Supreme Court Patent Update

Completed Cases: The Supreme Court has denied certiorari of two pending appeals: BPMC v. California and Rattler Tools v. Bilco. In BPMC, the patentee had challenged the Western state’s defense of sovereign immunity. In Rattler Tools, the appeal challenged a non-precedential claim construction opinion.

Upcoming Case: In a recently filed petition, 800 Adept has asked the Supreme Court to build on its 1995 Markman decision and consider “whether a district judge’s construction of a patent claim is ever entitled to deference upon appellate review, or, instead, are all such claim constructions reviewable only de novo, as the Federal Circuit has, over many dissenting opinions, held?” In this case, the Federal Circuit had reversed the lower court’s claim construction and – as a consequence – also reversed the jury verdict of infringement. [Link]. FTC v. Rambus is the most likely candidate of patent cases in the petition stage. That case involves the activities of a patentee during a standard setting process. In a related case, well respected Federal Judge Sue Robinson held that Rambus could not enforce twelve of its patents against Micron as a penalty for litigation misconduct. [Link]

Comments

[anon]

I know how to fix the patent system. Make all prosecution inter partes. Any one can oppose at any time.

[Andrew Dhuey]

Thanks for the coverage, Dennis, and thanks to many here for the encouragement and ideas.

[BigGuy]

"I know how to fix the patent system. Make all prosecution inter partes. Any one can oppose at any time."

That would be cool - Malcolm could submit his "doo doo" arguments in any and all software applications.

[Humorless Democrat]

Clearly, we should now start advising our clients that to avoid infringement, they should simply declare themselves to be states. This will enable them to assert their patents yet be immunized from suit for infringement.

Thanks for trying, Andrew.

[MaxDrei]

Arnie's got "Sovereign" immunity from infringing valid and in force patent claims? That's cheeky. Even Brenda (oops,I mean, the UK "crown") doesn't enjoy that particular immunity. How about POTUS? Does he, I wonder, have a growing personal interest in the subject of immunity?

[bleedingpen]

RE: BPMC, this stinks a big one.

I was halfway through writing a newsletter article on the BPMC case and planned on finishing it up today.

The cynic in me says that the Supreme Court has 4 justices that are big state's rights advocates and 4 justices that are anti-business. The odds were against you from the beginning.

[anonymous]

Right, humorless democrat. And if clients want to levy taxes, arrest people, or disobey traffic laws, they can declare themselves to the be the IRS or the police.

It's apparently surprising to a lot of people that states can't be sued without their consent, but that is the law.

There are some narrow categories of cases where the court have found waivers of sovereign immunity, and Mr. Dhuey had a good argument that his case was fairly within one of those categories, but reasonable people can disagree, the Federal Circuit did disagree, and the Supreme Court decided not to take the case. Congratulations to Mr. Dhuey (and the cert team) for taking an interesting case this far and for giving BPMC a fighting chance.

The 800 Adept petition is interesting, but I doubt the Court will take it. Instead of picking a good issue and trying to take a rifle shot, the petitioners have come up with a grab bag of grievances that ends up reading like an appellate brief rather than a cert petition.

5 questions presented is a mistake, and No. 4 is barking up the wrong tree by going after a stable and fairly uncontroversial line of CAFC cases.

Given the Supreme Court's reluctance to take up the Cybor issue, despite numerous chances over the past 10 years, I doubt that they'll decide that this is the petition that succeeds where others have failed.

I've been wrong many times before, though, and I'd love to see the Supreme Court address the Cybor issue, so I wish 800 Adept's attorneys luck.

[jk]

Does any one know if Bilski plans to file its appeal to the SC?

[JCD]

It is not inconceivable that pragmatic considerations are at work here as well. Each of you may or may not be aware that California is already on the verge of insolvency. The Economist has an interesting article regarding the precipitous state of the California balance sheet for next year.

[bleedingpen]

JCD,

pragmatic considerations would support a finding of a waiver of immunity, not keeping the status quo. Any effect on California's budget sheet would be marginal from this litigation.

[Andrew Dhuey]

jk, I too am keeping an eye on Bilski. The petition is due 90 days after 10/30, so we should see that shortly.

Even if the Supreme Court agrees with the CAFC's conclusion, they might wish to affirm it via a different test on statutory subject matter.

[6]

Personally I would like to see the SC agree with the Chief Judge. I like that guy, he knows wtf is going and is no nonsense about it. I wish he could garner the support of his fellows more often.

[Tazistan Jen]

Hey, MaxDrei, I just saw your offer on the other thread. I would **love** to hear your analysis of what went wrong on my EP application. My email address is tazistanjen at gmail dot com.

[geneva]

on the investorvillage.com MB, you can find many (including lawyers) who would very strongly dispute the attribute "respected" when reading her very recent RMBS ruling.

[MaxDrei]

Sorry Tazistan Jen. Nothing against you but my anonymity is precious and I don't know how long it will survive, once my identity is "out", even to one other reader. Besides, for me this blog is relaxation, not real work. I imagine it won't be hard for you to get a second opinion. After all, as soon as you impart the filing or publication number to somebody with a connection to the internet, who knows something about EPO prosecution, they just go to www.epoline.org (no fee no password, no downtime) and read or pdf the whole file, from start to finish, then tell you what they think.

[Andrew Dhuey]

MaxDrei, this is relaxation and not work for me as well. Still, I use my real name because I can't see any good reason not to do so. Where necessary, I clarify that my views are not necessarily those of clients. I also decline to answer certain questions, citing privilege concerns.

Do what works for you, of course, but consider signing your own name to your posts.

[AllSeeingEye]

The Rader dissent in Bilski practically begged for SC review...

[Andrew Dhuey]

AllSeeingEye, with no disrespect to Judge Rader, I think the Supreme Court cert. decision will come down to a single consideration: are they comfortable with the 101 test set forth in Bilski?

[Noise above Law]

Andrew,

I would hope to add another consideration- are they comfortable with the ramifications and aftermath as let loose by Bilski.

[smashmouth football]

Andrew Dhuey said:
"AllSeeingEye, with no disrespect to Judge Rader, I think the Supreme Court cert. decision will come down to a single consideration: are they comfortable with the 101 test set forth in Bilski?"

Noise above Law said:
"Andrew,
I would hope to add another consideration- are they comfortable with the ramifications and aftermath as let loose by Bilski."

I suggest another hypothesis--maybe the Supremes will do nothing, waiting for the contours of "the ramifications and aftermath" to become a little clearer and less speculative.

[Andrew Dhuey]

Touché, smashmouth football. As I've learned the hard way, "cert. denied" is the Supreme Court's favorite response to those who seek review.

[MaxDrei]

Mr Dhuey, Thanks for the encouragement and, yes, sometimes I incline to using my real name. But then I think of all those film scenes with the words "Be careful. We know where you live" and I go off the idea. Part of my learning plan here is deliberately being provocative, in order to precipitate a response. Some readers welcome it, but others are affronted. Any taking offence(and I have no idea when that happens, and how much of it there is out there) might put me in, how do you say it, harm's way. You don't provoke, so maybe you can be more relaxed, about revealing your identity. And, apart from that, even just one reader regaling me with requests for advice about her EPO case is something I really don't want or need. I'm far too busy already. That's because I'm so keen to learn. From you, Dennis' readers.

[Tazistan Jen]

MaxDrei - no problem. I thought you were offering.

[MaxDrei]

Yes, Jen, I suppose it did look like that. Apologies. I vaguely thought I could somehow offer a view, still without revealing who I am.

[AllSeeingEye]

Andrew, with all due respect, I think the Rader dissent mapped out the historical inconsistencies in S.C. and F.C. jurisprudence regarding 101.

The "machine or transformation" test as you know is nothing new. It was borrowed from Benson, which was pre-CAFC. Rader is essentially saying, hey, we spent the last 20-odd years trying to interpret your precedent as we were commissioned to do, and my colleagues are now contradicting established S.C. precedent that said that the machine or transformation was NOT law, but was just a guideline to determining patentable subject matter. Further, S.C. as much as said that all previous S.C. precedent should be interpreted as NOT assigning any particular rigid test to subject matter, but rather that since inventive subject matter is always in flux, so should the test adhere mainly to the simple language of the statute.

IMO the Rader dissent is a roadmap for a new decision by the S.C. (and an invitation to grant cert)