, (ii) routine, and (iii) well-understood activity. If the Supreme Court is going to conflate §§101 and 103, then secondary indicia principles under §103 should be infused into the §101 analysis, as well.
This is an issue that has been raised in several oral arguments. For example, it was raised in Lending Tree v. Zillow : [Listen]. And, Judges Chen and Stoll observed that the argument had been made in Apple v. Ameranth: [Listen] and [Listen]. To its credit, the USPTO Solicitor’s Office even acknowledged in the oral argument of Apple v. Ameranth that secondary indicia should be considered as long as there is a nexus between the proffered secondary indicia and the claim elements: [Listen].
5) Standard of proof to establish patent ineligibility
The Federal Circuit recently passed up the opportunity to rule that the standard of proof required to establish patent ineligibility must be by “clear and convincing evidence.” See TRADING TECHNOLOGIES INTERNATIONAL, INC. v. CQG, INC., No. 2016-1616 (Fed. Cir. Jan. 18, 2017), at footnote 2:
2. The parties dispute whether the district court erred in requiring proof of ineligibility under § 101 by clear and convincing evidence. Because our review is de novo, and because under either standard the legal requirements for patentability are satisfied, we need not address this dispute.
TRADING TECHNOLOGIES INTERNATIONAL, INC. v. CQG, INC., No. 2016-1616 (Fed. Cir. Jan. 18, 2017).
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1. In Bilski v. Kappos, the Supreme Court noted: “In light of these precedents, it is clear that petitioners’ application is not a patentable “process.” Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk: “Hedging is a fundamental economic practice long prevalent in our system of commerce and taught in any introductory finance class.” 545 F.3d, at 1013 (Rader, J., dissenting); see, e.g., D. Chorafas, Introduction to Derivative Financial Instruments 75-94 (2008); C. Stickney, R. Weil, K. Schipper, & J. Francis, Financial Accounting: An Introduction to Concepts, Methods, and Uses 581-582 (13th ed.2010); S. Ross, R. Westerfield, & B. Jordan, Fundamentals of Corporate Finance 743-744 (8th ed.2008). ” Bilski v. Kappos, 130 S. Ct. 3218, 3231 (2010).
2. In Alice v. CLS, the Supreme Court noted: “On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk. Like the risk hedging in Bilski, the concept of intermediated settlement is “`a fundamental economic practice long prevalent in our system of commerce.'” Ibid.; see, e.g.,Emery, Speculation on the Stock and Produce Exchanges of the United States, in 7 Studies in History, Economics and Public Law 283, 346-356 (1896) (discussing the use of a “clearing-house” as an intermediary to reduce settlement risk). The use of a third-party intermediary (or “clearing house”) is also a building block of the modern economy. See, e.g., Yadav, The Problematic Case of Clearinghouses in Complex Markets, 101 Geo. L.J. 387, 406-412 (2013); J. Hull, Risk Management and Financial Institutions 103-104 (3d ed. 2012). Thus, intermediated settlement, like hedging, is an “abstract idea” beyond the scope of § 101. ” Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. 2347, 2356 (2014).
3. In Mayo Collaborative v. Prometheus Labs., 132 S. Ct. 1289, 1295 (2012), the Supreme Court observed the factual findings in the patentee’s own patent:
The patent claims at issue here set forth processes embodying researchers’ findings that identified these correlations with some precision.
More specifically, the patents—U.S. Patent No. 6,355,623 (623 patent) and U.S. Patent No. 6,680,302 (302 patent)—embody findings that concentrations in a patient’s blood of 6-TG or of 6-MMP metabolite beyond a certain level (400 and 7000 picomoles per 8×108 red blood cells, respectively) indicate that the dosage is likely too high for the patient, while concentrations in the blood of 6-TG metabolite lower than a certain level (about 230 picomoles per 8×108 red blood cells) indicate that the dosage is likely too low to be effective.
Mayo Collaborative v. Prometheus Labs., 132 S. Ct. 1289, 1295 (2012).
To the extent that the use of these factual observations in Bilski, Mayo, and Alice was mere dicta by the Supreme Court in interpreting its prior decisions, the Federal Circuit noted In Insurance Co. of the West v. US, 243 F.3d 1367, 1372 (Fed. Cir. 2001) that the Federal Circuit is obligated to follow dicta of the Supreme Court in its interpretation of prior cases: