Archive for July, 2012

Thought for the Day

Friday, July 27th, 2012

The thought for the day comes from the US Supreme Court decision in Aro Mfg. Co., Inc. v. Convertible Top Co., 365 U.S. 336 (1961).  In that case, the Court explained what an “invention” is in the context of 35 U.S.C. Sec. 271. Namely, it is the totality of the elements of the claim.  You might ask yourself if the Federal Circuit is creating a double-standard with respect to the meaning of “invention” under  35 U.S.C. sec. 271 and under 35 U.S.C. sec. 101.  Moreover, is the court backsliding to a “gist of the invention” analysis for section 101 purposes?

Under 35 U.S.C. sec. 271 as explained by Aro I a patentee must show that an infringer meets all the elements of a claim.  However, under some recent decisions with respect to 35 U.S.C. sec. 101, some might argue that a judge is free to take a more leisurely approach by discounting various claim elements and attempting instead to divine the underlying idea from the patent specification.

Aro I stated:

For if anything is settled in the patent law, it is that the combination patent covers only the totality of the elements in the claim, and that no element, separately viewed, is within the grant. See the Mercoid cases, supra, 320 U.S. at 320 U. S. 667; 320 U.S. at 320 U. S. 684. [Footnote 10] The basic fallacy in respondent’s position is that it requires the ascribing to one element of the patented combination the status of patented invention in itself. Yet this Court has made it clear in the two Mercoid cases that there is no legally recognizable or protected “essential” element, “gist” or “heart” of the invention in a combination patent. In Mercoid Corp. v. Mid-Continent Co., supra, the Court said:

“That result may not be obviated in the present case by calling the combustion stoker switch the ‘heart of the invention’ or the ‘advance in the art.’ The patent is for a combination only. Since none of the separate elements of the combination is claimed as the invention, none of them, when dealt with separately, is protected by the patent monopoly.”
320 U.S. at 320 U. S. 667. And in Mercoid Corp. v. Minneapolis-Honeywell Regulator Co., supra, the Court said:

“The fact that an unpatented part of a combination patent may distinguish the invention does not draw to it the privileges of a patent. That may be done only in the manner provided by law. However worthy it may be, however essential to the patent, an unpatented part of a combination patent is no more entitled to monopolistic protection than any other unpatented device.”

Aro Mfg. Co., Inc. v. Convertible Top Co., 365 U.S. 336, 344-45 (1961).

Oral Argument in Myriad

Friday, July 20th, 2012

The Federal Circuit heard oral argument this morning in The Association for Molecular Pathology v. USPTO (sometimes referred to as the “Myriad” case, which is also a party in the case).  You can listen to the oral argument here: [Listen].

Examination Art Units for the Detroit Patent Office

Monday, July 16th, 2012

The USPTO’s satellite office in Detroit opened last week.  I hadn’t seen any definitive information as to what art units were going to be represented in the Detroit office.  So, I did an area code search in the USPTO employee directory.  If those results are any indication, there are currently examiners for the following Group Art Units:

Group Art Unit #

Description

# of People in Group Art Unit in Detroit

3689

DATA PROCESSING: FINANCIAL, BUSINESS PRACTICE, MANAGEMENT, OR COST/PRICE DETERMINATION

1

3715

EDUCATION AND DEMONSTRATION

1

3618

MOTOR VEHICLES; LAND VEHICLES; HYBRID ELECTRIC VEHICLES

2

3616

MOTOR VEHICLES; LAND VEHICLES

1

3747

INTERNAL-COMBUSTION ENGINES; DATA PROCESSING: VEHICLES, NAVIGATION, AND RELATIVE LOCATION

1

3611

CARD, PICTURE, OR SIGN EXHIBITING;MOTOR VEHICLES; LAND VEHICLES

1

3753

VALVES AND VALVE ACTUATION; FLUID HANDLING

2

3749

LIQUID HEATERS AND VAPORIZERS; STOVES AND FURNACES; HEATING SYSTEMS; COMBUSTION; HEATING; VENTILATION

1

3742

FOODS AND BEVERAGES: APPARATUS; ELECTRIC HEATING; INDUSTRIAL ELECTRIC HEATING FURNACES; ELECTRIC RESISTANCE HEATING DEVICES

2

2861

INCREMENTAL PRINTING OF SYMBOLIC INFORMATION

1

2884

RADIANT ENERGY

1

3655

CLUTCHES AND POWER-STOP CONTROL; PLANETARY GEAR TRANSMISSION SYSTEMS OR COMPONENTS; INTERRELATED POWER DELIVERY CONTROLS INCLUDING ENGINE CONTROL

1

2872

OPTICS: EYE EXAMINING, VISION TESTING AND CORRECTING; OPTICAL: SYSTEMS AND ELEMENTS

1

2833

ELECTRICITY: CIRCUIT MAKERS AND BREAKERS; HIGH-VOLTAGE SWITCHES WITH ARC PREVENTING OR EXTINGUISHING DEVICES; PRIME-MOVER DYNAMO PLANTS; ELECTRICITY: SINGLE GENERATOR SYSTEMS; ELECTRICAL RESISTORS; HOROLOGY: TIME MEASURING SYSTEMS OR DEVICES; ELECTRICAL CONNECTORS

1

3652

ROBOTS

1

3622

DATA PROCESSING: FINANCIAL, BUSINESS PRACTICE, MANAGEMENT, OR COST/PRICE DETERMINATION

1

3626

DATA PROCESSING: FINANCIAL, BUSINESS PRACTICE, MANAGEMENT, OR COST/PRICE DETERMINATION

1

3748

INTERNAL-COMBUSTION ENGINES; ROTARY EXPANSIBLE CHAMBER DEVICES

3

There are also seven employees in the office of the Board of Patent Appeals and Interferences.

You Be the Judge: Rembrandt Technologies v. Cablevision

Sunday, July 15th, 2012

The Rembrandt Technologies v. Cablevision oral argument took place last week.  This appears to be a rather high-stakes patent litigation involving multiple cable companies.  The technology at issue concerns a viterbi decoder for a trellis encoded signal.  The patent that is the subject of the oral argument is U.S. patent 5,243,627.

This is an opportunity for you to be the judge of the claim construction issue and to see if your prediction matches the forthcoming panel decision.

1)  Do you think “signal point” would have had a plain and ordinary meaning to one of ordinary skill in the art?

2)  If “signal point” did not have a plain and ordinary meaning, did the “present invention” language, Abstract, “Summary of the Invention,” and repeated embodiments using only two-dimensional signal points limit the meaning of “signal point” to a two-dimensional signal point.  Or, if “signal point” did have a plain and ordinary meaning, did those portions of the specification serve as a clear and unmistakable disavowal of dimensions other than two?

3)  Did the paragraph beginning

“The foregoing merely illustrates the principles of the invention. Thus although the illustrative embodiment utilizes a four-dimensional signaling scheme, the invention can be used with signaling schemes of any dimensionality. ”

cause one of ordinary skill in the art to believe that the claims should encompass signal schemes of any dimensionality?

You can listen to the oral argument [here].

Reversed

Friday, July 13th, 2012

Judges Rader, Newman, and Reyna were placed in the rather unenviable position of having to review one of their colleague’s cases in P.S. Chez Sidney v. U.S.I.T.C, App. No. 2008-1526 (Fed. Cir. July 13, 2012).

In today’s decision, Judge Reyna writing for the court reverses-in-part and vacates-in-part a decision by Judge Evan Wallach from when Judge Wallach served on the Court of International Trade.  I believe this is the first opportunity that the Federal Circuit has had to review one of Judge Wallach’s decisions since he was appointed to the Federal Circuit.  You can read the opinion here.

Oral Argument of the Month: Timebase v. Thomson

Sunday, July 8th, 2012

The case of Timebase v. Thomson, App. No. 2012-1082 (Fed. Cir. June 8, 2012) was recently decided by the Federal Circuit via a Rule 36 affirmance.  The oral argument highlighted a couple of interesting issues.  First, how should the word “each” be construed.  Second, does a construction of the word “displaying” that requires the displaying to be performed by a consumer’s computer raise divided infringement issues when an on-line publisher is the party being sued for infringement.  You can listen to the entire oral argument here: [Listen].

Claim 1 of the ‘592 patent at issue reads:

1. A computer-implemented system for publishing an electronic publication using text-based data, comprising:

a plurality of predefined portions of text-based data with each predefined portion being stored;

at least one predefined portion being modified and stored;

a plurality of linking means of a markup language, each predefined portion of said text-based data and said at least one modified predefined portion of text-based data being encoded with at least one linking means; and

a plurality of attributes, each attribute being a point on an axis of a multidimensional space for organising said plurality of predefined portions and said at least one modified predefined portion of said text-based data.

Claim 1 of the 7293228 patent at issue reads:

1. A method for electronically publishing text-based data, the method comprising:

dividing the text-based data into a plurality of portions of text-based data;

obtaining an amended portion of text-based data that is amended relative to one of the plurality of portions of text-based data;

storing each of the plurality of portions of text-based data;

storing the amended portion of text-based data;

providing a plurality of attributes, wherein the attributes define a manner in which the plurality of portions of text-based data and the amended portion of text-based data can be organized, displayed and linked in a multidimensional space;

encoding each of the plurality of portions of text-based data and the amended portion of text-based data with a markup language to include at least one link defined by one of the plurality of attributes;

allowing a user to search the text-based data using at least one of the plurality of attributes; and

displaying the text-based data to the user by:

displaying at least one of the plurality of portions of text-based data or the amended portion of text-based data in response to the search; and

displaying text, and/or one or more selectable links representing at least one additional attribute.

With respect to the word “each,” Judge Newman remarked on her philosophy of construing claim language: [Listen] and [Listen].

See these earlier posts with respect to the word “each”:  [Link], [Link], and [Link].

Judge Arthur J. Gajarsa Retires

Tuesday, July 3rd, 2012

The Federal Circuit web site reports that Senior Judge Arthur Gajarsa has retired from the Federal Circuit.  The announcement reads:

Circuit Judge Arthur J. Gajarsa retired from the U. S. Court of Appeals for the Federal Circuit on June 30, 2012, concluding a distinguished judicial career during which he served the judiciary and his nation with distinction.

In his parting message to the court, Judge Gajarsa said:

“It has been indeed an honor and privilege to have worked with all of you during the past 15 years. You made my work at the court easy to perform and a pleasure to undertake. My success and the success of the court are attributable not only to my judicial colleagues, but also to the fine members of the court team. I shall miss all of you and I look forward to observing the continued fine work of the court in the future.
I am looking forward to retirement as of June 30, not as the end of my career, but the beginning of a new one.”

The University of New Hampshire School of Law notes that Judge Gajarsa will serve as the first Distinguished Jurist-in-Residence at the Franklin Pierce Center for Intellectual Property:

Judge Arthur Gajarsa, recently retired from the US Court of Appeals for the Federal Circuit, will be joining us as the first Distinguished Jurist-in-Residence at the Franklin Pierce Center for Intellectual Property. He will begin teaching this fall and will be working with us to enhance our practice-ready curriculum, as well as providing strategic guidance as we build the Franklin Pierce Center for Intellectual Property into a global hub for innovation.

Link