Archive for September, 2009

Federal Circuit visit to Houston

Monday, September 28th, 2009

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


                              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]
       2009-3155  MSPB   ARMSTRONG V TREASURY      [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

       2009-5052  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.

Dueling Experts

Sunday, September 27th, 2009

In Kara Technology, Inc. v., the panel reviewing the district court judgment was faced with reviewing a district court judge’s claim construction.  During the district court’s claim construction hearing, evidence from dueling expert witnesses was offered.  Judge Moore noted that the outcome of the review of the district court’s claim construction might differ depending on whether the panel reviewed the claim construction (1) de novo or (2) with deference to the district court judge’s evaluation of the expert evidence.  Judge Moore inquired of counsel for the defendant-appellee whether the court should revisit its en banc decision in Cybor v. FAS Technologies, Inc.    [Listen]  In Cybor, the Federal Circuit held that the court reviewed claim construction de novo including underlying issues of fact.

You may recall Judge Mayer’s dissent in the Phillips v. AWH Corp. case in which he commented:

Until the court is willing to reconsider its holdings in Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed.Cir.1995) (en banc), aff’d on other grounds, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996), and Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed.Cir.1998) (en banc), that claim construction is a pure question of law subject to de novo review in this court, any attempt to refine the process is futile. Nearly a decade of confusion has resulted from the fiction that claim construction is a matter of law, when it is obvious that it depends on underlying factual determinations which, like all factual questions if disputed, are the province of the trial court, reviewable on appeal for clear error. To pretend otherwise inspires cynicism. Therefore, and because I am convinced that shuffling our current precedent merely continues a charade, I dissent from the en banc order.


On another note, it was interesting to note that Judge Moore and her clerks apparently can communicate with one another electronically during oral arguments.  [Listen]

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

You can read the panel’s opinion in Kara Technology, Inc. v. [Here].

You can read the en banc opinion in Cybor [Here].

Edwards Life Sciences v. Cook, Inc.

Wednesday, September 23rd, 2009

Edwards Life Sciences v. Cook, Inc. concerns intraluminal grafts for use in treating aneurisms without open surgery.  This case is instructive for patent attorneys on many levels.  For example, takeaway patent drafting lessons are:

1) Try to be clear when drafting an application that more than a single embodiment is being disclosed in the application;

2)  Avoid use of the phrase “the present invention” or “the invention” lest it be used against you;

3) Be aware that distinguishing prior art in the specification can be used against you;

4) Be aware that use of the abbreviation “i.e.” has the effect of defining a term rather than serving as an example.  (An example would instead be indicated by “e.g.”)

These are not new lessons; but, when they occur in the same case, they can be highly instructive.

Two issues from some of my earlier posts came up again in this oral argument.  The first was Judge Rader inquiring of counsel as to how the invention was an advancement over the prior art. [Listen]  He made the same inquiry in the oral argument of Lydall/Thermal Acoustical v. Federal Mogul Corp., as well.

The second issue was the focus by the judges on the language “present invention.”  The written opinions in “present invention” cases usually couple (1) the fact that a single embodiment was disclosed in the specification with (2) the applicant’s repeated use of the “present invention” language.  However, when one listens to the oral arguments for these cases, it is the repeated use of the “present invention” language in the specification that the judges emphasize in their questioning.  You can listen to Judge Lourie [Listen] and Judge Moore [Listen] addressing this issue with appellant’s counsel.

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

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

Respondent’s brief in Bilski v. Kappos

Tuesday, September 22nd, 2009

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).

No new arguments on appeal — not an ironclad rule

Monday, September 21st, 2009

The general rule in patent cases before the Court of Appeals for the Federal Circuit is that no new arguments are to be presented that could have been presented at the district court. The court summarized its position on this issue last year in Golden Bridge Technology v. Nokia, where it stated:

“[I]t is the general rule . . . that a federal appellate court does not consider an issue not passed upon below.” Singleton v. Wulff, 428 U.S. 106, 120 (1976). Our precedent generally counsels against entertaining arguments not presented to the district court. Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1426 (Fed. Cir. 1997) (“In short, this court does not ‘review’ that which was not presented to the district court.”). While appellate courts are given the discretion to decide when to deviate from this general rule of waiver, see Singleton, 428 U.S. at 121, we have explained that “prudential considerations” articulated by the Supreme Court counsel against hearing new arguments for the first time on appeal absent limited circumstances, see Forshey v. Principi, 284 F.3d 1335, 1353-54 (Fed. Cir. 2002) (quoting Hormel v. Helvering, 312 U.S. 552, 556-57 (1941)).

In Forshey, this court articulated an exemplary set of limited circumstances in which hearing arguments for the first time on appeal is appropriate: (1) “[w]hen new legislation is passed while an appeal is pending, courts have an obligation to apply the new law if Congress intended retroactive application even though the issue was not decided or raised below,” 284 F.3d at 1355; (2) “when there is a change in the jurisprudence of the reviewing court or the Supreme Court after consideration of the case by the lower court,” id. at 1356; (3) “appellate courts may apply the correct law even if the parties did not argue it below and the court below did not decide it, but only if an issue is properly before the court,” id.; (4) “where a party appeared pro se before the lower court, a court of appeals may appropriately be less stringent in requiring that the issue have been raised explicitly below,” id. at 1357.

Therefore, the following exchange between counsel for the appellee and Chief Judge Michel at oral argument in Bowling v. Hasbro caught my ear. Essentially, counsel for appellee noted that the appellant was asserting a new claim construction on appeal that could have been presented below. Chief Judge Michel appeared more open to the court entertaining such a new argument than the above quote from Golden Bridge might suggest. [Listen]

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

“Present Invention”

Friday, September 18th, 2009

Lydall/Thermal Acoustical v. Federal Mogul Corp. is yet another case in the relatively recent line of “present invention” cases.  The Federal Circuit determined that the patentee had merely described a single embodiment of the invention in the specification and relied upon the patentee’s repeated use of the phrase “the present invention” to limit the scope of the claims at issue.  The court wrote:

We agree with Federal-Mogul that the specification of the ’260 patent discloses a single embodiment of the invention, viz., an insulating shield that includes a fibrous batt consisting of an insulating layer sandwiched between two binding layers that is, as discussed infra, needled on two sides. Although Lydall is correct in saying that the claim language “fibrous batt of fibers” does not, in isolation, suggest a layered batt, Lydall’s arguments completely ignore the consistent use of the term “batt” in the specification. It is fundamental that we give due weight to the specification when construing this claim term. Phillips, 415 F.3d at 1315.

We have stated that “when the preferred embodiment is described in the specification as the invention itself, the claims are not necessarily entitled to a scope broader than that embodiment.” Chimie v. PPG Indus., 402 F.3d 1371, 1379 (Fed. Cir. 2005); see Honeywell, 452 F.3d at 1318 (construing claim term to include fuel filter because “[o]n at least four occasions, the written description refers to the fuel filter as ‘this invention’ or ‘the present invention’”); SciMed, 242 F.3d at 1343 (construing term to include feature characterized as “the present invention”). In other words, when a patentee consistently describes one embodiment as “the present invention,” “[t]he public is entitled to take the patentee at his word.” Honeywell, 452 F.3d at 1318; see also SciMed, 242 F.3d at 1341 (“Where the specification makes clear that the invention does not include a particular feature, that feature is deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification, might be considered broad enough to encompass the feature in question.”). Such is the case here. The specification identifies a three-layered batt as “the present invention.” ’260 patent col.6 ll.50. In addition, the specification repeatedly describes the batt as having an insulating layer disposed between two binding layers. See id. col.6 ll.53–55, col.9 ll.21–25, col.13 ll.19–23. Lydall’s consistent description of “the present invention” as including a three-layered batt makes clear that the claimed “fibrous batt of fibers” must have three layers, an insulating layer sandwiched between two binding layers. The fact that the specification discloses that the insulating fibers may “at least in part” be made up of the same organic fibers as the binding layers does not dissuade us from our conclusion. It may be that the insulating layer and the binding layers are made from the same material, but the batt still has three layers. It is not, therefore, a single, homogenous layer. 

You can listen to Judge Rader inquiring about the “present invention” language [Here].   Attorneys in foreign countries should take note of this line of “present invention” cases.  Those attorneys practicing in the electrical arts in Japan, especially, would be well-advised to examine this issue before filing in the U.S.

The other issue that struck me as interesting in listening to the recording of this oral argument was Judge Rader’s inquiry about the advancement of the invention over the prior art. [Listen]   There is a tension when writing a patent application between (1) touting the benefits of an invention so that an examiner, jury, or judge will understand the value and utility of the patent, and (2) keeping the description sufficiently bland so as not to provide an adversary with any basis to limit the claims. See, e.g.Toro Co. v. Consolidated Industries, 199 F.3d 1295 (Fed. Cir. 1999); Inpro II Licensing, S.A.R.L. v. T-Mobile USA, Inc., 450 F.3d 1350 (Fed. Cir. 2006); and Vehicular Technologies Corp. v. Titan Wheel International, Inc., 212 F.3d 1377 (Fed. Cir. 2000).  This oral argument illustrates that judges do care about the utility of an invention; but, it also illustrates that one can introduce that utility at oral argument.

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

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

Reissue procedure

Thursday, September 17th, 2009

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].

Calculating Reasonable Royalties

Monday, September 14th, 2009

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].

Diamond v. Bradley

Sunday, September 13th, 2009

It has been more than a quarter of a century since the Supreme Court issued a substantive opinion concerning 35 USC section 101 — Diamond v. Diehr.  On the same day that the Court heard the oral argument in Diamond v. Diehr, it also heard a companion case in Diamond v. BradleyDiamond v. Bradley concerned 35 USC section 101 in the context of an apparatus claim for a computer.  Chief Justice Burger took no part in the decision which resulted in a 4-4 split decision by the remaining eight justices.  As a result, the CCPA’s judgment was affirmed.

Obviously, computing has advanced significantly in the last quarter of a century.  However, the following sound bite truly puts that advancement in perspective. [Listen]  (“[W]ord processors — you know, those machines that are replacing typewriters in offices.”)

C-Span and Bilski Oral Argument

Friday, September 11th, 2009

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]

LabCorp v. Metabolite

Thursday, September 10th, 2009

With the Bilski v. Kappos briefing currently taking place, I thought it might be of interest to post the briefs from the Lab Corp v. Metabolite case.  As readers may recall,  the Supreme  Court dismissed the writ of certiorari in Lab Corp. v. Metabolite in 2006 as having been improvidently granted.

Petitioner’s Brief

Respondents’ Brief

Petitioner’s Reply Brief

Supreme Court’s Dismissal and Justice Breyer’s dissent

Martek Biosciences v. Nutrinova

Wednesday, September 9th, 2009

In the recent case of Martek Biosciences v. Nutrinova an expanded panel of five judges heard the appeal.  The audience at oral argument that day included visiting dignitaries from other countries and is the likely reason that an expanded panel was used.

An important issue in this case was whether  the claim term “animal” included humans.  The expanded panel produced a more “animated” oral argument than usual.  At one point Judge Rader remarked that his tennis playing would clearly categorize him as an animal while at another point Judge Gajarsa surmised that Judge Rader’s tennis playing was encompassed under the explicitly recited category of “swine.”  And, Judge Moore offered that Judge Rader was not a mammal because he lacked the ability to produce milk.  [Listen]  

Judges Lourie and Rader dissented from the majority opinion and asserted that the claim term “animal” did not include humans for the patent at issue.

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

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

Bilski briefs

Sunday, September 6th, 2009

I noticed that the ABA has a nice site where one can easily access the briefs being submitted for the Bilski v. Kappos case.  The link is:

So far, 45 amicus briefs have been filed — easily outnumbering briefs on file for any other case being argued in October or November.

“Each” — Hard cases make bad law

Saturday, September 5th, 2009

      At first glance, the case of In re Skvorecz, appears to deal with how the transition word “comprising” is to be construed.  A closer reading reveals that the case really turns on how the word “each” is to be construed following recitation of multiple elements, in this case “a plurality of legs” or “at least two legs.”   The claim at issue in the reissue proceeding is for a table-like structure (a frame to support a chafing dish) and reads as follows:

1. A wire chafing stand comprising a first [an upper] rim of wire steel which forms a closed geometrical configuration circumscribing a first surface area, [a lower rim of wire steel forming a closed geometrical configuration circumscribing a second surface area with said first surface area being larger than said second surface area] and having at least two [a plurality of] wire legs with each wire leg having two upright sections interconnected to one another [at a location below the lower rim] in a configuration forming a base support for the stand to rest upon with each upright section extending upwardly from said base support to from an angle equal to or greater than 90° with respect to a horizontal plane through said base support and being affixed to the first [upper] rim adjacent one end thereof [and to said lower rim at a relatively equal distance below the point of attachment to said upper rim] and further comprising a plurality of offsets located either in said upright sections of said wire legs or in said first [upper] rim for laterally displacing each wire leg relative to said first [upper] rim to facilitate the nesting of a multiplicity of stands into one another without significant wedging.

Material in [brackets ] indicates Applicant’s proposed deletions and underlined material indicates proposed additions.

      The Board of Appeals and Interferences decided that in construing the claim to have its broadest reasonable  interpretation that the use of the word “each” need only refer to the “two legs” of the “at least two legs.”  The word “each” need not refer to every leg.  Thus, the Board found that the claim was anticipated by a reference that had offsets on two legs but not on every leg.

     The panel at the Federal Circuit disagreed with the Board and found the claim not to be anticipated.  Importantly, the panel reads the word “each” in this circumstance to mean “all” the legs or “every” leg.  Listen to the panel’s discussion of this issue with the counsel for the PTO:  [Here],  [Here], and  [Here].

     This decision has far-reaching effects beyond this particular case.  Moreover, while it is pro-patentee in the context of a reissue proceeding, the precedent it sets is actually anti-patentee in an infringement context.  Given the limited treatment in the opinion of why “each” must necessarily be understood to mean “all” or “every,” I think this case is ripe for en banc review.  Given the circumstances the parties have little incentive to request rehearing — the patentee has a completely favorable opinion from the Federal Circuit and the PTO is not known for being an advocate of broadly interpreted patents. 

     It seems to me that if  the word “each” has such a definite meaning in our language that the expression “each and every” would not exist.  The fact that “each and every” is a common expression suggests that the meaning of “each” is not as clear as the panel implies.  Furthermore, as counsel for the PTO remarked, if the Applicant wanted “each” to mean “all” he could have said “all.”

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

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


I was curious if the Federal Circuit had ever construed “each” not to mean “all” or “every” when referring to “a plurality” or “at least two” items.  In the case of v. Lansa, 346 F.3d 1374 (Fed. Cir. 2003), the panel of Judges Newman, Rader, and Michel stated that:

Claim 1 of the ’608 patent recites “each of a plurality of fields,” which does not carry the same meaning as “every field.”  Rather, the recitation of “plurality” suggests the use of “at least two.”   See York Prods., Inc. v. Cent. Tractor Farm & Family Ctr., 99 F.3d 1568, 1575 (Fed. Cir. 1996) (“The term means, simply, ‘the state of being plural.’”).  While “at least two” may mean “every” under some circumstances, the two terms are not synonymous.  In sum, “each of a plurality of fields” means “each of at least two fields.”

[Read v. Lansa]

Answer Key

Friday, September 4th, 2009

The answers for the quiz in the previous post are: 

A)  Chief Justice of the US Supreme Court    $217,400

B)  Judge, US Court of Appeals                   $179,500

C)  Librarian of Congress                           $172,200

D)  Register of Copyrights                          $158,800

E)  US Senator                                        $169,300

F) Vice President of the United States         $221,100

A=6, B=5, C=1, D=2, E=3, F=4         [Source]

Answer to the extra credit problem:  James Hadley Billington is the Librarian of Congress.

Also, US District Court judges made $169,300 in January of 2008 and US Magistrate judges made $155,756.