Archive for August, 2010

Billion Dollar Bolus

Friday, August 6th, 2010

You probably already saw retired Chief Judge Michel’s editorial in yesterday’s New York Times (and mentioned on the Patently-O blog today).  If not, here is the link: [LINK].

The goal of the $1 B infusion into the Patent Office is to reduce the backlog of patent applications over the next few years.  If you haven’t sent the article to your clients, congressional representatives, or editor at your local business journal, you might want to do so.  After all, all politics is local.  Here are links for helping you contact your local congressperson, if you are interested in doing so: [HOUSE] [SENATE].

While it is easy to see where the PTO could spend the money and increase staffing, increasing the ranks of registered patent attorneys to respond to the increase in applications being processed could be a different matter.  I suspect associate salaries could be in store for a roller coaster ride if such funding is secured.

Charles Dickens at the Federal Circuit

Thursday, August 5th, 2010

The other day in WebZero v. Clicvu, Judge Bryson characterized an argument as being akin to Charles Dickens’ character Wilkins Micawber:

As we have noted before, a party seeking further discovery under Rule 56(f) is “required to state with some precision the materials he hope[s] to obtain with further discovery, and exactly how he expect[s] those materials would help him in opposing summary judgment. It is not enough simply to assert, à la Wilkins Micawber, that ‘something will turn up.'” Simmons Oil Corp. v. Tesoro Petroleum Corp, 86 F.3d 1138, 1144 (Fed. Cir. 1996). Accordingly, we hold that the district court did not abuse its discretion in failing to order additional discovery.

That got me to thinking that if I were ever to analogize a Supreme Court patent case to a fictional character, I would have to opt for KSR v. Teleflex and Charles Edward Biffen (a.k.a. “Biffy”):

“And there in a nutshell you have Charles Edward Biffen.  As vague and woolen-headed a blighter as ever bit a sandwich.”

                                                                                                                    —  Carry On, Jeeves by P.G. Wodehouse


Liebel-Flarsheim Acknowledged

Wednesday, August 4th, 2010

Judge Dyk acknowledged the role of Liebel Flarsheim v. Medrad when construing patent claims.  Judge Dyk’s dissenting opinion today in Intervet, Inc. v. Merial Ltd., 2009-1568 (Fed. Cir. Aug. 4, 2010) stated in-part:

I write separately primarily to make clear that in construing the claims, we are not deciding that the claims as construed are limited to patentable subject matter. As we noted in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), we do not take validity into account in construing claims, unless “the court concludes, after applying all the available tools of claim construction, that the claim is still ambiguous.” Id. at 1327 (quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 911 (Fed. Cir. 2004) (quotation marks omitted)). That is not the case here.


The majority opinion responded to this part of Judge Dyk’s dissent with a footnote:

4 We do not address the issues of validity and non-patentable subject matter discussed by the dissent  because these issues were not addressed by the district court or raised on appeal.  

It would seem that Judge Dyk was taking the opportunity to reassure the patent bar that Liebel-Flarsheim is to be followed despite the recent failure to adhere to it in  Becton Dickinson and Co. v. Tyco Healthcare Group, LP, 2009-1053 (July 29, 2010).


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

Larson v. Aluminart

Tuesday, August 3rd, 2010

The U.S. District Court for the District of South Dakota recently issued its opinion in Larson Mfg. Co. v. Aluminart Products Ltd., CIV 03-4344 (D.S.D. July 29, 2010).  You might recall that this case was on remand from the Federal Circuit to consider inequitable conduct issues concerning the failure to cite office actions from related cases. 

The court applied the three part test for inequitable conduct finding that (1) two omitted office actions were highly material; (2) clear and convincing evidence of intent to deceive the USPTO was established and unrebutted; and (3) in balancing the equities, Larson’s conduct was not so egregious as to warrant holding the patent unenforceable.

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