Judge Cunningham’s Opinions

August 2nd, 2022

Judge Cunningham was confirmed by the Senate more than a year ago. It is interesting how limited an opportunity she has been given by her colleagues to write any patent opinions. The court issues so many Rule 36 opinions that Judge Cunningham has only had a chance to author a handful of patent/trademark opinions herself. By my count, these are the only three patent/trademark “opinions” that she has authored — although this list includes some “orders” of the court relating to patent cases:

AMERICAN NATIONAL MANUFACTURING INC. v. SLEEP NUMBER CORPORATION, No. 2021-1030 (Fed. Cir. July 25, 2022).
IN RE MILLER, No. 2021-1599 (Fed. Cir. Feb. 28, 2022).

HAGE-BOUTROS v. ETHIKA, INC., No. 2021-1615 (Fed. Cir. Feb. 4, 2022).

So, we continue to play wait-and-see as to which direction Judge Cunningham will lean, if at all.

Patent Litigator confirmed by Senate as US District Court Judge for Colorado

July 25th, 2022

Judge Nina Wang was confirmed by the Senate last week as Colorado’s newest US District Court judge. Judge Wang has a good deal of patent law experience and has taught patent litigation and trial advocacy at the University of Colorado Law School. Here’s a link to an earlier post: [Link]. Here is an announcement: [Link].

It will be interesting to see if the US District Court for Colorado experiences an uptick in patent lawsuit filings.

PTAB Judges Report Lack of Independence in PTAB Decisions

July 21st, 2022

We are finally starting to get some insight into the behind the scenes operation (meddling?) in the management of PTAB panels. The Government Accountability Office has released a report with respect to the operation of the PTAB. One of the important facts revealed by the report is that: “the majority of judges (75 percent) surveyed by GAO responded that the oversight practiced by U.S. Patent and Trademark Office (USPTO) directors and PTAB management has affected their independence, with nearly a quarter citing a large effect on independence.”

Also, “the majority of judges GAO surveyed reported they experienced pressure to adhere to management comments and to change or modify an aspect of their decision for an America Invents Act (AIA) trial on challenges to the validity of issued patents.”

The public always assumes that there is transparency in the operation of the PTAB. But, what do we really know about the machinery at work behind the scenes? PTAB judges must meet certain technical and legal requirements to serve as PTAB judges, with the assumption that they are the ones making decisions on a particular case. What do we know of the technical and legal CV’s of the behind-the-scenes people requesting changes in opinions?

The GAO report is available here: [Link].


Update: 7/21/22, 12:45 MDT

One judge we spoke with described a situation where management expanded a panel to include members of PTAB executive management; however, the names of the management officials never appeared on the final decision, nor were the parties privy to the expansion.

Preliminary Observations on Oversight of Judicial Decision­making, Government Accountability Office, July 21, 2022 at page 21.

Broken Axle

May 29th, 2022

by Bill Vobach

The US Solicitor General’s office has filed its brief in American Axle v. Neapco. The SG recommends that the Supreme Court grant certiorari in the case and asserts that the Federal Circuit was wrong in this decision.

You can listen to the oral argument at the Federal Circuit here:

You can review the Federal Circuit’s original opinion here: [Link].

You can review the Federal Circuit’s modified opinion here: [Link].

You can review then-district-court-judge Stark’s opinion here: [Link].


Update 5/30/22:

Some interesting quotes from Judge Moore’s dissents in the original opinion and the updated opinion:

The majority’s validity goulash is troubling and inconsistent with the patent statute and precedent. The majority worries about result-oriented claiming; I am worried about result-oriented judicial action. I dissent.

AMERICAN AXLE & MANUFACTURING v. NeapCo Holdings, 939 F.3d 1355 (Fed. Cir. 2019)(Judge Moore in dissent at 1375).

The majority concludes, though no party argued it at any point in this litigation or appeal, that the claim terms “positioning” and “inserting” have different meanings. And only because of its newly proffered, completely sua sponte construction, claim 22 is deemed ineligible. There is simply no justification for the majority’s application of its new Nothing More test other than result-oriented judicial activism. This is fundamentally unfair. I dissent from this unprecedented expansion of § 101.

AMERICAN AXLE & MANUFACTURING v. Neapco Holdings, 967 F.3d 1285 (Fed. Cir. 2020)(Judge Moore in dissent at 1305).

Update 5/31/22:

Ursinine

May 21st, 2022

Having recently attended a CLE about Alice and Electric Power Group, these bears try to scratch off the accompanying funk:

Oral argument of the day

May 10th, 2022

The oral argument of the day is an old one from the Ninth Circuit, Cetacean Community v. Bush, 386 F.3d 1169 (9th Cir. 2004). The case concerns whether Congress has the authority to grant animals standing to sue.

You can listen to the oral argument here:

One of the questions asked was how do animals give their consent for attorneys to represent them in court?

The Federal Circuit defers to the law of the regional circuits on matters of procedural law that do not implicate issues of patent law. Midwest Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356, 1359, 50 USPQ2d 1672, 1675 (Fed.Cir. 1999) (en banc in relevant part).

Quote for the day

May 1st, 2022

The quote for the day comes from Judge Newman’s dissent in In re Schreiber:

 I feel for those who tread the arcane path of patent soliciting, for this court’s insistence on the importance of the limitations in the claims seems to have lost its way.

In re Schreiber, 128 F.3d 1473, 1480 (Fed. Cir. 1997).

Split decision in LeDure v. Union Pacific Railroad Company

April 30th, 2022

I posted previously that the Supreme Court was construing a “use” based statute in LeDure v. Union Pacific Railroad Company.  The Court announced this week that the Justices split 4-4 on the decision with Justice Barrett taking no part in the decision.

Oral argument of the day: In re Surgisil

April 30th, 2022

The oral argument of the day is from the Federal Circuit’s decision in the design patent case In re Surgisil, 14 F.4th 1380 (Fed. Cir. 2021).

The Federal Circuit opinion is available here: [Link].

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If you were trying to recall the claim language in In re Schreiber (popcorn dispenser vs. oil can spout)– a utility patent case, rather than a design patent case — here is a link to that §102 anticipation case: [Link].

Competing cases in the canons of claim construction

April 16th, 2022

I ran across this article about the canons of claim construction. It is from back in 2005 and pre-Phillips; but, I thought it was pretty interesting. District court judges would probably enjoy it: [Link].

Quote of the day

April 14th, 2022

Under the statute it is the claims of the patent which define the invention. See White v. Dunbar, 119 U.S. 47, 51, 52McClain v. Ortmayer, 141 U.S. 419, 423-425The Paper Bag Patent Case, 210 U.S. 405, 419Smith v. Snow, ante, p. 11. And each claim must stand or fall, as itself sufficiently defining invention, independently of the others. See Carlton v. Bokee, 17 Wall. 463, 472Russell v. Place, 94 U.S. 606, 609Leeds & Catlin Co.v. Victor Talking Machine Co., 213 U.S. 301, 319Symington Co. v. National Malleable Castings Co., 250 U.S. 383, 385Smith v. Snow, supra; Walker on Patents, § 220, 6th ed. 

 Altoona Publix Theatres, Inc. v. American Tri-Ergon Corp., 294 U.S. 477, 487, 55 S.Ct. 455, 459, 79 L.Ed. 1005 (1935)(emphasis added).

Quote of the day — using dependent claims to construe independent claims

April 12th, 2022

Independent and dependent claims must if possible be interpreted to be consistent with each other . . . .

POWER PROBE GROUP, INC. v. INNOVA ELECTRONICS CORPORATION, 2021-2354 (Fed. Cir. April 12, 2022)(Judge Lourie writing for the court).

“Use”

March 28th, 2022

I thought it was interesting that the Supreme Court is entertaining a statutory construction case for a statute that centers around the construction of “use.” The case is LeDure v. Union Pacific Railroad Company. The Court heard oral argument this morning and the audio recording is available here:

As you may recall, 35 U.S.C. §271(a) has a “use” provision:

(a)Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.

35 U.S.C. §271(a)

Some of the Federal Circuit’s recent “use” cases are:

Georgetown Rail Equipment Co. v. HOLLAND LP, 867 F.3d 1229 (Fed. Cir. 2017).

Intellectual Ventures I v. Motorola Mobility, 870 F.3d 1320 (Fed. Cir. 2017).

Centillion Data Systems, LLC v. Qwest Communications Int’l, Inc., 631 F.3d 1279 (Fed. Cir. 2011).

GRECIA v. McDONALD’S CORPORATION, No. 2017-1672 (Fed. Cir. Mar. 6, 2018).

SYNCHRONOSS TECHNOLOGIES, INC v. DROPBOX, INC., No. 2019-2196 (Fed. Cir. Feb. 12, 2021).

From a cursory review of the briefs in LeDure, however, it does not appear that any citations/references were made to patent law.

Judge O’Malley’s Last Week

March 6th, 2022

I believe this is Judge O’Malley’s last week on the Federal Circuit. It is truly sad to see her retire. I hope some of the bigger blogs will reflect on her service on the court. Some comments from her former clerks would be particularly interesting to read. I’m sure they could salute her service better than most. At her Senate confirmation hearing, you might recall that her former district court clerks showed up in droves to support her Federal Circuit nomination.

Here’s one sound bite that I have always liked from Judge O’Malley (“BRI still has an ‘R’ in it”):

Article suggestion: Denial of Access to the Courts and the USPTO

February 25th, 2022

by Bill Vobach

The Federal Circuit recently took a case en banc in Taylor v. McDonough, which was argued earlier this month. The court’s sua sponte order of en banc review asked the parties to discuss a decades-old Supreme Court opinion that has never been cited by the Federal Circuit (as far as I can tell) — namely Christopher v. Harbury. The Christopher v. Harbury case concerns a cause of action termed “denial of access to the courts.” The Supreme Court characterized “denial of access to the courts” claims as follows:

This Court’s prior cases on denial of access to courts have not extended over the entire range of claims that have been brought under that general rubric elsewhere, but if we consider 413*413 examples in the Courts of Appeals[7] as well as our own, two categories emerge. In the first are claims that systemic official action frustrates a plaintiff or plaintiff class in preparing and filing suits at the present time. Thus, in the prisonlitigation cases, the relief sought may be a law library for a prisoner’s use in preparing a case, Bounds v. Smith, 430 U. S. 817, 828 (1977)Lewis v. Casey,518 U. S. 343, 346-348 (1996), or a reader for an illiterate prisoner, id., at 347-348, or simply a lawyer, ibid. In denial-of-access cases challenging filing fees that poor plaintiffs cannot afford to pay, the object is an order requiring waiver of a fee to open the courthouse door for desired litigation, such as direct appeals or federal habeas petitions in criminal cases,[8] or civil suits asserting family-law rights, e. g., Boddie v. Connecticut, 401 U. S. 371, 372 (1971) (divorce filing fee); M. L. B. v. S. L. J., 519 U. S. 102, 106-107 (1996) (record fee in parental-rights termination action). In cases of this sort, the essence of the access claim is that official action is presently denying an opportunity to litigate for a class of potential plaintiffs. The opportunity has not been lost for all time, however, but only in the short term; the object of the denial-of-access suit, and the justification for recognizing that claim, is to place the plaintiff in a position to pursue a separate claim for relief once the frustrating condition has been removed.

The second category covers claims not in aid of a class of suits yet to be litigated, but of specific cases that cannot now 414*414 be tried (or tried with all material evidence), no matter what official action may be in the future.[9] The official acts claimed to have denied access may allegedly have caused the loss or inadequate settlement of a meritorious case, e. g., Foster v. Lake Jackson, 28 F. 3d 425, 429 (CA5 1994)Bell v. Milwaukee, 746 F. 2d 1205, 1261 (CA7 1984) (“[T]he cover-up and resistance of the investigating police officers rendered hollow [the plaintiff’s] right to seek redress”), the loss of an opportunity to sue, e. g., Swekel v. River Rouge, 119 F. 3d 1259, 1261 (CA6 1997) (police coverup extended throughout “time to file suit . . . under . . . statute of limitations”), or the loss of an opportunity to seek some particular order of relief, as Harbury alleges here. These cases do not look forward to a class of future litigation, but backward to a time when specific litigation ended poorly,[10] or could not have commenced, or could have produced a remedy subsequently unobtainable.[11] The ultimate object of these sorts of access claims, then, is not the judgment in a further lawsuit, but simply the judgment in the access claim itself, in providing relief obtainable in no other suit in the future.

Christopher v. Harbury, 536 U.S. 403, 412 (2002).

So, a potentially interesting article might address any PTO policies that cause sufficient delay to prevent a patentee from seeking redress for infringement in a timely manner, i.e., loss of opportunity to sue. The SAWS program is something that comes to mind. Perhaps there are other programs or practices, as well. How this cause of action interplays with an administrative takings claim might also be of interest. Would a takings claim provide the same, better, or worse remedy?

You can listen to the Supreme Court oral argument of Christopher v. Harbury [here].