Archive for March, 2011

Disparate Times Call for Disparate Measures

Wednesday, March 30th, 2011




Litigation or Prosecution


Dayco Products v. Total Containment, 329 F.3d 1358 (Fed. Cir. 2003)


Judges Mayer, Michel, and Dyk


Failure to cite office action from prosecution of application “A” to PTO in prosecution of related application “B”. 


Court noted “[t]his court has never addressed whether the prior rejection of a substantially similar claim in a copending United States application is material under the reasonable examiner standard.


Remand to District Court to determine intent and possible loss of patent for inequitable conduct

In re Violation of Rule 28(c), 388 F.3d 1383 (Fed. Cir. 2004)


Judges Michel, Clevenger, and Dyk

Inadvertent violation of Federal Rule 28(c) by raising unpermitted issues on 20 of the 23 pages of a cross-appeal reply brief.   


Court noted that “[s]o far as we have been able to determine, this court has not in the past exercised its authority to impose sanctions for ‘inadvertent’ violations of applicable court rules.  Under these circumstances, we conclude that the imposition of sanctions in this case is not appropriate.”


No sanction

McKesson Information Solutions v. Bridge Medical, 487 F.3d 897 (Fed. Cir. 2007)


Judges Clevenger and Bryson


Judge Newman in dissent.

Failure to cite a notice of allowance from application “A” to PTO in related patent application “B” where both “A” and “B” were being prosecuted before the same examiner.


Loss of patent for inequitable conduct

In re Violation of Rule 28(d), M-976, (Fed. Cir. March 29, 2011)


Judges Dyk, Prost, and Moore


Violation of rule 28(d) in briefs submitted to the Federal Circuit. 

Court’s opinion referred to it as a “severe” violation.


$1000 fine


Chief Judge Michel to Visit Denver

Monday, March 28th, 2011

If you happen to be in Denver on April 14, 2011, you might want to attend the Colorado Bar Association’s monthly IP section meeting.  The Honorable Paul Michel, former Chief Judge of the Federal Circuit, will be speaking on “What Patent Reform Legislation Will Mean for Clients and How You Can Protect Them.” 

More details are available here: [Details].

Entrepreneurial Activity by State

Sunday, March 27th, 2011

The Kauffman Foundation released an interesting report this month on the entrepreneurial activity in the United States.  Apparently, entrepreneurial activity in 2010 was the highest since 1996.  The link to the report is available here: [Link].  I found the interactive map and chart of entrepreneurial activity by state to be particularly interesting. 

Nevada, Georgia, California, Louisiana, and Colorado were noted as having the highest level of entrepreneurial activity.  Kudos to Mississippi, a perennial cellar dweller in so many other surveys, which had an entrepreneurial ranking near the top of the list.  You can access the chart here to see how your state ranks: [Link].

As far as major metropolitan areas are concerned, Los Angeles, Houston, and Atlanta took home the top three spots for entrepreneurial activity.

Videos of Ninth Circuit Oral Arguments

Saturday, March 26th, 2011

The Ninth Circuit continues to set the bar for its sister circuits in regard to the use of technology at oral argument.  The Ninth Circuit now has videos of some oral arguments available on its web site.  The Federal Circuit, while being the nation’s technology court, has not yet achieved that milestone.  Meanwhile, at least one circuit court (Tenth Circuit) requires filing a motion to the court in order to request a recording of an oral argument.

Here is a link to a video of a recent Ninth Circuit oral argument video concerning copyright issues: [Larry Montz v. Pilgrim Films & Television, Inc.].

The Ninth Circuit also has its own YouTube channel:

Supreme Court Patent Case of the Week — Ex parte Wood & Brundage (1824)

Friday, March 25th, 2011

22 U.S. 603 (1824)

9 Wheat. 603


Supreme Court of United States.

March 11, 1824.

March 17, 1824.

This cause was argued by Mr. Haines,[a] in support of the rule, and by Mr. Emmett,[b] against it.

Mr. Justice STORY delivered the opinion of the Court.

The District Judge of the southern district of New-York, under the 10th section of the patent act, of the 21st of February, 1793, chapter 11., granted a rule upon Charles Wood and Gilbert 604*604 Brundage, at the instance and complaint of Jethro Wood, to show cause why process should not issue against them, to repeal a patent granted to them for a certain invention, in due form of law; and upon hearing the parties, no sufficient cause being, in his judgment, shown to the contrary, he, on the 2d day of July, 1823, passed an order, that the said rule be made absolute, and that the said patent be repealed; and that process issue to repeal the said patent, and for the costs of the complainant. The patentees, by their counsel, moved the Court to direct a record to be made of the whole proceedings, and that process, in the nature of a scire facias, should be issued, to try the validity of the patent. The Court denied the motion, upon the ground that these were summary proceedings, and that the patent was repealed de facto, by making the rule absolute; and that the process to be issued, was not in the nature of a scire facias, to try the validity of the patent, but merely process repealing the patent.

A motion was made, on a former day of this term, in behalf of the patentees, for a rule upon the district Judge, to show cause why a mandamus should not issue from this Court, directing him to make a record of the proceedings in the cause, and to issue a scire facias, for the purpose of trying the validity of the patent. The rule having been granted, and due service had, the case has since been argued by counsel, for and against the rule; and the opinion of this Court is now to be delivered.

Two objections have been urged at the bar, 605*605 against the making this rule absolute. The first is, that these proceedings, being summary, are not properly matters of record. The second, that this is not a case in which, by law, a scire facias, or process in the nature of a scire facias, can be awarded, to try the validity of the patent.

Both of these objections are founded upon the provisions of the 10th section of the patent act, and must be decided by a careful examination of those provisions. The words are, “that, upon oath or affirmation being made, before the Judge of the District Court, where the patentee, his executors, &c. reside, that any patent, which shall be issued in pursuance of this act, was obtained surreptitiously, or upon false suggestion, and motion made to the said Court within three years after issuing the said patent, but not afterwards, it shall and may be lawful for the Judge of the said District Court, if the matter alleged shall appear to him to be sufficient, to grant a rule that the patentee, or his executor, &c. show cause why process should not issue against him, to repeal such patent; and if sufficient cause shall not be shown to the contrary, the rule shall be made absolute; and thereupon, the Judge shall order process to be issued against such patentee, or his executors, &c., with costs of suit. And in case no sufficient cause shall be shown to the contrary, or if it shall appear that the patentee was not the true inventor or discoverer, judgment shall be rendered by such Court for the repeal of the said patent. And if the party at whose complaint the process issued, shall have judgment given against him, he shall pay all 606*606 such costs as the defendant shall be put to in defending the suit, to be taxed by the Court, and recovered in due course of law.”


The Patent Act of 1793

Monday, March 21st, 2011

Recently, I was looking for more information on the state granted business monopoly (business method??)  that was at the heart of the dispute in Gibbons v. Ogden when I ran across the book Gibbons v. Ogden, Law, and Society in the Early Republic.   The author, Thomas H. Cox, recounts the legislative process for the Patent Act of 1793:

The Patent Act of 1790 appeared simple, but in practice, it proved unworkable.  Many inventors complained that federal patents were expensive, hard to obtain, impossible to enforce, and limited in scope. Secretary of State Thomas Jefferson condemned the very concept of patents as antidemocratic. In truth, he  and his colleagues lacked the time to review applications. On February 4, 1791, Jefferson lobbied Congress to revise existing U.S. patent law. Three days later, he submitted a bill that made the application process more costly and timeconsuming.  Specifically, the bill required an applicant to petition the secretary of state for a warrant that testified to the usefulness of the invention. After paying a fee directly to the treasury, the inventor then had to register with every U.S. federal district court and publish notices of the invention three times in a major paper in each of those districts to warn away other competitors.

While Jefferson drafted the bill, the Patent Board reviewed requests from John Fitch, James Rumsey, Henry Read, and John Stevens. To avoid confrontations, the board canceled a hearing with the inventors and urged them to wait for the passage of the new patent bill, which was before Congress at the time. Fitch protested the bill, stating he “had no idea that he must go all the way from Kentucky to Cape Cod, and quite the Distance of Province of Main[e] to publish his inventions, and to pay out large fees wherever he goes for the same.” For once on the same side as Fitch, Joseph Barnes published a polemic that condemned Jefferson’s bill for favoring European technological discoveries over American inventive genius. Despite Barnes’s strong words, the ever-wary Fitch suspected Jefferson and Rumsey of collusion to keep him from developing a steamboat franchise.

Jefferson resubmitted his bill to Congress early in March 1792. The measure now required an applicant to register with the secretary of state, pay a fee, and provide a short description and model of the invention. The inventor, however, still had to file and register the patent in every judicial district in the United States. The new bill also allowed an offender to claim ignorance of the law or irrelevancy of the patent in question as valid defenses. It specified that patents were the private, intellectual property of their owners and that the public would not be allowed to view related documents until the originals expired. In addition, the bill asserted that federal patents trumped any state licenses granted before the

ratification of the U.S. Constitution. Furthermore, applicants had to be American citizens.

When Congress reconvened in January 1793, it appointed a committee, chaired by Hugh Williamson, to consider Jefferson’s bill. The following month, the bill passed both houses of Congress to become the Patent Act of 1793. In 1800, Congress revised the act to allow resident aliens to apply and to set heavy fines for those who infringed on patent rights.  However, like its predecessor, the revised act allowed applicants to secure patents for inventions regardless of how similar their discoveries might  be. Fitch, Rumsey, Read, and Stevens quickly secured federal patents for their steamboats under the new federal guidelines. However, realizing the worthlessness of such documents, the inventors quickly turned to the states to protect their work.


 Gibbons v. Ogden, Law and Society in the Early Republic, Ohio University Press-Swallow Press, 2009 at pp. 14-15.

Supreme Court Patent Case of the Week — Gibbons v. Ogden (1824)

Saturday, March 19th, 2011

22 U.S. 1 (1824)9 Wheat. 1

GIBBONS, Appellant,
OGDEN, Respondent.

Supreme Court of United States.

February 4, 5, and 6, 1824.

March 2, 1824.

3*3 Mr. Webster, for the appellant.

Mr. Oakley, for the respondent.

186*186 Mr. Chief Justice MARSHALL delivered the opinion of the Court, and, after stating the case, proceeded as follows:

The appellant contends that this decree is erroneous, because the laws which purport to give the exclusive privilege it sustains, are repugnant to the constitution and laws of the United States.

They are said to be repugnant —

1st. To that clause in the constitution which authorizes Congress to regulate commerce.

2d. To that which authorizes Congress to promote the progress of science and useful arts.

The State of New-York maintains the constitutionality of these laws; and their Legislature, their Council of Revision, and their Judges, have repeatedly concurred in this opinion. It is supported by great names — by names which have all the titles to consideration that virtue, intelligence, and office, can bestow. No tribunal can approach the decision of this question, without feeling a just and real respect for that opinion which is sustained by such authority; but it is the province of this Court, while it respects, not to bow to it implicitly; and the Judges must exercise, in the examination of the subject, that understanding which Providence has bestowed upon them, with that independence which the people of the United 187*187 States expect from this department of the government.


Things they don’t teach you in law school . . .

Wednesday, March 16th, 2011

Demonstrating gloves can be tricky business during oral argument.  In response to a question from Judge Moore, one appellant was recently demonstrating how language describing the “proximal A2 pulley region” of a finger should be construed.  Before he started, she warned him off from using his middle finger to demonstrate.  [Listen].

In case you’re curious how the case turned out, you can read the court’s opinion here: [Read].

Should proximity in time play a role in a “common sense” obviousness analysis

Sunday, March 13th, 2011

In the recent oral argument of Cimline, Inc. v. Crafco, Inc., Chief Judge Rader raised an interesting issue with respect to the timing of an obviousness analysis when the analysis turns on the application of “common sense.”  As you will hear in the following excerpt, the references issued at least ten years before the date of invention.  Chief Judge Rader inquired whether it really was “common sense” to combine the references if it took ten years for someone to make the combination. [Listen].

While historically one thinks of timing as being irrelevant when it comes to combining references, perhaps there should be a requirement that gaps in time be considered when a party or a court takes the intellectually easy road of relying on “common sense.”

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

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

Supreme Court Patent Case of the Week — Evans v. Eaton (1822)

Saturday, March 12th, 2011

20 U.S. 356 (1822)

7 Wheat. 356


Supreme Court of United States.

March 4, 1822.

March 20, 1822.

357*357 Mr. C.J. Ingersoll,[a] for the plaintiff.

Mr. Sergeant, contra.


This is an action for an infringement of the plaintiff’s patent, which the plaintiff alleges to be,

1. For the whole of the machine employed in the manufacture of flour, called the Hopperboy.

2. For an improvement on the Hopperboy.

The question is, is the plaintiff entitled to recover upon either of these claims? The question is stated 358*358 thus singly, because the defendant admits that he uses the very Hopperboy for which the patent is, in part, granted, and justifies himself by insisting,

1st. That the plaintiff was not the original inventor of, but that the same was in use prior to the plaintiff’s patent, the Hopperboy as patented.

2d. That his patent for an improvement is bad; because the nature and extent of the improvement is not stated in his specification; and if it had been, still the patent comprehends the whole machine, and is therefore too broad.


“Aspect of the invention”

Thursday, March 10th, 2011

In the book Drafting Patents for Litigation and Licensing (published by BNA Books and the ABA section of Intellectual Property) the authors caution that to avoid an argument that a patent specification has described an invention narrowly, patent drafters should avoid making references to specific features or aspects of “the invention” or “the present invention.”  Instead, all features, aspects, and characteristics should be described as being possible or potential or exemplary embodiments of the invention.

In the recent oral argument of St. Clair Intellectual Property Consultants, Inc. v. Canon, Inc., the appellant indeed made an “aspect of the invention” argument.  Judges Moore and Dyk seemed unconvinced, with Judge Moore commenting that “aspect of the invention” doesn’t necessarily require that every claim have that aspect.  [Listen]  Nevertheless, patent prosecutors might want to take heed that such arguments are actually being made against their work product during patent litigation and that not all judges think alike.

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

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

Oral argument addresses the word “having” in a patent claim

Wednesday, March 9th, 2011

If you use the word “having” interchangeably with the word “comprising” in your claim drafting practice, you might want to listen to the oral argument in Biopolymer Engineering, Inc. and Massachusetts Institute of Technology v. Immunocorp, et al., 2010-1096 (Fed. Cir. Feb. 22, 2011).  The counsel for plaintiff-appellant spent most of the oral argument trying to persuade the panel that the district court had inappropriately given “having” a closed meaning such as that given to “consisting of” in patent claims rather than an open meaning as typically applied to “comprising” in patent claims.  The claim at issue read as follows:

A method for improving the growth and survival of animals comprising: administering an effective amount of a nutritional supplement to an animal, said nutritional supplement comprising water-insoluble yeast cell wall extract comprising purified beta (1,3) glucan having a particle size of about 1.0 micron or less.

The plaintiff-appellant argued that the district court had erred by excluding administration of nutritional supplements that included particle sizes less than about 1.0 micron as well as particle sizes greater than about 1.0 micron.

The panel affirmed the district court decision via a Rule 36 opinion without weighing in on the “having” argument in a written opinion. 

You can listen to the oral argument here: [Listen].  The pertinent discussion begins at about the 3:07 minute mark.

The district court’s claim construction opinion is available here: [Read].

The Federal Circuit per curiam opinion is available here: [Read].

For more on “having” see Crystal Semiconductor Corp. v. Tritech Microelecs. Int’l, Inc., 246 F.3d 1336 (Fed. Cir. 2001) and Regents of University of California v. Eli Lilly and Co., 119 F.3d 1559 (Fed. Cir. 1997).

Senate Judiciary Committee Publishes Federal Circuit Nominee Jimmie Reyna’s Answers to Questions for the Record

Tuesday, March 8th, 2011

The Senate Judiciary Committee has posted Federal Circuit nominee Jimmie V. Reyna’s answers to the committee’s written questions.  Mr. Reyna’s answers are available here: [Read].  Astonishingly, one of the committee members did finally ask a nominee a question related to intellectual property.

A Senate Judiciary Committee hearing for Federal Circuit nominee Edward DuMont, who was initially nominated on April 14, 2010, has yet to be set.

Recusal in Association for Molecular Pathology v. United States Patent and Trademark Office?

Monday, March 7th, 2011

The Federal Circuit has published the oral argument schedule for April 2011 which includes the case of Association for Molecular Pathology v. United States Patent and Trademark Office.  The schedule reads as follows:

Panel B+:  Monday, April 4, 2011, 10:00 A.M., Courtroom 201


Panel B:  Monday, April 4, 2011, 10:00 A.M., Courtroom 201

2011-5017 CFC SILER V US [on the briefs]

When the Federal Circuit splits panels in this way, i.e., “B” and “B+,” it means that the make-up of the judges on the respective panels will be different.  This sometimes highlights a recusal by one of the judges from the “+” case.  But, it can be for other reasons as well. 

What is unique about the Association for Molecular Pathology case is that the ACLU filed a motion for the recusal of Chief Judge Rader back in June 2010. [ACLU Motion].  So, I suspect there will be much interest in whether Chief Judge Rader was on the original panel and did recuse himself.

Other possible reasons why the panel make-up might be different are that:

1) Judge O’Malley might have originally been on the panel but chose to recuse herself because her husband’s firm (Covington and Burling) has filed an amicus brief;

2)  Judge Moore might have originally been on the panel but chose to recuse herself because her husband’s firm (Latham and Watkins) might be involved in some way, such as an amicus brief;

3)  A senior judge opted to hear fewer cases that month and opted out of the additional case; or

4)  The court might be using a five judge panel, as it has recently done in the Rambus appeals.

Time will tell.

Supreme Court Oral Argument in Board of Trustees of Leland Stanford Junior Univ. v. Roche Molecular Systems, Inc.

Friday, March 4th, 2011

The Supreme Court heard oral argument in Board of Trustees of Leland Stanford Junior Univ. v. Roche Molecular Systems, Inc. this past week. 

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

The Federal Circuit opinion is available here: [Read].