Archive for July, 2010

Liebel-Flarsheim Ignored?

Thursday, July 29th, 2010

Today in Becton Dickinson and Co. v. Tyco Healthcare Group, LP, 2009-1053 (July 29, 2010), Judges Linn and Mayer reversed Chief Judge Sleet of the U.S. District Court for the District of Delaware.  Judge Gajarsa filed a dissenting opinion.

One issue that interested me from skimming this decision was that despite the court noting that the claim language was unambiguous, the majority still made the statement that the claims should be construed to preserve their validity.  Since Liebel Flarsheim v. Medrad was decided in 2004, I have always been under the impression that claims should be construed to preserve their validity only where the claims are first determined to be ambiguous.

The panel first noted that the claims were unambiguous on page 8 of the opinion:

“The unambiguous language of the asserted claims, as well as the disclosure in the specification, requires an added spring element that moves the safety guard toward the tip of the needle.” 

The opinion later goes into the analysis of preserving validity on page 12 of the opinion:


Furthermore, if the hinged arm and spring means are not separate structures, then the asserted claims are clearly invalid as obvious over the prior art.  See Whittaker Corp. v. UNR Indus., Inc., 911 F.2d 709, 712 (Fed. Cir. 1990) (“[C]laims are generally construed so as to sustain their validity, if possible.”). The first three elements of Becton’s claimed invention—the needle, the protective guard, and the hinged arm—were disclosed in several prior art patents. See U.S. Patent Nos. 4,911,706; 4,898,589; 4,790,828. The Hagen patent, U.S. Patent No. 4,735,618, specifically discloses a safety needle, a guard and a hinged arm, which includes hinges comprised of thinned pieces of plastic. What distinguished the claimed invention from the prior art was the addition of a spring means separate from the hinged arm. See ’544 patent col.1 ll.33-34 (discussing “prior art needle shields [that] are hingedly attached to the hub of the needle cannula”).


In contrast, Liebel-Flarsheim v. Medrad, 358 F.3d 898, 911 (2004) states the following:

“This court has frequently alluded to the “familiar axiom that claims should be so construed, if possible, as to sustain their validity.” Rhine v. Casio, Inc., 183 F.3d 1342, 1345 (Fed.Cir.1999) (internal quotation marks omitted). At the same time, however, the court has “admonished against judicial rewriting of claims to preserve validity.” Id. Accordingly, unless the court concludes, after applying all the available tools of claim construction, that the claim is still ambiguous, the axiom regarding the construction to preserve the validity of the claim does not apply. See AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234, 1243 (Fed.Cir.2003) (“That axiom is a qualified one, dependent upon the likelihood that a validity-preserving interpretation would be a permissible one.”); Generation II Orthotics Inc. v. Med. Tech. Inc., 263 F.3d 1356, 1365 (Fed.Cir.2001) (“[C]laims can only be construed to preserve their validity where the proposed claim construction is `practicable,’ is based on sound claim construction principles, and does not revise or ignore the explicit language of the claims.”); Elekta Instrument S.A. v. O.U.R. Scientific Int’l, Inc., 214 F.3d 1302, 1309 (Fed.Cir.2000) (“having concluded that the amended claim is susceptible of only one reasonable construction, we cannot construe the claim differently from its plain meaning in order to preserve its validity”).”

Neither the majority opinion nor the dissent mentioned the Liebel-Flarsheim case.

You can read the Becton Dickinson opinion here: [Read].

Senate Judiciary Committee Hearing for Judge Kathleen O’Malley

Wednesday, July 28th, 2010

The Senate Judiciary Committee Hearing for Federal Circuit nominee Kathleen O’Malley took place this afternoon. The link to the recording of the proceeding is available here: [Link to Webcast]. Judge O’Malley is introduced by Senator Brown at about 23:10 into the recording. The questioning begins at about 35:19 into the recording.

A large contingent of friends and family of Judge O’Malley attended the hearing, including seven of her former law clerks.

Judge O’Malley fielded questions from several members of the committee. In particular, Senator Sessions noted that as a US district court judge, Judge O’Malley had been reversed twice in regard to some death penalty cases. He inquired whether she would be willing to apply the death penalty if confirmed to the Court of Appeals for the Federal Circuit . . . .

Unless Congress significantly revises the penalty for false patent marking, I’m skeptical that Judge O’Malley or any judge sitting on the Federal Circuit will see any death penalty cases in the near future. To give Senator Sessions the benefit of the doubt, I suppose one might encounter such a case while sitting by designation as either a district court judge (as Judge Rader has done recently) or on a panel for another circuit (as Judge Lourie has done recently).

After Senator Sessions completed his questioning, Senator Al Franken of Minnesota questioned Judge O’Malley. His questioning focused on the issue of network neutrality.

Webcast of Senate Judiciary Committee Hearing For Judge Kathleen O’Malley

Tuesday, July 27th, 2010

The Senate Judiciary Committee will hold its hearing for Federal Circuit nominee Kathleen O’Malley tomorrow.  The hearing is scheduled for 2:30 Eastern time: [Link to Webcast].

IP Man

Monday, July 26th, 2010


Since the Bilski decision, I’ve been seeking guidance on what is the definitive test for an “abstract idea.”  I stumbled upon an unlikely source the other day as I was walking past the rental booth at the exit of the grocery store.  Yes, the movie “IP Man” was released on video last week.  I don’t know too much about the movie “IP Man”; but, I’m hopeful it will hold the key.  It might even shed some light on a proper test for “common sense.” 

As far as the man in the movie poster is concerned, I suspect that picture was taken shortly after defeating the “second set of eyes.”

Mattel v. MGA Entertainment

Friday, July 23rd, 2010

The Ninth Circuit yesterday decided the appeal in the Mattel v. MGA Entertainment case concerning a dispute over the Bratz line of dolls. While not a Federal Circuit case, I thought the oral argument might be of interest and a point of comparison to Federal Circuit oral arguments.

The oral argument is available here: [Listen].
The 9th Circuit opinion is available here (Panel: Kozinski, Trott, Wardlaw) [Read].

Slattery v. U.S.

Wednesday, July 21st, 2010

On July 8th, 2010, the Federal Circuit sat en banc to consider the Hyatt v. Kappos case.  On that same day, the court also sat en banc in a case appealed from the U.S. Court of Federal Claims captioned Slattery v. U.S.  It was interesting to note that during the Slattery v. U.S. oral argument, Judge Dyk made reference to a portion of the Bilski decision.  [Listen].

The other interesting fact about the oral arguments of Hyatt v. Kappos and Slattery v. U.S.  is that while Chief Judge Rader presided over both oral arguments he did not ask a single question in either oral argument.  He frequently asks questions in other cases.  So, one might assume that his reticence had to do with his view of his new role as Chief Judge.

You can listen to the entire Slattery v. U.S. en banc oral argument here: [Listen].

Investiture Ceremonies

Tuesday, July 20th, 2010

Presumably at some date in the near future US District Court Judge Kathleen O’Malley and attorney Edward DuMont will be confirmed by the Senate for seats on the US Court of Appeals for the Federal Circuit. I noticed over the weekend while looking at the Seventh Circuit’s web site that the Seventh Circuit puts on quite an investiture ceremony when swearing in a new appellate judge. This might be something for the relevant bar organizations to consider in preparation for the new court members. You can see the Seventh Circuit investiture ceremony presided over by Chief Judge Easterbrook here:  [View]. (Be patient — it takes some time to load.)

Federal Circuit Revamps Web Site

Thursday, July 15th, 2010

The Federal Circuit revamped its web site today with a new look and new functionality.  One of the nice new features is that the most recent oral arguments are listed on a page. 

The opinions page is a bit more cluttered now with decisions on recent motions.  Time will tell whether that additional information is more annoying to filter  through than informative.

Kudos to the Federal Circuit for making as much information as possible easily available to the public.

The meaning of “coupled to” in a patent claim

Wednesday, July 14th, 2010

The Federal Circuit panel in Atser Research Technologies, Inc. v. Raba-Kistner Consultants, Inc., 2010-1088 (Fed. Cir. July 8, 2010) had an opportunity to explore the meaning of “coupled to” in the oral argument of that case.  The case was decided with a rule 36 opinion last week.  So, there is no panel opinion discussing the meaning of “coupled to.”  But, you might find the discussion interesting as it highlights some of the questions running through the minds of judges when they are looking at such language. [Listen].

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

Hyatt v. Kappos en banc

Monday, July 12th, 2010

The Federal Circuit sat en banc last week in the case of Hyatt v. Kappos.  A decision has not yet been issued; but, you can listen to the oral argument here: [Listen].

Death Knell for In re Hilmer?

Saturday, July 10th, 2010

The Federal Circuit recently addressed the In re Hilmer, 359 F.2d 859 (CCPA 1966) case in its decision in In re Giacomini, 2009-1400 (Fed. Cir. July 7, 2010).  In re Hilmer stands for the proposition that a U.S. patent claiming priority to a foreign application has a 102(e) date as prior art as of its U.S. filing date rather than the foreign application filing date.  In contrast, such a U.S. patent has a priority date as of the date of the foreign application filing date.  This has led to the analogy that a foreign application can be used as a shield but not as a sword.

In In re Giacomini, the Federal Circuit noted that a U.S. non-provisional patent application claiming the benefit of a U.S. provisional application is accorded an effective 102(e) date as of the filing date of the U.S. provisional application.  And, the U.S. non-provisional application is also entitled to the priority date of the U.S. provisional application.  Hence, the U.S. provisional application can serve as both a shield and a sword.

Because various treaties require that foreign applications be treated the same as domestic applications, this has raised the issue of whether In re Hilmer is still good law — especially in view of the In re Giacomini decision.  Since not all foreign countries are signatories to the various treaties with the U.S., the analysis may boil down to an analysis of which foreign country serves as the basis for the priority patent application.  To phrase that another way, In re Hilmer addressed all foreign countries.  The proposed change in the law is based on according treaty members equal treatment based on treaties to which those select foreign countries are signatories with the United States.  Since not all foreign countries were signatories to those treaties, the prior art effect of U.S. applications claiming the benefit of foreign applications that were filed in non-signatory countries might still need to be analyzed under In re Hilmer.

The panel in In re Giacomini wrote the following with respect to In re Hilmer:

Giacomini’s distinction between priority date and ef-fective reference date largely stems from In re Hilmer, 359 F.2d 859 (CCPA 1966). The issue in Hilmer was whether a U.S. patent, cited as a section 102(e) prior art reference, was effective as of its foreign filing date under section 119. Id. at 862. This court’s predecessor rejected the Board’s conclusion that “the foreign priority date of a U.S. patent is its effective date as a reference.” Id. at 870. The court instead held that “Section 119 only deals with ‘right of priority.’ The section does not provide for the use of a U.S. patent as an anticipatory reference as of its foreign filing date.” Id. at 862. Thus, Hilmer distinguished a patent’s priority date under section 119 and effective reference date under section 102(e) in cases involving an earlier foreign application. Giacomini equates a U.S. provisional application to a foreign patent application to argue that the Tran provisional’s filing date is not the Tran patent’s effective date as a prior art reference.


But at the time this court’s predecessor decided Hilmer, section 119 only governed the benefit of claiming priority to an earlier filing date in foreign countries. Id. at 862. Congress added section 119(e) along with the enactment of provisional applications in 1994. See Uruguay Round Agreements Act, Pub. L. 103-465, 108 Stat. 4809 (1994). Therefore, broad language in Hilmer concerning section 119 is not applicable to provisional applications. Also, Giacomini misses an important distinction between Hilmer and the present case. Hilmer involved an earlier foreign application while the present case deals with an earlier U.S. provisional application. See Klesper, 397 F.2d at 885 (Hilmer clarified that “domestic and foreign filing dates stand on entirely different footings.”).


Section 102(e) codified the “history of treating the dis-closure of a U.S. patent as prior art as of the filing date of the earliest U.S. application to which the patent is entitled, provided the disclosure was contained in substance in the said earliest application.” Id. (emphasis added). According to Hilmer, an earlier foreign application does not shift a corresponding patent’s effective reference date because section 102(e) explicitly requires the earlier application to be “filed in the United States.” Hilmer, 359 F.2d at 862 (quoting 35 U.S.C. § 102(e)). This court’s predecessor warned that section 119 cannot be read with section 102(e) to modify the express domestic limitation. Id. In contrast, an earlier provisional application is an application “filed in the United States.” 35 U.S.C. § 102(e). Treating a provisional application’s filing date as both the patent’s priority date and its effective reference date does not raise the alleged tension between sections 102(e) and 119. Given the “clear distinction between acts abroad and acts here,” Hilmer, 359 F.2d at 879, Giacomini’s reliance on Hilmer is misplaced. Id.


Accordingly, the Tran patent has a patent-defeating effect as of the filing date of the Tran provisional, or September 25, 2000. Giacomini did not file his application until months after Tran filed his provisional application. Giacomini is not the first to invent in the United States and thus is not entitled to a patent. Because this court affirms the Board’s finding of anticipation based on the Tran patent, this court will not review the Board’s finding with respect to the Teoman patent.

You can listen to Chief Judge Rader, Judge Gajarsa, and Judge Dyk discuss the viability of In re Hilmer with PTO Associate Solicitor Thomas Stoll here: [Listen].

You can read the In re Giacomini opinion here: [Read].

Ad lib comments from the bench

Thursday, July 8th, 2010

In the oral argument of Telcordia Tech., Inc. v. Cisco Systems, Inc., 2009-1175 (Fed. Cir. 2010), Judge Rader expressed his concern in regard to the district court judge deciding claim construction based on ad lib comments by a Federal Circuit judge during a previous oral argument.  You can listen to Judge Rader’s comments here: [Listen].

The following section from the opinion explains the ad lib comment further and how it was utilized by the district court:

The empty payload fields are “empty” of data packets and therefore have non-source bit signals only. The specification explains that “a train of DTDM frames with empty payload fields . . . has a bit rate which defines a basic backbone transmission rate for the DTDM system.” ’306 patent col.7 ll.27-30. Therefore, the bit signals help the DTDM system maintain a bit stream even when it is not transmitting data from an information source. The specification does not specify where in the frame the “bit rate” is stored nor does it specify the type of non-source bits used to maintain the bit rate. Therefore, nothing in the ’306 patent restricts the bit signals in the empty payload field to ones that serve no purpose other than place-holding.


The district court apparently took the explanatory phrase from an ad lib comment made during an oral hearing at the Federal Circuit. In Bell Communications Research, Inc. v. FORE Systems, Inc., Nos. 02-1083, 02-1084, 2003 WL 1720080 (Fed. Cir. Mar. 27, 2003), Bell Communications Research, Inc., now known as Telcordia, asserted the ’306 patent against another defendant. This court reviewed a district court’s construction of the term “empty payload field” in the ’306 patent. Id. In that case, the district court had explained that “a frame’s payload has zero data in it.” Id. at *6. During oral hearing, Bell Communications agreed with Circuit Judge Bryson’s characterization of bits in the “empty payload fields” as “garbage:”


Judge Clevenger: Can we come back to the empty payload field? “Empty” seems to me . . . the com-mon meaning of the word “empty” means there is nothing there. So, you are saying that there is something in the written description that tells me what empty means?


Bell Communications’s Counsel: I am saying . . . .


Judge Clevenger: Where in the written descrip-tion?


Bell Communications’ Counsel: A144, column 7, lines 29-35. And, what you will see there at that point . . . .


Judge Clevenger: There is a bit rate.


Bell Communications’s Counsel: It says, “this train.” It is talking about empty payload field. “This train 10 has a bit rate.” In other words, it’s empty, but it has a bit rate. Because in order to have . . . sometimes there won’t be a packet ready. The stream must continue. There must be a bit in the stream. It just won’t be a data bit, it won’t be a source data bit. It will be a bit. And it will have information in it, but it won’t be source informa-tion.


Judge Bryson: It would just be garbage, I take it. I mean it will just be 1’s and 0’s that have no rela-tionship to the stream of any information that’s coming in from the source.


Bell Communications’s Counsel: Exactly, Your Honor.


The issue on appeal, at least initially, seemed to be whether the district court actually meant “no bit signals of any kind” when it said “zero data.” Id. At oral hearing, however, Fore Systems, Inc. stated its understanding that “‘zero data’ encompasse[d] various bit signals that might maintain the stated transmission rate of a bit stream, including ‘placeholders’ or ‘garbage bits.’” Bell Commc’ns, 2003 WL 1720080, at *6. Because the parties’ agreement on this broader interpretation of “zero data” rendered the claim construction issue moot, this court declined to refine the district court’s construction. Id.


The claim construction issue on appeal in the present case—whether the empty payload field only has bits that act as placeholders—is different from the one in Bell Communications—whether the empty payload field has any bits at all. Circuit Judge Bryson’s comments, there-fore, are not directly relevant to the specific issue in the present case. The district court erred by limiting the claim scope based on the ad lib comment from the bench.


The Federal Circuit is not shy in using in its opinions admissions by counsel that were made during oral argument.  The court has done so perhaps with increasing frequency since recordings of the oral arguments were first made available on the CAFC website.

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

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

Microsoft Requests Extension to File Writ of Certiorari in i4i v. Microsoft case

Sunday, July 4th, 2010

It appears that on June 8, 2010 Microsoft applied for an extension of time within which to file its Writ of Certiorari in the i4i v. Microsoft, 589 F.3d 1246 (Fed. Cir. 2009) case.  That case has the largest affirmed verdict of patent damages in U.S. history — $290 million including interest and post-verdict damages.

You can read the extension request here: [Read].

In re Kite and Hatton

Friday, July 2nd, 2010

If you are interested in KSR issues, you will probably find the oral argument from In re Kite and Hatton, 2009-1579 (Fed. Cir. June 21, 2010)  interesting.  The appeal from the BPAI dealt with a patent claim directed at a method of killing bacteria on catheters.  The applicants had discovered a way of killing all of the bacteria on the catheter as opposed to the prior art that just killed most of the bacteria.  Since bacteria reproduces rapidly, this was a significant development.  The panel was confronted with the issue of whether this was just a new use of a known product (killing all of the bacteria as opposed to some).  My pro-applicant bias might be showing here; but, if it were obvious to kill all bacteria on a catheter using this method why wouldn’t others have adopted it long ago?  Perhaps it was because some of the prior art relied on was directed at the water treatment and oil field water flooding fields rather than the catheter field . . . .

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

You can read the court’s Rule 36 opinion here: [Read].

Co-Pending?? Part 2

Thursday, July 1st, 2010

As a follow up to the previous post, the issue of whether a continuation application filed on the same day that the parent application issues as a patent has been dealt with before by at least one district court case.  In Moaec, Inc. v. MusicIP Corp. et al., 568 F. Supp. 2d 978 (W.D. Wis. 2008), Judge Barbara Crabb (a judge highly respected at the Federal Circuit) decided that the PTO’s practice of allowing same day filings was correct in view of historical practice.  She wrote:

Permitting the filing of a continuation application simultaneously with the patenting of the parent application gains further support from the history of the practice of filing continuation applications that led to § 120. The “continuing application practice was a creature of patent office practice and case law, and section 120 merely codified the procedural rights of an applicant with respect to this practice.” Transco Products Inc. v. Performance Contracting, Inc., 38 F.3d 551, 556 (Fed.Cir.1994). “The legislative history of section 120 does not indicate any congressional intent to alter the Supreme Court’s interpretation of continuing application practice.” Id., 38 F.3d at 557 (citing Godfrey v. Eames, 68 U.S. 317, 1 Wall. 317, 17 L.Ed. 684 (1864)). In Godfrey, the Supreme Court addressed the continuing application practice and held that when a patent application was withdrawn and a new application regarding the same invention was filed the same day, the applications together constituted “one continuous application.” Godfrey, 68 U.S. at 325-26. Such reasoning supports the conclusion that the § 120 copendency requirement’s underlying purpose of permitting “one continuous application” is not frustrated by permitting a later-filed application to be filed on the same date that a patent issues on its parent application.

Because the PTO’s interpretation of the § 120 copendency requirement is consistent with the statute and patent applicants are entitled to rely on it, the interpretation is due judicial deference. In accordance with the PTO’s Manual of Patent Examining Procedure § 201.11, plaintiff’s May 15, 2001 patent application, which resulted in the ‘886 patent, satisfies the § 120 copendency requirement because it was filed on the same date, May 15, 2001, as the patenting of its parent application. Therefore, I find that defendant has failed to establish its contention that plaintiff cannot obtain the benefit of the earlier filing date of the application that resulted in the ‘283 patent for failure to satisfy the copendency requirement under § 120.

The Moaec case was settled last summer while on appeal to the Federal Circuit.

You can read Judge Crabb’s entire decision here: [Moaec v. MusicIP].