717 Madison Place

Wow, it has already been thirteen years since Phillips was decided (July 12, 2005).  In Part IV-B of Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005), the en banc majority stated:

While we have acknowledged the maxim that claims should be construed to preserve their validity, we have not applied that principle broadly, and we have certainly not endorsed a regime in which validity analysis is a regular component of claim construction. See Nazomi Communications, 403 F.3d at 1368-69. Instead, we have limited the maxim to cases in which “the court concludes, after applying all the available tools of claim construction, that the claim is still ambiguous.” Liebel-Flarsheim, 358 F.3d at 911; see also Generation II Orthotics Inc. v. Med. Tech. Inc., 263 F.3d 1356, 1365 (Fed.Cir.2001) (“[C]laims can only be construed to preserve their validity where the proposed claim construction is `practicable,’ is based on sound claim construction principles, and does not revise or ignore the explicit language of the claims.”); Elekta Instrument S.A. v. O.U.R. Scientific Int’l, Inc., 214 F.3d 1302, 1309 (Fed.Cir.2000) (“having concluded that the amended claim is susceptible of only one reasonable construction, we cannot construe the claim differently from its plain meaning in order to preserve its validity”); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1434 (Fed.Cir.1988) (rejecting argument that limitations should be added to claims to preserve the validity of the claims). In such cases, we have looked to whether it is reasonable to infer that the PTO would not have issued an invalid patent, and that the ambiguity in the claim language should therefore be resolved in a manner that would preserve the patent’s validity.

Phillips v. AWH Corp., 415 F.3d 1303, 1327 (Fed. Cir. 2005).

So, it was interesting to read the dissent today in BLACKBIRD TECH LLC, DBA BLACKBIRD TECHNOLOGIES v. ELB ELECTRONICS, INC., ETI SOLID STATE LIGHTING INC., FEIT ELECTRIC COMPANY INC., __ F.3d __ (Fed. Cir. 2018), which stated:

I find it curious that the Federal Circuit only publishes the names of its panel members on the morning of an oral argument.  Some of the other circuit courts of appeal publish the names of the panel members far longer in advance. For example, the Tenth Circuit has already published panel membership for arguments two weeks in the future: [Link].  If I recall correctly, the Federal Circuit experimented with a longer notification period; but, eventually, the court resumed its previous and now current practice.

It would be interesting to see a short article that compares the various circuits and the amount of notification given to the parties about the composition of a panel.  What seems implicit in the Federal Circuit’s short lead time is the notion that the court is so badly fractured that advocates will focus their arguments to cater to the particular panel members.  One benefit I see to a longer lead time is that an advocate would probably know how much technical explanation would be required during oral argument depending on the composition of the panel.  For example, a panel comprised of Judges Hughes, Dyk, and Reyna might need more technical background on an electronics case than would Judges Moore, Stoll, and Linn (some of the EE judges).

Next door to the Federal Circuit sits a statue of a somber woman in a cowl.  The statue is a replica of a statue that Henry Adams (grandson of President John Quincy Adams) commissioned after the death of his wife.  In 1909, Mark Twain visited the original statue and gave it the nickname “GRIEF.”

The replica — ironically, an unauthorized replica — eventually made its way to the courtyard behind the Dolley Madison House, next door to the Federal Circuit.

“THE RULE 36 STATUE”

If the original was nicknamed “GRIEF,”  what would be a good nickname for the replica?  How about “THE RULE 36 STATUE” or “THE SUPREME COURT WEIGHS IN ON PATENT ELIGIBILITY.”  Maybe “FIRST INVENTOR TO FILE.”

I am somewhat reminded of the dust bowl photograph by “THE RULE 36 STATUE”:

The USPTO has posted its memorandum to the examining corps following the Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals decision.  The memorandum is available [here].

The Federal Circuit decision is available [here].

The oral argument at the Federal Circuit is available below:

In the last few weeks, the Federal Circuit has been publishing opinions via its web site that include a date that follows the case name.  You can see some examples below:

The dates tend to be one or two working days before the opinions are released to the public.  So, they are not actually the date of the opinions.  The Federal Circuit has not published any explanation on its web site for this new procedure.  My best guess is that perhaps it reflects the date that the opinions are submitted to the clerk’s office.  And, perhaps the dates are intended to be one mode of precedential tie-breaker, if two opinions are released officially on the same day but with opposing viewpoints on an issue.  See Patently-O, “Priority of Precedent: When Same-Day Federal Circuit Opinions are in Tension” [Link].

Update June 19, 2018:

Curiously, the Federal Circuit is now publishing the list of cases without dates.  And, the court has removed the dates that were previously listed.  So, we are back to the old system.

Judge O’Malley also sat by designation with the 9th Circuit in 2017.  You can watch a video of one of the oral arguments below (Altera v. CIR).  From what I could glean, the case deals with taxation issues concerning cost sharing arrangements for the development of intangible property.

Judge Linn of the Federal Circuit has a lot fans throughout the country from his work with the American Inns of Court, as well as the sound judicial reasoning in his opinions for the court.  He sat by designation with the Ninth Circuit back in November in the following cases:

The video below is from the oral argument in one of those cases — a copyright case, ABS Entertainment, Inc. v. CBS Corp.:

Director Iancu’s written statement is available [here].

If you missed last week’s USPTO webinar on the revised guidance in view of Berkheimer v. HP, the video  recording of the webinar is available below:

The slides are available here: [Link].

The machine-or-transformation test may well provide a sufficient basis for evaluating processes similar to those in the Industrial Age—for example, inventions grounded in a physical or other tangible form. But there are reasons to doubt whether the test should be the sole criterion for determining the patentability of inventions in the Information Age. As numerous amicus briefs argue, the machine-or-transformation test would create uncertainty as to the patentability of software, advanced diagnostic medicine techniques, and inventions based on linear programming, data compression, and the manipulation of digital signals. See, e.g., Brief for Business Software Alliance 24-25; Brief for Biotechnology Industry Organization et al. 14-27; Brief for Boston Patent Law Association 8-15; Brief for Houston Intellectual Property Law Association 17-22; Brief for Dolby Labs., Inc., et al. 9-10.

In the course of applying the machine-or-transformation test to emerging technologies, courts may pose questions of such intricacy and refinement that they risk obscuring the larger object of securing patents for valuable inventions without transgressing the public domain. The dissent by Judge Rader refers to some of these difficulties. 545 F.3d, at 1015. As a result, in deciding whether previously unforeseen inventions qualify as patentable 3228*3228 “process[es],” it may not make sense to require courts to confine themselves to asking the questions posed by the machine-or-transformation test. Section 101’s terms suggest that new technologies may call for new inquiries. See Benson, supra, at 71, 93 S.Ct. 253 (to “freeze process patents to old technologies, leaving no room for the revelations of the new, onrushing technology[,] . . . is not our purpose”).

Bilski v. Kappos, 130 S. Ct. 3218, 3227-28 (2010)(Justice Kennedy writing for himself, Chief Justice Roberts, and Justices Thomas and Alito).

The SCOTUSblog discussed the recent Oil States and SAS Institute decisions in a recent podcast.  You can access the podcast here: Link.

The oral argument of the day comes from Dialware Communications, LLC v. Hasbro, Inc.  This is yet another patent eligibility case.  From the oral argument, it appears that the claims were for toys that respond to sounds made by other toys — for example, use of the doppler effect to determine if another toy is moving toward the sound-receiving toy.

Despite the Rule 36 affirmance that all 250+ claims are patent ineligible based on a single representative claim, one argument theme that appears to be getting some traction these days is the theme of “over-reductionism.”  Over-reductionism was an issue raised by Judge Hughes in the oral argument of Dialware as well as Judge Linn in the oral argument of Finjan.

After listening to Judge Hughes’ questions raised during the oral argument, you might find yourself curious as to how the Federal Circuit reached its decision in its de novo review of the patent ineligibility determination.  Unfortunately, the Rule 36 Judgment will not fill the void for you.

The oral argument is available here:

The Rule 36 Judgment is available [here].

If you are looking for an excuse to visit Denver this June, there are three IP programs worth your attention.

The annual Denver IP Institute will be held May 31 – June 1:  [Link];

There is a 2 1/2 day PCT seminar being held June 13-15 [Link]; and

The AIPLA Electronics and Computer Law Summit will be held on June 19th [Link].

If you want to visit the Denver Patent Office while you are here, you can find visitor information at this [Link].

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Update May 8, 2018:
Also, on May 30th from 4:00-6:00, there will be a reception at the Denver Patent Office for USPTO Day: [Link].

The oral argument of the day is from Finjan v. Blue Coat.  You can listen to the oral argument here:

The Federal Circuit opinion is available [here].

The independent claim at issue reads:

1. A method comprising:

receiving by an inspector a Downloadable;

generating by the inspector a first Downloadable security profile that identifies suspicious code in the received Downloadable; and

linking by the inspector the first Downloadable security profile to the Downloadable before a web server makes the Downloadable available to web clients.

Judge Dyk writing for the court concluded the §101 analysis by stating:

Here, the claims recite more than a mere result. Instead, they recite specific steps—generating a security profile that identifies suspicious code and linking it to a downloadable—that accomplish the desired result. Moreover, there is no contention that the only thing disclosed is the result and not an inventive arrangement for accomplishing the result. There is no need to set forth a further inventive concept for implementing the invention. The idea is non-abstract and there is no need to proceed to step two of Alice.

In Electric Power Group v. Alstom, the claim deemed ineligible recited:

12. A method of detecting events on an interconnected electric power grid in real time over a wide area and automatically analyzing the events on the interconnected electric power grid, the method comprising:

receiving a plurality of data streams, each of the data streams comprising sub-second, time stamped synchronized phasor measurements wherein the measurements in each stream are collected in real time at geographically distinct points over the wide area of the interconnected electric power grid, the wide area comprising at least two elements from among control areas, transmission companies, utilities, regional reliability coordinators, and reliability jurisdictions;

receiving data from other power system data sources, the other power system data sources comprising at least one of transmission maps, power plant locations, EMS/SCADA systems;
receiving data from a plurality of non-grid data sources;

detecting and analyzing events in real-time from the plurality of data streams from the wide area based on at least one of limits, sensitivities and rates of change for one or more measure- ments from the data streams and dynamic stability metrics derived from analysis of the measurements from the data streams including at least one of frequency instability, volt- ages, power flows, phase angles, damping, and oscillation modes, derived from the phasor measurements and the other power system data sources in which the metrics are indicative of events, grid stress, and/or grid instability, over the wide area;

displaying the event analysis results and diag- noses of events and associated ones of the met- rics from different categories of data and the derived metrics in visuals, tables, charts, or combinations thereof, the data comprising at least one of monitoring data, tracking data, historical data, prediction data, and summary data;

displaying concurrent visualization of measurements from the data streams and the dynamic stability metrics directed to the wide area of the interconnected electric power grid;

accumulating and updating the measurements from the data streams and the dynamic stabil- ity metrics, grid data, and non-grid data in real time as to wide area and local area portions of the interconnected electric power grid; and

deriving a composite indicator of reliability that is an indicator of power grid vulnerability and is derived from a combination of one or more real time measurements or computations of measurements from the data streams and the dynamic stability metrics covering the wide area as well as non-power grid data received from the non-grid data source.