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Microsoft has now filed its request for a rehearing en banc in the I4I v. Microsoft appeal:  [Read].

As you may recall, an oral argument at the Federal Circuit is typically divided into fifteen minutes per side.  The appellant argues first and is entitled to reserve some of his or her fifteen minutes for rebuttal argument.  Oftentimes, the appellant runs into his or her rebuttal time during the initial argument.  This can occur, for example, when there is extensive questioning from the court or poor clock management by the appellant. 

The presiding judges of the panels at the Federal Circuit are pretty accommodating when it comes to the formalities of oral argument.  They often allow a party to run long and then restore the full rebuttal time.  They seem more inclined to do this if the reserved rebuttal time is five minutes or less.  In such instances, the appellee is given an equal extension so that both sides have an equal amount of argument time.

It’s been my impression that Judges Mayer and Newman run the tightest ships when it comes to oral argument.  While they will often give an appellant his or her full requested rebuttal time when time runs over, that is not always the case.  They are also more likely to instruct an appellant to wrap up and surrender the podium when the appellant encroaches on his or her rebuttal time during the main argument. 

One formality that is strictly enforced by the Federal Circuit is the rule that the appellant should not raise new issues on rebuttal because the appellee does not have a chance to respond to them.  The presiding judges are uniform in enforcing this rule.   Thus, an appellant needs to be careful to argue all issues that he or she wants to address in the oral argument during the main argument.  This may require letting the presiding judge know that there is an additional issue to be mentioned prior to concluding the main argument.  As an example of the trap that can befall an appellant, Judge Mayer recently instructed an appellant to wrap up at about the twelve minute mark of oral argument [Listen] and then did not allow the appellant to argue new issues during rebuttal [Listen].

Judge Moore recused herself last Thursday from the case Technical Furniture Group, LLC v. CBT Supply, Inc.  Chief Judge Michel took her place on the panel.  Chief Judge Michel explained that a computer performs the random selection of a replacement judge when a judge recuses herself — and he was the random selection in this instance.  You can listen to the explanation here: [Listen].

All patent owners are equal under the law.  After the Hewlett Packard Co. v. Acceleron LLC decision, however, some are more equal than others.  In Hewlett Packard Co. v. Acceleron LLC, the Federal Circuit took note of the fact that the patent owner was “solely a licensing entity” in assessing whether HP was entitled to bring a declaratory judgment action.  When a patent owner is a patent holding company, one is now entitled to consider that as a relevant factor in assessing whether a court has declaratory judgment jurisdiction.

One might think that the panel that decided the case frowned upon patent holding companies.  However, according to these remarks by Chief Judge Michel during the oral argument, such is not the case: [Listen]. 

Chief Judge Michel seemed frustrated by the vague language used by the US Supreme Court in its Medimmune v. Genentech, 549 US 118 (2007) decision for evaluating when it is proper for a party to bring a declaratory judgment action: [Listen].

This case now begs the question of what constitutes “solely a licensing entity.”  Is an independent inventor who doesn’t practice his or her patent solely a licensing entity?  Is it sufficient if he or she simply doesn’t practice one claim of the patent, since each patent claim in theory stands on its own?  Is a research institution a patent holding company? Is the US government a patent troll?  Is IBM, the leader in obtaining US patents, solely a licensing entity with respect to its patents that it doesn’t implement?  And, perhaps most importantly, will this special recognition of entities that are soley focused on licensing their patents, make it easier or more difficult for them to obtain injunctions for patent infringement?

It will be interesting to see in the next few months if there is a surge in filings of declaratory judgment actions based on this case and past correspondence by patent owners.

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

I stumbled across this excerpt from the July 19, 1919 edition of the magazine Electrical World the other day.

Note that ninety years later we still have a call for damages reform, more examiners, and an improved patent office. I suspect Learned Hand would at least have been pleased to see the establishment of the Federal Circuit.

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:  http://www.cafc.uscourts.gov/statistics.html.

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.

“”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.

My colleagues Cara Crowley-Weber, Ph.D. and Kathy Lobel-Rice, Ph.D. have launched a new patent blog at www.patentdivas.com.  Not only are these two biotech patent attorneys two of the nicest people you will ever meet; but, they’re really sharp, too.  I’m sure they’ll have some interesting topics for discussion — so, check it out.

I find it pretty tough to read too much out of the oral argument in i4i v. Microsoft.  It was strange that Judge Schall did not ask many questions during the oral argument — which might be an indicator of his positions on the issues.  And, I found it strange that the panel did not have many questions for i4i’s counsel about the claim construction issues raised by Microsoft’s counsel.  Instead, the panel seemed to focus more on the damages issues when questioning i4i’s counsel.

What really piqued my interest is an issue that isn’t on appeal.  Namely, I’m curious how the Federal Circuit’s recent line of cases on “full scope of enablement” would affect the validity of the 5,787,449 patent.  Figures 7 and 9 from the ‘449 patent are shown below. Counsel for i4i referred to these figures during oral argument by stating: 

The fact is that Your Honors have focused correctly on Figure 9. You can also focus on Figure 7, which also shows that the user has access at the same time to both the mapped content and the metacode map. And you can also look at the very top, oval 132, input device for creating content and selecting metacodes. The user has access to both, and it’s not only the Figure 9 statement that has the statement about updating. But, if you look at column 6, lines 14 and 15, the mapped content area and metacode map is updated as changes are made.

Fig. 7

Fig. 9

The ‘449 patent has an independent system claim and an independent method claim.  Only the method claim was asserted.  These system and method claims are shown below:

As you can see, figures 7 and 9 utilize blocks with the “means for” language contained in the blocks.  There appears to be no structure identified in the figures for at least some of the “means for” blocks.  Furthermore, the detailed description linked to these blocks appears to describe these blocks with the same “means for” language used inside the blocks (e.g., col. 14, lines 26-28 “compiles the selected metacodes using the means for selecting, locating, and addressing metacodes represented in Box 144”).  Hence, one might argue that not all of  the “means” elements in the claims are linked to any structure in the specification or drawings and thus would fail to meet the requirements of section 112, paragraph 6.  See Default Proof Credit Card Systems, Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291 (Fed. Cir. 2005) (“A structure disclosed in the specification qualifies as ‘corresponding’ structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim . . . . This duty to link or associate structure to function is the quid pro quo for the convenience of employing section 112, paragraph 6”).

In Automotive Technologies International, Inc. v. BMW of North America, Inc., 501 F.3d 1274 (Fed. Cir. 2007), the Federal Circuit applied a full scope of enablement theory.  The court noted that the mere boxed figure of an electronic sensor and a few lines of description fail to apprise one of ordinary skill how to make and use an electronic sensor. 

Thus, a means plus function limitation that was construed to include both mechanical and electrical sensors was deemed not to be enabled to the “full scope of enablement” even though the mechanical sensor was sufficiently enabled.  And, in Sitrick v. Dreamworks, 516 F.3d 993 (Fed. Cir. 2008), the Federal Circuit found that a controller represented by a blank box 260C

was not sufficiently enabled to perform the steps of “selecting” and “analyzing” a predefined character image in a movie or “integrating” or “substituting” an image in movies. 

Taken to its extreme, one wonders whether under the “full scope of enablement” theory an insufficiently enabled means plus function element would necessarily require that a corresponding step (or act) in a method claim be deemed insufficiently enabled.  Thus, for example,  if the claim element “means for compiling said metacodes of the menu by locating, detecting and addressing the metacodes in the document to constitute the map and storing the map in the metacode storage means” in claim 1 had been found to be insufficiently enabled, would it necessarily mandate that the corresponding claim element “compiling a map of the metacodes in the distinct storage means, by locating, detecting and addressing the metacodes” in claim 14 was insufficiently enabled.

The Federal Circuit has announced the cases, times, and locations for its upcoming visit to Houston, Texas.

      UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

                              CALENDAR ANNOUNCEMENT
                            Sitting in Houston, Texas
          Counsel check in 30 minutes prior to the opening of the session

     Panel K:  Tuesday, November 3, 2009, 10:00 A.M., The University of Houston Law Center

       2008-1288  DCT    MBO LABS V BECTON      [argued]
       2009-3104  MSPB   RACHAL V MSPB            [argued]
     2009-1210  BCA    BEYLEY CONSTRUCTION V ARMY  [argued]
       2009-1270  PTO    IN RE CHAPMAN              [argued]
       2009-3193  MSPB   KNIGHT V MSPB              [on the briefs]

     Panel L:  Tuesday, November 3, 2009, 10:00 A.M., The University of Houston Law Center

       2008-1418  DCT    HUMAN GENOME V IMMUNEX    [argued]
   2009-1182  DCT    HUMAN GENOME SCIENCES V GENENTECH [argued]
       2009-3155  MSPB   ARMSTRONG V TREASURY      [argued]
    2009-1313  PTO    AMERICAN RICE V DUNMORE PROPERTIES[argued]
       2009-3200  MSPB   GIBSON-MICHAELS V FDIC     [on the briefs]

     Panel M:  Wednesday, November 4, 2009, 10:00 A.M., U.S. District Court
       2009-1130  DCT    ORION IP V HYUNDAI MOTOR    [argued]
       2009-7046  CVA    RODRIGUE V DVA          [argued]
       2009-5045  CFC    GRIFFIN V US                   [argued]
       2009-3156  MSPB   DENSON V VA                 [argued]
       2009-3202  MSPB   VASQUEZ V MSPB         [on the briefs]

     Panel N:  Wednesday, November 4, 2009, 10:00 A.M., U.S. District Court

   2009-1158  DCT    AUTOMATED MERCHANDISING V CRANE CO[argued]
       2009-5052  CFC    CLOER V HHS                       [argued]
       2009-1258  DCT    VANDERBILT UNIV V ICOS CORP  [argued]
       2009-1262  ITC    SIRF TECHNOLOGY V ITC             [argued]
       2009-3212  MSPB   VILLARUEL V OPM        [on the briefs]

The visit looks to include a great variety of patent cases including an ITC case, a couple of PTO cases, and several appeals from district courts.  And, there is a symposium scheduled for the afternoon of Wednesday, November 4th.

I was trying to figure out why we have not yet seen the respondent’s brief in Bilski v. Kappos.  I believe it normally would have been due on August 30th.  But, in checking the Supreme Court’s docket sheet [Docket Sheet], I realized that an extension was granted.  The brief is slated for submission by September 25th (i.e., Friday).

One might think that given the special focus of the Court of Appeals for the Federal Circuit that the judges would be intimately familiar with the nuances of patent procedure.  That is not necessarily true —  and probably not a fair expectation.  In the In re Skvorecz case, the panel requested further information on how its ultimate decision about the patentability of amended claims in a reissue application would affect the prior version of the claims in the originally issued patent if the panel affirmed the rejection of the proposed claim amendments.  [ Listen]

You can listen to the entire oral argument [Here].

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

Patent attorneys often express frustration over various holdings of the Federal Circuit.  This has certainly been true of decisions of the court in the area of damages and reasonable royalties.  It was interesting to hear Chief Judge Michel’s own frustration with some of the court’s holdings in the recent oral argument of Lucent Technologies v. Gateway.  You can listen to Chief Judge Michel’s comments [Here] and [Here]. 

There was a lighter moment in the oral argument when Chief Judge Michel asked counsel for Lucent  if the court should grant judgment in favor of Lucent if the panel deemed that Lucent’s expert had provided sufficient testimony on damages  — counsel for Lucent agreed that would be proper.  However, when Chief Judge Michel asked counsel for Lucent  if the court should grant judgment in favor of Microsoft if the panel deemed that Lucent’s expert had not provided sufficient testimony on damages, counsel for Lucent offered that perhaps a remand to the district court might be another choice.   [Listen]

The panel extended the oral argument to 70 minutes for this case — more than double the normal 30 minutes — and was quite complimentary of the argument conducted by Constantine Trela on behalf of Microsoft and John Desmarais on behalf of Lucent [Listen].

You can download or listen to the oral argument [Here].

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

I noticed that C-Span already has coverage of Wednesday’s  Citizens United v. FEC oral argument before the US Supreme Court.  Citizens United v. FEC is an important case concerning campaign contributions.

C-Span’s US Supreme Court site

Citizens United v. FEC oral argument                                            

Hopefully this means that C-Span will air same day coverage of the Bilski v. Kappos oral argument on November 9th, as well.  Typically, C-Span petitions the Supreme Court to release audio of the oral arguments on the same day that the proceedings take place.  [Press Release]