Be Prepared to Argue Your Co-Counsel’s Case

November 28th, 2010

When there are multiple defendants in a patent case, it is common during the appeal for each defendant’s attorney to argue a portion of the allotted time during oral argument.  That rarely works well and the judges have been heard on more than one occassion to express their dissatisfaction with that arrangement.

At a recent oral argument, as the parties were just about to begin their oral arguments, the panel asked if the attorneys for the defendant-appellants wouldn’t mind rearranging their argument time.  Instead of each attorney arguing the issues that affected his respective client, one attorney was asked to speak to all the issues in the opening argument.  The other attorney was asked to handle the rebuttal argument on all issues.  As you can hear Chief Judge Rader explain, this was to help the panel develop a more fluid line of questioning. [Listen].   The attorneys agreed to accommodate the court; and being very talented advocates, they conducted the oral argument  without any hiccups. 

One interesting note is that Chief Judge Rader commented that the court views oral argument as its time.  That is probably a useful reminder for appellants.

Asking parties to switch or embrace unexpected issues at the last minute strikes me as a bit unfair.  It raises interesting hypothetical ethical issues as well.  One could imagine a hypothetical situation where defendant A has a strong non-infringement position and wouldn’t mind seeing its competitor, defendant B, found to have infringed the same patent under its weaker theory of non-infringement or invalidity defense.  Nevertheless, attorney for party A is asked by the court at the last minute to present on all the issues, which necessarily requires defending party B. 

You can listen to the entire oral argument here [Listen] and read the court’s Rule 36 opinion here: [Read].

Immersion Corp. v. Sony

November 24th, 2010

I ran across an old oral argument from 2006 for Immersion Corp. v. Sony Computer Enterntainment America, Inc. et al., 2005-1358 (Fed. Cir. April 4, 2007).  The oral argument is interesting mainly because it features three heavyweights in the patent field: Don Dunner, Mark Lemley, and Morgan Chu. 

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

You can read the court’s opinion here: [Read].

Constructive Notice — Patent Marking

November 22nd, 2010

In Nike, Inc. v. Wal-Mart Stores, Inc., 138 F. 3d 1437 (Fed. Cir. 1998), Judge Newman noted that “[i]n order to satisfy the constructive notice provision of the marking statute, Nike must have shown that substantially all of the Air Mada Mid shoes being distributed were marked, and that once marking was begun, the marking was substantially consistent and continuous.”

The Federal Circuit recently was presented with the issue of what does “substantially consistent and continuous” mean in the constructive notice context during the oral argument of Japan Cash Machine Co., Ltd. et al. v. MEI, Inc., 2010-1069 (Fed. Cir. Nov. 8, 2010).  The panel issued a Rule 36 opinion; so, there is no additional guidance to be garnered from a written opinion.  But, the oral argument is interesting as the panel tried to gain insight into what satisfies “substantially consistent and continuous.”

You can listen to the oral argument here: [Listen].  The discussion of marking begins at about the 17:45 minute mark.

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

Citation of Material After Payment of Issue Fee

November 18th, 2010

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].

Tivo Stock Price

November 16th, 2010

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

Tivo and Echostar 5 Day Comparison

Supreme Court Oral Argument in Costco Wholesale Corp. v. Omega S.A.

November 14th, 2010

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].

Update on Federal Circuit Nominees

November 13th, 2010

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.

Patent Attorneys — Presumed Guilty Until Proven Innocent

November 10th, 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.

En Banc Oral Argument in Tivo v. Echostar

November 10th, 2010

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 en banc order is available here: [En Banc Order].
The earlier three judge panel opinion (Judges Mayer, Lourie, and Rader; Rader dissenting) is available here: [Link].
You can listen to the earlier three judge panel oral argument here: [Listen].  The earlier oral argument is beneficial in that you can hear Chief Judge Rader’s comments.  Chief Judge Rader for some reason has not actively asked questions in the en banc oral arguments since he became Chief Judge.

En Banc Oral Argument in Therasense, Inc. v. Becton, Dickinson and Co.

November 9th, 2010

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].