Archive for September, 2012

Odds and Ends

Sunday, September 30th, 2012

1)  The Honorable Pauline Newman was named a Fellow of the American Chemical Society in August.  You can read more about it here: [Link].  Congratulations to Judge Newman!

2)  The Federal Circuit reinstated portions of the original panel decision in Akamai v. Limelight.  [Link].  You may recall that the previous opinion was vacated when en banc review was granted.  The original panel opinion was previously removed from the Federal Circuit web site; but, it is available here.

3)  Upon remand from the Supreme Court, an en banc hearing was requested in the Ultramercial v. Hulu case (sometimes referred to as WildTangent).  The petition for an en banc hearing was denied last week.  [Link].  A request for rehearing en banc was filed on the same day  (August 22, 2012) in CLS v. Alice.  That petition was not addressed last week.

Federal Circuit Panel to Discuss Splits within the Federal Circuit

Wednesday, September 26th, 2012

The Federal Circuit is sitting in Colorado next week to hear oral arguments.  There are numerous activities being held by the IP community during the week.  One of the events that looks quite interesting is a panel to be held at the University of Denver comprised of Federal Circuit judges discussing splits within the Federal Circuit.  The agenda for the event is as follows:


University of Denver College of Law

Room 165

Oral arguments begin at 10:00 a.m.


University of Denver College of Law

Room 165

2:15 – 5:00 p.m.

(CLE credits pending)

“Patent Perspectives from the Inside.” This conference will bring together two very different sets of “inside” perspectives, those of the judiciary and in-house counsel, to discuss specific issues in patent law.

Panel 1: 2:15 – 3:30 p.m.

“Addressing Splits within the Federal Circuit,” with Federal Circuit Judges (not yet announced).

The Federal Circuit Court of Appeals is made up of twelve judges. Although the Court often helps clarify patent doctrine, the judges also occasionally disagree about the law. Examples of recent intra-circuit splits have occurred in the context of subject matter patentability, enablement, claim construction, and divided infringement. Join our panel of distinguished judges in a discussion about how they deal with differences of opinions within the Federal Circuit. The panel will be moderated by Denver Law Assistant Professor Bernard Chao.

Panel 2: 3:45 — 5:00 p.m.

“Cease and Desist Letters: The Law and The Tactics,” with Cynthia Bright, HP; Aaron Brodsky, Oracle; Chris Byrne, formerly with Tessera Technologies; and Stephen Perkins, Covidien.

Preparing and responding to cease and desist letters typically falls on the shoulders of in-house counsel. These letters have surprising number of different legal and practical implications. These letters can provide declaratory judgment jurisdiction. They also give the recipient notice of the patent and show that the patent holder knew about the recipient’s products. This in turn can affect determinations of damages and willfulness. Join a panel of experienced in-house counsel from around the country to discuss what goes into preparing and responding to cease and desist letters. This panel will be moderated by Professor Tim Holbrook from Emory University School of Law.

Some Recent Functional Language Decisions

Sunday, September 23rd, 2012

It is worth highlighting that in the recent opinion of Medtronic v. Boston Scientific Corp. et al., App. No. 2011-1313 (Fed. Cir. Sept. 18, 2012) the Federal Circuit noted the limiting effect of functional language in a claim.  The technology of the patents in the appeal concerned implantable defibrillators.  The district court had construed the claims at issue in the case (from Reissue patent RE38,119) as being limited to:  “for the treatment of congestive heart failure.”   That limitation was not expressly part of the claim language.  Upon appeal of that claim construction, the Federal Circuit noted that claim 171 of a continuation patent of the RE38,119 patent, the RE39,897 patent, expressly recited “to improve the pumping ability of the heart suffering from heart failure.”  Claim 171 recites:

171.  A method of improving the pumping ability of a heart suffering from heart failure comprising:

sensing for depolarization signals only from one ventricle of the heart;

stimulating the left ventricle and the right ventricle when a depolarization signal from the one ventricle is detected for effecting a coordinate contraction of ventricles contracting in an incoordinate manner to improve the pumping ability of the heart suffering from heart failure.

The Federal Circuit stated:

Moreover, inclusion of the express limitation “to improve the pumping ability of the heart suffering from heart failure,” RE’897 Patent col. 21 ll. 33-35, in claim 171 of the RE’897 Patent, a continuation of the RE’119 Patent, suggests that the other claims that do not recite such a limitation should not be so limited. We therefore conclude that the district court erred by restricting the claimed invention to the treatment of congestive heart failure.

Thus, the Federal Circuit noted that the functional language “to improve the pumping ability of the heart suffering from heart failure” has limiting effect on the scope of the claim.

Ex Parte Miles

Another functional language decision, Ex Parte Miles, was previously highlighted by the All Things Pros blog.  In that appeal to the Board, the Board gave limiting effect to the language “adapted to be removably secured to said base.”  The claim at issue recited:

2. A gas fireplace insert assembly, comprising:

a firebox having a base a top and at least one wall, said at least one wall extending between said top and said base such that said base, said top and said at least one wall define a front opening firebox;

legs adapted to be removably secured to said base;

said at least one wall has a rear portion and side portions having a dark color and a contrasting light color, said light color extending downward from a demarcation between said dark and said light colors to said base; and

said demarcation being continuous across said rear and

said side portions.

The Examiner had argued that “adapted to be removably secured to said base” was not a positive limitation but only required the ability to perform.  Moreover, the Examiner argued that the legs of a cited reference were capable of being removed because they were “removable by a blowtorch.”  The Board reversed the Examiner noting Federal Circuit precedent that claim construction should be firmly anchored in reality:

Under the Examiner’s interpretation, because it is possible to remove anything using a blow torch, every means of attaching or securing two parts is removable. This interpretation is incorrect because it would effectively expunge the word “removably” from the claim language. See Stumbo v.Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions that render phrases in claims superfluous).

The Specification does not provide a definition for the terms “removably secured” or “removably attached.” An ordinary meaning of removable is “that can be removed or taken away,” and an ordinary meaning of “secure” is “to fix or attach (something) so as not to become loose, giveway, fall off, or come apart.”1 Consistent with these ordinary meanings, the Specification describes removable legs as attached by screws.2 Spec. 13, ll. 17-25 (describing legs 100 and 102 as releasably secured to base rim 20 ofinsert 12 by screws 116); figs. 6-8.

An artisan would interpret that removably secured or attached legs are those that they may be removed in the ordinary sense of the word, such as by unscrewing a screw. See K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1365 (Fed. Cir. 1999) (interpreting that rivets and laminate permanently affix while, in contrast, screws are removable). Consequently, removal by means such as a blow torch is not within the scope of claims 2, 10, and 16. Id. at 1365 (“claim construction is firmly anchored in reality by the understanding of those of ordinary skill in the art”).

As such, we cannot sustain the rejection of independent claims 2, 10, and 16, and their respective dependent claims 3-9, 11-13, and 17-29.

Having determined that the Examiner’s proposed combination of references did not satisfy the language “legs adapted to be removably secured to said base,” the Board reversed the rejection.

Patent Litigation Statistics 2012

Sunday, September 16th, 2012

PriceWaterhouseCoopers has released its annual publication on patent litigation statistics.  You can access the study at the PWC site: [here].

Federal Circuit Hears En Banc Oral Argument over Beer

Sunday, September 9th, 2012

The Federal Circuit sat en banc this past Friday and heard the oral argument in Beer v. U.S. That case concerns judicial pay for Article III judges.  The judges of the Court of Appeals for the Federal Circuit are Article III judges; so, the outcome of the appeal could affect their pay.

Chief Judge Randall Rader made a statement immediately before the oral argument began acknowledging the fact that this case could affect the judges of the Federal Circuit themselves.  However, he noted that the “Rule of Necessity” required them to adjudicate the case:  [Listen].

Judge Rader’s statement:

Today’s appeal presents a somewhat unusual circumstance.  Any decision by this court may directly affect every member of not only the Federal Circuit but of the entire federal judiciary.  To some of us this is more than unusual, it is a little uncomfortable.  Yet the Supreme Court has stated that under the Rule of Necessity, we have a duty to decide cases involving judicial compensation in spite of any potential personal interest.  The Rule of Necessity states “although a judge had better not, if it can be avoided, take part in a decision of a case in which he has any personal interest, yet he not only may but must do so if the case cannot be heard otherwise.”

These appellants have brought a cognizable claim and are entitled to their day in court.  As noted by perhaps the greatest American judge, Chief Justice John Marshall, in 1821 the judiciary unlike the legislature does not have the luxury of inaction when faced with difficult decisions.  Whatever difficulties a case may bring “we have no more right to decline the exercise of jurisdiction which is given than to usurp that which is not given.”  It is under this mandate that we sit and hear this case today.

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

“Sufficiently Interrelated”

Saturday, September 8th, 2012

You might recall that in the KSR v. Teleflex opinion that the Supreme Court used the language “interrelated teachings.”  To the best of my knowledge, the Federal Circuit has not yet weighed in on the meaning of that phrase.  In the recently decided appeal of Sirona v. Kappos, a Federal Circuit panel actually had an opportunity to address the meaning of “interrelated teachings” as well as the phrase  “sufficiently interrelated.”  But, the panel opted not to write an opinion and issued a Rule 36 opinion instead.

Sirona v. Kappos concerned an appeal of a Board decision from an inter partes reexamination.  The Board found some of the claims under reexam patentable.  So, the appeal to the Federal Circuit pitted the inter partes reexam requestor against the patent owner (3M) and the Solicitor’s Office of the USPTO.

Because the Board found in favor of the patentee with respect to some claims by finding those claims patentable, the Solicitor’s Office was in the unique position of arguing in favor of patentability at the CAFC. Had 3M cross-appealed the Board’s rejection of other claims, I suppose the Solicitor’s Office would have been in the even more unique position of  having to argue in favor of the patentability of the allowed claims and in favor of unpatentability of the rejected claims!  I wonder which counsel’s table the PTO sits at in that instance.

With respect to the “interrelatedness” issue, the Board stated the following in its “Decision on Request for Rehearing”:

Sirona misunderstands the basis of our decision. Rather than determining that JP ‘966 and US ‘585 were not analogous art, our statement merely highlighted the deficiencies in Sirona’s attempt to establish a prima facie case of obviousness.

As we pointed out in our decision (Dec. 14 ), “a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,418 (2007). The Supreme Court made it abundantly clear that an obviousness analysis “must ask whether the improvement is more than the predictable use of prior art elements according to their established function.” !d. at 417. “Often, it will be necessary … to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” !d. at 418 (emphasis added).

Sirona did not provide any meaningful analysis on any of these factors. For example, other than conclusory statements that wholly disregard significant differences in the teachings of the prior art references and a vague reference to a “vast body of prior art pertaining to crowns, frameworks, and similar items” designed to fill the gaps (TPR Req. Reh’g 6), Sirona did not establish that JP ‘966 and US ‘585 are sufficiently interrelated to support their combination in the manner claimed in view of the differences present in the evidence and reasoning of record.

Specifically, while Sirona argues that the ‘694 Patent under reexamination describes the coloring of ceramics generally (TPR Req. Reh’g 4 ), such argument ignores the fact that the claims are not directed to the coloring of ceramics generally but rather the coloring of translucent dental ceramics obtained from a “pre-sintered dental ceramic workpiece” (claim 1 ). Here, neither Sirona nor the Examiner demonstrated that the prior art “greenware” or ”bisque phase of the ceramic article” would inherently or . necessarily be suitable as a pre-sintered dental ceramic workpiece (JP ‘966, ,-r,-r [0012], [0013]).  Sirona’s failure to satisfy its initial burden stands in stark contrast to the detailed analysis provided by 3M on this matter (Patent Owner’s Appeal Brief filed March 15, 2010 at 9-13; Patent Owner’s Opposition 1-4 ).

Sirona’s reliance on cases such as Wyers v. Master Lock Co., 616 F.3d 1231 (Fed. Cir. 201 0) and In re ICON Health and Fitness, Inc., 496 F .3d 1374 (Fed. Cir. 2007) is misplaced. Those cases involved simple mechanical inventions in which a person of ordinary skill in the art would have reasonably expected that the element in dispute (e.g., the gas spring designed to stably retain a structure in the vertical position as in ICON Health) would serve the same or similar function in either the invention or the prior art. In this case, in light of the deficiencies in Sirona’ s position that JP ‘966 and US ‘585 are sufficiently interrelated as discussed supra, Sirona did not persuasively demonstrate that a person of ordinary skill in the art would have predicted that the metal salt solutions of JP ‘966 would impart the same chemical and/or physical effects on dental products of the type here claimed, as explained by 3M (Opposition at 2-3). Accordingly, Sirona failed to articulate some reasoning with some rational underpinning to support its proposed obviousness rejection. KSR at 418.

The panel at the Federal Circuit (Judges Newman, Prost, and Moore) issued a Rule 36 opinion in this case.  That was surprising because there were a number of interesting issues that could have been addressed in a written opinion:

1)  Is the interrelatedness of references a question of law or fact and accordingly what is the proper standard of review on the issue?

2) Is interrelatedness relevant to “motivation to combine”?

3)  Is a “lacks interrelatedness” argument different from a “non-analogous art” argument?

4)  What is the test for determining when two references are interrelated “enough” to be deemed “sufficiently interrelated”?

5)  How should the Federal Circuit review a compound finding of fact by the Board?

You can listen to the Solicitor’s Office for the PTO argue here: [Listen].

You can listen to the counsel for the third party requestor argue here: [Listen].

The entire oral argument is available here: [Listen].

One takeaway from the Board decision is that “interrelatedness” is different from a non-analogous art argument.  Thus, even if all cited references are determined to be analogous art, one might still want to argue that the references are not sufficiently interrelated to establish a prima facie case of obviousness.