Archive for August, 2010

Judge O’Malley’s Answers to Questions for the Record

Tuesday, August 31st, 2010

The Senate Judiciary Committee has posted Federal Circuit nominee Kathleen O’Malley’s answers to its written questions.  You may recall that she appeared before the committee to answer questions back on July 28, 2010.  If memory serves me correctly, the Senate Judiciary Committee asked no questions relating to patents during the in-person appearance or in the questions for the record.

Judge O’Malley’s written answers to the Senate Judicary Committee’s questions are available here: [Read].

Alice in Wonderland at the Federal Circuit

Monday, August 30th, 2010

Advocates at the Federal Circuit sometimes (although rarely) use poetry during oral argument.  In Figueroa v. U.S., 466 F.3d 1023 (Fed. Cir. 2006), a case from 2006  concerning the constitutionality of patent fees, one of the attorneys used verse from Alice in Wonderland plus his own original composition:  [Listen].

You can listen to the entire oral argument here: [Listen].

You can read the court’s opinion here: [Read].

Cybor Watch

Friday, August 27th, 2010

It has been almost four years since the Federal Circuit declined to take en banc review of the case Amgen, Inc. v. Hoechst Marion Roussel that would have allowed the court to review its en banc ruling in Cybor Corp v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir. 1998).   In declining to hear the Amgen case en banc, several of the judges noted that when the right case came along, they would be willing to grant en banc review to reconsider Cybor.   [Read].

Judge Clevenger and Judge Moore recently made these comments which seemed to imply discontent with the Cybor precedent during the oral argument of Lincoln National Life Insurance Co. v. Transamerica Life Insurance Co., 2009-1403 (Fed. Cir. June 23, 2010): [Listen]. 

Judge Moore also made a comment about revisiting Cybor back in 2009 during the oral argument of Kara Technology, Inc. v. Stamps.com, Inc. [Listen].

And, you might recall that the court can take en banc review sua sponte.  They did so in Abbott Labs v. Sandoz, Inc., 566 F.3d 1282 (Fed. Cir. 2009) on the limited issue of product-by-process claims, for example.

One wonders if the time is now ripe and whether the vacancies on the court favor granting en banc review of Cybor

The Cybor decision is available here: [Read].

(I should note that I am not advocating an en banc review of Cybor — just curious if it is coming down the pike.)

Offers to Sell

Thursday, August 26th, 2010

In Transocean v. Maersk, 2009-1556 (Fed. Cir. Aug. 18, 2010), the Federal Circuit addressed the issue of whether an offer to sell that is communicated outside the territorial boundaries of the United States  by the offeror to the offeree but for performance within the United States satisfies 35 USC §271(a)’s offer to sell provision.  The district court ruled that it did not.  The Federal Circuit reversed, stating:

Section 271(a) defines infringing conduct: “whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States. . . infringes the patent.” 35 U.S.C. § 271(a). An offer to sell is a distinct act of infringement separate from an actual sale. An offer to sell differs from a sale in that an offer to sell need not be accepted to constitute an act of infringement. See MEMC Elec. Materials, Inc. v. Mitsubishi Materials Silicon Corp., 420 F.3d 1369, 1376 (Fed. Cir. 2005). Moreover, the damages that would flow from an unac-cepted offer to sell and an actual sale would likely be quite different. See Timothy R. Holbrook, Liability for the “Threat of Sale”: Assessing Patent Infringement for Offer-ing to Sell an Invention and Implications for the On-Sale Patentability Bar and other Forms of Infringement, 43 Santa Clara L. Rev. 751, 791-92 (2003). We analyze an offer to sell under § 271(a) using traditional contract principles. Rotec Indus., Inc. v. Mitsubishi Corp., 215 F.3d 1246 (Fed. Cir. 2000). There is no dispute that there was an offer to sell in this case, but Maersk USA argues that the offer was made in Norway, not the United States, thereby absolving it of § 271(a) liability.

Maersk A/S (a Danish company) and Statoil ASA (a Norwegian company) negotiated the contract that is the subject of this alleged offer to sell. Their U.S. affiliates, Maersk USA and Statoil executed the contract in Norway. The contract included an “Operating Area” of the U.S. Gulf of Mexico. The district court held that because the negotiations and execution took place outside the U.S., this could not be an offer to sell within the United States under § 271(a).

Transocean argues that to hold that this contract be-tween two U.S. companies for performance in the U.S. is not an offer to sell within the U.S. simply because the contract was negotiated and executed abroad would be inconsistent with Lightcubes, LLC v. Northern Light Products, Inc., 523 F.3d 1353 (Fed. Cir. 2008) (holding that a foreign company cannot avoid liability for a sale by delivering the product outside the U.S. to a U.S. customer for importation). Transocean argues that a contract between two U.S. companies for delivery or performance in the U.S. must be an offer to sell within the United States under § 271(a).

Maersk USA argues that Rotec, 215 F.3d 1246 and MEMC, 420 F.3d 1369 require that, for there to be an offer to sell within the U.S., the offer activities must occur within the U.S. It argues that the negotiations and execution outside the U.S. preclude offer to sell liability in this case.

This case presents the question whether an offer which is made in Norway by a U.S. company to a U.S. company to sell a product within the U.S., for delivery and use within the U.S. constitutes an offer to sell within the U.S. under § 271(a). We conclude that it does. Sec-tion 271(a) states that “whoever . . . offers to sell . . . within the United States any patented invention . . . infringes.” In order for an offer to sell to constitute in-fringement, the offer must be to sell a patented invention within the United States. The focus should not be on the location of the offer, but rather the location of the future sale that would occur pursuant to the offer.

The offer to sell liability was added to the patent stat-ute to conform to the April 1994 Uruguay Round’s Trade-Related Aspects of Intellectual Property Agreement (TRIPS). The underlying purpose of holding someone who offers to sell liable for infringement is to prevent “generat-ing interest in a potential infringing product to the com-mercial detriment of the rightful patentee.” 3D Sys., Inc. v. Aarotech Labs., Inc., 160 F.3d 1373, 1379 (Fed. Cir. 1998). The offer must be for a potentially infringing article. Id. We are mindful of the presumption against extraterritoriality. Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 441 (2007). “It is the general rule under United States patent law that no infringement occurs when a patented product is made and sold in another country.” Id. This presumption has guided other courts to conclude that the contemplated sale would occur within the United States in order for an offer to sell to constitute infringe-ment. See, e.g., Semiconductor Energy Lab. Co. v. Chi Mei Optoelectronics Corp., 531 F. Supp. 2d 1084, 1110-11 (N.D. Cal. 2007). We agree that the location of the con-templated sale controls whether there is an offer to sell within the United States.

The statute precludes “offers to sell . . . within the United States.” To adopt Maersk USA’s position would have us read the statute as “offers made within the United States to sell” or “offers made within the United States to sell within the United States.” First, this is not the statutory language. Second, this interpretation would exalt form over substance by allowing a U.S. company to travel abroad to make offers to sell back into the U.S. without any liability for infringement. See 3D Sys., 160 F.3d at 1379. This company would generate interest in its product in the U.S. to the detriment of the U.S. patent owner, the type of harm that offer to sell within the U.S. liability is meant to remedy. Id. These acts create a real harm in the U.S. to a U.S. patentee.

Neither Rotec nor MEMC preclude our determination that an offer by a U.S. company to sell a patented inven-tion to another U.S. company for delivery and use in the U.S. constitutes an offer to sell within the U.S. First, SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1375 (Fed. Cir. 2010) contemplated whether the territorial reach of the offer to sell language had been decided by Rotec and concluded that it had not. The defendants in Rotec did argue that because the offer was made in China, not the U.S., they did not infringe. Rotec, 215 F.3d at 1251. And the Rotec court discussed the evidence regard-ing meetings and communications made in the United States. Id. at 1255. The Rotec court held that there was no offer to sell, not because of the location of the offer or of the ultimate sale, but rather because there was no evi-dence that an offer was communicated or conveyed by the defendants. Id. at 1255 (“None of this evidence, however, establishes any communication by Defendants with any third party.”). In concurrence, Judge Newman indicates that she would have instead decided the case on the ground that there was no offer which contemplated a sale within the U.S. Id. at 1259 (Newman, J., concurring). The MEMC case is even further attenuated as it did not even consider location of the offer or the contemplated sale, but instead held there was no offer to sell because the emails at issue, which contained only technical data and no price terms, cannot constitute an offer that could be made into a binding contract by acceptance. 420 F.3d at 1376.

We conclude that neither Rotec nor MEMC control this case. We hold that the district court erred because a contract between two U.S. companies for performance in the U.S. may constitute an offer to sell within the U.S. under § 271(a). The fact that the offer was negotiated or a contract signed while the two U.S. companies were abroad does not remove this case from statutory liability. We therefore vacate the district court’s summary judgment of noninfringement.4

The offer to sell issue was discussed with appellant’s counsel during oral argument and can be heard here: [Listen].

The entire oral argument can be heard here: [Listen].

The court’s opinion is available here: [Read].

Chief Judge Rader’s Portrait Presentation

Tuesday, August 24th, 2010

This might be of interest to patent practitioners in the D.C. area:rportrait11

“At Least” and the Specific Exclusion Principle as a Limit on the Doctrine of Equivalents

Saturday, August 21st, 2010

The Federal Circuit addressed the doctrine of equivalents recently  in the case of Adams Respiratory Therapeutics, Inc. et al. v. Perrigo Co. et al., 2010-1246 (Fed. Cir. Aug. 5, 2010).  One issue facing the panel was whether the term “at least 3500 hr*ng/mL” can be interpreted under the doctrine of equivalents to be a value less than 3500 hr*ng/mL.

The panel chose to read the language “at least 3500 hr*ng/mL”  as the simplest way of expressing a range that is “greater than or equal to 3500 hr*ng/mL.”  See Adams at 18.   However, one might make the alternative argument that “at least 3500 hr*ng/mL” is actually the simplest way of expressing  a range that is “not less than 3500 hr*ng/mL.”  Moreover, this would comport with the Patent Office’s preference for avoiding the use of negative limitations in claims.  If such an interpretation is adopted for the “at least 3500 hr*ng/mL” language, the “specific exclusion principle” might serve to limit application of the doctrine of equivalents and require a different outcome than that reached by the panel.

For background, the Adams panel concluded:

We previously determined that the doctrine of equivalents may apply to claims containing specific numeric ranges. See Philips, 505 F.3d at 1378 (concluding that “resort to the doctrine of equivalents is not foreclosed with respect to the claimed concentration range”); Abbott, 287 F.3d at 1107-08 (”The fact that a claim recites numeric ranges does not, by itself, preclude Abbott from relying on the doctrine of equivalents.”); Jeneric/Pentron, Inc. v. Dillon Co., 205 F.3d 1377, 1383 (Fed. Cir. 2000) (noting that “the district court will have the opportunity to adjudicate fully the merits of infringement under the doctrine of equivalents” of a claim to composition comprising specific weight percentages of various oxides). In Philips, we addressed a claim requiring the presence of a halogen “in a quantity between 10-6 and 10-4 umol/mm3,” which we construed as “between 1 × 10-6 and 1 × 10-4 umol/mm3.” 505 F.3d at 1376. We rejected the argument that applying the doctrine of equivalents would vitiate this claim limitation because “[a] reasonable juror could make a finding that a quantity of halogen outside that [claimed] range is insubstantially different from a quantity within that range without `ignor[ing] a material limitation’ of the patent claim.” Id. at 1379. We thus concluded that the doctrine of equivalents was not foreclosed with respect to the claimed range. Id. at 1380. Similarly, in Abbott, we concluded that the doctrine of equivalents could apply to a claim requiring a 68.8% to 94.5% by weight of a phospholipid. 287 F.3d at 1107-08. Abbott’s expert testified that 95% phospholipid “would be exactly the same as the claimed phospholipid.” Id. at 1107. We concluded that “[a]lthough this testimony expands the upper limit beyond the range literally recited by the claim, it does not eliminate the upper limit altogether.” Id. We therefore concluded that infringement under the doctrine of equivalents would not eliminate the upper limit of the phospholipid claim. Id. “The fact that a claim recites numeric ranges does not, by itself, preclude Abbott from relying on the doctrine of equivalents.” Id. at 1107-08. Finally, in Jeneric, the district court denied Jeneric’s request for a preliminary injunction, concluding that Jeneric failed to establish a likelihood of success on infringement under the doctrine of equivalents. 205 F.3d at 1383. Although we affirmed the court’s denial of Jeneric’s request for a preliminary injunction, we indicated that the record on infringement under the doctrine of equivalents was premature. Id. at 1384. We noted that the accused composition contained 0.041% of lithium oxide, which fell outside the claimed range of 0.5% to 3%. Id. We concluded that “[a] full record will show whether that difference is insubstantial.” Id. We are bound by these cases which hold that the doctrine of equivalents can apply to a range—a numerical limitation in a claim. The mere existence of a numerical value or range in a claim, absent more limiting language in the intrinsic record, does not preclude application of the doctrine of equivalents.

Adams Respiratory Therapeutics, Inc. et al. v. Perrigo Co. et al., slip op. at 17-18.

 

This explanation by the panel is logical based on the cases they rely upon.  But, other cases would suggest that a different result could also be reached.  For example, the panel’s decision does not address the Athletic Alternatives, Inc. v. Prince Mfg., Inc. case.  And, the panel’s decision does not address the “specific exclusion principle” that is a corollary to the All Elements Rule.

Athletic Alternatives, Inc. v. Prince Mfg., Inc.

 In the Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573 (Fed. Cir. 1996) case, a case that concerned the stringing of tennis racquets, the Federal Circuit construed a claim term to mean “at least three values”:

We conclude that Claim 1 of the ‘097 patent includes the limitation that the splay-creating string end offset distance take on at least three values, i.e., a minimum, a maximum, and at least one intermediate value. We thus affirm the district court’s conclusion that Claim 1 does not literally read on the Vortex racket.

Athletic Alternatives, Inc. v. Prince Mfg., Inc., at 1581.

In applying the doctrine of equivalents to this term, the court indicated that “at least three” specifically excluded two and was thus barred by the doctrine of equivalents:

As a corollary to the “all limitations” rule discussed above, we have held that “the concept of equivalency cannot embrace a structure that is specifically excluded from the scope of the claims.” Dolly, Inc., 16 F.3d at 400, 29 USPQ2d at 1771. Applying this formulation to the undisputed facts of the instant case, we conclude that the intermediate offset distance required by the properly construed claim cannot have an equivalent in a racket with only two offset distances. In other words, the two-distance splayed string system was “specifically excluded from the scope of the claims.” Id. To hold Prince liable for infringement of Claim 1 of the ‘097 patent for its production and sale of the Vortex racket would thus run afoul of our holding in Dolly, Inc. and the “all limitations” rule from which it derives. As a result, AAI is precluded as a matter of law from successfully asserting that the Vortex racket infringes Claim 1 of the ‘097 patent under the doctrine of equivalents.

Athletic Alternatives, Inc. v. Prince Mfg., Inc., at 1583.

Quite succinctly, the Athletic Alternatives majority concluded that the language “at least three” excluded “at least two.”

The Specific Exclusion Principle

The “specific exclusion principle” was explained in the Scimed v. Advanced Cardiovascular, 242 F.3d 1337 (Fed. Cir. 2001) case:

A particular structure can be deemed outside the reach of the doctrine of equivalents because that structure is clearly excluded from the claims whether the exclusion is express or implied. In Moore, U.S.A., Inc. v. Standard Register Co., 229 F.3d 1091, 56 USPQ2d 1225 (Fed.Cir.2000), for example, the court considered a claim to a mailer-type business form in which the longitudinal strips of adhesive extend “the majority of the lengths” of the longitudinal margins of the form. The patentee argued that the accused form, in which the longitudinal strips of adhesive extended a minority of the length of the longitudinal margin of the form, infringed under the doctrine of equivalents. The court rejected the argument, holding that “it would defy logic to conclude that a minority — the very antithesis of a majority — could be insubstantially different from a claim limitation requiring a majority, and no reasonable juror could find otherwise.” 229 F.3d at 1106, 56 USPQ2d at 1236. Similarly, in Eastman Kodak Co. v. Goodyear Tire & Rubber Co., 114 F.3d 1547, 42 USPQ2d 1737 (Fed.Cir.1997), the patent claimed a process that included crystallizing a particular substance at high temperature “under an inert gas atmosphere.” The patentee argued that certain of the accused processes, which used “heated air” rather than “an inert gas atmosphere” infringed under the doctrine of equivalents. The court rejected that argument, explaining that “the claim language specifically excludes reactive gases — such as `heated air’ — from the scope of the claims” and in light of that specific exclusion, the accused processes could not infringe under the doctrine of equivalents. 114 F.3d at 1561, 42 USPQ2d at 1747. In each of these cases, by defining the claim in a way that clearly excluded certain subject matter, the patent implicitly disclaimed the subject matter that was excluded and thereby barred the patentee from asserting infringement under the doctrine of equivalents.

The court did effectively the same thing in Sage Products, Inc. v. Devon Industries, Inc., 126 F.3d 1420, 44 USPQ2d 1103 (Fed.Cir.1997). In that case, the claim was to a syringe disposal container having an elongated slot at the top of the container body and a “first constriction extending over said slot.” Although those limitations did not literally read on the accused device, the patentee argued that the device infringed under the doctrine of equivalents. The court rejected that argument, noting that the claim

defines a relatively simple structural device. No subtlety of language or complexity of the technology, nor any subsequent change in the state of the art, such as later-developed technology, obfuscated the significance of this limitation at the time of its incorporation into the claim…. If Sage desired broad patent protection for any container that performed a function similar to its claimed container, it could have sought claims with fewer structural encumbrances…. [A]s between the patentee who had a clear opportunity to negotiate broader claims but did not do so, and the public at large, it is the patentee who must bear the cost of its failure to seek protection for this foreseeable alteration of its claimed structure.

126 F.3d at 1425, 44 USPQ2d at 1107. Thus, the court determined that because the scope of the claim was limited in a way that plainly and necessarily excluded a structural feature that was the opposite of the one recited in the claim, that different structure could not be brought within the scope of patent protection through the doctrine of equivalents. See Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 149 F.3d 1309, 1317, 47 USPQ2d 1272, 1277 (Fed.Cir.1998) (subject matter is “specifically excluded” from coverage under the doctrine of equivalents if its inclusion is “inconsistent with the language of the claim”).

Finally, in Athletic Alternatives, Inc. v. Prince Manufacturing, Inc., 73 F.3d 1573, 37 USPQ2d 1365 (Fed.Cir.1996), the court addressed a claim directed to a system for stringing tennis rackets with splayed strings. The court construed the claim to require that the stringing system produce rackets with at least three different splay-creating offset distances for the strings. Having construed the claim in that manner, the court held that, for purposes of the doctrine of equivalents, “the properly construed claim cannot have an equivalent in a racket with only two offset distances,” i.e., the two-distance splayed string system was “specifically excluded from the scope of the claims.” 73 F.3d at 1582, 37 USPQ2d at 1373 (quoting Dolly, 16 F.3d at 400, 29 USPQ2d at 1771). See also Zodiac Pool Care, Inc. v. Hoffinger Indus., Inc., 206 F.3d 1408, 1416, 54 USPQ2d 1141, 1147 (Fed.Cir.2000) (”[N]o reasonable jury could find that a stop which extends to the peripheral edge of a disk is equivalent to one that is `substantially inward’ of the very same disk.”); Wiener v. NEC Elecs., Inc., 102 F.3d 534, 541, 41 USPQ2d 1023, 1029 (Fed.Cir.1996) (doctrine of equivalents does not extend to an accused device in which “the required structure is specifically excluded” by the patent).

The principle articulated in these cases is akin to the familiar rule that the doctrine of equivalents cannot be employed in a manner that wholly vitiates a claim limitation. See Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 29-30, 117 S.Ct. 1040, 137 L.Ed.2d 146 1347*1347 (1997); Athletic Alternatives, 73 F.3d at 1582, 37 USPQ2d at 1373 (”specific exclusion” principle is “a corollary to the `all limitations’ rule”). Thus, if a patent states that the claimed device must be “non-metallic,” the patentee cannot assert the patent against a metallic device on the ground that a metallic device is equivalent to a non-metallic device. The unavailability of the doctrine of equivalents could be explained either as the product of an impermissible vitiation of the “non-metallic” claim limitation, or as the product of a clear and binding statement to the public that metallic structures are excluded from the protection of the patent. As the court made clear in Sage, the foreclosure of reliance on the doctrine of equivalents in such a case depends on whether the patent clearly excludes the asserted equivalent structure, either implicitly or explicitly.

In that respect, this case is an even stronger one for not applying the doctrine of equivalents than cases such as Dolly, Sage, Eastman Kodak, Moore, and Athletic Alternatives. Each of the SciMed patents specifically recognized and disclaimed the dual lumen structure, making clear that the patentee regarded the dual lumen configuration as significantly inferior to the coaxial lumen configuration used in the invention. Where such an explicit disclaimer is present, the principles of those cases apply a fortiori, and the patentee cannot be allowed to recapture the excluded subject matter under the doctrine of equivalents without undermining the notice function of the patent. As the court observed in Sage, the patentee had an opportunity to draft the patent in a way that would make clear that dual lumens as well as coaxial lumens were within the scope of the invention, but the patentee did just the opposite, leaving competitors and the public to draw the reasonable conclusion that the patentee was not seeking patent protection for catheters that used a dual lumen configuration. Under these circumstances, the district court was justified in concluding that a reasonable jury could not find that the accused devices infringe the SciMed patents under the doctrine of equivalents.

Scimed at 1345-47.

 

More recently in Trading Technologies Intl., Inc. v. Espeed et al., 595 F.3d 1340 (Fed. Cir. 2010) the Federal Circuit cited the Scimed case stating:

 The all-elements rule requires this court to consider “the totality of circumstances of each case and determine whether the alleged equivalent can be fairly characterized as an insubstantial change from the claimed subject matter without rendering the pertinent limitation meaningless.” Freedman Seating Co. v. Am. Seating Co., 420 F.3d 1350, 1359 (Fed.Cir.2005). In other words, this rule empowers a court to perform again the standard “insubstantial variation” test for equivalency, but this time as a question of law. Claim vitiation applies when there is a “clear, substantial difference or a difference in kind” between the claim limitation and the accused product. Id. at 1360. It does not apply when there is a “subtle difference in degree.” Id.

In this case, the trial court considered whether an occasional automatic re-centering of the price axis in Dual Dynamic is equivalent to “never chang[ing] positions unless by manual re-centering or re-positioning.” The court determined that the automatic re-centering would render the claim limitation “static”—synonymous with only manual re-centering—meaningless. The trial court’s construction of the claim limitation “static” specifically excludes any automatic re-centering. See SciMed Life Sys. v. Advanced Cardiovacsular Sys., 242 F.3d 1337, 1347 (Fed.Cir.2001) (”[I]f a patent states that the claimed device must be `non-metallic,’ the patentee cannot assert the patent against a metallic device on the ground that a metallic device is equivalent to a non-metallic device.”).

Thus, if one were to interpret the claim language “at least 3500 hr*ng/mL” to mean “not less than 3500 hr*ng/mL,” the specific exclusion principle would seem to prevent the patent from being expanded under the DOE to cover the range that is less than 3500 hr*ng/mL  – just as the Scimed case counsels against interpreting non-metallic to be expanded to include metallic, and the Moore USA case counsels against majority being expanded to include minority, and Eastern Kodak counsels against inert being expanded to include non-inert .     

 The famous language from Sage Products rings true when applied to the use of the claim language “at least”:

[A]s between the patentee who had a clear opportunity to negotiate broader claims but did not do so, and the public at large, it is the patentee who must bear the cost of its failure to seek protection for this foreseeable alteration of its claimed structure.

 

“Each of a plurality”

Thursday, August 19th, 2010

Karen Hazzah noted on her All Things Pros blog on July 21st, the results of the Ex Parte Jourdan (Intel) appeal.  It is worth highlighting  again as it concerned the language “each of a plurality.”  

Given the prevalence of this language (as well as the language ”each of the plurality . . .”)  in computer system claims, I think it will be a frequent  point of contention in the future — particularly during patent litigation.

The illustrative claim at issue read as follows:

ILLUSTRATIVE CLAIM

1. A method comprising:

assigning an identification number (ID) to each of a plurality of micro-operations (uops) to identify a branch path to which the uop belongs;

determining whether one or more branches are predicted correctly;

determining which of the one or more branch paths are dependent on a mispredicted branch; and

determining whether one or more of the plurality of uops belong to a branch path that is dependent on the mispredicted branch based on their assigned IDs.

The Board ruled as follows:

The Appellants argue that “the cited claim language as a whole explicitly requires that a separate ID is assigned ‘to each of a plurality of micro-operations (uops)’ (emphasis added).” (Reply Br. 2.) “[T]he PTO gives claims their ‘broadest reasonable interpretation.’” In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). “Moreover, limitations are not to be read into the claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)).

 

Here, claim 1 does not require that the ID assigned to each microoperation be “separate.” i.e., unique. We refuse to read such a requirement into the representative claim. Assigning the same ID to each microoperation in one of the reference’s instruction streams is enough to anticipate the disputed limitations. Based on the aforementioned facts and analysis, therefore, we conclude that the Examiner did not err in finding that Sharangpani assigns an ID to each of a plurality of micro-operations as required by representative claim 1.

For other issues that arise from use of the word “each,” see these previous posts: [Link] and [Link].

Oral Argument — Golden Hour Data Systems, Inc. v. EMSCHARTS, Inc. et al.

Wednesday, August 18th, 2010

Last week, the Federal Circuit issued its opinion in Golden Hour Data Systems, Inc. v. EMSCHARTS, Inc. et al., 2009-1306 (Fed. Cir. Aug. 9, 2010).  The main issue in the case concerned alleged inequitable conduct by the patent agent who prosecuted the application.  Judge Ward of the Eastern District of Texas had ruled in the district court case that the patent was unenforceable due to inequitable conduct by the patent agent.

Essentially, the arguments on appeal centered on whether the patent agent had “intent to deceive the patent office.”  As I understand it, the patent agent, prosecuting the application in 1998, had been given a brochure by the inventor shortly after the filing of the application.  The brochure was undated.  The patent agent had a practice of not submitting undated material to the patent office because it would not be considered by the examiners. So, the patent agent summarized the brochure and submitted the summary via an IDS.  The summary, however, did not disclose information from the middle of the short brochure that Judge Ward found material.

The defendants’ attorney argued that because Judge Ward had found that even a cursory review of the brochure would have made someone aware of the material information that this amounted to “selective disclosure” by the patent agent rather than non-disclosure.  The defendants also argued that it was inconsistent to say that you couldn’t submit the entire brochure as being undated and to say that you weren’t aware of the material information; because, even a cursory review to check for the date allegedly would have made one aware of the material information.

The Federal Circuit seemed to feel that Judge Ward danced around the intent issue.  So, they remanded the case back to Judge Ward.

This oral argument is pretty interesting if you are a prosecutor.  It highlights just how easy it is to get run over by the inequitable conduct bus ten years after you’ve filed an IDS and no longer have the necessary recollection of the facts to be able to defend yourself.

Here are some of the more interesting portions of the oral argument:  [Listen], [Listen], [Listen], [Listen], and [Listen].

You can listen to the entire oral argument here: [Listen].

You can read the Federal Circuit opinion here: [Read].

Odds and Ends

Sunday, August 15th, 2010

Federal Circuit nominee Judge Kathleen O’Malley was affirmed by the Federal Circuit last week.  To be clear, she has not yet been “confirmed” by the Senate; but, her district court judgment was “affirmed” by Judges Bryson, Gajarsa, and Prost  in  Baran v. Medical Device Technologies, Inc. et al., 2010-1058 (Fed. Cir. Aug. 12, 2010).

Judge Linn noted during his presentation at the AIPLA CLE in Denver that when the Federal Circuit sits in Atlanta this November, they will be sitting at: Georgia State University College of Law, Emory University School of Law, Atlanta’s John Marshall Law School, and the U.S. District Court in Atlanta.

Oral Argument of the Month — Laryngeal Mask Co. Ltd. v. Ambu

Saturday, August 14th, 2010

The Federal Circuit heard oral argument in Laryngeal Mask Co. Ltd. v. Ambu earlier this month.  The court has not yet issued its opinion in the case.  The case concerns US patents 7,156,100 and 5,303,697.

This was an interesting oral argument.  It is one of those arguments that is good for new prosecutors to listen to so that they are aware of the arguments that will be brought against their work product.  The oral argument included a host of arguments that go toward the preparation and prosecution of an application. 

“The Present Invention”

Usually, “the present invention” argument is raised by an accused infringer who wants to narrow claim language to what was described as “the present invention” or “the invention” in the specification or prosecution history.  This case was a little different in that the patentee (rather than the accused infringer) argued that the language describing “the present invention” did not include the element that the accused infringer was trying to read into the claim.  Therefore, the patentee argued that the claim should be construed broadly based upon “the present invention” language.

Detailed Description of the Invention vs. Detailed Description of the Preferred Embodiments

Similar to the above, use of “the invention” as part of the Detailed Description heading was this time argued by the accused infringer to limit the claims to the disclosed embodiment.

Disclosure of a Single Embodiment

Judge Lourie asked about the disclosure of a single embodiment described as the preferred embodiment.  He queried whether disclosure of a single embodiment described as “the preferred embodiment” might require “preferred” to be read as “only.”  You can listen to his comment here: [Listen].

Broad Summary language

The patentee argued for a broad claim construction based on a broad Summary section of the patent.

Language from the Brief Description of the Drawings

The accused infringer argued that the claims should be limited based on use of the phrase “the present invention” to describe Fig. 1 of the patent.

You can listen to the entire oral argument here: [Listen].