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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.

The USPTO issued a new memorandum today on subject matter eligibility.  The memo is available [here].

The table of Federal Circuit decisions was also updated.  The table is available [here].

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]

From the Federal Circuit web site:

I thought this was an interesting article about software patents in New Zealand (yes, you read that correctly) [Link].

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?

Updated 10/15/2016:

The oral argument recording is available [here].

It did seem odd that the Federal Circuit didn’t conduct oral argument or further briefing in the Apple v. Samsung en 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:

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:

_______________________________________

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.

(more…)

The Federal Circuit heard oral argument in Helsinn v. Teva on Tuesday.  Part of the case deals with whether the enactment of the AIA “overruled” Metallizing Engineering by statute.  The panel considering the appeal is comprised of Judges Dyk, O’Malley, and Mayer.  It appears from the CAFC web site that Judge Stoll may have recused herself and that Judge Mayer took her place on the panel.

You can listen to the oral argument here: [Link].

The USPTO’s position is explained in its amicus brief available [here].

With the advent of the America Invents Act there has been a growth in appeals from the PTAB to the Federal Circuit. Appeals from the USPTO constituted 24% of the court’s workload in Fiscal Year 2015 — compared to a mere 9% in Fiscal Year 2013!  I believe an unintended consequence of the AIA will be not only a growth in workload from the appeals of post-grant proceedings but also a growth in workload from appeals of the PTAB’s ex parte matters.  As attorneys become more accustomed to appealing PTAB post-grant decisions, it is only natural that those attorneys will be more likely to apply their skills to appeal a much greater number of ex parte matters than the Federal Circuit has been accustomed to.  The growth in workload is already reflected by the apparent increase in Rule 36 Judgments and the growth in the ranks of the USPTO’s Solicitor’s office.

I suppose one way to address this growing workload is to expand the CAFC to include more judges.  But, does it make sense to add more judges to an already large and frequently fractured court?  Would it make more sense to focus the CAFC on intellectual property matters and split off a section of the court as a new court to focus on the other subject areas of the court’s docket?  Obviously, it’s debatable.

If one were to split the court, what would the two divisions look like?  One starting point is to see how the judges break out by technical/non-technical background.  It makes sense to keep the non-senior judges having technical backgrounds or district court judicial experience as the ones adjudicating the IP (primarily patent) appeals.  Such a group would include judges Newman, Lourie, Moore (Chief Judge), O’Malley, Wallach, Taranto, Chen, and Stoll.  The other court would consequently be assigned judges Prost (Chief Judge), Dyk, Reyna, and Hughes.  So far, that ratio (8:4) looks appropriate given that the court’s patent, trademark, and ITC docket in 2015 constituted 63% of the court’s total docket.  I do think Judge Reyna has brought a fresh perspective to the CAFC’s jurisprudence.  It might be worthwhile to swap his expertise with that of Judge Lourie, as a new court would benefit from someone like Judge Lourie with such a great sense of humor.  It would be a tough call, though, because both Judge Reyna and Judge Wallach have immense international trade law experience and would provide considerable value to the new court.   That leaves only a few senior judges to assign.  As a former chief judge, Judge Mayer would provide valuable experience to a new court — plus, he does not seem to be a real fan of oral arguments; so, the new court with its merit cases and limited number of oral arguments would be a good fit for him.  As a former assistant US Solicitor General, Judge Bryson would also be a good fit for the new court.  Judges Plager, Clevenger, and Schall have a wealth of patent law experience; so, it would make sense to include them in the IP group.  Additional positions could be filled on each court by new appointees as workload demands.

At the end of the day, one embodiment of the court split would be the following:

Reconfigured Federal Circuit………………………………. New Court

C.J. Moore                                                                 C.J. Prost

Newman                                                                     Mayer

Plager                                                                          Lourie

Clevenger                                                                    Bryson

Schall                                                                           Dyk

Linn                                                                              Hughes

O’Malley

Reyna

Wallach

Taranto

Chen

Stoll

By pure coincidence, I suspect that this partitioning would have a dramatic effect on reducing the current fractures among the court, e.g., with respect to 35 U.S.C. §101 issues.  Pure coincidence.

A pro se appellant recently showed up at the Federal Circuit to present oral argument — the only problem was that he only speaks Mandarin.  I don’t know if there is an official rule; but, generally oral arguments at the Federal Circuit are conducted in English.  As luck* would have it, one of Judge O’Malley’s clerks, Dr. Glenn Cheng, was able to step in and translate for the appellant.

The oral argument is short, approximately five minutes, and is available [here].

The decision is available [here].

*Perhaps “luck” isn’t the best word choice — Mandarin is the world’s most popular language and spoken by 14% of the world’s population.  English comes in a distant third at 5.5%.

Others, as well as myself, have submitted comments to the PTO in the past commenting on the PTO’s Subject Matter Eligibility Guidance and highlighting to the PTO that, under Zurko, evidence is required in the assessment of whether a claim is limited to an abstract idea or natural phenomenon. [Link][Link].  Yesterday’s opinion in McRO v. Bandai supports that observation.

In assessing whether the claim in question was directed to an abstract idea, the Federal Circuit stated:

McRO v. Bandai, __ F.3d __ (Fed. Cir. 2016)(slip opinion at page 24)(emphasis added).

The defendants didn’t show by evidence that the claimed process was previously practiced — let alone practiced conventionally.  Thus, the defendants failed to prove that the claimed process was merely automating a conventional activity.

The PTAB has previously commented on the need for evidence in Ex Parte Poisson [Link].  One quote from Ex Parte Poisson that might be of interest relates to “rules” as well:

Thus, in the first step of the Alice analysis, the question is whether claim 1, i.e., as a simulation of a football game using a table and cards, is directed to an abstract idea. That determination has not been made in this case based on evidence. Instead, the Examiner merely expresses an opinion that “a set of rules qualifies as an abstract idea.” Yet, absent supporting evidence in the record — of which there is none, the Examiner’s opinion is an inadequate finding of fact on which to base the Alice analysis.

Ex Parte Poisson, Appeal No. Appeal 2012-011084 (PTAB Feb. 27, 2015)

You can listen to the oral argument of McRO v. Bandai here: [Link].

Judge Reyna’s well-reasoned opinion for the court in McRO v. Bandai is available [here].

Director Michelle Lee testified before Congress today. Her testimony is available here: