The Supreme Court heard oral argument in Global Tech v. SEB this past week. You can listen to the oral argument here: [Listen].
The Federal Circuit decision is available here: [Read].
The Federal Circuit expanded on its hybrid claim jurisprudence with its recent decision in In re Katz et al. v. American Airlines, et al., 2009-1450 et al., (Fed. Cir. February 18, 2011). The court ruled that three of Katz’s claims – claims 1, 2, and 83 – were indefinite hybrid claims. Those claims are shown below, but the relevant portion is in the independent claims 1 and 68:
1. An interface control system for use with, (1) a communication facility including remote terminals for individual callers to make calls, wherein said remote terminals comprise a telephone capability including voice communication means and some of said remote terminals comprise digital input means for providing data, (2) a multiple port, multiple format processor for concurrently processing data from a substantial number of callers in any one of a plurality of formats, said communication facility automatically providing call data signals, as to indicate called data (DNIS), to select a specific format from said plurality of formats, and (3) a plurality of live operator attended terminals, for a plurality of formats, said interface control system comprising:
call data means for receiving call data signals from said communication facility for a calling remote terminal indicative of calling number identification signals automatically provided by said communication facility and call data signals to indicate called data (DNIS) to select a specific format from said plurality of formats;
interface means for providing automated voice messages relating to said specific format to certain of said individual callers, wherein said certain of said individual callers digitally enter data, including at least caller information data, through said digital input means;
means for directly forwarding, under control of said specific format, a call coupled to said interface means from any one of said remote terminals to one of said plurality of live operator attended terminals for inputting of caller identification data and caller information data when said remote terminals do not have capability to digitally provide data;
qualification means coupled to said live operator attended terminals for controlling access by at least certain of said callers to at least a portion of said system, said qualification being based at least in part on caller identification data entered through said digital input means by at least certain of said callers having digital input means and at said live operator attended terminal when said remote terminals do not have capability to digitally provide data,
means for processing coupled to said live operator attended terminals for processing caller information data entered by an operator at said live operator attended terminal; and
means for storing coupled to said interface means and said processing means for storing certain select data from said caller information data entered by said operator and data entered digitally by said individual callers to update records on said individual callers.
2. An interface control system according to claim 1, wherein said call data signals automatically provided from said communication facility for a calling remote terminal indicative of calling number identification signals are used to access a positive file of data with respect to said individual callers stored in said means for storing.
68. An interface control system for use with, (1) a communication facility including remote terminals for individual callers to make calls, wherein said remote terminals comprise a telephonic instrument including voice communication means and some of said remote terminals comprise digital input means for providing data, and (2) a multiple port, multiple format processor for concurrently processing data from a substantial number of callers in any of a plurality of formats, said communication facility automatically providing call data signals, as to indicate called data (DNIS), to select a particular format from said plurality of formats, and (3) a plurality of live operator attended terminals, for a plurality of formats, said interface control system comprising:
call data means for receiving signal-represented call data from said remote terminals indicative of called number identification signals (DNIS) automatically provided by said telephonic communication facility;
interface means for providing automated voice messages relating to a specific format to certain of said individual callers, wherein said certain of said individual callers digitally enter data through said digital input means;
means for directly forwarding certain of said calls coupled to said interface means from any one of said remote terminals to one of said plurality of live operator attended terminals under control of said call data signals when necessary;
qualification means for controlling access by at least certain of said callers to at least a portion of said system,
means for processing coupled to said live operator attended terminals for processing caller information data entered by an operator at said live operator attended terminal; and
means for transferring certain of said calls from said live operators to said interface means to receive processed data via a voice generator.
83. An interface control system according to claim 68, wherein said qualification means controls access at least in part based upon said call data signals.
The Federal Circuit had the following to say about these hybrid claims:
The district court held that Statistical Interface claims 1, 2, and 83 of the ’893 patent are indefinite under IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005), because they claim both an apparatus and a method of use. In IPXL, this court addressed a claim that covered a system with “an input means” and required a user to use the input means. This court held that the claim was indefinite because it was unclear “whether infringement . . . occurs when one creates a system that allows the user [to use the input means], or whether infringement occurs when the user actually uses the input means.” Id.
Claims 1, 2, and 83 of the ’893 patent cover a system with an “interface means for providing automated voice messages . . . to certain of said individual callers, wherein said certain of said individual callers digitally enter data.” The district court found “no meaningful distinction” between those claims and the claim at issue in IPXL.
Katz seeks to distinguish IPXL on the ground that the term “wherein” does not signify a method step but instead defines a functional capability. We disagree and uphold the district court’s ruling. Like the language used in the claim at issue in IPXL (“wherein . . . the user uses”), the language used in Katz’s claims (“wherein . . . callers digitally enter data” and “wherein . . . callers provide . . . data”) is directed to user actions, not system capabilities.
In the alternative, Katz contends that this court nar-rowed IPXL in the subsequent decision in Microprocessor Enhancement Corp. v. Texas Instruments Inc., 520 F.3d 1367, 1374-75 (Fed. Cir. 2008). That case dealt with a method claim that recited structural elements. The claim took the form of a “method of executing instructions in a pipelined processor comprising: [structural limitations of the pipelined processor]; the method further comprising: [method steps implemented in the pipelined processor].” Id. at 1374. The court in Microprocessor distinguished IPXL because the method claim in Microprocessor did not create any confusion as to when the claim was directly infringed; direct infringement occurred upon practicing the claimed method in a processor with the required structural limitations. Simply making or selling a proces-sor having that structure would not have infringed. Katz’s claims, however, create confusion as to when direct infringement occurs because they are directed both to systems and to actions performed by “individual callers.” Katz’s claims therefore fall squarely within the rationale of IPXL and are indefinite.
As a point of reference, the relevant portion of the IPXL v. Amazon decision discussing hybrid claims reads as follows:
The district court found that claim 25 is indefinite under 35 U.S.C. § 112, as it attempts to claim both a system and a method for using that system. Section 112, paragraph 2, requires that the claims of a patent “particularly point out and distinctly
claim the subject matter which the applicant regards as his invention.” 35 U.S.C. § 112 (2000). A claim is considered indefinite if it does not reasonably apprise those skilled in the art of its scope. Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1217 (Fed. Cir. 1991).
Whether a single claim covering both an apparatus and a method of use of that apparatus is invalid is an issue of first impression in this court. The Board of Patent Appeals and Interferences (”Board”) of the PTO, however, has made it clear that reciting both an apparatus and a method of using that apparatus renders a claim indefinite under section 112, paragraph 2. Ex parte Lyell, 17 USPQ2d 1548 (BPAI 1990). As the Board noted in Lyell, “the statutory class of invention is important in determining patentability and infringement.” Id. at 1550 (citing In re Kuehl, 475 F.2d 658, 665 (CCPA 1973); Rubber Co. v. Goodyear, 76 U.S. 788, 796 (1870)). The Board correctly surmised that, as a result of the combination of two separate statutory classes of invention, a manufacturer or seller of the claimed apparatus would not know from the claim whether it might also be liable for contributory infringement because a buyer or user of the apparatus later performs the claimed method of using the apparatus. Id. Thus, such a claim “is not sufficiently precise to provide competitors with an accurate determination of the ‘metes and bounds’ of protection involved” and is “ambiguous and properly rejected” under section 112, paragraph 2. Id. at 1550-51. This rule is well recognized and has been incorporated into the PTO’s Manual of Patent Examination Procedure. § 2173.05(p)(II) (1999) (”A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112, second paragraph.”); see also Robert C. Faber, Landis on Mechanics of Patent Claim Drafting § 60A (2001) (”Never mix claim types to different classes of invention in a single claim.”).
Claim 25 recites both the system of claim 2 and a method for using that system. The claim reads:
The system of claim 2 [including an input means] wherein the predicted transaction information comprises both a transaction type and transaction parameters associated with that transaction type, and the user uses the input means to either change the predicted transaction information or accept the displayed transaction type and transaction parameters.
‘055 patent, col. 22, ll. 8-13 (emphasis added).
Thus, it is unclear whether infringement of claim 25 occurs when one creates a system that allows the user to change the predicted transaction information or accept the displayed transaction, or whether infringement occurs when the user actually uses the input means to change transaction information or uses the input means to accept a displayed transaction. Because claim 25 recites both a system and the method for using that system, it does not apprise a person of ordinary skill in the art of its scope, and it is invalid under section 112, paragraph 2.
A total of four claims have now been invalidated by the Federal Circuit under the hybrid claim principle.
One of the interesting cases that might be appealed to the Federal Circuit soon is Specialty House of Creation, Inc. v. Quapaw Tribe of Oklahoma, 10-CV-371-GKF-TLW (N. D. Okla. Jan. 27, 2011). The case concerns whether an American Indian tribe can be sued for patent infringement if it has not consented to be sued. The judge in the Quapaw case ruled in favor of the tribe and its assertion of lack of subject matter jurisdiction.
The district court cited an earlier district court case concerning patent infringement, Home Bingo Network v. Multimedia Games, Inc., 2005 WL 2098056 (N.D.N.Y. Aug. 30, 2005), and a second circuit copyright case Bassett v. Mashantucket Pequot Tribe, 204 F.3d 343, 357-58 (2nd Cir. 2000).
Interestingly, the district court cited Kiowa Tribe of Okla. v. Manufacturing Tech., Inc., 523 U.S. 751, 754 (1998) for the proposition that “[a]s a matter of federal law, an Indian tribe is subject to suit only where Congress has authorized the suit or the tribe has waived its immunity.” Id. The oral argument at the Supreme Court was argued by Federal Circuit nominee Edward DuMont. You can listen to that oral argument here: [Listen][Read].
Sovereign immunity from patent infringement is an economically powerful asset. As Indian nations seek to provide good jobs for their tribe members, it will be interesting to see if any attempt is made to rely on this asset and how it might be done.
You can read the Quapaw decision here: [Read].
The Senate Judiciary Committee conducted the confirmation hearing for Mr. Jimmie V. Reyna this past week. You can watch the video of the hearing below. Mr. Reyna is introduced at about the 30:30 minute mark along with other nominees. The questioning of Mr. Reyna begins at about the 52 minute mark.
Mr. Reyna is a specialist in international trade issues. Given this focus, he was asked specifically whether he would also be able to adjudicate whistle blower cases (the Federal Circuit has jurisdiction over federal whistle blower cases and has heard 219 cases in its history ruling only 3 times in favor of the whistle blower according to Senator Grassley).
Mr. Reyna was not asked any questions about patent law during the hearing.
The oral argument of the month for the month of February is Regents of the University of Minnesota v. Kappos, 2010-1321 (Fed. Cir. Feb. 11, 2011). This case concerned a valuable patent that had gone abandoned due to failure to pay a maintenance fee. The docket clerk had apparently entered “abandoned” into the University’s docketing system. (From listening to the oral argument, I’m under the impression this might have occurred when the patent was surrendered as part of a reissue filing.) Once the error was discovered more than 2.5 years after expiration, the University was faced with an “unavoidable” standard in order to have the patent reinstated.
The Board apparently placed great weight on how much training and supervision the docket clerk received. And, much of the oral argument concerned these issues. For example, the docket clerk was apparently not supervised by a registered patent attorney but rather by an administrator (who was also an attorney). I think the oral argument is worth a listen by any organization that has a docketing system — particularly those patent owners who choose to handle their docket themselves. Such organizations might be well-advised to memorialize their training efforts and to periodically send docket clerks to training seminars.
This might also point to a business opportunity for those organizations that provide in-person or on-line patent seminars. Seminars for docketing clerks could be in high-demand.
Unfortunately, the court only issued a Rule 36 opinion. I think the patent bar would have appreciated a little more clarification from the court on these issues.
The oral argument is available here: [Listen].
The Rule 36 opinion is available here: [Read].
The Honorable Paul Michel, former Chief Judge of the Federal Circuit, testified before the House Subcommittee on Intellectual Property last Friday. You can watch the video of the hearing below. Chief Judge Michel makes his opening statement at about the 34 minute mark of the video with subsequent questioning by the subcommittee members.
For easy reference, he addresses the following issues at the following time marks:
Hiring/Experienced Examiners 44:55
Post Grant 49:15
Post Grant/Reexamination 56:36
First to File 59:34
Fee Diversion/Fairness 1:06:32
Post Grant 1:11:33
Job Creation/Billion Dollar Bolus 1:17:20
Electronics/Software — Biotech Division 1:20:30
First to File 1:26:54
Third Party Submission of Prior Art 1:48:42
Reduction of Funding to 2008 Level/Codifying Legal Decisions 1:51:35
The House Subcommittee on Intellectual Property, Competition, and the Internet will hold a hearing this Friday on “Crossing the Finish Line on Patent Reform – What Can and Should be Done.” I was pleased to see that the Honorable Paul Michel, former Chief Judge of the US Court of Appeals for the Federal Circuit will be testifying. David Simon, the Chief Patent Counsel for Intel, and Carl Horton, the Chief Intellectual Property Counsel for General Electric, will also be testifying.
The committee hearing is scheduled for 10:30 AM Eastern time/8:30 AM Mountain time. More information is available at this link: [LINK].
In a recent non-patent case at the Federal Circuit that concerned the interpretation of government agency regulations, Chattler v. U.S., 2010-1066 (Fed. Cir. Jan. 10, 2011), Judge Dyk had some pointed words for the Department of Justice [Listen]. In the end, however, the majority including Judge Dyk ruled in favor of the United States.
You can read the opinion here: [Read].
You can listen to the entire oral argument here: [Listen].
13 U.S. 199 (1815)
9 Cranch 199
JORDAN AND MOREHEAD.
Supreme Court of United States.
March 2, 1815.
March 4, 1815.
Absent… . TODD, J.
200*200 HARPER, for the Plaintiff.
E.I. LEE, and P.B. KEY, contra.
201*201 WASHINGTON, J. delivered the opinion of the Court as follows:
202*202 The question certified to this Court, by the Circuit Court for the district of Virginia, and upon which the opinion of this Court is required, is, whether, after the expiration of the original patent granted to Oliver Evans, a general right to use his discovery was not so vested in the public as to require and justify such a construction of the act passed in January, 1808, entitled “an act for the relief of Oliver Evans” as to exempt from either treble or single damages, the use, subsequent to the passage of the said act, of the machinery therein mentioned, which was erected subsequent to the expiration of the original patent and previous to the passage of the said act.
The act, upon the construction of which the judges of the Circuit Court, were opposed in opinion, directs a patent to be granted, in the form prescribed by law, to Oliver Evans for 14 years, for the full and exclusive right of making, constructing, using, and vending to be used, his invention, discovery and improvements in the art of manufacturing flour and meal, and in the several machines which he has discovered, invented, improved, and applied to that purpose.
The proviso upon which the question arises is in the following words: “provided, that no person who may have heretofore paid the said Oliver Evans for license to use the said improvements, shall be obliged to renew said license, or be subject to damages for not renewing the same; and, provided also, that no person who shall have used the said improvements, or have erected the same for use, before the issuing of the said patent, shall be liable to damages therefor.”
The language of this last proviso is so precise, and so entirely free from all ambiguity, that it is difficult for any course of reasoning to shed light upon its meaning. It protects against any claim for damages which Evans might make, those who may have used his improvements, or who may have erected them for use, prior to the issuing of his patent under this law. The protection is limited to acts done prior to another act thereafter to be performed, to wit, the issuing of the patent. To extend it, by construction to acts which might be done subsequent to the issuing of the patent, would be to make, not to interpret the law.
The PTO’s proposed new rules for Track I Expedited Examination were published in the Federal Register today. You can view them here: [Link].
Comments are due by March 7, 2011.