I have been listening to the oral argument of the Ameranth v. Apple case. In the underlying PTAB decision, the PTAB granted CBM review of some claims and denied CBM review of other claims. Those decisions were appealed by the parties and the USPTO Solicitor’s Office intervened. That put the Solicitor’s Office in the unusual position of arguing that the party that had been denied review of some claims under §101 by the PTAB had not met its burden.
As part of its brief, the PTO cited a lack of evidence that the claims recited routine and conventional [sic: and well-understood] activities:
“Finally, with respect to the claims that the Board confirmed, the petitioners failed to meet their burden of showing that these claims recite ineligible subject matter. Although the petitioners showed that the claims are directed to an abstract idea, they failed to present any evidence or analysis that the claims’ recited technologies are routine and conventional.”
USPTO Brief in Apple et al. v. Ameranth at page 20.
For comparison purposes, the PTO’s brief from In re Villena is available [here].
In its In re Villena brief, the PTO argues that the §101 inquiry is a “pure” question of law. That assertion seems to be belied by a whole host of cases from the Federal Circuit and district courts that have stated that the §101 analysis is a question of law informed by underlying facts. See Arrhythmia Research Technology v. Corazonix Corp., 958 F.2d 1053 (Fed. Cir. 1992); In re Comiskey, 554 F.3d 967 (Fed. Cir. 2009); SINCLAIR-ALLISON, INC. v. FIFTH AVENUE PHYSICIAN SERVICES, LLC, No. CIV-12-360-M (W.D. Okla. Dec. 19, 2012); PROTOSTORM, LLC v. ANTONELLI, TERRY, STOUT & KRAUS, LLP, No. 08-CV-931 (PKC)(JO) (E.D.N.Y. June 5, 2015); WIRELESS MEDIA INNOVATIONS, LLC v. MAHER TERMINALS, LLC, Civil Action No. 14-7004 (D.N.Y. Apr. 20, 2015); EXECWARE, LLC v. BJ’S WHOLESALE CLUB, INC., Civil Action No. 14-233-LPS (D. Del. July 15, 2015); TRIPLAY, INC. v. WhatsAPP INC., Civil Action No. 13-1703-LPS (D. Del. Apr. 28, 2015); VS TECHNOLOGIES, LLC v. TWITTER, INC., Civil Action No. 2: 11cv43 (E.D. Va. Apr. 26, 2012); Cyberfone Systems, LLC v. Cellco Partnership, 885 F. Supp. 2d 710 (D. Del. 2012) — not to mention the PTAB’s decision in PNC Bank v. Secure Axcess, CBM2014-0100 (PTAB Sept. 9, 2014) citing a lack of evidence of a fundamental economic practice.
The oral argument of the week is Bose Corp. v. SDI Technologies, Inc. It was argued on November 7, 2016 and decided by Rule 36 Judgment on November 14, 2016. I think you might enjoy listening to this oral argument because it discusses use of materials from the “Way Back Machine” on Archive.org, as well as hearsay issues.
By the way, I just noticed that Archive.org now has quite a library of old time radio programs, such as Dragnet. I bet Joe Friday would have considered “well-known,” “conventional,” and “routine” to all be factual inquiries. [https://archive.org/details/oldtimeradio]
If you were curious about the two-judge decision inImpulse Technology Ltd. v. Microsoft Corporation decided today, it appears that the Federal Circuit judge that recused herself was Judge Moore. From listening to the initial part of the oral argument, it appears that one of the parties raised a possible conflict issue upon learning the morning of oral argument that Judge Moore was to be part of the panel to hear the case. [Listen]
If memory serves correctly, it seems that the list of judges that have recused themselves since 2007 includes at least Judge Moore, Judge O’Malley, Judge Clevenger, Judge Michel (now retired), Judge Chen, Judge Taranto, and Judge Stoll.
The PTO has been notably silent on the issue of what evidence is required from the PTO in a §101 analysis. The PTO Solicitor’s Office did express some views on the issue in its briefing of the In re Villena appeal. Perhaps they have changed their mind after McRO v. Bandai. You can access the PTO’s brief [here]. This might be helpful material to anyone that is planning on attending the upcoming PTO roundtable on Monday on subject matter eligibility.
The Federal Circuit issued a Rule 36 Judgment on the appeal. Because the PTAB rejected the claims for 102 and 103 reasons in addition to 101, one cannot say that the Federal Circuit was endorsing the Solicitor’s Office views on patent eligibility. The Federal Circuit does not always address all issues on appeal to reach an affirmance of the Board. For example, in In re Gleave the court stated:
Therefore, we affirm the Board’s rejection of claims 1, 4, 15, and 18-21 of the ‘493 application under § 102(b). We need not reach the § 103 obviousness rejection.
In re Gleave, 560 F. 3d 1331, 1338 (Fed. Cir. 2009)
While the Federal Circuit makes reference to literary characters from time to time, it is rare that Frankenstein’s monster has ever come up in Federal Circuit or CCPA opinions. I thought it was a creative expression in a recent oral argument where the patent owner referred to the PTAB’s rejection as a “Frankenstein hodge-podge collection of citations.” [Listen]
I am familiar with a “rolling 103 rejection.” Perhaps we should add a “Frankenstein’s monster rejection” to the list.
The PTO might be setting itself up for an overruling of In re Gorman, 933 F.2d 982, 18 U.S.P.Q.2d 1885 (Fed. Cir. 1991). On at least three occasions in recent months, Federal Circuit judges have commented on the number of references that the PTO is relying upon to reject claims.
In the most recent comment, Judge O’Malley commented about an Inter Partes reexamination in which combinations of four, five, six, and even seven references were relied upon by the PTO to reject claims: [Listen].
In two previous appeals, Judge Moore had more pointed comments.
In the oral argument of In re Neill, she had this exchange with the PTO’s Associate Solicitor:
Judge Moore: How often do you see four reference obviousness rejections? Because I’ll be honest, I’ve never seen one. That’s a lot of references you’ve got to piece together to get to obviousness.
Associate Solicitor for the USPTO: It’s a good number of references; but, in this case the Examiner found the motivation to ….
Judge Moore: The question I asked is actually quite personal. How often have you seen a four reference obviousness rejection; because, I never have. Not out of the PTO. Never. I’ve seen people try to argue it in litigation, sure. But, I’ve never seen the PTO go to four separate references and cherry pick items and then combine them together.
Associate Solicitor for the USPTO: Well, I don’t know if I’ve seen a four reference one; but, I don’t believe that the Board….
Judge Moore: Or anything greater than four, let’s be clear so that this deposition transcript reads right, four or greater. (Laughter) That’s a lot of references!
Associate Solicitor for the USPTO: It is; but, the Examiner here . . . All of those references come from the same field of art. It’s all the transmission and recording of video programming data….
Judge Moore: Yeah, but the whole reason that Cablevision came up with this invention was to get around Sony. Like the whole reason they came up with this is to get around the copyright problems with DVR’s in homes and try to reduce the amount of storage you need in your home. That’s so different than pulling together these pieces … ‘well, this one mentions in the background cost savings;’… ‘and this one mentions in the background efficient bandwidth;’ … ‘and this one mentions’. . . . And then you’re just like cherry picking random elements from these references and smushing them together to come up with the invention. And it’s . . . I don’t know, I mean you’re awfully lucky this is a very deferential standard of review, that’s for sure.
I would not be surprised if Judges Taranto, Reyna, Newman (even though she authored In re Gorman), and Hughes are in the same camp.
Update 11/25/16:
I forgot about a similar comment that Judge Rader made when he was on the bench. Judge Rader was also part of the panel in In re Gorman. His comment from the oral argument of In re Medicis Pharmaceutical Corp., 2009-1291, (Fed. Cir. December 14, 2009) is available here: [Listen].
Update 12/1/16:
Judge Hughes made a comment recently in the oral argument of ENDO PHARMACEUTICALS INC. v. ACTAVIS LABORATORIES UT, INC., No. 2016-1146 (Fed. Cir. Oct. 14, 2016). I think Judge Hughes might have been under a misimpression at the time that the Appellant was proposing a seven reference combination; nevertheless, his remark is interesting: [Listen]. This is from an appeal of a district court decision, rather than an appeal from the USPTO.
Update 7/12/17:
Judge Reyna made comments in the oral argument of INTELLECTUAL VENTURES II LLC v. ERICSSON INC., No. 2016-1803 (Fed. Cir. Apr. 18, 2017) about the number of references used by the PTAB and expressed concern about hindsight: [Listen] and [Listen]. The court appeared to avoid having to deal with a six-reference combination by affirming a four-reference combination. In footnote 2 of the decision, Judge Lourie writing for the court stated:
The Board also instituted review of claims 1 and 2 based on a combination of six references, and later determined that the six-reference combination also rendered claims 1 and 2 unpatentable as obvious. Final Decision, 2016 WL 380219, at *11-12. Because we affirm the Board’s conclusion based on the combination of Li, Yamaura, Zhaung, and Beta, we need not, and do not, reach the second combination.
Update 4/23/2020:
In the oral argument of CPI CARD GROUP-MINNESOTA, INC. v. MULTI PPACKAGING SOLUTIONS, INC., No. 2019-1616 (Fed. Cir. Mar. 16, 2020), Judge Newman called a six reference combination “striking”:
See also Judge Rader’s comments above — he was a second member of the In re Gorman panel at the Federal Circuit.
Update 6/21/20:
During the oral argument of IN RE ANOVA HEARING LABS, INC., No. 2019-1507 (Fed. Cir. Apr. 7, 2020), Judge Moore had this comment about a five-reference combination:
So, here’s my problem — I feel like the Board’s opinion, for me, is troubling because it’s five references with wildly differently designed hearing aids. And, I don’t even understand really what it’s picking from some of the references that it says are missing in the primary reference. I don’t understand why it’s motivated to go to some of those references. And, I feel like there is a lot of hand-waving.
And, what I’m worried about is a five-reference rejection is the hindsight bias concern of just picking and choosing elements from lots of different random prior art and saying they work together. But here it’s even worse than that because I’m not sure which elements are being chosen from some of these references. I’m not sure what some of these references even add to the primary reference. That hasn’t been made clear to me. So, I am a little bit veiled in my understanding of the Board’s analysis.
Oral Argument of IN RE ANOVA HEARING LABS, INC., No. 2019-1507, beginning at 24:28.
Update 5/13/21:
During the argument of Biogen v. Iancu in December of 2019 — an appeal of a PTAB decision in an IPR — Judge Moore made this comment about a five reference combination used to invalidate a claim in the unpredictable art of treating cancer:
And, I guess my concern is, when you’re in this patient population which is definitely sensitive and you’re talking about such a large number of references combining in such an unpredictable area, I am sort of not confident in what you’ve done.
Oral argument of Biogen v. Iancu, 2019-1364 beginning at 29:40.
You might recall that Judge Barry of the Third Circuit is the sister of Donald Trump. If you were curious what Judge Barry sounds like during oral argument, you can listen to her questioning in the oral argument of MAIDEN CREEK ASSOCIATES, LP v. UNITED STATES DEPARTMENT OF TRANSPORTATION, No. 15-3224 (3d Cir. May 19, 2016) at this [link]. Her opinion for the Third Circuit is available [here].
An article from the Seattle Times about Judge Barry is available [here]. I thought it was interesting that she was appointed to a district court judgeship by President Reagan and appointed to the Third Circuit by President Clinton.
The Federal Circuit will increase the number of days that it sits for oral arguments in upcoming months. The announcement from the Federal Circuit web site is below. While I suspect a big reason for the increase is due to the AIA, one has to believe that the fiasco commonly known as the Alice/Mayo test has a lot to do with the number of appeals going up to the court.
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FEDERAL CIRCUIT EXTENDS COURT WEEK IN FEBRUARY, MARCH, APRIL, AND MAY 2017
The Court of Appeals for the Federal Circuit has added an extra day of oral arguments in February, March, April, and May 2017 (the Monday after court week). Please click here for the updated court sessions calendar.
If you’re arguing before the Federal Circuit next week, the odds are pretty low that Judge Dyk will be one of the panel members. As highlighted by the Federal Circuit web site a few months ago [Link], he will be sitting by designation with the First Circuit November 2-4 in Puerto Rico. [Link]
Please be advised that the United States Court of Appeals doesn’t have a Twitter account or any other social media account. We have become aware that a Twitter account was created, impersonating the Federal Circuit. We are actively working with Twitter and the authorities to deactivate the account. If you believe there is an account fraudulently operating as the Federal Circuit , please report the fictitious social media account to the Court by e-mail to chiefdeputyclerk@cafc.uscourts.gov.
The Supreme Court of the United States heard oral argument in Samsung v. Apple today (October 11, 2016). The transcript of the oral argument is available [here]. The recording of the oral argument will be available this Friday. Certiorari was granted to address the question:
Where a design patent is applied to only a component of a product, should an award of infringer’s profits be limited to those profits attributable to the component?
It did seem odd that the Federal Circuit didn’t conduct oral argument or further briefing in the Apple v. Samsungen banc decision. Others have tried to explain away the decision as being unnecessary for the court’s analysis. The cynic in me thinks that it was to avoid having to recuse any of the majority due to amicus briefing by relatives’ firms. I believe at least three of the Federal Circuit judges have relatives at firms in position to submit amicus briefs. With three recusals, that would have left the vote 4-3 without Judge Hughes’ tenuous “concurrence in the result without opinion.” I’m not sure why Judge Taranto recused himself. That would be interesting to know.
A second observation is that by rule, Judge Newman chose the author of the majority opinion. The internal operating rule at the Federal Circuit states:
2. The presiding judge assigns the authoring responsibility for each case at the end of each day’s sitting or at the end of a session. If the panel is divided, the authoring role is assigned to a member of the majority. If the presiding judge dissents, assignment will be made by the senior active member of the majority.
Because Judge Prost was a dissenter, Judge Newman became the senior active member of the majority. She must have not wanted to write the majority opinion — as odd as that sounds — and assigned the role to Judge Moore.
People seem to find it interesting to look back at the confirmation hearings of the Federal Circuit judges. Judge Dyk’s testimony at his confirmation hearing is listed below. I edited out most of the answers of the others testifying that day; but, some of their answers were left in for context. I thought this comment about being a “jobist” was particularly interesting:
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Senator Durbin. Thank you for your answers on that. There is one other element that I always like to reflect on, as a former practicing attorney before a lot of judges, and that is the fact that when you are confirmed, and I hope that you all are soon, you will have a lifetime appointment, and that sometimes leads to a great feeling of independence, as it should. That is the nature of the judiciary. And it sometimes leads to a change in temperament, because folks are not really going to be held accountable as elected officials might be.
If you could each address briefly this issue of judicial temperament and give me your idea of what is required of you if you attain this position, I would appreciate it. Judge Scott, if you would start.
…
Senator DURBIN. Thank you. Mr. Dyk, you kind of started at the top here, according to your resume, your first assignment as a clerk in the U.S. Supreme Court to three Justices, including the Chief Justice, so you have seen judicial temperament at many different levels. What are your thoughts about it when you are confirmed?
Mr. Dyk. Well, that first experience helped humble me. Senator Durbin, and I completely agree with you. I think it is very, very important for a judge to remember that he or she is a civil servant. That is exactly what judges are. They have a job, just like the postman. The postman delivers the mail. Judges decide cases that come before them. I think if you lose sight of that, you really do not belong on the bench. I think it is absolutely essential to be as courteous as possible to everyone, to remember that you have a job to do, to be a jobist, in Justice Holmes’ words, and to do the best you possibly can at all times and to have people who will keep you humble. I am sure my little league team will help with that.
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TESTIMONY OF TIMOTHY B. DYK, OF THE DISTRICT OF COLUMBIA, TO BE U.S. CIRCUIT JUDGE FOR THE FEDERAL CIRCUIT
Mr. Dyk. Thank you. Senator. I would like to first thank the committee for giving me a hearing. I appreciate that very much, and just briefly, I would like to say that I regret that my father, Walter Dyk, is not here today. He died a number of years ago and it would have been a privilege to have him. I would like to thank my family and my colleagues from Jones Day and my colleagues for coming here today and I will spare the committee further introductions.
QUESTIONING BY SENATOR DEWINE
Mr. Dyk, let me start with you, if I could. In a 1994 Federalist Society roundtable discussion entitled, “Do We Have a Conservative Supreme Court,” do you recall making statements about Justice Scalia’s plain meaning approach to interpreting laws as being conservative, but a more expansive analysis as being moderate? In your response, you also stated that, “The notion is that Congress speaks only through the words of the statute and that this is a mechanical approach.” You further explain that, “A Senator or a Congressman is much more likely to read the committee report than 559 the legislation itself, so the committee report could actually be more reliable than the words of the statute.” I wonder if you would be so kind as to elaborate on this response.
Mr. Dyk. Surely, Senator. I do recall the statement, and obviously, as a subordinate Federal judge, I would follow the Supreme Court’s direction to rely on the plain language primarily. I do agree with that completely. At the same time, I think sometimes cases get into a bit of a dueling dictionary, and under those circumstances, I think it is appropriate often to look at the central purpose of the legislation, as the Supreme Court did, for example, this last term in the Moscarello case involving the question of whether carrying a firearm would include carrying a firearm in the vehicle, and after reviewing the dictionaries and press statements, the Court finally concluded that, yes, it did encompass carrying the firearm in the vehicle because the purpose of the statute was to require the criminal to leave his gun at home.
So I do think that statutory purpose and background do have a role to play as to legislative history, but I certainly agree that the primary meaning of the statute is to be gleaned from the plain language that Congress uses.