Contact List Appeal Not Frivolous

Mira Advanced Tech v. Microsoft (Fed. Cir. 2020)

The PTAB sided with Microsoft — finding the challenged claims of Mira’s two challenged patents obvious. U.S. Patents 8,848,892 & 9,531,657.  On appeal, Mira hired new counsel and argued for an alternative claim construction of the term “contact list.”  Figure 1 in the claims is described in the patent as “the database structure of contact list of present invention.”  The idea here is to have a “memo” interface tightly incorporated into a contact list.

Microsoft’s attorney Chris Carroway responded to the appeal with a motion for sanctions:

An appeal is not a mulligan. While a party is certainly free to retain new counsel to pursue an appeal, that new counsel is not free to raise new arguments that could have been made, but were not made, on behalf of the client before the first tribunal. An appeal premised on such new arguments—arguments waived because they were not presented to the first tribunal—is futile and, therefore, frivolous.

MicrosoftMotionForSanctions.  Mira then responded with a discussion of de novo claim construction — arguing that the main question on appeal is the correctness of the Board’s construction — which was vigorously argued before the Board.

In the appellate court, sanctions for frivolous appeals are handled under Federal Rule of Appellate Procedure R. 38:

If a court of appeals determines that an appeal is frivolous, it may, after a separately filed motion or notice from the court and reasonable opportunity to respond, award just damages and single or double costs to the appellee.

FRAP 38.  In its judgment, the Federal Circuit did not delve into the merits of either claim construction or the sanctions. Rather, the court (1) issued a R.36 affirmance of the Board’s decision in Microsoft’s favor and (2) denied the sanctions without explanation.  The oral arguments included some limited discussion of whether sanctions can apply to a appeal that is weak on the merits — or must there be additional misconduct or failed lawyering.

Underlying the IPR is a pending lawsuit in West Virginia involving the patents at issue. That case has been stayed since 2017 – pending resolution of the IPR proceedings. The court now won’t have to decide Microsoft’s pending motion to dismiss on 101 and for improper venue.

62 thoughts on “Contact List Appeal Not Frivolous

  1. 4

    “Wyoh thinks an electron is something about size and shape of a small pea.” R. A. Heinlein, The Moon is a Harsh Mistress.

    1. 4.1

      TANSTAAFL Gospodin.

      1. 4.1.1

        We thought it might be worth it to educate anonymous blog typer anon. The kids nowadays have Wikipedia so anonymous blog typer anon will read a few lines about TANSTAAFL without understanding and that will make him want to appear confident to other people about what he thinks he knows. Waiting is.

        1. 4.1.1.1

          Is your line of work as a soup
          N
          A
          Z
          I
          …?

    1. 3.1

      Yeah not sure how they plan to manage the process of getting chyna into WIPO, or to what extent they should be trusted with secrits.

      Should have supported the non-commies back in the 40’s-70’s and never had to have worried about this nonsense.

  2. 2

    We know that it requires energy and space to represent information and information may have inertia. So a problem of representing the information of a contact list is a physical problem and the representation of a contact list is a physical representation.

    Not in the ether as Justice Stevens contends along with his many follows including Taranto, and the others.

    Nothing that is enabled can be abstract.

    1. 2.1

      Of course the absurdity of the Alice test is whether something is directed to something well-known, i.e., 102 or 103.

      1. 2.1.1

        …that is certainly part of the absurdity.

        Unfortunately, the fact that the Judicial Branch is stepping outside the proper bounds of its authority is a larger absurdity.

        Given the fact that the Court has noticed BOTH shears of the Kavanaugh Scissors (which, if put together, can certainly cut the Gordian Knot created by the Court), the larger issue of the score board being broken cannot be ignored.

        It is even more absurd to pretend otherwise.

    2. 2.2

      I “get” that you are trying to make lemonade out of lemons, but this conflation just is not working.

      1. 2.2.1

        anon, I am facing what is in front of us.

        What Alice reminds me of is the difference between EPO and US prosecution. At the EPO, the examiners are willing to commit to an interpretation of the claims and references. In the US, the interpretation may flip about with each office action.

        With Alice, what we have is this flipping about. What is Alice about? How broad the claims are? Enablement? Anticipation? What is it about the claims that make them ineligible? The Alice test seemingly includes parts of 112,102, 103, and doesn’t seem to address 101 at all. So what is Alice about. The Scotus and CAFC should answer that question.

        1. 2.2.1.1

          Night Writer,

          The way that you are “facing what is in front of you” guarantees that SCOTUS and the CAFC will NOT answer that question.

          This is precisely why your tactic of joining in on conflation is the absolute wrong tactic to take.

          First step must be recognizing that the score board is broken. Look at the likes of Random, who ramble on about what the (broken) score board presents, oblivious to the real issue.

          You are clearly smarter than that and recognize that conflation IS a problem.

          You cannot rectify that problem by joining the problem.

          1. 2.2.1.1.1

            anon, the point is to get the other side to commit to exactly what they are saying.

          2. 2.2.1.1.2

            And you may take your way. I will take mine. And please do not take airs on about you. I know what I am doing.

            What is so strange about Alice is that it brings in every part of patent law into some grand test. The judge can use 102/103/112/101 as well as not treat the claims as a whole and abstract away all meaning from the claims to the point of saying that a modern computer is no different than what a pharaoh did 4,000 years ago. Some throw in point of novelty.

            It is quite an amazing opinion for its ability to invalidate a claim at summary judgement for any ground the judge happens to feel like using no matter if it is supposed to be fact based or not.

            I think the one way to break apart this is to identity the real part of the statute and case law the judge is using in each case.

            1. 2.2.1.1.2.1

              … and again, what you are choosing to do in joining the conflation guarantees the opposite of what you profess to want to accomplish.

              1. 2.2.1.1.2.1.1

                Your opinion is noted. Now please sush.

                1. Not going to sush when your errant musings will lead the less sophisticated astray.

                  Besides, you are smarter than taking this tact.

            2. 2.2.1.1.2.2

              Nobody has ever said that “a modern computer is no different from what a pharaoh did 4,000 years ago.”

              You are arguing with a strawman because you don’t understand or you are unwilling to understand the actual issues. It’s indisputable that a computer is a prior art manufacture that can be used to store information, just as a piece of paper is a prior art manufacture for storing information. It’s also indisputable that no patent system on earth has been set up to allow people to protect information because “information” is a structureless abstraction. Taken together, this means that you can’t patent a non-obvious writing on a prior art piece of paper, nor can you patent a non-obvious writing on a prior art computer.

              Now go ahead and create a self-serving exception out of thin air and pretend that you aren’t doing that.

              1. 2.2.1.1.2.2.1

                What an immense self-
                F
                A
                I
                L
                from you Malcolm.

              2. 2.2.1.1.2.2.2

                MM I believe you understand that your arguments are flawed.

              3. 2.2.1.1.2.2.3

                Malcolm,

                Let’s see you address ANY of the points presented here: link to patentlyo.com

                in an inte11ectually honest manner.

                1. and of course, absolute silence from Malcolm on ANY of the cognitive points presented to him.

                  And this won’t stop him from blatantly repeating the exact same banal trick time and again whenever the topic comes up.

                  Quit in fact, at one point in time, this blog was using the DISQUS system and one attribute of that system was the ability to see all the posts from a particular person co-located. That is, unless the security settings were set to Maximum.

                  After pointing out how Malcolm’s rhetoric was a never-ending merry go round of the SAME points provided — while constantly avoiding ALL counter points presented to him, he went out and changed his security settings to defeat the co-location feature.

                  He had NO cognitive answer when pressed why he made that change.

                  The bottom line is that Malcolm is a blight on this blog, a blight that has been the very same type of blight for fifteen years now (verified during on of the ‘let’s have a nice ecosystem threads).

    3. 2.3

      “Nothing that is enabled can be abstract.”

      Bingo.

      Abstractions can not be enabled.

      They cannot.

      1. 2.3.1

        (sigh) — NW, your tactic will only lead the less savvy astray.

        Pro Say,

        Clarity is a desired state of law. What Night Writer has done — and what you join in on — is a decided LACK of clarity.

        That is not the path forward.

    4. 2.4

      There was a technical problem with creating a list of names before the filing date of this application?

      Please tell us more about this interesting problem. Exactly what was the problem?

      1. 2.4.1

        Since there is a lot of space back up to Night Writer’s comment and Malcolm’s (goal post moving) version, this is what Night Writer said:

        So a problem of representing the information of a contact list is a physical problem and the representation of a contact list is a physical representation.

        Note that there was NO “before the filing date” conflation with a different part of the law….

        1. 2.4.1.1

          … in other words, the apparent thrust of Night Writer’s comment (and for which, the tie to his linked article provides the context) is that “technical” encompasses the TYPE of thing being addressed by the applicant.

          If you accept the “TYPE” position, then you CAN move on to the other areas of law for which filing dates really do matter.

          This purposeful LACK of clarity (conflation and obfuscation) is simply NOT helpful in ANY patent law dialogue.

        2. 2.4.1.2

          You and Night Wiper are both aware, of course, that nobody is reciting any new “physical representation” of the information in the claims. Only the abstraction is being claimed (ie all “physical representations” capable of storing/transmitting the stated information).

          As every honest person here understands and will readily admit, when claiming a new structure, the law requires that you distinguish that structure from the prior art in objective structural terms.

          Unless you want to invoke some self serving exception yo that rule because your rich bros want to play games and they are oh so deserving. Go ahead in that case but at least be clear that it’s an exception and be clear about the bounds of that exception. Go ahead. Please.

          1. 2.4.1.2.1

            the law requires

            There you go again, trying to make one optional claim format be something other than optional.

            You do realize that it is a
            L
            I
            E
            to misrepresent what the law ACTUALLY requires, eh?

          2. 2.4.1.2.2

            … as to any exception (and to what that exception pertains to), maybe see below as I have long ago (by your own admission) provided such.

            Not only did I provide such, it was an extremely clear, direct, and easy to understand explication.

            What you are not sharing here is that I invited you to discuss this example.

            I invited you immediately.
            I invited you repeatedly.
            I invited you with hyper links back to the original discourse.
            I invited you with wholesale reprintings of the discourse.

            Multiple times.

            And each and every time you refused to actually engage on the substantive merits of that plainly written, simple, direct and easy to understand explication.

            Now why is that?

            (Yes, that last question was rhetorical, as we BOTH know the answer already).

            1. 2.4.1.2.2.1

              Malcolm’s answer: the oh so typical “run away.”

  3. 1

    Please share with everyone the super serious “alternate construction” of the very technical and totally not abstract term “contact list” (LOL) that was proposed by the losing party.

    1. 1.1

      It appears that initially Mira argues that the term could not be construed in light of other terms in the claim because those terms were “extrinsic”.

      That “argument” alone should be sanctionable in a just system, not to mention grounds for tossing the case out of court and cutting off the attorneys rights to practice patent law for some period of time.

      1. 1.1.1

        How much time “off” would you be facing for your own inte11ectual dishonesty (as rampant as that is)…?

        1. 1.1.1.1

          Give everyone a clear example of what you’re talking about, Billy.

          Note that rational arguments for a change to existing “law” aren’t typically sanctionable.

          Note also that Dennis appears to be nervous about lawsuits arising from people who (like you) maliciously spread false information about others here.

          1. 1.1.1.1.1

            “Note also that Dennis appears to be nervous about lawsuits arising from people who (like you) maliciously spread false information about others here.”

            Is that why the daily deluge of posts from you has become a trickle?

            1. 1.1.1.1.1.1

              “Is that why the daily deluge of posts from you has become a trickle?”

              Sleeping dogs, please.

              1. 1.1.1.1.1.1.1

                I’ve never agreed with you before now, Ben.

            2. 1.1.1.1.1.2

              I haven’t spread any false information about anyone so … definitely not.

              Of course, as we all know, there are people out there who believe they should be immune from criticism on the Internets because they are “important” or wealthy.

              You’ve seen them here. You’ve seen them elsewhere. Tell everyone whether capitulating to those people is a bigger or lesser problem than having to “endure” criticism of their whining, entitled and silly behavior.

              1. 1.1.1.1.1.2.1

                haven’t spread any false information about anyone

                You do not even have to leave this page to show the falsity of this statement:

                nervous about lawsuits arising from people who (like you) maliciously spread false information about others here

                Nominee for one of the quickest self-defeating statements of the year…

                1. If that’s the best you can come up with … LOL.

                  The irony of course is that lawyers and professors who sit on their hands while Pwezident R@pecase and his attorney/judge friends make a mockery of the law deserve everything that’s coming to them. And it’s going to rain hard when the time comes. Hoo boy the crying from Billy and crew around here is nothing compared to what’s coming.

                  Now let’s hear some “both sides” silliness because there’s no sad precedent for that either.

                2. Not sure if “best” is what the aim was.

                  “Immediately evident” is a better description.

                  And note that this has nothing to do with your sidewise non-patent law rant that you would rather engage in.

                  Going off-point is not a great comeback to being so self-evidently wrong.

                  Do you really need to have that pointed out to you?

          2. 1.1.1.1.2

            Note that rational arguments for a change to existing “law” aren’t typically sanctionable.

            Great. You do realize that your nigh constant misrepresentations are not anywhere near “rational arguments for a change to existing law,” eh?

            IF you actually took that approach, you would find that dialogue would actually happen (as opposed to the more typical — for you — drive-by monologue and run away from the counterpoints presented to you).

            1. 1.1.1.1.2.1

              Again: what “misrepresentation”?

              Be very specific and clear.

              1. 1.1.1.1.2.1.1

                How much more clear could I be than with the example (so often put to you) of the simple set theory explication of the exceptions to the judicial doctrine of printed matter?

                What now Malcolm? Your typical “run away”…?

                1. Malcolm,

                  Surely you must realize that this type of “reply” is a prevarication and only provides yet another example of your inte11ectual DIShonesty.

                  Do you really think that you f001 anyone with such tactics?

              2. 1.1.1.1.2.1.2

                Or how about the misrepresentation concerning the fact that software is patentably equivalent to other computing wares design choices?

          3. 1.1.1.1.3

            As for your current accusation, go ahead and present something that I have stated that is a ‘maliciously false information.’

            You confuse not liking the accuracy of my posts with your notion of “false,” which by and large has no bearing with reality.

            1. 1.1.1.1.3.1

              LOL

              Nice try, Billy.

              Box of protons! Derpitty derp. Keep the laughs coming and pretend that nobody is laughing at you. Gaslighting all the way. It’s all sooooooo “confusing”! “Nobody” can understand anything about subject matter eligibility! Derp! The Scoreboard is derp broken derp! Oh but wait derp we all need to understand that super simple post you wrote five years ago that can never be articulated again derp! Software isn’t instructions derp and saying otherwise is anti-patent derp! Everyone who disagrees with you is being paid by google! Glibertarianism and patent trolling are totally not related DERP! Ivory towerism derp! Jane Fonda derp! Chamberlin appeasers derp! Etc etc etc.

              Contrast with “claiming new abstractions in a prior art context is an illegal use of the patent system because it turns users of the prior art into infringers when they practice the ineligible abstraction.”

              I know you can’t see the difference. That’s because your a narcissist, in part. You’re also not very intelligent.

              1. 1.1.1.1.3.1.1

                Nice…

                …try?

                You are not even close here.

              2. 1.1.1.1.3.1.2

                The point put to you was to show things that I have done that fall into the “maliciously false information” category.

                You missed on every item you present.
                Every.
                Single.
                Item.

                “Box of protons!” – nothing malicious OR false with my putdown of YOUR ‘logic.’

                “Derpitty derp.”
                Your Derp Dance reply is YOUR problem – again nothing malicious OR false on my part.

                “Keep the laughs coming and pretend that nobody is laughing at you. Gaslighting all the way.”
                These are also YOUR problems – again nothing malicious OR false on my part.

                “It’s all sooooooo “confusing”! “Nobody” can understand anything about subject matter eligibility!”
                I have never said this. Your exaggeration and attribution to me of what others may have said simply does not make this something malicious OR false on my part.

                “The Scoreboard is broken”
                There is nothing malicious or false in this statement. Quite in fact, members of ALL THREE branches of the government have echoed this sentiment. Maybe you should pay attention.

                “Oh but wait we all need to understand that super simple post you wrote five years ago that can never be articulated again!”
                Wow, load of falsity FROM YOU on this one.

                First, I never said that “we all need to understand.”

                Second, the fact of the matter is that I invited you to a dialogue on that upper simple post – an invitation that you refused (see post 2.4.1.2.2 above).

                Third, you prevaricate in trying to say that it “can never be articulated again” (again, see post 2.4.1.2.2 above).

                Fourth, YOU still have not engaged in any inte11ectually honest way on the merits of that post.

                Fifth, There is nothing malicious or false in that post. Which is most likely WHY you have never engaged in any inte11ectually honest way on the merits of that post.

                “Software isn’t instructions and saying otherwise is anti-patent!”
                This falsely misattributes what I have actually posted, and does NOT show ANYTHING malicious OR false on my part. Again, the core of this is the exceptions to the judicial doctrine of printed matter – the very thing that YOU refuse to engage with in any inte11ectually honest manner. YOUR accusation here only points to YOUR being malicious and false.

                “Everyone who disagrees with you is being paid by google!”
                I have never said such a thing. Again, you confuse and conflate what others say in your “One-Bucket” approach. There is NOTHING here that points to my being malicious or false. And yet again, YOUR accusation here only points to YOUR being malicious and false.

                “Glibertarianism and patent trolling are totally not related”
                There is nothing here that points to MY being malicious and false. These are YOUR terms, and YOU are the one ploying the debunked canard of “Oh Noes Tr011s” along with your one-bucketing of anything NOT your political belief being in the same bucket, which is objectively false. Thus yet again, YOUR accusation here only points to YOUR being malicious and false.

                “Ivory towerism”
                “Jane Fonda”
                “Chamberlin appeasers”

                Nothing at all false or malicious in these past characterizations. Maybe pay attention to the context of the characterization and grasp the meaning therein. Every single one of those characterizations were tied to the patent law aspects of certain ideologies, and NONE of what I said was either false or malicious.

                As I noted already, you confuse not liking the accuracy of my posts with your notion of “false,” which by and large has no bearing with reality.

                “That’s because your a narcissist, in part. You’re also not very intelligent.”

                Your Accuse Others meme in its rather typical falsity. I am not the one here being a narcissist and not very intelligent. As I have shown every single one of your accusations to be false, it is clear that this last attempt at insult only reflects YOU.

                By the way, happy 15th anniversary of this very same type of blight from you.

                1. For you Shifty, I would suggest first sharing what your line of work is (as you have steadfastly refused to do so).

                  Once that is recognized, suitable suggestions to help you come up to speed on patent law basics could be provided in a more pin-point manner.

                2. You seem confused AND only willing to misapply adages such as “low hanging fruit.”

                  Perhaps this is reflective of your line of work.

                  What is your line of work?

                  Why are you (seemingly) so embarrassed to share that information? It’s not like I am asking you to out yourself.

                  Your lack of being forthright just does not reflect well for yourself.

                3. You are diving into your games without doing what is asked of you.

                  Maybe you should focus less on your games and do as I ask so that some meaningful dialogue may ensue.

                  … or does that scare you?

                4. I see. We understand your avoidance of the merits; not every education includes study in particle physics. But know that Wikipedia cannot give you even a rudimentary understanding of protons.

                5. The only avoidance “WE” see is the avoidance by you of sharing your line of work.

                  Come now Shifty, how can can your line of work be?

Leave a Reply

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

You can click here to Subscribe without commenting

Add a picture