Nautilus Submerges Again — Upcoming Supreme Court Cases

That was quick: The Supreme Court has denied certiorari in Nautilus v. Biosig (round II).  I discuss that case here.

The Supreme Court also denied cert in Tyco v. Ethicon (15-115) (under pre-AIA law, does prior conception under 102(g) count as prior art under 103(a)?) and denied the certiorari rehearing request in Netairus v. Apple (14-1353) (when does a device infringe a method claim?).

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Coming up this month for consideration by the court:

  • Fivetech Technology Inc. v. Southco, Inc., No. 15-381 (what is the proper role of intrinsic evidence in claim construction?)
  • Allvoice Developments US, LLC v. Microsoft Corp., No. 15-538 (is software stored on a computer-readable medium a “manufacture” under Section 101?)
  • OIP Technologies, Inc. v., Inc., No. 15-642 (do the rules of civil procedure apply when defendant raises a Section 101 eligibility “defense” in a motion-to-dismiss for failure to state a claim upon which relief can be granted?)

34 thoughts on “Nautilus Submerges Again — Upcoming Supreme Court Cases

  1. 2

    On Friday the CAFC published another decision evincing a disturbing trend towards substituting their own narrow “plain reading” of a term in spite of broadening and contradictory language in the specification (and thereby preserving the validity of the claim). As before, this feat is achieved by ignoring the CAFC’s own precedent, i.e., Philips.

    A couple weeks ago it happened in CIOFFI v. GOOGLE, INC., (Fed Cir 2015), penned by O’Malley, Plager and Bryson. This time it’s STRAIGHT PATH IP GROUP, INC. v. SIPNET EU S.R.O. (Taranto and Hughes). At least this time the opinion comes with a thoughtful dissent by Judge Dyk. The issue was whether the term “query as to whether the second process is connected to the computer network” requires an “active online connection” at the time of the query (if the claim term is construed otherwise then, according to PTAB, the patent is anticipated or obvious in view of the prior art).

    [U]nder the Phillips approach, we must look to the specification as the “single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at 1315. This is true, contrary to the majority’s assertion, even in cases where language, on its face, appears to have a plain meaning, because, as Phillips states, the specification “is always highly relevant to the claim construction analysis.” Id. (emphasis added). The only meaning that matters is the meaning in the context of the patent. See id. at 1316 (citing to and quoting Netword, LLC v. Centraal Corp., 242 F.3d 1347, 1352 (Fed. Cir. 2001) (“The claims are directed to the invention that is described in the specification; they do not have meaning removed from the context from which they arose.”)) ….

    The specification—the “single best guide to the meaning of a disputed term,”… describes that, when a query is received, the server “searches the database . . . to determine whether the callee is logged-in by finding any stored information corresponding” to that queried user. ’704 patent, col. 5, lines 57–59 (emphasis added). This information in the database, as described by the specification, is kept “relatively current.” Id. at col. 5, lines 39–42. Checking historical “relatively current” information in a database is not a “real time” determination.

    1. 2.1

      MM, the result of this case is right but the holding of the case is worrisome.

      Under broadest reasonable interpretation, the claims should have been construed exactly the way the court construed them — they required a present online status because plain meaning controls unless the term is defined in the specification or used in a manner that is unambiguous.

      However the court did not rely on broadest response interpretation – and therein lies the problem. The rule this case applies equally as well to cases from district courts. In that regard, Judge Dyk’s dissent is correct. The are not be supported in the specification as construed by the majority. Such a construction must be wrong.

      But what I do not understand is why the patent owner is pressing this case on this theory of patentability when the claim term as construed is not supported in the specification. Eventually, this patent is going to be declared invalid under 112 (a). This is a Pyrrhic victory at best.

      1. 2.1.1

        Under broadest reasonable interpretation, the claims should have been construed exactly the way the court construed them — they required a present online status because plain meaning controls unless the term is defined in the specification or used in a manner that is unambiguous.

        As Dyk points out, the “plain meaning” of “query as to whether the second process is connected to the computer network” doesn’t require an active online connection.

        More importantly — as Dyk also points out — there is no authority to ignore the specification when interpreting claims reasonably.


          MM, I would agree with you that in court, should always be consulted.

          In the PTO, no. See, In re Morris.


            In re Morris says the applicant can rebut a plain meaning by reference to a contrary definition in the specification. It doesn’t say that the PTO can ignore the specification.

            It’s certainly true that, as a general matter, the “plain meaning” of a term will very often be consistent with the specification. But all bets are off in the computer-implemented wonderworld where terms like “access” and “connected” are used to denote abstract relationships between “users” and “providers”.

            Learn to define terms, people.


              MM, right. So there is no definition here. The plain meaning controls under Morris and BRI.

              The point of BRI is that the claims be clarified by amendment if necessary, not by some construction “consistent” with the specification.


                The plain meaning controls under Morris

                It can’t be the case that if the specification doesn’t expressly define a term (i.e., “the term X means Y”) then the PTAB or the reviewing court can simply use whatever definition it likes and call it “BRI”. The “plain meaning” has to come from somewhere and it can’t ignore suggestions of greater breadth in the specification.

                Note that I’m not suggesting that limitations be read into the claim term from the specification. Just the opposite: I’m saying you can’t define a term narrowly and say that definition is the “plain meaning” and therefore “controls” simply because the specification doesn’t expressly provide a broader definition of the term. You don’t have a license to ignore the evidence in the specification suggesting a broader reading. But that’s what the majority did here.

                1. MM, the way it works is described in Morris:

                  The examiner takes a plain meaning construction, consistent with how one of ordinary skill would understand that term in the “field of the invention.”

                  The applicant pushes back with definitions from the specification and/or other uses from the specification that make meaning a specific, out of a range of possible reasonable meanings.

                  The examiner is entitled to maintain his position if there are no definitions, if the usage is not unambiguous, and if his interpretation is supported either in definitions or in prior cases.

                  But the examiner is not required to construe the claims to be consistent with the specification unless the usage of the term is in fact definite.

                  A problem arises when the term under consideration is not used in the specification, as is the case here, I think. This happens more often than you would imagine in disputes that are taken up to the Federal Circuit from the courts. But it should never happen in an appeal from the PTAB where the applicant is arguing a construction of a term in view of its usage in the specification when that term is not even used in the specification.

                2. MM, the way it works is described in Morris:

                  It would appear that this case, being precedential, just drove a truck through Morris. Morris might have been “the way it works” but I’m pretty sure it works differently now thanks to these recent CAFC decision. Or, more accurately, the CAFC has flushed one of its best decisions — Phillips — down the memory hole and replaced it with the wild west. But that can’t be right, can it? Because everyone knows “the courts” would never bend over backwards to breathe live into a junky patent …

                3. MM, actually it provides a lot of ammunition to patentees especially to rebut a patent office construction that essentially ignores the claim terms. Effectively what the court held here is that the patent office’s broadest reasonable interpretation read out of the claim the word “is.”

                  While I’m happy for this case in connection with issued patents in the patent office, I am not happy with this case in terms of ex parte prosecution where the construction given the claim in view of “plain meaning” was narrower than a construction one would give the claim in view of the specification. This is an “odd” result.

                4. Effectively what the court held here is that the patent office’s broadest reasonable interpretation read out of the claim the word “is.”

                  Which is a wildly incorrect holding when you look at the claim term in question and the specification.

                  Let’s see how long it takes for the CAFC to decide that the “plain and ordinary meaning” of “is connected” (in the networked computer context) is the opposite of the “plain and ordinary meaning” the reached here.

      2. 2.1.2

        Ned, in a packet-switched network there is no such thing as “present online status.” All you know if that the sending computer was online at the time it sent the last packet you received.


          “Packet-switched” network? I just reviewed the decision and the claims. It appears the claims cover other than the internet, but I suspect they would make no sense in other than a packet-switched network.

          It would be interesting to know whether an expert testified that because there is no IS involved in this context, that IS would mean WAS as of the last packet received to one of ordinary skill in the art of the Internet. Plain and ordinary meaning must at least be to one of ordinary skill in the art, and not to some California pot head complainer and protester who knows everything. (And how do we know that he knows everything? Just ask him.)

          I am persuaded, but, again, was this testimony produced?

    2. 2.2

      Re STRAIGHT PATH IP GROUP, INC. v. SIPNET EU S.R.O, a footnote by J. Dyk in dissent notes that the majority here waffled on the issue of whether or not BRI even properly applied to this expired patent,* and, interestingly, gave no indication that the claim interpretation would have been any different under BRI than under In re Phillips!
      Another indication that those making current amicus and legislative efforts to change IPRs from BRI to In re Phillips may be deluding themselves in thinking that that change alone would make a big difference in IPR outcomes.

      *The PTAB would hold [as they have in reexaminations] that for expired patents BRI does NOT apply since there is no longer a claim amendment opportunity.

      1. 2.2.1

        Paul, this is a case where the “plain meaning” of a term is narrower than a construction in accord with the specification. From a big picture point of view, one would think there is something wrong with a broadest reasonable interpretation that would choose a narrow interpretation when an alternative broader interpretation was also reasonable.

        I think that is why the Federal Circuit majority here had to say that they were not deciding this case under broadest reasonable interpretation. That avoided the whole “opportunity to amend” issue.

    3. 2.3

      MM, I always had problems with Philips, preferring the English Supreme Court test in which the notional PHOSITA technical reader of the patent, with a mind willing to understand, is assumed to be trying to make an honest in the art assessment of the scope of protection given by the claim. She is deemed to be asking herself “What was the inventor using the language of the claim to mean?” It is a very pragmatic way to proceed, excluding constructions of the claim that fail to convince interested and intelligent bystanders . It would have got to a sensible result, for example, in the Chef America case. Another plus point is that it renders any Doctrine of Equivalents otiose and unhelpful.

      Could it be that the judges on the Federal Circuit are attracted to this way of thinking?

      1. 2.3.1

        ^^^ What is it with you MaxDrei and your ever present desire to cross the lines of sovereign thinking…?

        Here in the States, such widespread desire to enable judges to change statutory law is something that should not be so eager to engage in – for those with a mind willing to understand our laws.


          What alternative explanation do you have then, “anon”, for the move away from Philips?

          When every other area of human discourse grabs the best from wherever it can find it, when benchmarking is ever more widely practised, when optimal solutions to problems (like how to raise more tax revenue without anybody complaining) are every more keenly sought, internationally, why not also in jurisprudence?


            You quite miss the distinctions that I so often have to remind you of:

            Comparative jurisprudence has its limits.
            Patent law – in the US – is statutory law, not common law.

            Why is it that you just have a mind so UNWILLING to learn on these regards?


              anon you write that comparative jurisprudence “has its limits”. Nobody could disagree with that, least of all me, sitting as I do in multi-lingual, multi-cultural, multi-jurisprudence, multi- legal system Europe. The EPO has 38 Member States and each jealously guards its national sovereignty.

              By now, most every developed country jurisdiction, whether common law (deriving from the age-old law of England) or civil law (deriving from Roman Germanic legal thinking), is fundamentally a statute law country. Nobody could disagree with you that patent law in the USA is statute law. How the heck do you come to the idea that I disagree on that issue? Was it that you were not aware of the world-wide split (that runs slap through the channel separating The British Isles from the European mainland) between civil law countries and common law countries?

    1. 1.1

      The Franchise Tax Board has amicus support from forty-four states, the Multistate Tax Commission, a group of associations of state and local government bodies, and the South Carolina State Ports Authority.

      Hyatt’s side is supported by nine law professors

      Wow. Nine! Very impressive.

      1. 1.1.1

        The number of people supporting one side or another really has no bearing on whether their arguments are correct or not. At one time, 99.9999999999999 percent of people believed that the sun revolved around the Earth and could vehemently argue this position. They just happened to be wrong.


          PatentBob, that’s just Malcolm’s fallacy and projected ‘gee, I’m in a big group’ lyn ch mentality.


          PB: The number of people supporting one side or another really has no bearing on whether their arguments are correct or not.

          That’s true. Those nine professors could be completely wrong.

          At one time, 99.9999999999999 percent of people believed that the sun revolved around the Earth and could vehemently argue this position.

          The important distinction is that the sun and the earth never cared what those people thought, or why. Not true of the Supreme Court.


            Oddly, I am in agreement with a subtle take-away from Malcolm’s post here.

            That take-away is that the Supreme Court does not enjoy the “correctness” that the sun and the earth enjoy.

            Yes, Virginia, the scoreboard can indeed be broken…


            Those nine professors could be completely wrong.

            But if they were dentists….

      2. 1.1.2

        MM, one one side we have self-interested, but admittedly important, amici. On the other professors who nominally have no ax to grind.

        Bias. That is one of the reasons trial attorneys always focus in on credibility of witnesses.

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