Archive for April, 2011

Supreme Court Patent Case of the Week — Weston v. Charleston (1829)

Tuesday, April 26th, 2011

27 U.S. 449 (1829)2 Pet. 449


Supreme Court of United States.

451*451 The case was argued by Mr Hayne, for the plaintiffs in error; and by Mr Cruger and Mr Legare, for the defendants.

463*463 Mr Chief Justice MARSHALL delivered the opinion of the Court.

This case was argued on its merits at a preceding term; but a doubt having arisen with the Court respecting its jurisdiction in cases of prohibition, that doubt was suggested to the bar, and a re-argument was requested. It has been reargued at this term.

The power of this Court to revise the judgments of a state tribunal, depends on the 25th section of the judicial act. That section enacts “that a final judgment or decree in any suit in the highest court of law or equity of a state in which a decision in the suit could be had,” “where is drawn in question the validity of a statute or of an authority exercised under any state, on the ground of their being repugnant to the constitution, treaties, or laws of the United States, and the decision is in favour of such their validity,” “may be re-examined and reversed or affirmed in the Supreme Court of the United States.”

In this case the city ordinance of Charleston is the exercise of an “authority under the state of South Carolina,” 464*464 “the validity of which has been drawn in question on the ground of its being repugnant to the constitution,” and “the decision is in favour of its validity.” The question therefore which was decided by the constitutional court, is the very question on which the revising power of this tribunal is to be exercised, and the only inquiry is, whether it has been decided in a case described in the section which authorises the writ of error that has been awarded. Is a writ of prohibition a suit?

The term is certainly a very comprehensive one, and is understood to apply to any proceeding in a court of justice, by which an individual pursues that remedy in a court of justice, which the law affords him. The modes of proceeding may be various, but if a right is litigated between parties in a court of justice, the proceeding by which the decision of the court is sought, is a suit. The question between the parties, is precisely the same as it would have been in a writ of replevin, or in an action of trespass. The constitutionality of the ordinance is contested; the party aggrieved by it applies to a court; and at his suggestion, a writ of prohibition, the appropriate remedy, is issued. The opposite party appeals; and, in the highest court, the judgment is reversed and judgment given for the defendant. This judgment was, we think, rendered in a suit.

We think also that it was a final judgment in the sense in which that term is used in the 25th section of the judicial act. If it were applicable to those judgments and decrees only in which the right was finally decided, and could never again be litigated between the parties, the provisions of the section would be confined within much narrower limits than the words import, or than congress could have intended. Judgments in actions of ejectment, and decrees in chancery dismissing a bill without prejudice, however deeply they might affect rights protected by the constitution, laws, or treaties of the United States, would not be subject to the revision of this Court. A prohibition might issue, restraining a collector from collecting duties, and this Court would not revise and correct the judgment. The word “final” must be understood in the section under consideration, as applying 465*465 to all judgments and decrees which determine the particular cause.

We think then that the writ of error has brought the cause properly before this Court.

This brings us to the main question. Is the stock issued for loans made to the government of the United States liable to be taxed by states and corporations?


Impromptu Comments on Software Patents During Oral Argument

Sunday, April 24th, 2011

If you practice in the software patent arena, you might find the following comments by Judge Moore of interest with respect to section 101 and 103 issues.

In Classen Immunotherapies v. Biogen-Idec, et al., 2006-1634 (Fed. Cir. Dec. 19, 2008), she commented about applying a mental process exception so broadly under 35 U.S.C. §101 that it would lead down a slippery slope to invalidate all software patents:  [Listen].  Classen was decided prior to the Supreme Court’s opinion in Bilski.

In In re Rackman, 2009-1217 (Fed. Cir. Nov. 4, 2009), she pushed back on the PTO’s assertion that it was obvious to combine references if they merely enhanced functionality of the underlying reference, as to do so would arguably make every software invention obvious: [Listen].

You can read the court’s opinions in Classen and Rackman [here] and [here], respectively.

You can listen to the entire oral arguments in Classen and Rackman [here] and [here], respectively.

She also made this comment in the en banc oral argument for Tivo v. Echostar: [Listen].

Microsoft v. i4i — Supreme Court Oral Argument

Monday, April 18th, 2011

UPDATED 4/23/2011

The Supreme Court heard oral argument recently in Microsoft Corp. v. i4i Ltd. Partnership concerning the burden of proof to be applied in determining patent invalidity.  The transcript of the oral argument is available here: [Link].

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

One Remaining Vacancy

Wednesday, April 13th, 2011

Tomorrow marks the one year anniversary of Edward C. DuMont’s original nomination to the Federal Circuit.  He still has yet to receive a hearing before the Senate Judiciary Committee.

Edward C. DuMont
U.S. Circuit Judge, Federal Circuit
Nominated: Jan. 5, 2011 (April 14, 2010)
ABA Rating: Unanimously Well Qualified
Committee Questionnaire Update
Hearing Date:
Questions For The Record
Reported By Committee:
Returned To President: December 22, 2010
Confirmed By Senate:

Oral Argument in 9th Circuit Facebook Case

Tuesday, April 12th, 2011

The 9th Circuit released its decision in Facebook et al. v. Connectu, Inc., 08-16873 (9th Cir. April 11, 2011) concerning a disputed settlement agreement in the lawsuit regarding who came up with the idea for the social networking site Facebook.

The 9th Circuit  decision is available here: [Read].

The 9th Circuit oral argument is available here: [Listen].

Supreme Court Patent Case of the Week: Pennock v. Dialogue (1829)

Sunday, April 10th, 2011

27 U.S. 1 (____)

2 Pet. 1


Supreme Court of United States.

4*4 Mr Webster, for the plaintiff in error.

Mr Sergeant, for the defendant.

14*14 Mr. Justice STORY delivered the opinion of the Court.

This is a writ of error to the circuit court of Pennsylvania. The original action was brought by the plaintiffs in error for an asserted violation of a patent, granted to them on the 6th of July 1818, for a new and useful improvement in the art of making leather tubes or hose, for conveying air, water, and other fluids. The cause was tried upon the general issue, and a verdict was found for the defendant, upon which judgment passed in his favour; and the correctness of that judgment is now in controversy before this court.

At the trial, a bill of exceptions was taken to an opinion delivered by the court, in the charge to the jury, as follows, viz. “That the law arising upon the case was, that if an inventor makes his discovery public, looks on and permits others freely to use it, without objection or assertion of claim to the invention, of which the public might take notice; he abandons 15*15 the inchoate right to the exclusive use of the invention, to which a patent would have entitled him had it been applied for before such use. And, that it makes no difference in the principle, that the article so publicly used, and afterwards patented, was made by a particular individual, who did so by the private permission of the inventor. And thereupon, did charge the jury, that if the evidence brings the case within the principle which had been stated, the court were of opinion that the plaintiffs were not entitled to a verdict.”

The record contains, embodied in the bill of exceptions, the whole of the testimony and evidence offered at the trial by each party, in support of the issue. It is very voluminous, and as no exception was taken to its competency, or sufficiency, either generally or for any particular purpose; it is not properly before this Court for consideration, and forms an expensive and unnecessary burthen upon the record. This Court has had occasion in many cases to express its regret, on account of irregular proceedings of this nature. There was not the slightest necessity of putting any portion of the evidence in this case upon the record, since the opinion of the court delivered to the jury, presented a general principle of law, and the application of the evidence to it was left to the jury.

In the argument at the bar, much reliance has been placed upon this evidence, by the counsel for both parties. It has been said on behalf of the defendants in error; that it called for other and explanatory directions from the court, and that the omission of the court to give them in the charge, furnishes a good ground for a reversal, as it would have furnished in the court below for a new trial. But it is no ground of reversal that the court below omitted to give directions to the jury upon any points of law which might arise in the cause, where it was not requested by either party at the trial. It is sufficient for us that the court has given no erroneous directions. If either party deems any point presented by the evidence to be omitted in the charge, it is competent for such party to require an opinion from the court upon that point. If he does not, it is a waiver of it. 16*16 The court cannot be presumed to do more, in ordinary cases, than to express its opinion upon the questions which the parties themselves have raised at the trial.

On the other hand, the counsel for the defendant in error has endeavoured to extract from the same evidence, strong confirmations of the charge of the court. But, for the reason already suggested, the evidence must be laid out of the case, and all the reasoning founded on it falls.

The single question then is, whether the charge of the court was correct in point of law. It has not been, and indeed cannot be denied, that an inventor may abandon his invention, and surrender or dedicate it to the public. This inchoate right, thus once gone, cannot afterwards be resumed at his pleasure; for, where gifts are once made to the public in this way, they become absolute. Thus, if a man dedicates a way, or other easement to the public, it is supposed to carry with it a permanent right of user. The question which generally arises at trials, is a question of fact, rather than of law; whether the acts or acquiescence of the party furnish in the given case, satisfactory proof of an abandonment or dedication of the invention to the public. But when all the facts are given, there does not seem any reason why the court may not state the legal conclusion deducible from them. In this view of the matter, the only question would be, whether, upon general principles, the facts stated by the court would justify the conclusion.


Federal Circuit Status in the Event of a Federal Government Shutdown

Friday, April 8th, 2011

The Federal Circuit has issued this order indicating that it will remain open for business and fully staffed until at least April 22, 2011 in the event of a Federal Government shutdown [Order].

Judge Reyna Sworn-In

Friday, April 8th, 2011

Judge ReynaJudge Jimmie V. Reyna was sworn in as the newest circuit judge on the United States Court of Appeals for the Federal Circuit yesterday. Judge Reyna was sworn-in by Chief Judge Rader.

Judge Reyna was nominated to the court by President Obama on February 16, 2011 and confirmed by the Senate on April 4, 2011.


Oral Argument in Association for Molecular Pathology v. USPTO

Monday, April 4th, 2011

The Federal Circuit heard oral argument today in Association for Molecular Pathology v. United States Patent and Trademark Office

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

The oral argument is broken down into its constituent parts below:

Opening argument for Myriad Genetics and Directors of the University of Utah Research Foundation: [Listen].

Argument for American Civil Liberties Union: [Listen].

Argument for USPTO: [Listen]

Rebuttal argument for Myriad Genetics and Directors of the University of Utah Research Foundation: [Listen].

Prioritized Patent Examination — Final Rule

Monday, April 4th, 2011

Hal Wegner reported yesterday in his daily listserv that the final rule for prioritized patent examination would be published in the Federal Register today.

Here is the Federal Register notice published today for the final rule for “Changes to Implement the Prioritized Examination Track (Track I) of the Enhanced Examination Timing Control Procedures”: [Final Rule].

Supreme Court Patent Case of the Week: Keplinger v. De Young (1825)

Sunday, April 3rd, 2011

23 U.S. 358 (1825)

10 Wheat. 358


Supreme Court of United States.

359*359 This cause was argued by Mr. Webster and Mr. Sergeant, for the plaintiff, and by the Attorney General, for the defendant.

Mr. Justice WASHINGTON delivered the opinion of the Court.

This was a suit commenced by the plaintiff, Keplinger, in the Fourth Circuit for the District of Maryland, against the defendant, for the violation of the plaintiff’s patent right, secured to him according to law, in a certain new and useful improvement, to wit, a machine for making watch chains, &c. The third count in the declaration, upon which alone this cause has been argued, is in the usual form, charging the defendant with having unlawfully used the said improvement, without the consent of the plaintiff first had and obtained in writing. The defendant pleaded the general issue, and gave notice to the plaintiff that he should deny that the exclusive right of using the improvement mentioned in the declaration, was vested in the plaintiff, or that he was the original and first inventor of the said improvement, and that he should give evidence to establish those facts.

360*360 At the trial, the plaintiff read in evidence the letters patent duly granted, bearing date the 4th of May, 1820, and proved, that he was the true and original inventor of the machine specified in the patent, and that the defendant, together with John Hatch and John C. Kirkner, did use the said machine in the making of watch-chains from steel, from the 4th of May till some time in the month of December, 1820.

The defendant, in order to prove that any concern or connexion which he had with the said Hatch and Kirkner, in the making of watch-chains, by means of the said machine, was merely as a purchaser of watch-chains from them under the following contract, produced and gave the same in evidence. The agreement referred to, bearing date the 3d of May, 1820, is between M. De Young, and J. Hatch and J. Kirkner, and witnesses, “that the said Hatch and Kirkner do hereby engage and obligate themselves to manufacture and deliver to M. De Young, or at his store in said city, not less than three gross, but as many as five gross, of wire watch chains, agreeably to a sample to be deposited with T. Barly, (if practicable to manufacture so many,) in each week, from the date hereof, for the term of six months, one half of which number to be with turned slides, and the other half wire slides; the whole number to be four strands, if the said De Young so choose; but he is to have the privilege of directing the description to be furnished, that is to say, what number of four, five, six, or eight strands; the prices of 361*361 which to be as follows: four strands, two dollars per dozen; six strands, two dollars sixty-six cents and two thirds per dozen, and eight strands at the rate of three dollars thirty-three cents per dozen; said Hatch & Kirkner to devote their whole time and attention to said manufactory, and neither to sell, barter, nor dispose of, in any manner, or way, or means whatever, of any goods of the description herein before described, or which may, in any manner or way whatsoever, interfere with the exclusive privilege herein before granted, but will faithfully manufacture for said De Young, and none other, as far as five gross of chains per week, if practicable, and not less than three gross per week, at the prices herein before stipulated, and payable as follows: one half in cash at the end of every week, for the total number delivered within the week, and the other half in said De Young’s promissory note, payable at sixty days from the date thereof. And the said De Young, on his part, doth hereby promise to receive from the said Hatch & Kirkner, such quantity of watch-chains answering the description of the sample, as it may be in their power to manufacture, not exceeding five gross per week, reserving to himself the privilege of directing what proportion thereof shall be four, six, or eight strands, and pay for the same weekly in the following manner, viz. the one half amount of week’s delivery in cash, the other half in a note at sixty days, the same to be settled for weekly; in manner aforesaid, if required.”

The defendant also gave evidence to prove 362*362 that all the connexion he ever had with the said Hatch & Kirkner, relative to watch-chains made by them with the said machine or otherwise, was merely as a purchaser of such chains from them, under and in pursuance of the said contract.

The plaintiff then proved, that, at the time of making the said contract, the defendant was fully apprized of the existence of the machine described and specified in the patent, and of its prior and original invention by the plaintiff, and of the intention of the plaintiff to obtain the said patent; and that the said contract was made with a view to the employment by the said Hatch & Kirkner, in the manufacture of watch-chains, of a machine precisely similar to that invented by the plaintiff, after the plaintiff should have obtained his patent; and that a machine precisely similar to that invented by the plaintiff was employed by the said Hatch & Kirkner in the manufacture of watch-chains by them under the said contract, and with the knowledge and consent of the defendant during the whole period aforesaid, he and they having received notice, on the 5th of May, 1820, of the plaintiff’s patent; and that the watch-chains so manufactured by Hatch & Kirkner, during the whole of the said period, were delivered by them to the defendant, and by him received, under and in conformity with the said contract.

Upon this evidence, the Court, at the request of the defendant’s counsel, instructed the jury, that the plaintiff was not entitled to a verdict on the first and second counts in his declaration. 363*363 because the acts which they charge, if true, constitute no offence against the plaintiff’s patent. And that, if the jury should be of opinion, on the evidence, that the plaintiff is the sole and original inventor of the whole machine; and that the defendant had no other connexion with Hatch & Kirkner with regard to these chains, than that which arose from his said contract with them, under which he procured the chains to be made by Hatch & Kirkner, and sold them when so made; and that the said contract is a real contract; then these acts constituted no breach of the plaintiff’s patent-right on the part of De Young, and that the verdict must be for the defendant; and that this legal aspect would not be changed, although the defendant may, on any occasion, have supplied, at the cost of Hatch & Kirkner, the wire from which the chains so manufactured were made.

To this instruction the plaintiff’s counsel took a bill of exceptions, and a verdict and judgment having been rendered for the defendant, the cause is brought into this Court by a writ of error.

The only question which is presented by the bill of exceptions to the consideration of this Court is, whether the Court below erred in the instruction given to the jury; and this must depend upon the correct construction of the 3d section of the act of Congress, of the 17th of April, 1800, c. 179. which enacts, “that where any patent shall be granted, pursuant to 364*364 the act of the 21st February, 1793, c. 156. and any person without the consent of the patentee, his executors, &c. first obtained in writing, shall make, devise, use, or sell, the thing whereof the exclusive right is secured to the said patentee by such patent, such person so offending shall forfeit and pay to the said patentee, a sum equal to three times the actual damage sustained by such patentee,” &c.