Archive for October, 2009

Reply Brief in Bilski v. Kappos

Tuesday, October 27th, 2009

The reply brief in Bilski v. Kappos has now been filed.  You can read it [Here].

Updated with Petitioners’ Brief and Respondent’s Brief:

[Brief for Petitioners Bernard L. Bilski and Rand A. Warsaw ]

[Brief for Respondent David J. Kappos, Under Secretary of Commerce for Intellectual Property and Director, United States Trademark Office]

Diamond v. Diehr

Monday, October 26th, 2009

Most people reading this will probably recall that Diamond v. Diehr was the last time that the United States Supreme Court issued a substantive opinion on 35 USC section 101.  The case involved method claims and the use of a computer to control a rubber curing process. 

I had always assumed that the counsel for the inventor in Diamond v. Diehr was a champion of broad subject matter protection and had argued valiantly for a broad scope of protectable subject matter under section 101, including protection for computer software. Therefore, I was surprised when I listened to the oral argument in Diamond v. Diehr that such was not the case:  [Listen] and [Listen].

It’s no surprise that the Solicitor General also argued against the patentability of software during the oral argument.  Previously, the government had argued for a narrow scope of protection under section 101 in Diamond v. Chakrabarty, Parker v. Flook, and Gottschalk v. Benson.  The Solicitor General’s argument in Diamond v. Diehr was no different — although it took some prodding from Justice White for him to address the issue directly: [Listen].

While the Solicitor General in Diamond v. Diehr admitted that computer programs could be novel and non-obvious, the Solicitor General quoted the President’s Commission on the Patent System from the 1970’s in arguing that computer programs should not be patentable — whether claimed purely as a software program or as a process or as a  programmed machine — because searching would be too difficult due to the sheer volume of prior art.    [Listen]

It is interesting to note the position of the Solicitor General’s office now in Bilski v. Kappos.  In the goverment’s brief, the Solicitor General’s office now states:

 This Court has long recognized that the distinguishing feature of a technological process is that it concerns a particular machine or apparatus or effects a transformation of matter to a different state or thing. See, e.g., Diehr, 450 U.S. at 184; Cochrane v. Deener, 94 U.S. 780 (1877). That understanding of the term “process” in Section 101 continues to provide an appropriate framework for distinguishing methods that involve technology—including claims concerning software and other modern technologies—from those that do not. 

See page 9 of Respondent’s Brief in Bilski v. Kappos.


In any event, the machine-or-transformation test contemplates that many forms of “software” inventions are patent-eligible. As with many types of technology, the patent-eligibility of software cannot be resolved as a categorical matter. Rather, the eligibility of a claimed software invention depends on the content of that  invention and the form in which it is sought to be patented. 

As the Board noted below, the machine-or-transformation definition may readily encompass most software claims because such claims could be said to concern the use of a machine ( i.e. , the computer itself ) or involve a transformation of matter ( i.e., the writing and re-writing of data, represented by magnetic changes in the substrate of a hard disk or the altered energy state of transistors in a memory chip). Pet. App. 177a-178a. This conception of the machine-or-transformation test is reflected in non-binding interim examination instructions issued by the PTO in August 2009. See United States PTO, Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101  (Aug. 24, 2009) ( Interim Instructions).17  The Interim Instructions state that “computer implemented processes” are often disclosed as connected to a machine, i.e., a general purpose computer. Id. at 6. Such a computer, “when programmed to perform the process steps” so that it performs the specific function  contemplated by the process, “may be sufficiently ‘particular’ ” for purposes of the machine-or-transformation test. Ibid.; cf. In re Alappat, 33 F.3d 1526, 1545 (Fed. Cir. 1994) (en banc)(“[A] general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.”). In addition, “transformation of electronic data has been found when the nature of the data has been changed such that it has a different function or is suitable for a different use.”


 See Respondent’s Brief at pages 38-39 in Bilski v. Kappos. 

 You can listen to the entire oral argument in Diamond v. Diehr here:   [Listen].
 You can read the Supreme Court’s opinion in Diamond v. Diehr here:  [Read].

Top 10 Federal Circuit Oral Advocates of 2006

Tuesday, October 20th, 2009

Since a large percentage of high-stakes patent cases are appealed to the Federal Circuit, I thought it might be of use to in-house counsel to list at least one person’s view of the top oral advocates for patent cases at the Federal Circuit.  This first list is from cases decided during the year 2006.  (Because I typically listen to the recordings of the oral arguments in my car on my drive to and from work, please take note that my impressions can be influenced by how frustrating traffic is on any particular day.)  Generally, these advocates were knowledgeable of patent law, articulate, zealous, and persuasive.

The pool of honorees listed in alphabetical order are:

a)  Garrard R. Beeney  (Sullivan and Cromwell)

b)  Evan R. Chesler (Cravath Swain & Moore)

c)  Don Dunner*  (Finnegan Henderson Farabow Garrett & Dunner)

d)  Rudolf E. Hutz*  (Connolly Bove Lodge & Hutz)

e)  Douglas J. Kline* (Goodwin Procter)

f)  Charles E. Lipsey* (Finnegan Henderson Farabow Garrett & Dunner)

g)  Michael W. Shore  (Shore, Chan, and Bragalone)

h)  Kathleen M. Sullivan  (Quinn Emanuel)

i)  Stephen L. Sulzer (Connolly Bove Lodge & Hutz)

j)  Dirk Thomas* (now of McKool Smith)

*Registered patent attorney

 Stay tuned for the lists for 2007, 2008, and 2009.

New Patent Blog —

Monday, October 19th, 2009

My colleagues Cara Crowley-Weber, Ph.D. and Kathy Lobel-Rice, Ph.D. have launched a new patent blog at  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.

The meaning of “each” ….

Sunday, October 18th, 2009

I posted a few weeks ago about the case In re Skvorecz in which there was a discussion about the meaning of “each” when used to refer back to a plurality of items.  [LINK]  I stumbled across an oral argument from 2006 where the panel again was trying to understand what “each” meant in this context.

The claim at issue read: 

Claim 1 from 4,870,287

The relevant language was “a plurality of separate patient treatment stations each having a patient support for orienting a patient in a fixed position” and “a gantry at each treatment station.”

The defendant’s attorney argued that “each” meant “every.”   Judge Linn questioned whether, in a situation where there were three patient treatment stations, “a gantry at each treatment station” could mean that only two of the treatment stations need have a gantry while the third need not necessarily have a gantry.   Judge Bryson also suggested that perhaps there was some ambiguity as to the meaning of “each.”

Here is what defendant’s counsel argued: [Listen]

Here is what plaintiff’s counsel argued: [Listen]

Ultimately, the court did not address the meaning of “each” in its opinion since the patent was found invalid.  But, if one has to argue about the meaning of “each” for six minutes of an oral argument, I would question whether “each” indeed has a common and ordinary meaning.

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

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

You be the judge — i4i v. Microsoft (Part II)

Saturday, October 17th, 2009

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. 7

Fig. 9

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.

You be the judge — i4i v. Microsoft (Part I)

Friday, October 2nd, 2009

Here’s an opportunity for you to be the judge.  Microsoft has appealed the permanent injunction imposed by Judge Davis of the Eastern District of Texas in i4i v. Microsoft.  Importantly, the permanent injunction would apply to any continuing infringement of US patent 5,787,449 by Microsoft’s Word product.  Judge Davis also approved $240 million in damages to i4i for infringement by Microsoft.   The Federal Circuit has issued a temporary stay of the permanent injunction pending a decision on the appeal. 

The oral argument at the Federal Circuit before Judges Schall, Prost, and Moore was conducted on September 23, 2009.  The court has not yet issued a decision.  Hence, you can decide how you would resolve this appeal.

You can listen to the oral argument below.  The oral argument was over an hour; so, I’ve divided it into three segments (1) Microsoft’s argument; (2) i4i’s argument; and (3) Microsoft’s rebuttal argument.

Microsoft’s argument: [Listen]

i4i’s argument: [Listen]

Microsoft’s rebuttal argument: [Listen]

Supporting documents including briefs and a link to the patent can be found at [Link].