Role of the Federal Circuit Court of Appeals

February 20th, 2010

I thought the following C-Span videos from the George Washington Law and Federal Circuit Bar Association’s “The National Appellate Court Celebration and Introspective Symposium” held on March 18, 2009 were very interesting.

The first video on “The Role of the Federal Circuit Court of Appeals” includes Judges Newman, Friedman, and Rader and Chief Judge Michel. [View]

The second video on “The Solicitors General View of the Federal Circuit Court of Appeals ” includes a panel of former solicitors general. [View]

Another C-Span video from May 19, 2006 is “The Federal Circuit Judicial Conference” and includes all the judges of the court.  [View]

Inequitable Conduct — Standards of Review

February 18th, 2010

In an unusual disposition in Sensormatic Electronics LLC v. Von Kahle, et al., 2009-1193 (Fed. Cir. Feb. 17, 2010), the Federal Circuit issued an “order” affirming the district court with a brief explanation of the issues on appeal, rather than a perfunctory Rule 36 Judgment containing no explanation.  It will be interesting to see if the court follows up with a Rule 36 Judgment.  Absent a judgment by the panel, I’m curious whether the losing party is procedurally in a position to request a panel rehearing, request rehearing en banc, or petition for certiorari.

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

Inequitable Conduct Issues

At the district court, the defendant asserted inequitable conduct by the inventors for failure to cite during original examination a reference that was later cited by an examiner during a reexamination of the patent.  The inventors stated that they did not believe the reference was material and therefore did not cite the reference to the PTO in the original prosecution of the patent.  The district court judge found the inventors’ testimony credible and therefore made a factual finding that the inventors did not have the requisite intent for inequitable conduct.  In the “order” above, the Federal Circuit “affirmed” the district court.

The Federal Circuit stated its standard of review of a district court’s unenforceability decision in Scanner Technologies v. Icos Vision Systems, 528 F.3d 1365(Fed. Cir. 2008) by stating:

The ultimate question of inequitable conduct is committed to the discretion of the district court and we review the court’s determination that the patentee engaged in inequitable conduct for abuse of discretion. Modine Mfg. Co. v. Allen Group, Inc., 917 F.2d 538, 541 (Fed. Cir. 1990), cert. denied, 500 U.S. 918 (1991). An abuse of discretion occurs when (1) the court’s decision is clearly unreasonable, arbitrary, or fanciful, (2) the court’s decision is based on an erroneous construction of the law, (3) the court’s factual findings are clearly erroneous, or (4) the record contains no evidence upon which the court rationally could have based its decision. Nilssen v. Osram Sylvania, Inc., 504 F.3d 1223, 1229 (Fed. Cir. 2007).


In order to establish inequitable conduct, the party challenging the patent is required to establish by clear and convincing evidence that the patent applicant “(1) either made an affirmative misrepresentation of material fact, failed to disclose material information, or submitted false material information, and (2) intended to deceive the U.S. Patent and Trademark Office.” Symantec Corp. v. Computer Assoc. Int’l, Inc, 522 F.3d 1279, 1296 (Fed. Cir. 2008) (quoting Cargill, Inc. v. Canbra Foods, Ltd., 476 F.3d 1359, 1363 (Fed. Cir. 2007). Both intent and materiality are questions of fact, and must be proven by clear and convincing evidence. Young v. Lumenis, Inc., 492 F.3d 1336, 1344 (Fed. Cir. 2007). We review a district court’s findings on the threshold issues of materiality and intent for clear error. Pfizer, Inc. v. Teva Pharms. USA, Inc., 518 F.3d 1353, 1366 (Fed. Cir. 2008). Under the clear error standard, the court’s findings will not be overturned in the absence of a “definite and firm conviction” that a mistake has been made. Id. “Once threshold findings of materiality and intent are established, the district court must weigh them to determine whether the equities warrant a conclusion that inequitable conduct occurred.” Flex-Rest, LLC v. Steelcase, Inc., 455 F.3d 1351, 1363 (Fed. Cir. 2006) (quoting Purdue Pharma, 438 F.3d at 1128).


One of the issues asserted by the appellant/defendant in the oral argument of Sensormatic was that one of the inventors (who was accused of inequitable conduct by the defendant) stated at trial that if he had it to do over again, he would not cite the reference in question to the examiner.  [Listen].  This assertion went unchallenged — during oral argument at least.
The statement of “If I had it to do over again, I’d do it again” may sound familiar to those familiar with the McKesson v. Bridge Medical, 487 F.3d 897 (Fed. Cir. 2007) case.  The patent attorney accused of inequitable conduct in that case stated that if he had it to do over again he would not have cited the information in question.  In McKesson, however, the district court judge found intent and the Federal Circuit affirmed.  In Sensormatic, the district court judge found no intent and the Federal Circuit has now affirmed.  Hence, this demonstrates the significance of the “clear error” standard of review for the intent prong in inequitable conduct cases and the importance of prevailing at the district court level.


Use of Summary and Abstract for Claim Construction

For those of you that are concerned that judges might put too much emphasis on statements in the Abstract and Summary of a patent, you might find this part of the Sensormatic oral argument interesting in that some of the judges appeared willing to read in a limitation of “abruptness” into the claims without first identifying some sort of textual “hook” from the claims. [Listen] and [Listen].  The inventors asserted that they understood the claims to include an abruptness limitation even though that language apparently does not appear in the claims.


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

Called out of the audience to argue a case

February 16th, 2010

When filing a brief with the Federal Circuit the parties are allowed to denote material appearing in their briefs as confidential.  Similarly, material presented in the Joint Appendix can be marked confidential.   At oral argument, the judges of the Federal Circuit will often ask the parties if these confidential markings are still applicable for two reasons: (1) so that the judges are free to ask questions about the material in open court and have it recorded; and (2) so that the judges know what can be published in any written opinion.

In one case from several years ago, counsel for an intervenor in the case was present at oral argument but was not taking part in the oral argument itself.  He was called up to address the confidentiality issue and Judge Bryson remarked that this was like the attorney nightmare where one is called out of the audience to argue a case: [Listen].

Cobbling snippets together — does not teach

February 15th, 2010

Patent prosecutors and their clients are familiar with an examiner picking and choosing unrelated pieces of text from a lengthy reference in order to reject a claim.  The Federal Circuit has noted that this is improper in the context of anticipation when the reference does not teach the elements of the claim as arranged in the claim.  The Federal Circuit has had occassion to reiterate this rule over the last couple of years in Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323 (Fed. Cir. 2008) and in NetMoneyIn v. Verisign, 545 F.3d 1359 (Fed. Cir. 2008).  Even more recently in Therasense v. Becton Dickinson and Co., 2009-1008 (Fed. Cir. Jan. 25, 2010) the Federal Circuit stated:


The way in which the elements are arranged or combined in the claim must itself be disclosed, either expressly or inherently, in an anticipatory reference. “Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983). The requirement that the prior art elements themselves be “arranged as in the claim” means that claims cannot be “treated . . . as mere catalogs of separate parts, in disregard of the part-to-part relationships set forth in the claims and that give the claims their meaning.” Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1459 (Fed. Cir. 1984). “[U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (emphasis added).


The concept of “inherent disclosure” does not alter the requirement that all elements must be disclosed in an anticipatory reference in the same way as they are arranged or combined in the claim. “[A]nticipation by inherent disclosure is appropriate only when the reference discloses prior art that must necessarily include the unstated limitation . . . .” Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364, 1373 (Fed. Cir. 2002). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Cont’l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)); see also Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1295 (Fed. Cir. 2002) (“Inherent anticipation requires that the missing descriptive material is ‘necessarily present,’ not merely probably or possibly present, in the prior art.” (quoting In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999))). For a claim to be anticipated, each claim element must be disclosed, either expressly or inherently, in a single prior art reference, and the claimed arrangement or combination of those elements must also be disclosed, either expressly or inherently, in that same prior art reference.



In the context of inducing infringement, judges of the Federal Circuit have expressed a similar principle as well.  Namely, in the oral argument of E-Pass Technologies, Inc. v. 3COM Corp. et al., 2006-1356 (Fed. Cir. Jan. 12, 2007), the plaintiff asserted that pieces of information contained in a lengthy instruction manual for a PDA were sufficient to induce direct infringement of a method claim.  Chief Judge Michel and Judge Linn expressed significant doubt about such a theory because it required cobbling together snippets of information contained at disparate parts throughout the instruction manual.  [Listen] and [Listen].  In its opinion, the panel stated:


In contrast, the evidence here shows, at best, that the Palm defendants taught their customers each step of the claimed method in isolation. Nowhere do the manual excerpts teach all of the steps of the claimed method together, much less in the required order. Accordingly, it requires too speculative a leap to conclude that any customer actually performed the claimed method. Indeed, the very same record evidence upon which E-Pass attempts to rely also shows that the accused PDAs are general-purpose computing devices that can be used for a variety of purposes and in a variety of ways. In comparison, the device at issue in Moleculon was intended to be used in only one way—to practice the infringing method—and that method was explicitly taught by the proffered instructions. Id. If, as E-Pass argues, it is “unfathomable” that no user in possession of one of the accused devices and its manual has practiced the accused method, see E-Pass Repl. Br. at 16, E-Pass should have had no difficulty in meeting its burden of proof and in introducing testimony of even one such user. Having failed to meet that burden, E-Pass has no basis to overturn the district court’s decision.

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

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

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

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

Additional Time for Oral Argument

February 14th, 2010

Typically during oral argument the appellant and appellee are each given fifteen minutes to argue their respective cases.  When there is more than one appellant or appellee, the allotted time must be shared.  The sharing of oral argument time is most often clumsy, ineffective, and discouraged by the judges. Rather, it is more persuasive when one attorney argues all the issues.  Because attorneys represent  individual clients and not entire sides of a case, however, sharing of time will undoubtedly continue so that each attorney can ensure that his or her client is fairly represented.

As a heads up to those facing this issue in the future, it is possible to move for additional time to be shared among multiple parties on one side.  For example, in E-Pass Technologies, Inc. v. 3COM Corp. et al., 2006-1356 (Fed. Cir. Jan. 12, 2007) the Federal Circuit granted the three appellees ten minutes each for a total of thirty minutes rather than the typical fifteen minutes for all appellees.  This is what Chief Judge Michel remarked at that time: [Listen].

Judicial efficiency

February 10th, 2010

I ran across this interesting statistic in Chief Justice Roberts’ annual report of the Federal Judiciary for the year 2008:

“The Judiciary, including the Supreme Court, other federal courts, the Administrative Office of the United States Courts, and the Federal Judicial Center, received a total appropriation in fiscal year 2008 of $6.2 billion. That represents a mere two-tenths of 1% of the United States’ total $3 trillion budget. Two-tenths of 1%! That is all we ask for one of the three branches of government—the one charged “to guard the Constitution and the rights of individuals.” Alexander Hamilton, Federalist No. 78.”

[Link to 2008 Annual Report]

Updating the MPEP

February 9th, 2010

Director David Kappos is looking for your suggestions on updating the MPEP  [Link].

The MPEP was a topic of discussion in the oral argument of  Boehringer Ingelheim v. Barr Labs, 2009-1032 (Fed. Cir. January 25, 2010) decided just recently.  In this sound bite, Judge Prost asks counsel about the meaning of “consonance” in MPEP section 804.01 and Judge Dyk inquires whether the meaning of consonance given by the MPEP is too narrow:  [Listen].

Dr. Oz’s Patent Application

February 7th, 2010

Readers might be familiar with Dr. Mehmet Oz, an author and expert on health matters who is often featured on “The Oprah Winfrey Show.”  It looks like Dr. Oz might also be eagerly awaiting the Supreme Court’s decision in Bilski v. Kappos, as he has his own business method patent application pending at the PTO.  The title of the application is “System and Method for Determining a Measure of Human Beauty” [Link to application].

You be the judge — Inequitable Conduct

February 5th, 2010

The Federal Circuit will soon decide the case of Medtronic Navigation, Inc. v. BrainLab.  That case concerns the issue of whether it was proper  to sanction Medtronic and its attorneys $4.4M for their opponent’s attorney fees, due to conduct during a jury trial.

Judge Matsch, who presided over the Medtronic Navigation trial, recently awarded attorneys fees to another party in another patent case in his court.  In CCC Group, Inc. v. Martin Engineering, Inc., 05-cv-00086-RPM-MJW (D. Colo. January 19, 2010), Judge Matsch awarded attorneys fees to the defendant and found the patents at issue unenforceable due to inequitable conduct.

It will be interesting to see if this decision is appealed.  I will have to study the decision further; but, one statement in the opinion seems to indicate that it was purportedly deceitful and misleading to include as Fig. 1 in a patent a drawing  that was an oversimplification of the prior art.

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

Patent Eligibility of Computer Readable Medium Claims

January 30th, 2010

The All Things Pros blog and IP Spotlight blog have noted that David Kappos  issued a memo on January 26, 2010 in regard to the patent eligibility of computer readable medium claims (aka “Beauregard” claims): [Link][PDF].