EditorsAbout the SiteComes vs. MicrosoftUsing This Web SiteSite ArchivesCredibility IndexOOXMLOpenDocumentPatentsNovellNews DigestSite NewsRSS

08.20.17

The Federal Circuit Has Become the Go-To Place For Patent Appeals Arising From USPTO Errors

Posted in America, Courtroom, Patents at 7:19 am by Dr. Roy Schestowitz

Knit US flagSummary: Patent appeals that come to CAFC as a result of bad Patent Office decisions now outnumber the appeals coming from district courts (an extraordinary situation)

THE Court of Appeals for the Federal Circuit (CAFC) is the court which deals with many patent lawsuits and is one level below the Supreme Court. It’s the court which brought software patents to the US, but it’s also the court which now (after Alice at Supreme Court level) invalidates many of these, more so than district (lower) courts do, pro rata.

CAFC is essential to our understanding of US patent law. Litigation is down sharply in the US, at least when it comes to patent litigation, and trolls too are a dying (albeit not dead) breed.

In our efforts to keep abreast of CAFC, this past week we learned about its decision on patents pertaining to chemicals [1, 2] and found this article from James P. Cleary and Paul Brockland of Mintz Levin Cohn Ferris Glovsky and Popeo PC. This new reports confirms to us that the USPTO process is being further restricted/limited by courts:

Though the Federal Circuit’s decision extended waiver to post-merger communications in this case, waiver may not apply in many post-merger discussions. For instance, the Federal Circuit emphasized limiting the scope of waiver based on subject matter and fairness. Accordingly, although attorney submissions during patent prosecution may result in waiver, such waiver is less likely to extend to subsequent patent owners or later discussions with trial counsel. However, waiver may extend if a court finds the application and patent prosecution disclosures were made with an eye toward litigation.

Put in simple terms, submissions to the US patent office regarding legal waivers would be fewer. This might be applicable if, for example, a company like Red Hat gets sold with its patents.

In another new post, this one about Prism (mentioned here a few days ago), it says that the “Federal Circuit has denied Prism Tech‘s petition for en banc rehearing on the question of deference to district court factual-findings that underlay a decision on patent eligibility.”

Jason Rantanen, a Professor at the University of Iowa College of Law, took stock of CAFC decisions and said: “Given the increase in appeals from the PTO over the past few years, this graph is not all that surprising–but it’s still quite dramatic. As of mid-2017, the number of decisions in appeals arising from the PTO has exceeded the number of decisions from the district courts for the first time in the history of the Federal Circuit to my knowledge.”

Yes, and hence the importance of the CAFC’s pattern of decisions. As CAFC is a lot more likely to invalidate software patents (than district courts), this is good news too.

As patents and misconduct go hand in hand sometimes (we covered some examples of that), worth noting is the following report also:

Inequitable conduct in failing to disclose a reference is a defence to patent infringement that requires a showing of the materiality of a withheld reference and specific intent to deceive the US Patent and Trademark Office (USPTO) by withholding the reference during prosecution of the patent application. If proven, inequitable conduct renders the entire patent unenforceable.

In Regeneron Pharmaceuticals, Inc v Merus NV the Federal Circuit surprisingly affirmed that specific intent to deceive the USPTO can be inferred as a result of misconduct during a patent infringement lawsuit, even if such misconduct occurs several years after prosecution of the patent.

The basis for dismissing patent lawsuits seems to have become broader. CAFC in particular seems intolerant of anything that deems patents questionable.

There are exceptions, however, and one of these was covered a few days ago in relation to “programmable operational characteristic” in hardware. In this case, CAFC actually overturned a district court’s judgment in favour of patents, so Patently-O was quick to (cherry-) pick it:

In a split opinion, the Federal Circuit has sided with the patentee and reversed a the [sic] district court judgment that Visual Memory’s patent claims improperly encompass an abstract idea. The opinion filed by Judge Stoll was joined by Judge O’Malley. Judge Hughes wrote in dissent.

Claim 1 of asserted U.S. Patent No. 5,953,740 is directed to a “computer memory system” that includes a “main memory” and also a “cache” both connected to a bus that can then be connected to a processor. The inventive element, is that the cache’s operation is programmable – allowing it to work efficiently with different processors. The claim particularly requires “a programmable operational characteristic of said system determines a type of data stored by said cache.” In the words of the court, “the memory system is configured by a computer to store a type of data in the cache memory based on the type of processor connected to the memory system.”

We remind readers that CAFC was historically very problematic when it comes to patent because it facilitated an explosion in the number of patents. However, the Supreme Court overturned CAFC almost every time in recent years. We hope that CAFC is learning its lessons and correcting its ways to avoid any further embarrassments, namely the Justices calling CAFC out.

It’s time to help the patent bubble implode. It does nobody (except the patent ‘industry’) any favours.

Share this post: These icons link to social bookmarking sites where readers can share and discover new web pages.
  • Digg
  • del.icio.us
  • Reddit
  • co.mments
  • DZone
  • email
  • Google Bookmarks
  • LinkedIn
  • NewsVine
  • Print
  • Technorati
  • TwitThis
  • Facebook

If you liked this post, consider subscribing to the RSS feed or join us now at the IRC channels.

Pages that cross-reference this one

What Else is New


  1. Brand Dilution in Action

    Microsoft's proprietary software which spies on people and businesses is getting a "free ride" on the "Linux" brand; and nobody seems to care, nobody seems to notice how perverse that it



  2. At the EPO Money -- Not Quality -- is King

    Financiers are ruining quality



  3. The EPO's Strategic Failure 2023

    Potemkin social dialogue



  4. IRC Proceedings: Wednesday, December 11, 2019

    IRC logs for Wednesday, December 11, 2019



  5. EPO Promoting Software Patents in Countries Where These Are Illegal

    The EPO's vision of 'unitary' software patents (patents on algorithms in countries that disallow such patents, as per their national laws) won't materialise, but in the meantime a lot of Invalid Patents (IPs) are granted in the form of European Patents (EPs) and this is wrong



  6. We Support GNU and the FSF But Remain Sceptical and Occasionally Worry About an RMS-less FSF

    Richard Stallman (RMS) is not in charge of the FSF anymore (it's Stallman who created the FSF) and there's risk the decisions will be made by people who don't share Stallman's ethics or the FSF's spirit



  7. Links 11/12/2019: Huawei Lobbied by Microsoft (Because of GNU/Linux) and Microsoft Still Googlebombs Linux to Promote 'Teams'

    Links for the day



  8. Links 11/12/2019: Edge Native Working Group, CrossOver 19.0 Released

    Links for the day



  9. Instead of Fixing Bug #1 Canonical/Ubuntu Contributes to Making the Bug Even More Severe (WSL/EEE)

    Following one seminal report about Canonical financially contributing to Microsoft's EEE efforts — celebrated openly by GNU/Linux opponentsclosing bug #1 Ubuntu basically decided not that it was fixed but that it would no longer attempt to fix it (“wontfix”)



  10. IRC Proceedings: Tuesday, December 10, 2019

    IRC logs for Tuesday, December 10, 2019



  11. Today's Example of Microsoft's Faked 'Love'

    “On 7 September 2017, users began noticing a message that stated “Skype for Business is now Microsoft Teams”. This was confirmed on 25 September 2017, at Microsoft’s annual Ignite conference,” according to Wikipedia



  12. Links 10/12/2019: Kubernetes 1.17, Debian Init Systems GR

    Links for the day



  13. 'Cancel Culture' as 'Thoughtpolice' Creep

    Richard Stallman spoke about an important aspect of censorship more than 2 decades ago (before “Open Source” even existed); it was published in Datamation (“Censoring My Software”) 23 years before a campaign of defamation on the Internet was used to remove him from MIT and FSF (censoring or ‘canceling’ Stallman himself)



  14. Microsoft Still Hates GNU/Linux and Mark Shuttleworth Knows It (But He is Desperate for Money)

    We're supposed to believe that a PR or image management (reputation laundering) campaign alone can turn Microsoft from GNU/Linux foe into friend/ally



  15. Actions Against EPO Corruption and Unitary Patent (UPC) Injustice/Lobbying

    The EPO is apparently going on strike again and an action against the UPC is scheduled for later this week (protest in Brussels)



  16. “The Fifth Freedom as a Meme”

    The issue with systemd (or SystemD) has provoked or at least stimulated discussions about the limits of the famous Four Freedoms



  17. IRC Proceedings: Monday, December 09, 2019

    IRC logs for Monday, December 09, 2019



  18. Demonstration Against Unitary Software Patents, Thursday 12 Dec in Brussels

    FFII's call to demonstrate against the UPC



  19. Links 9/12/2019: China on GNU/Linux, Canonical Wants Help to Improve Ubuntu

    Links for the day



  20. Links 9/12/2019: Linux 5.5 RC1, EasyOS Buster 2.1.9

    Links for the day



  21. IRC Proceedings: Sunday, December 08, 2019

    IRC logs for Sunday, December 08, 2019



  22. Mandatory Education for Those Who Use and Misuse Buzzwords Would Go a Long Way

    In an age of substitution — where marketing terms replace meaningful words and concepts — it has gotten more difficult to have honest debates, for example about the scope of patents



  23. Once Upon a Time Banter Was Allowed on Mailing Lists

    Hours ago Torvalds announced RC1 of the next Linux (kernel) release; it has been a while since he last said something ‘controversial’ (following his month at the penalty box); free speech deficit can make us weaker, not stronger (advantage to those who work in the dark)



  24. Links 8/12/2019: Debian Init Systems GR, NomadBSD 1.3

    Links for the day



  25. Can We Quit Celebrating DRM in GNU/Linux?

    Over the past couple of days various news sites and "Linux" sites expressed great satisfaction [1-5] over the passive embrace of Disney's DRM ploy (Disney+), even when Disney itself rejects DRM, seeing the harms practically caused by it [6,7]



  26. You Know WSL is Bad for GNU/Linux Because Anti-Linux People, Microsoft and Its Propagandists, Want People to Use That

    Microsoft and its boosters (and media partners) haven’t grown tired of spreading falsehoods to stigmatise and take control of GNU/Linux by creating their own versions and traps for it



  27. IRC Proceedings: Saturday, December 07, 2019

    IRC logs for Saturday, December 07, 2019



  28. 5 Years Ago the Linux Foundation Turned Linux.com Into a Non-Linux Site

    One can leverage the Internet Archive’s Wayback Machine to better understand how, over time, the Foundation called “Linux” deviated or diverged away from its mission statement for the sole purpose of raising corporate funds and selling influence to corporations (passing the community’s hard work to them — a form of tacit privatisation)



  29. Microsoft Redefining Ownership and Identity of GNU/Linux

    The idea that “Microsoft loves Linux” is as insane as it gets; but the lie which is “Microsoft loves Linux” is a powerful enabler of Microsoft entryism, e.g. if Greg steps down, does a Microsoft employee become the deputy of Linus Torvalds?



  30. Things That Cannot Be Said

    The limits on what we can say are mostly defined by what sources permit us to say publicly (for the sake of source protection)


RSS 64x64RSS Feed: subscribe to the RSS feed for regular updates

Home iconSite Wiki: You can improve this site by helping the extension of the site's content

Home iconSite Home: Background about the site and some key features in the front page

Chat iconIRC Channel: Come and chat with us in real time

Recent Posts