Archive for October, 2017

Electronic filing at the Supreme Court

Friday, October 27th, 2017

If you are filing the reply brief in Oil States or currently appealing a 101 decision to the Federal Circuit, you might want to take note that the Supreme Court will be requiring electronic filing after November 13th.  The Federal Circuit has posted this notice to its website:

Why are you here?

Sunday, October 22nd, 2017

Back in June, Judge Newman took the USPTO to task for intervening in an appeal from an IPR proceeding in which the petitioner had withdrawn and the underlying district court case had been dismissed.  Judge Newman asked what in the world is the USPTO doing in the case and why is it squandering its time and talent in a case where the petitioner withdrew.

Judge Newman’s exchange with the USPTO was as follows:

Judge Newman:  What in the world is the Office doing in this case?  The petitioner withdrew — refuses to defend its win.  The district court case was dismissed. It’s over.  What is the interest of the Office in this conflict?  There’s no Article III conflict  between the Office and this Applicant.  Even if the Office prevails and there is an estoppel, it only affects this petitioner who has already withdrawn.  Why is the Office squandering its time and talent in this debate after the petitioner withdrew?

PTO:  Your Honor, the statute gives the Office the right to intervene in any appeal —

Judge Newman:  The statute can be interpreted as saying anything the Office wants to do, they can do.  I doubt very much that when the Director was authorized to intervene that that meant in anything that anybody felt like intervening in — but in a situation where you were defending some jurisdictional issue.  Here we have an expensive, heavily contested contest/appeal continuing, withdrawn in the district court, nobody seems to care except the Office.  Why should it matter?

PTO:  The Office cares because in large part this was a challenge to the procedures of the Office.  And, the Office has an interest in ensuring that its Board and the manner in which the Board is applying the AIA receives at least a counterpoint consideration.  And this court in many instances in which cases where the petitioner has dropped out has asked the PTO to participate or whether we will participate.  Now admittedly we do not have an order like that in this case.  But, the Director has exercised her statutory authority to participate in the appeal.  And, that is largely why.  It is to protect the integrity of the USPTO Office’s proceedings and the statute.

Judge Newman:  OK. We’ll see.  Thank you.


You can listen to Judge Newman’s exchange with the PTO here:


The entire oral argument is available here:


The court’s opinion in NFC v. Matal is available [here].


Mark Your Calendar: Supreme Court Oral Argument Date Set for Oil States

Saturday, October 14th, 2017

The Supreme Court has set the date for oral argument in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC.  The argument will take place on November 27, 2017.  The question presented in Oil States is:

Issue: Whether inter partes review, an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents, violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.

Link to ScotusBlog: [Link].

The oral argument in SAS Institute Inc. v. Matal will also take place on November 27, 2017.  The question presented in that case is:

Issue: Whether 35 U.S.C. § 318(a), which provides that the Patent Trial and Appeal Board in an inter partes review “shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner,” requires that Board to issue a final written decision as to every claim challenged by the petitioner, or whether it allows that Board to issue a final written decision with respect to the patentability of only some of the patent claims challenged by the petitioner, as the U.S. Court of Appeals for the Federal Circuit held.

Link to ScotusBlog:  [Link].

Have you ever noticed how many amicus briefs the Houston Intellectual Property Law Association (HIPLA) files.  They really put to shame other bar organizations around the country, as far as engagement in the amicus process is concerned.

Oral argument of the week: RADWARE, LTD. v. F5 Networks, Inc.

Friday, October 13th, 2017

The oral argument of the week comes from RADWARE, LTD. v. F5 NETWORKS, INC., No. 2017-1212 (Fed. Cir. Sept. 18, 2017).

Those of you who follow the Finjan line of cases and whether inaccessible modules of software code can be considered capable of infringing will find this case interesting — particularly with respect to damages issues.

I have noted before that I am not particularly fond of the decision in Finjan because I think it requires a claim to be construed to cover inoperable features — and similarly converts the claim to a mere aggregation of elements.  You can see my previous post [here].

The oral argument from RADWARE is available here:


The court’s Rule 36 treatment of the appeal and cross-appeal in RADWARE is available [here].

For more background, one of Judge Whyte’s rulings from the district court is available [here].

Oral Argument of the Day: Intellectual Ventures I, LLC v. Motorola Mobility LLC

Thursday, October 12th, 2017

The oral argument of the day is from INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC, No. 2016-1795 (Fed. Cir. Sept. 13, 2017).

The oral argument will be of interest to those who follow Centillion v. Qwest issues.

The court’s opinion is available [here].

The oral argument recording is accessible below:

Not your typical analogy

Thursday, October 5th, 2017

There are analogies — and then there are analogies that make you sit up and take notice.

Judge O’Malley was discussing contingent threats with an advocate during the oral argument of FIRST DATA CORPORATION v. INSELBERG, No. 2016-2677 (Fed. Cir. Sept. 15, 2017) when she used this real-life example of having received a death threat from a litigant — presumably during her district court judge days — and the US Marshall’s office having classified it as merely a contingent threat: