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].