Archive for the ‘Oral Argument of the Month’ Category

Oral Argument of the Month: St. Regis Mohawk Tribe v. Mylan Pharmaceuticals

Monday, June 11th, 2018

The Federal Circuit heard oral argument in St. Regis Mohawk Tribe v. Mylan Pharmaceuticals last week.  The oral argument focuses on whether tribal sovereign immunity applies to IPR proceedings.  The panel consists of Judges Dyk, Moore, and Reyna. You can listen to the oral argument here:

I will add some sound bites in the future, if time permits.

Oral Argument of the Month: IPLEARN-FOCUS, LLC v. Microsoft Corp.

Wednesday, September 7th, 2016

The oral argument of the month is from IPLEARN-FOCUS, LLC v. Microsoft Corp., No. 2015-1863 (Fed. Cir. July 11, 2016).  The issue in dispute was step two of the Alice/Mayo test.  The Appellant argued that the claims, while broad, nevertheless did not recite a conventional system when considered as an ordered combination.

The oral argument recording has a lot of interesting sound bites.  For example, Judge Linn made the astute point that under the current state of affairs, a claimed system that is entirely patent eligible under 35 U.S.C. §101 suddenly becomes patent ineligible when the claim is narrowed to perform an arguably abstract function. [Listen].

The fact that a broad claim can become patent ineligible by making the claim narrower illustrates just how nonsensical the Supreme Court’s jurisprudence has become with respect to 35 U.S.C. §101 and how the Court has strayed from its original concerns about preemption.  The test for judicial exceptions is now the tail that wags the dog of patent eligibility.

Judge O’Malley also proposed an example of a drone for delivering packages and asked why the function of package delivery should make a normally patent eligible drone suddenly patent ineligible.  At the 35 minute, 6 second mark, she also talks briefly about her change in position in the Ultramercial case.

At the 20 minute, 17 second mark, Judge Moore proposed a new claim based on the Appellant’s specification, in which facial feature recognition techniques could be used to detect when a user’s attention has drifted away from a computer screen. In jest, she suggested that her system could be used to monitor the PTAB’s hoteling judges.  [Listen].  I suppose their retort, equally in jest, might be:  “Thank you for the helpful suggestion on how we can improve our production.  Some day we hope to have a small brigade of judicial clerks of our own and a heavy club like your Rule 36  to help us attack our workload.

The panel decided the case by a Rule 36 Judgment, available [here].

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


Sunday, September 4th, 2016

Concurrent use proceedings under trademark law are fact-intensive proceedings.  They are also relatively rare.  In SOUTHWESTERN MANAGEMENT, INC. v. OCINOMLED, LTD., No. 2015-1939 (Fed. Cir. June 15, 2016), the Federal Circuit heard oral argument with respect to a concurrent use proceeding over the mark –DELMONICO’S– for restaurant services.

You can listen to the oral argument [here].

The Rule 36 Judgment is available [here].

You can read the precedential TTAB decision [here].

Oral Argument of the Month: Timebase v. Thomson

Sunday, July 8th, 2012

The case of Timebase v. Thomson, App. No. 2012-1082 (Fed. Cir. June 8, 2012) was recently decided by the Federal Circuit via a Rule 36 affirmance.  The oral argument highlighted a couple of interesting issues.  First, how should the word “each” be construed.  Second, does a construction of the word “displaying” that requires the displaying to be performed by a consumer’s computer raise divided infringement issues when an on-line publisher is the party being sued for infringement.  You can listen to the entire oral argument here: [Listen].

Claim 1 of the ‘592 patent at issue reads:

1. A computer-implemented system for publishing an electronic publication using text-based data, comprising:

a plurality of predefined portions of text-based data with each predefined portion being stored;

at least one predefined portion being modified and stored;

a plurality of linking means of a markup language, each predefined portion of said text-based data and said at least one modified predefined portion of text-based data being encoded with at least one linking means; and

a plurality of attributes, each attribute being a point on an axis of a multidimensional space for organising said plurality of predefined portions and said at least one modified predefined portion of said text-based data.

Claim 1 of the 7293228 patent at issue reads:

1. A method for electronically publishing text-based data, the method comprising:

dividing the text-based data into a plurality of portions of text-based data;

obtaining an amended portion of text-based data that is amended relative to one of the plurality of portions of text-based data;

storing each of the plurality of portions of text-based data;

storing the amended portion of text-based data;

providing a plurality of attributes, wherein the attributes define a manner in which the plurality of portions of text-based data and the amended portion of text-based data can be organized, displayed and linked in a multidimensional space;

encoding each of the plurality of portions of text-based data and the amended portion of text-based data with a markup language to include at least one link defined by one of the plurality of attributes;

allowing a user to search the text-based data using at least one of the plurality of attributes; and

displaying the text-based data to the user by:

displaying at least one of the plurality of portions of text-based data or the amended portion of text-based data in response to the search; and

displaying text, and/or one or more selectable links representing at least one additional attribute.

With respect to the word “each,” Judge Newman remarked on her philosophy of construing claim language: [Listen] and [Listen].

See these earlier posts with respect to the word “each”:  [Link], [Link], and [Link].

Oral Argument of the Month: AllStar Tire and Wheel, Inc. v. Wheel Pros, Inc.

Saturday, May 28th, 2011

The oral argument of the month for the month of May is AllStar Tire and Wheel, Inc. v. Wheel Pros, Inc., 2011-1015 (Fed. Cir. May 12, 2011).  This oral argument raised interesting issues concerning functionality in design patent infringement cases.  

For background, it appears that the inventor was deposed and through his testimony gave the impression that the commercial embodiment (not necessarily the claim of the design patent) possessed functional traits.  The accused infringer relied on that testimony to prevail on summary judgment that the design patent was merely functional.  The plaintiff-appellant argued on appeal that the claim was not ambiguous on its face and that there was no reason to turn to the inventor’s testimony because it is extrinsic evidence of last resort for consideration only when a claim is ambiguous.  Moreover, the plaintiff-appellant argued that the inventor’s testimony was about a commercial embodiment, as opposed to the design patent itself. 

During the oral argument the panel raised a number of interesting issues as to whether summary judgment was appropriate in this case.  Judge Linn noted that the contour of a wheel cover design might not be functional but rather ornamental.  And, if the design element (i.e., the contour of the wheel cover) was ambiguous as to whether it was ornamental or functional, was it appropriate to decide such an ambiguous issue on summary judgment. 

The panel also asked if functionality is a question of fact that should be given to a jury if a jury trial has been requested (or resolved by the court acting as a fact finder if there is no jury).  The panel asked about PHG Technologies, LLC v. St. John Companies, Inc., which stated that whether a design element is functional is a matter of fact; and how should that case be applied in view of the court’s unanimous en banc opinion in Egyptian Goddess, Inc. et al. v. Swisa, Inc. et al., which stated that functionality is a matter of claim construction.  The panel queried whether Egyptian Goddess had overruled PHG Technologies.  Also, the panel inquired if Egyptian Goddess has not expressly overruled PHG Technologies, should the en banc opinion of Egyptian Goddess be given more weight than the earlier decided PHG Technologies decision.

You can listen to the discussion of those issues here: [Listen].

 The panel also asked about an inconsistency in the district court’s opinion.  At one point the district court’s opinion apparently stated that the wheel cover design included both functional and non-functional elements.  The district court then went on to discuss only the functional elements.  Judge Clevenger asked whether that suggests that the district court was incorrect in deciding the issue on summary judgment.  You can listen to the discussion of that issue here: [Listen].

A third issue was raised by Judge Linn concerning whether the ordinary observer standard has any role to play in determing functionality in the context of interpreting claim scope.   At that point, Judge Linn said “this is the gift that keeps on giving here; this question, it gets more and more involved and convoluted every minute.” [Listen].

 The plaintiff-appellant responded on rebuttal that in view of the number of open questions highlighted by the discussion, that it was clear that the district court should not have granted summary judgment.

After the panel raised these interesting issues and questions, it promptly issued a Rule 36 decision affirming the summary judgment . . . .

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

You can view the court’s Rule 36 decision here: [Read].

Oral Argument of the Month

Thursday, February 17th, 2011

The oral argument of the month for the month of February is Regents of the University of Minnesota v. Kappos, 2010-1321 (Fed. Cir. Feb. 11, 2011).  This case concerned a valuable patent that had gone abandoned due to failure to pay a maintenance fee. The docket clerk had apparently entered “abandoned” into the University’s docketing system. (From listening to the oral argument, I’m under the impression this might have occurred when the patent was surrendered as part of a reissue filing.) Once the error was discovered more than 2.5 years after expiration, the University was faced with an “unavoidable” standard in order to have the patent reinstated.

The Board apparently placed great weight on how much training and supervision the docket clerk received.  And, much of the oral argument concerned these issues.  For example, the docket clerk was apparently not supervised by a registered patent attorney but rather by an administrator (who was also an attorney).  I think the oral argument is worth a listen by any organization that has a docketing system — particularly those patent owners who choose to handle their docket themselves.  Such organizations might be well-advised to memorialize their training efforts and to periodically send docket clerks to training seminars.

This might also point to a business opportunity for those organizations that provide in-person or on-line patent seminars.  Seminars for docketing clerks could be in high-demand.

Unfortunately, the court only issued a Rule 36 opinion.  I think the patent bar would have appreciated a little more clarification from the court on these issues.

The oral argument is available here: [Listen].

The Rule 36 opinion is available here: [Read].

Oral Argument of the Month — Laryngeal Mask Co. Ltd. v. Ambu

Saturday, August 14th, 2010

The Federal Circuit heard oral argument in Laryngeal Mask Co. Ltd. v. Ambu earlier this month.  The court has not yet issued its opinion in the case.  The case concerns US patents 7,156,100 and 5,303,697.

This was an interesting oral argument.  It is one of those arguments that is good for new prosecutors to listen to so that they are aware of the arguments that will be brought against their work product.  The oral argument included a host of arguments that go toward the preparation and prosecution of an application. 

“The Present Invention”

Usually, “the present invention” argument is raised by an accused infringer who wants to narrow claim language to what was described as “the present invention” or “the invention” in the specification or prosecution history.  This case was a little different in that the patentee (rather than the accused infringer) argued that the language describing “the present invention” did not include the element that the accused infringer was trying to read into the claim.  Therefore, the patentee argued that the claim should be construed broadly based upon “the present invention” language.

Detailed Description of the Invention vs. Detailed Description of the Preferred Embodiments

Similar to the above, use of “the invention” as part of the Detailed Description heading was this time argued by the accused infringer to limit the claims to the disclosed embodiment.

Disclosure of a Single Embodiment

Judge Lourie asked about the disclosure of a single embodiment described as the preferred embodiment.  He queried whether disclosure of a single embodiment described as “the preferred embodiment” might require “preferred” to be read as “only.”  You can listen to his comment here: [Listen].

Broad Summary language

The patentee argued for a broad claim construction based on a broad Summary section of the patent.

Language from the Brief Description of the Drawings

The accused infringer argued that the claims should be limited based on use of the phrase “the present invention” to describe Fig. 1 of the patent.

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

Oral Argument of the Month — Akamai Tech v. Limelight Networks

Wednesday, June 9th, 2010

The oral argument of the month for the month of June is Akamai Tech v. Limelight Networks which was argued on Monday.  This oral argument is quite interesting — especially if you are dealing with divided infringement issues.  In addition to a lengthy discussion of divided infringement, the judges were also interested in the use of “the present invention” phrase vs. the “preferred embodiment” phrase in the specification.

So far, there has been no opinion in the case.  You can listen to the oral argument here: [Listen].

Oral Argument of the Month — May 2009

Monday, August 17th, 2009

The oral argument of the month for May 2009 is Corebrace v. Star Seismic.  The case concerned a license agreement to “make, use, and sell” licensed products.  The issues centered around whether that language necessarily included the right for a third party to make the licensed products for the licensee when a subsequent clause in the license agreement reserved rights to the licensor that had not been expressly granted by the license agreement.

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

You can read the opinion here: [Read].

Oral Argument of the Month — April 2009

Friday, July 17th, 2009

Since everyone’s time is short I thought I would start posting an “oral argument of the month” that is worth the effort to listen to.  The oral argument of the month for cases decided in April 2009  is the In re Kubin case.  You can download the oral agrument or play it from here: [Listen]. 

The decision is available here: [Read].