Welcome to Skilled in the Art. I'm Law.com IP reporter Scott Graham. The Federal Circuit is in session this week so my mind has been on the court, while Ross Todd has directed my attention to some Ninth Circuit news:

• Federal Circuit hands big win to Ericsson but holds its tongue on FRAND methodology.

• The appellate court is pondering a new gloss on Nautilus indefiniteness precedent.

• Alex Kozinski copyright precedent will be in play when Alex Kozinski argues to Ninth Circuit next week.

• Federal Circuit judge dissents from denial of leave to file a reply brief. As always, you can email me your feedback and follow me on Twitter.

MoloLamken's Jeffrey Lamken

Federal Circuit: No Comment on FRAND Methodology

Raymond Chen is a judge of his word. At oral argument last summer in TCL Communication v. Telefonaktiebolaget LM Ericsson, he explained what might happen if the court agreed that Ericsson deserved a jury trial on its FRAND obligation, rather than the bench trial it received before U.S. District Judge James Selna.

"Hypothetically, this court would issue an opinion that doesn't comment at all or rule at all on any of the plethora of FRAND-related issues?" Chen asked MoloLamken's Jeffrey Lamken at the August 7 hearing.

That's exactly how it played out Thursday in the court's decision. The Federal Circuit vacated Selna's 115-page opinion explicating a top-down methodology for valuing Ericsson's 2G, 3G and 4G SEPs, without even the slightest hint about the merits of Selna's opinions.

"I looked through the footnotes," said David Long of Essential Patent LLC, who's followed the case on his Essential Patent Blog. "They were very careful not to express any view."

A lot of big players were involved in the case. Nokia, InterDigital, Panasonic, Google, HP, HTC, Uber Technologies, Toyota, Honda, Nissan and Hyundai were among the amici curiae at the Federal Circuit, with Wilson Sonsini Goodrich & Rosati; Alston & Bird; Perkins Coie; Orrick, Herrington & Sutcliffe; and Finnegan, Henderson, Farabow, Garrett & Dunner among the firms representing them.

They were looking for answers to questions such as: Is the "top-down" approach of divvying up the aggregate value of a standard among patent holders preferable to the approach of weighing comparable licenses? And do minimum floors on royalties, as opposed to a strict percentage of sales, discriminate against the lower end of the market?

We have a few small clues from the oral argument. Judge Todd Hughes asked Sheppard Mullin Richter & Hampton partner Stephen Korniczky, representing TCL, this question: "If you're going to apply a pure [percentage] rate, Apple's going to pay $8 per phone, because their phones cost more, and you're going to pay $2 a phone because your phones cost less. And why is that fair, because you're buying the same exact patent portfolio?"

But all we know for certain is that, because the litigation included Ericsson's claims for previous unlicensed use of its patents, it was entitled to a jury trial. "We hold that the district court deprived Ericsson of its Seventh Amendment right to a jury trial by deciding the legal relief of a release payment for past unlicensed sales," Chen wrote.

Going forward, this means that "if one side or the other wants a jury trial, they're going to get it," Long says, because FRAND disputes rarely end up in court without some allegation of past infringement.

Thursday's win goes to MoloLamken and to Ericsson's trial lawyers at McKool Smith, who took care to put Ericsson's objection to the bench trial in the record.

"For Ericsson, this is a good win," Long said. "For the rest of us, it's disappointing."

Judge Richard Taranto of the U.S. Court of Appeals for the Federal Circuit

Sharpening Up Indefiniteness Precedent

A dispute between medical device makers sounds poised to make new law on indefiniteness at the Federal Circuit.

Nevro Corp. and Boston Scientific have been battling it out over Nevro patents on a spinal cord stimulation system that treats pain without producing a sense of numbness or tingling known as paresthesia. U.S. District Judge Vince Chhabria found a handful of Nevro's patent claims invalid for indefiniteness last year.

The biggest problem is the phrase, "a signal generator configured to generate a therapy signal" in accordance with therapy signal parameters. Chhabria ruled that a person of skill in the art would not be able to tell if "configured to" means that the signal generator has the capacity to be programmed, or actually has been programmed.

Morrison & Foerster partner Deanne Maynard argued to the Federal Circuit for Nevro on Monday that "configured to" refers to the ability of a user to choose signals within a set of parameters, much like a TV viewer would choose a program on a VCR.

Judge Richard Taranto asked her to address indefiniteness at a "doctrinal level." Following the Supreme Court's 2014 indefiniteness decision in Nautilus v. Biosig Instruments, what should the Federal Circuit do when faced with two possible claim constructions, he asked.

"The Supreme Court rejected the view that as long as there were two reasonable readings, the claim was indefinite," Maynard said.

But Nevro seems like "the reverse" of that, Taranto said, in that the competing constructions might be "perfectly evenly balanced."

"If there are two equally strong understandings of claim terms," Judge Raymond Chen echoed, "then the claim term is indefinite?"

"I don't think this court has held that," Maynard said.

Boston Scientific's attorney, Arnold & Porter Kaye Scholer partner Matthew Wolf, argued that Nevro is pulling a switcheroo, having told the PTO that their signal parameters routinely produce paresthesia-free treatment, but now admitting that the paresthesia limitation is met only on a patient-by-patient basis.

Taranto brought the conversation back to Nautilus. "So you can't know in advance for sure" whether the claim limitation is going to be met. "I gather that pre-Nautilus we had a number of cases that said you don't have to know in advance. Do you think Nautilus changed that?"

"At least at the broadest level it did," Wolf said.

Will Ninth Circuit Cite Kozinski to Kozinski?

Former Ninth Circuit Chief Judge Alex Kozinski, who retired from the bench two years ago amid a judicial inquiry into allegations of harassment and sexual misconduct, will return to the court Monday as an advocate in the copyright case Zindel v. Fox Searchlight Pictures.

My ALM colleague Ross Todd reported the news Thursday along with a rundown of the ethical implications, including comment from one of his accusers. Kozinski himself declined to comment, citing the pending nature of the case.

I'll just add that Kozinski made a lot of copyright law while at the Ninth Circuit, and one small piece of that legacy will be in play during Monday's arguments.

Kozinski is seeking to revive a suit by the son of Pulitzer Prize-winning author Paul Zindel against the filmmakers behind the Academy Award-winning film "The Shape of Water." U.S. District Judge Percy Anderson ruled that the film and Zindel's 1969 play "Let Me Hear You Whisper" share the same basic premise, but that the film includes many story lines that the play does not.

Kozinski and co-counsel Marc Toberoff of Toberoff & Associates argue in their brief that Anderson improperly filtered out the similarities on a piece-by-piece basis, rather than considering them in combination. "This is expressly prohibited by this Court's precedent," they write, citing the court's 2002 decision Metcalf v. Bochco.

Metcalf held that "the presence of so many generic similarities and the common patterns in which they arise" can give rise to a triable question of substantial similarity. "The particular sequence in which an author strings a significant number of unprotectable elements can itself be a protectable element."

Metcalf's author: Alex Kozinski.

A Dissent From Denial (of a Routine Motion)

Maybe it's happened before and I've missed it. But Thursday marked the first time I'm aware of that a Federal Circuit judge dissented from the denial of a motion for leave to file a reply brief to an en banc petition.

It happened in Chrimar Systems v. ALE USA, a case I wrote about in October. Chrimar won a $443,000 jury verdict plus an ongoing royalty in a 2016 trial, only to have the judgment vacated after the PTAB invalidated its patents in 2017 and 2018. Chrimar has petitioned the Federal Circuit to reconsider en banc the Fresenius finality rule, which several members of the court have criticized in past opinions.

ALE USA, formerly Alcatel-Lucent Enterprises USA, submitted opposition last week arguing that any doubts about Fresenius were settled by the Supreme Court's Oil States decision last year. "At its essence, Chrimar argues to overrule sound precedent so that Chrimar receives damages from ALE for infringement of patents that never should have issued," ALE argues in a filing signed by Jackson Walker partner Chris Cravey. "That is directly counter to the congressional policy of protecting the public from invalid patents and should be rejected."

Chrimar's attorneys, Rob Greenspoon of Flachsbart & Greenspoon and sole practitioner Andrew Dhuey, asked the court for leave to file a reply that "will help the Court reach a fully-informed decision on whether to grant the petition for rehearing en banc." ALE opposed, saying that would represent "a dramatic and unjustified increase in the briefing allocation between the parties."

The Federal Circuit issued a brief order Thursday: "The motion is denied. Circuit Judge NEWMAN dissents."

Judge Pauline Newman is one of the past critics of the Fresenius rule, and the court's most frequent dissenter. I don't see this as changing the odds for en banc review one way or the other. But if the court rejects en banc review, a dissent from denial now seems likely.

That's all from Skilled in the Art this week. I'll see you all again on Tuesday.