717 Madison Place

I was curious what current Supreme Court nominee Judge Amy Coney Barrett sounded like during oral argument at the Seventh Circuit. She recently authored the opinion in Gadelhak v. AT&T SERVICES, INC., 950 F.3d 458 (7th Cir. 2020). That decision is essentially a grammar case — which is always an interesting subject for patent attorneys.

You can listen to the oral argument here: [Link]. Chief Judge Wood is the first female voice that you hear during the questioning. Judge Barrett is the second female voice that you hear during the questioning.

You can read the opinion for the Seventh Circuit here: [Link].

Article suggestion: What grammar texts has the Federal Circuit and the CCPA used over the years and is there an authoritative source? For purposes of claim construction, should grammar be approached from the perspective of a PHOSITA? For purposes of claim construction at the USPTO, if there are competing grammatical rules at play, should the grammatical rule that gives the broadest reasonable interpretation be used?

I was reading through the PTO’s most recent update to the MPEP on patent eligibility recently and ran across this statement instructing examiners:

And conversely, even if an independent claim is determined to be eligible, a dependent claim may be ineligible because it adds a judicial exception without also adding limitations that integrate the judicial exception or provide significantly more.

MPEP §2106.07 (Revised June 2020).

In a recent webinar, a listener asked the speaker if a dependent claim that adds an abstract idea limitation to an otherwise patent eligible independent claim could make the dependent claim ineligible. On the fly, the speaker astutely pointed to the Diamond v. Diehr decision. In that case, the Supreme Court stated:

Our earlier opinions lend support to our present conclusion that a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula, computer program, or digital computer.

Diamond v. Diehr, 450 U.S. 175, 187 (1981).

Judge Linn highlighted this issue a few years ago in the oral argument of IP-Learn v. Microsoft [Link]. It’s a great sound bite, if you have not listened to it before.

It is interesting to think about how 35 U.S.C. §112(d) informs the analysis, if at all:

(d)Reference in Dependent Forms.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.

35 U.S.C. §112(d).