Event: Intellectual Property in the Supreme Court

Call-In Now: (888) 752-3232.

I’m looking forward to the Federalist Society teleforum this Friday, April 8, 2016 at 2:00 pm EST on the topic: Intellectual Property in the Supreme Court.  I will be moderating. Speakers include Garrard Beeny who is a partner at Sullivan & Cromwell and co-counsel for both Cuozzo and Stryker; and Matthew Hellman who is a partner at Jenner & Block and co-counsel for Wiley & Sons in Kirtsaeng.  The one-hour audio-only program will include time for Q&A.

No registration necessary, just call in at 2:00 pm to: (888) 752-3232. More details here.

7 thoughts on “Event: Intellectual Property in the Supreme Court

  1. 2

    Sometimes you hear things in oral arguments that are so unbelievably wrong that it takes your breath away. Try to believe this exchange in Rapid Litigation Management v. CellzDirect, Inc. (15-1570; a subject matter eligibility case with some genuinely interesting disputed issues)

    link to cafc.uscourts.gov

    Judge Moore (even shriller than usual): “How can any claim directed to a method of preserving cells be patent ineligible?!??!”

    Patentee: “Well, we’re very happy to agree with your honor absolutely on that point.”

    Look, kids, I know this subject matter eligibility stuff is really, really, really hard for you but for cripesake let’s not drift off into the lalaland. I can give you an ineligible “method of preserving cells” claim in two seconds. Here it is: “I claim a method of preserving cells, comprising [old method of treating cells], wherein said final step is recognized to result in an increased density of said cells.”

    Does everyone see the fatal subject matter eligibility problem in that claim? Note that it doesn’t matter that it’s “a method”? It doesn’t matter that the method results in a physical change in the cells. And it doesn’t matter that the increased density wasn’t “recognized” in the prior art. What does matter is that the claim turns people practicing the prior art method into infringers merely because they carry out the additional step of “recognizing” a fact about how the prior art method affects cells. Pretty simple stuff.

    But apparently too difficult for an over-caffeinated Federal Circuit judge.

    Note that isn’t some off-the-wall hypothetical claim I’m talking about either. This is exactly analogous to the claims pushed by Prometheus all the way to the Supreme Court. Learn the basics, people and, equally importantly, don’t be lazy and make off-the-cuff absolutist comments that project a complete lack of understanding of those basics. I sincerely believe Judge Moore is smarter than this but she should work harder at showing it.

    As alluded to above, I think there’s good arguments that the method claims at issue in this case are indeed subject matter eligible. There might be some good arguments that they’re not subject matter eligible (or that they’re inherently anticipated). If so, the defense attorney did a poor job of presenting those arguments.

  2. 1

    Will the patent tr0ll bar ever figure out what “pre-emption” means in the subject matter eligibility context?

    It seems highly unlikely.

    Once again, guys, I know this is really really hard for you to understand but the issue is not whether your claim pre-empts all methods of doing something.

    The issue is whether your claim pre-empts any abstraction in any prior art context. There is one very straightforward way of ensuring that your claim does not do this. I would tell it to you but then the blog’s resident patent tr0ll will show up and mewl some silliness about “options.” And besides you probably aren’t intelligent enough to grasp the “nuance” anyway.

    That said, if you want to hear a massive splattering fail, listen to today’s oral arguments in Kroy IP Holdings, LLC v. Safeway, Inc. .

    link to cafc.uscourts.gov

    But get ready! It’s really “complex” and “technical”. The patentee says so over and over and over and over again. And that makes it true! Sure it does.

    I think I heard the word “pyschographic preferences” used. That’s a first. Welcome to the farcical world of patent litigation before the US Federal Circuit Court of Appeals. Heckuva job, everyone.


    1. 1.1

      Chen asks a great question but fails to follow through: “Are there claims that are not directed to abstract ideas”?

      The answer, of course, is YES. Those are claims that describe novel physical objects in objective structural terms that distinguish those objects/compositions from objects/compositions in the prior art. Those claims are not “directed to abstractions” under any meaningful sense of the term “abstraction.”

      But Safeway’s attorney, like just about every attorney who gets asked a straightforward obvious question like Chen’s, waffles on this softball. “It’s theoretically possible” he says. “But this claim doesn’t come close.”

      What exactly is the major malfunction of the patent bar? This really isn’t that difficult. Why does the patent bar appear to insist on making it more difficult than it needs to be? There’s one obvious answer to that question, of course, which is that most members of the patent bar are unwilling to state the obvious for fear of offending the CAFC which continues to cling desperately to its own mythology about “the essence of electronic structure.”

      1. 1.1.1

        Offending the CAFC?

        Methinks, rather, they cower before the powers that run the patent bar.


        Offended these folks, and one is out of a job.


          Kinda like this story I just saw where reporters feel obliged to contribute to both Sanders and Clinton.

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