The Federal Circuit is currently scheduled to conduct some oral arguments in May by telephone and some in court. It appears that many of the cases on the calendar will be decided without oral argument, as well.
As a reminder, here is a link to a page that has one or more sound bites from each judge to help you identify each judge’s voice when you are listening to oral arguments or even conducting one by phone: [Link].
The oral argument of the day is from Clarus Therapeutics, Inc. v. Lipocene, Inc. I thought this oral argument was interesting for a few reasons. First, it was the Federal Circuit’s first oral argument by telephone during the April 2020 session. Second, it is the appeal of an interference — an unusual occurrence these days. Third, it relates to the issue of negative limitations. Fourth, it was refreshing to hear people argue the court’s C.C.P.A. lines of precedent for a change — which, after all, were adopted by the Federal Circuit sitting en banc and thus have en banc authority. And, fifth, it was well-argued.
The briefs are provided below:
You can listen to the oral argument here:
The panel disposed of this rare interference case by a Rule 36 Judgment: [Link].
To draw on hindsight knowledge of the patented invention, when the prior art does not contain or suggest that knowledge, is to use the invention as a template for its own reconstruction — an illogical and inappropriate process by which to determine patentability. W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed.Cir. 1983). The invention must be viewed not after the blueprint has been drawn by the inventor, but as it would have been perceived in the state of the art that existed at the time the invention was made. Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138, 227 USPQ 543, 547 (Fed.Cir.1985).
Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996).
Because the Board did not explain the specific understanding or principle within the knowledge of a skilled artisan that would motivate one with no knowledge of Rouffet’s invention to make the combination, this court infers that the examiner selected these references with the assistance of hindsight. This court forbids the use of hindsight in the selection of references that comprise the case of obviousness. See In re Gorman, 933 F.2d 982, 986, 18 U.S.P.Q.2d 1885, 1888 (Fed.Cir. 1991). Lacking a motivation to combine references, the Board did not show a proper prima facie case of obviousness.
Not only is the Federal Circuit conducting all of its oral arguments by telephone this month, it is also live streaming them. Tomorrow — Friday — is the last day of the month to tune-in; so, see this website announcement on the Federal Circuit Announcement page for more information on how to live stream:
PUBLIC ACCESS INFORMATION FOR APRIL 2020 COURT SESSION
Public access information for live audio of the court’s April 2020 Court Session will be available at this link by 9:00 a.m. (EDT) each day of argument. Members of the media and the public can also access this information under the Announcements menu of the court’s website. After the end of each day’s arguments, audio recordings of each argument will be available on the court’s website (link).
The quote for the day comes from Cheese Systems, Inc. v. Tetra Pak Cheese and Powder Sys., Inc., 725 F.3d 1341 (Fed. Cir. 2013):
Among the difficult challenges of applying the doctrine of obviousness is avoidance of even a hint of hindsight. Obviousness “cannot be based on the hindsight combination of components selectively culled from the prior art to fit the parameters of the patented invention.” ATD Corp. v. Lydall, Inc., 159 F.3d 534, 546 (Fed.Cir.1998). In this regard, objective evidence operates as a beneficial check on hindsight. As the court recently explained in describing these “essential components” of the obviousness analysis:
Objective evidence of nonobviousness can include copying, long felt but unsolved need, failure of others, commercial success, unexpected results created 1353*1353 by the claimed invention, unexpected properties of the claimed invention, licenses showing industry respect for the invention, and skepticism of skilled artisans before the invention. These objective considerations can protect against the prejudice of hindsight bias, which often overlooks that “[t]he genius of invention is often a combination of known elements which in hindsight seems preordained.” McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1351 (Fed. Cir.2001).
Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 711 F.3d 1348, 1368 (Fed.Cir.2013) (citations omitted).
The oral argument of the day comes from Corning Optical Communications v. Panduit. I enjoyed this oral argument for its discussion of hindsight in the §103 context. The appellant argued that the patent owner’s claim was simply being used as a template to locate art to reconstruct the claimed invention.
If you put your ear to the ground, you can probably hear a mournful wail from the ghosts of patent-prosecutors-past saying “We feel your pain.”
You can listen to the oral argument here:
You can read the Federal Circuit’s Rule 36 Judgment [here].
Many of the April oral arguments at the Federal Circuit are scheduled to be conducted by telephone. The court has rarely conducted oral arguments by telephone in the past. If you would like to listen to an example of an oral argument at the Federal Circuit that was conducted by telephone, see this previous post from 2013: [Link].
The first step in any precedential opinion issued by the Federal Circuit is an explanation of why it has jurisdiction. The court clearly takes that step seriously and a party cannot even waive the jurisdictional issue. It occurred to me in reading yesterday’s short per curiam disposition that the jurisdictional statement was not present. And, the basis for the court finding that it has jurisdiction is certainly not explained in Rule 36 judgments. Like all things with respect to Rule 36 judgments, we have to assume the court got it right . . . because it didn’t say so.
“The patent law is designed to serve the small inventor as well as the giant research organization.”
Arkie Lures, Inc. v. Gene Larew Tackle, Inc., 119 F.3d 953 (Fed. Cir. 1997)(Judge Newman, author).
717Madisonplace.com celebrated a milestone yesterday by reaching one thousand posts.
Thank you for reading and listening!
Both the United States and Polaris have requested en banc review in the recent Federal Circuit decision of Polaris v. Kingston. This case presents substantially similar issues as those that were presented in Arthrex. Namely, should PTAB judges be considered principal officers of the United States, who must be nominated by the “President” and confirmed by the Senate? My understanding is that Polaris actually raised this issue in its appeal briefing before the parties in Arthrex did so; but, due to the timing of oral arguments, the Federal Circuit panel in Arthrex was able to rule first (in a very speedy opinion after oral argument). During its oral argument, Polaris argued that its case would be a better vehicle for en banc review than the Arthrex case. I tend to agree; although, I personally would like to see both cases considered together in a joint en banc review.
You can read Solicitor Krause’s en banc petition for the PTO here:
You can read Polaris’ en banc petition here:
I seem to remember that someone once commented that the Federal Circuit courtrooms could easily implement video recordings of their oral arguments — if the court chose to do so. The Ninth Circuit has been doing so for many years. Do you think the Federal Circuit should add video recordings?
Here is the video of the recent oral argument at the Ninth Circuit in FTC v. Qualcomm:
The oral argument of the month is from the order today in In re Google, 2019-126 (Fed. Cir. February 13, 2020). [Link]. The subject matter concerns the rather dry subject of venue; but, the oral argument is very interesting. Moreover, it highlights how the courts are being forced to think carefully about how laws written in the 19th and 20th centuries should be applied in the information age.
A careful listener will hear a reference to The Scarlet Pimpernel by Judge Wallach.
Back on Friday, July 29, 1994, the CAFC decided In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994). (A memorable date for me, as I was taking the Colorado bar exam on that date.) The opinion was a highly fractured one with multiple dissents. One of the main issues of contention was whether the Federal Circuit had jurisdiction to hear the appeal, because it stemmed from an enlarged panel decision at the Board. Whether the USPTO had the authority to use such enlarged panels under the statute in place back then had to be determined to decide if the appellate court had jurisdiction.
Judges RICH, NEWMAN, LOURIE and RADER, voted in favor of the court having jurisdiction.
Judges ARCHER, Chief Judge, NIES and PLAGER, concurred in the conclusion.
Judges MAYER, MICHEL, CLEVENGER and SCHALL dissented.
This issue seems relevant to me because Alappat was mentioned again today in the concurrence in Polaris v. Kingston.
The Arthrex panel’s underestimation of the Director’s power is particularly evident in light of this court’s prior en banc decision in In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994), abrogated on other grounds by In re Bilski, 545 F.3d 943 (Fed. Cir. 2008). Alappat contained strong language about the ability to control the composition and size of panels. See, e.g., id. at 1535 (noting that “the Board is merely the highest level of the Examining Corps, and like all other members of the Examining Corps, the Board operates subject to the Commissioner’s overall ultimate authority and responsibility”). While the duties of the Board and the Director have changed since Alappat was decided, the authority to determine the Board’s composition for reconsideration of an examiner’s patentability determination mirrors the current authority with respect to inter partes review. Compare 35 U.S.C. § 6(c) (2012) (giving the Director authority to designate “at least 3 members of the Patent Trial and Appeal Board” to review “[e]ach appeal, derivation proceeding, post-grant review, and inter partes review”), with 35 U.S.C. §7(b) (1988) (giving the Commissioner power to designate “at least three members of the Board of Appeals and Interferences” to review “adverse decisions of examiners upon applications for patents”). Therefore, I believe the panel should have at least discussed how Alappat’s view of the power to control the Board might impact the Appointments Clause analysis.
Polaris v. Kingston, slip opinion at footnote 5 (Fed. Cir. January 31, 2020)(Judges Hughes and Wallach in concurrence).
One should keep in mind that the Alappat decision was highly fractured. Three of the majority remain on the court, as do three of the dissenters. However, an en banc panel from an appeal of either Arthrex or Polaris would only include full time circuit judges — not senior judges. Therefore, Judges Newman and Lourie would be the only surviving members from Alappat to serve on such an en banc panel.
This prior post provides some historical context for Alappat, as well: [In 1992, 75% of the BPAI judges objected to the manipulation of the composition of Board panels].
Since Judge Hughes compared the current statute to a previous statute with respect to the Board, I wonder if there is any merit in going back further in time to when the Supreme Court decided Brenner v. Manson? See this earlier post for more on that, including Supreme Court audio: [Brenner v. Manson — footnote 6.].
The oral argument of the week is from TELESIGN CORPORATION v. TWILIO, INC., No. 2019-1312 (Fed. Cir. Jan. 9, 2020).
I thought this oral argument might interest those of you who like to follow patent eligibility issues.
The panel of Judges Dyk, Taranto, and Chen issued a Rule 36 Judgment [Link].
The oral argument is available here: