717 Madison Place: Recent Episodes
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I ran across this quote this evening and thought it might have a place in somebody’s brief to the Supreme Court about the Federal Circuit’s Rule 36 problem: When you want to hurry something, that means you no longer care about it and want to get on to other things. Robert M. Pirsig (2009). “Zen […]
Benjamin Graham was a famous investor and polymath as well as author of the book “The Intelligent Investor.” That book was recently updated with commentary by Jason Zweig. Warren Buffet, who studied under Graham, writes of the book: “I read the first edition of this book early in 1950, when I was nineteen. I thought […]
Opinion Link Oral Argument Link 41 INGURAN, LLC v. ABS GLOBAL, INC. [OPINION] Inguran, LLC v. ABS Global, Inc. (mp3) 42 AXONICS, INC. v. MEDTRONIC, INC. [OPINION] Axonics, Inc. v. Medtronic, Inc. (mp3) 43 In Re FLOAT’N’GRILL LLC [OPINION] In Re Float’N’Grill LLC (mp3) 44 […]
I was listening to a CLE webinar over the weekend on the subject of design patents. The presenters used an apt phrase that I had not heard before: “The Mr. Potato Head rejection.” I’ve heard of a Frankenstein (or Frankenstein’s monster) rejection/argument; but, Mr. Potato Head might capture the idea even better. See these earlier […]
I saw that former US Solicitor General Ted Olson passed away. In 2007, he appeared at the Supreme Court to argue the case of Microsoft v. ATT opposite Seth Waxman. I thought that might be a good oral argument of the day. Listen: Audio from https://www.oyez.org/cases/2006/05-1056.
Opinion Link Oral Argument Link 21 ARBUTUS BIOPHARMA CORPORATION v. MODERNATX, INC. [OPINION] Arbutus Biopharma Corporation v. ModernaTX, Inc. 22 HEALTHIER CHOICES MANAGEMENT CORP. v. PHILIP MORRIS USA, INC. [OPINION] Healthier Choices Management Corp. v. Philip Morris USA, Inc. 23 SANDERLING MANAGEMENT LTD. v. SNAP INC. [OPINION] […]
With hurricanes on our minds this week, I thought it would be a good time to re-publish this post from October 10, 2019: With hundreds of thousands without power in Northern California and power grid vulnerabilities in question, a patent attorney’s mind naturally turns to the Electric Power Group case. Electric Power Group was discussed […]
The Tenth Circuit recently reviewed a summary judgment by a district court on the scope of the term “intellectual property” in a contract governed by Colorado law. [LINK]. Particularly, the dispute dealt with whether password information was “intellectual property” that had to be returned. Interestingly, the Tenth Circuit reversed the district court and held, based […]
The 717 Madison Place blog is celebrating its fifteenth anniversary this month. I think my favorite sound bite is still from the first post. Judge Michel (now retired) was the judge asking the question. This is a brother-in-law case, your honor. Tuesday, June 16th, 2009 Oral arguments at the Court of Appeals for the Federal […]
Believe it or not, the twentieth anniversary of the Supreme Court decision in eBay v. MerchExchange is quickly approaching — it will be twenty years in May of 2026. The oral argument in this case took place before oral arguments of the Supreme Court were timely available. I thought it might be of interest to […]
The oral argument of the day is from In re Stepan. The appeal in this case dealt with whether one could assert that it is merely routine optimization to modify a single reference in a §103 rejection in the unpredictable arts. There was a split decision with Judges Moorre and O’Malley in the majority and […]
The Federal Circuit overruled the Rosen-reference test today with respect to design patents. The Rosen-reference test utilized a “primary” reference for obviousness analysis. In some oral arguments concerning utility patents, I think some of the younger Federal Circuit judges have infused “primary reference” into oral arguments when informally discussing utility patent obviousness. That always alarmed […]
Opinion Link Oral Argument Link 1 DIONEX SOFTRON GMBH v. AGILENT TECHNOLOGIES, INC. Dionex Softron GmbH v. Agilent Technologies, Inc. (mp3) 2 In Re GOOGLE LLC In Re Google LLC 3 GRACE INSTRUMENT INDUSTRIES, LLC v. CHANDLER INSTRUMENTS COMPANY, LLC Grace Instrument Industries, LLC v. Chandler Instruments Company, LLC […]
One thing I like about some of the circuits other than the Federal Circuit is that they print the date of oral argument on the published opinion. The Fourth Circuit is one such circuit. In Sony Music Entertainment v. COX COMMUNICATIONS, INCORPORATED, No. 21-1168 (4th Cir. Feb. 20, 2024), the Fourth Circuit heard oral argument […]
The Supreme Court of the United States heard oral argument today in two cases challenging the doctrine of Chevron deference. I queried back in May of 2023 what would be the impact on patent law if Chevron deference is removed by the Court — and, in December of 2018 whether there should be a pro-inventor/pro-entrepreneur […]
The Supreme Court of the State of Colorado (my home state) decided Anderson et al. v. Griswold today. I thought the oral argument might be of interest.
The Supreme Court held oral argument today in SEC v. Jarkesy. The importance of the case and the potential impact on administrative law is perhaps reflected by the fact that the Court devoted an unusually long 2 hours and 17 minutes to oral argument. You can listen to the oral argument here: [Link]. The transcript […]
The Supreme Court is midway through its briefing in Securities and Exchange Commission v. Jarkesy. Readers might find some of the briefing interesting for the references to the Supreme Court decision in United States v. Arthrex. [Link to briefs]. Oral argument date to be determined.
The Ninth Circuit heard oral argument in Best Carpet Values, Inc. v. Google, LLC, yesterday. The plaintiffs below asserted trespass to chattels (among other things) based on alteration of a website display. The district court framed trespass to chattels as follows: Trespass to chattels lies where an intentional interference with the possession of personal property […]
Today’s quiz asks what area of legal precedents was this quote describing: “a farrago of fumblings which have suffered too long from a surfeit of deficient theories.“ A: Takings law B: Patent eligibility law C: Patent eligibility law D: Patent eligibility law Answer: A. John A. Humbach, A Unifying Theory for the Just Compensation Cases: […]
by Bill Vobach I ran this cartoon back in 2020; but, I thought today might be a good day to run it again [Link].
There were some fun audio bites in the oral argument of CR BARD, INC. v. Medical Components, Inc., No. 2022-1136 (Fed. Cir. Feb. 17, 2023). Judge Hughes had some frank comments about the court injecting printed matter into patent eligibility determinations: You can listen to the entire oral argument here:
I saw a blurb yesterday in IPLaw360 that highlighted an appeal from a Fifth Circuit case that will be heard by the Supreme Court next term. The case is Jarkesy v. SEC, 34 F.4th 446 (5th Cir. 2022). Some of the issues raised in the oral argument at the Fifth Circuit are somewhat related to […]
The oral argument of the day is from LKQ CORPORATION v. GM GLOBAL TECHNOLOGY OPERATIONS LLC, No. 2021-2348 (Fed. Cir. Jan. 20, 2023). The Federal Circuit recently granted en banc review in this case. I am listing a second oral argument, as well, as there was a companion case argued immediately following the 2021-2348 oral […]
We all have probably encountered an obviousness argument that cobbled together references in an unconvincing manner. In this earlier post, such a combination was aptly described as a Frankenstein combination. I was trying to think of some other phrases that the Federal Circuit could use in future opinions to describe such combinations of features/elements/limitations/references. Here […]
That society should protect, and thereby stimulate, investment in innovation—not just invention—has been held by many; but few were as consistent in their conclusions as Joseph A. Schumpeter, who on these grounds favored permitting monopolistic practices of various sorts. He argued that temporary security from competition, through cartels, patents, or other restraints, would encourage firms […]
The Supreme Court has granted cert. in Loper Bright Enterprises v. Raimondo. The issue in that case is: Whether the court should overrule Chevron v. Natural Resources Defense Council, or at least clarify that statutory silence concerning controversial powers expressly but narrowly granted elsewhere in the statute does not constitute an ambiguity requiring deference to the […]
This quiz question concerns a situation where one of the three judges of a Federal Circuit panel dissents from the two judge majority opinion. Which of these answers is/are correct for designating the opinion precedential: According to the Federal Circuit’s internal operating procedures, A, C, D, and E are correct. (See Internal Operating Procedures at […]
Judges Taranto and Newman pressed an issue during a recent oral argument as to who is the real party in interest when a membership organization brings an IPR. The importance in deciding the issue is that it affects how estoppel applies during future district court litigation (at least) for that patent. Should the estoppel apply […]
I was down in Argentina earlier this month and had the opportunity to do some fishing for a fish known as the Golden Dorado (a.k.a., ‘El Tigre del Rio’). While I was a patent attorney literally on a fishing expedition, it was not the same type that the Federal Circuit was referring to in Monarch […]
Judge Wallach took senior status back in 2021. In the final oral argument over which he presided, he thanked the bar for its courtesy and hard work over the years. You can listen to his sign-off here: There was another interesting sound bite during that oral argument. In an appeal from Judge Albright’s courtroom, Judge […]
Whether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination. Whether a particular technology is well-understood, routine, and conventional goes beyond what was simply known in the prior art. The mere fact that something is disclosed in a piece of prior art, for example, […]
by Bill Vobach The recent appropriations Act makes provisions for a new satellite patent office in the Southeast Region of the United States. The new office will be located in one of these states within the next three years: Virginia, North Carolina, South Carolina, Georgia, Florida, Tennessee, Alabama, Mississippi, Louisiana, and Arkansas. So, where will […]
The audio bite of the day comes from Judge Moore during the oral argument of ADASA INC. v. AVERY DENNISON CORPORATION, No. 2022-1092 (Fed. Cir. Dec. 16, 2022). I think you may be the only person I’ve ever heard . . . say that we have somehow created bright lines in 101. I can’t think […]
During the oral argument of In re Antor Media Corp., 689 F.3d 1282 (Fed. Cir. 2012) back in 2012, then-Chief Judge Rader expressed a concern about creating a blanket rule that would give any printed publication a presumption of enablement. He said: My concern with a blanket rule that says a printed publication is presumed […]
The draft appropriations bill includes resources for the operations of the Federal Circuit in the amount of $36,735,000. This is in addition to the salaries for the judges.
If somebody is looking for an article to write, I think it might be worthwhile to address the impact of 35 USC §121 on claim construction. What particularly should be addressed is: when a specification uses a phrase such as “the present invention,” should 35 USC §121 temper the impact of that language. Historically, some […]
In the Federal Circuit’s recent opinion in CUPP COMPUTING AS v. TREND MICRO INC., No. 2020-2262 (Fed. Cir. Nov. 16, 2022), the court made a statement that caught my eye. Judge Dyk writing for the court and the other members of the panel (Judges Taranto and Stark) wrote “We now make precedential . . . […]
ENIAC was a computer built in 1946. Unlike modern computers, this machine was externally programmed; its circuitry had to be manually rewired each time it was used to perform a new task. See Gemignani, Legal Protection for Computer Software: The View From `79, 7 Rutgers J. Computers, Tech. & L. 269, 270 (1980). So, do […]
I think my September 1st resolution will be to be more proactive in sharing my thoughts about IP laws with my Congresspeople. If you are of the same mindset, I’ve added a link to the front page of this site called “Contact Your Congresspeople.” You should be able to use it to quickly find contact […]
The Federal Circuit Judicial Conference is approaching. It is scheduled for September 7th, 2022 in Washington, D.C. Here’s the agenda: 2022 JUDICIAL CONFERENCE Time Description Speakers 7:00 a.m. Check-in Breakfast 8:30 a.m. State of the Court and Welcome Kimberly A. Moore, Chief Circuit JudgeU.S. Court of Appeals for the Federal Circuit 8:45 a.m. Federal Circuit […]
One of the interesting aspects of the federal judiciary is that Article III judges sometimes sit by designation in courts other than their home court. From the Federal Circuit, Judge Dyk has sat by designation with the First Circuit on a regular basis. The Federal Circuit used to invite judges from other courts to sit […]
Judge Cunningham was confirmed by the Senate more than a year ago. It is interesting how limited an opportunity she has been given by her colleagues to write any patent opinions. The court issues so many Rule 36 opinions that Judge Cunningham has only had a chance to author a handful of patent/trademark opinions herself. […]
Judge Nina Wang was confirmed by the Senate last week as Colorado’s newest US District Court judge. Judge Wang has a good deal of patent law experience and has taught patent litigation and trial advocacy at the University of Colorado Law School. Here’s a link to an earlier post: [Link]. Here is an announcement: [Link]. […]
We are finally starting to get some insight into the behind the scenes operation (meddling?) in the management of PTAB panels. The Government Accountability Office has released a report with respect to the operation of the PTAB. One of the important facts revealed by the report is that: “the majority of judges (75 percent) surveyed […]
by Bill Vobach The US Solicitor General’s office has filed its brief in American Axle v. Neapco. The SG recommends that the Supreme Court grant certiorari in the case and asserts that the Federal Circuit was wrong in this decision. You can listen to the oral argument at the Federal Circuit here: You can review […]
Having recently attended a CLE about Alice and Electric Power Group, these bears try to scratch off the accompanying funk:
The oral argument of the day is an old one from the Ninth Circuit, Cetacean Community v. Bush, 386 F.3d 1169 (9th Cir. 2004). The case concerns whether Congress has the authority to grant animals standing to sue. You can listen to the oral argument here: One of the questions asked was how do animals […]
The quote for the day comes from Judge Newman’s dissent in In re Schreiber: I feel for those who tread the arcane path of patent soliciting, for this court’s insistence on the importance of the limitations in the claims seems to have lost its way. In re Schreiber, 128 F.3d 1473, 1480 (Fed. Cir. 1997).
I posted previously that the Supreme Court was construing a “use” based statute in LeDure v. Union Pacific Railroad Company. The Court announced this week that the Justices split 4-4 on the decision with Justice Barrett taking no part in the decision.
The oral argument of the day is from the Federal Circuit’s decision in the design patent case In re Surgisil, 14 F.4th 1380 (Fed. Cir. 2021). The Federal Circuit opinion is available here: [Link]. —————————————————————————————— If you were trying to recall the claim language in In re Schreiber (popcorn dispenser vs. oil can spout)– a […]
I ran across this article about the canons of claim construction. It is from back in 2005 and pre-Phillips; but, I thought it was pretty interesting. District court judges would probably enjoy it: [Link].
Under the statute it is the claims of the patent which define the invention. See White v. Dunbar, 119 U.S. 47, 51, 52; McClain v. Ortmayer, 141 U.S. 419, 423-425; The Paper Bag Patent Case, 210 U.S. 405, 419; Smith v. Snow, ante, p. 11. And each claim must stand or fall, as itself sufficiently defining invention, independently of the others. See Carlton v. Bokee, 17 Wall. 463, 472; Russell v. Place, 94 U.S. 606, 609; Leeds & […]
Independent and dependent claims must if possible be interpreted to be consistent with each other . . . . POWER PROBE GROUP, INC. v. INNOVA ELECTRONICS CORPORATION, 2021-2354 (Fed. Cir. April 12, 2022)(Judge Lourie writing for the court).
I thought it was interesting that the Supreme Court is entertaining a statutory construction case for a statute that centers around the construction of “use.” The case is LeDure v. Union Pacific Railroad Company. The Court heard oral argument this morning and the audio recording is available here: As you may recall, 35 U.S.C. §271(a) […]
I believe this is Judge O’Malley’s last week on the Federal Circuit. It is truly sad to see her retire. I hope some of the bigger blogs will reflect on her service on the court. Some comments from her former clerks would be particularly interesting to read. I’m sure they could salute her service better […]
by Bill Vobach The Federal Circuit recently took a case en banc in Taylor v. McDonough, which was argued earlier this month. The court’s sua sponte order of en banc review asked the parties to discuss a decades-old Supreme Court opinion that has never been cited by the Federal Circuit (as far as I can […]
If you’re like me, you’ve probably been pondering the integrity of the electric power grid today. The Federal Circuit had an opportunity to encourage innovation in protecting the integrity of the nation’s infrastructure in Electric Power Group, LLC v. ALSTOM SA, 830 F.3d 1350 (Fed. Cir. 2016) — and passed. I wonder if the invention […]
I think there is an impression among patent attorneys that the Supreme Court is keeping watch over them, their wily ways, and any linguistic attempts to evade Supreme Court precedent. (In actuality, I think the Supreme Court has historically had its eye on clever draftsmanship in multiple areas of the law.) Well, If the above […]
Since patent attorneys are wordsmiths, I thought some of you might like this quote that I saw today. Language makes infinite use of finite media. Wilhelm von Humboldt
by Bill Vobach I was checking the on-line list to see if any more Federal Circuit judges were taking retirement and noticed that Magistrate Judge Nina Wang for the U.S. District of Colorado has been nominated for a seat on the U.S. District Court in Colorado. When Judge Wang was in private practice here in […]
by Bill Vobach The Federal Circuit sat en banc last week via telephone in Taylor v. McDonough. This case is an appeal from the U.S. Court of Appeals for Veterans Claims. The factual background is quite fascinating and in a nutshell concerns a denial of benefits to a veteran who signed a secrecy oath during […]
But “[t]he inventor’s own path itself never leads to a conclusion of obviousness; that is hindsight. What matters is the path that the person of ordinary skill in the art would have followed, as evidenced by the pertinent prior art.” Otsuka Pharm. Co., v. Sandoz, Inc., 678 F.3d 1280, 1296 (Fed. Cir. 2012). Given the record on […]
The field of art here, computer-aided design, is unusually complex, involving methods of using computer systems to build geometric objects. Nature Simulation Systems, Inc., v. Autodesk, Inc., 2020-2257 (Fed. Cir. January 27, 2022)(Judge Timothy B. Dyk in dissent).
by Bill Vobach The FedCircuitBlog has an interesting post, including some briefs, on next week’s oral argument in SAS Institute Inc. v. World Programming Ltd. The appeal has attracted ten amicus briefs. Check out the article [here]. I will try to update my post with the recording of the oral argument next week. _______________________________________________________________ Update […]
I haven’t written the wrong date on any checks this year — yet. But it is comforting to know that even the Federal courts have the same problem that most of us do this time of year.
by Bill Vobach It appears that the USPTO currently designates about 101 opinions of the Board as precedential. There are also a good number of informative opinions. It occurs to me that an interesting seminar topic (e.g., for a Strafford program) might be summarizing the more interesting of these opinions, particularly the ones that apply […]
by Bill Vobach Do you find it a little bit annoying that the Federal Circuit does not provide hyperlink(s) to the PTO website for the patent(s) at issue in a case? How often do you begin reading a Federal Circuit opinion (from the Federal Circuit website) with a limited reproduction of the claims and feel […]
by Bill Vobach I was tickled to see that the SMU Dedman School of Law’s Tsai Center for Law, Science, and Innovation has posted to its YOUTUBE channel some of the panels from its Fall 2021 Symposium on patent law. Below is the panel discussion of the Supreme Court’s opinion in Arthrex: I was interested to […]
by Bill Vobach The quote for the day comes from the recent Moore/Lourie/Dyk opinion in Mentone Solutions LLC v. DIGI International, Inc. The panel reversed Judge Stark of the District of Delaware with respect to his ruling of patent ineligibility. Judge Moore writing for the court noted: The district court held that claim 5 was […]
by Bill Vobach I struggle to understand how the Federal Vacancies Reform Act (FVRA) can authorize a temporary head of the USPTO, who is acting without Senate confirmation, to oversee PTAB decisions. If decisions of the PTAB must be overseen by a principal officer in view of the Appointments Clause of the Constitution, it seems […]
Have you noticed that in recent opinions the Federal Circuit seems to have adopted the “(cleaned up)” citation when citing “busy” sources. The “(cleaned up)” citation allows a writer to make an argument more forcefully by eliminating some of the distracting citation details that have traditionally been involved in legal writing. For more details, here […]
I believe Monday was the first time that Judge Tiffany Cunningham has sat for oral argument as the Federal Circuit’s newest judge. In her initial panel, she was paired with the Chief Judge and Judge Dyk. I’m not sure if that pairing was the Federal Circuit’s version of hazing or of moral support. Judge Cunningham […]