Archive for February, 2018

Extra-record evidence and the Supreme Court

Tuesday, February 20th, 2018

A couple of the Justices got a little bit exercised during the oral argument of City of Hays, Kansas v. Vogt, at the U.S. Supreme Court today.  Chief Justice Roberts and Justice Breyer had the following exchange in regard to Justice Breyer’s inquiry about extra-record evidence:


JUSTICE BREYER: And for that reason I’ve looked up whether you objected, because I do not see how the magistrate running the preliminary hearing can know what to do unless somebody tells him that these statements were taken in violation of the Fifth Amendment.

One, I don’t see where you ever did tell the magistrate that.

Two, looking at the transcript of the preliminary hearing, I couldn’t find any instance where any of the compelled statements were introduced into the preliminary hearing.

So what I would like you to do is to tell me what pages to look at in the preliminary transcript, which I have here, which will show that you did object or at least that some of the compelled statements were used?

MS. CORKRAN: So none of this is in the record and the reason it’s not -¬

JUSTICE BREYER: It may not be in the record –

MS. CORKRAN: Yeah. But I -¬

CHIEF JUSTICE ROBERTS: That’s an important point, isn’t it?


JUSTICE BREYER: Of course it’s an important point.


MS. CORKRAN: But the -¬

CHIEF JUSTICE ROBERTS: Well, before we start having an extended exchange about material and something that’s not in the record, I — well, I guess I would just like to point out that it’s not in the record. There’s a reason we confine things to what’s in the record, including how do we know what this is if it’s not in the record.

MS. CORKRAN: But the —

CHIEF JUSTICE ROBERTS:  How do we know that it’s been adequately — had a chance for people to object to it and all that?  It’s — it’s not just a passing comment that it’s not in the record.

JUSTICE BREYER: Nor is actually mine a passing comment because Article III of the Constitution says we are to take real cases and controversies. And to decide a major matter where, in fact, going from what is in the record to an earlier stage of this and discovering if it’s true, that there was no instance about which you are complaining, in my mind raises the question as to whether this is, in fact, an appropriate case or controversy for the Court to take.

CHIEF JUSTICE ROBERTS: And we’re supposed to decide whether the cases are controversies according to law. And as far as I’m concerned coming in and saying I want to know about this thing that’s not in the record is no different from somebody else coming off the street and saying: Hey, wait a minute, I know what happened in this case.

So, go ahead and answer it.


CHIEF JUSTICE ROBERTS: It’s a question that you’ve been presented with. Go ahead and answer it.

JUSTICE BREYER: You don’t have to answer it.


CHIEF JUSTICE ROBERTS: No, no, feel free. I’m just saying I will discount the answers because it’s not something that’s in the record.


You can listen to the audio here:


See this earlier post about whether the Federal Circuit has equitable power to consult extra-record evidence: [Link]. 

Query:  Should a Brandeis Brief be considered extra-record evidence?

Query:  Did the Supreme Court rely on extra-record evidence in its assertion of a purported abstract idea in Alice v. CLS?

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).

Listing of agencies with the most Administrative Law Judges

Monday, February 19th, 2018

The US government’s office of personnel management keeps a list of how many administrative law judges are employed by each administrative agency.  The OPM does not include the USPTO’s administrative patent judges on the list.

The top five agencies and their corresponding number of ALJ’s are:

Social Security Administration:  1655 ALJ’s

Department of Health and Human Services/Office of Medicare Hearings and Appeals: 101 ALJ’s

Department of Labor: 41 ALJ’s

National Labor Relations Board:  34 ALJ’s

Federal Mine Safety and Health Review Commission:  15 ALJ’s.


Comments are still open

Saturday, February 17th, 2018

Just a reminder that the comment period for the USPTO’s subject matter eligibility guidance is still open.  If you want to submit comments on how you think the subject matter eligibility guidance should be revised — particularly in response to the recent Berkheimer v. HP precedential opinion — you can still do so.  The USPTO explains the process on its web site, part of which is reproduced below:

How to comment

We are interested in receiving public feedback on this guidance.  The comment period is open-ended, and comments will be accepted on an ongoing basis.

Anyone may submit written comments to sends e-mail). Email comments submitted in plain text are preferred, but also may be submitted in ADOBE® portable document format or MICROSOFT WORD® format. Because comments will be available to the public, information that is not desired to be made public, such as an address or a phone number, should not be included in the comments.

Comments are available for public viewing here:



Utah IP Summit

Thursday, February 15th, 2018

The Utah IP Summit is next Friday.

More info available [here].

Quotes for the day

Tuesday, February 13th, 2018

Software can make non-abstract improvements to computer technology just as hardware improvements can, and sometimes the improvements can be accomplished through either route. We thus see no reason to conclude that all claims directed to improvements in computer-related technology, including those directed to software, are abstract and necessarily analyzed at the second step of Alice, nor do we believe that Alice so directs.

ENFISH, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)(Judge Chen writing for the court).


Our cases confirm that software-based innovations can make “non-abstract improvements to computer technology” and be deemed patent-eligible subject matter at step 1.

FINJAN, INC. v. BLUE COAT SYSTEMS, INC., No. 2016-2520 (Fed. Cir. Jan. 10, 2018)(slip opinion at page 7)(Judge Dyk writing for the court).

Transforming a patent eligible claim into a patent ineligible claim — by narrowing the claim

Saturday, February 10th, 2018

Somebody commented on the Patently-O blog the other day that a claim that is patent eligible under §101 can become patent ineligible simply by narrowing the claim to recite a specific function that is a purported abstract idea.  Judge Linn made a similar comment back in 2016 in the oral argument of IPLearn-Focus v. Microsoft. You can listen to that sound bite here:


You can view the previous post about the IPLearn-Focus v. Microsoft case [here].

Alice and the mechanical arts

Friday, February 9th, 2018

A listener/reader pointed me in the direction of the recent oral argument at the Federal Circuit in Robert Bosch v. ITC.  The case appears to concern patents of inventor/patent attorney Dr. Stephen Gass. The oral argument highlights that §101/Alice arguments are now making their way into the mechanical arts.  One of the parties was making the argument that a claim was directed to the idea of a “safety system” rather than to a particular safety system — which prompted this exchange with Judge Moore:



I suppose it is only natural that litigants are taking the Alice/§101 argument into the realm of the mechanical arts.  When a legal rule is not based on a sound test or even an articulated definition of what constitutes an abstract idea, and instead allows judges to paraphrase claim limitations and then make ipse dixit proclamations that something is an abstract idea, one should expect litigants to press the Alice argument.

Thinking back on the book The Patent Wars and its discussion of the “diaper wars,” I wonder if there are any future Alice/§101 battles to look forward to in the diaper world — now that would be a fitting forum for the Alice decision.

You can listen to the entire oral argument here: [Listen].


Update: 3/5/17:

The Federal Circuit punted on issuing an opinion in the above case and instead issued a Rule 36 Judgment.  Less than a month later, Judge Stark in the District Court of Delaware issued an opinion in American Axle & Manufacturing v. Neapco finding the following mechanical claim to be patent ineligible as “applying a law of nature to a conventional method to achieve an abstract solution to a problem”:

22.  A method for manufacturing a shaft assembly of a driveline system, the driveline system further including a first driveline component and a second driveline component, the shaft assembly being adapted to transmit torque between the first driveline component and the second driveline component, the method comprising:

providing a hollow shaft member;

tuning a mass and a stiffness o f at least one liner; and inserting the at least one liner into the shaft member;

wherein the at least one liner is a tuned resistive absorber for attenuating shell mode vibrations and wherein the at least one liner is a tuned reactive absorber for attenuating bending mode vibrations.

You can read Judge Stark’s memorandum opinion [here].


Aspirational claiming

Saturday, February 3rd, 2018

It is always interesting when the Federal Circuit introduces a new term into the lexicon of patent law.  The court did so the other day.  Judge Stoll’s opinion for the court referred to a claim as “aspirational.”

The step-one analysis requires us to consider the claims “in their entirety to ascertain whether their character as a whole is directed to excluded subject matter.” Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015). Claim 1 is aspirational in nature and devoid of any implementation details or technical description that would permit us to conclude that the claim as a whole is directed to some- thing other than the abstract idea identified by the dis- trict court.

Move, Inc. et al. v. Real Estate Alliance Ltd., et al., 2017-1463 (Fed. Cir. Feb. 1, 2018)(slip opinion at page 8)(emphasis added).

You can listen to the oral argument here:


The court has been asking about aspirational claims in oral arguments at least as far back as 2016.  For example, Judge Chen inquired about aspirational language in this oral argument sound bite back in 2016: [Listen].  And, Judge Moore asked about aspirational language back in 2017: [Listen].

If you do a search on previous Federal Circuit, CCPA, or district court cases, you will not find any that use the term “aspirational claim” or “aspirational claiming.”  So, it will be interesting to see if this term gets any traction at the Federal Circuit.

In reality, aspirational claiming is not a new concept.  The Supreme Court discussed result-oriented claiming in Corning v. Burden, 56 U.S. 252, 268 (1853) (explaining that patents are granted “for the discovery or invention of some practicable method or means of producing a beneficial result or effect . . . and not for the result or effect itself”).  Moreover, the Federal Circuit has discussed result-oriented claiming in prior cases.  See, e.g., Regents of the University of California v. Eli Lilly & Co., 119 F.3d 1559, 1568 (Fed.Cir.1997)(“The description requirement of the patent statute requires a description of an invention, not an indication of a result that one might achieve if one made that invention.”); and, Fiers v. Revel, 984 F.2d 1164 (Fed. Cir. 1993)(“Claiming all DNA’s that achieve a result without defining what means will do so is not in compliance with the description requirement; it is an attempt to preempt the future before it has arrived.”).  But, the Federal Circuit has done so in a §112 context as opposed to a §101 context.

Unfortunately, aspirational claiming may turn out to be a vehicle that some members of the court use to introduce a §112 concept into the §101 analysis.

By the way, as you contemplate aspirational claiming, consider the following claim that the Federal Circuit deemed patent eligible in Thales:

22. A method comprising determining an orientation of an object relative to a 1346*1346 moving reference frame based on signals from two inertial sensors mounted respectively on the object and on the moving reference frame.

Thales Visionix Inc. v. US, 850 F.3d 1343, 1345-46 (Fed. Cir. 2017).

Paper topic #1:  An interesting paper or student note, if somebody wanted to write it:  What principles of §§102, 103, 112, etc. have the courts imported into the §101 analysis in order to try to make sense of what constitutes an “abstract idea.”

Update 2/7/2018:

By the way, keep your eyes peeled for “patent dance.”  That will be a fun new term that we should soon be seeing in forthcoming biosimilarity cases.