Archive for June, 2011

Re-thinking Atmel

Tuesday, June 28th, 2011

In 1999, the Federal Circuit decided Atmel Corp. v. Information Storage Devices, Inc., 198 F. 3d 1374 (Fed. Cir. 1999).  The case stands for the proposition that for purposes of a means plus function claim one may not rely on an incorporated reference for the supporting structure or material.  The case was decided 2-1 with the deciding vote being cast by a visiting district court judge sitting by designation on the panel. Re-reading Judge Mayer’s dissenting opinion in that case, it struck me that he had some very valid points, such as the fact that incorporation by reference in other legal documents has a long standing tradition in American law.

You can read Judge Mayer’s dissenting opinion in Atmel here:

MAYER, Chief Judge, dissenting.

I decline to join the court in holding that Atmel Corporation’s (”Atmel”) incorporation by reference of structure supporting the recited high voltage generating means is impermissible. Instead of the bobtailed approach the court today espouses, limiting inquiry to the structure that the mere title of the incorporated article would suggest to one of skill in the art, I would make the entire document available for all it teaches that artisan.

In its order construing claim 1 of United States Patent No. 4,511,811, the district court held that the “high voltage generating means” is a means-plus-function limitation. See 35 U.S.C. § 112, ¶ 6. According to the written description, the corresponding structure for this means is a “high-voltage generator circuit.” Col. 4, ln. 56. The written description explains that “[k]nown circuit techniques are used to implement high-voltage generator circuit 34. See On-Chip High Voltage Generation in NMOS Integrated Circuits Using an Improved Voltage Multiplier Technique, IEEE Journal of Solid State Circuits, Vol SC-11, No. 3, June 1976 [("Dickson article")].” Id. at ll. 56-63. Based on this information, the court determined that “known circuit techniques” are “those described in the Dickson article, and no others.” Therefore, it held that “the structure corresponding to the high voltage generating means cannot be any circuits beyond those described in the Dickson article.” Information Storage Devices, Inc. (”ISD”) then moved for a finding of invalidity, based on the theory that if the structure corresponding to a means in a section 112, ¶ 6 claim is described by reference to a non-patent document, the claim is indefinite under section 112, ¶ 2.

ISD argued that the patentee’s incorporation of the Dickson article by reference was improper because it violated section 608.01(p) of the MPEP, which states that “essential material,” defined as material “necessary to (1) support the claims, or (2) for adequate disclosure of the invention (35 U.S.C. [§ ]112),” may not be incorporated by reference to “nonpatent publications.” MPEP § 608.01(p) (4th ed.1981). The district court agreed that it should follow the MPEP’s rules about incorporation by reference because it is “good policy.” The court reasoned that “[i]f someone reading the ‘811 patent must go to a library and find the [Dickson] article in order to determine what specific structure corresponds to the high voltage generating means, the scope of the patent cannot be said to have been fully disclosed, no matter how `well known and readily available’ the article may be.” The court also said the MPEP’s rules are “a reasonable interpretation of the requirements of section 112″ and have “the strong advantage of providing a bright-line rule.” Because the Dickson article was the sole support for the means-plus-function limitation, the district court found it was essential material, which was improperly incorporated into the written description. It effectively struck the article from the written description and held that claim 1 was indefinite for lack of structural support in the specification.

If the written description fails to “set forth an adequate disclosure” of a structure corresponding to the means in a means-plus-function claim, then the claim is indefinite, and therefore invalid. In re Donaldson Co., 16 F.3d 1189, 1195, 29 1384*1384 USPQ2d 1845, 1850 (Fed.Cir.1994) (en banc); see also In re Dossel, 115 F.3d 942, 946, 42 USPQ2d 1881, 1885 (Fed.Cir.1997). The court holds that the written description cannot adequately disclose a corresponding structure by incorporating a document fully describing this structure by reference. But unlike the district court, this court does not rely on the MPEP.

I agree that the MPEP does not control here. Although “the Commissioner of Patents is vested with wide discretion to formulate rules and guidelines governing [the] use [of incorporation by reference], thereby to prevent its abuse,” In re Hawkins, 486 F.2d 569, 573, 179 USPQ 157, 161 (CCPA 1973), these guidelines do “not have the force of law,” Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1425, 7 USPQ2d 1152, 1154 (Fed.Cir.1988). “[T]he courts are the final authorities on issues of statutory construction. They must reject administrative constructions of [a] statute . . . that are inconsistent with the statutory mandate or that frustrate the policy that Congress sought to implement.” Id. (quoting Federal Election Comm’n v. Democratic Senatorial Campaign Comm., 454 U.S. 27, 32, 102 S.Ct. 38, 70 L.Ed.2d 23 (1981)).

I disagree with the court, however, that the language of section 112, ¶ 6 itself requires its result. Section 112, ¶ 6 does not expressly say that a structure is not “described in the specification” if it is “in” the specification by virtue of its incorporation by reference. Incorporation by reference is a common drafting tool used throughout the law. See Hawkins, 486 F.2d at 573, 179 USPQ at 161 (The practice of incorporation by reference has “longstanding basis in the law”); General Elec. Co. v. Brenner, 407 F.2d 1258, 1261-62, 159 USPQ 335, 337-38 (D.C.Cir.1968). “As the expression itself implies, the purpose of `incorporation by reference’ is to make one document become a part of another document by referring to the former in the latter in such a manner that it is apparent that the cited document is part of the referencing document as if it were fully set out therein.In re Lund, 376 F.2d 982, 989, 153 USPQ 625, 631 (CCPA 1967) (emphasis added); see also Interstate Consol. St. Ry. v. Massachusetts, 207 U.S. 79, 84, 28 S.Ct. 26, 52 L.Ed. 111 (1907) (”If the charter, instead of writing out the requirements of Rev. Laws, 112, § 72, referred specifically to another document expressing them, and purported to incorporate it, of course the charter would have the same effect as if it itself contained the words.“) (emphasis added); Black’s Law Dictionary 907 (4th ed.1968) (defining “incorporate” as “[t]o declare that another document shall be taken as part of the document in which the declaration is made as much as if it were set out at length therein”). Therefore, unless Congress deviated from this accepted norm, material is “in” the specification if it is incorporated by reference.

The court has cited no authority for the proposition that in enacting section 112, Congress intended to exclude material incorporated by reference from the material that is otherwise “in the specification.” Such an intent would be surprising in light of Congress’ endorsement of the practice in section 112 itself. Under section 112, ¶ 4, “[a] claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.” 35 U.S.C. § 112, ¶ 4; see also id. ¶ 5. As the court recognizes, the specification consists of the written description and the claims. See id. ¶ 1, 2; see also Dossel, 115 F.3d at 945, 42 USPQ2d at 1884. If material incorporated by reference is not “in the specification,” it also cannot be “in the claims.” Under the court’s definition of “in,” therefore, the limitations of the claim to which the dependent claim refers are not “in” the claim by virtue of their incorporation by reference. How, then, could we construe dependent claims to include these limitations, as we have always done? See, e.g., Bloom Eng’g Co. v. North Am. Mfg. Co., 129 F.3d 1247, 1250, 44 USPQ2d 1859, 1861 (Fed.Cir. 1385*1385 1997). Such an interpretation of “in” renders paragraphs 4 and 5 nonsensical.

As the court recognizes, claims may use language that those skilled in the art understand without the need for explicit, detailed definitions in the written description. See, e.g., W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1556-58, 220 USPQ 303, 315-16 (Fed.Cir.1983) (claims not indefinite because the evidence showed that those skilled in the art understood their scope even though the written description failed to disclose precise definitions of certain terms of art). We have held claims to be definite, for example, where the written description disclosed only a black box for an electrical component—”digital detector”—because the definition provided in the written description, “a device that `acts to detect the digital signal information’ in another stream of information,” was sufficient in light of the “well-known meaning” of the term “detector” to “those of skill in the electrical arts.” Personalized Media Communications, LLC v. International Trade Comm’n, 161 F.3d 696, 704-06, 48 USPQ2d 1880, 1887-89 (Fed.Cir.1998). We have also held claims definite where the claims recited a structure “so dimensioned,” the written description provided no concrete dimensions, but “those of ordinary skill in the art realized that the dimensions could be easily obtained.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1575-76, 1 USPQ2d 1081, 1088 (Fed.Cir.1986). Finally, In re Skoll, 523 F.2d 1392, 1395-96, 187 USPQ 481, 483 (CCPA 1975), held claims definite after consulting dictionaries to determine that those of ordinary skill would understand the meaning of the recited phrase, “hydrolyzed carbohydrate,” where the written description failed to define the term, “hydrolyzed.”

Acknowledging the perspective of a person of ordinary skill in the art, as the court does, while refusing to afford incorporation by reference the same recognition, is incongruous. If it is appropriate to refer to material not incorporated into the written description by reference—such as dictionaries and material well-known in the art—to determine whether the claims are definite because “[t]hat which is common and well known is as if it were written out in the patent and delineated in the drawings,” Loom Co. v. Higgins, 105 U.S. (Otto.) 580, 586, 26 L.Ed. 1177 (1881), it is certainly appropriate to refer to incorporated material, which is more clearly a part of the written description itself. We have never before discounted the knowledge of those skilled in the art, which includes “the knowledge of where to search out information,” In re Howarth, 654 F.2d 103, 106, 210 USPQ 689, 692 (CCPA 1981). Therefore, if those skilled in the art would understand what a “high voltage generating circuit” is, either by reading the Dickson article or because the circuit is a well-known structure in the art, the claim is definite in accordance with section 112, ¶ 2.

ISD does not dispute that the incorporated Dickson article discloses sufficient structure. The district court should have determined, therefore, whether it is also publicly available. Not all incorporated references will satisfy the requirements of section 112, ¶ 2. A claim must be understandable to those skilled in the art when it is read in light of both the material physically a part of the written description and the material incorporated in it by reference. If an incorporated reference, which is the sole support for a corresponding structure, is publicly unavailable, then the claim is not understandable. See Quaker City Gear Works, Inc. v. Skil Corp., 747 F.2d 1446, 1455, 223 USPQ 1161, 1167 (Fed.Cir.1984) (”Incorporation by reference has never been permissible under 35 U.S.C. § 112 of material necessary for an adequate disclosure which is unavailable to the public.”); Howarth, 654 F.2d at 107, 210 USPQ at 692 (”When an applicant seeks to add necessary information to a specification by incorporating a source for the information by reference, public accessibility of that source alone 1386*1386 may be the controlling factor.”); In re Heritage, 182 F.2d 639, 643, 86 USPQ 160, 164 (CCPA 1950) (”There can be no question but that in a patent application, the disclosure thereof may be supplemented by reference to . . . any . . . disclosure which is available to the public.”).

Whether an incorporated reference is available to the public is a factual inquiry. See In re Wyer, 655 F.2d 221, 226, 210 USPQ 790, 794 (CCPA 1981) (Public accessibility “involves such factual inquiries as classification and indexing.”). A reference is reasonably accessible to the public, for example, if its incorporation would not be necessary because it is “common or well known,” such as “[w]ell known text books in English” and “U.S. patents,” Howarth, 654 F.2d at 106, 210 USPQ at 692. Similarly, if “interested members of the relevant public could obtain the information if they wanted to,” then the reference is publicly available. Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1569, 7 USPQ2d 1057, 1062 (Fed.Cir.1988). On the other hand, if a copy of the incorporated reference cannot be produced, the reference is unavailable to the public. See Quaker City, 747 F.2d at 1450, 1455, 223 USPQ at 1163, 1167. Also unavailable are “secret or privileged materials,” “unpublished dissertations and theses,” and “obscure foreign publications.” General Elec., 407 F.2d at 1262-63, 159 USPQ at 338; see also In re Borst, 345 F.2d 851, 854, 145 USPQ 554, 556 (CCPA 1965) (holding that a reference “was clearly not publicly available during the period it was under secrecy classification”). In this case, Atmel presented undisputed evidence that the Dickson article is publicly available because virtually every reputable engineering library in the United States carries the IEEE Journal containing it.

The strongest argument for the court’s outcome relies on its notion of the better public policy. Arguably, it is more convenient for one reading a patent to construe a means-plus-function limitation without having to refer to another document. Proper construction of a claim, however, already requires review of a separate set of documents—the prosecution history. See Grain Processing Corp. v. American Maize-Prods. Co., 840 F.2d 902, 908, 5 USPQ2d 1788, 1793 (Fed.Cir.1988). Therefore, convenience has not been a paramount concern.

Competing with this concern for convenience is the statutory mandate of conciseness. See 35 U.S.C. § 112, ¶ 1 (”The specification shall contain a written description . . . in . . . concise, and exact terms . . . .”) (emphasis added). In furtherance of this policy goal, we have admonished against including in the specification material that is known in the art. See, e.g., Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 1534, 3 USPQ2d 1737, 1743 (Fed.Cir. 1987) (”A patent need not teach, and preferably omits, what is well known in the art.”); Howarth, 654 F.2d at 105, 210 USPQ at 691 (”An inventor need not, however, explain every detail since he is speaking to those skilled in the art.”); In re Gay, 309 F.2d 769, 774, 135 USPQ 311, 316 (CCPA 1962) (”Not every last detail is to be described, else patent specifications would turn into production specifications, which they were never intended to be.”). Use of incorporation by reference makes the written description more concise. Requiring inventors to include every imaginable detail of a structure corresponding to a claimed means, including those widely understood by persons of ordinary skill in the art, would be the antithesis of conciseness and would result in exceedingly lengthy patents. In any event, by codifying the requirement of conciseness in section 112, ¶ 1, Congress has expressed its preference.

 The Atmel decision is available here: [Read].

Insufficient Postage

Friday, June 24th, 2011

In the oral argument of Stamps.com, Inc. v. Endicia, Inc. et al., 2010-1328 (Fed. Cir. June 15, 2011), indefiniteness with respect to a means plus function claim was at issue. The court noted that the claim at issue, claim 23, depends from claim 21, and reads as follows:

The pertinent part of claim 21, from which claim 23 depends,4 recites:

A general multi-purpose processor-based system for authorizing a desired transaction to be con-ducted utilizing a particular provider, wherein in-formation with respect to said desired transaction as conducted by each of a plurality of providers is presented for selection of said particular provider, said system comprising: . . .

 

means for determining a value of said transac-tion associated with two or more of said plurality of providers utilizing ones [sic] of said transaction parameters;

 

means for presenting each of said determined values for comparison . . . .

—————————————————————–

 

4.  Claim 23 recites:

The system of claim 21, wherein said means for de-termining desired transaction parameters comprises:

 

means for accepting information associated with said transaction parameters from a general purpose computer program operating on said general multi-purpose processor-based system.

 ’568 patent, col.34 ll.49–54.

 The plaintiff-appellant asserted that the disclosure in the specification of various parameters necessary for calculating postage was sufficient to make the means plus function claim definite, especially given the simple nature of the calculation.  The defendant-appellee countered that no structure or algorithm for computing postage had been disclosed and that the means plus function claim was necessarily indefinite.

A means plus function claim only covers structure and material disclosed in the specification and its equivalents, so as to avoid pure functional claiming.  But, there is a spectrum to the law of indefiniteness between cases like Wellman, Inc. v. Eastman Chemical Co., 2010-1249 (Fed. Cir. April 29, 2011)* which notes that one need not disclose details in the specification that are well known to one of ordinary skill in the art  in order to satisfy definiteness requirement under 35 USC §112, ¶2 and cases like In re Katz Litigation, 2009-1450 (Fed. Cir. March 2, 2011) which notes that a means plus function clause is indefinite if there is no or insufficient structure in the specification corresponding to the claimed means.  Judge Bryson explored this spectrum with the parties during the oral argument of Stamps.com questioning whether there was a way to articulate a standard for indefiniteness when the claimed means plus function element refers to an extremely simple function, such as adding two numbers.  You can listen to his exchange with the plaintiff-appellant and defendant-appellee [here] and [here], respectively.

The panel would ultimately decide that the function being performed was not simple and that the means plus function claim was indefinite.  Judge Dyk wrote:

Here, the calculation of shipping value appears to involve a complex interaction of zone variables, weight variables, and class variables. There is no disclosure of the actual algorithms necessary to calculate the transaction value, nor is there any disclosure that these algorithms involve only simple arithmetic. The failure to provide such an algorithm in the specification renders claim 23 of the ’568 patent invalid as indefinite.

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

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

——————————————————————————————–

*The Wellman v. Eastman Chemical case mentioned above states the following:

In holding the claims indefinite, the district court focused on the lack of specific moisture conditions for DSC testing, reasoning that the absence of intrinsic guidance would prevent a person of ordinary skill from understanding the bounds of the claims. Wellman, 689 F. Supp. 2d at 719-20. However, an inventor need not explain every detail because a patent is read by those of skill in the art. Koito Mfg. Co. v. Turn-Key-Tech, LLC, 381 F.3d 1142, 1156 (Fed. Cir. 2004) (citing In re Howarth, 654 F.2d 103, 105 (CCPA 1981)). Well known industry standards need not be repeated in a patent. See id. In this case, the record shows that a person of ordinary skill in the art in this field would follow standard industry guidance for conditioning plastics for DSC. Specifically, the record shows that (1) the 1997 International Standard for Differential Scanning Calorimetry of Plastics (”ISO 11357-1) (the “1997 ISO”) provides a person of skill in the art with an objective standard for moisture conditioning; (2) a person of skill in the art would have been aware of the 1997 ISO prior to the filing of its patent applications; and (3) a person of skill in the art would have interpreted the Wellman patents in view of the 1997 ISO.

Interestingly, one of the cases that the Wellman panel cites for support, Koito v. Turnkey, is an enablement case — not an indefiniteness case.  The In re Howarth case states the following:

The starting point under § 112 is that a duty is imposed which must be met by an applicant. In exchange for the patent, he must enable others to practice his invention. An inventor need not, however, explain every detail since he is speaking to those skilled in the art. What is conventional knowledge will be read into the disclosure. Accordingly, an applicant’s duty to tell all that is necessary to make or use varies greatly depending upon the art to which the invention pertains.

Professor David Nimmer excluded as an expert witness in copyright case???

Sunday, June 19th, 2011

Last week the Ninth Circuit decided the appeal in the copyright dispute over the television series “My Name is Earl.”  The panel deemed the case as not requiring an oral argument.

The most interesting aspect of the case is that David Nimmer (of the Nimmer on Copyright treatise) was excluded as an expert witness by the district court judge and the Ninth Circuit panel did not view this as an abuse of discretion.  The panel wrote:

The district court also did not err in excluding expert testimony from David Nimmer and Eric Sherman.1 Some of Nimmer’s testimony contained inadmissible legal conclusions. See United States v. Scholl, 166 F.3d 964, 973 (9th Cir. 1999). According to the district court, although each were recognized to have a separate area of expertise, both Nimmer and Sherman also failed to establish that they had “knowledge, skill, experience, training, or education” relevant to the evidence at issue.  Fed. R. Evid. 702. Determinations of whether a particular witness has such expertise is “peculiarly within the sound discretion of the trial judge” and reviewing courts afford “a high degree of deference to the district court’s findings.” United States v. Chang, 207 F.3d 1169, 1172 (9th Cir. 2000) (citations and internal quotation marks omitted). The district judge in this case did not abuse his discretion in excluding Nimmer’s and Sherman’s testimony.

         (Emphasis added.)

The issue is made more clear by reviewing the district court opinion.  The district court noted that Nimmer is an expert with respect to legal issues of copyright law but was not established to be an expert witness with respect to literary issues.  The district court wrote:

Here, Plaintiff has not demonstrated that Nimmer is qualified to render an expert opinion on the issue of substantial similarity between two literary works. Nimmer’s experience, training, and education establish that Nimmer undoubtedly is an expert in the field of copyright law. He is a graduate of Yale Law School, and a partner at the Los Angeles-based firm of Irell & Manella. He specializes in and teaches copyright law and is the current author of the preeminent copyright treatise Nimmer on Copyright, which is often cited by appellate courts, including the Supreme Court. Over the past three decades, Nimmer has published numerous books and dozens of articles on copyright law, spoken at many copyright law conferences, and taught seminars to federal judges on the issue of substantial similarity in copyright law. Given this extensive background, there can be no question that Nimmer is well-qualified to perform a legal analysis regarding copyright claims. However, as discussed below, an expert cannot offer his legal opinion as to whether a triable issue of fact exists regarding copyright infringement; such an analysis is the exclusive province of the Court.

Instead, the relevant issue on summary judgment, and indeed the subject matter upon which Nimmer seeks to opine, is whether there is substantial similarity in the objective elements of theme, plot, dialogue, characters, sequence of events, mood, pace, and setting between Karma! and Earl. In short, Nimmer was tasked with performing a literary analysis of two fiction works. However, Nimmer offers little explanation as to how his legal expertise qualifies him to compare a screenplay and a television series on the eight criteria mentioned. Notably absent from Nimmer’s report and declarations is any indication that Nimmer has experience, knowledge, training, or education in the literary field—for example, there is no evidence 834*834 that Nimmer has ever worked as a film critic, a publisher, an. English professor, an editor or director, that Nimmer writes fiction works, or even that Nimmer is an avid movie buff or television-watcher. While the Court recognizes that the task of comparing two fiction works is not highly technical, and indeed requires no specific training, to offer an expert literary analysis there must be some indication that Nimmer has, in one capacity or another, watched, read, written, compared and/or analyzed literary works.[14] See e.g., Stewart v. Wachowski, 574 F.Supp.2d 1074, 1106 n. 130 (C.D.Cal.2005) (expert was an English professor who had previously testified in several matters regarding substantial similarity); West v. Perry, No. 2:07CV200, 2009 WL 2225569, at *5 (E.D.Tex.2009) (among other qualifications, expert had a film degree, was an accomplished screenwriter, and had worked as a screen credit arbitrator for the Writer’s Guild of America); A Slice of Pie Productions, LLC v. Wayans Bros. Entertainment, 487 F.Supp.2d 33, 41 (D.Conn.2007) (expert had extensive experience teaching, evaluating, studying, and writing about screen writing). No such evidence exists here.

Further, Nimmer’s prior experience as an expert witness or consultant, with perhaps one or two exceptions, is not relevant to the literary analysis offered in this case. Nimmer lists several cases in which he previously offered expert testimony regarding the substantial similarity of works such as technical drawings, architectural plans, bingo cards, instructions for the use of pesticides, and computer software. (Supp. Nimmer Decl. ¶¶ 7-10.) Nimmer does not explain the specific analysis he performed; however, his assignments in those cases did not involve fiction works such as television shows, plays, movies, or books. Thus, this prior experience does not inform the literary analysis offered here.[15] There are two instances in which Nimmer may have performed a similar analysis as that offered here, although given the vague descriptions of these assignments, it is difficult to know for certain. First, Nimmer declares that he assisted a publisher in overturning an injunction in a copyright case involving a comparison between 835*835 Margaret Mitchell’s Gone with the Wind and Alice Randall’s The Wind Done Gone. But Nimmer fails to describe the issue that he was asked to analyze or the opinion he ultimately rendered in that case.[16] (Id. ¶ 11.) Nimmer also notes one assignment, in Time Warner Entertainment Co. v. Continental Casualty Co., Case No. 02-01885 R (C.D.Cal.), where he was asked to compare a revised screenplay with the motion picture Contact and concluded that the unlicensed, protectable expression from the screenplay that was used in the film gave rise to a valid copyright claim. (Id. ¶ 6.) While this prior experience appears relevant, the fact that Nimmer testified as an expert once before in a case involving literary works is not a sufficient basis, without more, to accept his testimony here.[17]

In sum, Nimmer’s specialized knowledge of copyright law and his legal expertise does not qualify him as a literary expert. See, e.g., Gen. Battery Corp. v. Gould, Inc., 545 F.Supp. 731, 750 n. 24, 759 n. 30 (D.Delaware 1982) (patent lawyer, although knowledgeable about the patent office procedure, was not qualified to give an expert opinion on infringement where he was not skilled in the relevant art of the patented products); United States v. Chang, 207 F.3d 1169, 1172-73 (9th Cir. 2000) (witness who was “extremely qualified” in international finance was not qualified to render an opinion on the authenticity of a securities certificate where he had no training in identification of counterfeit securities); In re Canvas Specialty, Inc., 261 B.R. 12 (C.D.Cal.2001) (witness not qualified where witness was an architect but had not demonstrated how his training as an architect gave him the necessary expertise to determine whether metal cabanas met contract requirements or had structural defects). As such, Nimmer’s opinions as to the points of similarity between Karma! and Earl are not admissible.

 You can read the “My Name is Earl” Ninth Circuit opinion here: [Read].

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

It is interesting to consider this case in comparison to KSR v. Teleflex.  In the aftermath of KSR, one has seen “common sense” asserted with reckless abandon in regard to obviousness.  Yet, under copyright law, the seemingly simple issue of deciding if there is “substantial similarity” between a screenplay and a television series requires not only expert evidence but evidence from a highly specialized expert.

Federal Circuit to Sit in Colorado in Fall of 2012

Friday, June 17th, 2011

Each fall the Federal Circuit usually visits a city across the country to hold session and hear oral arguments.  You might recall that last fall the court sat in Atlanta.  I suspect that Chief Judge Rader will announce in his State of the Court address next week where the court will be sitting this fall.  As for the fall of 2012, I understand that the court will be sitting in Denver/Boulder. 

If you are interested in hosting the court in your city some year, you might want to contact some of the organizers of Colorado’s invitation effort in order to better understand the invitation process.  You could contact Mike Drapkin, an adjunct professor with the University of Colorado Law School and a patent attorney at Holland and Hart, LLP or John Posthumus, Chair of the IP Section of the Colorado Bar Association and a patent attorney at Sheridan Ross, P.C.

In its early years, the court visited more than one city each year.  You can review the list here to see the last time that the court held an out of Washington, D.C. session in your city:   [List].

Happy Anniversary

Thursday, June 16th, 2011

The 717 Madison Place blog is celebrating its two-year anniversary today.  Thanks for tuning in!  Looking back over the last two years, I think my favorite sound bite comes from the very first post.  If you haven’t listened to that one, here it is again: ["This is a brother-in-law case, your Honor"].  That sound bite comes from Crater Corp. v. Lucent Technologies.

In re Klein

Tuesday, June 14th, 2011

Many of the other blogs have gone into detail about the recent Federal Circuit decision in In re Klein.  So, I won’t go into detail about it here.  The opinion in the case noted that the references that were applied in the 103 rejection at issue were non-analogous references insufficient for 103 purposes.

While the word “hindsight” does not make its way into the issued opinion of the court, it is interesting to note this comment that Judge Linn made to the Associate Solicitor for the PTO in regard to hindsight: [Listen].

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

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

Fourth Circuit Makes Oral Arguments Available for Download

Friday, June 10th, 2011

This past May the Fourth Circuit updated its policy in regard to oral argument recordings.  Like many of its sister circuits, oral argument recordings from the Fourth Circuit are now available for download from its web site.  Surprisingly, a few circuit courts have not yet made oral argument recordings available for download —  trailing even the Supreme Court in facilitating public access.

Oral Arguments in Obama Health Care Law

Wednesday, June 8th, 2011

Litigation concerning the “Patient Protection and Affordable Care Act” that was enacted last year has now made its way to three appellate courts.  The Fourth, Sixth, and Eleventh Circuits have all heard oral arguments with the Eleventh Circuit holding oral argument today.

You can listen to the oral argument in the Eleventh Circuit case (State of Florida, et al., v. United States Dept. of Health and Human Services, et al.) here: [Listen].

You can listen to the June 1st oral argument in the Sixth Circuit here: [Opening Remarks by Court], [Argument on Government\'s Motion to Dismiss], and [Argument on the Merits].

You can listen to the two cases argued on May 10th to the Fourth Circuit here: [Liberty University, Inc. v. Timothy Geithner ] and [Commonwealth of Virginia v. Kathleen Sebelius ].

Notably, Paul Clement, who argued on behalf of the NFL in the NFL lockout case last Friday, argued on behalf of the states in today’s Eleventh Circuit oral argument.

Oral Argument in NFL Lockout Case

Friday, June 3rd, 2011

The Eighth Circuit heard oral argument in the NFL dispute today.  The case is captioned Tom Brady et al. v. National Football League

Two former Solicitors General argued the case.  Paul Clement argued on behalf of the NFL.  Ted Olson argued on behalf of the players.

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

Where the buffalo roam

Wednesday, June 1st, 2011

The University of Colorado Law School scored a major coup yesterday. It appointed Philip J. Weiser as its new Dean. Professor Weiser is one of the top officials in the White House in regard to innovation issues. He currently serves as the senior advisor for technology and innovation to the National Economic Council at the White House. Previously, he served as a law clerk to Justices Byron R. White and Ruth Bader Ginsburg.

Professor Weiser is also the driving force behind CU-Law’s Silicon Flatirons Center for Law, Technology, and Entrepreneurship.