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The audio recording of the oral argument in SAS Institute Inc. v. Matal is now available.  You can listen to it below:

In today’s oral argument of Oil States, there was an exchange where the government’s representative was asked how frequently panels are enlarged by the Board. The answer given is shown below (with a chunk omitted for brevity):

15             CHIEF JUSTICE ROBERTS:  Does it

16    comport to due process to change the

17    composition of the adjudicatory body halfway

18    through the proceeding?

19             MR. STEWART:  This has been done on

20    three occasions.  It’s been done at the

21    institution stage.

22             CHIEF JUSTICE ROBERTS:  So I’ll

23    rephrase the question.  Was it illegal under

24    those three occasions?

 

…

 

11             MR. STEWART:  I — I don’t know how

12    the institution decisions came out.  This has

13    not been done at the merits stage, if you will,

14    when patentability was actually being — being

15    determined.  But our primary point would be

16    that if there’s a constitutional flaw in that

17    procedure, then a person who is actually harmed

18    by its use in a particular case -­

You can view the whole exchange in the transcript at pages 45-47 [here].

I came away from reading that exchange thinking that the government was saying that the PTO has only expanded IPR/CBM panels three times.  If that was the intended message to the Court, then I think the government needs to double-check its figures.  By the Chief Judge of the PTAB’s own slide presentation to PPAC on November 9, 2017 [Link], there have been four expanded panels in 2017 alone.  Also, those do not include the expanded panels in IPR2013-00219 (Yissum), IPR2014-00508 (Target), IPR2014-00319 (Apple), and IPR2015-00762 (Zhongshan).  If four expanded panels were used in 2017 alone, it appears that the PTO is using expanded panels with increasing frequency.

Moreover, the substantive use of an expanded panel in Ex parte Alappat cannot be overlooked.  Granted, Alappat was pre-IPR days.  However, the PTO showed in Alappat that it is certainly willing to use an expanded panel for a substantive issue rather than just procedural issues.  For more on Alappat, see the Federal Circuit’s en banc opinion, particularly Judge Mayer’s (and Judge Michel’s) dissent, [here].

Ex parte Alappat was recounted in rather dramatic fashion in this FICPI publication [Link]  at pages 98-99, where it was noted that the original three-member Board panel was expanded by adding the Commissioner of the USPTO, “Deputy Commissioner Comer (a person with no patent background or expertise), Assistant Commissioner Samuels (a trademark expert with no patent background) as well as the Chair and Vice-Chair of the Board.”  The original three-member panel was subsequently out-voted 5-3.

UPDATE 12/21/17:

A further expanded panel was used in IPR2017-01186 on December 19, 2017.  The Chief Judge of the Board, acting under authority delegated by the Director, expanded a three judge panel by adding himself, the Deputy Chief Judge of the PTAB, and two Vice Chief Judges.  The issue dealt with was the constitutional issue of sovereign immunity:  [ERICSSON INC. and TELFONAKTIEBOLAGET LM ERICSSON v. REGENTS OF THE UNIVERSITY OF MINNESOTA].

Justice Kagan recently mentioned Justice Oliver Wendell Holmes’ stand-up desk, during the roundtable discussion celebrating Harvard Law School’s 200th birthday.  You can see the roundtable below or at this [Link].  As an aficionado of stand-up desks, I was intrigued when she mentioned that Justice Holmes had used a stand-up desk.  In fact, I understand that he wrote most of his opinions in his home office standing at his stand-up desk.

It was quite difficult to locate any pictures of this famous desk.  Below are a few as well as a picture of Justice Holmes’ home study.  The desk now resides in the office of the dean of the Harvard Law School.

Click on images for a larger view.

Link to article on how sitting is the new smoking: [Link].

That the government of the United States when it grants 358*358 letters-patent for a new invention or discovery in the arts, confers upon the patentee an exclusive property in the patented invention which cannot be appropriated or used by the government itself, without just compensation, any more than it can appropriate or use without compensation land which has been patented to a private purchaser, we have no doubt. The Constitution gives to Congress power “to promote the progress of science and useful arts by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries,” which could not be effected if the government had a reserved right to publish such writings or to use such inventions without the consent of the owner. Many inventions relate to subjects which can only be properly used by the government, such as explosive shells, rams, and submarine batteries to be attached to armed vessels. If it could use such inventions without compensation, the inventors could get no return at all for their discoveries and experiments. It has been the general practice, when inventions have been made which are desirable for government use, either for the government to purchase them from the inventors, and use them as secrets of the proper department; or, if a patent is granted, to pay the patentee a fair compensation for their use. The United States has no such prerogative as that which is claimed by the sovereigns of England, by which it can reserve to itself, either expressly or by implication, a superior dominion and use in that which it grants by letters-patent to those who entitle themselves to such grants. The government of the United States, as well as the citizen, is subject to the Constitution; and when it grants a patent the grantee is entitled to it as a matter of right, and does not receive it, as was originally supposed to be the case in England, as a matter of grace and favor.

James v. Campbell, 104 U.S. 356, 357-58 (1882).

The petitioner in the Oil States v. Greene’s Energy Group case has filed its reply brief. The reply brief is available [here].

You might have noticed today two rather succinct opinions issued by the Federal Circuit.  One wonders if that is in response to recent criticism of the Federal Circuit for issuing so many Rule 36 opinions in patent related appeals.

I thought it was interesting that one of the Federal Circuit’s judicial clerks recently moved on to become a Supreme Court Fellow.  Namely, Judge O’Malley’s former clerk, Matthew Sipe, moved on to become a Supreme Court fellow assigned to the administrative office of the United States Courts. [Link].  You can listen to Judge O’Malley nominate Mr. Sipes for admission to the Federal Circuit Bar [here].

I have to admit that I had never heard the term “Supreme Court Fellow” before.  It appears that there are only four appointed each year.  At any rate, to the extent that the administrative office of the United States Courts has any influence on Congress, Mr. Sipes should be well-positioned to make the administrative office aware of the Federal Circuit’s plight and the possible need for Congress to propose legislation to create additional Federal Circuit judgeships to alleviate the Rule 36 problem.

The Supreme Court of Texas heard oral argument the other day in In re Andrew Silver, the patent agent privilege case. The issue has been characterized as follows:

“The issue in this mandamus to rescind a discovery order is whether Texas evidence rule 503 protects confidential communications between a patent applicant and his non-attorney patent agent authorized to practice law in federal patent proceedings.”

You can watch the video recording of the oral argument [here].

David Hricik wrote about the USPTO’s new patent agent privilege rule [here].

With Oil States coming up for oral argument in a few weeks, it is interesting that five of the current Justices of the Supreme Court were recently present to hear Justice Souter’s comments about the inestimable moral value of jurors.

I stole this from the Scotusblog, where I noticed it today:

The Scotusblog is a great resource for seeing all the briefs that have been filed in pending Supreme Court cases.  You can see the briefing in Oil States v. Greene’s Energy at this [link].

Sovereign immunity for Indian nations is a hot topic these days, at least with respect to patent law.  I posted about tribal immunity back in 2011.  The post was focused on tribal immunity from patent infringement, rather than immunity from USPTO actions.  You can view the post here: [Sovereign Immunity from Patent Infringement for Indian Tribes].

Looking back at that post, I thought people might be interested in listening to the oral argument from the Supreme Court case Kiowa Tribe of Okla. v. Manufacturing Tech., Inc., 523 U.S. 751, 754 (1998). You can listen to that oral argument here: [Listen][Read].

The CourtListener site has an interesting mapping feature that I stumbled upon today.  I’m not entirely certain what it is showing me; but, some of you might enjoy experimenting with it.  I mapped the line of cases from Aro I — in which the Supreme Court said there was not “gist” or “heart” of an invention — to Alice.  This is the result I got:

If you are filing the reply brief in Oil States or currently appealing a 101 decision to the Federal Circuit, you might want to take note that the Supreme Court will be requiring electronic filing after November 13th.  The Federal Circuit has posted this notice to its website:

Back in June, Judge Newman took the USPTO to task for intervening in an appeal from an IPR proceeding in which the petitioner had withdrawn and the underlying district court case had been dismissed.  Judge Newman asked what in the world is the USPTO doing in the case and why is it squandering its time and talent in a case where the petitioner withdrew.

Judge Newman’s exchange with the USPTO was as follows:

Judge Newman:  What in the world is the Office doing in this case?  The petitioner withdrew — refuses to defend its win.  The district court case was dismissed. It’s over.  What is the interest of the Office in this conflict?  There’s no Article III conflict  between the Office and this Applicant.  Even if the Office prevails and there is an estoppel, it only affects this petitioner who has already withdrawn.  Why is the Office squandering its time and talent in this debate after the petitioner withdrew?

PTO:  Your Honor, the statute gives the Office the right to intervene in any appeal —

Judge Newman:  The statute can be interpreted as saying anything the Office wants to do, they can do.  I doubt very much that when the Director was authorized to intervene that that meant in anything that anybody felt like intervening in — but in a situation where you were defending some jurisdictional issue.  Here we have an expensive, heavily contested contest/appeal continuing, withdrawn in the district court, nobody seems to care except the Office.  Why should it matter?

PTO:  The Office cares because in large part this was a challenge to the procedures of the Office.  And, the Office has an interest in ensuring that its Board and the manner in which the Board is applying the AIA receives at least a counterpoint consideration.  And this court in many instances in which cases where the petitioner has dropped out has asked the PTO to participate or whether we will participate.  Now admittedly we do not have an order like that in this case.  But, the Director has exercised her statutory authority to participate in the appeal.  And, that is largely why.  It is to protect the integrity of the USPTO Office’s proceedings and the statute.

Judge Newman:  OK. We’ll see.  Thank you.

You can listen to Judge Newman’s exchange with the PTO here:

The entire oral argument is available here:

The court’s opinion in NFC v. Matal is available [here].

The Supreme Court has set the date for oral argument in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC.  The argument will take place on November 27, 2017.  The question presented in Oil States is:

Issue: Whether inter partes review, an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents, violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.

Link to ScotusBlog: [Link].

The oral argument in SAS Institute Inc. v. Matal will also take place on November 27, 2017.  The question presented in that case is:

Issue: Whether 35 U.S.C. § 318(a), which provides that the Patent Trial and Appeal Board in an inter partes review “shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner,” requires that Board to issue a final written decision as to every claim challenged by the petitioner, or whether it allows that Board to issue a final written decision with respect to the patentability of only some of the patent claims challenged by the petitioner, as the U.S. Court of Appeals for the Federal Circuit held.

Link to ScotusBlog:  [Link].

Have you ever noticed how many amicus briefs the Houston Intellectual Property Law Association (HIPLA) files.  They really put to shame other bar organizations around the country, as far as engagement in the amicus process is concerned.