US District Court Patent Pilot Program

December 17th, 2010

The House of Representatives passed the bill for the US District Court Patent Pilot program today by a vote of 371-1. The bill was previously passed by the Senate. Here are some of the comments by members of the House:

President Obama on Patenting

December 17th, 2010

President Obama spoke at Winston-Salem, North Carolina earlier this month where he noted that the US should make it easier to patent a new idea or a new invention.

Order to Show Cause

December 11th, 2010

A few weeks ago, I noted that Judge Dyk had commented that the improper use of “Confidential” markings in appeal briefs was an “absolute plague.” [Link].

I ran across another oral argument from the last few years where Judge Dyk actually issued an order to show cause as to why the party that improperly marked material as confidential should not be sanctioned.  [Listen] and [Listen].  The confidential markings had been applied to case citations and quotations in a brief.

Research Corp. Technologies, Inc. v. Microsoft Corp.

December 8th, 2010

The Federal Circuit issued an important decision concerning “abstract ideas” and 35 USC §101 today in Research Corp. Technologies, Inc. v. Microsoft Corp., 2010-1037 (Fed. Cir. Dec. 8, 2010).

If you are interested in listening to the oral argument from the case, it is available here: [Listen].

The court’s opinion is available here: [Read].

Hocus Pocus

December 6th, 2010

Back in September 2009 in the case of Nystrom v. TREX, Chief Judge Rader wrote an opinion (or “additonal views” at the end of an opinion that he authored for the panel) that addressed claim vitiation.  See the previous posts here: [Vitiation Part I] [Vitiation Part II].

In another oral argument from 2007 in Wleklinski v. Targus, 2007-1273 (Fed. Cir. Dec. 19, 2007), Judge Rader commented on the Federal Circuit’s treatment of claim vitiation and the related “hocus pocus” that makes it a legal issue that can therefore be handled under summary judgment:  [Listen]. 

You can read the Targus opinion here: [Read].

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

When the seas change

November 30th, 2010

There is an interesting sound bite from back in 2007 during the oral argument of Maurice Mitchell Innovations, L.P. v. Intel Corp., 2007-1108 (Fed. Cir. Sept. 24, 2007).   The patent at issue had been filed in 1987 and had been written with extensive “means” language.  Fast forward twenty years to 2007 with the claim language under review by the Federal Circuit, Judge Rader inquired of counsel to what extent the evolution of the law surrounding “means plus function” claims should be taken into account: [Listen].

The Federal Circuit opinion is available here: [Read].

To the extent that the treatment of “means plus function” claims was the sea change of the 90’s, I think one could argue that the treatment of office actions under Dayco and McKesson is the sea change of the twenty-first century.  Hopefully, only a temporary rogue wave.

Supreme Court Review of i4i v. Microsoft

November 29th, 2010

The Supreme Court has granted Microsoft’s petition for certiorari in the I4I v. Microsoft case. The Federal Circuit’s revised opinion is available here: [Read].

You can listen to the oral argument at the Federal Circuit below. The oral argument was over an hour; so, I’ve divided it into three segments (1) Microsoft’s argument; (2) i4i’s argument; and (3) Microsoft’s rebuttal argument.

Microsoft’s argument: [Listen]

i4i’s argument: [Listen]

Microsoft’s rebuttal argument: [Listen]

Supporting documents including briefs and a link to the patent can be found at I4I’s web site:  [Link].

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].