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The thought for the day comes from the US Supreme Court decision in Aro Mfg. Co., Inc. v. Convertible Top Co., 365 U.S. 336 (1961).  In that case, the Court explained what an “invention” is in the context of 35 U.S.C. Sec. 271. Namely, it is the totality of the elements of the claim.  You might ask yourself if the Federal Circuit is creating a double-standard with respect to the meaning of “invention” under  35 U.S.C. sec. 271 and under 35 U.S.C. sec. 101.  Moreover, is the court backsliding to a “gist of the invention” analysis for section 101 purposes?

Under 35 U.S.C. sec. 271 as explained by Aro I a patentee must show that an infringer meets all the elements of a claim.  However, under some recent decisions with respect to 35 U.S.C. sec. 101, some might argue that a judge is free to take a more leisurely approach by discounting various claim elements and attempting instead to divine the underlying idea from the patent specification.

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).

The Federal Circuit heard oral argument this morning in The Association for Molecular Pathology v. USPTO (sometimes referred to as the “Myriad” case, which is also a party in the case).  You can listen to the oral argument here: [Listen].

The USPTO’s satellite office in Detroit opened last week.  I hadn’t seen any definitive information as to what art units were going to be represented in the Detroit office.  So, I did an area code search in the USPTO employee directory.  If those results are any indication, there are currently examiners for the following Group Art Units:

There are also seven employees in the office of the Board of Patent Appeals and Interferences.

Judges Rader, Newman, and Reyna were placed in the rather unenviable position of having to review one of their colleague’s cases in P.S. Chez Sidney v. U.S.I.T.C, App. No. 2008-1526 (Fed. Cir. July 13, 2012).

In today’s decision, Judge Reyna writing for the court reverses-in-part and vacates-in-part a decision by Judge Evan Wallach from when Judge Wallach served on the Court of International Trade.  I believe this is the first opportunity that the Federal Circuit has had to review one of Judge Wallach’s decisions since he was appointed to the Federal Circuit.  You can read the opinion here.

The Federal Circuit web site reports that Senior Judge Arthur Gajarsa has retired from the Federal Circuit.  The announcement reads:

Circuit Judge Arthur J. Gajarsa retired from the U. S. Court of Appeals for the Federal Circuit on June 30, 2012, concluding a distinguished judicial career during which he served the judiciary and his nation with distinction.

In his parting message to the court, Judge Gajarsa said:

“It has been indeed an honor and privilege to have worked with all of you during the past 15 years. You made my work at the court easy to perform and a pleasure to undertake. My success and the success of the court are attributable not only to my judicial colleagues, but also to the fine members of the court team. I shall miss all of you and I look forward to observing the continued fine work of the court in the future.
I am looking forward to retirement as of June 30, not as the end of my career, but the beginning of a new one.”

The University of New Hampshire School of Law notes that Judge Gajarsa will serve as the first Distinguished Jurist-in-Residence at the Franklin Pierce Center for Intellectual Property:

Judge Arthur Gajarsa, recently retired from the US Court of Appeals for the Federal Circuit, will be joining us as the first Distinguished Jurist-in-Residence at the Franklin Pierce Center for Intellectual Property. He will begin teaching this fall and will be working with us to enhance our practice-ready curriculum, as well as providing strategic guidance as we build the Franklin Pierce Center for Intellectual Property into a global hub for innovation.

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