Archive for October, 2010

Happy Anniversary

Sunday, October 31st, 2010

If you felt a shot of adrenalin coursing through your veins this morning, it just might have been your sympathetic nervous system celebrating the third anniversary of Judge Cacheris preliminarily enjoining the PTO continuation rules.  Yes, it has already been three years — but, it still brings a smile to my face just thinking about it.  If your experience was anything like mine, you might remember intermittent shouts of celebration in your office as people learned through email that the rules had been enjoined.

Kudos to Triantafyllos Tafas, Kelley Drye & Warren LLP, GlaxoSmithKline, Sherry Knowles, and Kirkland and Ellis LLP for challenging those ill-conceived rules.

Construing the phrase “optical signal”

Monday, October 25th, 2010

The oral argument in Cheetah Omni v. Samsung Electronics, et al., 2010-1169 (Fed. Cir. Oct. 12, 2010) is interesting in that it dealt with the construction of the term “optical signal” and whether in view of the underlying facts for the patent at issue that term should be construed to mean that information must be carried by the “optical signal.” 

The plaintiff-appellant argued that in view of the facts, such as (1) that the claim language recited “optical signal carrying information” (which would make the language “carrying information” redundant if “optical signal” itself were construed to mean carrying information) and that (2) the patent office only applied references during prosecution that were light beams not including information, among other arugments, that the term “optical signal” should be construed to mean that no information may be carried by the optical signal.  The defendant-appellee noted that all four examples in the specification used “optical signal” to mean that information was carried by the optical signal.

Curiously, the Federal Circuit issued another Rule 36 opinion.  It seems to me that the appellant’s redundancy argument warrants a more detailed opinion and takes the appeal out of Rule 36 territory.

Judge Clevenger made the following comment that there is no such thing as one hundred percent certitude when it comes to claim construction: [Listen]. 

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

Here is a link to the court’s Rule 36 opinion: [Link].

Be Careful with Your “Confidential” Markings in Federal Circuit Briefs

Thursday, October 21st, 2010

This is an interesting sound bite from the oral argument of ESN, LLC v. Cisco Systems, Inc. et al., 2010-1185 (Fed. Cir. Oct. 8, 2010).  Judges Prost,  Rader, and Dyk commented on the trend by parties filing briefs at the Federal Circuit to mark a lot of the material as “Confidential.”   Judge Dyk characterized excessive confidential markings in appeal briefs as an “absolute plague.”  Chief Judge Rader indicated the court might just go ahead and use the “confidential” material in its opinion anyway, if it needed to do so . . . .  The panel ultimately issued a Rule 36 opinion; so, no confidential material was published by the court.

You can listen to Judges Prost and Dyk and Chief Judge Rader comment here:  [Listen].

Patent Models in the Oval Office

Monday, October 18th, 2010

Incoming US Presidents typically redecorate the Oval Office at the White House.  C-span conducted an interview with President Obama recently.  One of the notable changes for readers of this blog is that patent models from the late 1800’s now adorn the shelves of the oval office:


Henry Williams’ 1877 feathering paddlewheel for steamboats

Henry Williams’ 1877 feathering paddlewheel for steamboats

John Peer’s 1874 gear-cutting machine

John Peer’s 1874 gear-cutting machine

Samuel Morse’s 1849 telegraph

Samuel Morse’s 1849 telegraph

Missing Historical Patent Documents from the National Archives

Sunday, October 17th, 2010

The National Archives needs your help in locating lost and stolen documents.  Among those historical documents are what the National Archives describes as Eli Whitney’s Cotton Gin Patent but then states it to be a drawing made circa 1804 in response to a court case in Georgia:


Patent documents concerning the Wright Brothers’ Flying Machine patent:


How to report a missing document to the National Archives:

  • E-mail:
  • Surface mail:

    Missing Documents
    Office of the Inspector General
    National Archives and Records Administration
    8601 Adelphi Road, College Park, MD 20740

  • Telephone by calling:

    (301) 837-3500 (Washington, D.C. Metro area)
    800-786-2551 (toll-free and outside the Washington, D.C. Metro area)

Please be ready to provide as much of the following information as possible:

  1. Your full name and contact information (E-mail, Daytime Telephone Number, Fax Number, Mailing Address).
  2. A description of the document(s) and why you believe it is a U.S. government document, including the document creator, creating agency, addressee, date, and physical description (e.g., size, format, type, and any signatures or markings that helped you you determine it was a U.S. government record).
  3. Where the document is now, including the name, address, telephone, web site, and e-mail addresses of the individual or organization holding the document.
  4. Whether the document is about to be auctioned, transferred, or disposed of in some way, including the nature of the action (e.g., auction, ownership transfer), the proposed date and nature (e.g., online, in person) of the auction, and who has transferred or placed the materials at the auction (if known).
  5. Why you believe the document may belong to the National Archives: State, for example, if the document in question is an original Presidential pardon or a treaty.
  6. Other Information: List any additional information that would be helpful in determining whether the historical document is a U.S. governmental record such as Federal agency file code markings, signatures, or address lines to governmental officials.

Privacy note:   NARA encourages and welcomes anonymous tips on lost or stolen documents. It is the policy of NARA and the Office of the Inspector General to protect the identity of any source who provides information regarding lost or stolen documents.

Justices Kennedy and Stevens Announcing Their Bilski Opinions

Saturday, October 16th, 2010

     On the days that the Supreme Court of the United States releases its opinions, the justice who authored the majority opinion for the Court typically reads a summary of that opinion.  In the announcement of the Bilski v. Kappos opinion back in June 2010, Justice Kennedy read a summary of his majority opinion [Listen] and Justice Stevens read a summary of his concurring opinion [Listen].

You thought we’d mess it up

Thursday, October 14th, 2010

In the future, I hope to bring you some additional sound bites  from the Bilski oral argument.  Here’s one of the more famous comments: [Listen].

Audio Recording of Bilski Oral Argument Now Available

Monday, October 11th, 2010

The Supreme Court has finally released the audio recording of the oral argument in Bilski v. Kappos, 561 U.S. ___ (2010).

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

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

J. Michael Jakes of Finnegan Henderson argued on behalf of Mr. Bilski.

Malcolm L. Stewart argued on behalf of the government.

Have robe, will travel

Sunday, October 10th, 2010

The judges of the Court of Appeals for the Federal Circuit are  a hard-working lot.  Despite being short-handed by  one – three circuit judges during the year, they have been sitting by designation in other circuits in addition to shouldering their normal workload.  So far this year, the judges have sat by designation as shown below:

Judge Lourie     Third Circuit     February 25-26

C.J. Michel*         Third Circuit      March 8-9

Judge Friedman   Ninth Circuit     April 4-8

Judge Archer     Ninth Circuit      April 15-16

Judge Rader**      Fifth Circuit      April 26-30

Judge Moore       Fifth Circuit       May 10-14

Judge Clevenger  Eighth Circuit     June 14-16

Judge Gajarsa      First Circuit       July 26-27

Judge Dyk         First Circuit        July 28-29.


*Now retired (but still working hard)

** Now Chief Judge

Eli Lilly v. Teva

Thursday, October 7th, 2010

In the oral argument of Eli Lilly v. Teva, 2010-1005 (Fed. Cir. Sept. 1, 2010), Chief Judge Rader noted a “supreme irony” that Lilly was the target of a written description defense shortly after Lilly relied on a written description defense in Ariad v. Eli Lilly: [Listen].

You can read the opinion here: [Read].

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

Federal Circuit Uses Five Judge Panels in Rambus Appeals

Wednesday, October 6th, 2010

The Federal Circuit is using five judge panels in the rehearing of the two Rambus cases on appeal at the Federal Circuit.  The court heard oral argument this morning in Micron Technology v. Rambus (2009-1263) and Hynix Semiconductor v. Rambus (2009-1299).  Judges Newman, Lourie, Bryson, Gajarsa, and Linn constitute the panels for each appeal.

On June 9, 2010, the court ordered re-hearing of these appeals which had originally been argued back in April of 2010.

Former US Solicitors General Arguing at the Federal Circuit

Monday, October 4th, 2010

I thought it was interesting that September featured opinions in Federal Circuit appeals that had been argued by two former US Solicitors General, Seth Waxman and Paul Clement. In addition, former US Solicitor General Ted Olson just recently filed a Petition for Writ of Certiorari on behalf of Microsoft in the I4I v. Microsoft case. That made me curious just how often former US Solicitors General get involved with patent cases, particularly how often they argue at the Federal Circuit.

It turns out the list is pretty slim. From what I could tell, only Seth Waxman, Ken Starr, and Paul Clement have argued cases in the last four years that the Federal Circuit has been recording oral arguments.

Here are links to those oral arguments if you want to take a listen:

Seth P. Waxman

Monsanto v. Scruggs (Fed.Cir. 2006) [Listen] [Read].

Tivo v. Echostar (Fed. Cir. 2008) [Listen Part I] [Listen Part II] [Read].

Depuy v. Medtronic (Fed. Cir. 2009) [Listen] [Read].

Tivo v. Echostar (Fed. Cir. 2010) [Listen] [Read (Now vacated)].

Medtronic v. Brainlab (Fed. Cir. 2010) [Listen] [Read].

Spine Solutions v. Medtronic (Fed. Cir. 2010) [Listen] [Read].


Kenneth W. Starr

Kyocera v. ITC (Fed. Cir. 2008) [Listen Part I] [Listen Part II] [Read].


Paul D. Clement

Romala Stone v. Home Depot (Fed. Cir. 2010) [Listen] [Read]

Federal Circuit Nominee Mr. Jimmie V. Reyna

Friday, October 1st, 2010

As you may know, President Obama has nominated Mr. Jimmie V. Reyna to fill the last remaining vacancy on the United States Court of Appeals for the Federal Circuit. [Press Release]  I could not find any audio of Mr. Reyna arguing at the Federal Circuit in recent years. However, I did see that he has argued at least one case there:   Asociacion Colombiana de Exportadores de Flores et al. v. U.S., 901 F.2d 1089 (Fed. Cir. 1990).

Here is video of Mr. Reyna at a press conference in 2009 discussing the nomination of Justice Sonia Sotomayor to the US Supreme Court: