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The oral argument in KANEKA CORPORATION v. SKC KOLON PI, INC., No. 2015-1223 (Fed. Cir. Sept. 15, 2015) [Listen] will interest those of you who have ever had to address the role of inherency in an obviousness challenge.

My favorite quote about the role of inherency in an obviousness context is illustrated in Irah Donner’s excellent three book treatise, Patent Prosecution Law, Practice, and Procedure, Eighth Edition, Volume II at page 2776:

“That which may be inherent is not necessarily known. Obviousness cannot be predicated on what is unknown.”

In re Spormann, 363 F.2d 444, 150 USPQ 449, 452 (C.C.P.A. 1966).

The rule 36 judgment is available [here].

In Microsoft Corp. v. i4i Ltd. Partnership, 131 S. Ct. 2238, 564 U.S., 180 L. Ed. 2d 131 (2011) the Supreme Court of the United States stated:

The USPTO updated its list of subject matter eligibility decisions in September.  The link is available [here].

One curious feature of the list is that the USPTO relies upon Rule 36 decisions from the Federal Circuit for some of the entries.

Just a reminder that the deadline to comment on the USPTO’s July Patent Eligibility Guidance is coming up on October 28, 2015 — October 27th to be safe.

From the USPTO website:

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HOW TO COMMENT

The USPTO is interested in receiving public feedback on the July 2015 Update:  Subject Matter Eligibility, including the claim examples.

Any member of the public may submit written comments by electronic mail message over the Internet addressed to 2014_interim_guidance@uspto.gov (link sends e-mail). Electronic comments submitted in plain text are preferred, but also may be submitted in ADOBE® portable document format or MICROSOFT WORD® format. The comments will be available for public inspection here at this Web page. Because comments will be available for public inspection, information that is not desired to be made public, such as an address or a phone number, should not be included in the comments. Comments will be accepted until October 28, 2015.

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Here are links to some of the portraits of the Federal Circuit judges:

Judge Newman [Link]

Judge Mayer [Link]

Judge Lourie [Link]

Judge Bryson [Link]

Judge Wallach (Court of International Trade) [Link]

Chief Judge Rader (ret.)  [Link]

Chief Judge Michel (ret.)  [Link]

Judge Gajarsa (ret.)  [Link]

Rovi Corp. is another great example of how important patents are to companies in the computer age.  When five of Rovi’s patents were initially declared patent ineligible by a district court this past July, Rovi’s stock dropped dramatically relative to the NASDAQ:

Hypothetically, assuming this decision is reversed by the Federal Circuit and the patents are later challenged under 35 U.S.C. §103, it would be interesting to see if the change in stock price could be used as evidence of commercial success.  It would be hard to say that there is no nexus.

It will also be interesting to watch Rovi’s stock price on the day of the oral argument at the Federal Circuit.  For example, will the price fluctuate significantly not only during the oral argument but also when the panel for the case is announced on the morning of the oral argument.  Given how panel dependent patent eligibility outcomes can be, a Mayer, Dyk, Lourie panel might produce an entirely different swing than a Newman, Moore, Linn panel.

Obviously, this post and all other posts on this blog are not investment advice.

If you have been listening to oral argument recordings and have been wondering to whom a particular voice belongs, you should use the link to the audio key page, located on the upper right-hand portion of the home page.  The audio key has been updated to include the voices of the recently appointed Federal Circuit judges.

If you are curious which judge is speaking during an oral argument recording, my suggestion is to:

(1) pull up the opinion;*

(2) note from the opinion who the judges on the panel are; and

(3) use the sound bites on the audio key page to identify the speaker.

*Alternatively, if no opinion has issued and the case was recently argued, you can likely determine the panel from the “Upcoming Oral Arguments” link on the Federal Circuit web site.

The Federal Circuit convened to hear oral arguments in two en banc cases on Friday October 2, 2015.

The oral arguments are available here:

In re Tam:  [Listen]

Lexmark International, Inc. v. Impression Products, Inc.:  [Listen].

The Denver PTAB appears to be firing on all cylinders these days.  This past month the PTAB conducted its first hearing in which the entire panel of judges was located in Denver.  As luck would have it, I happened to be arguing one of the two cases heard that day.  So, I got to be a little part of Denver PTAB history.

The oral argument of the week was argued about seven weeks ago and received a Rule 36 decision.  It covers several interesting issues, such as whether the presence of a means plus function limitation should make a claim patent eligible.  The one issue that I thought got lost in the discussion of means plus function claims, however, is the the issue of preemption.  Namely, if a claim includes a means plus function claim and the means is limited to the structure disclosed in the specification, how could such a claim possibly preempt all the other means of performing that function?  Therefore, how could the claim as a whole preempt the purported abstract idea?

The oral argument also addressed whether evidence should be required to prove that something was an abstract idea.

And, Judge Lourie endeared himself to patent prosecutors everywhere by inquiring whether all business methods should be deemed patent ineligible:  [Listen].

You can listen to the entire oral argument [here].

You can read the Rule 36 decision [here].

From the Federal Circuit web site:

If you did not see the recent notice about expedited ex parte appeals at the USPTO, the Federal Register notice is available [here].

Judge Kara Stoll sat with her first panel of the Federal Circuit this past week. Chief Judge Prost welcomed her to the court:  [Listen].

It is somewhat uncanny how over the years new judges and visiting judges often sit with the Chief Judge on their first panel at the court.

Followers of the USPTO’s updated patent eligibility guidance issued this past July will note that the PTO rebuffs the calls for examiners to provide evidence proving up any assertion of an abstract idea.  The Office places great weight on the fact that in the Bilski case no evidence of an abstract idea was provided to the US district court.  The Office reasons therefore that the appellate courts — which are charged with merely reviewing the record below — could not have based their Bilski decisions on any evidence of an abstract idea.

Here is a link to an interesting article that describes the ways that new evidence can be considered on appeal:  [Link].

I was poking around on Westlaw the other day and ran across materials related to Judge Giles Sutherland Rich’s confirmation proceedings when he was appointed to the Court of Customs and Patent Appeals by President Eisenhower in 1956.  These materials are from witnesses, rather than testimony from Giles Rich himself.  I’m not sure if he was not required to testify or if my search method was flawed; but, I did not locate any actual testimony by Judge Rich in regard to his nomination.  The witnesses’ testimony is available here: [Link].

To this day, the Federal Circuit still discusses opinions that Judge Rich wrote for the court, as this sound bite from the oral argument of Alps South, LLC v. Ohio Willow Wood Co. illustrates: [Listen].