Is the Federal Circuit Really Worse Than the Cubs?

By Jason Rantanen

Yesterday, following the Supreme Court’s unanimous reversal of the Federal Circuit in Nautilus and Limelight, Vera Ranieri of the Electronic Frontier Foundation observed that:

These rulings mean that the Federal Circuit has been unanimously overruled in every single patent case heard by the Supreme Court this term. Since there have been five decisions, the Federal Circuit is now an extraordinary 0-45 in supporting votes by Supreme Court justices this year. Even the Chicago Cubs have a better record than that.

Vera Ranieri, Supreme Court Overrules Federal Circuit Again. And Again. (June 2, 2014).

Ranieri has a point: the Supreme Court has not been kind to the Federal Circuit this term.  Worse than the record on these five decisions (Highmark, Octane Fitness, Medtronic, Nautilus, and Limelight), some of the Court’s comments are harshly critical of the appellate court.  As Dennis noted yesterday, in Limelight the Court wrote that “The Federal Circuit’s analysis fundamentally misunderstands what it means to infringe a method patent.”  By such measures it appears that the Federal Circuit does not currently have much credibility with the Court.

These are bleak numbers indeed, but some context is important.  First, consider that even as the Supreme Court has reversed on these five cases, it also has denied certiorari in other petitions arising from the Federal Circuit (If anyone has solid figures on these, I’d love to see them).  These petitions were vigorously pursued, often with the support of amicus.  So it’s not as if the Federal Circuit is always “losing.”

In addition, it’s important to keep in mind the broader picture: so far this term, the Supreme Court has reversed in 77% of all merits decisions except those arising from the Federal Circuit.  Last year, the Court’s final reversal rate was 72%. (source: SCOSTUSBLOG).  So that the Federal Circuit went 0 for 5 (two of which, Octane Fitness and Highmark, were a linked pair) doesn’t mean that the sky is falling.  And since 2010, the Federal Circuit has actually done fairly well: out of the 13 patent cases arising from the Federal Circuit since Bilski v. Kappos, the Supreme Court has affirmed the outcome in whole or part 7 times.

Even if these figures told the entire story on reversals, however, it’s not as if the Federal Circuit presently speaks with one voice, if it ever did.  It is full of disuniformity, with multiple viewpoints that are at odds with one another.  Given this disuniformity, it should not be surprising that two of the five cases in which the Court reversed the Federal Circuit involved a highly fractured court (Highmark and Limelight).  In these cases, the Court did not reverse a unanimous Federal Circuit, but rather settled a deep intra-circuit divide.  (Nautilus involved a concurrence by Judge Schall, but he agreed with the legal standard for indefiniteness applied by the majority).

Both Highmark and Limelight illustrate this point well: in Highmark, 5 of the 12 judges on the Federal Circuit favored a deferential standard for exceptional case determinations, an approach ultimately adopted by the Court.  Likewise, in Limelight the Supreme Court essentially agreed with the five dissenting Federal Circuit judges that indirect infringement under 271(b) requires an act of direct infringement under 271(a) (although as Tim Holbrook pointed out to me, Justice Alito left open the door for active inducement of any type of direct infringement, such as 271(f) or (g)).  And, when the Court issues its opinion in Alice, it will inevitably rule in the same direction as one or another group of judges in that highly fractured decision.  So too in Teva v. Sandoz, which will address the issue of de novo review of claim construction that split the en banc Federal Circuit 6-4.  What we are observing with the Court is, in substantial part, less outright reversals and more the resolution of intra-circuit splits, divisions that are arguably – at least in the case of subject matter eligibility – of its own making.

Thanks to former Iowa Law student and semester EFF intern Dan Garon for pointing me to Ms. Ranieri’s article.  Full disclosure: I’m not a Cubs fan.  Also, I made one substantive edit, revising the number of cases since Bilski to 13 (I had originally counted Caraco v. Novo, but on reflection it’s not really a patent case).

44 thoughts on “Is the Federal Circuit Really Worse Than the Cubs?

  1. Every court has that kind of record at the Supreme Court. They don’t take cases where the opinion is “Affirmed.” because that doesn’t help clarify anything.

    The Supremes have been mucking up patent law worse than the Fed Cir lately. I sometimes wish that they’d just quit taking cases. They’re right about how to fix the Akamai situation, but trying to replicate the Prometheus analysis? Pure insanity.

    1. bja, I certainly share your views on Bilski. Prometheus was very mainline, however, and somewhat clarifying. Conventional data gathering steps are not enough when the claim covers a law of nature. That was somewhat addressed in Flook with its insubstantial extra solution activity. But now we know better what that is — the routine and conventional is not the kind of addition that is enough.

      Diehr was different because at least their the law of nature (the math) was integrated into the process to transform it.

      And, the reason we are discussing this issue under 101 and not under 103 rests on the drafters who did not accommodate the Funk Bros. exclusion from consideration of obviousness such things as laws of nature or other subject matter that is ineligible under 101. The point of departure over the prior art cannot be ineligible subject matter that is not integrated.

      1. Prometheus was very mainline, however, and somewhat clarifying

        Prometheus was one of the worst SC decisions ever,

        1. Prometheus was one of the worst SC decisions ever,

          For people like you: yes it must have been terrible and shocking.

          For normal people who enjoy being able to freely think about ineligible correlations and other facts (and non-facts) about the universe, Prometheus was perfectly predictable and welcome.

          It’s sad that this many years on you still haven’t admitted the basic problem with Promethethus’ claims. Pretty much nobody is that dxmb or dishonest except for the pxtent teabxggers.

          At least you could tell yourself a pleasing falsehood like Kevin Noonan does.

          Does anyobody know the identity of the guy in the audience at the recent PTO meeting who said that you could patent correlations? I would love to hear what other ridiculous nonsense that guy believes. I’d also be curious to know whether he was in fact an attorney or just some wannabe grifter.

          1. LOL – trott out your vap1d pet theory once again, and watch it runaway when any one of a million holes are poked into it.

            Just like as has been done a million times before.

      2. LOL – and you attempt to blame the drafters is preposterous, given that it was the Supreme Court that sought o circumvent what the drafters plainly did in order to attempt to hold onto their additive nose of wax implicit writings.

        Your not seeing this is self-delusional.

      3. The point of departure over the prior art cannot be ineligible subject matter that is not integrated.

        Yup. And integration requires some novel, non-obvious structure. That’s the lynchpin.

        Take out the lynchpin and you end up permitting the protection of information itself (and other ineligible subject matter) with patents, which is exactly what the patent txxbxggers are trying so desperately to achieve. They just won’t admit that expressly, for obvious reasons.

        But the truth leaks out every so often, as we’ve seen numerous times.

        1. requires some novel, non-obvious structure

          Except it doesn’t, as Bilksi states 9-0 that MoT was not required.

          Pay attention.

  2. What would be more interesting is to know which CAFC judges in these cases were consistent with the Scotus rulings and which CAFC judges were not.

  3. “In these cases, the Court did not reverse a unanimous Federal Circuit, but rather settled a deep intra-circuit divide…in Highmark, 5 of the 12 judges on the Federal Circuit favored a deferential standard for exceptional case determinations, an approach ultimately adopted by the Court. Likewise, in Limelight the Supreme Court essentially agreed with the five dissenting Federal Circuit judges…”

    If the court overturns a 5-7 viewpoint with their 5-4 viewpoint, okay, I get your point, but the court was 9-0. That means the intra-circuit divide was not a reasonable one – a majority of the CAFC took a position that failed to garner even a single vote of support. Moreover, the five judges in Highmark aren’t the five judges in Limelight, so you can’t even say “Here’s a guy who has a bearing on the law” they’re all just wrong most of the time.

    “What we are observing with the Court is, in substantial part, less outright reversals and more the resolution of intra-circuit splits, divisions that are arguably – at least in the case of subject matter eligibility – of its own making.”

    Way to succinctly destroy the entire point for the CAFC to exist to begin with.

    “so far this term, the Supreme Court has reversed in 77% of all merits decisions except those arising from the Federal Circuit. Last year, the Court’s final reversal rate was 72%…out of the 13 patent cases arising from the Federal Circuit since Bilski v. Kappos, the Supreme Court has affirmed the outcome in whole or part 7 times.”

    I wonder how many of those 77% were 9-0.

  4. So, if I understand it, the Supreme Court is taking case to resolve splits in the Circuit, not the Circuits.

  5. I think it is pretty clear that the judges think that inventions have existence independent of the claims, and that claims are drafted to describe inventions. Not having been taken into the cult of the claim, the justices do not buy certain arguments that permit the Federal Circuit to split on certain issues.

    It might be hard to get the justices to turn a case on some drafting nuance.

            1. You would do well to first understand the concept of the ladders of abstraction before you venture into another area that will only end up confusing you 6.

  6. Good points.

    What we are observing with the Court is, in substantial part, is less outright reversals and more the resolution of intra-circuit splits, divisions that are arguably – at least in the case of subject matter eligibility – of its own making.

    The Supremes aren’t solely responsible for the divisions in the Federal Circuit with respect to subject matter eligibility. For some reason, the entire Federal Circuit seems to be able to wrap its beautiful mind around the extra-statutory concept that non-obvious instructions can’t confer patentability to an old kit no matter how useful the instructional information is but, for whatever reason, when it comes to protecting ineligible information in the “computer arts” or “medical diagnostic arts” some of those same judges feel obliged to pretend that there are no subject matter issues.

    Wake up, Federal Circuit. The Supreme Court is here with your medicine.

    1. Lol – old kit…

      You still struggling with that difference and the exceptions to the judicial doctrine of printed matter, aren’t you?

      Funny how you don’t seem to recognize that measuring cups and hatbands are not in the computer arts at all, and that the exceptions are not limited to your curse-ades.

      Why is that Malcolm? Some type of twisted spin relic for you?

      1. PTAB is using the printed matter doctrine in computer software cases, with a frenzy:

        EX PARTE BRADLEY D. KOLAR AND BETH MARIE RUDDOCK, 2013 WL 6040904 (Patent Tr. & App. Bd.) November 12, 2013
        EX PARTE KRISHNA MALYALA, 2013 WL 5603546 (Patent Tr. & App. Bd.) October 8, 2013
        EX PARTE KEVIN DAVID HIMBERGER, CLARK DEBS JEFFRIES, ALLEN LEONID ROGINSKY, CHARLES STEVEN LINGAFELT, AND PHILLIP SINGLETON. 2013 WL 5603483 (Patent Tr. & App. Bd.) October 4, 2013
        EX PARTE DANIEL E. QUINN. 2013 WL 5406456 (Patent Tr. & App. Bd.) September 16, 2013
        EX PARTE RAY MERRIAM, KIRK POTHOS, HOLLY TURNER, AND CRAIG MALLERY, 2013 WL 3959607 (Patent Tr. & App. Bd.) July 29, 2013
        EX PARTE VIKAS RIJSINGHANI AND GREGG FREISHTAT, 2013 WL 3804598 (Patent Tr. & App. Bd.) June 24, 2013

          1. From Kolar:
            We have held that patent applicants cannot rely on printed matter to distinguish a claim unless “there exists [a] new and unobvious functional relationship between the printed matter and the substrate.” In re Gulack, 703 F.2d 1381, 1386 (Fed. Cir. 1983). [] [T]he Board did not create a new “mental distinctions” rule in denying patentable weight []. On the contrary, the Board simply expressed the above-described functional relationship standard in an alternative formulation– consistent with our precedents–when it concluded that any given position label’s function [] is a distinction “discernable only to the human mind.” []; see In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (describing printed matter as “useful and intelligible only to the human mind”) (quoting In re Bernhart, 417 F.2d 1395, 1399 (CCPA 1969)).

            In re Xiao, 2011 WL 4821929 (Fed Cir 2011) (Non-precedential). Thus non-functional descriptive material, being useful and intelligible only to the human mind, is given no patentable weight. See also In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). “The rationale behind this line of cases is preventing the indefinite patenting of known products by the simple inclusion of novel, yet functionally unrelated limitations.” King Pharmaceuticals, Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed Cir 2010). (The relevant inquiry here is whether the additional instructional limitation has a “new and unobvious functional relationship” with the method, that is, whether the limitation in no way depends on the method, and the method does not depend on the limitation).

            *4 Here the steps of storing rule data, analyzing a product, and displaying a summary in no way depend on the nature of the rule data and the rule data nature does not depend on those same steps. The mental interpretation may depend on the nature of the data, but that is the very same attribute that informs us to lend zero patentable weight.

            From Merriam:
            To the extent claim 4 additionally recites that the document includes a ““gridded floor map,” we find that this limitation is nonfunctional descriptive material, as it is merely a characterization of the type of “data” and does not affect the document generated. That is, the “gridded floor map” is directed to mere content and bears no functional significance to the steps of the claim. Nonfunctional descriptive material cannot render nonobvious an invention that would have otherwise been obvious. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when descriptive material is not functionally related to the substrate, the descriptive material will not distinguish the invention from the prior art in terms of patentability). See also In re Xiao, 462 Fed. Appx. 947 (Fed. Cir. 2011) (non-functional descriptive material, being useful and intelligible only to the human mind, is given no patentable weight).

            Accordingly, the rejection of claim 4 under 35 U.S.C. § 103(a) as unpatentable over Mark and Kananghinis is affirmed.

            From Rijsinghani:
            Concerning the label “selected type of high value transaction” which is given to the category recited in the claims, we do not find this to be a distinction because we find it to be useful and intelligible only to the human mind and thus is nonfunctional descriptive material and cannot render nonobvious an invention that would have otherwise been obvious. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); see also, In re Xiao, 2011 WL 4821929 (Fed Cir 2011) (Non-precedential).

            1. Thanks.

              Everyone,

              please note that printed matter is excluded under 101 – the first printed matter case (Russell) finding it ineligible because it printed matter was neither a machine, manufacture, composition nor Art.

              But, Prometheus said there was no basis in 103 to exclude 101 ineligible subject matter. That was, however, dicta.

              But the practice of the PTO is consistent with Funk Bros. that excluded a law of nature from a determination of invention (obviousness). Thus, there may be something wrong with Prometheus.

              But, anywho, the proper rejection of a printed subject matter rejection should be, IMHO, 101/102/103 — the only thing new being non functional printed matter that is ineligible.

            2. Ned,
              Your view of Russell is completely wrong.

              I have explained this to you in simple set theory.

              Your return to the pre-explanation view is dishonest and downright treacherous – without honor or integrity.

              Shameful.

              Deeply shameful.

  7. Re: “..since 2010, the Federal Circuit has actually done fairly well: out of the 14 patent cases arising from the Federal Circuit since Bilski v. Kappos, the Supreme Court has affirmed the outcome in whole or part 7 times.”
    That may be true, but it is a bit misleading to count “outcome” affirmances for the cases where the Supreme Court has rejected the legal rationale for the Fed. Cir. decision below.

  8. “The Supreme Court saw the mischief that the Federal Circuit’s approach could cause, finding “no principled reason” that would prevent the Federal Circuit from finding infringement in other circumstances based on a notion that “Congress would have wanted it” (even though Congress never actually did).”

    Haha, from the cited article.

    That’s basically the CAFC’s life story. Finding what congress “would have wanted” where congress did not in fact want x in the first place.

  9. “These rulings mean that the Federal Circuit has been unanimously overruled in every single patent case heard by the Supreme Court this term. ”

    Just wait for the easy case to come out shortly.

    1. I can’t tell if you’re being facetious, but it’s abundantly clear (as pointed out during oral arguments w/r/t the en banc decision) that the Fed. Cir. and SCOTUS both believe this to be a difficult issue.

      1. silly mmmkay, what do you mean that you cannot tell whether 6 is being facetious, are you ill?

        /sardonic bemusment

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