Archive for March, 2010

Judge Plager troubled with Federal Circuit’s “Indefiniteness” law

Wednesday, March 31st, 2010

On the heels of the Ariad v. Eli Lilly en banc case which dealt with the issue of “written description” under 35 USC §112, the Federal Circuit has now issued several decisions dealing with “indefiniteness” under 35 USC §112.  One of those cases is Enzo v. Applera, 2009-1381 (Fed. Cir. Mar. 26, 2010).

In the oral argument of Enzo, Judge Plager expressed some frustration with the Federal Circuit’s current law on the issue of indefiniteness: [Listen].

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

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

Judge Plager was the author of the “nose of wax” line from Exxon Chem. Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553 (Fed. Cir. 1995) in which he stated:

Claim drafting is itself an art, an art on which the entire patent system today depends.  The language through which claims are expressed is not a nose of wax to be pushed and shoved into a form that pleases and that produces a particular result a court may desire.  The public generally, and in particular, the patentees’ competitors, are entitled to clear and specific notice of what the inventor claims as his invention.  That is not an easy assignment for those who draft claims, but the law requires it, and our duty demands that we enforce the requirement.  There is no room in patent claim interpretation for the equivalent of the cy pres doctrine; that would leave the claiming process too indefinite to serve the purposes which lie at the heart of the patent system.

How would Shakespeare construe the claim?

Tuesday, March 23rd, 2010

250px-thomas_keene_in_macbeth_1884_wikipedia_crop4 In the oral argument in WNS Holdings, LLC, v. United Parcel Service, Inc., 2009-1498 (Fed. Cir. March 8, 2010), the attorney for UPS used an analogy to Shakespeare’s “The Tragedy of Macbeth” for purposes of arguing his claim construction case: [Listen].

Perhaps Shakespearean analogies are the key to winning at the Federal Circuit.  UPS prevailed on the appeal.

Judge Rader’s District Court Opinion from the E.D. Texas

Saturday, March 20th, 2010

Judge Rader has been sitting by designation on several cases in the Eastern District of Texas.  The 271 Blog noted that Judge Rader’s written opinion in one of those cases, PA Advisors LLC v. Google, Inc. et al., Case No. 2:07-cv-480 (E.D. Tex., March 11, 2010, order), has now been published.

In the opinion, Judge Rader granted summary judgment of non-infringement in view of BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir. 2007) and Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008) due to the fact that multiple independent actors were required to act in order to fulfill all the elements of a method claim (i.e., divided infringement).  Claim 1 at issue in this regard recited:

1. A data processing method for enabling a user utilizing a local computer system having a local data storage system to locate desired data from a plurality of data items stored in a remote data storage system in a remote computer system, the remote computer system being linked to the local computer system by a telecommunication link, the method comprising the steps of:

(a) extracting, by one of the local computer system and the remote computer system, a user profile from user linguistic data previously provided by the user, said user data profile being representative of a first linguistic pattern of the said user linguistic data;

(b) constructing, by the remote computer system, a plurality of data item profiles, each plural data item profile corresponding to a different one of each plural data item stored in the remote data storage system, each of said plural data item profiles being representative of a second linguistic pattern of a corresponding plural data item, each said plural second linguistic pattern being substantially unique to each corresponding plural data item;

(c) providing, by the user to the local computer system, search request data representative of the user’s expressed desire to locate data substantially pertaining to said search request data;

(d) extracting, by one of the local computer system and the remote computer system, a search request profile from said search request data, said search request profile being representative of a third linguistic pattern of said search request data;

(e) determining, by one of the local computer system and the remote computer system, a first similarity factor representative of a first correlation between said search request profile and said user profile by comparing said search request profile to said user profile;

(f) determining, by one of the local computer system and the remote computer system, a plurality of second similarity factors, each said plural second similarity factor being representative of a second correlation between said search request profile and a different one of said plural data item profiles, by comparing said search request profile to each of said plural data item profiles;

(g) calculating, by one of the local computer system and the remote computer system, a final match factor for each of said plural data item profiles, by adding said first similarity factor to at least one of said plural second similarity factors in accordance with at least one intersection between said first correlation and said second correlation;

(h) selecting, by one of the local computer system and the remote computer system, one of said plural data items corresponding to a plural data item profile having a highest final match factor; and

(i) retrieving, by one of the local computer system and the remote computer system from the remote data storage system, said selected data item for display to the user, such that the user is presented with a data item having linguistic characteristics that substantially correspond to linguistic characteristics of the linguistic data generated by the user, whereby the linguistic characteristics of the data item correspond to the user’s social, cultural, educational, economic background as well as to the user’s psychological profile.

You can read Judge Rader’s written opinion for the district court here: [Link].

May an examiner search under any tree and under any rock?

Tuesday, March 16th, 2010

The recent case of In re Thorpe, 2010-1021 (Fed. Cir. March 8, 2010) concerned the issue of whether the cited references in a 103 rejection were non-analogous art.  Judge Gajarsa took the opportunity at oral argument to ask the associate solicitor arguing on behalf of the PTO how broad an examiner’s search field may be.  May the examiner search under any tree and under any rock or are there limits?   Judge Gajarsa also asked whether the search field is limited to the art that one of ordinary skill in the art would deem appropriate to search.  The PTO agreed that the art that one of ordinary skill in the art would look to would limit the field of search in an obviousness determination. [Listen].

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

“Common sense” vs. “Common knowledge”

Monday, March 15th, 2010

The issue of “common sense” came up again in the oral arguments before the Federal Circuit.  In Siemens AG v. Seagate Technology, 2009-1382 (Fed. Cir. March 9, 2010), the panel questioned appellant’s counsel about “common sense” in regard to a highly technical field of art.  The question was whether “common sense” in a KSR analysis of a highly technical area refers to the “common sense” of an ordinary individual or the “common sense” of one of ordinary skill in the highly technical field of art at issue. [Listen]

In the opinion written by Judge Archer, the panel avoided the “common sense” issue and referred  instead to “common knowledge”:   

The jury implicitly found that all asserted claims of the ‘838 patent were rendered obvious by known giant magnetoresistive (“GMR”) sensors combined with a coupling layer and magnetic layer from known artificial antiferromagnets (“AAF”). Siemens asserts that there was no motivation to make this combination. However, Seagate’s expert, Dr. Wang, testified that AAF structures with a coupling layer and a magnetic layer were known to those of ordinary skill in the art in 1992 and were also found in prior art patents and publications. Dr. Wang further explained in detail that based on this common knowledge of AAFs and known problems with prior art GMR sensors (such as stray magnetic flux) and the design incentives for solving such problems, a person of ordinary skill in the art would have been motivated to solve these problems using an AAF. In light of Dr. Wang’s testimony, a reasonable jury could have found that it would have been obvious to one of ordinary skill in the art to combine known GMR sensors with the coupling and magnetic layers from known AAFs to make the claimed invention.


 Black’s Law Dictionary defines both “common knowledge” and “common sense”:

Common Knowledge.  Refers to what court may declare applicable to action without necessity of proof.  It is knowledge that every intelligent person has, and includes matter of learning, experience, history and facts of which judicial notice may be taken.  Shelley v. Chilton’s Adm’r, 236 Ky. 221, 32 S.W.2d 974, 977.  See also Judicial notice.


Common Sense.  Sound practical judgment; that degree of intelligence and reason, as exercised upon the relations of persons and things and the ordinary affairs of life, which is possessed by the generality of mankind, and which would suffice to direct the conduct and actions of the individual in a manner to agree with the behavior of ordinary persons.


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

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

AIPLA Electronics and Computer Law Road Show

Thursday, March 11th, 2010

Mark your calendar and save the date of June 24th, 2010.  The AIPLA has calendared that date for the AIPLA Electronics and Computer Law Road Show in Denver, CO [Link].   I believe this seminar formerly went by the name AIPLA Advanced Electronics and Computer Law Seminar.  Kudos to the AIPLA for reinstituting this valuable seminar that has been on hiatus for the last few years.

By the way, late June typically has ideal weather for visiting Denver and hiking and biking in the Colorado mountains.

Judge Kathleen O’Malley Nominated to Federal Circuit

Wednesday, March 10th, 2010

The White House has nominated Judge Kathleen O’Malley from the Northern District of Ohio to fill the vacancy on the United States Court of Appeals for the Federal Circuit.

Judge O’Malley sat by designation with the Federal Circuit on February 6th and 7th of 2007.  You can listen to the oral arguments featuring Judge O’Malley here:

Panel with Judges Rader and Gajarsa

Monsanto v. Syngenta Seeds, 2006-1472 (Fed. Cir. November 4, 2007) [Listen]

Biomedical Patent Management Corp. v. State of California, 2006-1515 (Fed. Cir. Nov. 23, 2007) [Listen]

Byrne v. The Black and Decker Corp., 2006-1523 (Fed. Cir. May 21, 2007) [Listen]

 Panel with Judges Lourie and Dyk

Ormco Corp. et al. v. Align Technology, 2006-1240 (Fed. Cir. Aug. 24 2007) [Listen]

Pods v. Porta Stor, 2006-1504 (Fed. Cir. April 27, 2007) [Listen]

Doctrine of Claim Vitiation — Part 2

Tuesday, March 9th, 2010

Judge Rader had a second bite at the claim vitiation apple in the recent case of Nystrom v. Trex Co., Inc., 2009-1026 (Fed. Cir. 2009).  During the oral argument for that case, Judge Rader had the following exchange with appellee’s counsel: [Listen].

In his concurring opinion, Judge Rader echoed his position from the oral argument that the doctrine of claim vitiation is a redundant test that is performed as part of a doctrine of equivalents analysis.  He wrote:

While I endorse the reasoning and results of the panel, I write separately to address the doctrine of claim vitiation. In Warner-Jenkinson, the Supreme Court adopted this court’s established “all-elements” rule. Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 39 n.8 (1997) (“[U]nder the particular facts of a case, . . . if a theory of equivalence would entirely vitiate a particular claim element, partial or complete judgment should be rendered by the court . . . .”). “Informed by this guidance, we have held that in certain instances, the ‘all elements’ rule forecloses resort to the doctrine of equivalents because, on the facts or theories presented in a case, a limitation would be read completely out of the claim i.e., the limitation would be effectively removed or ‘vitiated.’” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1017 (Fed. Cir. 2006). Nonetheless, this court has also warned that an overly broad application of the all elements rule may improperly “swallow the doctrine of equivalents entirely” and limit infringement to “a repeated analysis of literal infringement.” Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 149 F.3d 1309, 1317 (Fed. Cir. 1998).


Ironically, the Supreme Court adopted this vitiation limitation on the doctrine of equivalents at a point near the time that this court had learned of its internal inconsistency. Claim vitiation limits the doctrine of equivalents. The doctrine of equivalents, by definition, acknowledges that a specific claim limitation is not expressly found in the accused product or process. Claim vitiation proceeds from the same acknowledgment that a specific claim limitation is missing from the accused product or process. The doctrine of equivalents permits a finding of infringement, despite the missing limitation, because the deficit is not substantial. Claim vitiation bars infringement because the same deficit is substantial. In other words, claim vitiation, by definition, simply rewinds and replays the doctrine of equivalents test for substantiality of a missing claim limitation. Thus, a finding of insubstantial difference to show equivalency obviates any further vitiation analysis—the wholly insignificant equivalent, by definition, would not vitiate the claim. On the other hand, a finding of substantial difference renders vitiation unnecessary. Thus, the vitiation doctrine is really subsumed within the test for equivalents itself. In other words, the all elements rule is simply a circular application of the doctrine of equivalents.


While the tests for equivalents and vitiation are coterminous, the Supreme Court’s Warner-Jenkinson decision did create one difference: the identical equivalents and vitiation tests are made by different decision makers. “The determination of equivalency is a question of fact . . . .” Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306, 1309 (Fed. Cir. 2000). Conversely, this court has instructed—as required by Warner-Jenkinson—that application of the all elements rule is a question of law. See Panduit Corp. v. HellermannTyton Corp., 451 F.3d 819, 826 (Fed. Cir. 2006) (“The determination of infringement under the doctrine of equivalents is limited by two primary legal doctrines, prosecution history estoppel and the ‘all elements’ rule, the applications of which are questions of law.”). The problem with this conflict is apparent. Judges decide vitiation; juries decide equivalents. Although the tests are the same, the testers are different, which could produce different results in application of the same rules.


This case can serve to illustrate this situation. Trex argued to the district court that a finding of equivalents on a product comprised of forty to fifty percent wood would necessarily vitiate the claim language requiring the board to be “made [entirely] from wood.” The district court agreed and barred Nystrom from pursuing an infringement theory based on equivalents. Would the result be different, however, if the accused device was comprised of fifty-five or sixty percent wood? Seventy percent? Should this question be resolved by a jury, by a judge, or by both?


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

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

For a succinct article on the Doctrine of Claim Vitiation (written prior to Judge Rader’s comments), see “The Doctrine of Claim Vitiation” by Hanft and Chiarelli at the following link: [Link].

Doctrine of Claim Vitiation — Part 1

Monday, March 8th, 2010

While the oral argument from Cross Medical Products v. Sofamor Danek, 480 F.3d 1335 (Fed. Cir. 2007) is somewhat dated, it is pretty interesting in regard to the doctrine of claim vitiation.  Much of the discussion focused on vitiation, although the opinion said nothing about vitiation.

Judge Rader inquired with both the appellant and the appellee as to where does vitiation stop and the doctrine of equivalents begin:  [Listen] and [Listen].

You can read the opinion for this case here: [Read].

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

Judge Kathleen O’Malley

Friday, March 5th, 2010

Judge Kathleen O’Malley from the Northern District of Ohio is rumored to be the nominee for the open position on the Federal Circuit.

Judge O’Malley sat by designation at the Federal Circuit in 2007.  You can listen to Judge O’Malley in this oral argument from Ormco Corp. v. Align Tech., Inc.  [Listen].

Kappos Blog

Wednesday, March 3rd, 2010

Director David Kappos is looking for your comments on the direction of design patent law.  He recently posted his insight on the Crocs v. ITC case and the Federal Circuit’s judicial gloss on the KSR opinion: [Link].

Another “present invention” opinion

Tuesday, March 2nd, 2010

The Federal Circuit recently added yet another case to its jurisprudence in regard to the language “the present invention.”  In Trading Technologies International, Inc. v. Espeed, Inc., 2008-1392 (February 25, 2010), Judge Rader wrote for the majority:

In the first place, the “re-centering command” must indeed occur as a result of a manual entry. The specification shows that the inventors defined the term “static” in the specification. Notably, that definition expressly promises to discuss “a re-centering command . . . later” in the specification. Id. From that point forward, the specification only discusses manual re-centering commands. The specification contains no reference to automatic re-centering. Perhaps in response to the promise to discuss re-centering later, the patents describe the invention as follows:

“As the market ascends or descends the price column, the inside market might go above or below the price column displayed on a trader’s screen. Usually a trader will want to be able to see the inside market to assess future trades. The system of the present invention addresses this problem with a one click centering feature.”

’132 patent col.8 ll.49-54; ’304 patent col.9 ll.14-19 (emphasis added). This reference to “the present invention” strongly suggests that the claimed re-centering command requires a manual input, specifically, a mouse click. See Honeywell Int’l, Inc. v. ITT Indus., 452 F.3d 1312, 1318 (Fed. Cir. 2006) (concluding that the invention was limited to a fuel filter because the specification referred to the fuel filter as “this invention” and “the present invention”).

This court recognizes that this interpretation relies heavily on the specification and risks reading improperly a preferred embodiment into the claim. See Saunders Group, Inc. v. Comfortrac, Inc., 492 F.3d 1326, 1332 (Fed. Cir. 2007) (holding that claim scope is not limited to the disclosed embodiments “unless the patentee has demonstrated a clear intention to [do so]”). This court takes some comfort against this risk from the inventors’ use of the term “the present invention” rather than “a preferred embodiment” or just “an embodiment.” The inventors’ own specification strongly suggests that the claimed re-centering feature is manual.

 Judge Clark from the Eastern District of Texas sat by designation on the panel.  He, too, focused on the “present invention” language in his questioning: [Listen].


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

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

Crocs and Stilleto Heels

Tuesday, March 2nd, 2010

Judge Prost made an amusing fashion observation during the oral argument of the Crocs v. International Trade Commission appeal: [Listen].

Interestingly, Crocs’ experts must be Tolkien fans.  They apparently argued that the Crocs design includes prominent design features that they describe as the “Ring of Fire” and the “Eye of Sauron” a la The Lord of the Rings: [Listen].



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

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