717 Madison Place

As a follow up to the Senate Judiciary Committee hearing for Judge Evan Wallach’s Federal Circuit nomination, he has submitted his responses to the Senate Judiciary Committee’s written questions.  You can view his responses [here].  The questions were somewhat more pointed than have been asked of other Federal Circuit nominees.

A week ago, there were at least three subject matter eligibility cases that had been orally argued but not yet decided by the Federal Circuit: Dealertrack v. Huber (argued on May 4th, Dyk, Linn, Plager); Fuzzysharp Technologies Inc. v. 3D Labs, Inc. (argued on July 7th, Bryson, O’Malley, Reyna); and Ultramercial v. Hulu (argued on August 4th, Rader, Lourie, O’Malley).  The cases are of particular interest because they will continue to develop the court’s jurisprudence in the area of subject matter eligibility, post-Bilski.  Moreover, with what appears to be significantly divergent viewpoints about subject matter eligibility by various Federal Circuit judges, as evidenced by the Research Corp. Technologies v. Microsoft and CyberSource Corp. v. Retail Decisions, Inc. panels, the earliest decision to issue will serve as precedent to subsequently decided cases. 

At first glance, one might have expected Dealertrack to issue first.  As it turns out, it was Judge Rader’s panel in Ultramercial v. Hulu that took home the honors on September 15th.  Now a cynic might wonder if this was “gamesmanship” in that the most-recently argued case was decided first and a mere six weeks after oral argument.  However, in actuality, the Ultramerical case really only concerned the single issue of subject matter eligibility that had been decided on summary judgment by the district court.  So, perhaps Ultramercial just happened to be an easy one.

On another note, the Dealertrack decision should be interesting.  The panel is comprised of Circuit Judges Dyk, Linn, and Plager.  Judge Dyk authored the CyberSource opinion.  Judge Plager was a member of the unanimous panel in the Research Corp. Technologies opinion.  I’ll venture a guess that Judge Linn is authoring the Dealertrack opinion for the court.

You may be familiar with Dr. Mehmet Oz who often appeared on the Oprah Winfrey Show. He now has his own syndicated televison show. This past August he and his co-inventors had a patent issue titled “System and Method for Determining an Objective Measure of Human Beauty.”  It is patent number 8,005,270.

Claim 1 of the patent reads:

1. A beauty quantification system comprising:

a beauty quantification processor;

a beauty measure datastore, wherein the beauty measure datastore comprises quantifiable measures of beauty of a body region;

a beauty score datastore;

a user computing device;

a network; and

a beauty enhancement processor,

wherein the beauty quantification processor comprises instructions for:

      receiving user data indicative of physical attributes of a selected body region of the user;

      obtaining measures of beauty from the beauty measures datastore associated with the selected body region;

      evaluating the user data against the beauty measures of the selected body region;

      determining a user score indicative of the beauty of the selected body region of the user;

      storing the user score in the beauty score datastore; and

      comparing the user score to a score stored in the beauty score datastore; and

wherein the beauty enhancement processor comprises instructions for:

      receiving from the user a selection for an enhancement of the selected body region;

      applying the selected enhancement to the selected body region; and

      determining an enhanced user score indicative of the beauty of the selected body region after application of the selected enhancement.

You can read the entire patent [here].

The Federal Circuit has posted on its website an announcement about an upcoming conference sponsored by the Eastern District of Texas Bench and Bar (to be held in Dallas).  It looks like quite an interesting three day conference that should be particularly interesting to in-house patent counsel.  The announcement reads:

Chief Judge Rader, Circuit Judge Linn, Circuit Judge O’Malley, Circuit Judge Reyna and Circuit Mediator Amend to Participate in the 2011 Eastern District of Texas Bench Bar Conference

Chief Judge Randall Rader, Circuit Judge Richard Linn, Circuit Judge Kathleen O’Malley, Circuit Judge Jimmie Reyna and Circuit Mediator James Amend will participate in the 2011 Eastern District of Texas Bench and Bar Conference from September 25 to 27, 2011 in Las Colinas, Texas. Among the topics to be discussed are “Judicial Economy versus De Novo Review in Claim Construction”, “The Ethics of Advocacy”, “Emerging Management Techniques & Tradeoffs in Multiple Party Cases”, “Corporate Counsel: Views of ED Texas, Federal Circuit and Judicial Patent Reform”, and “Settlement Perspectives: Impediments to Resolution of IP & Other Complex Cases”. Click here for the conference schedule. Registration is available here .

The Senate Judiciary Committee’s hearing for Judge Evan Wallach took place last week.  Judge Wallach was introduced to the committee by Senate Majority Leader Harry Reid. 

You can watch the video of the hearing at this [LINK].  Senator Reid introduces Judge Wallach at about the 32:10-36:08 minute portion of the video.  Judge Wallach answers questions at about the 42:33-63:50 minute portion of the video.

The Senate Judiciary Committee has posted on its website the date and time for Judge Evan Wallach’s confirmation hearing for a seat on the Federal Circuit bench.  The hearing is currently scheduled for Wednesday September 7, 2011 at 12:30 Mountain time (2:30 Eastern time).

The link with all the pertinent information and a further link to the webcast is available here: [Link].

On the heels of Cybersource Corp. v. Retail Decisions, Inc., an opinion that would have made Justice Douglas blush, the Federal Circuit has decided Classen Immunotherapies, Inc. v. Biogen-Idec et al., 2006-1634 (Fed. Cir. Aug. 31, 2011).  What interested me most about this decision was Chief Judge Rader’s additional views in which he was joined by Judge Newman.

Chief Judge Rader took issue with patent attorneys responding to Supreme Court precedent by drafting claims to avoid abstract ideas.  Chief Judge Rader characterized this as “gamesmanship.”  This is disappointing because it reflects a fundamental misunderstanding of what patent attorneys are doing.  At a basic level, they are zealously representing their clients.  At a claim drafting level, they are simply trying to color within the lines of what they believe to be the borders of eligible subject matter. 

For example, if subject matter is a circle, and the outermost edge of the circle is a characterization of the subject matter that is so abstract as to constitute an abstract idea, drafting a claim to include that outermost area should violate section 101.  However, if one doesn’t try to claim that outermost area, he or she should be fully entitled to claim the inner parts of the circle, whether that be an apparatus claim, a method claim, a composition of matter claim, or even an article of manufacture claim.  For example, just because one can’t claim the idea of sitting, that doesn’t mean one shouldn’t be able to claim all types of chairs.  The same holds true for Beauregard claims or any other type of claim that does not claim an abstract idea.  The rules shouldn’t change just because software is involved.

The following is an excerpt of what Chief Judge Rader wrote in his additional views in Classen:

The patent eligibility doctrine has always had significant unintended implications because patent eligibility is a “coarse filter” that excludes entire areas of human inventiveness from the patent system on the basis of judge-created standards. For instance, eligibility restrictions usually engender a healthy dose of claim-drafting ingenuity. In almost every instance, patent claim drafters devise new claim forms and language that evade the subject matter exclusions. These evasions, however, add to the cost and complexity of the patent system and may cause technology research to shift to countries where protection is not so difficult or expensive.

 

The first unintended consequence, claim drafting evasion, has occurred several times in the past. After all, patents require a translation of technology into text, i.e., patent claims. Inevitably the subject matter exclusions of eligibility doctrines depend on the way that claims are drafted. Thus, careful claim drafting or new claim forms can often avoid eligibility restrictions. Eligibility then becomes a game where lawyers learn ingenious ways to recast technology in terms that satisfy eligibility concerns.

 

Two well-known examples of claim drafting to circumvent eligibility restrictions are the Beauregard claim and the Swiss claim. The Beauregard claim was devised to draft around restrictions on software imposed in Gottschalk v. Benson, 409 U.S. 63 (1972). Benson denied eligibility to mathematical algorithms, a category broad enough to endanger computer software in general. The Beauregard claim form, however, was for “computer programs embodied in a tangible medium.” In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995). Claims were re-drafted so that the intangible computer code in Benson instead became an encoded tangible medium in Beauregard. See id. at 1584 (PTO stating it will treat such claims as patent eligible subject matter); MPEP § 2106 (8th ed. Rev. 8, July 2010) (same).

…

 

When careful claim drafting or new claim formats avoid eligibility restrictions, the doctrine becomes very hollow. Excluding categories of subject matter from the patent system achieves no substantive improvement in the patent landscape. Yet, these language games impose high costs on patent prosecution and litigation. At the same time, the new games can cheat naïve inventors out of their inventions due to poor claim drafting. Moreover, our national innovation policy takes on characteristics of rewarding gamesmanship.

 

In addition to gamesmanship, eligibility restrictions increase the expense and difficulty in obtaining a patent. By creating obstacles to patent protection, the real-world impact is to frustrate innovation and drive research funding to more hospitable locations. To be direct, if one nation makes patent protection difficult, it will drive research to another, more accommodating, nation.

Classen, C.J. Rader’s additional views at pages 2-4 (emphasis added).

In response to Chief Judge Rader’s additional views, Judge Moore stood up for claim drafters noting that careful claim drafting is a virtue, not a vice.  She wrote:

3 With all due respect to my colleagues, I do not agree with the additional views. First, the additional views improperly criticizes litigants for arguing that abstract ideas are exempt from patent protection. We are bound to follow Supreme Court precedent which clearly and explicitly holds that abstract ideas are not eligible for patent protection. Diamond, 450 U.S. at 185 (“Excluded from such patent protection are . . . abstract ideas.”); Parker, 437 U.S. at 589 (“[A]bstract intellectual concepts are not patentable . . . .”). Second, I favor “careful claim drafting” and think it a virtue, not a vice. If § 101 causes the drafting of careful, concrete, specific claims over abstract, conceptual claims, I see no harm. The world will have clear notice of the scope of such patent rights. Finally, in this global age, it is not immediately clear to me why the scope of patent rights should dictate the location of the innovation. Chinese companies do not move to the U.S. to carry out their research when they want a U.S. patent. Regardless, any decision on “national innovation policy” such as what will “frustrate innovation” or “drive research funding” should be left to Congress. We do not have the resources, institutional expertise or the mandate to weigh the competing incentives to innovation. Our job is to take the statute as we find it and apply it to the facts of the case before us.  

Classen, Judge Moore’s dissent at pages 13-14 (emphasis added).

The recent demonizing of Beauregard claims and assertions of gamesmanship leaves one feeling a little bit like an outlaw in the old west:

* “Boilerplate Bill” is also wanted for continuation filin’, IDS submittin’, zealously representin’, gum chewin’, software protectin’, dog pettin’, Examiner collaboratin’, and algorithmin’.  He is considered armed and dangerous, as his mild-mannered, patent attorney personality has been known to bore people to death.

The Federal Circuit will hit the trail and visit Oregon this October.  The court will sit at Lewis and Clark Law, Wilamette Law, Pioneer Courthouse, the U.S. District Courthouse, and the University of Oregon Law.  Here’s the published schedule of cases in case you reside near those places:

Panel D:  Tuesday, October 4, 2011, 10:00 A.M.,  Lewis & Clark Law

Panel E:  Tuesday, October 4, 2011, 2:00 P.M.,  Willamette Law

Panel I:  Tuesday, October 4, 2011, 2:00 P.M.,  Pioneer Courthouse

Panel F:  Wednesday, October 5, 2011, 10:00 A.M., U.S. District Court

Panel G:  Wednesday, October 5, 2011, 10:00 A.M., U.S. District Court

Panel H:  Thursday, October 6, 2011, 2:00 P.M., University of Oregon Law

The Senate Judiciary Committee has posted the committee questionnaire of Evan J. Wallach on its website.  Judge Wallach is currently a judge on the United States Court of International Trade and a nominee for the Court of Appeals for the Federal Circuit.  You can view the committee questionnarie [here].  Judge Wallach has presided over at least one patent case at the district court level.  No Senate Judiciary Committee hearing has been scheduled for Judge Wallach at this time.

The Federal Circuit has updated its web site with Judge Newman’s eulogy of Judge Friedman that took place at a gathering last month at the Cosmos Club:

Judge Friedman, our colleague and friend, has moved to the banks of memory. We treasure his memory. And we extend our condolences to Judge Friedman’s family, and his friends.

I’m honored to speak for the court, for at this moment Chief Judge Rader is performing a wedding in California – a schedule he couldn’t change. He wrote, from the wedding site: “Please carry my respect and love for Dan in your hearts at his service”. We do indeed.

Respect and love are the markers of our memories of our friend and colleague. We shall not forget Judge Friedman’s dignity, his warmth, his humor. We remember his lifetime of scholarship, his brilliance and his wisdom, all generously shared.

His seventy years of public service started long before he came to the judiciary. In the office of solicitor general, his legal advice to the nation, and his representation as its advocate, had already ensconced him in the annals of good government. So it was fitting that in 1978 President Carter called him to be Chief Judge of the United States Court of Claims — the eleventh chief judge since 1858.

The Court of Claims was at the foundation of nation’s rule of law – that the people can sue their government, and receive even-handed justice. Judge Friedman told me that he expected to finish his career in that role – and then, about a year later, the idea popped up of this curious new judicial structure, supposed to move the court system into the era of science and technology, and somehow incorporating the reputation of the historic Court of Claims.

Judge Friedman knew that I’d been involved in those early efforts, and he told me that he still wondered what the Court of Claims had to do with the progress of science. But I knew that as Chief Judge he had supported the change. He knew – we all knew — that if he did not, it would not have happened.

I thought then, and now — that Judge Friedman had an unusually clear vision of the role of the courts in service to a great nation – and if that service was somehow thought to be slipping, we should do whatever’s in our power to fix it. And he did. I also saw that Judge Friedman’s intellectual curiosity embraced the culture of science. He was fascinated by the movement of electrons, and the advances of chemistry and biology.

Still, with the transition from the Court of Claims, he assured that the precedents of history were preserved, not only by the formality of adopting them, as the Federal Circuit did as its first judicial act — but by reinforcing their truths.

I was the first judge appointed to the new court, and my chambers were next-door to Judge Friedman’s, on the ninth floor. He made sure I felt welcome, as the first intruder into the domain of the Court of Claims. I soon came upon a case involving a claim against the United States, and I mentioned my uneasiness with deciding against the government. He twinkled – we all remember his twinkle – and he said “that’s our job”, and he quoted Abraham Lincoln — about the duty of government to render justice against itself.

I haven’t wavered since.

Yesterday I talked to Judge Gajarsa in New Hampshire. Before I could ask him, he said “Dan was the epitome of what a judge will be.”

Dan’s opinions are a treat to read, not just because they advance the law in some very difficult areas, but because of their elegance of style and the purity of their reasoning.

It would be easy to assume that the scholarly tradition from which Judge Friedman came would be remote from the world of applied science, at least in the arcane new areas of intellectual property law. Instead, he was intensely practical, wise and savvy in the law and the world — with a powerful a sense of justice.

Judge Friedman had, as one would expect, a deep understanding of the judicial process. As a judge, he showed the most profound respect for our inherited law, without diverging from the statutory law. His standards were never compromised. He was a model of judicial elegance. He never showed off, never embarrassed counsel or his colleagues.

Maybe the word is “urbane”. I never saw him badger a lawyer. He never took advantage of his position, looking down at counsel, who can’t answer back.

In bearing and temperament he was made to be a judge. He always listened, and I never saw him show impatience or inattention. He would draw out his colleagues, even as he had the knowledge and confidence of vast experience.

In every way, he will be missed. Dan Friedman’s life was a life of service. He served the law and the nation with a wisdom that’s rare, even among judges. It was a joy to be in his company. We remember his kindness and his smile – and his scholarship, his balance, his sensitivity.

We mourn the loss of our dear colleague, and the nation’s loss of a powerful intellect. He moves to the memory of history.

Here is the link to all of the eulogies: [Link].

 Last year’s AIPLA Electronics and Computer Law Roadshow had one of the best line-ups of speakers that I’ve seen in quite some time.  It got me to thinking what would be the ideal seminar.  Here’s what I came up with for my own personal tastes.  You probably have your own preferences as well.  I don’t know that any of the suggested speakers would actually want to talk on these subjects; but, I think it would be interesting to hear their opinions. 

Day 1

Day 2

 *“The Great Debate I” took place three years ago between the Obama and McCain campaigns on the topic of patent policy. You can view that debate [here].

The Federal Circuit has posted on its website eulogies by some of Judge Friedman’s former law clerks.  You can read the eulogies at this [LINK].

Appeals Filed to Federal Circuit During Fiscal Year 2010

One might wonder if the Senate Judiciary Committee is daring the Obama Administration to make some judicial recess appointments (or complicit in the Obama Administration doing so).  On its website, the Senate Judiciary Committee currently has this post:

Did You Know? President Eisenhower’s appointment of Potter Stewart to the Supreme Court in 1958 was the last recess appointment to the Supreme Court under Article II, Section 2, Clause 3, of the Constitution. In 1960, the Senate passed a resolution – which had no legally binding effect – expressing the Senate’s objection to recess appointments to the Supreme Court.

With two circuit court (Seventh Circuit and Federal Circuit) nominees still waiting for a hearing before the Senate Judiciary Committee after more than a year of initially being nominated (while subsequent circuit court nominees have received hearings within a month of being nominated), one might argue that the Senate has had a fair opportunity to advise the President and chosen not to exercise it.

Here is an article on judicial recess appointments: [Article].  According to the article, judicial recess appointments were most recently used by Presidents Carter and Clinton. 

———————————————————————————————–

Update: The article linked to above was written before the end of the Bush Administration.  President Bush made two judicial recess appointments at the circuit court level.

According to some accounts, the Senate is not currently in “recess” and cannot go into “recess” without the permission of the House.  Instead, the Senate is currently in “adjournment.”

The date of the AIPLA Electronics and Computer Patent Law Summit in St. Paul, Minnesota on August 16th is approaching quickly.  One particularly interesting panel of note will be the one dealing with Therasense v. Becton, Dickinson and Co. that will reunite John Whealan and Ray Chen, who both took part in the en banc oral argument of Therasense.

You can view the details of the program at this link to the AIPLA brochure.