February 24th, 2014
After reading all 88 pages of this very scholarly opinion which left patent law right where it was post-Cybor – no matter how much weight the parties and amici felt stare decisis deserved – I went back and read Judge Lourie’s concurrence. It is mercifully brief and tries to cast some of the substantive issues in real-world contexts. He writes like a “Dutch uncle” – which the dictionary defines as one who “admonishes sternly and bluntly.” Whether or not you agree with his conclusions, he gets his points across like arrows in “The Hunger Games.”
He reduces the debate about the proper reading of Markman II simply by saying that the distinction between calling claim interpretation a “question of law” vs. a “question for the court” is not a substantial one. Whether or not the Supreme Court will disagree if cert. is granted is a question for another day.
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February 21st, 2014
On Friday, a narrow majority of the Fed. Cir. sitting en banc, reaffirmed that claim interpretation is a question of law, to be reviewed de novo upon appeal to the Fed. Cir. (A copy of the decision can be found below.) Judge Newman, for once writing for the majority, ruled that the weight of stare decisis tipped the balance toward not overturning the 1998 Cybor decision, also en banc, which established the de novo standard. Judge Newman wrote that Cybor properly implemented the Supreme Court’s ruling in Markman II (1992) that claim construction is a question of law, and not a question of fact or even a mixed question of law and fact.
She noted the difficulty the Fed. Cir. would face if it had to decide that “a fact was at issue” in any district court ruling on claim interpretation and noted that Cybor did not displace the lower court’s power to rule on many other issues, such as infringement, validity and damages.
Pens will be flying across the law review and blogoshere spaces for years analyzing this decision and I have not had time to read all of it this morning, but the traditional closing of “more later” is certainly an understatement.
February 10th, 2014
Ex-Judge Michel’s compelling amicus brief – more on that in a future post—prompted me to take a quick look back at the evolution “abstract idea” as a patent-ineligible category of invention. This category of patent-ineligible invention is listed, along with laws of nature and physical phenomena, in Diamond v. Chakrabarty, but the Supreme Court, unfortunately did not provide any examples of abstract ideas.
Fast forward 28 years to In re Bilski, 545 F.3d 943 (Fed. Cir. 2008). The court was deciding whether or not a straightforward claim to hedging risk in commodity markets was patent-eligible subject matter. The divided majority held that the claim failed the machine-or-transformation test and so was not, but it is Judge Rader’s dissent that deserves attention. He concluded that Bilski’s claim fell outside of patent-eligible processes because it “facially abstract.” He wrote:
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January 30th, 2014
Although some have criticized this law as distracting public colleges from their true calling of generating knowledge (unless it supports global warming or evolution ), this mapped out summary (link below) of only some of patents licensed under Bayh-Dole demonstrates how the commercialization of government-funded research has both helped fund further cutting edge research and created jobs where no one knew there was even an industry.
University Research In The Marketplace