“One patent / patent application after another after another is immolated not because there is a single thing wrong with the substance of a single claim, but because the claims are accused of looking ‘similar’ to other claims previously immolated by The Star Chamber of Madison Place.”
As stated in Part One of this series, the Fifth Amendment of the U.S. Constitution guarantees, inter alia, that no person shall be deprived of property (including intellectual property), without due process of law. However, the Supreme Court has never held that a single appellate court must comply with Fifth Amendment due process of law.
The closest the Supreme Court ever came to such a radical idea as requiring any appellate court in the nation to comply with due process of law was at a time when “Three’s Company” and “The Muppet Show” dominated the 7PM-9PM Nielsen’s ratings. See Singleton v. Wulff, 428 U.S. 106 (1976) (warning the Eighth Circuit that “injustice was more likely to be caused than avoided by deciding the issue without petitioner’s having had an opportunity to be heard,” but not actually requiring the Eighth Circuit to comply with Fifth Amendment due process). In contrast, the Supreme Court has held that even a man classified as an “enemy combatant” by the U.S. government is entitled to at least some measure of due process. See Hamdi v. Rumsfeld, 542 U.S. 507 (2004).
Le Tribunal des Marsupiaux
Procedures in which violations of due process are so gross that fundamental justice is denied are often referred to as “kangaroo trials.” Such trials deal more in capriciousness than in law. Such trials are rejected by common men bearing common sense.
For example, common sense dictates that a first person should not presumed guilty, much less convicted of a particular crime, merely because a second person with a similar sense of fashion was arrested and convicted for the same crime. Now consider the concept that, not only was the first person convicted, but a third person with the same fashion sense is accused and convicted because the first person was convicted. Sounds absurd? It is! Yet this practice is one of the fundamental pillars of the Alice-Mayo test as is practiced by Federal Courts as, before a single iota of evidence is gathered, the judge before a patent suit dismisses the case as looking too much like another case. One patent / patent application after another after another is immolated not because there is a single thing wrong with the substance of a single claim, but because the claims are accused of looking “similar” to other claims previously immolated by The Star Chamber of Madison Place.
The Big Question
Collateral estoppel is a rule derived from the common law whereby a person is prohibited from re-litigating an issue after the issue was properly decided in a body having subject-matter jurisdiction. This means that an issue of fact or law properly decided against a particular party in one case cannot be re-decided in another case by the same party. There are exceptions to the collateral estoppel rule – all based on fundamental fairness and due process of law – none of which are relevant to this discussion.
A natural question arises re collateral estoppel: when, if ever, is a person rightfully prejudiced by a determination in a separate litigation based on a separate set of facts and circumstances with which said person had no possible involvement or interest? If you’re a constitutional scholar or even a 2L, you’re likely to say “never.”
Yet this practice is another fundamental pillar in the average Alice-Mayo analysis.
What is the basic difference between the claims in Investpic and the claims in Berkheimer?
The only difference in these cases was that one CAFC panel couldn’t be bothered to read the text of 35 U.S.C. § 112(f) and believed that their fine arts degrees, their J.D.s, and their political appointments to The Bench conferred a god-like grasp on all aspects of law and of advanced statistics as such applies to financial analyses. Things like evidence, statutory language, actual Supreme Court precedent, and due process are the concerns of the less gifted. It’s a Dunning-Kruger thing.
This is not to say that a legal rule taken from Investpic cannot be applied. However, what is to be applied? That functional language is verboten in claims despite the statutory language of 35 U.S.C. § 112(f)? That computer-generated data relating to images of animated characters are of the “physical realm” while images relating to actual markets are not? Berkheimer cannot be reconciled with Investpic, and yet one government employee after another will assert Investpic applies your claims while Berkheimer does not apply. Why is not clear.
Amazingly enough, Judge Taranto, who penned Investpic and was part of the Berkheimer panel, never asserted that the claims in Berkheimer were mental steps in either of the Berkheimer and Berkheimer en banc decisions despite abundant opportunity to do so. Given that the Berkheimer en banc decision was issued about two weeks after the Investpic decision, the divergent outcomes are difficult to resolve. Regardless, because Investpic cannot be resolved with 35 U.S.C. § 112(f), Alice Corp., Bilski, Berkheimer, and reality, the Investpic holding cannot be controlling law.
If the evidence-based holding of Berkheimer is applied, the patent holder wins. If the evidence-based holding of Bilski is applied, the patent holder wins. If the evidence-based holding of Alice Corp. is applied, the patent holder wins. If the evidence-based holding of Mayo. is applied, the patent holder wins. Given that Investpic cannot overrule Alice Corp., Bilski, and Mayo, the only possible way Investpic can possibly apply to the patent holder while Berkheimer, McRO, and Enfish survive is some twisted application of collateral estoppel personal to the patent holder. Admittedly, this application of Investpic analogy to collateral estoppel isn’t perfect, but its far closer to reality than asserting Investpic represents controlling legal precedent.
Pray for Vegas Odds
Every patent applicant / patent holder accused of having claims that look too much like Investpic, Recognicorp, and Electric Power Group, and not enough like Berkheimer, McRO, and DDR Holdings knows the peril. Salvation, if any, lies in the Federal Circuit panel selected for review. Yet now consider the plight of a patent applicant who stands accused of violating Alice-Mayo despite a mountain of evidence favoring said patent applicant because Investpic – a case that said patent applicant had no opportunity to influence and that cannot be reconciled with the statutory patent law, Supreme Court precedent, and a dozen other Federal Circuit decisions issued before and after. Better to blow your hard-earned money in lottery tickets and at the Vegas casinos than invest in an Alice-Mayo appeal and hope the decision goes your way.
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