Three Supreme Court Petitions: Teaching Away, Eligibility, Affirmed Without Opinion

Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., Ltd., Supreme Court Docket No. No. 17-751.

  1. Whether the Federal Circuit has erred in holding that, for the purposes of an obviousness determination under 35 U.S.C. § 103(a), a reference “teaches away” from a proposed combination only if it expressly “criticize[s], discredit [s], or otherwise discourage[s]” the proposed combination.
  2. Whether inter partes review …  violates the Constitution by extinguishing private party rights through a non-Article III forum without a jury. (Copy of Oil States Question)

Nidec Petition.

= = = =

Smartflash LLC v. Apple Inc., Supreme Court Docket No. 17-697.

  1. Whether patents that claim a specific arrangement of technological elements, claiming apparatuses and specific methods providing a technological solution to the problem of Internet data piracy, are patent eligible under 35 U.S.C. §101 when they do not preempt alternative technological solutions.

Smartflash Petition.

Claim 3 of U.S. Patent No. 7,334,720 is representative:

3. A data access terminal for retrieving data from a data supplier and providing the retrieved data to a data carrier, the terminal comprising:

a first interface for communicating with the data supplier;

a data carrier interface for interfacing with the data carrier;

a program store storing code; and

a processor coupled to the first interface, the data carrier interface, and the program store for implementing the stored code, the code comprising:

code to read payment data from the data carrier and to forward the payment data to a payment validation system;

code to receive payment validation data from the payment validation system;

code responsive to the payment validation data to retrieve data from the data supplier and to write the retrieved data into the data carrier; and

code responsive to the payment validation data to receive at least one access rule from the data supplier and to write the at least one access rule into the data carrier, the at least one access rule specifying at least one condition for accessing the retrieved data written into the data carrier, the at least one condition being dependent upon the amount of payment associated with the payment data forwarded to the payment validation system.

= = = =

Chan v. Yang,  Supreme Court Docket No. No. 17-311.

  1. Whether the USPTO had exceeded its statutory authority in declaring and conducting an interference proceeding based on claims in a pending patent application that were neither directed to patent eligible subject matter under 35 U.S.C. §101 nor in allowable form?
  2. Whether the Federal Circuit’s affirmance without opinion in appeals from USPTO’s decision violates 35 U.S.C. §144? Should the determination of which USPTO appeals require a written opinion rather than a Fed. Cir. Rule 36 Judgment depend primarily on whether the written opinion might benefit further proceedings in the case in the USPTO?
  3. Whether the USPTO’s practice to cancel the claims of an issued patent in an interference proceeding is unconstitutional, violating the Seventh Amendment and Article III? (Replica of Oil States Question)

Chan Petition.

 

16 thoughts on “Three Supreme Court Petitions: Teaching Away, Eligibility, Affirmed Without Opinion

  1. Curious why we have not seen more of these “placeholder” cert petitions hoping for a favorable Oil States decision that will also reverse their own adverse IPR decision?

  2. From the “longer” post:

    Should the determination of which USPTO appeals require a written opinion rather than a Fed. Cir. Rule 36 Judgment depend primarily on whether the written opinion might benefit further proceedings in the case in the USPTO?

    Directly on point to a recent exchange with Mr. Boundy’s.

  3. Whether the Federal Circuit has erred in holding that, for the purposes of an obviousness determination under 35 U.S.C. § 103(a), a reference “teaches away” from a proposed combination only if it expressly “criticize[s], discredit [s], or otherwise discourage[s]” the proposed combination.

    That is one of the most ridiculous questions for cert that I’ve read in a long time. And that’s saying something in the Golden Age of Silly Cert Petitions.

    “Teaching away” is a judicial doctrine created out of thin air for the purpose of filling up the empty bag that is “obviousness” under 103. “Teaching away” can mean whatever the CAFC wants it to mean.

    1. Agreed. No one can be so desperate as to think that this is an argument worth making.

    2. That’s true, but at the same time they do have to actually consider their rationale for/against obviousness. And I think they’re taking issue with the CAFC just dismissing their rationale against obviousness as “not being formal ‘teaching away’ so its tots irrelevant”. If everyone would just go ahead and consider arguments fer and agin obviousness then this wouldn’t be such a big deal. Though on the other hand, if attorneyta rds would stop using buzzwords like “hur teaching away” and instead find a way to enunciate their argument differently then this might be better.

      The use of buzzwords itself creates this linguistic problem imo.

  4. Whether patents that claim a specific arrangement of technological elements, claiming apparatuses and specific methods providing a technological solution to the problem of Internet data piracy, are patent eligible under 35 U.S.C. §101 when they do not preempt alternative technological solutions.

    The answer is “some are, some aren’t” and it depends on whether the “specific” arrangement of (trying not to laugh here) “technological elements” that are described in the claims are also (surprise!) described in the prior art.

    As an easy example, a claim that described the “technological elements” of a book and which also included “new” instructions for dealing with Internet privacy or a “new” code or a “new” set of logical rules would fall within the scope of what the petitioners describe. But it’s most definitely ineligible subject matter.

    Bizarre that this is so difficult for certain people to understand in 2017. But there are a lot of really shirty desperate lawyers out there, as we all know, who just can’t seem to wrap their heads around reality. They will slowly fade away, of course, but not without a lot of whining and a lot of very silly petitions.

    1. Claim 3 of U.S. Patent No. 7,334,720

      LOL

      What an incredible pile of cr @p.

    2. Because (somehow), the very first computer had all future software already “in there.”

      Typical Malcolm double down on software (already in there and mere “logic” – yet again easily disposed of with reference to the fact that you cannot obtain copyright on logic, and yet an aspect of software can be copyrighted; just like a different aspect of software can obtain patent protection).

      1. a different aspect of software can obtain patent protection

        Which “aspect” is that and how do you claim it so that it survives an attack by a competent attorney?

        Rhetorical questions. I know that you don’t know the answers.

        1. Then you know that your questions are nothing but a smokescreen.

          Maybe you want to provide answers FIRST to my non-rhetorical questions…

    3. why would it be ineligible subject matter? Simply because it is code? If the code is new why should it not be protectable? Simply having the instructions for the creation of a book shouldn’t make it ineligible under 101 (perhaps 102 or 103).

  5. Curious why we have not seen more of these “placeholder” cert petitions hoping for a favorable Oil States decision that will also reverse their own adverse IPR decision?

    1. Most folks are confident in their belief that SCOTUS will uphold IPRs and therefore do not want to waste limited resources on a pie-in-the-sky effort. Not all businesses are sitting on piles of cash.

      1. yes only IP Watchdog and his ilk (who though I sometimes like doesn’t have a good constitutional understanding generally) think it will go away.

        1. and his ilk…

          Zaldar, put down that Malcolm koolaid.

Leave a Reply

Your email address will not be published. Required fields are marked *

 Notify me of followup comments via e-mail.

You can click here to Subscribe without commenting

Add a picture