717 Madison Place

One can easily access the audio recordings of oral arguments from the Federal Circuit website.  However, for those who prefer to use iTunes, I noticed that recent recordings are available from iTunes at this link for free.

In reading Judge Moore’s dissent in Norgren v. ITC, __ F.3d __ (Fed. Cir. 2012) that issued the other day, her comment about the functional language in the claim at issue caught my eye.  The claim at issue read:

1. Connecting structure for contiguously connecting

together a pair of fluid-flow elements, each

fluid flow element including a generally rectangular

ported flange so as to define a pair of ported

flanges associated with the fluid-flow elements,

said connecting structure comprising:

a four-sided, generally rectangular clamp adapted,

in its operative clamping position, to engage, in

parallel relationship with one another, the pair of

ported flanges, one of said sides of the clamp being

pivotally mounted so that said one side can be

pivoted out of said operative clamping position in

order to permit reception of said flanges into the

clamp and then pivoted back into said operative

clamping position,

sealing means for establishing fluid-tight communication

between the respective ports formed in

said flanges, and

locking means for releasably locking said one side

in said operative clamping position, in which position

the clamp urges the flanges towards one another

thereby establishing together with said

sealing means, said fluid-tight communication between

said ports.

In discussing the functional language, Judge Moore comments that the functional language is a requirement of the claim that must be treated as a claim limitation:

We must look to the precise claim language and be

ever vigilant not to strip away patent rights by eliminating

claim limitations. This claim requires the clamp to be

both “generally rectangular” and “four-sided” in structure.

Hence, while something with six sides (like the SMC

ported flange pictured above) might be generally rectangular,

that does not mean it is “four-sided.” The claim

does not require that the flange be four-sided, but it does

require that the clamp be “four-sided.” The claim also

recites the functional limitation that the clamp must be

“adapted, in its operative clamping position, to engage

. . . the pair of ported flanges.”

Hence the claims require that the clamp is: (1) foursided;

(2) generally rectangular; and (3) adapted in its

operative position to engage the flanges. These are three

distinct requirements, three distinct claim limitations.

The ALJ clearly understood this. The majority, however,

improperly combines the structural and functional claim

limitations to conclude that only the operative portion of

the clamp must be four-sided and generally rectangular.

(Emphasis added).

In view of Judge Moore’s remarks, look for more uniform examination within the PTO of claims that include “adapted to” and other functional language — or not.

This might be of interest to those of you with easy access to the Library of Congress.  I wonder if Box 599 holds anything of interest for the briefing of CLS v. Alice:  [Link].

Richard Taranto was nominated a year ago today for a seat on the US Court of Appeals for the Federal Circuit.  Mr. Taranto’s nomination followed the failed nomination of Edward DuMont, who was a nominee between April of 2010 and November 2011.  The open seat on the bench for which Mr. Taranto is a nominee has been vacant since Chief Judge Paul Michel’s retirement from the Federal Circuit on May 31, 2010.  The nomination of Mr. Taranto fell victim to the Leahy-Thurmond rule earlier this year.  With the election now concluded, Mr. Taranto’s nomination should advance to a vote by the full Senate.

You can watch the nomination hearing for Mr. Taranto here.

The Supreme Court of the United States heard oral argument today in the case of Already v. Nike.  The question presented is:

Whether a federal district court is divested of Article III jurisdiction over a party’s challenge to the validity of a federally registered trademark if the registrant promises not to assert its mark against the party’s then-existing commercial activities.

The transcript of the oral argument is available here: link.

The audio of the oral argument is available [here.].

Justice Breyer’s famous comment is available [here].

The briefs are available here:

Merit Briefs

• Brief for Petitioner Already, LLC
• Brief for Respondent Nike, Inc.
• Reply Brief For Petitioner

Amicus Briefs

• Brief for Intellectual Property Professors in Support of Petitioners
• Brief for Public Patent Foundation in Support of Petitioner
• Brief for the American Intellectual Property Law Association in Support of Respondent
• Brief for the International Trademark Association in Support of Respondent
• Brief for Levi Strauss & Co. and Volkswagen Group of America, Inc. in Support of Respondent
• Brief for the United States in Support of Vacatur and Remand
• Brief for Intellectual Property Owners Association in Support of Neither Party

If I am interpreting the US Courts’ website correctly, Judge William C. Bryson is scheduled to take senior status on January 7th.  That means that it is likely that at least three new Federal Circuit judges will be sworn in within the next year.

WILLIAM C. BRYSON was appointed by President William J. Clinton in 1994. Prior to his appointment, Judge Bryson was with the United States Department of Justice from 1978 to 1994. During that period, he served as an Assistant to the Solicitor General [1978-79], Chief of the Appellate Section of the Criminal Division [1979-83], Counsel to the Organized Crime and Racketeering Section [1983-86], Deputy Solicitor General [1986-94], Acting Solicitor General [1989 and 1993], and Acting Associate Attorney General [1994]. He was an Associate at the Washington, DC law firm of Miller, Cassidy, Larroca and Lewin from 1975 to 1978. Judge Bryson served as Law Clerk to the Honorable Henry J. Friendly, United States Court of Appeals for the Second Circuit from 1973 to 1974, and as Law Clerk to the Honorable Thurgood Marshall, Supreme Court of the United States, from 1974 to 1975. Judge Bryson received an A.B. from Harvard College in 1969 and a J.D. from the University of Texas School of Law in 1973.