Archive for May, 2011

Solicitor Chen’s Therasense Argument

Tuesday, May 31st, 2011

With the Therasense v. Becton, Dickinson and Co. case now decided by the Federal Circuit siting en banc, all patent prosecution eyes have turned to the PTO leadership.  Therefore, it might be of interest to  highlight the PTO’s argument at the en banc oral argument of Therasense.  Raymond Chen, the Solicitor for the PTO, argued on behalf of the PTO.  You can listen to his argument here: [Listen].  Obviously, this merely highlights what was advocated pre-Therasense.

The en banc opinion in Therasense is available here: [Read].

Back in paradise

Sunday, May 29th, 2011

Some have wondered whether Professor Arti Rai of Duke Law School has any plans to throw her hat into the ring when a future vacancy arises for the Federal Circuit.  She recently delivered a guest lecture on her research at Duke that is available on YouTube.  It is interesting to note her comment at about the 38:11-39:00 minute mark of the video that she is “very glad to be back in paradise.”  That would seem to give some insight into the issue.

Oral Argument of the Month: AllStar Tire and Wheel, Inc. v. Wheel Pros, Inc.

Saturday, May 28th, 2011

The oral argument of the month for the month of May is AllStar Tire and Wheel, Inc. v. Wheel Pros, Inc., 2011-1015 (Fed. Cir. May 12, 2011).  This oral argument raised interesting issues concerning functionality in design patent infringement cases.  

For background, it appears that the inventor was deposed and through his testimony gave the impression that the commercial embodiment (not necessarily the claim of the design patent) possessed functional traits.  The accused infringer relied on that testimony to prevail on summary judgment that the design patent was merely functional.  The plaintiff-appellant argued on appeal that the claim was not ambiguous on its face and that there was no reason to turn to the inventor’s testimony because it is extrinsic evidence of last resort for consideration only when a claim is ambiguous.  Moreover, the plaintiff-appellant argued that the inventor’s testimony was about a commercial embodiment, as opposed to the design patent itself. 

During the oral argument the panel raised a number of interesting issues as to whether summary judgment was appropriate in this case.  Judge Linn noted that the contour of a wheel cover design might not be functional but rather ornamental.  And, if the design element (i.e., the contour of the wheel cover) was ambiguous as to whether it was ornamental or functional, was it appropriate to decide such an ambiguous issue on summary judgment. 

The panel also asked if functionality is a question of fact that should be given to a jury if a jury trial has been requested (or resolved by the court acting as a fact finder if there is no jury).  The panel asked about PHG Technologies, LLC v. St. John Companies, Inc., which stated that whether a design element is functional is a matter of fact; and how should that case be applied in view of the court’s unanimous en banc opinion in Egyptian Goddess, Inc. et al. v. Swisa, Inc. et al., which stated that functionality is a matter of claim construction.  The panel queried whether Egyptian Goddess had overruled PHG Technologies.  Also, the panel inquired if Egyptian Goddess has not expressly overruled PHG Technologies, should the en banc opinion of Egyptian Goddess be given more weight than the earlier decided PHG Technologies decision.

You can listen to the discussion of those issues here: [Listen].

 The panel also asked about an inconsistency in the district court’s opinion.  At one point the district court’s opinion apparently stated that the wheel cover design included both functional and non-functional elements.  The district court then went on to discuss only the functional elements.  Judge Clevenger asked whether that suggests that the district court was incorrect in deciding the issue on summary judgment.  You can listen to the discussion of that issue here: [Listen].

A third issue was raised by Judge Linn concerning whether the ordinary observer standard has any role to play in determing functionality in the context of interpreting claim scope.   At that point, Judge Linn said “this is the gift that keeps on giving here; this question, it gets more and more involved and convoluted every minute.” [Listen].

 The plaintiff-appellant responded on rebuttal that in view of the number of open questions highlighted by the discussion, that it was clear that the district court should not have granted summary judgment.

After the panel raised these interesting issues and questions, it promptly issued a Rule 36 decision affirming the summary judgment . . . .

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

You can view the court’s Rule 36 decision here: [Read].

Therasense v. Becton Dickinson

Wednesday, May 25th, 2011

The Federal Circuit issued its en banc opinion today in Therasense v. Becton Dickinson.  This is my favorite sound bite from the en banc oral argument: [Listen].

It would seem that the Federal Circuit’s newest member, Judge Reyna, was the deciding vote for the majority.

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

You can read the en banc opinion here: [Read].

Failure to Establish a Prima Facie Case

Sunday, May 22nd, 2011

During the oral argument of In re Kao, the panel had some tough questions for the Associate Solicitor from the PTO.  The issue concerned an obviousness rejection that had been made by the Patent Office and whether there had been a sufficient prima facie case made to reject the claim at issue.  The issue turned on whether the testing method that was used as part of the cited prior art (the “basket” method) was proved by substantial evidence to be equivalent to the testing method recited in the claim (the “Paddle” method). 

The panel took issue with the Office’s contention that it need only make the assertion that the cited references were combinable in order to establish a prima facie case.  At one point Judge Linn asked whether the Office is entitled to make a prima facie case by saying: “Black is white; now [Applicant] go prove otherwise.”  You can listen to this exchange here: [Listen].

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

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

Chuck Norris and the Federal Circuit

Wednesday, May 18th, 2011

Did you know the Federal Circuit sat en banc last week?  Indeed it did without much fanfare from the patent community.  The court sat en banc in two appeals from the Court of Federal Claims dealing with partnership/tax issues.  The appeals were tangentially related to the movies “Lone Wolf McQuade,”  “Terminator,”  “Return of the Living Dead,” and “Howling II” [Listen]. 

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

Circuit Judge Alan Lourie to Receive Distinguished Public Service Award

Tuesday, May 17th, 2011

The Boston Patent Law Association will be presenting Circuit Judge Alan Lourie with its Distinguished Public Service Award on June 10, 2011.  You can see more details on the announcements page of the Federal Circuit web site.

Supreme Court Patent Case of the Week — Grant v. Raymond (1832)

Monday, May 16th, 2011

31 U.S. 218 (1832) 6 Pet. 218


Supreme Court of United States.

227*227 The case was argued by Mr Webster, for the defendants in the circuit court, now before the court as plaintiffs in error; and by Mr Ogden, for the defendants, plaintiffs in the circuit court.

Mr Ogden, for the defendants in error.

238*238 Mr Chief Justice MARSHALL delivered the opinion of the Court.

239*239 This action was brought by Grant and Townsend against E. and H. Raymond, to recover damages for an infringement of their right under a patent granted to the plaintiff Joseph Grant, in April 1825. It recited that a former patent had been issued in August 1821, to the same person for the same improvement, “which had been cancelled, owing to the defective specification on which the same was granted.” The exclusive privilege given by the patent on which the suit is brought, is to continue fourteen years from the day on which the original was issued.

One of the pleas filed by the defendants, contained the following averment: “and the defendants aver that said specification does not correctly or accurately describe the improvement claimed by the said Joseph Grant as his invention, but said specification, and the drawings thereto annexed, are altogether defective in this, among other things, namely: in said specification no proportion, sizes or distances are given, and the bigness or size of none of the principal parts of said machine is given in said specifications or drawings, but the same is wholly omitted; and in other particulars, said specifications and drawings are wholly defective: and the defendants aver that said specification annexed to and making part of said letters patent, with the drawings thereto annexed, do not contain a written description of his the said Joseph Grant’s invention and improvement aforesaid, and manner of using it, in such full, clear and exact terms, as to distinguish the same from all other things before known, and so as to enable any person skilled in the art of which said machine or improvement is a branch, or with which it is most nearly connected, to make and use the same; and that for the cause aforesaid, said letters patent are void.”

The plaintiffs reply that they ought not to be barred, “because they say that the specification mentioned in the said last mentioned plea, does correctly and accurately describe the improvement claimed by the said Joseph Grant as his invention; and because they say further, that neither the said specification, nor the drawings thereto annexed, are defective in any of the particulars in that behalf alleged in the said last mentioned plea, and this they pray may be inquired of by the country.” On this replication issue was joined.

240*240 At the trial the counsel for the defendants objected that the secretary of state had no power by law to accept a surrender of, and to cancel the said letters patent, or to inquire into or to decide upon the causes for so doing, or to grant said second patent for the same invention with an amended specification, for the unexpired portion of the term of fourteen years which had been granted by the first patent.

The court decided that such surrender might be made when the defect arose from inadvertence or mistake, and without any fraud or misconduct on the part of the patentee; and that the secretary of state had authority to accept such surrender, and cancel the record of the patent, and to issue a new patent for the unexpired part of the fourteen years granted under the old patent, in manner aforesaid. To which decision the counsel for the defendants excepted.

After adducing the testimony on which they relied to support their plea herein before stated, the counsel for the defendants moved the court to instruct the jury that if they found that the defendants had maintained and proved their averments in that respect, that they must find the same for the defendants; which instructions the court refused to give, but instructed the jury that the patent would not be void on this ground, unless such defective or imperfect specification or description arose from design, and for the purpose of deceiving the public; to which opinion the counsel for the defendants also excepted.

The jury found a verdict for the plaintiffs, and assessed their damages to three thousand two hundred and sixty-six dollars sixty-six cents: the judgment on which is brought before this court by a writ of error.

The first question in the cause respects the power of the secretary of state to receive a surrender of a patent, cancel the record thereof, and issue a new patent for the unexpired part of the fourteen years for which the original had been granted. The court was of opinion that this might be done “when the defect in the specification arose from inadvertence or mistake, and without any fraud or misconduct on the part of the patentee.”


Judge Learned Hand Singing Folk Songs

Monday, May 9th, 2011

Chief Judge Rader once remarked during oral argument that he enjoyed the music of the Beatles and ABBA.    No word on whether he is also a fan of that recording artist who went by the name of Judge Learned Hand.  Yes, Judge Hand actually appears on the album “A Treasury of Library of Congress Field Recordings” singing the folk tune “Iron Merrimac.”  You can hear an excerpt of that recording at this link: [Link].  You can download the full version from at this link: [Link].  He also recorded the song “Phil Sheridan” which is available at this link: [Link].

Video of 9th Circuit Facebook v. Connectu, Inc. Oral Argument

Saturday, May 7th, 2011

The Ninth Circuit recently posted the video of the oral argument for Facebook v. Connectu, Inc., 2008-16873 (9th Cir. April 11, 2011).  In addition to being of interest generally, the video also features Joshua Rosenkranz of Orrick, Herrington and Sutcliffe, one of the top appellate advocates in the country who frequently argues before the Federal Circuit.  In this case, he represented Facebook/Zuckerberg, the plaintiff-appellee.

The link to the video is available here: [Link].

Driving up the costs of patent litigation

Wednesday, May 4th, 2011

In the recent oral argument of Juniper Networks, Inc. v. Shipley, 2010-1327 (Fed. Cir. April 29, 2011),  Chief Judge Rader asked Juniper’s counsel if a court should take into consideration a party’s motives for bringing a false marking action, such as bringing a case only to gain leverage by driving up costs as much as possible.  Juniper’s counsel noted that if the court were to probe the motives of a plaintiff then it should similarly consider the motives of the defendant in related litigation.  You can listen to Chief Judge Rader’s policy comments here: [Listen].

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

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

“Feature of the present invention”

Sunday, May 1st, 2011

In Lexion Medical, LLC v. Northgate Technologies, Inc. et al., 2009-1494 (Fed. Cir. April 22, 2011), the Federal Circuit addressed the construction of a phrase in a claim that included the word “within.”   The court addressed whether a time limitation, such as “always within,” should be included in the claim construction of “within.” 

What interested me most about the oral argument was something that does not appear in the court’s opinion.  Namely, there was a discussion of the weight that should be given to the language from the specification that referred to “an important feature of the present invention.”  Judge Prost had the following exchanges with the counsel for the appellee: [Listen] and [Listen]. 

It is arguable whether the word “feature” is any different from the word “aspect.”  See this link for a recent discussion of the phrase “aspect of the invention.”

On an unrelated note, you often hear the admonishment of no new issues should be argued on appeal.  In this case, the appellee argued that construction of the word “within” was a new argument on appeal: [Listen].  Nevertheless, the court addressed the argument in its opinion.

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

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

(The other interesting thing about this case is that it was an affirmance by the Federal Circuit of a summary judgment of infringement of a means plus function claim.)