Posts in Courts

Arbitrary and Capricious: Exploring Judge Lourie’s flip-flop in Ultramercial

It would be extremely unsettling if the Supreme Court has weakened Judge Lourie’s resolve to independently and properly interpret the Patent Act. If there is another explanation for his flip-flop on matters of patent eligibility I would love to hear it, but so far an explanation for diametrically different opinions has not been forthcoming. I don’t expect Judge Lourie to make a speech or hold a press conference like a politician, but if he is going to make diametrically opposite decisions in the same case, on the same facts, relating to the same claims, he owes litigants and the industry an explanation. Without an explanation it makes the entire process seem nothing more than arbitrary and capricious.

CAFC Affirms PTAB in First Inter Partes Review Appeal

Writing for the panel majority, Judge Dyk, who was joined by Judge Clevenger, explained that regardless of whether the USPTO properly should have instituted an IPR, the decision of the USPTO could not be reviewed or challenged even after a completed IPR proceeding. Further, the CAFC found that the broadest reasonable interpretation standard is appropriate in IPR. Judge Newman dissented.

District Courts should have more discretion to enhance patent damages

Infringers should not be able to arrogantly and recklessly violate patents for years but ultimately pay only the same amount they would have paid the patent owner for a license in the first place. Currently, however, that is the situation that exists, because an infringer can avoid being stuck with enhanced damages if the infringer’s attorneys, for the first time in the litigation, raise a newly-devised (but ultimately incorrect) argument that the patent is invalid or not infringed, even if this was not the actual reason why the infringer refused to take a license years earlier.

Halo v. Pulse – Progress on Willful Infringement Law at Risk?

While there are several facets of willful infringement law that the Halo concurrence would have the full court reconsider, the one that could have the greatest impact, and potentially unwind the patent reform gains made by Seagate, is the substantive test for award of enhanced damages under 35 U.S.C. § 284 for willful infringement.

Supremes end Federal Circuit love affair with de novo review

The United States Court of Appeals for the Federal Circuit has had a very long love affair with de novo review, a standard whereby the reviewing appellate court can simply do whatever they want without giving any deference to the district court judge or the jury. It isn’t much of an exaggeration to say that the Federal Circuit does what they want, when they want, how they want, and they have rarely let the standard of review get in the way. That was until today. Assuming the Federal Circuit follows the Teva decision as they are supposed to and as they have mindlessly followed other recent Supreme Court decisions in Myriad, Mayo and Alice, the Federal Circuit’s application of the de novo review standard to everything will come to an abrupt end.

Patent reform should focus on complaint sufficiency, not substantive patent law

Congress won’t accomplish much, if anything, if it gets mired in the substance of patent law during the inevitable patent reform cycle in the 114th Congress. Similarly, vilifying all innovators as if everyone who owns a patent is somehow evil and a patent troll will only work to divide the industry, and likely divide enough Senators to make getting anything enacted a virtual impossibility. But if Congress decides to focus on process, procedure and non-substantive patent matters like fraudulent and misleading demand letters, real reform is not only possible but likely. Further, by focusing on process and procedure anything that does get done would improve the patent system, won’t harm innovators and would strike a significant blow against the business model employed by the abusers.

A Software Patent Setback: Alice v. CLS Bank

Truthfully, the Supreme Court decision in Alice can only be described as an intellectually bankrupt. The Supreme Court never once used the word “software” in its decision. The failure to mention software a single time is breathtaking given that the Supreme Court decision in Alice will render many hundreds of thousands of software patents completely useless. Ironically, at the end of the day, software patent claims written in typical, industry standard format will result in patent ineligible claims. Yet, at the same time, business methods are patentable. To call this bizarre and inconsistent doesn’t begin to scratch the surface.

Working toward settlement where reasonably possible

It’s important, particularly for technology companies in fast moving industries, to keep their eyes focused on the future and competing in the marketplace rather than focused on the past and competing in the courtroom, other than in a small number of cases where that focus really is absolutely necessary… When we deal with nonpracticing entities in mediation, we have to take them seriously. They are the parties to the lawsuit. They operate the kinds of businesses that they operate. They take positions and have underlying interests that need to be acknowledged as real and sincere. And the parties opposing the nonpracticing entities have to deal with them straight up and sometimes make some difficult decisions as to whether to settle and how much money to pay.

A Software Patent History: SCOTUS Decides Bilski

The Supreme Court held that the machine-or-transformation test is not the sole test for patent eligibility under §101, and that the Federal Circuit erred when it ruled that it was the singular test to determine whether an invention is patentable subject matter… As we leave Bilski we knew, or thought we knew, that 8 out of 9 Justices of the United States Supreme Court had agreed that at least some software is patentable.

Form Over Substance: CAFC Kills Patent Due to Paralegal Mistake

Every once in a while you stumble across a situation where what is fair seems obvious. At those moments we are all too frequently reminded that we do not have a fairness system, but rather we have a justice system. Which is one way to say that I think the Federal Circuit made a terribly poor decision; one that flies in the face of common sense, and frankly common decency. If the legal system cannot fix a mistake like this before the mistake has even been made public then the system is broken

Federal Circuit Finds Software Patent Claim Patent Eligible

Of particular interest, the Federal Circuit found that the ‘399 patent constituted patent eligible subject matter, was not invalid and was infringed. This is big news because in the wake of the Supreme Court’s decision in Alice v. CLS Bank software patents have been falling at alarming rate. Assuming this decision stands any further review we finally have some positive law to draw from that will provide clues into how to tailor patent claims to make them capable of overcoming what has become a significant hurdle to patentability— namely the abstract idea doctrine. Of course, Judge Mayer was in dissent.

Collateral Estoppel Applies to Reexam Claim

The Federal Circuit held that the district court correctly applied collateral estoppel to the ’774 patent because reexamined claim 33 contains the same memory limitation previously found in claims 1 and 19, and because the ’774 patent reexamination never addressed that limitation or the presence of RAM. Instead, the reexamination focused exclusively on a limitation in claim 33 that is completely unrelated to the sole memory limitation, which made claim 33 identical to claims 1 and 19, which had already been construed, at least insofar as the presence of RAM was concerned. The Federal Circuit did, however, point out that this ruling should not be construed to stand for the proposition that a reexamination prosecution history could not create a new issue that would preclude the application of collateral estoppel.

Nonprecedential Federal Circuit Decision Generates a Dissent

I would have to think that this decision, which required the Federal Circuit to construe claim terms, would have to be presidential in at least some ways, unless the outcome in this case will not have any implication for the claims themselves or the patent. I guess I just don’t understand the concept of a nonprecedential claim construction. I cannot fathom a nonprecedential order in a real property boundary dispute. The whole point of suing over real property is to get a decision that is binding. Patents are property and it strikes me that the definition of the metes and bounds of what is covered in the claim really has to be presidential. If it isn’t presidential what is the point? This type of disposition is what leads to patent claims being construed to mean one thing in one case and another thing in another case. It is frustrating.

A Rush to Judgment on Patentable Subject Matter

In the latest decision (“Ultramercial-3”), the panel reached the opposite conclusion and affirmed the dismissal. This apparent turnaround was based on two intervening events: (1) the Supreme Court’s Alice decision in June; and (2) the fact that Chief Judge Rader was no longer on the court, and his place on the panel was taken by Judge Mayer. Much has, and will be, written about the first of these factors, so I would like to focus on the second, and in particular, the diametrically opposed views of Judges Rader and Mayer on a very important procedural issue; namely, whether the lack of patent-eligible subject matter should be a basis for dismissing a case at the outset based only on the “intrinsic” evidence, i.e., the patent itself and its prosecution history in the USPTO, without any discovery, expert testimony and/or claim construction.

Ultramercial Patent Claims Invalid as Abstract Ideas

While there can be disingenuous arguments made about the abstractness of a media product or a sponsor message, who in their right mind could ever even suggest that “an Internet website” is abstract? Is “an Internet website” abstract? Is the “general public” abstract? Is a consumer abstract? Contemplate these questions as you, a member of the general public continues to read this article on this Internet website! We apparently have jumped the shark and turned the law of software patent claims into a useless, ridiculous philosophy assignment that asks whether something that clearly exists doesn’t exist. So are you, a consuming member of the general public who reads Internet websites real, or are you abstract?