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Chief Justice Roberts has recused himself from the Life Technologies Corp. v. Promega Corp. case that was argued December 6th, due to his stock ownership in Thermo Fisher Scientific.  [Source].

I was not aware that Judge Wallach published a book in 2015.  It is entitled “Jake and Me” and set in Arizona in the 1920’s.  You can read more about it on Amazon at this [Link].

The book has quite an attention-grabbing opening line.

With certiorari having been granted in the TC Heartland case, I was interested to learn that spreading the Eastern District of Texas’ workload across more inexperienced judges in other districts might actually result in more infringement verdicts for patent owners: [Link]

The oral argument of the week is MACROPOINT, LLC v. FOURKITES, INC., No. 2016-1286 (Fed. Cir. Dec. 8, 2016) decided by a Rule 36 judgment.  The case focuses primarily on §101 issues.

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

You can review the Rule 36 judgment [here].

Thought for the day:

[T]his Court has emphasized that “in a system of laws discretion is rarely without limits.” Flight Attendants v. Zipes, 491 U.S. 754, 758, 109 S.Ct. 2732, 105 L.Ed.2d 639 (1989); see Halo Electronics, Inc. v. Pulse Electronics, Inc., ___ U.S. ___, ___, 136 S.Ct. 1923, 1931, ___ L.Ed.2d 1986*1986 ___, 2016 WL 3221515 (2016) ante, at 8. Without governing standards or principles, such provisions threaten to condone judicial “whim” or predilection. Martin, 546 U.S., at 139, 126 S.Ct. 704; see also ibid. (“[A] motion to [a court’s] discretion is a motion, not to its inclination, but to its judgment; and its judgment is to be guided by sound legal principles” (quoting United States v. Burr, 25 F.Cas. 30, 35 (No. 14,692d) (C.C.Va.1807) (Marshall, C. J.))). At the least, utterly freewheeling inquiries often deprive litigants of “the basic principle of justice that like cases should be decided alike,” Martin, 546 U.S., at 139, 126 S.Ct. 704 . . . .

Kirtsaeng v. John Wiley & Sons, Inc., 136 S. Ct. 1979, 1985-86  (2016).

For those of you headed out here to Colorado for the Ski-CLE, watch out for the lynx!

Here’s the snow report [Link].

An advocate noted in a recent oral argument at the Federal Circuit that we are celebrating the 150th anniversary of White v. Dunbar.  White v. Dunbar is known for its “nose of wax” statement.  The case was decided by the Supreme Court on November 15, 1886:

Some persons seem to suppose that a claim in a patent is like a nose of wax, which may be turned and twisted in any direction, by merely referring to the specification, so as to make it include something more than, or something different from, what its words express. The context may, undoubtedly, be resorted to, and often is resorted to, for the purpose of better understanding the meaning of the claim; but not for the purpose of changing it, and making it different from what it is. The claim is a statutory requirement, prescribed for the very purpose of making the patentee define precisely what his invention is; and it is unjust to the public, as well as an evasion of the law, to construe it in a manner different from the plain import of its terms. This has been so often expressed in the opinions of this court that it is unnecessary to pursue the subject further. See Keystone Bridge Co. v. Phoenix Iron Co., 95 U. S. 274, 278; James v. Campbell, 104 U. S. 356, 370.

White v. Dunbar, 119 U.S. 47, 7 S. Ct. 72, 30 L. Ed. 303 (1886).

I created a “Hot Bench” category to identify oral arguments that I post that had a particularly “hot bench.”  The en banc oral argument in the In Re Aqua Products case was a particularly hot bench for the PTO.  The questioning showed little love for the PTO’s arguments.

That got me to thinking about all the valuable patents that have been invalidated by the PTO due to the PTO’s refusal to accept some amendments during IPR’s.  I know very little about “takings” law; but, I wonder if there is a cause of action for administrative taking of a patent right by the federal government due to improper application or improper promulgation of a rule that results in loss of a patent right?

The Supreme Court denied certiorari in the antitrust case O’Bannon v. NCAA a couple of months ago.  I thought the oral argument from the Ninth Circuit case might be of interest:

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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:

USPTO Brief in Apple et al. v. Ameranth at page 20.

The PTO’s brief in Ameranth is available [here].

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.

The oral argument is available [here].

The Rule 36 Judgment is available [here].

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 in Impulse 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.

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.

[Listen]

And, in one of the recent Data Treasury appeals, Judge Moore had these comments: [Comment to Patent Owner] and [Comment to PTO].

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.