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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].

The judges of the Court of Appeals for the Federal Circuit are  a hard-working lot.  Despite being short-handed by  one – three circuit judges during the year, they have been sitting by designation in other circuits in addition to shouldering their normal workload.  So far this year, the judges have sat by designation as shown below:

Judge Lourie     Third Circuit     February 25-26

C.J. Michel*         Third Circuit      March 8-9

Judge Friedman   Ninth Circuit     April 4-8

Judge Archer     Ninth Circuit      April 15-16

Judge Rader**      Fifth Circuit      April 26-30

Judge Moore       Fifth Circuit       May 10-14

Judge Clevenger  Eighth Circuit     June 14-16

Judge Gajarsa      First Circuit       July 26-27

Judge Dyk         First Circuit        July 28-29.

*Now retired (but still working hard)

** Now Chief Judge

The Federal Circuit is using five judge panels in the rehearing of the two Rambus cases on appeal at the Federal Circuit.  The court heard oral argument this morning in Micron Technology v. Rambus (2009-1263) and Hynix Semiconductor v. Rambus (2009-1299).  Judges Newman, Lourie, Bryson, Gajarsa, and Linn constitute the panels for each appeal.

On June 9, 2010, the court ordered re-hearing of these appeals which had originally been argued back in April of 2010.

As you may know, President Obama has nominated Mr. Jimmie V. Reyna to fill the last remaining vacancy on the United States Court of Appeals for the Federal Circuit. [Press Release]  I could not find any audio of Mr. Reyna arguing at the Federal Circuit in recent years. However, I did see that he has argued at least one case there:   Asociacion Colombiana de Exportadores de Flores et al. v. U.S., 901 F.2d 1089 (Fed. Cir. 1990).

Here is video of Mr. Reyna at a press conference in 2009 discussing the nomination of Justice Sonia Sotomayor to the US Supreme Court:

The Federal Circuit is slated to have a very busy month of November.  The court will hear two patent cases en banc, conduct a portrait presentation ceremony for Chief Judge Rader, and travel to Atlanta to sit for oral arguments.  The court will also sit for oral arguments in Washington, D.C.  The schedule of cases for Atlanta is as follows:

November Calendar Announcement

Sitting in Atlanta, GA

Panel C:  Tuesday, November 2, 2010, 10:00 A.M., John Marshall Law

 Panel D:  Tuesday, November 2, 2010,  2:00 P.M., Georgia State Law*

Panel E:  Wednesday, November 3, 2010, 10:00 A.M., U.S. District Court

 Panel F:  Wednesday, November 3, 2010, 10:00 A.M., U.S. District Court

 Panel G:  Thursday, November 4, 2010, 10:00 A.M., Emory Law

 *Georgia State Law hearings are at the Supreme Court of Georgia

The Senate Judiciary Committee held a vote on Judge Kathleen O’Malley last Thursday during its business meeting.  By voice vote of the committee members, Judge O’Malley’s nomination was approved unanimously by the quorum of senators.  Her nomination will now move to the full Senate for a vote at a later date.

The Senate Judiciary Committee has not yet held a hearing on nominee Edward C. DuMont for a second vacancy on the Federal Circuit. 

A third vacancy still has no nominee from the White House.

During the committee meeting, Chairman Leahy noted that the Federal Circuit currently has three vacancies and that the committee has to “get moving” on the pending nominations.  The D.C. Circuit apparently has four vacancies.

You can watch the webcast of the committee meeting here: [Watch Committee Meeting].  Judge O’Malley’s nomination is discussed at about the 20:49 minute and 46:10 minute marks.