Archive for November, 2021

“Untethered to the invention as claimed”

Sunday, November 28th, 2021

by Bill Vobach

The quote for the day comes from the recent Moore/Lourie/Dyk opinion in Mentone Solutions LLC v. DIGI International, Inc. The panel reversed Judge Stark of the District of Delaware with respect to his ruling of patent ineligibility.

Judge Moore writing for the court noted:

The district court held that claim 5 was directed to the abstract idea of “receiving a USF and transmitting data during the appropriate timeslots.” J.A. 7 We do not agree. The district court’s formulation of the abstract idea appears to be a high-level description of how USFs operate in mobile stations using extended bandwidth allocation generally. See ‘413 patent at 1:67-2:8. However, the claimed invention departs from this conventional use through a shifted USF, which breaks the fixed relationship between USFs in a downlink slot and the availability for transmission in the corresponding uplink slot. The district court’s abstract idea fails to mention a shifted USF, nor does it capture the receipt of two PDCH assignments that permit monitoring and detecting the PDCHs for a shifted USF and transmission based thereon. Accordingly, it is untethered to the invention as claimed.

MENTONE SOLUTIONS LLC v. DIGI INTERNATIONAL INC., No. 2021-1202 (Fed. Cir. Nov. 15, 2021)(slip op. at 13)(emphasis added).

This analysis strikes me as an important reminder to be wary of overzealous generalizations of claim language as purportedly being abstract ideas. And, it reinforces the court’s analyses in Visual Memory LLC v. Nvidia Corp., 867 F.3d 1253 (Fed. Cir. 2017) and ENFISH, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016):

At the same time, we must not express the basic concept of the claim in a way that is “untethered from the language of the claims.” Enfish, 822 F.3d at 1337. When we assess what the claims are directed to, we must do so at the same level of generality or abstraction expressed in the claims themselves. Id.

Visual Memory LLC v. Nvidia Corp., 867 F.3d 1253, 1263 (Fed. Cir. 2017).

However, describing the claims at such a high level of abstraction and untethered from the language of the claims all but ensures that the exceptions to § 101 swallow the rule. See Alice, 134 S.Ct. at 2354 (noting that “we tread carefully in construing this exclusionary principle [of laws of nature, natural phenomena, and abstract ideas] lest it swallow all of patent law”);

ENFISH, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016).

On a different point, the panel once again treated speed as an important factor in the §101 analysis. The court wrote:

Through this shifted USF, the invention purports to “reduce restrictions affecting extended dynamic allocation with minimal effect on the existing prescript.” Id. at 2:44-46. It allows the mobile station to “transmit up to its physical slot limit.” Id. at 5:17-18. The present invention increases the capacity of networks to communicate data by allowing the network to use timeslots for transmission which, according to the patent, were not available in the prior art. The result is a system capable of a higher rate of data transmission. 

MENTONE SOLUTIONS LLC v. DIGI INTERNATIONAL INC., No. 2021-1202 (Fed. Cir. Nov. 15, 2021)(slip op. at 5-6)(emphasis added).

Like the claim in Packet Intelligence, claim 5 purports to solve a challenge unique to computer networks, or, more specifically, certain mobile stations using extended bandwidth allocation in a network: reducing restrictions to enable additional multislot configurations. It increases the rate of data transmission by enabling the use of timeslots for transmission that were not previously available

MENTONE SOLUTIONS LLC v. DIGI INTERNATIONAL INC., No. 2021-1202 (Fed. Cir. Nov. 15, 2021)(slip op. at 12)(emphasis added).

I will add this case to my earlier post about the disparate treatment of speed for purposes of §103 and §101.

FVRA vs. the Constitution

Saturday, November 13th, 2021

by Bill Vobach

I struggle to understand how the Federal Vacancies Reform Act (FVRA) can authorize a temporary head of the USPTO, who is acting without Senate confirmation, to oversee PTAB decisions. If decisions of the PTAB must be overseen by a principal officer in view of the Appointments Clause of the Constitution, it seems that an unconfirmed temporary head cannot satisfy that role, even on an interim basis. Stated differently, Congress does not have the authority to waive the Appointments Clause of the Constitution on an interim basis.

So, it was interesting to read Justice Thomas’s concurrence in NLRB v. SW General, Inc.:

That the Senate voluntarily relinquished its advice-and-consent power in the FVRA does not make this end-run around the Appointments Clause constitutional. The Clause, like all of the Constitution’s structural provisions, “is designed first and foremost not to look after the interests of the respective branches, but to protect individual liberty.” NLRB v. Noel Canning, 573 U. S. ___, ___ (2014) (Scalia, J., concurring in judgment) (slip op., at 3) (internal quotation marks and bracket omitted). It is therefore irrelevant that “the encroached-upon branch approves the encroachment.” Free Enterprise Fundsupra, at 497 (internal quotation marks omitted). “Neither Congress nor the Executive can agree to waive” the structural provisions of the Constitution any more than they could agree to disregard an enumerated right. Freytag v. Commissioner, 501 U. S. 868, 880 (1991). The Judicial Branch must be most vigilant in guarding the separation between the political powers precisely when those powers collude to avoid the structural constraints of our Constitution.


Courts inevitably will be called upon to determine whether the Constitution permits the appointment of principal officers pursuant to the FVRA without Senate confirmation.

NLRB v. SW General, Inc., 137 S. Ct. 929, 949 (2017).

It will be interesting to see if anybody challenges a post-Iancu/pre-Vidal decision by the PTAB as being unconstitutional for failing to be overseen by a principal officer whose appointment satisfied the Appointments Clause of the Constitution.

The “(cleaned up)” citation

Friday, November 5th, 2021

Have you noticed that in recent opinions the Federal Circuit seems to have adopted the “(cleaned up)” citation when citing “busy” sources. The “(cleaned up)” citation allows a writer to make an argument more forcefully by eliminating some of the distracting citation details that have traditionally been involved in legal writing. For more details, here are some articles discussing “(cleaned up)” [LINK] and [LINK].

Below are some of the recent cases where the Federal Circuit has used “(cleaned up)” in an opinion or order. It appears that Judge Prost and Judge Taranto are far and away the biggest users of “(cleaned up).” Judges Bryson, Chen, Stoll, Dyk, O’Malley, Moore, and Hughes have only used it once or twice. Not surprisingly, Judge Wallach does not appear to have used it yet. During oral argument he is a stickler for accurate quotation from references. It will be interesting to see if “(cleaned up)” is abused and becomes frowned upon.

Rodriguez v. Dept. of Veterans Affairs

8 F. 4th 1290 – Court of Appeals, Federal Circuit, 2021 – Google Scholar

7 days ago –  … Cir. 2020) (“To take adverse action against an employee, an agency must …
demonstrate that the penalty imposed was reasonable in light of the relevant factors set forth
in Douglas v. Veterans Administration.” (cleaned up)); Smith v. Gen. Servs … 


7 F. 4th 1320 – Court of Appeals, Federal Circuit, 2021 – Google Scholar

8 days ago –  … Ct. 1670; Takeda, 785 F.3d at 630 (“Congress intended that a single drug
could have more than one indication and yet that an ANDA applicant could seek approval
for less than all of those indications.” (cleaned up)). The result … 


Judge Cunningham takes the bench

Tuesday, November 2nd, 2021

I believe Monday was the first time that Judge Tiffany Cunningham has sat for oral argument as the Federal Circuit’s newest judge. In her initial panel, she was paired with the Chief Judge and Judge Dyk. I’m not sure if that pairing was the Federal Circuit’s version of hazing or of moral support. Judge Cunningham clerked for Judge Dyk after law school.

Judge Cunningham asked a few questions during the first case for oral argument. You can hear some samples here:

There had been some discussion during the oral argument of not wanting to issue an opinion that ruined the law. During rebuttal, one of the advocates tried to reassure Chief Judge Moore that she would not ruin the law by ruling in his client’s favor. Chief Judge Moore quickly quipped that she knew she wasn’t going to ruin the law. Listen: