Archive for August, 2009

Match Game

Saturday, August 29th, 2009

With the PTO recently posting a job opening for the position of Deputy Commissioner for Patent Examination Policy having a salary range of $117,787- $177,000, I became curious what other public officials are paid.  Can you match the following government positions with their 2008 salary?

A)  Chief Justice of the US Supreme Court  1)  $172,200

B)  Judge, US Court of Appeals                 2)  $158,800

C)  Librarian of Congress                         3)  $169,300

D)  Register of Copyrights                        4)  $221,100

E)  US Senator                                          5)  $179,500

F) Vice President of the United States       6)  $217,400

For extra credit, can you name the Librarian of Congress?

Answer key in the next posting.

Oral Argument of Brenner v. Manson

Wednesday, August 26th, 2009

Brenner v. Manson was decided by the US Supreme Court in 1966.  The case dealt with whether a method claim to produce a product is patentable when the putative inventor knew of no use for the produced product.  The Supreme Court decided that the method claim did not satisfy 35 USC section 101 under those circumstances.

This oral argument* is primarily of interest in regard to Bilski v. Kappos for the policy arguments that are made in regard to the purpose of section 101.  Interestingly, Justice Fortas, in writing for the majority, concluded the opinion with this final sentence: “[A] patent system must be related to the world of commerce, rather than to the realm of philosophy. . . .”  One might find that statement useful when considering whether 35 USC section 101 was intended to cover business methods.

Finally, in the Court’s opinion there is one interesting line that seems particularly apt for a patent case even though the Court was dealing with statutory construction rather than claim construction.  Justice Fortas wrote “[A] simple, everyday word can be pregnant with ambiguity when applied to the facts of life. . . .”

You can listen to the oral argument Here.

You can read the opinion Here.

*I believe this is the only place on the Internet where you can currently listen to this oral argument.  I ordered it from the Supreme Court archives.

Bilski v. Kappos

Sunday, August 23rd, 2009

Mark your calendar.  The oral argument for Bilski v. Kappos before the United States Supreme Court has been set for Monday, November 9, 2009.  You can view the entire docket sheet [Here].

Oral Advocate — Thomas W. Krause, Associate Solicitor

Wednesday, August 19th, 2009

I am always impressed when I listen to recordings of Tom Krause arguing before the Federal Circuit on behalf of the PTO.  He comes across as knowledgeable, fair, and articulate.  Most importantly, it does not appear that he is trying to pursue any hidden agenda.  Rather, he always seems to be trying to accurately apply existing case law to the facts at hand.

Mr. Krause recently argued the case of In re Siemens Water Technologies Holding Corp.  You can listen to the entire oral argument here: [Listen].  I think this case is particularly interesting for the way that Judge Clevenger probed for an explanation of  how the PTO goes about making the factual determination of combining references in a 103 rejection and whether an examiner should be entitled to such a high degree of deference in stating a prima facie case of unpatentability in matters of “common sense” and “design choice” [Listen].  

Most prosecutors will get a chuckle out of this exchange about the limits on the use of “design choice” by examiners: [Listen].

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

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].

“Just tweaking you a little bit”

Thursday, August 13th, 2009

It’s well known that when a judge asks a question at oral argument that counsel should give a direct answer.  I think it is probably apropos to just chuckle and move on with the argument, as counsel did here, when the judge is “just tweaking you a little bit.” [Listen]

Summary of the Invention

Thursday, August 13th, 2009

The 2007 case of  The Saunders Group v. Comfortrac is an interesting case for a number of reasons.  The patent at issue was a continuation that included claims broader than the claims of its parent patent.  The Federal Circuit had to construe the term “pneumatic cylinder” in the child patent.  Namely, the court had to determine whether the term pneumatic cylinder, as used in the child patent, was meant to include at least one pressure activated seal.  The phrase “pressure activated seal” had been used to further define “pneumatic cylinder” in the claims of the parent patent; but, the phrase “pressure activated seal” had been expressly omitted from some of the claims of the child patent.

Judge Michel first remarked during oral argument that while a continuation application might be appropriate in some situations for pursuing broader claims, it might not be appropriate in every conceivable circumstance. [Listen

The panel then went on to consider the effect of the Summary of the Invention section of the patent at issue.  In the patent at issue, the applicant had referred to “the invention” in the first two sentences and then referred to “embodiments of the invention” in subsequent sentences.  The panel quizzed the patentee’s attorney on the significance of that paragraph structure. [Listen

The exchange above is also interesting because the patentee’s attorney was able to argue that the boilerplate language appearing at the end of the patent was relevant to the meaning of the term at issue.

The court eventually held that the term “pneumatic cylinder” did not require the inclusion of a “pressure activated seal.”  Yet, the case is also interesting because the court indicated it might have reached a different decision if the term “pressure activated seal” had been omitted from all of the independent claims of the child patent rather than just some of the claims.  The court stated: “When the patentees filed the continuation application, they omitted that limitation [pressure activated seal] from some, but not all, of the new claims.  Had they omitted the limitation from all of the claims, it might be argued that the limitation was assumed to be present and did not need to be explicitly recited.  Making such a change to only some of the claims, however, is a strong indication that the claims not reciting pressure activated seals were not intended to require them.”

You can read the court’s opinion here [Read].  Again, note that this is a 2007 opinion.

Oral Argument of Diamond v. Chakrabarty

Monday, August 10th, 2009

Following Gottschalk v. Benson in 1972 and Parker v. Flook in 1978, the U.S. Supreme Court again had the opportunity to consider 35 USC section 101 in Diamond v. Chakrabarty in 1980.  The Court held that a patent claim for a live, human-made microorganism is patentable subject matter as either a manufacture or composition of matter under 35 USC section 101. 

The counsel for the patent applicant argued, in part, that because the USPTO had recognized microorganisms as a unique subclassification in its classification system and had issued at least 60 patents for microorganisms that the PTO had already recognized microorganisms as being patentable.  You can hear part of that argument [here]. 

Interestingly, the USPTO just recently published a PowerPoint presentation on business methods.  It is available [here].  In this presentation, the USPTO recognizes that it issued 1600 business methods in 2008.  Assuming the PTO issues roughly 157,800 patents every year, the 1600 patents accounted for only 1.0% of all patents issued by the USPTO. 

You can listen to the entire oral argument in Diamond v. Chakrabarty [here].

You can read the Court’s opinion [here].

Oral Advocate — Mark Lemley

Friday, August 7th, 2009

Many patent practitioners know of Stanford professor Mark Lemley for his voluminous body of work on patent law.  One rather infamous article was co-authored with now Federal Circuit Judge Kimberly Moore entitled “Ending Abuse of Continuation Applications” and advocated for a limit of one continuation application. [Read]

Regardless of whether you agree with Professor Lemley and Judge Moore on the fairness of such a limitation or find it somewhat divorced from the practical reality of patent prosecution before today’s USPTO, I think you will agree with me that he is an excellent oral advocate.  You can listen to his oral argument in Monsanto Co. v. McFarling  [Here].

Oral Argument of Parker v. Flook

Wednesday, August 5th, 2009

Parker v. Flook was the U.S. Supreme Court’s second chance to assess 35 USC section 101 in the context of a computer related claim.  The opinion was written by Justice Stevens and he was joined by Justices Brennan, White, Marshall, Blackmun, and Powell.  A dissenting opinion was filed by Justice Stewart, Chief Justice Burger, and Justice Rehnquist.  A few years later in Diamond v. Diehr, Justices White and Powell would switch sides and join Justice Stewart, Chief Justice Burger, and Justice Rehnquist (i.e., the dissent in Flook), leaving Justices Stevens, Brennan, Marshall, and Blackmun as the dissent.  Notably, Justice Stevens is the only member still serving on the Court.  He joined Justice Breyer and Justice Souter in dissenting in the dismissal of the Labcorp v. Metabolite case in 2006.

As a patent attorney who admittedly favors patent protection for software and business methods, it is difficult to read the Parker v. Flook decision and find any logic in it.  The opinion tries to inject elements of 35 USC section 103 into the 35 USC section 101 analysis.  The Court and the public would be better-served to let sections 102, 103, and 112 serve their intended purposes rather than trying to make a complete analysis of patentability under 35 USC section 101.  With the Court’s recent decision in KSR v. Teleflex there are ample constraints on claiming obvious uses of a natural phenomenon.  And, with the Federal Circuit’s cases concerning section 112, there is ample protection against overbreadth in claiming.  One would hope that the Court will take the opportunity with the Bilski v. Doll case to clarify the law by expressly overruling Parker v. Flook

You can listen to the Parker v. Flook oral argument here [Listen].  You can read the decision here [Read].

Malcolm Gladwell — Patents

Monday, August 3rd, 2009

This post is a little bit off-subject; but, I thought I would mention it anyway since I think it would be of interest to patent attorneys.  Malcolm Gladwell is an interesting author who writes for the New Yorker and has had some very successful books in recent years, such as Blink, The Tipping Point, and Outliers.  He often writes about innovation.  In looking at his web site on Friday, I noticed that he had written an article for the New Yorker back in May of 2008 about Nathan Myhrvold of Intellectual Ventures.  You can find this article [Link] and other articles on his website at .

I also noticed that Mr. Gladwell’s site says that he is available as a guest speaker.  For those planning future AIPLA, ACPC, ABA, etc. meetings, he might make for an interesting speaker.