Archive for September, 2011

Memorial Session for Judge Friedman

Monday, September 26th, 2011

The Federal Circuit has announced a memorial session to be held for Circuit Judge Daniel Friedman, who passed away earlier this year.

Justice Stevens Visits Colorado Law School

Friday, September 23rd, 2011

Recently retired Supreme Court Justice John Paul Stevens spoke at the University of Colorado Law School last night.  He has a memoir scheduled to come out in early October.  It will be interesting to see if it has anything to say about patent law.

Pro Hac Vice

Thursday, September 22nd, 2011
Chief Judge Rader and Prof. Sean O'Connor of "Pro Hac Vice"

Chief Judge Rader and Prof. Sean O'Connor of "Pro Hac Vice"

Those of you in the Bay Area might want to take note that Chief Judge Rader will be speaking at the Court of Federal Claims Western Bench and Bar Retreat on October 18th. 

Apparently, Chief Judge Rader is a member of the band “Pro Hac Vice.”  The band is scheduled to perform on the 18th as part of the evening ceremonies.  I do not know if any of their hits are available on iTunes.  You can see the schedule of events for the seminar to be held at the Claremont Hotel in Berekeley here:  [Link].

Here is a link to a “Pro Hac Vice” performance: [Link].

DOJ Briefs in Biotech Section 101 Cases

Wednesday, September 21st, 2011

I was curious what approaches the DOJ/PTO briefs had taken in recent biotech section 101 cases.  Here are links to the briefs by the DOJ in:

LabCorp v. Metabolite (Supreme Court): [Link]

The Association for Molecular Pathology et al. v. Myriad (Federal Circuit) (as you may recall the PTO did not join in this brief): [Link]

Mayo v. Prometheus (Supreme Court): [Link].

Oral Argument Date for Akamai Tech. v. Limelight Networks and McKesson Tech. v. Epic Systems Corp.

Tuesday, September 20th, 2011

The date has been set for the en banc oral arguments of two divided infringement patent cases, Akamai Tech. v. Limelight Networks and McKesson Tech. v. Epic Systems Corp.  The date will be Friday November 18, 2011.

The issue that the parties were asked to brief in the Akamai Tech. v. Limelight Networks case is:

1.  If separate entities each perform separate steps of a method claim, under what circumstances would that claim be directly infringed and to what extent would each of the parties be liable?

The issues that the parties were asked to brief in the McKesson Tech. v. Epic Systems Corp. case are: 

1. If separate entities each perform separate steps of a method claim, under what circumstances, if any, would either entity or any third party be liable for inducing infringement or for contributory in-fringement? See Fromson v. Advance Offset Plate, Inc., 720 F.2d 1565 (Fed. Cir. 1983).


2. Does the nature of the relationship between the relevant actors—e.g., service provider/user; doctor/patient—affect the question of direct or indirect infringement liability?


Questions for the Record — Judge Evan Wallach

Monday, September 19th, 2011

As a follow up to the Senate Judiciary Committee hearing for Judge Evan Wallach’s Federal Circuit nomination, he has submitted his responses to the Senate Judiciary Committee’s written questions.  You can view his responses [here].  The questions were somewhat more pointed than have been asked of other Federal Circuit nominees.

Supreme Court Briefing for the 2011-2012 Term Patent Cases

Sunday, September 18th, 2011

The ABA posts the briefs, including the briefs of amici, for forthcoming Supreme Court cases.  You can follow the briefing for the three patent cases on the 2011-2012 term calendar of the Supreme Court at these links:

Caraco Pharmaceutical v. Novo Nordisk A/S, Docket No., 10-844

Kappos v. Hyatt, Docket No., 10-1219

Mayo Collaborative Services Services v. Prometheus Laboratories, Inc., Docket No., 10-1150 .  (Of particular note, the amicus brief of the United States is available [here].)

The oral argument dates have not been announced.

Hans Gruber and the Federal Circuit

Sunday, September 18th, 2011

Yes, that Hans Gruber. 

A panel of the Federal Circuit was trying to evaluate the construction of the term “bearer instrument” in a recent oral argument.  Counsel for the defendant-appellee was explaining that, with respect to bearer instruments, title passes by delivery  without endorsement.  As an illustration, he used the example of Hans Gruber trying to steal bearer bonds in the movie Die Hard.  [Listen].  While the analogy resonated with me, I couldn’t tell from the recording if it did with the panel.   As it turns out, Hans Gruber is a very well-known character.  He is the 46th most notorious villain in the last 100 years of the movies, according to the American Film Institute.

You can listen to the entire oral argument in Privacash, Inc. v. American Express Co. et al. [here].

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

Snooze, ya lose

Saturday, September 17th, 2011

A week ago, there were at least three subject matter eligibility cases that had been orally argued but not yet decided by the Federal Circuit: Dealertrack v. Huber (argued on May 4th, Dyk, Linn, Plager); Fuzzysharp Technologies Inc. v. 3D Labs, Inc. (argued on July 7th, Bryson, O’Malley, Reyna); and Ultramercial v. Hulu (argued on August 4th, Rader, Lourie, O’Malley).  The cases are of particular interest because they will continue to develop the court’s jurisprudence in the area of subject matter eligibility, post-Bilski.  Moreover, with what appears to be significantly divergent viewpoints about subject matter eligibility by various Federal Circuit judges, as evidenced by the Research Corp. Technologies v. Microsoft and CyberSource Corp. v. Retail Decisions, Inc. panels, the earliest decision to issue will serve as precedent to subsequently decided cases. 

At first glance, one might have expected Dealertrack to issue first.  As it turns out, it was Judge Rader’s panel in Ultramercial v. Hulu that took home the honors on September 15th.  Now a cynic might wonder if this was “gamesmanship” in that the most-recently argued case was decided first and a mere six weeks after oral argument.  However, in actuality, the Ultramerical case really only concerned the single issue of subject matter eligibility that had been decided on summary judgment by the district court.  So, perhaps Ultramercial just happened to be an easy one.

On another note, the Dealertrack decision should be interesting.  The panel is comprised of Circuit Judges Dyk, Linn, and Plager.  Judge Dyk authored the CyberSource opinion.  Judge Plager was a member of the unanimous panel in the Research Corp. Technologies opinion.  I’ll venture a guess that Judge Linn is authoring the Dealertrack opinion for the court.

Dr. Oz’s Patent

Thursday, September 15th, 2011

You may be familiar with Dr. Mehmet Oz who often appeared on the Oprah Winfrey Show. He now has his own syndicated televison show. This past August he and his co-inventors had a patent issue titled “System and Method for Determining an Objective Measure of Human Beauty.”  It is patent number 8,005,270.

Claim 1 of the patent reads:

1. A beauty quantification system comprising:

a beauty quantification processor;

a beauty measure datastore, wherein the beauty measure datastore comprises quantifiable measures of beauty of a body region;

a beauty score datastore;

a user computing device;

a network; and

a beauty enhancement processor,

wherein the beauty quantification processor comprises instructions for:

      receiving user data indicative of physical attributes of a selected body region of the user;

      obtaining measures of beauty from the beauty measures datastore associated with the selected body region;

      evaluating the user data against the beauty measures of the selected body region;

      determining a user score indicative of the beauty of the selected body region of the user;

      storing the user score in the beauty score datastore; and

      comparing the user score to a score stored in the beauty score datastore; and

wherein the beauty enhancement processor comprises instructions for:

      receiving from the user a selection for an enhancement of the selected body region;

      applying the selected enhancement to the selected body region; and

      determining an enhanced user score indicative of the beauty of the selected body region after application of the selected enhancement.

You can read the entire patent [here].

Federal Circuit Judges to Participate in E.D. Texas Conference

Wednesday, September 14th, 2011

The Federal Circuit has posted on its website an announcement about an upcoming conference sponsored by the Eastern District of Texas Bench and Bar (to be held in Dallas).  It looks like quite an interesting three day conference that should be particularly interesting to in-house patent counsel.  The announcement reads:

Chief Judge Rader, Circuit Judge Linn, Circuit Judge O’Malley, Circuit Judge Reyna and Circuit Mediator Amend to Participate in the 2011 Eastern District of Texas Bench Bar Conference

Chief Judge Randall Rader, Circuit Judge Richard Linn, Circuit Judge Kathleen O’Malley, Circuit Judge Jimmie Reyna and Circuit Mediator James Amend will participate in the 2011 Eastern District of Texas Bench and Bar Conference from September 25 to 27, 2011 in Las Colinas, Texas. Among the topics to be discussed are “Judicial Economy versus De Novo Review in Claim Construction”, “The Ethics of Advocacy”, “Emerging Management Techniques & Tradeoffs in Multiple Party Cases”, “Corporate Counsel: Views of ED Texas, Federal Circuit and Judicial Patent Reform”, and “Settlement Perspectives: Impediments to Resolution of IP & Other Complex Cases”. Click here for the conference schedule. Registration is available here .

Confirmation Hearing for Judge Evan Wallach

Monday, September 12th, 2011

The Senate Judiciary Committee’s hearing for Judge Evan Wallach took place last week.  Judge Wallach was introduced to the committee by Senate Majority Leader Harry Reid. 

You can watch the video of the hearing at this [LINK].  Senator Reid introduces Judge Wallach at about the 32:10-36:08 minute portion of the video.  Judge Wallach answers questions at about the 42:33-63:50 minute portion of the video.

Confirmation Hearing for Judge Evan Wallach — September 7th

Monday, September 5th, 2011

The Senate Judiciary Committee has posted on its website the date and time for Judge Evan Wallach’s confirmation hearing for a seat on the Federal Circuit bench.  The hearing is currently scheduled for Wednesday September 7, 2011 at 12:30 Mountain time (2:30 Eastern time).

The link with all the pertinent information and a further link to the webcast is available here: [Link].

Judge Moore Sticks up for Patent Prosecutors

Thursday, September 1st, 2011

On the heels of Cybersource Corp. v. Retail Decisions, Inc., an opinion that would have made Justice Douglas blush, the Federal Circuit has decided Classen Immunotherapies, Inc. v. Biogen-Idec et al., 2006-1634 (Fed. Cir. Aug. 31, 2011).  What interested me most about this decision was Chief Judge Rader’s additional views in which he was joined by Judge Newman.

Chief Judge Rader took issue with patent attorneys responding to Supreme Court precedent by drafting claims to avoid abstract ideas.  Chief Judge Rader characterized this as “gamesmanship.”  This is disappointing because it reflects a fundamental misunderstanding of what patent attorneys are doing.  At a basic level, they are zealously representing their clients.  At a claim drafting level, they are simply trying to color within the lines of what they believe to be the borders of eligible subject matter. 

For example, if subject matter is a circle, and the outermost edge of the circle is a characterization of the subject matter that is so abstract as to constitute an abstract idea, drafting a claim to include that outermost area should violate section 101.  However, if one doesn’t try to claim that outermost area, he or she should be fully entitled to claim the inner parts of the circle, whether that be an apparatus claim, a method claim, a composition of matter claim, or even an article of manufacture claim.  For example, just because one can’t claim the idea of sitting, that doesn’t mean one shouldn’t be able to claim all types of chairs.  The same holds true for Beauregard claims or any other type of claim that does not claim an abstract idea.  The rules shouldn’t change just because software is involved.

The following is an excerpt of what Chief Judge Rader wrote in his additional views in Classen:

The patent eligibility doctrine has always had significant unintended implications because patent eligibility is a “coarse filter” that excludes entire areas of human inventiveness from the patent system on the basis of judge-created standards. For instance, eligibility restrictions usually engender a healthy dose of claim-drafting ingenuity. In almost every instance, patent claim drafters devise new claim forms and language that evade the subject matter exclusions. These evasions, however, add to the cost and complexity of the patent system and may cause technology research to shift to countries where protection is not so difficult or expensive.


The first unintended consequence, claim drafting evasion, has occurred several times in the past. After all, patents require a translation of technology into text, i.e., patent claims. Inevitably the subject matter exclusions of eligibility doctrines depend on the way that claims are drafted. Thus, careful claim drafting or new claim forms can often avoid eligibility restrictions. Eligibility then becomes a game where lawyers learn ingenious ways to recast technology in terms that satisfy eligibility concerns.


Two well-known examples of claim drafting to circumvent eligibility restrictions are the Beauregard claim and the Swiss claim. The Beauregard claim was devised to draft around restrictions on software imposed in Gottschalk v. Benson, 409 U.S. 63 (1972). Benson denied eligibility to mathematical algorithms, a category broad enough to endanger computer software in general. The Beauregard claim form, however, was for “computer programs embodied in a tangible medium.” In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995). Claims were re-drafted so that the intangible computer code in Benson instead became an encoded tangible medium in Beauregard. See id. at 1584 (PTO stating it will treat such claims as patent eligible subject matter); MPEP § 2106 (8th ed. Rev. 8, July 2010) (same).


When careful claim drafting or new claim formats avoid eligibility restrictions, the doctrine becomes very hollow. Excluding categories of subject matter from the patent system achieves no substantive improvement in the patent landscape. Yet, these language games impose high costs on patent prosecution and litigation. At the same time, the new games can cheat naïve inventors out of their inventions due to poor claim drafting. Moreover, our national innovation policy takes on characteristics of rewarding gamesmanship.


In addition to gamesmanship, eligibility restrictions increase the expense and difficulty in obtaining a patent. By creating obstacles to patent protection, the real-world impact is to frustrate innovation and drive research funding to more hospitable locations. To be direct, if one nation makes patent protection difficult, it will drive research to another, more accommodating, nation.

Classen, C.J. Rader’s additional views at pages 2-4 (emphasis added).

In response to Chief Judge Rader’s additional views, Judge Moore stood up for claim drafters noting that careful claim drafting is a virtue, not a vice.  She wrote:

3 With all due respect to my colleagues, I do not agree with the additional views. First, the additional views improperly criticizes litigants for arguing that abstract ideas are exempt from patent protection. We are bound to follow Supreme Court precedent which clearly and explicitly holds that abstract ideas are not eligible for patent protection. Diamond, 450 U.S. at 185 (“Excluded from such patent protection are . . . abstract ideas.”); Parker, 437 U.S. at 589 (“[A]bstract intellectual concepts are not patentable . . . .”). Second, I favor “careful claim drafting” and think it a virtue, not a vice. If § 101 causes the drafting of careful, concrete, specific claims over abstract, conceptual claims, I see no harm. The world will have clear notice of the scope of such patent rights. Finally, in this global age, it is not immediately clear to me why the scope of patent rights should dictate the location of the innovation. Chinese companies do not move to the U.S. to carry out their research when they want a U.S. patent. Regardless, any decision on “national innovation policy” such as what will “frustrate innovation” or “drive research funding” should be left to Congress. We do not have the resources, institutional expertise or the mandate to weigh the competing incentives to innovation. Our job is to take the statute as we find it and apply it to the facts of the case before us.  

Classen, Judge Moore’s dissent at pages 13-14 (emphasis added).

The recent demonizing of Beauregard claims and assertions of gamesmanship leaves one feeling a little bit like an outlaw in the old west:


* “Boilerplate Bill” is also wanted for continuation filin’, IDS submittin’, zealously representin’, gum chewin’, software protectin’, dog pettin’, Examiner collaboratin’, and algorithmin’.  He is considered armed and dangerous, as his mild-mannered, patent attorney personality has been known to bore people to death.