Judge Roderick McKelvie is one of the most highly-respected district court judges to have overseen patent cases. He served as a U.S. District Court judge for the district of Delaware from 1992-2002. Relatively recently, he returned to private practice with Covington and Burling, LLP in Washington, D.C.
You can listen to Judge McKelvie argue before the Federal Circuit on behalf of the University of Pittsburgh here [Listen] in the recent case of Univ. of Pittsburgh v. Varian Medical Systems, Inc.
Many times arguments that are made during oral argument do not get any mention in the decisions of the Federal Circuit. As a result, they can fly under the radar of the patent bar for quite some time until the argument is ultimately repeated and mentioned by the Federal Circuit in an opinion or even relied upon.
In listening to the recording of the oral argument In Univ. of Pittsburgh of the Commonwealth System of Higher Ed. v. Hedrick, there was one such argument that caught my attention. Appellant argued that perhaps the strongest evidence in a dispute over inventorship was the fact that the inventors of two provisional applications had included method claims in the two provisional applications but had not included any claims directed to a composition of matter. The appellant argued that due to the omission of such claims in the two provisional applications that the inventors listed on the provisionals were admitting that they were not inventors of such a composition of matter as of the filing date of the provisionals. [Listen]
I think such an argument would be alarming to most patent prosecutors. There is very little case law concerning the effect of provisional applications. It’s been my experience that most practitioners write at least one claim in a provisional application but do not write complete claim sets. In fact, many would argue that no claim is required for a provisional that will serve as the priority document for a US non-provisional application. (Although, it seems prudent to include at least one claim — especially for future foreign filing purposes.) So, to hear someone argue that one must essentially include a full claim set in a provisional application is disconcerting. As noted above, the Federal Circuit panel did not address the argument in its decision.
With the briefing to the Supreme Court underway in regard to the Bilski v. Doll (Bilski v. Kappos?) case, I thought it would be of interest to readers to post the oral arguments to the Supreme Court for some relatively recent section 101 cases. Today’s posting is the oral argument to the Supreme Court from Gottschalk v. Benson [Listen] that took place more than thirty-six years ago on October 16, 1972.
Here is a link to the text of the opinion:[Read]
It is interesting to listen to the Applicant’s policy argument in regard to the patenting of software [Listen] and the government’s reply [Listen] and to reflect on how things have both changed and not changed in the last thirty-six years.
Roughly half of the federal courts of appeal make their recordings of oral arguments available for download:
1st Circuit – Yes
2nd Circuit – No
3rd Circuit – Yes
4th Circuit – No
5th Circuit – Yes
6th Circuit – No
7th Circuit – Yes
8th Circuit – Yes
9th Circuit – Yes
10th Circuit – No
11th Circuit – No
D.C. Circuit – No (can listen real-time though)
Federal Circuit – Yes
As indicated above, the D.C. Circuit even allows for listening in real-time although it doesn’t make the recordings available for download:[Link].
The Houston Intellectual Property Law Association web site reports that the CAFC will be visiting Houston in November 2009 to hear oral arguments. [Read] The visit is slated for November 3rd and 4th along with a seminar on one of those days. HIPLA is a very active bar association and a great model for bar associations in other cities.
The Federal Circuit has also been invited to sit at the University of Colorado this year. However, there has not yet been any indication as to whether that invitation has been accepted.
There was a light-hearted moment at the oral argument of Abbott Labs v. Sandoz when counsel for Sandoz thanked the court with a slight mis-step causing Judge Rader to conclude he had just been given a pay raise: [Listen]
This case was unusual in that after this oral argument the CAFC sua sponte undertook en banc review of product by process claims. Yet, the CAFC did not conduct an en banc oral argument. One would think that an issue important enough to cause the CAFC to undertake en banc review would similarly be important enough for en banc oral argument and an opportunity for amicus briefs.
The en banc opinion can be found here: [Read]
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].
The number of appeals being filed at the BPAI level has increased significantly in recent years. In 2005, roughly 3000 appeals were filed. In 2008, that number had doubled to roughly 6000. See http://www.patentlyo.com/patent/2009/01/bpai-appeal-sta.html. Moreover, the rate of reversal has apparently dropped from a 40% reversal rate in 2005 to a 20% reversal rate in 2009. Again, see http://www.patentlyo.com/patent/2009/01/bpai-appeal-sta.html. Obviously, one can expect that a greater number of appeals from the BPAI will now be making their way to the CAFC.
One important practice tip that might be of interest to some readers is that requesting oral argument at the board level can provide a possible procedural advantage. Former Administrative Patent Judge William F. Smith of Woodcock Washburn in Atlanta has noted in some AIPLA presentations that the merits panel of a case being orally argued will generally convene a pre-hearing conference where all Board members on the merits panel will meet to review the issues to be argued. In contrast, a case presented solely on the briefs is in most cases initially considered by one member of the merits panel and then conferenced with a second member of the merits panel. If the first two members agree on the disposition of all the issues in the appeal, the draft opinion is drafted reflecting the conference decision. Thus, the third member of the merits panel will see the decision for the first time when it is circulating and already has two signatures. Therefore, it behooves an appellant to request oral argument because the appeal initially receives the consideration and insight of all three ALJ’s about the merits of the case rather than just two.
It has been reported in recent months that the Board is now requiring ALJ’s to provide a justification as to why they need to write a dissenting opinion before receiving credit for it. See http://www.patentlyo.com/patent/2009/05/bpai-shuts-down-dissent-in-favor-of-efficiency.html Thus, there is now even less incentive for an ALJ to draft a dissenting opinion that might be enlightening when the case is appealed to the Federal Circuit.
The case of Netcraft Corporation v. Ebay, Inc. from December of 2008 is instructive to patent prosecutors who still use the term “present invention” in their patent drafting practice. The defendant-appellees relied heavily on an argument that the claims of the patent at issue should be limited because of applicant’s use of the phrase “present invention.” The plaintiff-appellant on the other hand argued that there was no general rule that use of the phrase “present invention” in the specification automatically limits the claims.
The defendant-appellee’s argument can be heard here: [Listen]
The plaintiff-appellant’s argument can be heard here [Listen] and here [Listen].
The entire oral argument can be heard here: [Listen].
And, the Federal Circuit’s opinion can be found here: [ http://www.cafc.uscourts.gov/opinions/08-1263.pdf ] .
At the end of the day, the Federal Circuit did rely heavily on applicant’s use of present invention. It stated:
Netcraft argues that there is no “general rule that any use of ‘the present invention’ in the specification automatically limits the claims, as Defendants seem to believe.” Appellant’s Reply Br. 22; see also id. at 19 (“Defendants contend that the case law supports the draconian result that any use of the phrase ‘present invention’ limits the claims to the embodiment described.”). We agree with Netcraft that use of the phrase “the present invention” does not “automatically” limit the meaning of claim terms in all circumstances, and that such language must be read in the context of the entire specification and prosecution history. See Rambus Inc. v. Infineon Techs. AG, 318 F.3d 1081, 1094 (Fed. Cir. 2003). For the reasons below, however, we agree with the district court that the common specification’s repeated use of the phrase “the present invention” describes the invention as a whole, see Claim Construction Order at *6, and, as will be discussed further below, that the prosecution history does not warrant a contrary result.
This oral argument might also be of interest to those familiar with the name Morgan Chu. Mr. Chu has received accolades in years past as one of the top patent litigators in the country. He argued for the defendant-appellee in this case.
The In re Volkswagen case is an important case recently decided en banc by the United States Court of Appeals for the Fifth Circuit. Essentially, this case gives some guidance to the federal judges in the Eastern District of Texas (as well as the other districts of the Fifth Circuit) as to when it is proper to transfer a case to another district court. The case concerned a lawsuit that was initially before Judge Ward of the Eastern District of Texas. Judge Ward is well-known among patent litigators as one of the judges in the Eastern District of Texas who enjoys hearing patent cases. He is also one of the reasons that the Eastern District of Texas has seen so many patent cases filed there in recent years. And, he recently sat by designation at the United States Court of Appeals for the Federal Circuit.
During oral argument, the Chief Judge of the Fifth Circuit did comment about Judge Ward’s consistency in assessing the impact of travel time to the “deep heart of East Texas.” [Listen]
The full oral argument can be heard here: [Listen] One interesting thing to take note of when listening to this oral argument at the Fifth Circuit is that counsel is entitled to reserve time to make uninterrupted remarks. After that time period, the judges may ask their questions. This custom does not appear to be followed by the Federal Circuit where judges can begin asking their questions right out of the gate.
Judges on the Court of Appeals for the Federal Circuit are obviously a talented group of individuals. Recently, Judge Randall Rader had an opportunity to show off some of his linguistic skills in a trademark appeal concerning Russian-made Vodka. Apparently, Judge Rader is not only fluent in Russian but also Finnish. Judge Rader noted that he spoke Russian early in the proceedings [Listen] and later closed the oral argument with these remarks in Russian[Listen].
The audio below is one of the more alarming statements that I have heard in listening to the various oral arguments from the Court of Appeals for the Federal Circuit. It highlights the disconnect in some instances between the Federal Circuit and attorneys that draft and prosecute patent applications. In Technology Properties Ltd. v. ARM Ltd., Judge Dyk asked appellant’s counsel about the heading “Detailed Description of the Invention” that appeared in the patent at issue. Judge Dyk commented that this was an unusual heading and that most patents he had reviewed used “Detailed Description of the Preferred Embodiments.” And, he implied that because language different from “Detailed Description of the Preferred Embodiments” was used in the patent at issue that the patent should be construed more narrowly [Listen].
Those comments should come as a surprise to any patent attorney who has spent any amount of time drafting patent applications and working with the Code of Federal Regulations or the Manual of Patent Examining Procedure. The Code of Federal Regulations at 37 CFR 1.77(b) recommends using the heading “Detailed Description of the Invention.” Furthermore, MPEP sections 608.01(a) and 608.01(p) use the phrase as well. In fact, MPEP section 608.01(p) is itself dedicated to the “Detailed Description of the Invention.” Practitioners have indeed moved away from using the phrase “Detailed Description of the Invention” and often use just “Detailed Description” — but it is disconcerting to hear this audio.
The Federal Circuit in recent years has made a bigger deal out of phrases like “the present invention” and “the invention.” One hopes that in doing so the judges are aware of what the PTO is recommending to patent practitioners and examiners via its regulations and the MPEP.