Archive for May, 2020

Judge Bryson and the Supreme Court

Thursday, May 21st, 2020

Back in 2011, I noted here that Judge Bryson argued many times at the Supreme Court, before he was appointed to the Federal Circuit. I believe that his first argument in front of the Supreme Court was PC Pfeiffer Co. v. Ford, 444 U.S. 69, 100 S. Ct. 328, 62 L. Ed. 2d 225 (1979). You can listen to his argument here:

One thing that I thought was interesting about the argument was the questioning by the Justices as to whether the “Director”* and the “Board”** were separate entities for appellate review. Here is part of the transcript relating to that exchange with then-attorney Bryson:

William H. Rehnquist:

Mr. Bryson, are those two separate entities or one entity for purposes of appellate review, the Director and the Board? 

William C. Bryson:

For the purpose — well, they are clearly two different entities. The Director is the delegee of the Secretary of Labor who is charged with administering the Act and appears as a party seeking to in this case support the Board’s order. 

Now, perhaps I didn’t understand your question– 

William H. Rehnquist:

Where is the Director authorized to be a party in these proceedings? As I read Section 921 (c), application can be had at the Court of Appeals to set aside an award of the Benefits Review Board and copies are to be served on the Board and other parties. I can certainly see why the Board would be a party. Why is the Director a party? 

William C. Bryson:

Well, the Director is designated to defend the Board’s orders and I do not know — 

William H. Rehnquist:

By whom? 

William C. Bryson:

I believe in the statute, there is a provision which provides — 

William H. Rehnquist:

In the statute? 

William C. Bryson:

In the statute there’s a provision which provides that the Secretary of Labor shall assign attorneys to administer the Act and to — I believe it says to defend the Board’s orders as well. 

Now the — 

William H. Rehnquist:

Why wouldn’t the Board nonetheless be the party, albeit defended by attorneys assigned by the — 

William C. Bryson:

Well, there have been some cases in which the Board has been named as a party.  Some of the cases — it’s come to be the fashion to characterize the Director as the party, but it could well be the Board as in the National Labor Relations Act cases. 

William H. Rehnquist:

And you feel that’s immaterial? 

William C. Bryson:

Here, because what happened here although there is some dispute as to whether the Board has the power — excuse me, the Director has the power — to seek review of a Board order which is contrary to the Director’s position — in this case, it was the Director’s position and the private party’s position that was sustained in the Court of Appeals and sustained in the Board, so that the Director’s standing is — 

William H. Rehnquist:

There was no internal inconsistency? 

William C. Bryson:

That’s right, no, not here. There have been cases in which there is internal inconsistency, but not here. In fact, the Board and the Director from the beginning have taken the same position with respect to the definition of the terms longshoring operation and maritime employment …. 

You can listen to that excerpt here:

*Director of the Office of Workers’ Compensation Programs of the United States Department of Labor (the Director)

**Benefits Review Board of the Department of Labor (the Board)

Acquiescence

Wednesday, May 20th, 2020

The recent opinion in Sandbox Logistics, LLC et al. v. Proppant Express Investments LLC et al., 2019-1684 (Fed. Cir. May 18, 2020) is a good reminder about acquiescence during prosecution. Here is a quote from that opinion:

Sandbox did not challenge the Examiner’s understanding; instead, in response, SandBox amended the claims of the ’518 patent to recite a “bottom[,]” J.A. 575, with SandBox explaining that although the claims “were rejected on the basis [that] they lack essential elements[,]” the claims were “being amended to include a bottom, and that the hatch is positioned closely adjacent to the bottom[,]” J.A. 580. The Examiner allowed the ’518 patent, based at least in part on his understanding that the claims of the ’518 patent were amended to include a “bottom wall on which the hatch is mounted.” J.A. 1007; see J.A. 1025 (Notice of Allowability) (the Examiner explaining that the prior art “fails to teach or suggest . . . a bottom[] and a hatch closely adjacent to the bottom”). SandBox’s failure to challenge the Examiner’s understanding amounts to a disclaimer. See Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1096 (Fed. Cir. 2013) (“If an applicant chooses, she can challenge an examiner’s characterization in order to avoid any chance for disclaimer, but the applicants in this case did not directly challenge the examiner’s characterization.”); TorPharm, Inc. v. Ranbaxy Pharm., Inc., 336 F.3d 1322, 1330 (Fed. Cir. 2003) (“[I]n ascertaining the scope of an issued patent, the public is entitled to equate an inventor’s acquiescence to the examiner’s narrow view of patentable subject matter with abandonment of the rest. Such acquiescence may be found where the patentee narrows his or her claims by amendment[.]” (internal citation omitted)). Thus, the prosecution history confirms that “bottom” refers to a “bottom wall.”

Sandbox Logistics, LLC et al. v. Proppant Express Investments LLC et al., 2019-1684 (Fed. Cir. May 18, 2020)(slip opinion at 11-12).

I think one area where many in-house patent programs could be improved is at the payment of the issue fee phase. Namely, a paper can be submitted, in conjunction with each issue fee payment, that indicates non-acquiescence in (at least) the examiner’s reasons for allowance and instead cites the scope of the claims as a whole as the applicant’s view as to why the claims are allowable. The time/cost to do so is not that significant.

Got bed bugs?

Thursday, May 14th, 2020

Before you read below the break, ask yourself this question: “How would I go about trapping a bed bug?”

Before listening to today’s oral argument of the day, I really had no clue. In hindsight after listening to the oral argument, it is quite obvious how to catch a bed bug. I suppose that is the problem with hindsight perspectives — as we all know.

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Judge Moore on textualism

Sunday, May 10th, 2020

I thought this was an interesting sound bite from Judge Moore during the oral argument of ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL PRODUCTS INC., No. 2019-1080 (Fed. Cir. Feb. 19, 2020). During a discussion of statutory interpretation, she described herself as a textualist:

Speed

Thursday, May 7th, 2020

Do you think the Federal Circuit treats “speed” consistently for purposes of §103 and §101? In a §103 rejection, the Federal Circuit seems to discount an inventor’s accomplishment of greater speed via his/her invention. MPEP §2144 (II) relies on the CAFC’s Dystar opinion and states:

II.    THE EXPECTATION OF SOME ADVANTAGE IS THE STRONGEST RATIONALE FOR COMBINING REFERENCES
The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker,702 F.2d 989, 994-95, 217 USPQ 1, 5-6 (Fed. Cir. 1983). See also Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368, 80 USPQ2d 1641, 1651 (Fed. Cir. 2006) (“Indeed, we have repeatedly held that an implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the ‘improvement’ is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. Because the desire to enhance commercial opportunities by improving a product or process is universal—and even common-sensical—we have held that there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves.”).

In the §101 cases, however, an invention’s “speed” seems to carry more weight:

Two recent cases inform our evaluation of whether the claims are “directed to” an abstract idea. In Enfish, we held claims reciting a self-referential table for a computer database were patent-eligible under Alice step one because the claims were directed to an improvement in the computer’s functionality. Id. at 1336. We explained that “the plain focus of the claims is on an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity.” Id. The specification described the benefits of using a self-referential table — faster searching and more effective data storage — and highlighted the differences between the claimed self-referential table and a conventional database structure. Id. at 1333, 1337. Based on this, we rejected the district court’s characterization of the claims as being “directed to the abstract idea of `storing, organizing, and retrieving memory in a logical table.'” Id. at 1337. We emphasized that the key question is “whether the focus of the claims is on the specific asserted improvement in computer capabilities (i.e., the self-referential table for a computer database) or, instead, on a process that qualifies as an `abstract idea’ for which computers are invoked merely as a tool.” Id. at 1335-36. Moreover, it was appropriate to consider the technological improvement embodied in the claims at step one, we explained, because Alice does not “broadly hold that all improvements in computer-related technology are inherently abstract and, therefore, must be considered at step two.” Id. at 1335.

Visual Memory LLC v. Nvidia Corp., 867 F.3d 1253, 1258 (Fed. Cir. 2017)(emphasis added).

The complaint alleges that the claimed software uses less memory, results in faster processing speed, and reduces the risk of thrashing which makes the computer process forms more efficiently. J.A. 429 ¶ 39. These allegations suggest that the claimed invention is directed to an improvement in the computer technology itself and not directed to generic components performing conventional activities. We have repeatedly held that inventions which are directed to improvements in the functioning and operation of the computer are patent eligible. See, e.g., Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1258-59 (Fed. Cir. 2017)Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300-02 (Fed. Cir. 2016)Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016)see also DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014). Viewed in favor of Aatrix, as the district court must at the Rule 12(b)(6) stage, the complaint alleges that the claimed combination improves the functioning and operation of the 1128*1128 computer itself. These allegations, if accepted as true, contradict the district court’s conclusion that the claimed combination was conventional or routine. J.A. 26. Therefore, it was an abuse of discretion for the district court to deny leave to amend.

Aatrix Software v. Green Shades Software, 882 F.3d 1121, 1127-28 (Fed. Cir. 2018)(emphasis added).

Declaring that software implemented on a generic computer falls outside of section 101 would provide much-needed clarity and consistency in our approach to patent eligibility. It would end the semantic gymnastics of trying to bootstrap software into the patent system by alleging it offers a “specific method of filtering Internet content,” see BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016), makes the computer fastersee Enfish, LLC v. 1329*1329Microsoft Corp., 822 F.3d 1327, 1337-39 (Fed. Cir. 2016), or the Internet better,see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014),just to snuggle up to a casual bit of dictum in Alice, 134 S.Ct. at 2359

Intellectual Ventures I LLc v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016)(Mayer, J., concurring)(emphasis added).

The method claims do not, for example, purport to improve the functioning of the computer itself. See ibid. (“There is no specific or limiting recitation of … improved computer technology …”); Brief for United States as Amicus Curiae 28-30. Nor do they effect an improvement in any other technology or technical field. See, e.g., 2360*2360 Diehr, 450 U.S., at 177-178, 101 S.Ct. 1048

Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. 2347, 2359 (2014).

This post is more of a musing than a completed thought. However, perhaps someone will take the idea and write further about it.

Want extra time to argue your case in front of the PTAB?

Wednesday, May 6th, 2020

Want extra time to argue your case in front of the PTAB? Maybe try out the USPTO’s new LEAP program: [Link].

Chief Judge Prost honors Reggie Walker

Wednesday, May 6th, 2020

Back in December, Chief Judge Prost recognized one of the long-time employees of the Federal Circuit, Mr. Reggie Walker. I’m not sure of his exact title; but, I believe he served as a courtroom officer. He apparently retired from service with the Federal Circuit at the end of last year. You can hear Chief Judge Prost’s comments along with those of Judges Dyk and Moore here:

When Chief Judge Rader (ret’d.) brought the Federal Circuit to sit in Denver a few years ago, I happened to be seated next to Mr. Walker at a dinner reception. I remember enjoying talking to him and how either he or one of the others from the court mentioned that Mr. Walker’s son has won two Emmy’s for producing shows on ESPN.

Oral argument of the day: Verizon v. Vonage

Friday, May 1st, 2020

I was poking around the case law after reading the Galderma v. Amneal decision and was reminded of the Verizon v. Vonage case from 2007. That is today’s oral argument of the day.

What is particularly fun about the oral argument of Verizon v. Vonage is that then-attorney Taranto — now-Judge Taranto — argued the case in front of Chief Judge Michel and Judges Dyk and Gajarsa.

Here is one sound bite of Judge Dyk pressing then-attorney Taranto about a “present invention” statement in his client’s patent:

You can listen to the oral argument here:

You can read the Verizon v. Vonage opinion [here].