Archive for April, 2012

David Kappos at University of Colorado Law School

Tuesday, April 24th, 2012

Director David Kappos of the USPTO will be the keynote speaker at the University of Colorado Law School patent event later this afternoon.  He is scheduled to speak at 2:15-2:45 Mountain time.  I’m sure local practitioners are curious if there will be any announcement about a possible Denver satellite patent office.*

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*Update

There was no announcement about satellite offices. 

You can watch the recorded video of Director Kappos’ presentation [here].   You can see Director Kappos’ slides from his presentation here: [Link].

Abraham Lincoln’s Boilerplate

Sunday, April 15th, 2012

Looking over Abraham Lincoln’s patent the other day, I noticed the boilerplate portion of his specification.  It reads:  

I wish it to be distinctly understood, that I do not intend to limit myself to any particular mechanical arrangement, in combining expansible buoyant chambers with a vessel, but shall vary the same as I may deem expedient, whilst I attain the same end by substantially the same means.

Courts from time to time have pointed to boilerplate to support their positions.  Indeed, this happened just the other day in Judge Prost’s opinion for the court in Aventis Pharma v. Hospira, __F.3d __ (Fed. Cir. 2012)(emphasis added):

This interpretation of “perfusion” also is consistent with the teachings of the specification. Although the specification does refer to perfusions with a stability of at least eight hours, see ’561 patent col.2 ll.43-45 (”The new perfusions [referring to examples in the specification] are stable from a physical standpoint, that is to say no precipitation phenomenon is seen to appear within approxi-mately 8 hours.”), and the disclosed examples of perfu-sions have stabilities exceeding eight hours, see id. at col.2 l.59-col.3 l.26, these general descriptions of the characteristics of embodiments do not suffice to limit the claims. See Thorner, 669 F.3d at 1366 (”It is likewise not enough that the only embodiments, or all of the embodi-ments, contain a particular limitation.”). Indeed, the specification expressly instructs that the disclosed examples “are not to be considered as limiting the invention.” ’561 patent col.2 ll.53-54. Moreover, in contrast to the specification’s discussion of anaphylactic and alcohol intoxication manifestations, nothing in the specification indicates that a minimum stability of eight hours is an essential feature of the claimed perfusion or an advantage of the perfusion over the prior art. See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906-09 (Fed. Cir. 2004) (distinguishing cases where the court narrowly construed an otherwise broad claim term).

The authors of the book “Drafting Patents for Litigation and Licensing” have documented other occasions where the presence of boilerplate, as well as the omission of boilerplate, was noted by a court.  For example, in Rexnord Corp. v. Laitram, 274 F.3d 1336,1345 (Fed. Cir. 2001), Judge Clevenger writing for the court said:

Moreover, the written description explicitly states that aside from the preferred embodiment, “[t]he invention is capable of other embodiments and of being practiced or being carried out in various ways.” ‘550 patent, col. 3, ll. 57-59. The inventor was careful to consistently use phrases throughout the written description such as: “In one embodiment …”, “Before one embodiment …”, “of other embodiments …”, “of a preferred embodiment …”, or “In the particular embodiment….” These phrases reflect the inventor’s teaching that his invention could be embodied “in various ways.” Finally, the inventor explicitly qualified his detailed “Description of A Preferred Embodiment” by stating that “it is to be understood that the invention is not limited in its application to the details of construction and the arrangements of components set forth in the following description or illustrated in the drawings.” ‘550 patent, col. 3, ll. 54-57.

In contrast, the omission of boilerplate was noted by a district court judge in Honeywell Intern., Inc. v. ITT Industries, Inc., 330 F. Supp. 2d 865, 880 n. 12 (E.D. Mich. 2004):

 Importantly, there is absolutely nothing in the specification to contradict this characterization by implying that the invention is broader than a fuel filter or that a fuel filter is merely an example part.12

Footnote 12. For example, the boilerplate statement that other embodiments and variations will be readily apparent to persons of ordinary skill in the art, which appears in many patents after the written description and before the claims, is not present in the ‘879 patent.

Free Patent Claim Term Glossaries

Saturday, April 14th, 2012

I ran across three patent claim term glossaries that are available for free from the Public Patent Foundation web site [Link]. 

The glossaries are for: 

Electronics, Computer, and Business Method claim terms: [Link];

Mechanical, Electro-mechanical, and Medical Device claim terms: [Link]; and

Chemical, Pharmaceutical, and Biotechnology claim terms:  [Link].

Judge Rader Band De Novo at the House of Blues

Friday, April 6th, 2012

You may recall that Chief Judge Rader’s band “De Novo” performed at the “House of Blues” in San Diego back in January.  DLA Piper has posted an extensive photo slideshow of the performance here: [Link] and [Link].

Federal Circuit Clerks

Wednesday, April 4th, 2012

I have often thought it would be interesting if someone would start a Wikipedia page listing past Federal Circuit clerks — much like Wikipedia has done with Supreme Court clerks.  It would be interesting to see where the clerks go after their service on the court and which undergrad and law schools the clerks attended.  To what degree do they go to work at the Solicitor’s Office, in-house, or private practice?  It would also be interesting to see how different technical areas are represented via clerks’ technical degrees. 

Searching for something else this evening, I stumbled across the web site The Clerkship Scramble [Link].  It had some information about law schools attended by recent clerks.  Maybe readers can help that blogger fill out the roster for blank years:

Chief Judge Randall R. Rader
Howard T. Markey National Courts Building
717 Madison Place, N.W., Suite 901
Washington, DC 20439
2012-13:
2011-12: GW
2010-11: SLS, GULC, WUSTL
2009-10: American
2008-09: Boalt, Iowa
2007-08:
2006-07:
2005-06:
2004-05:
Chief Judge Rader has four term clerks.

Judge Pauline Newman
Howard T. Markey National Courts Building
717 Madison Place, N.W., Suite 801
Washington, DC 20439
2012-13: NYU
2011-12: NYU, UIUC
2010-11: HLS, NYU, UIUC
2009-10: UIUC, George Mason
2008-09: GULC, George Mason
2007-08:
2006-07:
2005-06:
2004-05:
Judge Newman has four term clerks.

Judge Alan D. Lourie - OFF PLAN
Howard T. Markey National Courts Building
717 Madison Place, N.W., Ste. 908
Washington, DC 20439
2012-13:
2011-12: Boalt, GULC, UT, Fordham
2010-11: SLS, UT, Fordham
2009-10: UM
2008-09: HLS, HLS, SLS
2007-08:
2006-07:
2005-06:
2004-05:
Judge Lourie has four term clerks.

Judge William C. Bryson - OFF PLAN
Howard T. Markey National Courts Building
717 Madison Place, N.W., Room 910
Washington, DC 20439
2012-13:
2011-12: UVA, NU, GW, BC
2010-11: HLS, Boalt, Duke
2009-10: UM
2008-09: GULC
2007-08:
2006-07:
2005-06:
2004-05:
Judge Bryson has four term clerks.

Judge Richard Linn
Howard T. Markey National Courts Building
717 Madison Place, N.W., Suite 816
Washington, DC 20439
2012-13:
2011-12: SLS, GW, Loyola-Chicago
2010-11: SLS, GW, George Mason, Loyola-Chicago
2009-10: HLS, SLS, George Mason
2008-09:
2007-08:
2006-07:
2005-06:
2004-05:
Judge Linn has four term clerks.

Judge Timothy B. Dyk - OFF PLAN
Howard T. Markey National Courts Building
717 Madison Place, N.W., Suite 915
Washington, DC 20439
2013-14: NYU
2012-13:
2011-12: YLS, UT
2010-11: YLS, GULC, UT
2009-10: Duke, NU, GULC, GULC
2008-09: HLS, GULC, UT
2007-08: HLS
2006-07:
2005-06:
2004-05:
Judge Dyk has four term clerks.

Judge Sharon Prost
Howard T. Markey National Courts Building
717 Madison Place, N.W., Suite 808
Washington, DC 20439
2012-13:
2011-12:
2010-11: SLS, GW
2009-10: Cornell, American
2008-09: Penn, Chicago-Kent
2007-08:
2006-07:
2005-06:
2004-05:
Judge Prost has four term clerks.

Judge Kimberly A. Moore - Alumni Preferred, Hiring Now for ‘13-14
Howard T. Markey National Courts Building
717 Madison Place, N.W., Room 913
Washington, DC 20439
2012-13:
2011-12: Penn, Emory
2010-11: USC, GW, George Mason
2009-10: GW
2008-09: UM, UT, GW
2007-08:
2006-07:
Judge Moore has four term clerks.

Judge Kathleen M. O’Malley
Howard T. Markey National Courts Building
717 Madison Place, N.W., Room 907
Washington, DC 20439
2012-13:
2011-12: NYU, Ohio St., Arizona State, Syracuse
2010-11: SLS, GULC, Ohio St., Arizona State
Judge O’Malley has four term clerks.

Judge Jimmie V. Reyna
Howard T. Markey National Courts Building
717 Madison Place, N.W., Room 809
Washington, DC 20439
2012-13:
2011-12: GULC, Pittsburgh, Pittsburgh
Judge Reyna has four term clerks.

Judge Evan J. Wallach
Howard T. Markey National Courts Building
717 Madison Place, N.W.
Washington, DC 20439
2012-13:
2011-12:
Judge Wallach has four term clerks.

Senior Judge Haldane Robert Mayer
Howard T. Markey National Courts Building
717 Madison Place, N.W.
Washington, DC 20439
Judge Mayer has career clerks only.

Senior Judge S. Jay Plager
Howard T. Markey National Courts Building
717 Madison Place, N.W., 4th Floor
Washington, DC 20439
2012-13:
2011-12:
2010-11: GW
2009-10:
2008-09:
2007-08:
2006-07:
2005-06:
2004-05:
Judge Plager has one term clerk.

Senior Judge Raymond C. Clevenger, III
Howard T. Markey National Courts Building
717 Madison Place, N.W., 5th Floor
Washington, DC 20439
2012-13:
2011-12: SLS, UVA
2010-11:
2009-10: NYU
2008-09: GW
2007-08:
2006-07:
2005-06:
2004-05:
Judge Clevenger has two term clerks.

Judge Alvin A. Schall
Howard T. Markey National Courts Building
717 Madison Place, N.W.
Washington, DC 20439
2012-13:
2011-12:
2010-11: George Mason
2009-10: Duke
2008-09: Penn, GW, Iowa
2007-08:
2006-07:
2005-06:
2004-05:
Judge Schall has two term clerks.

Judge Arthur J. Gajarsa
Howard T. Markey National Courts Building
717 Madison Place, N.W., 8th Floor
Washington, DC 20439
2012-13:
2011-12: Penn
2010-11: SLS, UT, BC
2009-10: SLS
2008-09: UT
2007-08:
2006-07:
2005-06:
2004-05:
Judge Gajarsa has one term clerk.

(I have to admit that some of the abbreviations used above threw me for a second.  I was pretty certain that the court was not hiring clerks from the Society of Laparoendoscopic Surgeons (i.e., SLS).  But, it took a couple of further searches to locate Stanford Law School as being abbreviated that way, as well.)