Federal Circuit, tired of being smacked around by Supremes, smacks Board of Appeals

I think the folks over at the Federal Circuit are getting grumpy.  In a decision released last week http://www.cafc.uscourts.gov/images/stories/opinions-orders/13-1192.Opinion.6-2-2014.1.PDF, the Court reversed a decision of the PTO Board.  That, by itself, is not unusual.  What's unusual is that they didn't reverse on the basis that the Board got the claim construction wrong.  We're used to that. Instead, the Federal Circuit reversed on the grounds that the Board's decision was not supported by substantial evidence.  That's...surprising.  Particularly as the Board's decision did seem to be supported; the Federal Circuit just disagreed with it.  

Update: Beastie Boys win copyright infringement lawsuit

Back in the day...

The Washington Post reports that Beastie Boys have won their copyright infringement case against Monster. As noted in an earlier post, the fight in the case was over the measure of damages.  The Beasties were seeking $2 million in damages; Monster, which conceded infringement, thought a better number was $125,000.  So the court decided the right number is... 

$1.7 million dollars.  Which is kind of splitting the difference, in a way.  Sort of.

Federal Circuit: "Consumer Rights" Organization Lacks Standing

In what can only be characterized as excellent news for the biotech industry, the Federal Circuit yesterday dismissed Consumer Watchdog's appeal from a USPTO decision in an inter partes reexam upholding claims to human embryonic stem cell cultures.  

The Court found that Consumer Watchdog "has not established an injury in fact to confer Article III standing."  

Consumer Watchdog does not allege that it is engaged in any activity that could form the basis for an infringement claim.  It does not allege that it intends to engage in such activity.  Nor does it allege that it is an actual or prospective licensee, or that it has any other connection to the '913 patent or the claimed subject matter.  Instead Consumer Watchdog relies on the Board's denial of Consumer Watchdog's  requested administrative action -- namely, the Board's refusal to cancel claims 1-4 of the '913 patent.  That denial, however, is insufficient to confer standing.

This makes perfect sense, right up to that last bit.  See, there's no "standing" requirement at the USPTO.  So anybody can bring a request for inter partes reexamination of an eligible patent, assuming they have the fee in hand and can meet the "substantial likelihood of success" standard for review. And the statute specifically authorizes appeals from Board decisions in inter partes reexam, but doesn't say anything about standing.

The Court acknowledges as much, but is unpersuaded.

Nor is it enough that the inter partes reexamination statute allows a third party requester to appeal decisions favorable to patentability.  35 U.S.C. 315(b).  A statutory grant of a procedural right, e.g., right to appeal, does not eliminate the requirements of Article III.  See Lexmark Int'l, Inc. v. Static Control Components Inc., 134 S.Ct. 1377, 1386 (2014).  To be clear, a statutory grant of a procedural right may relax the requirements of immediacy and redressability, and eliminate any prudential limitations, ...which distinguishes the present inquiry from that governing a declaratory judgment action.  But the statutory grant of a procedural right does not eliminate the requirement that Consumer Watchdog have a particularized, concrete stake in the outcome of the reexamination.  Summers [v. Earth Island Inst.], 555 U.S. [488] at 496 [(2009)] ("[D]eprivation of a procedural right without some concrete interest that is affected by the deprivation -- a procedural right in vacuo -- is insufficient to create Article III standing.")

So this decision creates a strange procedural anomaly - anybody can bring an inter partes reexam, but not everybody who is dissatisfied with the result will have standing to appeal, despite the clear language of the statute.

TTAB Upholds Denial of Registration for "Asshole Repellent"

Yesterday, in a precedential decision, the Trademark Trial and Appeal Board upheld the denial of registration for "Asshole Repellent" on the grounds that the mark is "scandalous and immoral."

Money quote:

The list of third-party registrations consisting of the word “ass” has little, if any, probative value because the term at issue is the word “Asshole” in the mark ASSHOLE REPELLENT, not the word “Ass.” 

Forget the Supreme Court. Let's talk Girl Scouts!

The actual patch

The Girl Scouts of America have just announced that scouts will be able to earn an "Intellectual Property" patch.  The requirements for the patch will vary depending on the girl's age and scouting level.  Here's a link to the requirements for earning the "cadette" level patch.

In all seriousness, I think this can only be a good thing, particularly given the relative dearth of women in patent law.

Supreme Court's New Indefiniteness Test: Not So Clear

You don't have to take my word for it.  Here's the Federal Circuit's test:

Considering the intrinsic evidence (i.e., the claim language, the specification, and the prosecution history... A claim is indefinite..."only when it is 'not amenable to construction' or 'insolubly ambiguous.'"

The new test, articulated by the Supreme Court today in its decision in Nautilus v. Biosig:

We read [section]112, [para.]2 to require that a patent's claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.

Glad we got that cleared up. 

Supreme Court Issues Decision on Inducment, Issues Yet Another Smackdown to Federal Circuit.

The Supreme Court has just handed down its decision in Limelight v. Akamai, reversing the Federal Circuit.  Money quote:  

The Federal Circuit fundamentally misunderstands what it means to infringe a method patent.