Archive for May, 2012

Reading Tea Leaves

Thursday, May 31st, 2012

Listening to oral argument recordings from various cases presents an opportunity to try and read the tea leaves as to where the Federal Circuit is heading with respect to a particular area of the law.  The oral argument in Walker Digital v. Microsoft, 2011-1419 (Fed. Cir. 2012) presents one such opportunity. 

In the oral argument of Walker Digital v. Microsoft, which was argued on March 9, 2012, Judge Moore made a comment about the patentee having a problem if the claims were construed in such a way that they required joint infringement.  The Akamai v. Limelight and McKesson v. Epic cases were argued en banc four months earlier — so, presumably, Judge Moore knew as of March 9, 2012 which way the CAFC was headed in deciding those cases when she made her comment.  You can listen to the sound bite yourself and see if you think it indicates how the CAFC will decide those en banc divided infringement cases: [Listen].

As a sidenote, Judge Moore also took a friendly shot at patent prosecutors and their alleged deficiencies when it comes to knowing the rules of grammar:  [Listen].  Ouch.  Of course, a patent prosecutor is entitled to be his or her own grammarian.  See Chicago Steel Foundry Co. v. Burnside Steel Foundry Co., 132 F.2d 812, 814-15 (7th Cir. 1943), cited in Jonsson v. Stanley Works, 903 F.2d 812, 820-21 (Fed. Cir. 1990).

En banc review denied in Fort Properties v. American Master Lease

Wednesday, May 30th, 2012

Federal Circuit court watchers interested in section 101 issues might want to take note that the Federal Cicuit has denied en banc review in Fort Properties v. American Master Lease, LLC, 2009-1242 (Fed. Cir. 2012).   The denial is referenced on the court’s weekly disposition page: [Link].

Quote of the Day

Tuesday, May 22nd, 2012

The BNA had a nice article summing up the recent roundtable on Mayo v. Prometheus that was held at George Washington University last week.  Retired Chief Judge Paul Michel of the Federal Circuit was one of the speakers.  He is quoted as saying:

[I] didn’t think it was a close call at all.  I felt that it was easy passage through Section 101.  But the Supreme Court’s ruling is attitudinally a throwback to pre-Chakrabarty cases like Gottschalk v. Benson and Parker v. Flook.  It presents a vague standard.  How are the more than 7,000 patent examiners and the thousands of patent attorneys and judges going to apply this?  It’s going to be chaos unless the Supreme Court reworks this territory.  It’s most unfortunate.

While it is too bad that Chief Judge Michel has retired from the CAFC, it is nice that he is now free and willing to speak his mind.

The Judges of the Federal Circuit

Tuesday, May 15th, 2012

Front row:  Judges Clevenger, Plager, Newman, Rader, Mayer, Lourie, and Schall.  Back row:  Judges O'Malley, Prost, Linn, Bryson, Gajarsa, Dyk, Moore, Reyna, and Wallach.

Front row: Judges Clevenger, Plager, Newman, Rader, Mayer, Lourie, and Schall. Back row: Judges O’Malley, Prost, Linn, Bryson, Gajarsa, Dyk, Moore, Reyna, and Wallach.

(Click on image for a better view.)

Below:  Nominee Richard Taranto.


How Long Does the Federal Circuit Take to Decide En Banc Cases?

Saturday, May 12th, 2012

The oral arguments in Akamai v. Limelight and McKesson v. Epic took place over 5 1/2 months ago.  I was curious how long it normally takes the court to issue its en banc opinions.  If the chart below showing recent en banc cases is any indication, the decisions should be issued soon.


Date of Oral Argument

Date of Decision


1.  Marine Polymer v. Hemcon, __ F.3d __ (Fed. Cir. 2012)(en banc)

No en banc oral argument

March 15, 2012

Not Applicable

2.  Zoltek v. U.S., __ F.3d __ (Fed. Cir. 2012)(en banc)

No en banc oral argument

March 14, 2012

Not Applicable

3.  Therasense, Inc. et al. v. Becton, Dickinson and Co. et al. 649 F. 3d 1276 (Fed. Cir. 2011) (en banc)

November 9, 2010

May 25, 2011

6 months, 16 days

4.  Tivo v. Echostar, 646 F.3d 869 (Fed. Cir. 2011)(en banc)

November 9, 2010

April 20, 2011

5 months, 11 days

5.  Slattery v. U.S., 635 F.3d 1298 (Fed. Cir. 2011)(en banc)

July 8, 2010

January 28, 2011

6 months, 20 days

6.  Hyatt v. Kappos, 625 F.3d 1320 (Fed. Cir. 2010 (en banc)

July 8, 2010

November 8, 2010

4 months

7.  Princo Corp. v. Int’l Trade Comm’n, 616 F.3d 1318 (Fed. Cir. 2010) (en banc)

March 3, 2010

August 30, 2010

5 months, 27 days

8.  Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336 (Fed. Cir. 2010) (en banc)

December 7, 2009

March 22, 2010

3 months, 15 days

9.  Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 576 F.3d 1348 (Fed. Cir. 2009) (en banc in part)

May 29, 2009

August 19, 2009

2 months, 21 days

10.  Abbott Laboratories v. Sandoz, Inc., 566 F.3d 1282 (Fed. Cir. 2009) (en banc in part)

No en banc oral argument

May 18, 2009

Not applicable

11.  In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc)

May 8, 2008

October 30, 2008

5 months, 22 days

12.  Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc)

June 2, 2008

September 22, 2008

3 months, 20 days

13.  In re Seagate Tech., LLC, 497 F. 3d 1360 ( Fed. Cir. 2007) (en banc)

June 7, 2007

August 20, 2007

2 months, 23 days


Sandra Day O’Connor and the Federal Circuit

Sunday, May 6th, 2012

The U.S. Court of Appeals for the Federal Circuit is one of only two federal appellate courts that Sandra Day O’Connor has not sat on by designation since retiring from the Supreme Court.  The other court, also located in Washington, D.C., is the U.S. Court of Appeals for the D.C. Circuit.

Justice O’Connor sat with the other courts of appeal during these years:

1st:  2008

2nd: 2006

3rd:  2008

4th:  2008, 2009, 2010, 2012

5th:  2009

6th:  2009

7th:  2010

8th:  2007

9th:  2006, 2009, 2011

10th:  2008

11th:  2010

I’m not sure why Justice O’Connor has not sat with the appellate courts located in Washington, D.C.  Perhaps it is by coincidence or perhaps it is by design.  If by design, the Federal Circuit’s upcoming visit to Colorado this fall would afford it an opportunity to invite Justice O’Connor to sit with the court outside of Washington, D.C.

Are you up to date?

Friday, May 4th, 2012

   Each year the Colorado Bar Association publishes its annual survey of legal developments from the previous year. I wrote the chapter this year for developments in intellectual property law.  Most if not all of the developments covered in my chapter were at the federal level; so, the chapter might still be of interest to those of you who don’t practice in Colorado.  At any rate, if you are looking for a concise summary of the major patent, trademark, and copyright developments from 2011, you can order/download a copy (for a nominal fee) [here].

Federal Circuit Judges Audio Key

Thursday, May 3rd, 2012

I have added an “audio key” to the blog that attempts to provide a representative sound bite of each judge’s voice.  Hopefully, this will help people identify a particular judge when listening to recordings of oral arguments.  You’ll see the link to the audio key on the upper right hand portion of the site.

If you are curious which judge is speaking during an oral argument recording, my suggestion is to:

(1) pull up the decision (usually provided as a link on the web post);

(2) note from the opinion who the judges on the panel are; and

(3) use the following sound bites as an audio key to identify the speaker:

Chief Judge Rader [Listen]

Circuit Judge Newman [Listen]

Circuit Judge Lourie [Listen]

Circuit Judge Bryson [Listen]

Circuit Judge Linn [Listen]

Circuit Judge Dyk [Listen]

Circuit Judge Prost [Listen]

Circuit Judge Moore [Listen]

Circuit Judge O’Malley [Listen]

Circuit Judge Reyna [Listen]

Circuit Judge Wallach [Listen]


Senior Judge Gajarsa [Listen]

Senior Judge Mayer [Listen]

Senior Judge Plager [Listen]

Senior Judge Clevenger [Listen]

Senior Judge Schall [Listen]


Chief Judge Michel (retired) [Listen]


Senior Judge Archer (deceased) [Listen]

Senior Judge Friedman (deceased) [Listen]