Welcome to Skilled in the Art. I'm Law.com IP reporter Scott Graham. This will be my last IP briefing of 2018—I'll be returning on Friday, Jan. 4. You'll find an abbreviated holiday getaway edition below. Thank you all for reading this past year, and my best wishes as we roll into 2019.
Bumble Can't Swipe Away Tinder Patents
It looks as if the Match Group and Bumble Trading are going to be in a long-term, committed relationship—in federal court. U.S. District Judge Alan Albright this week turned away Bumble's Section 101 challenge to Match Group patents that protect its Tinder dating app. Resolution will have to await claim construction and summary judgment motions, at the least.
“The claims here are directed to a new user interface, in this case, for a dating application,” Albright, of the Western District of Texas, wrote in a 14-page order. They “improve existing interface technology sufficiently to survive a motion to dismiss under Section 101.”
Match claims the Tinder application and its “swipe right” gesture for showing interest have revolutionized the world of online dating. Match sued Bumble, a dating app for women co-founded by former Tinder employees, in May, after acquisition attempts apparently weren't fruitful. Bumble moved to dismiss, arguing the patents are directed to the abstract concepts of matchmaking and picking cards out of a stack.
A few takeaways from Albright's ruling:
➤ GUIs gain momentum.The technology industry has mobilized to fight the Berkheimer patent eligibility decision at the U.S. Supreme Court. Maybe it ought to shift some resources to user interface cases. As Albright pointed out, “The Federal Circuit has repeatedly confirmed that concrete improvements to user interfaces recite patent-eligible computer improvements.” He cited a string of cases including October's Data Engine Technologies v. Google. As it happens, Google petitioned for en banc review three weeks ago, warning that the decision “will, if uncorrected, affect many future cases.” No amicus support yet.
➤Albright is all right for patent owners. This opinion is just one data point, but it suggests that Albright, who practiced at Bracewell and Fish & Richardson and served as a magistrate judge before his appointment by President Trump, will be popular with patent owners. He applied the presumption of validity to Match's patents, while noting the debate over whether it should apply in the Section 101 context. He also wrote “it is important to note” that the PTO issued the patents in the last two years, following the Supreme Court's Alice decision and many Federal Circuit cases interpreting it. With the PTO continuing to tighten its Section 101 guidance under director Andrei Iancu, that could become a powerful defense against eligibility challenges.
➤ The case is far from over. “It is entirely possible that, after discovery and further development of the record, Bumble will be successful in demonstrating that the asserted claims are invalid,” Albright wrote. Each side has also accused the other of trade secret theft, with the parties currently arguing over the removal of Bumble's state court suit to Albright's courtroom.
Match is represented by a Caldwell, Cassady & Curry team led by partner Brad Caldwell and associates John Summers and Warren McCarty. John Palmer of Naman, Howell, Smith & Lee was also on the motion. Bumble is represented by Cooley and The Dacus Firm.
My Executive Branch Can Beat Your Executive Branch
Patent owners and their supporters are weighing in at the U.S. Supreme Court as it gears up to hear its next patent case, Return Mail v. U.S. Postal Service. This case will decide whether the government is a “person” who may petition for covered business method review under the America Invents Act.
This issue is so narrow—the government is only an occasional AIA petitioner—that it seems like a blank slate for interested groups to pitch their pet Patent Trial and Appeal Board gripes. For example, the Cato Institute seems to be re-litigating the Article III concerns it raised in Oil States, including the PTO director's authority to “stack” panels with extra PTAB judges.
But the Cato brief, whose authors include Jones Day partner Greg Castanias and the institute's Ilya Shapiro, makes some interesting points. The attorneys point out that the PTO has the right to intervene in appeals of PTAB judgments, which means you could get “the constitutional oddity of a case pitting two agencies in the Executive Branch against one another.”
That's not their own language, by the way. They're quoting a D.C. Circuit judge's concurring opinion from a 2009 case—some guy by the name of Brett Kavanaugh.
The lawyers concede that Congress can permit such an oddity in narrow circumstances. But to do so, it must speak in “clear and explicit language,” not through silence.
That argument resonates with Ropes & Gray partner Matt Rizzolo. The executive branch can take both sides of the v. “if Congress has spoken directly to it,” he says. “They haven't spoken clearly in this case.”
That makes sense to me too. But to be fair to the government, it hasn't had an opportunity yet to file a merits brief on the “person” issue. That's because neither party argued it to the Federal Circuit—it was raised for the first time in Judge Pauline Newman's dissent.
That's all from Skilled in the Art for 2018. See you next year!