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The Senate Judiciary Committee Hearing for Federal Circuit nominee Kathleen O’Malley took place this afternoon. The link to the recording of the proceeding is available here: [Link to Webcast]. Judge O’Malley is introduced by Senator Brown at about 23:10 into the recording. The questioning begins at about 35:19 into the recording.

A large contingent of friends and family of Judge O’Malley attended the hearing, including seven of her former law clerks.

Judge O’Malley fielded questions from several members of the committee. In particular, Senator Sessions noted that as a US district court judge, Judge O’Malley had been reversed twice in regard to some death penalty cases. He inquired whether she would be willing to apply the death penalty if confirmed to the Court of Appeals for the Federal Circuit . . . .

Unless Congress significantly revises the penalty for false patent marking, I’m skeptical that Judge O’Malley or any judge sitting on the Federal Circuit will see any death penalty cases in the near future. To give Senator Sessions the benefit of the doubt, I suppose one might encounter such a case while sitting by designation as either a district court judge (as Judge Rader has done recently) or on a panel for another circuit (as Judge Lourie has done recently).

After Senator Sessions completed his questioning, Senator Al Franken of Minnesota questioned Judge O’Malley. His questioning focused on the issue of network neutrality.

The Senate Judiciary Committee will hold its hearing for Federal Circuit nominee Kathleen O’Malley tomorrow.  The hearing is scheduled for 2:30 Eastern time: [Link to Webcast].

Since the Bilski decision, I’ve been seeking guidance on what is the definitive test for an “abstract idea.”  I stumbled upon an unlikely source the other day as I was walking past the rental booth at the exit of the grocery store.  Yes, the movie “IP Man” was released on video last week.  I don’t know too much about the movie “IP Man”; but, I’m hopeful it will hold the key.  It might even shed some light on a proper test for “common sense.” 

As far as the man in the movie poster is concerned, I suspect that picture was taken shortly after defeating the “second set of eyes.”

The Ninth Circuit yesterday decided the appeal in the Mattel v. MGA Entertainment case concerning a dispute over the Bratz line of dolls. While not a Federal Circuit case, I thought the oral argument might be of interest and a point of comparison to Federal Circuit oral arguments.

The oral argument is available here: [Listen].
The 9th Circuit opinion is available here (Panel: Kozinski, Trott, Wardlaw) [Read].

On July 8th, 2010, the Federal Circuit sat en banc to consider the Hyatt v. Kappos case.  On that same day, the court also sat en banc in a case appealed from the U.S. Court of Federal Claims captioned Slattery v. U.S.  It was interesting to note that during the Slattery v. U.S. oral argument, Judge Dyk made reference to a portion of the Bilski decision.  [Listen].

The other interesting fact about the oral arguments of Hyatt v. Kappos and Slattery v. U.S.  is that while Chief Judge Rader presided over both oral arguments he did not ask a single question in either oral argument.  He frequently asks questions in other cases.  So, one might assume that his reticence had to do with his view of his new role as Chief Judge.

You can listen to the entire Slattery v. U.S. en banc oral argument here: [Listen].

Presumably at some date in the near future US District Court Judge Kathleen O’Malley and attorney Edward DuMont will be confirmed by the Senate for seats on the US Court of Appeals for the Federal Circuit. I noticed over the weekend while looking at the Seventh Circuit’s web site that the Seventh Circuit puts on quite an investiture ceremony when swearing in a new appellate judge. This might be something for the relevant bar organizations to consider in preparation for the new court members. You can see the Seventh Circuit investiture ceremony presided over by Chief Judge Easterbrook here:  [View]. (Be patient — it takes some time to load.)

The Federal Circuit revamped its web site today with a new look and new functionality.  One of the nice new features is that the most recent oral arguments are listed on a page. 

The opinions page is a bit more cluttered now with decisions on recent motions.  Time will tell whether that additional information is more annoying to filter  through than informative.

Kudos to the Federal Circuit for making as much information as possible easily available to the public.

The Federal Circuit sat en banc last week in the case of Hyatt v. Kappos.  A decision has not yet been issued; but, you can listen to the oral argument here: [Listen].

In the oral argument of Telcordia Tech., Inc. v. Cisco Systems, Inc., 2009-1175 (Fed. Cir. 2010), Judge Rader expressed his concern in regard to the district court judge deciding claim construction based on ad lib comments by a Federal Circuit judge during a previous oral argument.  You can listen to Judge Rader’s comments here: [Listen].

The following section from the opinion explains the ad lib comment further and how it was utilized by the district court:

The empty payload fields are “empty” of data packets and therefore have non-source bit signals only. The specification explains that “a train of DTDM frames with empty payload fields . . . has a bit rate which defines a basic backbone transmission rate for the DTDM system.” ’306 patent col.7 ll.27-30. Therefore, the bit signals help the DTDM system maintain a bit stream even when it is not transmitting data from an information source. The specification does not specify where in the frame the “bit rate” is stored nor does it specify the type of non-source bits used to maintain the bit rate. Therefore, nothing in the ’306 patent restricts the bit signals in the empty payload field to ones that serve no purpose other than place-holding.

 

The district court apparently took the explanatory phrase from an ad lib comment made during an oral hearing at the Federal Circuit. In Bell Communications Research, Inc. v. FORE Systems, Inc., Nos. 02-1083, 02-1084, 2003 WL 1720080 (Fed. Cir. Mar. 27, 2003), Bell Communications Research, Inc., now known as Telcordia, asserted the ’306 patent against another defendant. This court reviewed a district court’s construction of the term “empty payload field” in the ’306 patent. Id. In that case, the district court had explained that “a frame’s payload has zero data in it.” Id. at *6. During oral hearing, Bell Communications agreed with Circuit Judge Bryson’s characterization of bits in the “empty payload fields” as “garbage:”

 

Judge Clevenger: Can we come back to the empty payload field? “Empty” seems to me . . . the com-mon meaning of the word “empty” means there is nothing there. So, you are saying that there is something in the written description that tells me what empty means?

 

Bell Communications’s Counsel: I am saying . . . .

 

Judge Clevenger: Where in the written descrip-tion?

 

Bell Communications’ Counsel: A144, column 7, lines 29-35. And, what you will see there at that point . . . .

 

Judge Clevenger: There is a bit rate.

 

Bell Communications’s Counsel: It says, “this train.” It is talking about empty payload field. “This train 10 has a bit rate.” In other words, it’s empty, but it has a bit rate. Because in order to have . . . sometimes there won’t be a packet ready. The stream must continue. There must be a bit in the stream. It just won’t be a data bit, it won’t be a source data bit. It will be a bit. And it will have information in it, but it won’t be source informa-tion.

 

Judge Bryson: It would just be garbage, I take it. I mean it will just be 1’s and 0’s that have no rela-tionship to the stream of any information that’s coming in from the source.

 

Bell Communications’s Counsel: Exactly, Your Honor.

 

The issue on appeal, at least initially, seemed to be whether the district court actually meant “no bit signals of any kind” when it said “zero data.” Id. At oral hearing, however, Fore Systems, Inc. stated its understanding that “‘zero data’ encompasse[d] various bit signals that might maintain the stated transmission rate of a bit stream, including ‘placeholders’ or ‘garbage bits.’” Bell Commc’ns, 2003 WL 1720080, at *6. Because the parties’ agreement on this broader interpretation of “zero data” rendered the claim construction issue moot, this court declined to refine the district court’s construction. Id.

 

The claim construction issue on appeal in the present case—whether the empty payload field only has bits that act as placeholders—is different from the one in Bell Communications—whether the empty payload field has any bits at all. Circuit Judge Bryson’s comments, there-fore, are not directly relevant to the specific issue in the present case. The district court erred by limiting the claim scope based on the ad lib comment from the bench.

 

The Federal Circuit is not shy in using in its opinions admissions by counsel that were made during oral argument.  The court has done so perhaps with increasing frequency since recordings of the oral arguments were first made available on the CAFC website.

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

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

It appears that on June 8, 2010 Microsoft applied for an extension of time within which to file its Writ of Certiorari in the i4i v. Microsoft, 589 F.3d 1246 (Fed. Cir. 2009) case.  That case has the largest affirmed verdict of patent damages in U.S. history — $290 million including interest and post-verdict damages.

You can read the extension request here: [Read].

If you are interested in KSR issues, you will probably find the oral argument from In re Kite and Hatton, 2009-1579 (Fed. Cir. June 21, 2010)  interesting.  The appeal from the BPAI dealt with a patent claim directed at a method of killing bacteria on catheters.  The applicants had discovered a way of killing all of the bacteria on the catheter as opposed to the prior art that just killed most of the bacteria.  Since bacteria reproduces rapidly, this was a significant development.  The panel was confronted with the issue of whether this was just a new use of a known product (killing all of the bacteria as opposed to some).  My pro-applicant bias might be showing here; but, if it were obvious to kill all bacteria on a catheter using this method why wouldn’t others have adopted it long ago?  Perhaps it was because some of the prior art relied on was directed at the water treatment and oil field water flooding fields rather than the catheter field . . . .

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

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

As a follow up to the previous post, the issue of whether a continuation application filed on the same day that the parent application issues as a patent has been dealt with before by at least one district court case.  In Moaec, Inc. v. MusicIP Corp. et al., 568 F. Supp. 2d 978 (W.D. Wis. 2008), Judge Barbara Crabb (a judge highly respected at the Federal Circuit) decided that the PTO’s practice of allowing same day filings was correct in view of historical practice.  She wrote:

Permitting the filing of a continuation application simultaneously with the patenting of the parent application gains further support from the history of the practice of filing continuation applications that led to § 120. The “continuing application practice was a creature of patent office practice and case law, and section 120 merely codified the procedural rights of an applicant with respect to this practice.” Transco Products Inc. v. Performance Contracting, Inc., 38 F.3d 551, 556 (Fed.Cir.1994). “The legislative history of section 120 does not indicate any congressional intent to alter the Supreme Court’s interpretation of continuing application practice.” Id., 38 F.3d at 557 (citing Godfrey v. Eames, 68 U.S. 317, 1 Wall. 317, 17 L.Ed. 684 (1864)). In Godfrey, the Supreme Court addressed the continuing application practice and held that when a patent application was withdrawn and a new application regarding the same invention was filed the same day, the applications together constituted “one continuous application.” Godfrey, 68 U.S. at 325-26. Such reasoning supports the conclusion that the § 120 copendency requirement’s underlying purpose of permitting “one continuous application” is not frustrated by permitting a later-filed application to be filed on the same date that a patent issues on its parent application.

Because the PTO’s interpretation of the § 120 copendency requirement is consistent with the statute and patent applicants are entitled to rely on it, the interpretation is due judicial deference. In accordance with the PTO’s Manual of Patent Examining Procedure § 201.11, plaintiff’s May 15, 2001 patent application, which resulted in the ‘886 patent, satisfies the § 120 copendency requirement because it was filed on the same date, May 15, 2001, as the patenting of its parent application. Therefore, I find that defendant has failed to establish its contention that plaintiff cannot obtain the benefit of the earlier filing date of the application that resulted in the ‘283 patent for failure to satisfy the copendency requirement under § 120.

The Moaec case was settled last summer while on appeal to the Federal Circuit.

You can read Judge Crabb’s entire decision here: [Moaec v. MusicIP].

“We therefore leave for another day whether filing a continuation on the day the parent issues results in applications that are co-pending as required by the statute.”

Those were the ominous words at the end of Judge Moore’s recent opinion in Encyclopedia Britannica, Inc. v. Alpine Electronics of America, Inc. et al., 2009-1544 (Fed. Cir. June 18, 2010).  The defendants in the case argued that a continuation application filed on the same day that the parent application issues is not co-pending with the parent; therefore, the requirements of 35 USC §120 are not met so as to entitle the continuation application to the filing date of the parent application/patent.  The argument asserted the holding of a Supreme Court case (the United States v. Locke, 471 U.S. 84 (1985) case) where the Court addressed the meaning of the word “before” when used in conjunction with a date in an unrelated statute.  Since §120 requires the filing of a continuation application “before” the patenting of the parent application, a same day filing would not be before the patenting of the parent application (according to the defendants). [Listen].

The plaintiff-appellant asserted the practice of the Patent Office in recognizing continuation filings on the same day that the parent issues. [Listen].

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

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

Update:  You can read the Supreme Court’s opinion in United States v. Locke, 471 U.S. 84 (1985) here: [Read].

I got curious and was able to locate another source of recorded Senate Judiciary Committee hearings. Here is the Senate Judiciary Committee hearing for Judge Moore of the Federal Circuit from back in 2006 (you might need to have RealPlayer installed to play this): Play Video.

Judge Moore is introduced at about the 7:21 minute mark into the video.

The Senate Judiciary Committee hearings have not yet been set for Federal Circuit nominees Judge Kathleen O’Malley and Edward DuMont.  However, looking through the C-Span video archives, I did run across the confirmation hearing for Judge Prost from back in 2001.  In the video, Judge Prost is introduced at about 10:23 minutes into the video with many complimentary remarks by the senators.  The question and answer session begins at about 22:30 into the video.