Welcome to Skilled in the Art. I'm Law.com IP reporter Scott Graham. After an eight-month break, the Supreme Court heard another patent case today. I don't know who's going to win, but I do know that a certain Stanford law professor got a lot of air time, including from the court's newest justice. Meanwhile, I'm pleased to learn that the Federal Circuit judges get just as frustrated as I do at SEP holders who balk at courts setting FRAND rates.

Pull up a chair, let's spend a few minutes on the latest IP news. Email me your thoughts and follow me on Twitter.  

 

Brett Kavanaugh Is on the Lemley Train

Anthony Kennedy is out. Brett Kavanaugh is in. And Mark Lemley remains a constant at U.S. Supreme Court patent law arguments.

Hearing his first patent case Tuesday as a Supreme Court justice, Kavanaugh had a question for Williams & Connolly partner Kannon Shanmugam just minutes in. “The Lemley amicus brief says the law has always treated secret sales and uses as prior art,” he said. “Are you disagreeing with that?”

Kavanaugh was referring to a brief the Stanford professor and Durie Tangri co-founder wrote on behalf of 45 law professors who argue that Congress did not intend to narrow the on-sale bar in the America Invents Act.

Lemley wrote that, although Congress followed the words “on sale” with “or otherwise available to the public,” it did not intend to sweep away 200 years of precedent interpreting “on sale” as including private sales, such as from a manufacturer to a distributor.

Shanmugam did take issue with Lemley's characterization, but Justice Stephen Breyer said the law professor was right on at least one case. “You've read the Lemley brief. I've read the Lemley brief,” Breyer said at one point.

I'm not sure if Lemley's arguments are going to carry the day—Justices Samuel Alito and Elena Kagan sounded skeptical, and three other justices had little to say. (You can read my full take on the arguments here.) But it was clear that Lemley's argument resonated with the court's newest justice and with Breyer, who made a point of commending the briefs. “I thought the bar really earned its pay on both sides,” he said.

When Goodwin Procter partner Willy Jay, representing respondent Teva Pharmaceuticals, thanked him for the compliment, Breyer clarified that “there were an awful lot of them.”

Kagan needled Jay a minute later, saying that “in Mr. Shanmugam's excellent brief, he certainly seems to think that 'on sale' means something different from what you thought it meant.”

Jay rolled with it, replying that “in both of his excellent briefs you won't find any dictionary definition anywhere of 'on sale.'”

Shanmugam then picked up the thread on rebuttal, prompting Breyer to call for a truce. “You have a whole brief … I mean, everybody's is excellent. OK?” the justice said.

“The case is submitted,” Roberts announced moments later. “I am sure we'll come up with an excellent opinion.”

Set. The Damn. FRAND Rate.

While the Supreme Court was difficult to gauge in Helsinn, I have no doubts as to where a Federal Circuit panel was headed Monday in the latest round of the smartphone wars. The court sounded ready to reverse an anti-suit injunction that has blocked Huawei Technologies from enforcing a Chinese injunction against Samsung Electronics. I wrote about the arguments here.

One piece that didn't fit in my story is worth noting. The judges expressed the frustration that I think a lot of us experience when following cases like Apple v. Qualcomm where each side accuses the other of reneging on its FRAND commitments—but heaven forbid the court or a jury should actually set a FRAND rate on their portfolios.

“Can you just tell me, practically speaking, when you have two parties that can't negotiate a FRAND license, how it's supposed to happen?” Judge Todd Hughesasked Quinn Emanuel Urquhart & Sullivan partner Charles Verhoeven, representing Samsung (and whose firm is co-counsel to Qualcomm).

“This is supposed to end,” Chief Judge Sharon Prost said. “The parties are supposed to agree on some number. And if they can't do that, somebody has to impose it.”

Verhoeven respectfully disagreed. He said U.S. District Judge William Orrick III, who's presiding over the case, need only to determine whether the parties have breached their FRAND commitments.

“And in doing that, does he not have to put some sort of dollar value or range on the portfolio?” Prost asked.

“I don't know that it's necessary,” Verhoeven said.

I wasn't there, but from the audio it doesn't sound as if the judges were amused.

Secret Meetings on Section 101

Bloomberg's Malathi Nayak had a nice scoop today about Sens. Thom Tillis and Chris Coons calling representatives of Google, Amazon.com, Apple, Qualcomm PhRMA, Ericsson and others to Capitol Hill for closed door discussions on reworking Section 101.

It seems like an odd time in the legislative calendar—awfully late to spring something like this on the lame duck session, but I suppose stranger things have happened.

If nothing else this would seem to raise the odds of patent eligibility being in play in the 116th.

Glaser Retools Its IP Group

Glaser Weil Fink Howard Avchen & Shapiro has a new top IP dog. Larry Hadleyhas joined from McKool Smith to recharge the firm's IP practice. His hiring follows the recent retirement of Adrian Pruetz and the departure of three other IP partners.

Hadley says it's a good time for a Los Angeles firm to be building, given the migration of patent cases into California following the Supreme Court's TC Heartland venue decision. “It seems like a really good opportunity to be back at a California-based firm given the amount of IP work that was already here and is moving here,” Hadley told my ALM colleague Xiumei Dong.

“If you have a firm that does a lot of work in Los Angeles and the entertainment community, you almost have to have an IP group,” Patricia Glaser, chair of the firm's litigation department, told Dong. She stressed that the firm will continue to add talent to its IP group.

Who's Arguing?

The Federal Circuit will be closed for business tomorrow in observance of the national day of mourning for George H.W. Bush. The court has rescheduled the 12 cases slated to be heard Wednesday morning to Thursday afternoon. That's going to mean a long day for some judges—and probably some hastily rearranged travel plans for some lawyers.

One of the Wednesday cases I'd been eyeing is Intellectual Ventures II v. JPMorgan Chase. This is a dispute over a single phrase in IV's 7,634,666 patent on a cryptographic engine. The engine includes “a sign inversion unit” for performing arithmetic operations on data. U.S. District Judge Alvin Hellerstein construed that to mean “a unit that changes positive numbers into negative numbers and negative numbers into positive numbers.”

Both sides stipulated to the construction until JPMorgan said “Aha! The IBM crypto cards we use only convert positive numbers into negative, not vice versa,” and won summary judgment of non-infringement. IV argues that, despite use of the word “and,” the construction does not require both types of sign inversion. IV has brought in Tensegrity Law Group's Matthew Powers to argue the appeal against Kirkland & Ellis' Ken Adamo for JPMorgan Chase/IBM.

Who's Not Arguing?

As founder of U.S. Inventor, Paul Morinville's duties include “walking the halls of Congress in Washington D.C. educating over 350 offices about the damage caused by patent reform to companies like his and inventors.” Morinville had been hoping to educate a Federal Circuit panel about a patent application of his own, on a process for managing access rules in dynamic organization structures. Over 14 years, Morinville has overcome examiner objections on novelty, obviousness, particularity and eligibility, only to have the PTAB shoot down his application this year on eligibility grounds. “When I filed this application, I had a full head of hair,” Morinville writes in his brief, “and none of it was gray.” He won't get a chance to argue directly to the judges; they've submitted his appeal on the briefs.

That's all from Skilled in the Art for Today. I'll see you all again on Friday.