717 Madison Place

The brief of respondents, CLS Bank International and CLS Services Ltd., in the Supreme Court case of Alice v. CLS Bank has been submitted to the Court.  The brief is available [here].

The oral argument in Datcard Systems v. Pacsgear will interest some practitioners.  The issues on appeal were how the words “data” and “automatically” should be construed.

I always find it interesting when somebody coins a new term.  For example, in Omega Engineering, Inc v. Raytek Corp., 334 F.3d 1314 (Fed. Cir. 2003) the phrase “prosecution disclaimer” was added to our lexicon.  In 2004, Lemley et al. introduced the phrase “divided infringement.”  In the Datcard Systems v. Pacsgear oral argument, Judge Chen notes that the cases of  Edwards Life Sciences v. Cook and Bid for Position v. AOL stand for a theory that he dubs “interchangeable use.”  Judge Chen explains the “interchangeable use” theory in this sound bite: [Listen].

The panel issued a Rule 36 affirmance in this appeal.

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

It has been quite some time since the Federal Circuit accepted a new case for en banc review.  The court is currently reviewing en banc the Lighting Ballast Control v. Phillips Electronics case in order to reconsider Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc).  But, what will be the next case?  Has the court already taken a case en banc sua sponte sub secretum* without further briefing?

There are several topics ripe for review.

1)  Functional language is the hot topic these days.  I would not be surprised to see the court take on “functional language” in some manner.

2)  FInjan.  The court had to tap dance around the Finjan decision in a recent appeal.  I would not mind seeing that issue addressed en banc.  See this prior post [Link].

3)  The In re Abele/Cybersource v. Retail Solutions/Smartgene v. Advanced Biological Industries tragedy trilogy of cases.

4)  Atmel.  In yesterday’s opinion in Otto Bock Healthcare v. Ossur, Judge Lourie clarified his opinion for the court in Atmel Corp. v. Info Storage

Devices, 198 F.3d 1374 (Fed. Cir. 1999) by stating:

Further, Otto Bock’s reliance on Atmel is misplaced.

Atmel only foreclosed the use of the content of a nonpatent

publication incorporated by reference to add structure

to a means-plus-function claim. Atmel, 198 F.3d at

1382. Atmel did not purport to include U.S. patent applications.

In fact, 37 C.F.R. 1.57(d) specifically envisions

using a U.S. patent application incorporated by reference

to define structure for the purpose of 35 U.S.C. § 112, ¶ 6.

The court thus did not err in using the ’274 application’s

incorporation by reference to construe the term “means

for maintaining a vacuum” to mean a “weight-actuated

vacuum pump as disclosed in [the ’274 application].”

Irah Donner writes in his excellent book Patent Prosecution:

The Atmel Corp. decision is troublesome with respect to its reluctance to utilize the incorporation-by-reference rule to recite corresponding structure, particularly since this rule has been around for many years, including prior to the enactment of Section 112, sixth paragraph. . . . Hopefully, the Federal Circuit will have the opportunity to reconsider this issue in the future.

See Patent Prosecution, Fifth Edition,2007, at pages 2211-12.

I don’t really have a dog in the fight with respect to Atmel. I am not particularly fond of means-plus-function claims.  I suspect, however, that means-plus-function and step-plus-function claiming will take on a greater role in the future to combat §112 (lack of enablement due to overbreadth) and §101 invalidity assertions.  Namely, it seems harder to argue that a step-plus-function claim is overly broad, preempts all applications, or is abstract, if it is limited to the acts disclosed in the specification.  I also find means-plus-function claims a pain in the neck to deal with whenever I write an invalidity or non-infringement opinion — so, they have value in that regard, as well.  And, there have been a number of cases with large damages awards that are based on mean-plus-function claims.

Now that I have sufficiently jinxed these issues, we’ll see when and what issue the en banc court takes on next.

*By the way, I stole the phrase “sua sponte sub secretum” from Dennis Crouch.

In case you missed it, the PTO issued a memorandum in December 2013 outlining changes brought about by U.S. ratification of the Patent Law Treaty and the enactment of the Patent Law Treaties Implementation Act of 2012.  The memo is available here [Link], as well as on the PTO website.

The CAFC rode circuit again this past week with a visit to the University of Baltimore School of Law on February 4th.  The court held oral arguments in four cases.  You can view the briefs for the cases at this [Link].

The Federal Circuit sat in several other locations along the East Coast this past fall.

For the past few years, I have been writing a chapter for the Colorado Bar Association’s “Annual Survey” publication.  Each year we highlight the top legal developments from the previous year — my chapter focuses on intellectual property developments.  As I was finishing my write-up for this year’s Annual Survey, I found myself appreciating the Tenth Circuit’s insight into copyright law.  I hope the Supreme Court considers the parallels between copyright law and patent law when it decides Alice v. CLS.

Namely, the Tenth Circuit wrote in ENTERPRISE MANAGEMENT LTD., INC. v. Warrick, 717 F.3d 1112 (10th Cir. 2013):

Warrick’s view misses the forest for the trees. Any copyrightable work can be sliced into elements unworthy of copyright protection. See CMM Cable Rep., 97 F.3d at 1514. Books could be reduced to a collection of non-copyrightable words. Music could be distilled into a series of non-copyrightable rhythmic tones. A painting could be viewed as a composition of unprotectable colors. Warrick’s impulse to unpack Lippitt’s diagram into ever-smaller and less-protectable elements is understandable, as copyright jurisprudence tends toward dissection.

Nevertheless, a limiting principle constrains this reductionism. We must focus on whether Lippitt has “selected, coordinated, and arranged” the elements of her diagram in an original way. Feist Publ’ns, 499 U.S. at 358, 111 S.Ct. 1282; Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1004 (2d Cir.1995); see also Feist Publ’ns, 499 U.S. at 349, 111 S.Ct. 1282 (“[I]f the selection and arrangement are original, these elements of the work are eligible for copyright protection.”).

With all the new blood on the Federal Circuit these days, it has not taken long for some of the recent appointees to step into the role of presiding judge of various panels.  Judge Wallach has already had that responsibility.  Yesterday, even Judge Chen served as presiding judge in oral arguments.  The other panel members on Judge Chen’s panel included Judge Hughes and Senior Judge Clevenger.

When a presiding judge is part of the majority of judges deciding a case, he or she assigns the judge who will author the opinion for the court.  That is one reason that you often see the more senior judges authoring the majority opinions in high stakes en banc decisions  — namely, the most senior judge in the majority assigned himself or herself to author the opinion.

The amicus briefs in Alice v. CLS are slowly becoming available on the SCOTUS blog.  In addition, you can find what appears to be the complete set (so far) on Alice’s website: [Link].

Whenever patent eligibility issues under 35 U.S.C. §101 go up to the Supreme Court for review, I’m often curious how firms, including firms on amicus briefs, advocating for limited interpretation of §101 navigate positional conflicts of interest.  For example, arguing on behalf of one client that computer implemented methods should not be patentable would seemingly be to the detriment of a prosecution client that is currently claiming such an invention or owns patents directed to such inventions.

There is a recent article on positional conflicts of interest in the Texas Law Review available at this [Link].  Perhaps somebody can talk David Hricik into covering this issue on Patently-O.

Chief Judge Paul Michel, who retired relatively recently from the Federal Circuit, has filed an amicus brief with the Supreme Court in the Alice Corp. Pty. Ltd. v. CLS Bank Int’l., et al. appeal.  I was having a hard time finding a copy of the amicus brief on the internet today; so, I thought it might be useful to make it available [here].

The movie “IP Man — The Final Fight” is now available on Red Box.  I couldn’t help but wonder if the title is foreshadowing the upcoming battle in CLS v. Alice.

The Federal Circuit sometimes uses “serial number” in a different way than that used by the PTO.  The PTO identifies an “application number” by a two digit “series code” and a six digit “serial number.”  See, e.g., 37 C.F.R. 1.5.  The Federal Circuit will sometimes use “serial no.” more generally.  For example, in the case decided yesterday, Medtronic CoreValve LLC v. Edwards LifeSciences Corp., the opinion states:

A complete priority chain claiming priority to International Application 2b under § 120 would have disclosed the following:

The present application (U.S. Application 10) claims priority under 35 U.S.C. § 120 as a continuation of U.S. Application Serial No. 12/029,031 (U.S. Application 8), filed February 11, 2008, which is a continuation of U.S. Application Serial No. 11/352,614 (U.S. Application 6), filed February 13, 2006, which is a continuation of U.S. Application Serial No. 10/412,634 (U.S. Application 4), filed April 10, 2003, which is a continuation-inpart of International Application No. PCT/FR 01/03258 (International Application 2b), filed October 19, 2001.

The application no. “12/029,031” is this example is comprised of a series code “12” and a serial no. “029,031.”  So, the above example given by the Federal Circuit can be a little bit confusing to new practitioners.  One would preferably use “U.S. Application No.” (as the MPEP instructs) in place of “U.S. Application Serial No.” as indicated below:

The present application (U.S. Application 10) claims priority under 35 U.S.C. § 120 as a continuation of U.S. Application Serial No. 12/029,031 (U.S. Application 8), filed February 11, 2008, which is a continuation of U.S. Application Serial No. 11/352,614 (U.S. Application 6), filed February 13, 2006, which is a continuation of U.S. Application Serial No. 10/412,634 (U.S. Application 4), filed April 10, 2003, which is a continuation-inpart of International Application No. PCT/FR 01/03258 (International Application 2b), filed October 19, 2001.

Curiously, the PTO search page still allows one to search by “application serial no.” but no longer by “application series code.”  So, every “application serial no.” search produces about four to five results.

This is a pretty neat slide on the PTO website [Link].  I had one thought after review — thank you David Kappos for all you did!

Justice Breyer’s concurring opinion in Bilski v. Kappos, 130 S. Ct. 3218, 3258 (2010) stated that the Court has long held that “[p]henomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable” under § 101, since allowing individuals to patent these fundamental principles would “wholly pre-empt” the public’s access to the “basic tools of scientific and technological work.”  Justice Breyer cited  Gottschalk v. Benson, 409 U.S. 63, 67, 72, 93 S.Ct. 253, 34 L.Ed.2d 273 (1972); Diamond v. Diehr, 450 U.S. 175, 185, 101 S.Ct. 1048, 67 L.Ed.2d 155 (1981); and Diamond v. Chakrabarty, 447 U.S. 303, 309, 100 S.Ct. 2204, 65 L.Ed.2d 144 (1980) for this point.

In the recent oral argument of SmartGene v. Advanced Biological Industries, a Federal Circuit panel heard argument over whether a claim that arguably would be patent eligible under a “preemption” analysis could still be found patent ineligible under a “mental steps plus computer” analysis.

At issue once again was the patent eligibility of a computer-centric claim.  Claim 1 of the patent at issue recites:

1. A method for guiding the selection of a therapeutic treatment regimen for a patient with a known disease or medical condition, said method comprising:

(a) providing patient information to a computing device comprising:

a first knowledge base comprising a plurality of different therapeutic treatment regimens for said disease or medical condition;

a second knowledge base comprising a plurality of expert rules for evaluating and selecting a therapeutic treatment regimen for said disease or medical condition;

a third knowledge base comprising advisory information useful for the treatment of a patient with different constituents of said different therapeutic treatment regimens; and

(b) generating in said computing device a ranked listing of available therapeutic treatment regimens for said patient; and

(c) generating in said computing device advisory information for one or more therapeutic treatment regimens in said ranked listing based on said patient information and said expert rules.

The patent owner drew a tough panel for the appeal — Judges Lourie, Dyk, and Taranto.  Judges Lourie and Dyk’s opinions on §101 issues are well-documented — Judge Taranto’s views, less so.

Preemption vs. Mental-steps-plus-computer

During the oral argument, Judge Lourie initially asked counsel for the appellant/patent-owner whether the Supreme Court has stated that a “preemption” analysis is more important than a  “mental steps plus computer” analysis, while Judge Dyk asked which case states that “preemption” is the sole test for patent eligibility.  While not necessarily arguing that preemption is the sole test, the appellant responded to the questioning with a lengthy line of Supreme Court and Federal Circuit cases where the courts have focused on preemption: [Listen].  Judge Lourie later gave counsel for appellee an opportunity to respond: [Listen].

The Supreme Court’s patent eligibility analysis stems from a policy of not permitting preemption of abstract ideas/mental steps.  This policy goes back at least as far as Gottschalk v. Benson.  Even the mental steps case of Cybersource* relies upon Gottschalk v. Benson.  While not necessarily acknowledging the preemption policy at the heart of Benson, Cybersource concludes its mental steps analysis with reference to Benson by stating:

Thus, claim 3’s steps can all be performed in the human mind. Such a method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under § 101. Methods which can be performed entirely in the human mind are unpatentable not because there is anything wrong with claiming mental method steps as part of a process containing non-mental steps, but rather because computational methods which can be performed entirely in the human mind are the types of methods that embody the “basic tools of scientific and technological work” that are free to all men and reserved exclusively to none. Benson, 409 U.S. at 67, 93 S.Ct. 253.

Cybersource at 1373.

Given that avoiding “preemption” is the fundamental policy behind patent ineligibility cases, it will be interesting to see how the panel resolves the inherent conflict behind  (1) a preemption analysis that gives full force and effect to all elements of a claim and (2) the tortured logic of recent cases that disregards entire elements of a claim.  In my opinion, disregarding claim elements for section 101 purposes creates an inconsistency in the application of the law.  It is illogical to think that Congress intended all elements of a claim to be given full force and effect under §§102, 103, 112, and 271 — but not under §101.

Basic Idea/Gist/Heart of the Invention

During the oral argument, Judge Lourie followed up the preemption questioning by proposing a broad strawman claim — as opposed to the narrow claim language under review — that could be knocked down under a pre-emption analysis.  Namely, Judge Lourie asked “the idea . . . the basic idea is providing information concerning various treatment regimens for particular diseases, and that’s preempted isn’t it?”  [Listen].

As one can see, the “basic idea” that Judge Lourie posits is a much broader claim than the actual claim language of claim 1 (see claim 1 above).  Any strawman claim such as that proposed in Judge Lourie’s question can be knocked down under a preemption analysis, assuming the proposed strawman claim is crafted broadly enough.

Moreover, the phrase “the basic idea” sounds a lot like “the gist of the invention” or “the heart of the invention.”  The Supreme Court denounced such “heart of the invention” analyses in Aro Mfg. v. Convertible Top Replacement Co., 365 U.S. 336, 344-45 (1961).

[I]f anything is settled in the patent law, it is that the combination patent covers only the totality of the elements in the claim and that no element, separately viewed, is within the grant. See the Mercoid cases, supra, 320 U. S., at 667;320 U. S., at 684. The basic fallacy in respondent’s position is that it requires the ascribing to one element of the patented combination 345*345 the status of patented invention in itself. Yet this Court has made it clear in the two Mercoid cases that there is no legally recognizable or protected “essential” element, “gist” or “heart” of the invention in a combination patent. In Mercoid Corp. v. Mid-Continent Co., supra, the Court said:

“That result may not be obviated in the present case by calling the combustion stoker switch the `heart of the invention’ or the `advance in the art.’ The patent is for a combination only. Since none of the separate elements of the combination is claimed as the invention, none of them when dealt with separately is protected by the patent monopoly.” 320 U. S., at 667.

And in Mercoid Corp. v. Minneapolis-Honeywell Co., supra, the Court said:

“The fact that an unpatented part of a combination patent may distinguish the invention does not draw to it the privileges of a patent. That may be done only in the manner provided by law. However worthy it may be, however essential to the patent, an unpatented part of a combination patent is no more entitled to monopolistic protection than any other unpatented device.” 320 U. S., at 684.No element, not itself separately patented, that constitutes one of the elements of a combination patent is entitled to patent monopoly, however essential it may be to the patented combination and no matter how costly or difficult replacement may be.

Super-Non-obviousness Standard

During the oral argument, Judge Taranto exhibited an independent streak when he asked a question that seemed to support patent eligibility. Namely, his questioning focused on a reexamination proceeding that had taken place for the patents at issue.  Judge Taranto noted that the claims at issue had survived reexamination under §§102 and 103.  He inquired if that should suffice to satisfy the “enough” test from Mayo.  The counsel for the appellee noted that any patent that reaches the Federal Circuit in an infringement case has by definition already satisfied §§102 and 103.  [Listen].

That raises the question:  is the “enough” test of Mayo a “super-non-obviousness” test that a claim must pass in order to satisfy §101?   Stated another way, must a claim not only be non-obvious as a whole under §103, but also must a particular subset of elements of the claim that are isolated as the result of a mental steps analysis be non-obvious under §101?  That makes Mayo’s “enough” test under §101 a tougher non-obviousness test to pass than §103 itself — indeed, a super-non-obviousness test.  As a matter of statutory interpretation, it seems inappropriate for the Mayo Court to have imposed an implicit standard under one section (i.e., §101) that is more stringent than an express standard recited in a related section (i.e., §103)?

The appeal in SmartGene v. Advanced Biological Industries has not yet been decided.

You can review the district court opinion [here].

You can listen to the entire oral argument [here].  It’s a good one.

*  You can listen to Judge Dyk characterize his opinion for the court in Cybersource [here]. My takeaway from his comment was that the rule of Cybersource is exalted over the policy of “no preemption.”  Perhaps that highlights that decisions like Cybersource have now eclipsed the underlying policy of “no preemption” that such cases are founded upon.

If you were curious whether the PTAB precedential opinion in the case Ex Parte Mewherter was under appeal to the Federal Circuit, it is not.  I checked Public Pair this afternoon; and, the application has returned to prosecution before the examiner.

Ex Parte Mewherter is an opinion made precedential by the PTAB that deals with failure to exclude transitory media in computer readable media claims.  [Link]