It has been quite some time since the Federal Circuit accepted a new case for en banc review. The court is currently reviewing en banc the Lighting Ballast Control v. Phillips Electronics case in order to reconsider Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc). But, what will be the next case? Has the court already taken a case en banc sua sponte sub secretum* without further briefing?
There are several topics ripe for review.
1) Functional language is the hot topic these days. I would not be surprised to see the court take on “functional language” in some manner.
2) FInjan. The court had to tap dance around the Finjan decision in a recent appeal. I would not mind seeing that issue addressed en banc. See this prior post [Link].
3) The In re Abele/Cybersource v. Retail Solutions/Smartgene v. Advanced Biological Industries tragedy trilogy of cases.
4) Atmel. In yesterday’s opinion in Otto Bock Healthcare v. Ossur, Judge Lourie clarified his opinion for the court in Atmel Corp. v. Info Storage
Devices, 198 F.3d 1374 (Fed. Cir. 1999) by stating:
Further, Otto Bock’s reliance on Atmel is misplaced.
Atmel only foreclosed the use of the content of a nonpatent
publication incorporated by reference to add structure
to a means-plus-function claim. Atmel, 198 F.3d at
1382. Atmel did not purport to include U.S. patent applications.
In fact, 37 C.F.R. 1.57(d) specifically envisions
using a U.S. patent application incorporated by reference
to define structure for the purpose of 35 U.S.C. § 112, ¶ 6.
The court thus did not err in using the ’274 application’s
incorporation by reference to construe the term “means
for maintaining a vacuum” to mean a “weight-actuated
vacuum pump as disclosed in [the ’274 application].”
Irah Donner writes in his excellent book Patent Prosecution:
The Atmel Corp. decision is troublesome with respect to its reluctance to utilize the incorporation-by-reference rule to recite corresponding structure, particularly since this rule has been around for many years, including prior to the enactment of Section 112, sixth paragraph. . . . Hopefully, the Federal Circuit will have the opportunity to reconsider this issue in the future.
See Patent Prosecution, Fifth Edition,2007, at pages 2211-12.
I don’t really have a dog in the fight with respect to Atmel. I am not particularly fond of means-plus-function claims. I suspect, however, that means-plus-function and step-plus-function claiming will take on a greater role in the future to combat §112 (lack of enablement due to overbreadth) and §101 invalidity assertions. Namely, it seems harder to argue that a step-plus-function claim is overly broad, preempts all applications, or is abstract, if it is limited to the acts disclosed in the specification. I also find means-plus-function claims a pain in the neck to deal with whenever I write an invalidity or non-infringement opinion — so, they have value in that regard, as well. And, there have been a number of cases with large damages awards that are based on mean-plus-function claims.
Now that I have sufficiently jinxed these issues, we’ll see when and what issue the en banc court takes on next.
*By the way, I stole the phrase “sua sponte sub secretum” from Dennis Crouch.