Archive for May, 2018

Video of Judge Linn Sitting by Designation with the Ninth Circuit

Thursday, May 31st, 2018

Judge Linn of the Federal Circuit has a lot fans throughout the country from his work with the American Inns of Court, as well as the sound judicial reasoning in his opinions for the court.  He sat by designation with the Ninth Circuit back in November in the following cases:

The video below is from the oral argument in one of those cases — a copyright case, ABS Entertainment, Inc. v. CBS Corp.:


Director Andrei Iancu’s testimony before the House Judiciary Committee on 5/22/18

Tuesday, May 22nd, 2018


Director Iancu’s written statement is available [here].

USPTO Webinar on Revised Guidance in View of Berkheimer

Wednesday, May 16th, 2018

If you missed last week’s USPTO webinar on the revised guidance in view of Berkheimer v. HP, the video  recording of the webinar is available below:


The slides are available here: [Link].

Quote of the Day

Tuesday, May 15th, 2018

The machine-or-transformation test may well provide a sufficient basis for evaluating processes similar to those in the Industrial Age—for example, inventions grounded in a physical or other tangible form. But there are reasons to doubt whether the test should be the sole criterion for determining the patentability of inventions in the Information Age. As numerous amicus briefs argue, the machine-or-transformation test would create uncertainty as to the patentability of software, advanced diagnostic medicine techniques, and inventions based on linear programming, data compression, and the manipulation of digital signals. See, e.g., Brief for Business Software Alliance 24-25; Brief for Biotechnology Industry Organization et al. 14-27; Brief for Boston Patent Law Association 8-15; Brief for Houston Intellectual Property Law Association 17-22; Brief for Dolby Labs., Inc., et al. 9-10.

In the course of applying the machine-or-transformation test to emerging technologies, courts may pose questions of such intricacy and refinement that they risk obscuring the larger object of securing patents for valuable inventions without transgressing the public domain. The dissent by Judge Rader refers to some of these difficulties. 545 F.3d, at 1015. As a result, in deciding whether previously unforeseen inventions qualify as patentable 3228*3228 “process[es],” it may not make sense to require courts to confine themselves to asking the questions posed by the machine-or-transformation test. Section 101’s terms suggest that new technologies may call for new inquiries. See Benson, supra, at 71, 93 S.Ct. 253 (to “freeze process patents to old technologies, leaving no room for the revelations of the new, onrushing technology[,] . . . is not our purpose”).

Bilski v. Kappos, 130 S. Ct. 3218, 3227-28 (2010)(Justice Kennedy writing for himself, Chief Justice Roberts, and Justices Thomas and Alito).

Oil States and SAS Institute recap

Monday, May 7th, 2018

The SCOTUSblog discussed the recent Oil States and SAS Institute decisions in a recent podcast.  You can access the podcast here: Link.

Oral argument of the day: Dialware Communications, LLC v. Hasbro, Inc.

Monday, May 7th, 2018

The oral argument of the day comes from Dialware Communications, LLC v. Hasbro, Inc.  This is yet another patent eligibility case.  From the oral argument, it appears that the claims were for toys that respond to sounds made by other toys — for example, use of the doppler effect to determine if another toy is moving toward the sound-receiving toy.

Despite the Rule 36 affirmance that all 250+ claims are patent ineligible based on a single representative claim, one argument theme that appears to be getting some traction these days is the theme of “over-reductionism.”  Over-reductionism was an issue raised by Judge Hughes in the oral argument of Dialware as well as Judge Linn in the oral argument of Finjan.

After listening to Judge Hughes’ questions raised during the oral argument, you might find yourself curious as to how the Federal Circuit reached its decision in its de novo review of the patent ineligibility determination.  Unfortunately, the Rule 36 Judgment will not fill the void for you.

The oral argument is available here:


The Rule 36 Judgment is available [here].

Upcoming Denver IP Conferences

Wednesday, May 2nd, 2018

If you are looking for an excuse to visit Denver this June, there are three IP programs worth your attention.

The annual Denver IP Institute will be held May 31 – June 1:  [Link];

There is a 2 1/2 day PCT seminar being held June 13-15 [Link]; and

The AIPLA Electronics and Computer Law Summit will be held on June 19th [Link].

If you want to visit the Denver Patent Office while you are here, you can find visitor information at this [Link].


Update May 8, 2018:
Also, on May 30th from 4:00-6:00, there will be a reception at the Denver Patent Office for USPTO Day: [Link].

Oral Argument of the day: Finjan v. Blue Coat

Tuesday, May 1st, 2018

The oral argument of the day is from Finjan v. Blue Coat.  You can listen to the oral argument here:


The Federal Circuit opinion is available [here].

The independent claim at issue reads:

1. A method comprising:

receiving by an inspector a Downloadable;

generating by the inspector a first Downloadable security profile that identifies suspicious code in the received Downloadable; and

linking by the inspector the first Downloadable security profile to the Downloadable before a web server makes the Downloadable available to web clients.

Judge Dyk writing for the court concluded the §101 analysis by stating:

Here, the claims recite more than a mere result. Instead, they recite specific steps—generating a security profile that identifies suspicious code and linking it to a downloadable—that accomplish the desired result. Moreover, there is no contention that the only thing disclosed is the result and not an inventive arrangement for accomplishing the result. There is no need to set forth a further inventive concept for implementing the invention. The idea is non-abstract and there is no need to proceed to step two of Alice.

In Electric Power Group v. Alstom, the claim deemed ineligible recited:

12. A method of detecting events on an interconnected electric power grid in real time over a wide area and automatically analyzing the events on the interconnected electric power grid, the method comprising:

receiving a plurality of data streams, each of the data streams comprising sub-second, time stamped synchronized phasor measurements wherein the measurements in each stream are collected in real time at geographically distinct points over the wide area of the interconnected electric power grid, the wide area comprising at least two elements from among control areas, transmission companies, utilities, regional reliability coordinators, and reliability jurisdictions;

receiving data from other power system data sources, the other power system data sources comprising at least one of transmission maps, power plant locations, EMS/SCADA systems;
receiving data from a plurality of non-grid data sources;

detecting and analyzing events in real-time from the plurality of data streams from the wide area based on at least one of limits, sensitivities and rates of change for one or more measure- ments from the data streams and dynamic stability metrics derived from analysis of the measurements from the data streams including at least one of frequency instability, volt- ages, power flows, phase angles, damping, and oscillation modes, derived from the phasor measurements and the other power system data sources in which the metrics are indicative of events, grid stress, and/or grid instability, over the wide area;

displaying the event analysis results and diag- noses of events and associated ones of the met- rics from different categories of data and the derived metrics in visuals, tables, charts, or combinations thereof, the data comprising at least one of monitoring data, tracking data, historical data, prediction data, and summary data;

displaying concurrent visualization of measurements from the data streams and the dynamic stability metrics directed to the wide area of the interconnected electric power grid;

accumulating and updating the measurements from the data streams and the dynamic stabil- ity metrics, grid data, and non-grid data in real time as to wide area and local area portions of the interconnected electric power grid; and

deriving a composite indicator of reliability that is an indicator of power grid vulnerability and is derived from a combination of one or more real time measurements or computations of measurements from the data streams and the dynamic stability metrics covering the wide area as well as non-power grid data received from the non-grid data source.