Archive for June, 2012

ABA Urges Senate to Vote on Richard Taranto Nomination

Thursday, June 21st, 2012

The ABA sent a letter to Senate leaders the other day urging a vote on several consensus nominees, including Richard Taranto for the Federal Circuit.  You can read the letter here.  The Blog of Legal Times reports that Mr. Taranto’s nomination is at risk of falling victim to election year politics. [Link].

Sri Srinivasan/Richard Taranto

Tuesday, June 12th, 2012

Mr. Sri Srinivasan was nominated to the D.C. Circuit the other day.   He and current Federal Circuit nominee Richard Taranto were advocates on opposite sides of the case Hynix Semiconductor, Inc., et al. v. Rambus Inc., 645 F.3d 1336 (Fed. Cir. 2011).   You can listen to that oral argument here: [Listen].

According to the site, Mr. Taranto’s nomination is currently the fourth oldest nomination awaiting consent from the full Senate.

Do as we say, not as we do

Monday, June 11th, 2012

I couldn’t help but be reminded of the CyberSource v. Retail Decisions, 654 F. 3d 1366 (Fed. Cir. 2011) case today when I read the court’s opinion in Toshiba Corp. v. Imation Corp., 2011-1204 (Fed. Cir. June 11, 2012).  In Toshiba, Judge Moore writing for the court states:

[A]pparatus claims cover what a device is, not what a device does.

Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1090 (Fed. Cir. 2009) (quoting Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990)).


One would assume that principle applies to article of manufacture claims (like the Beauregard claim at issue in CyberSource) as well.

In another recent case, Smartmetric Inc. v. American Express Co., 2011-1473, (Fed. Cir. April 11, 2012) Judge Moore noted that the Federal Circuit does not rewrite claims, but instead gives effect to the terms chosen by the patentee:

Construing “insertion . . . into” to also mean “passed near” would deviate from the term’s plain and ordinary meaning, conflict with the specification, and erroneously rewrite the claims. See K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1364 (Fed. Cir. 1999) (“Courts do not rewrite claims; instead, we give effect to the terms chosen by the patentee.”).

In Chef America v. Lamb-Weston, 358 F.3d 1371 (Fed. Cir. 2004), Judge Friedman writing for the court stated that a court may not redraft a claim even to sustain its validity:

This court, however, repeatedly and consistently has recognized that courts may not redraft claims, whether to make them operable or to sustain their validity. See, e.g., Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1349 (Fed. Cir. 2002); Elekta Instrument S.A. v. O.U.R. Scientific Int’l, Inc., 214 F.3d 1302, 1308-09 (Fed. Cir. 2000); Process Control Corp. v. Hydreclaim Corp., 190 F.3d 1350, 1357 (Fed. Cir. 1999); Rhine v. Casio, Inc., 183 F.3d 1342, 1345 (Fed. Cir. 1999); Quantum Corp. v. Rodime, PLC, 65 F.3d 1577, 1584 (Fed. Cir. 1995); Becton Dickinson & Co. v. C.R. Bard, Inc., 922 F.2d 792, 799 n.6 (Fed. Cir. 1990). Even “a nonsensical result does not require the court to redraft the claims of the [’290] patent. Rather, where as here, claims are susceptible to only one reasonable interpretation and that interpretation results in a nonsensical construction of the claim as a whole, the claim must be invalidated.” Process Control Corp., 190 F.3d at 1357. “Where, as here, the claim is susceptible to only one reasonable construction, the canons of claim construction cited by [Chef America] are inapposite, and we must construe the claims based on the patentee’s version of the claim as he himself drafted it.” Id.

And, of course there is the Supreme Court case White v. Dunbar, 119 U.S. 47, 51-52, 7 S.Ct. 72, 74-75, 30 L.Ed. 303 (1886),, where Justice Bradley wrote:

Some persons seem to suppose that a claim in a patent is like a nose of wax, which may be turned and twisted in any direction, by merely referring to the specification, so as to make it include something more than, or something different from, what its words express…. The claim is a statutory requirement, prescribed for the very purpose of making the patentee define precisely what his invention is; and it is unjust to the public, as well as an evasion of the law, to construe it in a manner different from the plain import of its terms. This has been so often expressed in the opinions of this court that it is unnecessary to pursue the subject further.

With those citations in mind, it is disheartening that the court stated the following in CyberSource:

CyberSource argues that claim 2 is patent-eligible per se because it recites a “manufacture,” rather than a “process,” under the statutory language of § 101. CyberSource contends that, by definition, a tangible, man-made article of manufacture such as a “computer readable medium containing program instructions” cannot possibly fall within any of the three patent-eligibility exceptions the Supreme Court has recognized for “laws of nature, physical phenomena, [or] abstract ideas.” Appellant’s Br. 47-48 (quoting Bilski, 130 S.Ct. at 3225). We disagree.

Regardless of what statutory category (“process, machine, manufacture, or composition of matter,” 35 U.S.C. § 101) a claim’s language is crafted to literally invoke, we look to the underlying invention for patent-eligibility purposes. Here, it is clear that the invention underlying both claims 2 and 3 is a method for detecting credit card fraud, not a manufacture for storing computer-readable information. This case is thus similar to In re Abele, 684 F.2d 902 (CCPA 1982). In Abele, claim 5 of the patent at issue recited “[a] method of displaying data” comprising the steps of “calculating the difference” between two numbers and “displaying the value.” Id. at 908. The court concluded that claim 5 was not directed to patent-eligible subject matter because it claimed an abstract idea. Id. However, claim 7 was argued to be different because it recited an “[a]pparatus for displaying data” comprising “means for calculating the differences” between two numbers and “means for displaying the value.” Id. at 909 (emphases added). Though claim 7 literally invoked an “[a]pparatus,” the court treated it as a method claim for the purpose of its § 101 analysis. Due to its “broad” and “functionally-defined” nature, the court found that treating claim 7 as an apparatus claim would “exalt form over substance since the claim is really to the method or series of functions itself.” Id. (citation omitted). Accordingly, the court placed “the burden… on the applicant to demonstrate that the claims [were] truly drawn to [a] specific apparatus distinct from other apparatus[es] capable of performing the identical functions.” Id. (citation omitted).

In the present case, CyberSource has not met its burden to demonstrate that 1375*1375 claim 2 is “truly drawn to a specific” computer readable medium, rather than to the underlying method of credit card fraud detection. To be sure, after Abele, we have held that, as a general matter, programming a general purpose computer to perform an algorithm “creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.” In re Alappat, 33 F.3d 1526, 1545 (Fed.Cir. 1994). But we have never suggested that simply reciting the use of a computer to execute an algorithm that can be performed entirely in the human mind falls within the Alappat rule. Thus, despite its Beauregard claim format, under Abele, we treat claim 2 as a process claim for patent-eligibility purposes.

Financial Impact of Satellite Patent Offices

Saturday, June 9th, 2012

Speculation is beginning to grow across the country as to where the next satellite patent offices will be located.  Here is a report from a local television station in my town of Denver that asserts that a local satellite office would add $400 million to the local economy.  [Link]

En banc timelines

Tuesday, June 5th, 2012

In this previous post, I tried to figure out how long en banc opinions usually take to issue after oral argument.  Looking back on the chart, it is interesting to note that most of the decisions were issued in the second half of the month.  Of the thirteen en banc cases that I looked at, only one was decided before the 14th of the month.

Common sense

Saturday, June 2nd, 2012

Now we know.  After years of wondering what the phrase “common sense” encompasses, we finally have a definition from the Federal Circuit.  “Common sense” means knowledge so basic that it certainly lies within the skill set of an ordinary artisan.  The Federal Circuit stated as much in its recent decision in Mintz v. Dietz & Watson, App. No. 2010-1341 (Fed. Cir. May 30, 2012):

The district court made a clear error, however, in its unsubstantiated reliance on “a common sense view” or “common sense approach” to hold that it would have been “obvious to try” a locking engagement. The mere recitation of the words “common sense” without any support adds nothing to the obviousness equation. Within the statutory test to determine if a claimed invention has advanced its technical art field enough to warrant an exclusive right, “common sense” is a shorthand label for knowledge so basic that it certainly lies within the skill set of an ordinary artisan. With little more than an invocation of the words “common sense” (without any record support showing that this knowledge would reside in the ordinarily skilled artisan), the district court over-reached in its determination of obviousness.

At this juncture, the district court’s reliance on the perspective of an artisan in the knitting arts is especially problematic. The basic knowledge (common sense) of a knitting artisan is likely to be different from the basic knowledge in the possession of a meat encasement artisan. Moreover, the district court emphasized that the problem in the prior art was merely forming a checker-board or grid-like pattern. To be specific, the district court erroneously phrased the issue as whether it would have been obvious to simply “fix each point of intersection” of each strand in order to solve that problem.

Mintz v. Dietz & Watson, App. No. 2010-1341 (Fed. Cir. May 30, 2012).

Interestingly, the Federal Circuit asserts this definition of “common sense” without citing any authority for the definition.  Indeed, in prior opinions of the CAFC or CCPA, the terms “common sense” and “common knowledge” (or “basic knowledge”) have been recited separately — thus, implying that they were not the same thing.  For example, the KSR guidelines refer to: In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969) (explaining that a patent examiner may rely on ‘‘common knowledge and common sense of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference’’) and In re Zurko, 258 F.3d 1379, 1383, 1385 (Fed. Cir. 2001) (clarifying that a factual foundation is needed in order for an examiner to invoke ‘‘good common sense’’ in a case in which ‘‘basic knowledge and common sense was not based on any evidence in the record’’).   Don’t get me wrong, though.  I like the court’s definition of “common sense.”

From a patent examination/prosecution standpoint, I find the association of “common sense” with an ordinary artisan (as opposed to the generality of mankind, regardless of their area of expertise) to be interesting.  Presumably, the PTO should require an examiner who is relying on “common sense” in a rejection to: (1) recite who one of ordinary skill in the art is; and, either (2a) affirm that the examiner possesses basic knowledge in that art; or (2b) provide factual evidence showing what is basic knowledge in that art.  As is the case already under the KSR Guidelines, a bald assertion of “common sense” by itself would be insufficient.


If you were wondering how long it has been since the Supreme Court referred to “common sense” in its KSR v. Teleflex decision, it has only been five years (April 2007).

If you were wondering if the issue of “common sense” was addressed during the Federal Circuit oral argument — it was not.

You can read the Mintz opinion here: [Link].