Recording of CAFC Oral Arguments for Richard A. Williamson v. Citrix Online, LLC (2017-03-06)
Via the 717 Madison Place blog, with full recording of the oral arguments found here. Interesting comments from Judge Moore at 5:00-5:30, and 15:10-15:20 of the recording.
Can it be reasonably argued that the “general purpose computer” under 101 jurisprudence is a myth? Doesn’t every computer become a specialized machine upon being programmed differently?
“The Band Who Must Not Be Named” – The Slants
Attorney AJ Wenn of Ward Law Office had the distinct pleasure of meeting The Slants yesterday evening, at an event hosted by the Cleveland Intellectual Property Law Association (CIPLA).
The Slants are an Asian American band involved in the recent Supreme court case of Lee v. Tam. In this case, Simon Tam sought to register a trademark on his band name “The Slants.” The USPTO refused after finding that the mark is disparaging toward individuals of Asian ancestry. The case may determine the constitutionality of Section 52(a) of the Lanham Act, which prevents the federal registration of “disparaging” trademarks.
Congratulations to CIPLA for hosting an exciting and informational event!
Octane Fitness, LLC v. ICON Health and Fitness, Inc. and Highmark, Inc. v. Allcare Health Mgmt. Sys. Inc.
The determination of whether a case is “exceptional” under the attorney fee-shifting provision of The Patent Act is left to a broad discretion of the District Court.
In two slip opinions rendered April 29, 2014, SCOTUS addressed issues regarding awarding attorneys fees under 35 U.S.C. § 285 to prevailing parties in “exceptional” patent infringement cases. Under 35 U.S.C. § 285, a District Court is authorized to award attorney’s fees to prevailing parties in “exceptional cases.” The CAFC had used a Brooks Furniture standard defining an “exceptional case as one which involves “material inappropriate conduct” or is both “objectively baseless” and “brought in subjective bad faith.” Under the Brooks Furniture standard, an exceptional case must be established by clear and convincing evidence.
OCTANE FITNESS
In the opinion delivered by Justice Sotomayor, the Court, in a 9-0 decision, construed the term “exceptional” in its plain and ordinary meaning and held that exceptional means “uncommon,” “rare,” and “not ordinary.” The Court held that the CAFC has applied too rigid of a standard in determining whether a case is an exception case and rejected the Brooks Furniture standard.
According to Justice Sotomayor, the § 285 statute is “patently clear” and imparts flexibility on the District Court to decide whether a case is exceptional. Octane, slip op. at 7. “[A]n ‘exceptional’ case is simply one that stands out from others with respect to the substantive strength of a party’s litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated.” Id. at 7-8. Therefore, the intent of the statute only requires that the litigation present either subjective bad faith or exceptionally meritless claims. Additionally, the Court held that a preponderance of the evidence standard is the appropriate standard to use to establish entitlement of fees, rather than a clear and convincing evidence standard. Id. at 11.
Reversed and Remanded
HIGHMARK
In this opinion, also delivered by Justice Sotomayor, the Court used the Octane case as precedent to unanimously hold that “an appellate court should apply an abuse-of-discretion standard in reviewing all aspects of a district court’s § 285 determination.” Highmark, slip op. at 5.
Vacated and Remanded
The Octane opinion can be found here and the Highmark opinion can be found here.
Note: The holdings in these cases, relaxing the standard required for district courts to determine whether a case is “exceptional” may aid in thwarting certain “patent trolls” from asserting patent claims that are meritless or brought in bad faith. Stay tuned to see how these rulings affect the litigation process, the legislative process regarding patent reform, and if the holdings will actually send the trolls back under the bridge or if the trolls will just find another way out.
Alice Corp. v. CLC Bank Int’l: Notable Quotes from the Oral Arguments.
The link to the transcript for the March 31, 2014 oral arguments before the SCOTUS in Alice Corp. v CLC Int’l can be found here.
Background: Alice Corporation, petitioner, owns the four patents-in-suits which are directed toward a computerized trading platform for the execution of a previously agreed-upon exchange, known as “settlement.” The inventions include electronically maintained accounts for each party in the settlement and after receiving transactions from each party, the computer system effects the exchange. The United States District Court for the District of Columbia declared each of Alice’s patents invalid for not defining patent-eligible subject matter. The U.S Court of Appeals for the Federal Circuit affirmed the decisions, in an en banc rehearing.
Issue: Whether claims to computer-implemented inventions – including claims to systems and machines, processes, and items of manufacture – are directed to patent-eligible subject matter within the meaning of 35 U.S.C. § 101 as interpreted by this Court.
Per usual, we will preface our thoughts with the following disclaimer: “It is generally a futile effort to predict how the Supreme Court will rule on any given issue.” That being said, below are some quotes that we found of particular interest:
Hyatt v. USPTO – Procedural Limbo in the Patent Process?
(Photograph Courtesy of Gilbert P. Hyatt)
Gilbert P. Hyatt v. USPTO (D. Nevada 2014)
We recently had an opportunity to speak with Mr. Gil Hyatt. Gil is a well-known and prolific inventor in early computer technology, being named on more than 70 issued patents. Over the years, he has also been a successful litigant in many patent-related matters. As recently as 2012, Gil prevailed in a case at the U.S. Supreme Court against the U.S. Patent and Trademark Office (USPTO).
On January 3, 2014, Gil filed a complaint against the USPTO relating to two appealed patent applications. The appealed patent applications have been pending at the USPTO since the early 1970s, i.e., over 40 years. Gil alleges that the delay of the USPTO in these appealed patent applications is unreasonable under the Administrative Procedure Act, 5 U.S.C. § 701(1).
As a patent practitioner, the facts of this case are quite shocking. According to USPTO statistics, the typical amount of patent pendency is 28.3 months. This means that, if an inventor were to file a patent application today, the inventor would normally expect to receive a patent in about 2-1/2 years. Gil’s patent applications have been pending for 16x longer than is normal.
According to Gil’s complaint, the USPTO has engaged in “a deliberate strategy to deny him adjudication of his pending patent applications.” In both cases, the USPTO has apparently furnished no written answer to the filed appeal briefs, and no decision has been made by the Appeal Board. Many formal petitions for action on the merits and requests for status updates have purportedly been filed by Gil, also to no avail. A number of interviews with USPTO officials have also taken place, allegedly without resulting in any action.
These conversations with USPTO officials have also caused Gil to believe that the USPTO is intentionally refusing to grant any more patents to him. Indeed, no patent has issued to Gil since 1997. According to the complaint at paragraph 46:
During an in-person conference with the Director of the Technology Center responsible for examination of Mr. Hyatt’s patent applications – which is documented in the record of two of Mr. Hyatt’s patent applications – Mr. Hyatt pointed out “the scenario of applications going round and round from the examining groups to the Board and then back to the examining groups and then back to the Board.” The Director confirmed that this was the policy that the PTO was pursuing toward him.
The Hyatt patent applications apparently exist in a state of procedural limbo at the USPTO. There is no doubt that this situation is quite unusual. However, since his patent applications are not published, the “file wrappers” or official records of actions taken by both Gil and the USPTO remain secret at this time. There is also no way of knowing the importance of the inventions being claimed, or the general impact that the patents would have if they were to issue. We will be following this case closely, and are most interested in reading the USPTO’s answer to the complaint when filed.
For other articles on Mr. Gilbert P. Hyatt, and his actions in court and at the USPTO, see the following links:
http://articles.latimes.com/keyword/gilbert-hyatt
Importance of Design Patents in the Recent Apple-Samsung Litigation.
An interesting article at Forbes yesterday, on the increasing importance of design patents for technology companies. Highly suggested read.
Bilski v. Kappos: Notable Quotes from the Oral Arguments.
The link to the transcript for the November 9th oral arguments before the SCOTUS in Bilski v. Kappos can be found here.
Per usual, we will preface our thoughts with the following disclaimer: “It is generally a futile effort to predict how the Supreme Court will rule on any given issue.” That being said, below are some quotes that we found of particular interest:
Scheduled SCOTUS Oral Arguments in Bilski v. Kappos – November 9, 2009.
Oral arguments in Bilski v. Kappos are scheduled for today, November 9, 2009. Previous AT! coverage of Bilski here, here, here, and here.
In short, the CAFC in Bilski has held that business methods are not patentable unless they satisfy the machine-or-transformation test. In other words, patentable business methods must either: 1) transform matter into a different state or thing, or 2) be tied to particular machine. The Bilski decision expressly held inadequate the 1998 ruling in State Street Bank, which had established that business methods were patentable if they produced a “useful, concrete, and tangible result”.
The questions presented in the petition for U.S. Supreme Court review were:
1. Whether the Federal Circuit erred by holding that a “process” must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing (“machine-or-transformation” test), to be eligible for patenting under 35 U.S.C. § 101, despite this Court’s precedent declining to limit the broad statutory grant of patent eligibility for “any” new and useful process beyond excluding patents for “laws of nature, physical phenomena, and abstract ideas.”
2. Whether the Federal Circuit’s “machine-or-transformation” test for patent eligibility, which effectively forecloses meaningful patent protection to many business methods, contradicts the clear Congressional intent that patents protect “method[s] of doing or conducting business.” 35 U.S.C. § 273.
Further details on Bilski v. Kappos may be found via the SCOTUS Wiki here. A transcript of the oral arguments will follow, as soon as available.
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