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With Valentine’s Day approaching you may be wondering what to get that special patent professional in your life.  Here are a few options:

1)  An oldie, but a goodie:  The IP Man movie poster.

2)  The Mayo v. Prometheus T-Shirt

Was your Valentine an amicus in Mayo v. Prometheus?  Celebrate the Supreme Court and the clarity that it has brought to 35 U.S.C. §101.

3)  Special Effects Nose Wax

A patent attorney can always use more nose wax despite what the Supreme Court said in White v. Dunbar, 119 U.S. 47 (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.”

Interesting quote from Octane Fitness v. Icon Health & Fitness, 134 S. Ct. 1749, 1758 (2014):

We reject Brooks Furniture for another reason: It is so demanding that it would appear to render § 285 largely superfluous. We have long recognized a common-law exception to the general “American rule” against fee-shifting — an exception, “inherent” in the “power [of] the courts” that applies for “`willful disobedience of a court order'” or “when the losing party has `acted in bad faith, vexatiously, wantonly, or for oppressive reasons….'” Alyeska Pipeline Service Co. v. Wilderness Society,421 U.S. 240, 258-259, 95 S.Ct. 1612, 44 L.Ed.2d 141 (1975). We have twice declined to construe fee-shifting provisions narrowly on the basis that doing so would render them superfluous, given the background exception to the American rule, seeChristiansburg Garment Co. v. EEOC, 434 U.S. 412, 419, 98 S.Ct. 694, 54 L.Ed.2d 648 (1978); Newman v. Piggie Park Enterprises, Inc., 390 U.S. 400, 402, n. 4, 88 S.Ct. 964, 19 L.Ed.2d 1263 (1968) (per curiam), and we again decline to do so here.

Something to keep in mind the next time you are considering whether Alice v. CLS Bank renders 35 U.S.C. §103 largely superfluous for certain types of inventions.

Perhaps Mackey v. Lanier Collection Agency & Service, Inc., 486 U.S. 825, 108 S. Ct. 2182, 100 L. Ed. 2d 836 (1988) is more on point:

As our cases have noted in the past, we are hesitant to adopt an interpretation of a congressional enactment which renders superfluous another portion of that same law.

Id. (citing Massachusetts Mutual Life Ins. Co. v. Russell, 473 U. S. 134, 142 (1985); FEC v.National Conservative Political Action Committee, 470 U. S. 480, 486 (1985); Park ‘N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U. S. 189, 197 (1985); United States v. Generix Drug Corp., 460 U. S. 453, 458-459 (1983); Dickerson v. New Banner Institute, 460 U. S. 103, 118 (1983)).

UPDATED January 24, 2015:

Perhaps better still is this statement from Bilski v. Kappos, 130 S.Ct. 3218, 3228-29 (2010):

A conclusion that business methods are not patentable in any circumstances would render § 273 meaningless. This would violate the canon against interpreting any statutory provision in a manner that would render another provision superfluous. See Corley v. United States, 556 U.S. ___, ___, 129 S.Ct. 1558, 1566, 173 L.Ed.2d 443 (2009). This principle, of course, applies to interpreting any two provisions in the U.S.Code, even when Congress enacted the provisions at different times. See, e.g., Hague v. Committee for Industrial Organization, 307 U.S. 496, 529-530, 59 S.Ct. 954, 83 L.Ed. 1423 (1939) (opinion of Stone, J.). This established rule of statutory interpretation cannot be overcome by judicial speculation as to the subjective intent of various legislators in enacting the subsequent provision. Finally, while § 273 appears to leave open the possibility of some business method patents, it does not suggest broad patentability of such claimed inventions.

It is not uncommon during oral arguments to hear advocates refer to a particular appellate judge’s holding in a previous case.  Advocates are particularly fond of doing this during oral argument when they refer to an opinion that Judge Rich or a present panel member authored for the court.  During an oral argument at the Federal Circuit, Judge Moore pointed out to an advocate that holdings are by the court — not a particular judge.  The author of an opinion is merely listed as author on behalf of the majority of the panel.  In fact, Judge Moore used the words “pandering” and “insulting” in her pointed remarks to the advocate.  You can listen to those remarks here: [Listen].

(I’ve taken out all reference to the particular attorney.  Frankly, advocates make such references quite often; so, the advocate who was chastised is not alone.)

I was listening to the oral argument recording of B&B Hardware v. Hargis and was struck by the opening lines of the argument:

The Lanham Act contains only one concept of likelihood of confusion.  That is why two tribunals in this case decided the same issue, and that is why issue preclusion is appropriate.  Whether a court is considering registration or infringement or both at the same time, the statutory test is the same, whether the resemblance of the marks as used on particular goods would give rise to a likelihood of confusion or mistake or deceit.

It is uncanny how germane that analysis is to the argument over the  proper test for patent eligibility.  Namely, the Supreme Court has distorted the test for patent eligibility under 35 U.S.C. §101 into such a cockeyed farce that the meaning of invention under §101 is totally out of alignment with other sections of the Patent Act.  Under §§102, 103, 271, etc. an invention is assessed by looking at all claim limitations.  However, when it comes to §101, the Court has deviated by disregarding claim limitations as mere pre-solution or post-solution activity. Moreover, the Court has effectively regressed to a “gist of the invention” analysis that it previously repudiated in Aro I and Diehr.

To modify the argument above and apply it to patent eligibility, one might say:

The 1952 Patent Act contains only one concept of invention.  Whether a court is considering patent eligibility or infringement or both at the same time, the statutory test is the same, whether all claim limitations are satisfied.

I was on vacation during the first week of December and completely overlooked the fact that the Supreme Court heard oral argument in two trademark cases during that time.

In Hana Financial, Inc. v. Hana Bank, the Court is addressing the issue of whether the jury or the court determines whether use of an older trademark may be tacked to a newer one.  You can listen to the oral argument here: [Listen].

In B&B Hardware, Inc. v. Hargis Industries, Inc., the Court entertained the issues of (1) whether the Trademark Trial and Appeal Board’s finding of a likelihood of confusion precludes respondent from relitigating that issue in infringement litigation, in which likelihood of confusion is an element; and (2) whether, if issue preclusion does not apply, the district court was obliged to defer to the Board’s finding of a likelihood of confusion absent strong evidence to rebut it. You can listen to that oral argument here: [Listen].

The U.S. Court of Appeals for the 9th Circuit appears to have increased the number of oral arguments that it records on video.  Many of those are available at this YouTube link:  https://www.youtube.com/user/9thcirc/videos.

If you are coaching students in any upcoming moot court competitions, you might want to make them aware of these videos as a resource.

While I usually only have time to listen to oral argument recordings driving to and from work, I look forward to the day when the Federal Circuit follows the lead of the 9th Circuit and records the video of Federal Circuit oral arguments.  Some would be quite interesting to watch.

As I read Judge Lourie’s opinion for the court in Ultramercial et al. v. Hulu et al., 2010-1544 (Fed. Cir. Nov. 13, 2014), I was reminded of these previous comments by Judge Lourie with respect to judicial notice:

We have an examination system based on citation of references.  I may have used the word ‘slippery slope’ already.  But, I worry about that — where an examiner who is of some skill and training in a particular art could simply say ‘Aha, I think, I think, and it is my common knowledge . . . .’ And, they start rejecting claims based on what they ‘think.’  Isn’t that a serious departure from our system of citation of references to reject claims?  [Listen]

It doesn’t seem to me to be the function of the appellate court to take judicial notice of the ordinariness of certain decided claim limitations.  We can take judicial notice that ‘today is Wednesday’ and ‘we had snow earlier in the week’ — I’m glad you made it through the snow — but, we don’t make rejections based on judicial notice of . . . finding a claim limitation to be common sense. [Listen]  See Oral Argument for HIMPP v. HEAR-WEAR TECHNOLOGIES, LLC, No. 2013-1549 (Fed. Cir. May 27, 2014).

The reason those comments stand out in my mind are that in Ultramercial Judge Lourie makes the following comment for the court without citing to any evidence:

This ordered combination of steps recites an abstraction—an idea, having no particular concrete or tangible form. The process of receiving copyrighted media, selecting an ad, offering the media in exchange for watching the selected ad, displaying the ad, allowing the consumer access to the media, and receiving payment from the sponsor of the ad all describe an abstract idea, devoid of a concrete or tangible application. Although certain additional limitations, such as consulting an activity log, add a degree of particularity, the concept embodied by the majority of the limitations describes only the abstract idea of showing an advertisement before delivering free content.

It strikes me that such a statement is the taking of judicial notice.

It is also interesting to note that the court identifies three different abstract ideas when assessing the claim.  First, the court writes:

The district court found that the abstract idea at the heart of the ’545 patent was “that one can use [an] advertisement as an exchange or currency.” Ultramercial, 2010 WL 3360098, at *6. We agree.
See Ultramercial, slip opinion at page 9.

Later on, the court writes:

“the majority of the limitations describes only the abstract idea of showing an advertisement before delivering free content.”

See Ultramercial, slip opinion at page 10.

And finally, the court states that:

“The majority of those steps comprise the abstract concept of offering media content in exchange for viewing an advertisement.”

See Ultramercial, slip opinion at page 11.

So, the Federal Circuit has identified three different abstract ideas with respect to the claim: (1) “that one can use [an] advertisement as an exchange or currency;” (2) “showing an advertisement before delivering free content;” and (3) “offering media content in exchange for viewing an advertisement.”

In my heart of hearts (no pun intended)  I like to think that the panel in Ultramercial — well, at least Judges Lourie and O’Malley —  are discreetly serving up some softball issues for appeal to the Supreme Court:

1)  Can a court’s patent eligibility analysis be correct if it recites three different “abstract” ideas when assessing a claim;

2)  In a matter concerning a taking of property rights, can an appellate court take judicial notice of an abstract idea without citation of evidence;

3)  By choosing to refer to the “abstract” idea as the “heart of the ‘545” patent, can the Supreme Court rationalize this analysis with its decision in  Aro I.

4)  By discounting several claim limitations, can the Supreme Court rationalize its §101 analysis with 35 U.S.C. §271.  For example, how irrational would it sound if a court wrote the following when assessing patent infringement under 35 U.S.C. §271:

The accused infringer has infringed the heart of the claim.  The process of receiving copyrighted media, selecting an ad, offering the media in exchange for watching the selected ad, displaying the ad, allowing the consumer access to the media, and receiving payment from the sponsor of the ad all describe the heart of the claim when the remaining claim limitations are not assessed.  Although certain additional limitations, such as consulting an activity log, add a degree of particularity, the concept embodied by the majority of the limitations, i.e., at least half, describes the heart of the claim of showing an advertisement before delivering free content.  We therefore find that the accused infringer performed the majority of the claim limitations, infringed the heart of the claim, and thus infringed claim 1.  The claim limitations that were not performed by the accused infringer are mere extra-solution activity.

In two recent instances, a transformation of data has been recognized as potentially sufficient to satisfy the patent eligibility test under 35 U.S.C. §101.

In the Board’s decision in PNC Bank v. Secure Axcess, CBM2014-0100 (PTAB Sept. 9, 2014) (available [here]), the Board noted that the particular transformation of data under consideration was (1) not an abstract idea and (2) satisfied the “machine or transformation test”:

But the claims may be sufficiently limited by the plausible transformation that occurs when the randomly-generated tag is added to the piece of confidential information. Typically, transforming data from one form to another does not qualify as the kind of transformation regarded as an important indicator of patent eligibility. See CyberSource, 654 F.3d at 1375 (“[T]he mere manipulation or reorganization of data … does not satisfy the transformation prong.”). But here, the claimed invention goes beyond manipulating, reorganizing, or collecting data by actually adding a new subset of numbers or characters to the data, thereby fundamentally altering the original confidential information. Contra id. at 1372 (process of constructing “map” of credit card numbers was no different than writing down a list of numbers and compiling information).

The use of a credit card number provides an illustrative example. Once the computer in the process splits up the credit card number into two separate pieces, randomly generated tags are added to the two pieces. The addition of the tag transforms what was once a credit card number into an identifier for use by the verifying party. The verifying party then matches up the two pieces of the information solely because the randomly-generated tag is affixed to both. At least one of the objects of the ‘245 Patent process is to transform data from one form into another “that will be recognized by the intended recipient but secure against decryption by unintended recipients.” See, e.g., TQP Dev., LLC v. Intuit, Inc., No. 2:12 CV 180 WCB, 2014 WL 651935, at *5 (E.D. Tex. Feb. 19, 2014). The claim requiring the addition of the tags plausibly does just that. The patent not only recites a process for verifying transaction information, it also involves a protocol for making the communication system itself more secure. (‘245 Patent, 2:14-20). Therefore, even though the method does not result in the physical transformation of matter, see Diehr, 450 U.S. 175, it utilizes a system for modifying data that may have a concrete effect in the field of electronic communications. Accordingly, when viewing the patent in the light most favorable to Card Verification, it plausibly recites a patent-eligible application of the abstract idea of verifying a transaction. Citigroup’s Motion to Dismiss is therefore denied without prejudice. Citigroup is free to challenge the validity of the ‘245 Patent after discovery and claim construction are completed in this case.

Notably, in both of these decisions, the transformation of data occurred by adding an additional piece of data to an original piece of data so as to create a new piece of data.

The Patent Docs website had an interesting post yesterday about recent §101 decisions by the PTAB. [Link] One decision discussed is PNC Bank v. Secure Axccess, LLC.  In that PTAB proceeding, the Board rejected an assertion that a claim directed at a computer implemented method failed to satisfy §101 under the Alice v. CLS test.   You can review the Board’s opinion by judges Barbara Benoit, Trenton Ward, and Georgianna Braden [here].

If you think this decision warrants being designated precedential by the Board, see this earlier post:  [Requesting That a Board Decision Be Made Precedential].

You might recall that the American Law Institute is the association of judges, scholars, and attorneys that formulates the various Restatements of the Law.  I have been curious why there is no Restatement of Patent Law — perhaps because there is a single intermediate appellate court.  At any rate, given the turmoil associated with 35 U.S.C. §101, among other issues, a restatement might not be a bad idea.

I was curious which Federal Circuit judges are members of the ALI.  It appears that Judges Bryson, Wallach, Dyk, and O’Malley are all members.  Congratulations to Judges Dyk and O’Malley who became members in 2013.

The Federal Circuit has posted the oral argument schedule for October and November and it appears that all sessions are going to be held in D.C. this year.  Usually, the Federal Circuit sits outside of D.C. during the fall.  Perhaps the court is counting its visit to Baltimore in February as its trip for the year.  Or, perhaps the court will ride circuit to a warm weather location in December.  Florida? San Diego?  U.S. District Court of the Virgin Islands (St. Thomas and St. Croix)?  U.S. District Court for the District of Puerto Rico?  U.S. District Court for the Northern Mariana Islands?  U.S. District Court of Guam?

Here’s a list of previous locations where the court rode circuit through 2009. [List]   Since 2010, the court also rode circuit to Atlanta, Oregon, Denver, and various Third Circuit locales.

The Federal Circuit heard oral argument in Akamai v. Limelight yesterday for the third time.  The case is back at the Federal Circuit after remand from the Supreme Court.  You can listen to the oral argument [here].

The Federal Circuit hasn’t had a district court judge sit by designation for quite some time.  During Chief Judge Rader’s tenure there was a marked decline in judges sitting by designation, as compared to his predecessor Chief Judge Michel.

Here’s one suggestion:  Judge George Wu of the Central District of California.

See Judge Wu’s most recent patent opinion over at Patently-O [Link].

Those of you in the Denver area might be interested to know that Russell Slifer — former Micron chief patent counsel and new head of the USPTO-Denver office — will be the keynote speaker at BioWest 2014, on September 10th.  Details are available [here].