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Judge Sleet of the district of Delaware is slated to take senior status on May 1st.

Chief Judge Rader’s (retired) opinion for the court in Ultramercial, Inc. v. HULU, LLC, 722 F.3d 1335 (Fed. Cir. 2013) was ultimately GVR’d (granted, vacated, and remanded) by the Supreme Court due to the Alice v. CLS decision.  I think it is interesting, nevertheless, to review what Chief Judge Rader said about the factual nature of a §101 analysis:

First, it will be rare that a patent infringement suit can be dismissed at the pleading stage for lack of patentable subject matter. This is so because every issued patent is presumed to have been issued properly, absent clear and convincing evidence to the contrary. See, e.g., CLS Bank Int’l v. Alice Corp., 717 F.3d 1269, 1304-05, 2013 WL 1920941, *33 (Fed. Cir. May 10, 2013) (Chief Judge Rader, and Judges Linn, Moore, and O’Malley, concluding that “any attack on an issued patent based on a challenge to the eligibility of the subject matter must be proven by clear and convincing evidence,” and Judges Lourie, Dyk, Prost, Reyna, and Wallach, concluding that a statutory presumption of validity applies when § 101 is raised as a basis for invalidity in district court proceedings.). Further, if Rule 12(b)(6) is used to assert an affirmative defense, dismissal is appropriate only if the well-pleaded factual allegations in the complaint, construed in the light most favorable to the plaintiff, suffice to establish the defense. See Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555, 127 S.Ct. 1955, 167 L.Ed.2d 1339*1339 929 (2007); Jones v. Bock, 549 U.S. 199, 215, 127 S.Ct. 910, 166 L.Ed.2d 798 (2007). Thus, the only plausible reading of the patent must be that there is clear and convincing evidence of ineligibility. For those reasons, Rule 12(b)(6) dismissal for lack of eligible subject matter will be the exception, not the rule.

Second, as is shown more fully below, the analysis under § 101, while ultimately a legal determination, is rife with underlying factual issues. For example, while members of this court have used varying formulations for the precise test, there is no doubt the § 101 inquiry requires a search for limitations in the claims that narrow or tie the claims to specific applications of an otherwise abstract concept. CLS Bank, 707 F.3d at 1298-1302, 2013 WL 1920941 at *27-30 (meaningful limitations); Id. at 1282-83, 2013 WL 1920941 at *10 (opinion of Lourie, J.). Further, factual issues may underlie determining whether the patent embraces a scientific principle or abstract idea. Id. (opinion of Lourie, J.) (“The underlying notion is that a scientific principle … reveals a relationship that has always existed.”) (quoting Parker v. Flook, 437 U.S. 584, 593 n. 15, 98 S.Ct. 2522, 57 L.Ed.2d 451 (1978)). If the question is whether “genuine human contribution” is required, and that requires “more than a trivial appendix to the underlying abstract idea,” and were not at the time of filing “routine, well-understood, or conventional,” factual inquiries likely abound. Id. at 1283-85, 2013 WL 1920941 at *11-12. Almost by definition, analyzing whether something was “conventional” or “routine” involves analyzing facts. Id. at 1284-85, 2013 WL 1920941 at *12. Likewise, any inquiry into the scope of preemption — how much of the field is “tied up” by the claim — by definition will involve historic facts: identifying the “field,” the available alternatives, and preemptive impact of the claims in that field. The presence of factual issues coupled with the requirement for clear and convincing evidence normally will render dismissal under Rule 12(b)(6) improper.

Those of you who know me, know that I am a big fan of stand-up desks.  I was in Austin the other day and stopped by the University of Texas Law School’s law library to check out their IP collection.

In addition to this antique stand-up desk (with built-in swiveling ink well!) located near the IP stacks, I noticed that the law library has a rare copy of Blaustein’s Learned Hand on Patent Law.  That reminded me of an oral argument in which Judge Moore mentioned one of her favorite Learned Hand quotes:  [Listen].

By the way, to hear Learned Hand singing folk songs, go to this [link].

Updated: 5/6/17; 6/14/17

I lose track of how far along each of the Supreme Court’s IP cases are this term.  So, here’s a handy chart:

The oral argument of the day comes from this month’s Federal Circuit decision in THALES VISIONIX INC. v. US, No. 2015-5150 (Fed. Cir. Mar. 8, 2017) (reversing a holding of patent ineligibility).  This reversal has not gotten as much coverage as other patent eligibility cases, I suspect — probably because it is the result of an appeal of a decision by the Court of Federal Claims.  Appeals of patent cases from the Court of Federal Claims are a bit of rarity.

The Federal Circuit decision is available [here].

The recording of the oral argument is available [here].

It is interesting to note that Senior Judge Bryson of the Federal Circuit is the presiding judge of the three-judge “Foreign Intelligence Surveillance Court of Review” which hears appeals from the “Foreign Intelligence Surveillance Court.”

The Foreign Intelligence Surveillance Court was established by Congress in 1978.  The Court entertains applications made by the United States Government for approval of electronic surveillance, physical search, and certain other forms of investigative actions for foreign intelligence purposes.

See http://www.fisc.uscourts.gov (last accessed March 29, 2017).

Given current events, I wonder if we will hear more about the court in the coming months.

The USPTO has updated its chart of subject matter eligibility decisions.  The new chart from the PTO website is available [here].

The USPTO continues to include Rule 36 judgments in the chart despite cases like Rates Tech., Inc. v. Mediatrix Telecom, Inc., 688 F.3d 742, 750 (Fed.Cir. 2012) and TecSec, Inc. v. International Business Machines Corp., 731 F.3d 1336 (Fed. Cir. 2013).

Rule 36 allows us to “enter a judgment of affirmance without opinion” under certain circumstances. Since there is no opinion, a Rule 36 judgment simply confirms that the trial court entered the correct judgment. It does not endorse or reject any specific part of the trial court’s reasoning. In addition, a judgment entered under Rule 36 has no precedential value and cannot establish “applicable Federal Circuit law.” See, e.g., U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1556 (Fed.Cir.1997)

Rates Tech., Inc. v. Mediatrix Telecom, Inc., 688 F.3d 742, 750 (Fed.Cir. 2012)

Similarly, our Rule 36 judgments only affirm the judgment of the lower tribunal. “[A] Rule 36 judgment simply confirms that the trial court entered the correct judgment. It does not endorse or reject any specific part of the trial court’s reasoning.” Rates Tech., Inc. v. Mediatrix Telecom, Inc., 688 F.3d 742, 750 (Fed.Cir. 2012).

TecSec, Inc. v. International Business Machines Corp., 731 F.3d 1336 (Fed. Cir. 2013).

As one example, the In re Alsabah case presented in the chart was an appeal of both 101 and 103 issues.

Query whether a rejection based on one of the Rule 36 Judgments in the chart could satisfy the requisite agency reasoning required by In re Sang-Su Lee:

Judicial review of a Board decision denying an application for patent is thus founded on the obligation of the agency to make the necessary findings and to provide an administrative record showing the evidence on which the findings are based, accompanied by the agency’s reasoning in reaching its conclusions. See In re Zurko, 258 F.3d 1379, 1386, 59 USPQ2d 1693, 1697 (Fed. Cir.2001) (review is on the administrative record); In re Gartside, 203 F.3d 1305, 1314, 53 USPQ2d 1769, 1774 (Fed.Cir. 2000) (Board decision “must be justified within the four corners of the record”).

In re Sang-Su Lee, 277 F.3d 1338 (Fed. Cir. 2002).

The Supreme Court heard oral argument today in the case of TC Heartland v. Kraft Foods.

The transcript of the oral argument is available [here].

I was trying to think of a way to create greater awareness of the Federal Circuit’s rulings.  If greater attention could be drawn to the Federal Circuit’s workload predicament and the resulting need to issue so many Rule 36 judgments, Congress might act to increase the number of judgeships allocated to the court.  Moreover, if there were a competitive aspect to reviewing Federal Circuit opinions, even those derelict patent attorneys we all encounter from time to time might be more interested in staying abreast of Federal Circuit developments.

So, one thought that occurs to me is a Fantasy Football-like game with an educational bent, “Fantasy Federal Circuit.”  The rules of “Fantasy Federal Circuit” may be tailored to your liking; but, here is one proposed set of rules:

1. Draft or pick 5 judges per team roster;

2. Every week two teams go head to head;

3. 4 Points awarded to a team for an opinion authored for the court during the week by a judge on the roster;

4. 3 points awarded for a panel opinion issued during the week in which a judge on the roster participates in the majority (not including the author);

5. 5 points awarded for an opinion issued during the week in which a judge on the roster authors a dissenting opinion;

6. 7 points awarded for an opinion issued during the week in which a judge on the roster authors an en banc opinion for the majority;

7. Negative 1 point awarded for a judgment issued during the week in which a judge on the roster forms part of a Rule 36 judgment panel;

8. Negative 10 points if the Supreme Court reverses during the week an opinion authored for the majority by a judge on the roster, regardless of when the Federal Circuit opinion was authored and with respect to one or more issues;

9. Points received for one judge’s participation in an opinion/judgment does not prevent points being awarded for a second or third judge’s role in that opinion/judgment;

10. The team that has the highest score at the end of the week — even if a negative number — wins the match;

11.  Only CAFC rulings from appeals of IP cases from the USPTO, district courts, ITC, and Court of Federal Claims are utilized.

12.  Per curiam opinions are treated as if there is no author.

13.  No wagering.

Alternative version: Play solitaire.

I tried a practice round this past week and did not fare too well — my team scored -11 points.  But, I doubt you can beat it . . . .

The oral argument of the day is In re Alsabah.  I hope the appellant requested rehearing in this rule 36 judgment.  The outcome seems inconsistent with the Federal Circuit’s statement in In re Smith:

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Update: May 21, 2017

The Federal Circuit issued an errata with respect to the Reoforce opinion on April 28, 2017.  The errata significantly changes the language of the decision in some respects:  [Link].  For example, the correction now states that an unpatented mining claim is a property right in the full sense:

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The Federal Circuit issued a different kind of patent opinion last week — a decision relating to patents on mining claims.  Apparently, the patents that the US government issues for mining claims are considered property rights in the full sense:

Once established, a mining claimant receives “a `patent,’ that is, an official document issued by the United States attesting that fee title to the land is in the private owner.” Kunkes v. United States, 78 F.3d 1549, 1551 (Fed. Cir. 1996). A patented mining claim is “a property right in the full sense.” Union Oil Co. v. Smith,249 U.S. 337, 349 (1919).

REOFORCE, INC. v. US, No. 2015-5084 (Fed. Cir. Mar. 17, 2017)(slip op. at page 4).

The court’s opinion in REOFORCE, INC. v. US, No. 2015-5084 (Fed. Cir. Mar. 17, 2017) is available [here] and [here].

With the extraterritoriality issues being argued today in the Lexmark patent case, I am reminded of the extraterritoriality trademark case of Trader Joe’s v. Hallatt from the Ninth Circuit.  The Ninth Circuit’s 2016 opinion is available [here].

The oral argument of the day comes from a Supreme Court case argued last term, CRST Van Expedited, Inc. v. EEOC, 136 S. Ct. 1642, 578 U.S., 194 L. Ed. 2d 707 (2016).  The Court held that a favorable ruling on the merits is not a necessary predicate to find that a defendant has prevailed.

The oral argument is available [here].

The Court’s opinion is available [here].

This case came up in the Federal Circuit oral argument of Advanced Video Technologies v. HTC et al.

If you were an appellate judge, I imagine that you would prefer to review a lot of matters as “issues of law.”  The great thing about issues of law is that issues of law make the appellate court the final arbiter of a determination.  As you know, issues of law are reviewed de novo.  Issues of fact are reviewed with some level of deference to the factfinder.

In the previous post, I explained that there are several issues percolating at the Federal Circuit with respect to §101 that have not yet been resolved as issues of law or issues of fact.  Perhaps the prospect of giving up de novo review has something to do with that delay.

Retired Chief Judge Rader was a staunch critic of the doctrine of claim vitiation.  He explained that the tests for vitiation and equivalents are coterminous.  The only difference was that the doctrine of claim vitiation was an issue of law (reviewed de novo) while the doctrine of equivalents was an issue of fact (not reviewed de novo).  Therefore, one could assert the doctrine of claim vitiation for purposes of summary judgment, since there could be no fact issue to dispute.  You can hear him explain this in the 2007 oral argument of Wleklinski v. Targus:  [Listen]. See also his “Additional views” in the Nystrom v. Trex case.

While Judge Rader does not mention it, the adoption of de novo review for the doctrine of claim vitiation also made the appellate judges the final arbiters of a doctrine of claim vitiation analysis.  They do not need to defer to any factfinder.

We will have to wait and see how the Federal Circuit resolves the §101 issues.