Archive for January, 2019

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Tuesday, January 29th, 2019

I am no fan of Rule 36 judgments. However, I often wonder how backed up the Federal Circuit’s docket would be if the court did not rely on them so heavily. It might make for an interesting article if someone were to use some rough assumptions and calculate how backed up the court’s docket would be today if the court did not use Rule 36 judgments so enthusiastically.

I suspect that such an article would be cited quite a bit in Supreme Court appellate advocacy.

Supreme Court closes docket for current term?

Saturday, January 19th, 2019

Several news agencies reporting on the petitions for writ of certiorari concerning the DACA program have noted that the Supreme Court has presumably finalized its docket of cases that it will hear this term. So, it appears that no additional patent cases will be added to the Court’s docket this term.

Oral argument of the day: In re Kollman

Tuesday, January 15th, 2019

The In re Kollman oral argument from October is an interesting analogous arts appeal. There is an extensive discussion about the appropriate procedure for selecting a reference that is not from the inventor’s field of endeavor — i.e., prong 2 of the two prong test for analogous art. In the Federal Circuit case of In re Klein, 647 F.3d 1343 (Fed. Cir. 2011), the court stated that “[a] reference qualifies as prior art for an obviousness determination under §103 only when it is analogous to the claimed invention. . . . Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed; and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.”

The oral argument is also quite interesting for Judge O’Malley’s comments to the Solicitor’s Office that asking the court to rely upon a new rationale for rejecting a claim — when that rationale was not relied upon by the PTAB judges — presents a Chenery problem in view of the Administrative Procedure Act.

You can listen to the oral argument of In re Kollman below. After listening to the oral argument, I was quite surprised that the court issued a Rule 36 judgment.

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

Judge Stoll on Electric Power

Friday, January 11th, 2019

It seems like some examiners and judges are afflicted by “Electric-Power-of-the-brain,” where they apply the Electric Power case in an overly broad manner.

I was pleased to hear Judge Stoll’s remarks about Electric Power in the oral argument of Gaelco, S.A. v. Arachnid 360, LLC. During the oral argument she remarked:

It seems to me that you’re arguing that Electric Power stands for the proposition that anytime there is collecting, analyzing, and displaying data that it’s abstract. I don’t think that’s what Electric Power stands for. Is that what you’re arguing?

You can listen to the entire oral argument here:

The Road Not Taken

Friday, January 4th, 2019

In celebration of the many works finally coming off copyright protection, I thought I’d publish one of those works — Robert Frost’s The Road Not Taken. I feel a little bit odd publishing this; but, isn’t this the way that our IP system is supposed to work? Rather than denying inventors, authors, artists, etc. rights to their creations, they are granted an exclusive right for a limited period of time. After that time period lapses, the public then has the right to enjoy the creation.

Unfortunately, the patent system, through all of its §101 shenanigans, seems to have lost sight of that bargain.

by Robert Frost

Two roads diverged in a yellow wood,
And sorry I could not travel both
And be one traveler, long I stood
And looked down one as far as I could
To where it bent in the undergrowth;

Then took the other, as just as fair,
And having perhaps the better claim,
Because it was grassy and wanted wear;
Though as for that the passing there
Had worn them really about the same,

And both that morning equally lay
In leaves no step had trodden black.
Oh, I kept the first for another day!
Yet knowing how way leads on to way,
I doubted if I should ever come back.

I shall be telling this with a sigh
Somewhere ages and ages hence:
Two roads diverged in a wood, and I—
I took the one less traveled by,
And that has made all the difference.

USPTO petitions for cert. in case concerning government attorneys’ fees for appeal via district court

Friday, January 4th, 2019

The USPTO has petitioned for Supreme Court review of the Federal Circuit’s en banc decision in Iancu v. Nantkwest, Inc.

The question presented is:

Whether the phrase “[a]ll the expenses of the proceedings” in 35 U.S.C. 145 encompasses the personnel expenses the USPTO incurs when its employees, including attorneys, defend the agency in Section 145 litigation.

You can review the petition for certiorari [here].