Archive for June, 2010

Filing a continuation on the day the parent issues — co-pending??

Monday, June 28th, 2010

“We therefore leave for another day whether filing a continuation on the day the parent issues results in applications that are co-pending as required by the statute.”

Those were the ominous words at the end of Judge Moore’s recent opinion in Encyclopedia Britannica, Inc. v. Alpine Electronics of America, Inc. et al., 2009-1544 (Fed. Cir. June 18, 2010).  The defendants in the case argued that a continuation application filed on the same day that the parent application issues is not co-pending with the parent; therefore, the requirements of 35 USC §120 are not met so as to entitle the continuation application to the filing date of the parent application/patent.  The argument asserted the holding of a Supreme Court case (the United States v. Locke, 471 U.S. 84 (1985) case) where the Court addressed the meaning of the word “before” when used in conjunction with a date in an unrelated statute.  Since §120 requires the filing of a continuation application “before” the patenting of the parent application, a same day filing would not be before the patenting of the parent application (according to the defendants). [Listen].

The plaintiff-appellant asserted the practice of the Patent Office in recognizing continuation filings on the same day that the parent issues. [Listen].

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

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

Update:  You can read the Supreme Court’s opinion in United States v. Locke, 471 U.S. 84 (1985) here: [Read].

Mariano Rivera at the Federal Circuit

Sunday, June 20th, 2010

riveraChief Judge Rader was questioning appellant’s counsel about the issue of deceptive intent to deceive the public during the oral argument of Pequignot v. Solo Cup Co., 2009-1547 (Fed. Cir. June 10, 2010) when he tried to use a baseball analogy to make his point: [Listen]. 

He later followed up with appellee’s counsel:  [Listen].

Senate Judiciary Committee Hearing for Judge Moore

Wednesday, June 16th, 2010

I got curious and was able to locate another source of recorded Senate Judiciary Committee hearings. Here is the Senate Judiciary Committee hearing for Judge Moore of the Federal Circuit from back in 2006 (you might need to have RealPlayer installed to play this): Play Video.

Judge Moore is introduced at about the 7:21 minute mark into the video.

Judicial Confirmation Hearings

Tuesday, June 15th, 2010

The Senate Judiciary Committee hearings have not yet been set for Federal Circuit nominees Judge Kathleen O’Malley and Edward DuMont.  However, looking through the C-Span video archives, I did run across the confirmation hearing for Judge Prost from back in 2001.  In the video, Judge Prost is introduced at about 10:23 minutes into the video with many complimentary remarks by the senators.  The question and answer session begins at about 22:30 into the video.

Chief Justice Roberts on Oral Argument

Monday, June 14th, 2010

Anubis to welcome AIPLA visitors

Sunday, June 13th, 2010

If you are flying in to Denver for the AIPLA roadshow on the 24th of June (Judge Linn will be speaking at the event), you’ll be interested to know that a statue of Anubis — Egyptian god of the dead — will be at the airport to welcome you.  The statue is at the airport temporarily to promote the opening of the King Tut exhibit in Denver on July 1st. Anubis can be found outside the south end of the main “terminal” building.

There is no truth to the rumor that the jackal headed Anubis will be appearing at the roadshow to discuss developments in the claiming of transgenic animals.

Divided Infringement and Contract Illegality

Thursday, June 10th, 2010

If any law student out there is looking for a note topic, divided infringement and contract illegality might make for an interesting topic.  Namely, to the extent that a party argues that a contract obligates another party to commit an act that results in patent infringement via divided infringement, is that contract provision unenforceable for producing an illegal result, i.e., patent infringement.  And, if the contract provision is unenforceable for producing an illegal result, can direction and control for divided infringement be established by the unenforceable contract provision?

Oral Argument of the Month — Akamai Tech v. Limelight Networks

Wednesday, June 9th, 2010

The oral argument of the month for the month of June is Akamai Tech v. Limelight Networks which was argued on Monday.  This oral argument is quite interesting — especially if you are dealing with divided infringement issues.  In addition to a lengthy discussion of divided infringement, the judges were also interested in the use of “the present invention” phrase vs. the “preferred embodiment” phrase in the specification.

So far, there has been no opinion in the case.  You can listen to the oral argument here: [Listen].

Swearing-In Ceremonies

Tuesday, June 8th, 2010

The judges of the Federal Circuit from time to time will swear-in to the Federal Circuit bar their judicial law clerks.  One of the nice aspects of this is that you can tell the genuine appreciation that the judges have for the work by their law clerks.  It just so happened that one such swearing-in ceremony was one of Chief Judge Rader’s official acts as the new Chief Judge. [Listen].

Some Favorite Quotations

Monday, June 7th, 2010

As someone who prepares patent opinions and drafts patent applications, I find the following quotations to be right on point.  You might enjoy them, too. 

“The specification and claims of a patent, particularly if the invention be at all complicated, constitute one of the most difficult legal instruments to draw with accuracy; and, in view of the fact that valuable inventions are often placed in the hands of inexperienced persons to prepare such specifications and claims, it is no matter of surprise that the latter frequently fail to describe with requisite certainty the exact invention of the patentee.”

Topliff v. Topliff, 145 U.S. 156, 171 (1892).


“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.”

Exxon Chem. Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553, 1563 (Fed. Cir. 1995)(Plager, J. concurring).


“This court recognizes that such reasoning places a premium on forethought in patent drafting.  Indeed this premium may lead to higher costs of patent prosecution.  However, the alternative rule – allowing broad play for the doctrine of equivalents to encompass foreseeable variations, not just of a claim element, but of a patent claim – also leads to higher costs. . . .Given a choice of imposing the higher costs of careful [patent] prosecution on patentees, or imposing the costs of foreclosed business activity on the public at large, this court believes the costs are properly imposed on the group best positioned to determine whether or not a particular invention warrants investment at a higher level, that is, the patentees.”

Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1425-26 (Fed. Cir. 1997).


“These are ordinary, simple English words whose meaning is clear and unquestionable. . . . The dough is to be heated to the specified temperature. . . . Thus, in accord with our settled practice we construe the claim as written, not as the patentees wish they had written it.  As written, the claim unambiguously requires that the dough be heated to a temperature range of 400°F to 850°F.”

Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1373-74 (Fed. Cir. 2004).

“If [the patentee], who was responsible for drafting and prosecuting the patent, intended something different, it could have prevented this result through clearer drafting. . . . It would not be appropriate for us now to interpret the claim differently just to cure a drafting error made by [the patentee].  That would unduly interfere with the function of claims in putting competitors on notice of the scope of the claimed invention.”

Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948, 951 (Fed. Cir. 1993).


“At best, the patent and the prosecution history show that the inventors or their representatives who drafted the claims and prosecuted the patent left considerable confusion in the record about whether the claimed invention uses heading or bearing.  However, it is not the province of the courts to salvage poorly – or incorrectly—drafted patent claims.

Fair notice to the public, and to competitors, of what is claimed depends on our holding patentees to what they claim, not to what they might have claimed.  It is the responsibility of those who seek the benefits of the patent system to draft claims that are clear and understandable.   When courts fail to enforce that responsibility in a meaningful way they inevitably contribute an additional element of indeterminacy to the system.  Sometimes being kind to a party results in being unkind to the larger interests of society.”

Honeywell International, Inc. v. Universal Avionics Systems Corp., 493 F.3d 1358, 1368 (Fed. Cir. 2007)(Plager, J., dissenting).


“This court acknowledges that the standard requiring control or direction for a finding of joint infringement may in some circumstances allow parties to enter into arms-length agreements to avoid infringement.  Nonetheless, this concern does not outweigh concerns over expanding the rules governing direct infringement. . . . The concerns over a party avoiding infringement by arms-length cooperation can usually be offset by proper claim drafting.  A patentee can usually structure a claim to capture infringement by a single party . . . .  In this case, for example, BMC could have drafted its claims to focus on one entity.  The steps of the claim might have featured references to a single party’s supplying or receiving each element of the claimed process.  However, BMC chose instead to have four different parties perform different acts within one claim. . . . Nonetheless, this court will not unilaterally restructure the claim or the standards for joint infringement to remedy these ill-conceived claims.”

BMC Resources, Inc. v. Paymentech, L.P., 498 F. 3d 1373 (Fed. Cir. 2007).


“We take the characterization ‘functional,’ as used by the Patent Office and argued by the parties, to indicate nothing more than the fact that an attempt is being made to define something (in this case, a composition) by what it does rather than by what it is (as evidenced by specific structure or material, for example).  In our view, there is nothing intrinsically wrong with the use of such a technique in drafting claims.”

In re Swinehart, 439 F.2d 210, 212 (C.C.P.A. 1971).


“A purely subjective construction of ‘aesthetically pleasing’ would not notify the public of the patentee’s right to exclude since the meaning of the claim language would depend on the unpredictable vagaries of any one person’s opinion of the aesthetics of the interface screens.  While beauty is in the eye of the beholder, a claim term, to be definite, requires an objective anchor.”

Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342 (Fed. Cir. 2005).


Most recently in Haemonetics Corp. v. Baxter Healthcare Corp., 2009-1557 (Fed. Cir. June 2, 2010), the Federal Circuit provided another quote:

 “An ‘error’ may have occurred in drafting claim 16, as Haemonetics’s counsel indicated during the district court’s claim construction hearing, J.A. 923, but it is what the patentee claimed and what the public is entitled to rely on.”

Haemonetics Corp. v. Baxter Healthcare Corp., 2009-1557 (Fed. Cir. June 2, 2010)

Wednesday, June 2nd, 2010

Judge Lourie almost always adds some comic relief to the oral arguments at the Federal Circuit.  He certainly didn’t miss this opportunity: [Listen].

Means plus function hybrid claim?

Tuesday, June 1st, 2010

One of the issues percolating at the Federal Circuit is to what extent a hybrid claim, i.e., a claim that includes claim elements for more than one class of patentable subject matter in 35 U.S.C. § 101, satisfies the definiteness requirement of 35 U.S.C. §112.  Judge Clevenger recently wrote in his dissent in Vizio, Inc. v. ITC, 2009-1386 (Fed. Cir. May 26, 2010):

The majority is incorrect that the phrase “for identifying” imposes an additional requirement that an allegedly infringing DTV actually use the channel map for identifying. Imposing a method limitation on an apparatus claim is improper. See Microprocessor Enhancement Corp. v. Tex. Instruments Inc., 520 F.3d 1367, 1374 (Fed. Cir. 2008) (“A single patent may include claims directed to one or more of the classes of patentable subject matter, but no single claim may cover more than one subject matter class.”). This is so because it would be “unclear whether infringement [] occurs when one creates a system that allows the user to practice the claimed method step, or whether infringement occurs when the user actually practices the method step.” Id. at 1374-75 (quoting IPXL Holdings, L.L.C. v., Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005)). Here, the majority’s additional use limitation unnecessarily creates doubt about the timing of infringement and the definiteness of claim 1 when no such quandary exists in the plain language of the claim. Claim 1 does not require use of the channel map to occur; instead only a means for forming the channel map is required.


The claim Judge Clevenger is concerned about reads:

1.  Apparatus for decoding a datastream of MPEG compatible packetized program information containing program map information to provide decoded program data, comprising:


means for identifying channel map information conveyed within said packetized program information; and


means for assembling said identified in-formation to form a channel map for identifying said individual packetized datastreams constituting said program,




said channel map information replicates information conveyed in said MPEG compatible program map information and said replicated information associates a broadcast channel with packet identifiers used to identify individual packetized datastreams that constitute a program transmitted on said broadcast channel.


I think Judge Clevenger has a logical point with respect to his analysis of hybrid claims that have method and apparatus aspects.  What about the claim in Diamond v. Chakrabarty, though?  In that case, the Supreme Court approved of Chakrabarty’s micro-organism claim as satisfying section 101.  Indeed, the Court seemed to suggest that Chakrabarty’s claim satisfied two of the four classes of subject matter under section 101:


Judged in this light, respondent’s micro-organism plainly qualifies as patentable subject matter. His claim is not to a hitherto unknown natural phenomenon, but to a nonnaturally occurring manufacture or composition of matter — a product of human ingenuity “having a distinctive name, character [and] use.” Hartranft v. Wiegmann, 121 U. S. 609, 121 U. S. 615 (1887).

Diamond v. Chakrabarty, 447 U.S. 303, 310-11 (1980).