Graham v. John Deere — Part 1

November 20th, 2009

Since the Supreme Court has apparently decided not to release the recording of the oral argument of Bilski v. Kappos until the end of the term, I thought it might be of interest to revisit another important case from the Supreme Court’s history.  In Graham v. John Deere, the Supreme Court addressed the issue of non-obviousness under 35 U.S.C. section 103.  On the same day that the Supreme Court heard oral argument in Graham v. John Deere, it also heard the oral argument for two companion cases, Calmar v. Cook and Colgate-Palmolive v. Cook.

The Calmar v. Cook and Colgate-Palmolive v. Cook cases concerned a patent on a cap for a chemical sprayer that prevented leakage of chemicals from the container during shipment.  The attorney for the patentee argued that the patent was non-obvious and asserted 18 guideposts to help determine whether an invention was obvious:

 1) A long-felt need for the invention;

2)  An identified baffling problem;

3)  Skilled and experienced competitors trying to solve the problem, rather than nobody trying to solve the problem;

4)  Begging for an answer — pleas by customers to inventive company to solve the problem;

5)  Struggles that the parties had in attempting to come up with an answer;

6)  Failures of others in trying to solve the problem;

7) Was the problem truly solved by the inventor of the patent;

8 ) Consider the results of the solution (old result vs. new result) (application to new products)

9) Manner of arriving at the solution;

10)  The Patent Office did issue a patent;

11) A new combination of old elements;

12)  All the pertinent art was considered;

13) Utility of the invention — simple solution;

14)  Acceptance of the invention by competitors and the public;

15)  Recognition;

16)  Copying by others;

17) Competitor sought the same protection at the Patent Office;

18) Successes by patentee and infringer with the invention.

The following exchange between counsel for the patentee and Justice Black is one of the more interesting discussions from the oral argument where both parties agree that obviousness is a standard that escapes definition: [Listen].

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

Federal Circuit Reversal Rates for Patent Litigation

November 19th, 2009

The Federal Circuit closed out its fiscal year at the end of September 2009. It has updated the statistics page on its web site that include a variety of interesting statistics. For example, this graph shows the issued opinions broken down by precedential, non-precedential, and Rule 36 opinions:


And, this graph shows the affirmance and reversal rates by the Federal Circuit in FY 2009 for appeals from district court patent cases:


You can review all the statistics here:

November 12th, 2009

The Federal Circuit has recently been issuing Rule 36 opinions with prodigious fecundity.¹  However, there is still plenty of intriguing commentary in the oral arguments underlying these terse judgments.

One interesting exchange occurred recently between Judge Moore and the associate solicitor for the PTO in the In re Rackman appeal.  Judge Moore was exploring when it is acceptable for the PTO to assert that it is obvious to modify a device in a prior art reference by adding software to it if the rationale that the PTO gives is simply to increase the functionality of the device.  [Listen]  Judge Moore seemed concerned about the effect that this could have on the patentability of future software inventions.

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

You can read the court’s opinion, such as it is, here: [Read].

¹ I’m not really well-read enough to use phrases like “prodigious fecundity;” but, I read the following Learned Hand quote today and couldn’t resist:  “[A]s the law stands, the inventor must accept the position of a mythically omniscient worker in his chosen field. As the arts proliferate with prodigious fecundity, his lot is an increasingly hard one.” Merit Mfg. Co. v. Hero Mfg. Co., 185 F.2d 350, 352 (2d Cir. 1950).  Which begs the question, “How would Learned Hand have decided Bilski v. Kappos?”

Oral Argument in Bilski v. Kappos

November 10th, 2009

The oral argument in Bilski v. Kappos took place yesterday at the U.S. Supreme Court.  The Court has released the transcript of the oral argument but has not released the audio recording of the argument.  You can read the transcript here [Read]. 

According to the Court’s policy explained on its web site, the audio of the oral argument will not be available until after the end of the present Supreme Court term.

The Court also makes its own set of oral argument recordings. This set of recordings is kept in the Marshal’s Office for the remainder of the Term, during which time it is not available to the general public. At the beginning of the next Term, the recordings are transmitted from the Marshal to the Motion Picture, Sound, and Video Branch of the National Archives. The Archives’ collection contains audio recordings of Supreme Court oral arguments from 1955 through the immediately preceding October Term. Members of the public can listen to or make their own copies of oral argument recordings using their own tape recorders, blank tapes, and patch cords at the Motion Picture, Sound, and Video Branch. Copies of recordings can also be purchased from the Archives.


Akeva v. Adidas

November 8th, 2009

Akeva LLC v. Adidas-Salomon AG is a case that was decided in 2006. The oral argument took place at the University of Virginia and was very entertaining and interesting. The case turned on the claim construction of the term “secured” and whether “secured” was entitled to its broadest meaning which would include permanently secured as well as detachably secured. For example, some of the claims at issue read:

A shoe comprising:
an upper having a heel region;
a rear sole secured below the heel region of the upper; and
a flexible plate having upper and lower surfaces and positioned between at least a portion of the heel region of the upper. . . .
‘300 patent, col. 20 ll.29-43 (emphasis added).

The ‘471 patent also uses the term “secured.” For example, claim 1 states:
A shoe comprising:
an upper, and
a rear sole secured below a portion of the upper, the rear sole comprising:
a member having a top wall with a lower surface . . . the member having a bottom wall . . . the forward regions of the top and bottom walls being connected at a close end by a curved wall . . . .
‘471 patent, col. 13 ll.6-50 (emphasis added).

One of the things that I thought was interesting about this oral argument was that when Judge Rader brought up the language “the present invention” the counsel for the plaintiff-appellant cited to the Karlin Technology, Inc. v. Surgical Dynamics, Inc., 177 F.3d 968 (Fed. Cir. 1999) opinion.  [Listen] In Karlin Technology, Judge Rich wrote the following:

C. The Written Description

We conclude that the ‘247 patent’s written description does not specifically define “series of threads.” SDI argues the contrary, based on language discussing the “present invention” as having highly specialized threads. Karlin argues that this language describes the inventor’s preferred embodiment, and that “series of threads” should not be construed as limited to the preferred embodiment. An example of the disputed language in the written description follows:


. . . .

FIG. 4 is a perspective view of a cylindrical implant and vertebra structure.

FIG. 4A is a perspective view of one preferred embodiment of the implant.

FIG. 4B is a cross sectional view of the implant of FIG. 4A.

. . . .


. . . .

Referring to FIG. 4, a cylindrical embodiment of the present invention is shown. . . .

. . . A series of external threads 53 are formed on the circumference of the cylindrical implant 50. The threads 53 are locking threads having a series of interjections, the ends of which are blunted and twisted so as to resist unscrewing.

‘247 patent, col. 7, l. 36 – col. 8, l. 51. Figures 4, 4A, and 4B are shown below:

Although Figure 4 is expressly stated to show the “present invention,” and Figures 4A and 4B refer to “one preferred embodiment,” the same spinal implant is shown in each of the figures. The remainder of the written description has similarly mixed references to “present invention” and “preferred embodiment.” We therefore conclude that the written description uses the terms “present invention” and “preferred embodiment” interchangeably. Given this, it is clear that only the preferred embodiment is described as having highly specialized threads. The general rule, of course, is that the claims of a patent are not limited to the preferred embodiment, unless by their own language. See, e.g., Virginia Panel Corp. v. Mac Panel Co., 133 F.3d 860, 866, 45 USPQ2d 1225, 1229 (Fed. Cir. 1997) (“[I]t is well settled that device claims are not limited to devices which operate precisely as the embodiments described in detail in the patent.”). There is nothing in this case that warrants departing from the general rule. Thus, the written description does not narrow the ordinary meaning of “series of threads.”

It is interesting to hear mention of the Karlin Technology case. I did a quick Shepard’s of Karlin Technology and noted that since the opinion was written, it has not been relied upon by the Federal Circuit for this proposition.  Meanwhile, cases like Honeywell International, Inc. v. ITT Industries, Inc., 452 F.3d 1312 (Fed. Cir. 2006) have met with increasing approval.

You can listen to the oral argument in Akeva v. Adidas here: [Listen].
You can read the opinion in Akeva v. Adidas here: [Read].
You can read the opinion in Karlin Technology here: [Read].

Medtronic Navigation, Inc. v. BrainLAB Oral Argument

November 5th, 2009

The Federal Circuit heard oral argument in  Medtronic Navigation, Inc. v. BrainLAB Medizinische Computersystems GMBH yesterday.   You will recall that last year Judge Matsch, a U.S. district court judge for the District of Colorado, sanctioned Medtronic and its law firm $4.4M for BrainLAB’s attorneys’ fees and costs stemming from conduct during a patent jury trial.

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

You might also recall Judge Matsch’s name as he presided over the trial and sentencing of Oklahoma City bomber Timothy McVeigh.

Lies, Damned Lies, and Statistics

November 4th, 2009

“”There are three kinds of lies: lies, damned lies, and statistics.” 

                                                           –Samuel Clemens

In a recent post, I listed the Top Ten Federal Circuit Oral Advocates of 2006 [Link].  As an afterthought to compiling that list, I checked to see which of the oral advocates were also registered patent attorneys.  Interestingly, five on the list were registered patent attorneys and five were not.  I was curious how those numbers compared to the entire pool of oral advocates arguing patent cases at the Federal Circuit in 2006.

What I found was that the numbers tracked closely.  There were 106 registered attorneys and 103 unregistered attorneys that argued patent cases before the Federal Circuit in 2006:

Appellant                     Appellee

59*/41                         47*/62

*Registered Patent Attorney

The reason that there are more attorneys in the appellant category is that in some cases there were multiple defendants and that led to multiple defendant attorneys arguing at oral argument — after listening to many oral arguments, I can tell you that that approach rarely comes across well.  Also, for purposes of this comparison, I categorized a cross-appellant in the appellee category.

I’ll leave it to others to argue why the appellant and appellee ratios are lopsided.  Do the unregistered attorneys constitute the majority in the appellee category and the minority in the appellant category because unregistered attorneys are more talented litigators and therefore more successful at the trial level?  Or, do the numbers suggest that general practice firms are more successful at trial than IP focused firms?  Or, do they suggest that non-practicing entities are more often represented by unregistered attorneys?  Lies, damned lies, and statistics.

Wireless Agents LLC v. Sony Ericsson Mobile Communications AB

November 1st, 2009

Wireless Agents LLC v. Sony Ericsson Mobile Communications AB was decided in a non-precedential opinion back in 2006.  Despite the date and non-precedential effect, I find it to be a very interesting opinion and oral argument.  From a patent drafting perspective, it touches on a whole host of different issues: (1) narrow summary; (2) “present invention” language; (3) criticizing the prior art in the specification; (4) boilerplate; (5) non-essential claim language; (6) plain meaning of claim terms; (7) clear disavowal;  and more.

The case concerned an appeal of a district court’s refusal to grant a preliminary injunction.  The claim language at issue was the term “alphanumeric keyboard.”  The Federal Circuit determined that the term “alphanumeric keyboard” did not include a twelve key keypad that allowed keying of all the letters of the alphabet and the numbers 0-9. 

The claim at issue read as follows: 

A hand-held, electronic computing device having a physical configuration comprising:

a body portion;

a display portion pivotally coupled to the body portion;

a constantly visible display carried by the display portion;

an alphanumeric keyboard carried by the body portion;

wherein the alphanumeric keyboard is at least partially concealed by the display portion when not in use; and

wherein the display portion pivots relative to the body portion in a plane that is generally parallel with the alphanumeric keyboard.

Perhaps the strongest factor in favor of limiting the meaning of “alphanumeric keyboard” was the number of times that the inventor criticized or distinguished keypads in the prior art. The panel seemed to focus on this during oral argument — note also Judge Rader’s stress on the phrase the “present invention” during questioning: [Listen], [Listen], and [Listen].

Interestingly, the attorney for the patent owner argued that the “alphanumeric keyboard” language wasn’t related to the object of the invention: [Listen].

For those who remember the Federal Circuit’s odd claim construction decision in E-Pass v. 3COM, it was interesting to hear Judge Rader’s comments about that case and his dismissal of it as a pre-Phillips dictionary case:  [Listen].

You can read the court’s opinion in Wireless Agents [Here].

You can listen/download the oral argument [Here].

Reply Brief in Bilski v. Kappos

October 27th, 2009

The reply brief in Bilski v. Kappos has now been filed.  You can read it [Here].

Updated with Petitioners’ Brief and Respondent’s Brief:

[Brief for Petitioners Bernard L. Bilski and Rand A. Warsaw ]

[Brief for Respondent David J. Kappos, Under Secretary of Commerce for Intellectual Property and Director, United States Trademark Office]

Diamond v. Diehr

October 26th, 2009

Most people reading this will probably recall that Diamond v. Diehr was the last time that the United States Supreme Court issued a substantive opinion on 35 USC section 101.  The case involved method claims and the use of a computer to control a rubber curing process. 

I had always assumed that the counsel for the inventor in Diamond v. Diehr was a champion of broad subject matter protection and had argued valiantly for a broad scope of protectable subject matter under section 101, including protection for computer software. Therefore, I was surprised when I listened to the oral argument in Diamond v. Diehr that such was not the case:  [Listen] and [Listen].

It’s no surprise that the Solicitor General also argued against the patentability of software during the oral argument.  Previously, the government had argued for a narrow scope of protection under section 101 in Diamond v. Chakrabarty, Parker v. Flook, and Gottschalk v. Benson.  The Solicitor General’s argument in Diamond v. Diehr was no different — although it took some prodding from Justice White for him to address the issue directly: [Listen].

While the Solicitor General in Diamond v. Diehr admitted that computer programs could be novel and non-obvious, the Solicitor General quoted the President’s Commission on the Patent System from the 1970’s in arguing that computer programs should not be patentable — whether claimed purely as a software program or as a process or as a  programmed machine — because searching would be too difficult due to the sheer volume of prior art.    [Listen]

It is interesting to note the position of the Solicitor General’s office now in Bilski v. Kappos.  In the goverment’s brief, the Solicitor General’s office now states:

 This Court has long recognized that the distinguishing feature of a technological process is that it concerns a particular machine or apparatus or effects a transformation of matter to a different state or thing. See, e.g., Diehr, 450 U.S. at 184; Cochrane v. Deener, 94 U.S. 780 (1877). That understanding of the term “process” in Section 101 continues to provide an appropriate framework for distinguishing methods that involve technology—including claims concerning software and other modern technologies—from those that do not. 

See page 9 of Respondent’s Brief in Bilski v. Kappos.


In any event, the machine-or-transformation test contemplates that many forms of “software” inventions are patent-eligible. As with many types of technology, the patent-eligibility of software cannot be resolved as a categorical matter. Rather, the eligibility of a claimed software invention depends on the content of that  invention and the form in which it is sought to be patented. 

As the Board noted below, the machine-or-transformation definition may readily encompass most software claims because such claims could be said to concern the use of a machine ( i.e. , the computer itself ) or involve a transformation of matter ( i.e., the writing and re-writing of data, represented by magnetic changes in the substrate of a hard disk or the altered energy state of transistors in a memory chip). Pet. App. 177a-178a. This conception of the machine-or-transformation test is reflected in non-binding interim examination instructions issued by the PTO in August 2009. See United States PTO, Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101  (Aug. 24, 2009) ( Interim Instructions).17  The Interim Instructions state that “computer implemented processes” are often disclosed as connected to a machine, i.e., a general purpose computer. Id. at 6. Such a computer, “when programmed to perform the process steps” so that it performs the specific function  contemplated by the process, “may be sufficiently ‘particular’ ” for purposes of the machine-or-transformation test. Ibid.; cf. In re Alappat, 33 F.3d 1526, 1545 (Fed. Cir. 1994) (en banc)(“[A] general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.”). In addition, “transformation of electronic data has been found when the nature of the data has been changed such that it has a different function or is suitable for a different use.”


 See Respondent’s Brief at pages 38-39 in Bilski v. Kappos. 

 You can listen to the entire oral argument in Diamond v. Diehr here:   [Listen].
 You can read the Supreme Court’s opinion in Diamond v. Diehr here:  [Read].