Archive for May, 2013

Odds and Ends

Thursday, May 30th, 2013

1) The House Committee on Small Business conducted a hearing on the impact of the AIA earlier this month. Patently O’s Dennis Crouch was one of the witnesses. You can see more materials here: [Link].  Small companies develop 16 times more patents per employee than large firms.

2) The Federal Circuit sat en banc last Friday for oral argument in Berry v. Conyers, a merit systems protection board case. You can listen to that oral argument here: [here].

3) The BNA PTCJ ran an interesting article a few weeks ago that might interest readers.  The article addressed three recently issued “informative opinions” by the PTAB that construed “processor” as a means plus function term.  The author of the article is Andy Spence.  You can access the article here [Link].  I’m not sure what the process is for designating a PTAB opinion as an informative opinion, as opposed to a standard opinion.  By happenstance, all three opinions were by five judge panels.

Tick Tock — Scott Kieff Nomination to ITC

Tuesday, May 28th, 2013

I was pleased to see GW Law professor (and former Wash. U. Law professor) Scott Kieff nominated to the ITC last September.  However, since then it does not appear that he has received a nomination hearing.  The Senate Finance Committee is the committee tasked with such a hearing.  That committee appears to be as slow as the Senate Judiciary Committee is with some of its nominations.

Senate Judiciary Committee Sends Raymond Chen Nomination to Full Senate

Tuesday, May 21st, 2013

The Senate Judiciary Committee voted this past Thursday to approve the nomination of Raymond Chen to the Federal Circuit.  Solicitor Chen’s nomination will now move to the full Senate for consideration.  [Link]

Judges Michel, Gajarsa, and Posner on Patent System

Saturday, May 18th, 2013

The Federalist Society has posted the video of the recent conference entitled “Is the Patent System Working or Broken? A Discussion with Four Distinguished Federal Judges.”  That conference was held on May 14th and featured Circuit Judges Michel (ret.) and Gajarsa (ret.), as well as Judge Posner.  The link for the video is available here.

Federal Circuit Bench and Bar Conference 2013

Saturday, May 18th, 2013

The Federal Circuit will be holding its 15th Annual Bench and Bar Conference on June 19th-22nd at the Broadmoor in Colorado Springs, Colorado.  You can view the agenda here.

I believe at least one of the judges might be speaking to the Colorado Bar Association prior to the conference.  I’ll post that information as it becomes available for those of you who might want to make your travel plans to allow you to go to that luncheon.

Actually, the person I would like to see speak right now is retired Chief Judge Paul Michel.  I’m sure he would have some interesting and candid thoughts on the CLS v. Alice decision.

Judge Lourie on “Aro I”

Saturday, May 11th, 2013

I was curious whether Judge Lourie had ever relied upon the Supreme Court case of Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336 (1961) (”Aro I”) in the opinions that he has authored for the court.  It turns out that he has. Here are some examples.

This court, however, has rejected a claim construction process based on the “essence” of an invention. See, e.g., Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1345 (Fed.Cir.2002) (”It is well settled that `there is no legally recognizable or protected essential element, gist or heart of the invention in a combination patent.’”) (citing Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 345, 81 S.Ct. 599, 5 L.Ed.2d 592 (1961)).

Ormco v. Align, 498 F.3d 1307, 1322 (Fed. Cir. 2007).

We agree with Cooper, however, that the district court erred in granting summary judgment that the asserted claims of the ‘119 patent are invalid for failure to meet the written description requirement. In Vas-Cath, we held that “under proper circumstances, drawings alone may provide a `written description’ of an invention as required by § 112.” 935 F.2d at 1565, 19 USPQ2d at 1118. Drawings constitute an adequate description if they describe what is claimed and convey to those of skill in the art that the patentee actually invented what is claimed. Id. at 1566, 935 F.2d 1555, 19 USPQ2d at 1119. In Vas-Cath, we reversed the district court’s grant of summary judgment of invalidity of claims to a double lumen catheter having a combination of features. In particular, we disagreed with the court’s statement that one could not tell from the drawings what combination of the disclosed features constituted “the invention” because “[t]hat combination invention is what the [patent's] drawings show.” Id. at 1565, 935 F.2d 1555, 19 USPQ2d at 1118. The court’s concern with “what the invention is” was misplaced, we explained, because there is no “legally recognizable or protected `essential’ element, `gist’ or `heart’ of the invention in a combination patent.” Id. (quoting Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 345, 81 S.Ct. 599, 5 L.Ed.2d 592 (1961)).

Cooper Cameron v. Kvaerner Oilfield Products, 291 F.3d 1317, 1322 (Fed. Cir. 2002)

The disputed term at issue, “perforated,” appears not in the claims but rather in the district court’s construction of a disputed claim term. We note, as an initial matter, that “we do not ordinarily construe words that are not in claims.” Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1334 (Fed.Cir. 2009); see also AroMfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 339, 81 S.Ct. 599, 5 L.Ed.2d 592 (1961) (”[T]he claims made in the patent are the sole measure of the grant.”). However, in those cases in which the correct construction of a claim term necessitates a derivative construction of a non-claim term, a court may perform the derivative construction in order to elucidate the claim’s meaning.

Advanced Fiber Technologies Trust v. J & L FIBER, 674 F. 3d 1365, 1373 (Fed. Cir. 2012)


Richard Taranto Era Begins

Tuesday, May 7th, 2013

Circuit Judge Richard Taranto sat for his first oral argument at the Federal Circuit yesterday.  Chief Judge Rader offered these welcoming remarks: [Listen].

The Federal Circuit also has a visiting judge this month.  Judge Dee Benson of the District of Utah heard oral arguments today at the Federal Circuit.  Judge Benson and Judge Rader served together on Senator Orrin Hatch’s staff in the 1980’s.