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One of the issues that came up in the appeal of Flexiteek Americas, Inc. et al. v. Plasdeck, Inc. et al., 2009-1501 (Fed. Cir. Nov. 2, 2010)   was whether it was inequitable conduct for failure to cite to the US examiner the revocation of a related New Zealand patent.  The status of the US application at the time of the revocation of the New Zealand patent was that the issue fee had been paid but that the patent had not yet issued.  The person charged with inequitable conduct was president of a Swedish company.  He apparently had an opinion from Swedish counsel that there was no way to have the new material considered since the issue fee had been paid.

You can listen to the panel question the counsel for the appellee-plantiff-patent owner here: [Listen].

The panel followed up on rebuttal with the counsel for the appellant-defendant here: [Listen].

The entire oral argument is available here: [Listen].

I was somewhat surprised that the panel didn’t inquire about the option of petitioning to withdraw the application from issuance in favor of an RCE in order to have the new material considered.  This would have been one way to satisfy the applicant’s continuing duty through issuance to have the new art “considered” where “considered” is understood to mean that the examiner signs his/her initials to an IDS listing.

Given the wealth of prosecution talent in the D.C. area, perhaps the Federal Circuit would benefit from a patent prosecutor-retiree with an office or office hours at the Federal Circuit who could advise judges and clerks on matters of patent procedure.  Often during oral arguments, judges are heard asking the advocates about matters of patent procedure.  And often the advocates remark:  “I don’t know.  I’m not a patent attorney.”  It is unfair to expect judges and their young clerks to know all the procedures of patent prosecution.  But, if the court is going to hand down decisions like Dayco and McKesson that affect the entire patent bar and not just the parties in a case, I don’t think it is unfair to ask that it take steps to be as well-informed as possible about such procedures and the impact such decisions will have.

You can see the Federal Circuit’s Rule 36 opinion here: [Read].

You can view an opinion from the district court that gives more background here: [Read].

The Federal Circuit sat en banc to hear the oral argument in Tivo v. Echostar on Tuesday November 9th.  It is interesting to compare the stock performance of Tivo and Echostar.  Tivo’s stock price is down nearly 20% since that oral argument.

Tivo and Echostar 5 Day Comparison

The Supreme Court of the United States heard oral argument this past week in Costco Wholesale Corp. v. Omega S.A., a copyright case appealled from the U.S. Court of Appeals for the Ninth Circuit. 

You can listen to the oral argument here: [Listen].

You can read the transcript of the oral argument here: [Read].

You can read the Ninth Circuit opinion here: [Read].

The Senate Judiciary Committee requires judicial nominees to submit a public questionnaire.  This questionnaire is then posted on the Senate Judiciary Committee’s web site prior to the committee hearing.  The Senate Judiciary Committee has now posted the questionairre for Jimmie V. Reyna, the most recent nominee for one of the three vacancies on the US Court of Appeals for the Federal Circuit.  You can view it here: [Read].

No date has been set for Mr. Reyna’s hearing with the Senate Judiciary Committee.

No date has been set yet for Edward C. Dumont’s hearing with the Senate Judiciary Committee, as well.  He was nominated on April 14, 2010.

The nomination of US District Court Judge Kathleen O’Malley was reported by the Senate Judiciary Committee to the full Senate on September 23, 2010.

John Whealan, former USPTO Solicitor, and now Associate Dean for Intellectual Property Law Studies at George Washington University argued on behalf of Therasense, Inc.  and Abbott Labs in the en banc oral argument yesterday in Therasense v. Becton, Dickinson and Co.  The comment that I think will resonate with registered patent attorneys is the following: [Listen].  Since the Federal Circuit began making the recordings of oral arguments available on its web site in 2006, this is the first time that I’ve ever heard an advocate make the argument that patent attorneys are honest people . . . it is refreshing to finally hear someone point this out to the Federal Circuit.

The Federal Circuit sat en banc yesterday for the oral argument in Tivo v. Echostar, 2009-1374, a case concerning alleged contempt of a permanent  injunction based on a design around effort by Echostar.

You can listen to the en banc oral argument here: [Listen].

The issues on en banc review are: 

a) Following a finding of infringement by an accused device at trial, under what circumstances is it proper for a district court to determine infringement by a newly accused device through contempt proceedings rather than through new infringement proceedings? What burden of proof is required to establish that a contempt proceeding is proper?

b) How does “fair ground of doubt as to the wrongfulness of the defendant’s conduct” compare with the “more than colorable differences” or “substantial open issues of infringement” tests in evaluating the newly accused device against the adjudged infringing device? See Cal. Artificial Stone Paving Co. v. Molitor, 113 U.S. 609, 618 (1885); KSM Fastening Sys., Inc. v. H.A. Jones Co., 776 F.2d 1522, 1532 (Fed. Cir. 1985).

c) Where a contempt proceeding is proper, (1) what burden of proof is on the patentee to show that the newly accused device infringes (see KSM, 776 F.2d at 1524) and (2) what weight should be given to the infringer’s efforts to design around the patent and its reasonable and good faith belief of noninfringement by the new device, for a finding of contempt?

d) Is it proper for a district court to hold an enjoined party in contempt where there is a substantial question as to whether the injunction is ambiguous in scope? 

The Federal Circuit sat en banc today to hear oral argument in Therasense, Inc. v. Becton, Dickinson and Co., 2008-1511, a case concerning alleged inequitable conduct during patent prosecution.  The issues on appeal are available here: [En Banc Order].  Namely,

1. Should the materiality-intent-balancing framework for inequitable conduct be modified or replaced? 　

2. If so, how? In particular, should the standard be tied directly to fraud or unclean hands? See Precision Instrument Mfg. Co. v. Auto. Maint. Mach. Co., 324 U.S. 806 (1945); Hazel-Atlas Glass Co. v. Hartford-Empire Co., 322 U.S. 238 (1944), overruled on other grounds by Standard Oil Co. v. United States, 429 U.S. 17 (1976); Keystone Driller Co. v. Gen. Excavator Co., 290 U.S. 240 (1933). If so, what is the appropriate standard for fraud or unclean hands?

3. What is the proper standard for materiality? What role should the United States Patent and Trademark Office’s rules play in defining materiality? Should a finding of materiality require that but for the alleged misconduct, one or more claims would not have issued? 　

4. Under what circumstances is it proper to infer intent from materiality? See Kingsdown Med. Consultants, Ltd. v. Hollister Inc., 863 F.2d 867 (Fed. Cir. 1988) (en banc).

5. Should the balancing inquiry (balancing materiality and intent) be abandoned?

6. Whether the standards for materiality and intent in other federal agency contexts or at common law shed light on the appropriate standards to be applied in the patent context.

You can listen to the en banc oral argument here: [Listen].

The case was previously argued before a three judge panel (Judges Linn, Dyk, and Friedman).  The recording of that oral argument is available here: [Listen].  That panel’s opinion which was later vacated for purposes of en banc review is available here: [Read].

If you felt a shot of adrenalin coursing through your veins this morning, it just might have been your sympathetic nervous system celebrating the third anniversary of Judge Cacheris preliminarily enjoining the PTO continuation rules.  Yes, it has already been three years — but, it still brings a smile to my face just thinking about it.  If your experience was anything like mine, you might remember intermittent shouts of celebration in your office as people learned through email that the rules had been enjoined.

Kudos to Triantafyllos Tafas, Kelley Drye & Warren LLP, GlaxoSmithKline, Sherry Knowles, and Kirkland and Ellis LLP for challenging those ill-conceived rules.

The oral argument in Cheetah Omni v. Samsung Electronics, et al., 2010-1169 (Fed. Cir. Oct. 12, 2010) is interesting in that it dealt with the construction of the term “optical signal” and whether in view of the underlying facts for the patent at issue that term should be construed to mean that information must be carried by the “optical signal.” 

The plaintiff-appellant argued that in view of the facts, such as (1) that the claim language recited “optical signal carrying information” (which would make the language “carrying information” redundant if “optical signal” itself were construed to mean carrying information) and that (2) the patent office only applied references during prosecution that were light beams not including information, among other arugments, that the term “optical signal” should be construed to mean that no information may be carried by the optical signal.  The defendant-appellee noted that all four examples in the specification used “optical signal” to mean that information was carried by the optical signal.

Curiously, the Federal Circuit issued another Rule 36 opinion.  It seems to me that the appellant’s redundancy argument warrants a more detailed opinion and takes the appeal out of Rule 36 territory.

Judge Clevenger made the following comment that there is no such thing as one hundred percent certitude when it comes to claim construction: [Listen]. 

You can listen to the entire oral argument here: [Listen].

Here is a link to the court’s Rule 36 opinion: [Link].

This is an interesting sound bite from the oral argument of ESN, LLC v. Cisco Systems, Inc. et al., 2010-1185 (Fed. Cir. Oct. 8, 2010).  Judges Prost,  Rader, and Dyk commented on the trend by parties filing briefs at the Federal Circuit to mark a lot of the material as “Confidential.”   Judge Dyk characterized excessive confidential markings in appeal briefs as an “absolute plague.”  Chief Judge Rader indicated the court might just go ahead and use the “confidential” material in its opinion anyway, if it needed to do so . . . .  The panel ultimately issued a Rule 36 opinion; so, no confidential material was published by the court.

You can listen to Judges Prost and Dyk and Chief Judge Rader comment here:  [Listen].

Incoming US Presidents typically redecorate the Oval Office at the White House.  C-span conducted an interview with President Obama recently.  One of the notable changes for readers of this blog is that patent models from the late 1800’s now adorn the shelves of the oval office:

Henry Williams’ 1877 feathering paddlewheel for steamboats

John Peer’s 1874 gear-cutting machine

Samuel Morse’s 1849 telegraph

The National Archives needs your help in locating lost and stolen documents.  Among those historical documents are what the National Archives describes as Eli Whitney’s Cotton Gin Patent but then states it to be a drawing made circa 1804 in response to a court case in Georgia:

Patent documents concerning the Wright Brothers’ Flying Machine patent:

How to report a missing document to the National Archives:

• E-mail:   MissingDocuments@nara.gov
• Surface mail:
  

  Missing Documents
  Office of the Inspector General
  National Archives and Records Administration
  8601 Adelphi Road, College Park, MD 20740

• Telephone by calling:
  

  (301) 837-3500 (Washington, D.C. Metro area)
  800-786-2551 (toll-free and outside the Washington, D.C. Metro area)

Please be ready to provide as much of the following information as possible:

1. Your full name and contact information (E-mail, Daytime Telephone Number, Fax Number, Mailing Address).
2. A description of the document(s) and why you believe it is a U.S. government document, including the document creator, creating agency, addressee, date, and physical description (e.g., size, format, type, and any signatures or markings that helped you you determine it was a U.S. government record).
3. Where the document is now, including the name, address, telephone, web site, and e-mail addresses of the individual or organization holding the document.
4. Whether the document is about to be auctioned, transferred, or disposed of in some way, including the nature of the action (e.g., auction, ownership transfer), the proposed date and nature (e.g., online, in person) of the auction, and who has transferred or placed the materials at the auction (if known).
5. Why you believe the document may belong to the National Archives: State, for example, if the document in question is an original Presidential pardon or a treaty.
6. Other Information: List any additional information that would be helpful in determining whether the historical document is a U.S. governmental record such as Federal agency file code markings, signatures, or address lines to governmental officials.

Privacy note:   NARA encourages and welcomes anonymous tips on lost or stolen documents. It is the policy of NARA and the Office of the Inspector General to protect the identity of any source who provides information regarding lost or stolen documents.

     On the days that the Supreme Court of the United States releases its opinions, the justice who authored the majority opinion for the Court typically reads a summary of that opinion.  In the announcement of the Bilski v. Kappos opinion back in June 2010, Justice Kennedy read a summary of his majority opinion [Listen] and Justice Stevens read a summary of his concurring opinion [Listen].