Archive for August, 2011

Hindsight — In re NTP

Tuesday, August 30th, 2011

The decision in In re NTP, Inc., 2010-1243  (Fed. Cir. April 1,2011) has a good observation about hindsight analysis when a cited combination of  references results in a superfluous component.  While the facts of the opinion dealt with superfluous RF networks, one could see it being persuasive in regard to combinations of references that result in superfluous computer networks, transmitters, etc.  Judge Moore wrote for the panel (Gajarsa, Moore, and Clevenger):

As an initial matter, our construction of “electronic mail [message]” is irrelevant to this basis for rejection because the AAPA is the “Background Art” of the subject specifications that includes the four-item description of electronic mail. Further, the AAPA clearly teaches the other limitations of the claim with the exception of the RF network. Harrison teaches the use of an RF network to deliver data. Thus, the Board’s findings regarding the content of the references are supported by substantial evidence. However, we hold that, as a matter of law, the claims would not have been obvious to one of ordinary skill in the art based on the combination of the AAPA and Harrison. The Board improperly relied on hindsight reasoning to piece together elements to arrive at the claimed invention. “Care must be taken to avoid hindsight reconstruction by using `the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.'” Grain Processing Corp. v. American-Maize Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (quoting Orthopedic Equip Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir. 1983)). Given any network, we could likely carve out a possible “interface” and combine it with Harrison to hold that the addition of a RF information transmission network would have been obvious. This type of piecemeal analysis is precisely the kind of hindsight that the Board must not engage in. The Board’s position is further weakened by the fact that the AAPA already discloses an RF network that connects portable computers to the system. ‘960 patent col.2 ll.1-4. Thus, adding an RF network to element #2 in the figure would render the RF network connecting the portable PCs in figure 1 superfluous. Because it is based on improper hindsight reasoning, we reverse the Board’s rejections based on the AAPA in view of Harrison.

In addition to the above comment by the panel that the PTO’s reasoning was based on hindsight, there was also a chorus of “hindsight” by the judges during the oral argument when the topic came up for discussion: [Listen].

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

You can listen to the oral argument here: [here].  The oral argument is extremely long (over three hours).  It was very well argued by both sides.

Federal Circuit — Oregon Bound

Wednesday, August 24th, 2011

The Federal Circuit will hit the trail and visit Oregon this October.  The court will sit at Lewis and Clark Law, Wilamette Law, Pioneer Courthouse, the U.S. District Courthouse, and the University of Oregon Law.  Here’s the published schedule of cases in case you reside near those places:

Panel D:  Tuesday, October 4, 2011, 10:00 A.M.,  Lewis & Clark Law

2010-7073 CVA ALEXCE V DVA [argued]             
2011-1199 DCT SYNOPSYS V RICOH CO [argued]
2011-3048 MSPB NASUTI V MSPB [on the briefs]
2011-1195 PTO IN RE XIAO [on the briefs]

Panel E:  Tuesday, October 4, 2011, 2:00 P.M.,  Willamette Law

2010-1526 DCT DOW CHEMICAL V NOVA CHEMICALS [argued]             
2011-3031 MSPB YOUNIES V MSPB [argued]
2011-1198 DCT FALANA V KENT STATE UNIV [argued]
2011-3037 MSPB EXUM V DHS [on the briefs]
2011-1275 PTO IN RE TAYLOR [on the briefs]

Panel I:  Tuesday, October 4, 2011, 2:00 P.M.,  Pioneer Courthouse

2010-1512 CIT CANEX INTL LUMBER V US [argued]             
2011-7030 CVA CHANDLER V DVA [argued]
2011-1114 DCT THORNER V SONY COMPUTER [argued]
2011-7104 CVA MCNULTY V DVA [on the briefs]
2011-7119 CVA URBAN V DVA [on the briefs]

Panel F:  Wednesday, October 5, 2011, 10:00 A.M., U.S. District Court

2009-3263 MSPB MCGEE V AIR FORCE [argued]             
2010-1519 DCT GROBER V MAKO PRODUCTS [argued]
2010-3181 MSPB SMITH-NWAGWU V VA [argued]
2011-1159 PTO IN RE REHRIG PACIFIC [argued]
2011-3118 MSPB BURROUGHS V ARMY [on the briefs]
2011-3141 MSPB BURROUGHS V ARMY [on the briefs]

Panel G:  Wednesday, October 5, 2011, 10:00 A.M., U.S. District Court

2010-1498 DCT RUSSELL V US [argued]             
2011-1230 DCT RUSSELL V US [argued]
2010-1534 DCT MEDICINES CO V KAPPOS [argued]
2011-7110 CVA O’DANIELS V DVA [on the briefs]
2011-3133 MSPB HAHN V EPA [on the briefs]

Panel H:  Thursday, October 6, 2011, 2:00 P.M., University of Oregon Law

2010-1251 DCT UNITED ACCESS V EARTHLINK [argued]             
2011-7037 CVA MAHER V DVA [argued]
2011-1107 CIT GPX INTL TIRE CORP V US [argued]
2011-7111 CVA GRIFFIN V DVA [on the briefs]
2011-3138 MSPB NATTY V USPS [on the briefs]

Judge Evan J. Wallach

Tuesday, August 23rd, 2011

The Senate Judiciary Committee has posted the committee questionnaire of Evan J. Wallach on its website.  Judge Wallach is currently a judge on the United States Court of International Trade and a nominee for the Court of Appeals for the Federal Circuit.  You can view the committee questionnarie [here].  Judge Wallach has presided over at least one patent case at the district court level.  No Senate Judiciary Committee hearing has been scheduled for Judge Wallach at this time.

Backsliding to a “Gist of the Invention” Analysis

Sunday, August 21st, 2011

It strikes me that there is some backsliding taking place by judges of the Federal Circuit in what boils down to their using a “gist of the invention” test.  You saw it most recently in the opinion of Judges Dyk, Bryson, and Prost in Cybersource to assess patent eligible subject matter where they said: 

Regardless of what statutory category (“process, machine, manufacture, or composition of matter,” 35 U.S.C. sec. 101) a claim’s language is crafted to literally invoke, we look to the underlying invention for patent-eligibility purposes.

Cybersource v. Retail Decisions, slip opinion at page 17 (Fed. Cir. Aug. 16, 2011)

In the Cybersource opinion, the panel essentially rewrote the article of manufacture claim (i.e., Beauregard claim) into a method claim so as to find the claim ineligible subject matter as reciting a mental process.  The panel rationalized that the gist of the invention was an abstract idea, as informed by the panel’s interpretation of the method claim, and therefore the article of manufacture claim should be analyzed similarly — regardless of whether that analysis required one to disregard express claim language. 

What may come as a surprise to many is that there was a similarly unsettling suggestion by Chief Judge Rader in the oral argument of Research Corporation Technologies v. Microsoft in his suggestion that one could just look to the subject matter of the specification as a test to determine patent eligibility, as opposed to looking to the express language of the particular claim at issue.  In that oral argument, Chief Judge Rader had the following colloquies with the patentee’s counsel and defendant’s counsel, respectively: [Listen] and [Listen].  Judge Rader seemed to be suggesting (at least for purposes of discussion during that pre-Bilski oral argument) that the patent eligibility of the  invention be gauged from the specification in order to assess section 101, rather than assessing the actual text of each claim on a claim by claim basis.   At the end of the day, the Research Corporation Technologies panel did not adopt such a test.*  Had they done so, it would have been just as troubling as what the Cybersource panel has done in re-writing Beauregard claims as method claims for purposes of assessing patent eligibility. 

It is interesting to see that one of the court’s newest members, Judge O’Malley, wrote the following as part of her dissent in Ormco v. Align, a case she sat on by designation when she was a district court judge:

This court, however, has rejected a claim construction process based on the “essence” of an invention. See, e.g., Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1345 (Fed.Cir.2002) (“It is well settled that `there is no legally recognizable or protected essential element, gist or heart of the invention in a combination patent.'”) (citing Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 345, 81 S.Ct. 599, 5 L.Ed.2d 592 (1961)). Indeed, this court has done so quite forcefully and quite recently. See MBO Labs., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323, 1330-31 (Fed.Cir.2007) (“We sympathize with the district court’s choice, since 1323*1323 we agree that [the feature] is an essential element of the invention. . . . However, we cannot endorse a construction analysis that does not identify `a textual reference in the actual language of the claim with which to associate a proffered claim construction.'”) (quoting Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 990 (Fed.Cir. 1999)). Simply stated, “automatic determination of finish tooth positions without human adjustment of the final results” is a limitation that the majority has amalgamated from the specification of one of the patents in suit without reference to the specific language of any claim of any of the patents.

While Judge O’Malley’s comment was directed to claim construction, it reflects an underlying principle in patent law articluated by the Supreme Court in Aro Mfg. Co., Inc. v. Convertible Top Co., 365 U.S.336 (1961) (also known as Aro I)  that is worth noting, namely that a patent claim covers the totality of the elements of the claim.  The Supreme Court in Aro I stated:

For if anything is settled in the patent law, it is that the combination patent covers only the totality of the elements in the claim, and that no element, separately viewed, is within the grant. See the Mercoid cases, supra, 320 U.S. at 320 U. S. 667; 320 U.S. at 320 U. S. 684. [Footnote 10] The basic fallacy in respondent’s position is that it requires the ascribing to one element of the patented combination the status of patented invention in itself. Yet this Court has made it clear in the two Mercoid cases that there is no legally recognizable or protected “essential” element, “gist” or “heart” of the invention in a combination patent. In Mercoid Corp. v. Mid-Continent Co., supra, the Court said:

“That result may not be obviated in the present case by calling the combustion stoker switch the ‘heart of the invention’ or the ‘advance in the art.’ The patent is for a combination only. Since none of the separate elements of the combination is claimed as the invention, none of them, when dealt with separately, is protected by the patent monopoly.”

320 U.S. at 320 U. S. 667. And in Mercoid Corp. v. Minneapolis-Honeywell Regulator Co., supra, the Court said:

“The fact that an unpatented part of a combination patent may distinguish the invention does not draw to it the privileges of a patent. That may be done only in the manner provided by law. However worthy it may be, however essential to the patent, an unpatented part of a combination patent is no more entitled to monopolistic protection than any other unpatented device.”

Aro Mfg. Co., Inc. v. Convertible Top Co., 365 U.S. 336, 344-45 (1961).

As the Federal Circuit struggles with the proper test to apply post-Bilski, it should keep this principle in mind.  Each claim should stand on its own merits (i.e., its claim limitations as a whole) for purposes of patent eligibility, rather than relying on the gist of the invention.  This would avoid the temptation to import the gist of the invention from related claims or to try to divine the invention from the specification.


You can listen to the entire oral argument of Research Corporation Technologies, Inc. v. Microsoft Corp. [here].

You can listen to the oral argument of Cybersource Corp. v. Retail Decisions [here].


Updated 8/22/11:

*A more careful reader than I brought to my attention the portion of Judge Rader’s opinion where he states:

The invention presents functional and palpable applications in the field of computer technology. These inventions address “a need in the art for a method of and apparatus for the halftone rendering of gray scale images in which a digital data processor is utilized in a simple and precise manner to accomplish the halftone rendering.” ‘310 patent col.3 ll.33-40. The fact that some claims in the ‘310 and ‘228 patents require a “high contrast film,” “a film printer,” “a memory,” and “printer and display devices” also confirm this court’s holding that the invention is not abstract. Indeed, this court notes that inventions with specific applications or improvements to technologies in the marketplace are not likely to be so abstract that they override the statutory language and framework of the Patent Act.

It is important to realize that only three claims from the ‘310 and ‘228 patents were under review in the case for purposes of subject matter ineligibility.  Those claims recited the following:

Claims 1 and 2 of the ‘310 patent:

1. A method for the halftoning of gray scale images by utilizing a pixel-by-pixel comparison of the image against a blue noise mask in which the blue noise mask is comprised of a random non-deterministic, non-white noise single valued function which is designed to produce visually pleasing dot profiles when thresholded at any level of said gray scale images.

2. The method of claim 1, wherein said blue noise mask is used to halftone a color image.


Claim 11 of the ‘228 patent:

11. A method for the halftoning of color images, comprising the steps of utilizing, in turn, a pixel-by-pixel comparison of each of a plurality of color planes of said color image against a blue noise mask in which the blue noise mask is comprised of a random non-deterministic, non-white noise single valued function which is designed to provide visually pleasing dot profiles when thresholded at any level of said color images, wherein a plurality of blue noise masks are separately utilized to perform said pixel-by-pixel comparison and in which at least one of said blue noise masks is independent and uncorrelated with the other blue noise masks.

So, Judge Rader’s reference to “high contrast film,” “a film printer,” “a memory,” and “printer and display devices” is a reference to claim language in claims other than the claims at issue; because, claims 1, 2, and 11 listed above recite none of those elements.

Judge Newman’s Eulogy of Judge Friedman

Sunday, August 14th, 2011

The Federal Circuit has updated its web site with Judge Newman’s eulogy of Judge Friedman that took place at a gathering last month at the Cosmos Club:

Judge Friedman, our colleague and friend, has moved to the banks of memory. We treasure his memory. And we extend our condolences to Judge Friedman’s family, and his friends.

I’m honored to speak for the court, for at this moment Chief Judge Rader is performing a wedding in California – a schedule he couldn’t change. He wrote, from the wedding site: “Please carry my respect and love for Dan in your hearts at his service”. We do indeed.

Respect and love are the markers of our memories of our friend and colleague. We shall not forget Judge Friedman’s dignity, his warmth, his humor. We remember his lifetime of scholarship, his brilliance and his wisdom, all generously shared.

His seventy years of public service started long before he came to the judiciary. In the office of solicitor general, his legal advice to the nation, and his representation as its advocate, had already ensconced him in the annals of good government. So it was fitting that in 1978 President Carter called him to be Chief Judge of the United States Court of Claims — the eleventh chief judge since 1858.

The Court of Claims was at the foundation of nation’s rule of law – that the people can sue their government, and receive even-handed justice. Judge Friedman told me that he expected to finish his career in that role – and then, about a year later, the idea popped up of this curious new judicial structure, supposed to move the court system into the era of science and technology, and somehow incorporating the reputation of the historic Court of Claims.

Judge Friedman knew that I’d been involved in those early efforts, and he told me that he still wondered what the Court of Claims had to do with the progress of science. But I knew that as Chief Judge he had supported the change. He knew – we all knew — that if he did not, it would not have happened.

I thought then, and now — that Judge Friedman had an unusually clear vision of the role of the courts in service to a great nation – and if that service was somehow thought to be slipping, we should do whatever’s in our power to fix it. And he did. I also saw that Judge Friedman’s intellectual curiosity embraced the culture of science. He was fascinated by the movement of electrons, and the advances of chemistry and biology.

Still, with the transition from the Court of Claims, he assured that the precedents of history were preserved, not only by the formality of adopting them, as the Federal Circuit did as its first judicial act — but by reinforcing their truths.

I was the first judge appointed to the new court, and my chambers were next-door to Judge Friedman’s, on the ninth floor. He made sure I felt welcome, as the first intruder into the domain of the Court of Claims. I soon came upon a case involving a claim against the United States, and I mentioned my uneasiness with deciding against the government. He twinkled – we all remember his twinkle – and he said “that’s our job”, and he quoted Abraham Lincoln — about the duty of government to render justice against itself.

I haven’t wavered since.

Yesterday I talked to Judge Gajarsa in New Hampshire. Before I could ask him, he said “Dan was the epitome of what a judge will be.”

Dan’s opinions are a treat to read, not just because they advance the law in some very difficult areas, but because of their elegance of style and the purity of their reasoning.

It would be easy to assume that the scholarly tradition from which Judge Friedman came would be remote from the world of applied science, at least in the arcane new areas of intellectual property law. Instead, he was intensely practical, wise and savvy in the law and the world — with a powerful a sense of justice.

Judge Friedman had, as one would expect, a deep understanding of the judicial process. As a judge, he showed the most profound respect for our inherited law, without diverging from the statutory law. His standards were never compromised. He was a model of judicial elegance. He never showed off, never embarrassed counsel or his colleagues.

Maybe the word is “urbane”. I never saw him badger a lawyer. He never took advantage of his position, looking down at counsel, who can’t answer back.

In bearing and temperament he was made to be a judge. He always listened, and I never saw him show impatience or inattention. He would draw out his colleagues, even as he had the knowledge and confidence of vast experience.

In every way, he will be missed. Dan Friedman’s life was a life of service. He served the law and the nation with a wisdom that’s rare, even among judges. It was a joy to be in his company. We remember his kindness and his smile – and his scholarship, his balance, his sensitivity.

We mourn the loss of our dear colleague, and the nation’s loss of a powerful intellect. He moves to the memory of history.

Here is the link to all of the eulogies: [Link].

Patent Eligibility of Computer Readable Medium Claims

Friday, August 12th, 2011

The patent eligibility of some Beauregard claims (i.e., computer readable medium claims) came up in the recent oral argument of Cybersource v. Retail Decisions.  A decision from the Federal Circuit panel (Judges Bryson, Dyk, and Prost) is expected shortly. 

The panel inquired whether a claim to a computer readable medium should be patent ineligible if the method that the computer readable medium can cause to be performed is itself an ineligible abstract idea.  It is hard to imagine the tortured logic that would be required for a court to hold that a patent claim that claims an article of manufacture (i.e., a physical object) is a claim to an abstract idea; nevertheless, we’ll have to wait and see if the court addresses the issue when it issues its opinion in the case. 

You can listen to the discussion of the patent eligibility of Beauregard claims during the oral argument [here] and [here].

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

A Chautauqua on Patent Law

Wednesday, August 10th, 2011

 Last year’s AIPLA Electronics and Computer Law Roadshow had one of the best line-ups of speakers that I’ve seen in quite some time.  It got me to thinking what would be the ideal seminar.  Here’s what I came up with for my own personal tastes.  You probably have your own preferences as well.  I don’t know that any of the suggested speakers would actually want to talk on these subjects; but, I think it would be interesting to hear their opinions. 

Day 1



Suggested Speaker


Review of Recent Patent Law Decisions

Carl Moy


An Update on Recent Patent Legislation and Patent Regulation Changes

Steve Kunin


How to Use Declarations/Affidavits Effectively in Patent Prosecution in a Post-KSR Era

Irah Donner


Common Sense – What is it, Who Has it? 

Chief Judge Michel (ret.)


Patent Prosecution Highway

David Kappos


A Debate Friendly Discussion on Subject Matter Eligibility

Justice John Paul Stevens (ret.) and Mark Lemley


Examiner Interviews

Tom Irving


How to Write a Patent Application in 2011 for an Examiner, a Jury, and the Federal Circuit

Brad Wright, Judge Sue Robinson, Judge Kathleen O’Malley


Ethical Issues in Patent Law

David Hricik


A Summary of Post KSR Cases and Precedential Board Decisions on Obviousness

Tom Krause


Day 2



Suggested Speaker


Lessons Learned in Three Decades of Arguing Before the Federal Circuit

Don Dunner


Preparing a  Brief or Petition for Cert. That Will Persuade the Supreme Court

Judge Bryson/Phil Weiser


Preparation and Argument of a Patent Appeal before the Supreme Court

Seth Waxman/Ted Olson


Attorney-Client Privilege and Attorney Work Product Issues Arising in Patent Litigation

Judge Roderick McKelvie (ret.)


Historical Review of Subject Matter Eligibility

Dennis Crouch


Observations about Innovators and Innovative Companies

Malcolm Gladwell


Strategies for Winning Patent Cases at the District Court and the Federal Circuit

Morgan Chu/Bill Lee


Open topic  (Speaker’s choice) 

Bob Armitage


A Behind the Scenes Look at the Enactment of Hatch-Waxman

Chief Judge Rader


The Great Debate II (topic to be decided)**

Arti Rai/Ed Reines

 *“The Great Debate I” took place three years ago between the Obama and McCain campaigns on the topic of patent policy. You can view that debate [here].

Eulogies of Judge Daniel Friedman

Sunday, August 7th, 2011

The Federal Circuit has posted on its website eulogies by some of Judge Friedman’s former law clerks.  You can read the eulogies at this [LINK].

Federal Circuit Caseload

Saturday, August 6th, 2011

Appeals Filed to Federal Circuit During Fiscal Year 2010


Judicial Recess Appointments?

Friday, August 5th, 2011

One might wonder if the Senate Judiciary Committee is daring the Obama Administration to make some judicial recess appointments (or complicit in the Obama Administration doing so).  On its website, the Senate Judiciary Committee currently has this post:

Did You Know? President Eisenhower’s appointment of Potter Stewart to the Supreme Court in 1958 was the last recess appointment to the Supreme Court under Article II, Section 2, Clause 3, of the Constitution. In 1960, the Senate passed a resolution – which had no legally binding effect – expressing the Senate’s objection to recess appointments to the Supreme Court.

With two circuit court (Seventh Circuit and Federal Circuit) nominees still waiting for a hearing before the Senate Judiciary Committee after more than a year of initially being nominated (while subsequent circuit court nominees have received hearings within a month of being nominated), one might argue that the Senate has had a fair opportunity to advise the President and chosen not to exercise it.

Here is an article on judicial recess appointments: [Article].  According to the article, judicial recess appointments were most recently used by Presidents Carter and Clinton. 


Update: The article linked to above was written before the end of the Bush Administration.  President Bush made two judicial recess appointments at the circuit court level.

According to some accounts, the Senate is not currently in “recess” and cannot go into “recess” without the permission of the House.  Instead, the Senate is currently in “adjournment.”