Archive for February, 2014

Audio of Recent Supreme Court Oral Arguments

Friday, February 28th, 2014

The Supreme Court heard oral arguments this week in two cases relating to attorney fee shifting in patent litigation.  You can listen to the oral arguments here.

Octane Fitness, LLC v. ICON Health & Fitness, Inc.

  • ORAL ARGUMENT OF RUDOLPH A. TELSCHER, JR., ESQ. on behalf of the Petitioner:  [Listen]
  • ORAL ARGUMENT OF ROMAN MARTINEZ, ESQ.  for United States, as amicus curiae, supporting the Petitioner:  [Listen]
  • ORAL ARGUMENT OF CARTER G. PHILLIPS, ESQ. on behalf of the Respondent:  [Listen]
  • REBUTTAL ARGUMENT OF RUDOLPH A. TELSCHER, JR., ESQ. on behalf of the Petitioner:  [Listen].

Highmark Inc. v. Allcare Health Management Systems, Inc.

  • ORAL ARGUMENT OF NEAL K. KATYAL, ESQ. on behalf of the Petitioner: [Listen]
  • ORAL ARGUMENT OF BRIAN H. FLETCHER, ESQ. for United States, as amicus curiae, supporting the Petitioner:  [Listen]
  • ORAL ARGUMENT OF DONALD R. DUNNER, ESQ. on behalf of the Respondent: [Listen]
  • REBUTTAL ARGUMENT OF NEAL K. KATYAL, ESQ. on behalf of the Petitioner: [Listen].

There was a humorous exchange between Chief Justice Roberts and Mr. Dunner during the oral argument:  [Listen].

Respondents’ Brief in Alice v. CLS Bank

Wednesday, February 26th, 2014

The brief of respondents, CLS Bank International and CLS Services Ltd., in the Supreme Court case of Alice v. CLS Bank has been submitted to the Court.  The brief is available [here].

Oral Argument of the Week: Datcard Systems v. Pacsgear

Tuesday, February 25th, 2014

The oral argument in Datcard Systems v. Pacsgear will interest some practitioners.  The issues on appeal were how the words “data” and “automatically” should be construed.

I always find it interesting when somebody coins a new term.  For example, in Omega Engineering, Inc v. Raytek Corp., 334 F.3d 1314 (Fed. Cir. 2003) the phrase “prosecution disclaimer” was added to our lexicon.  In 2004, Lemley et al. introduced the phrase “divided infringement.”  In the Datcard Systems v. Pacsgear oral argument, Judge Chen notes that the cases of  Edwards Life Sciences v. Cook and Bid for Position v. AOL stand for a theory that he dubs “interchangeable use.”  Judge Chen explains the “interchangeable use” theory in this sound bite: [Listen].

The panel issued a Rule 36 affirmance in this appeal.

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

What will be the next en banc issue?

Wednesday, February 19th, 2014

It has been quite some time since the Federal Circuit accepted a new case for en banc review.  The court is currently reviewing en banc the Lighting Ballast Control v. Phillips Electronics case in order to reconsider Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc).  But, what will be the next case?  Has the court already taken a case en banc sua sponte sub secretum* without further briefing?

There are several topics ripe for review.

1)  Functional language is the hot topic these days.  I would not be surprised to see the court take on “functional language” in some manner.

2)  FInjan.  The court had to tap dance around the Finjan decision in a recent appeal.  I would not mind seeing that issue addressed en banc.  See this prior post [Link].

3)  The In re Abele/Cybersource v. Retail Solutions/Smartgene v. Advanced Biological Industries tragedy trilogy of cases.

4)  Atmel.  In yesterday’s opinion in Otto Bock Healthcare v. Ossur, Judge Lourie clarified his opinion for the court in Atmel Corp. v. Info Storage

Devices, 198 F.3d 1374 (Fed. Cir. 1999) by stating:

Further, Otto Bock’s reliance on Atmel is misplaced.

Atmel only foreclosed the use of the content of a nonpatent

publication incorporated by reference to add structure

to a means-plus-function claim. Atmel, 198 F.3d at

1382. Atmel did not purport to include U.S. patent applications.

In fact, 37 C.F.R. 1.57(d) specifically envisions

using a U.S. patent application incorporated by reference

to define structure for the purpose of 35 U.S.C. § 112, ¶ 6.

The court thus did not err in using the ’274 application’s

incorporation by reference to construe the term “means

for maintaining a vacuum” to mean a “weight-actuated

vacuum pump as disclosed in [the ’274 application].”

Irah Donner writes in his excellent book Patent Prosecution:

The Atmel Corp. decision is troublesome with respect to its reluctance to utilize the incorporation-by-reference rule to recite corresponding structure, particularly since this rule has been around for many years, including prior to the enactment of Section 112, sixth paragraph. . . . Hopefully, the Federal Circuit will have the opportunity to reconsider this issue in the future.

See Patent Prosecution, Fifth Edition,2007, at pages 2211-12.

I don’t really have a dog in the fight with respect to Atmel. I am not particularly fond of means-plus-function claims.  I suspect, however, that means-plus-function and step-plus-function claiming will take on a greater role in the future to combat §112 (lack of enablement due to overbreadth) and §101 invalidity assertions.  Namely, it seems harder to argue that a step-plus-function claim is overly broad, preempts all applications, or is abstract, if it is limited to the acts disclosed in the specification.  I also find means-plus-function claims a pain in the neck to deal with whenever I write an invalidity or non-infringement opinion — so, they have value in that regard, as well.  And, there have been a number of cases with large damages awards that are based on mean-plus-function claims.

Now that I have sufficiently jinxed these issues, we’ll see when and what issue the en banc court takes on next.

*By the way, I stole the phrase “sua sponte sub secretum” from Dennis Crouch.

PTO Memo on Patent Law Treaty and Patent Law Treaties Implementation Act of 2012

Tuesday, February 11th, 2014

In case you missed it, the PTO issued a memorandum in December 2013 outlining changes brought about by U.S. ratification of the Patent Law Treaty and the enactment of the Patent Law Treaties Implementation Act of 2012.  The memo is available here [Link], as well as on the PTO website.

The Federal Circuit Rides Again

Sunday, February 9th, 2014

The CAFC rode circuit again this past week with a visit to the University of Baltimore School of Law on February 4th.  The court held oral arguments in four cases.  You can view the briefs for the cases at this [Link].

The Federal Circuit sat in several other locations along the East Coast this past fall.

Thought for the day — No Reductionism

Thursday, February 6th, 2014

For the past few years, I have been writing a chapter for the Colorado Bar Association’s “Annual Survey” publication.  Each year we highlight the top legal developments from the previous year — my chapter focuses on intellectual property developments.  As I was finishing my write-up for this year’s Annual Survey, I found myself appreciating the Tenth Circuit’s insight into copyright law.  I hope the Supreme Court considers the parallels between copyright law and patent law when it decides Alice v. CLS.

Namely, the Tenth Circuit wrote in ENTERPRISE MANAGEMENT LTD., INC. v. Warrick, 717 F.3d 1112 (10th Cir. 2013):

Warrick’s view misses the forest for the trees. Any copyrightable work can be sliced into elements unworthy of copyright protection. See CMM Cable Rep., 97 F.3d at 1514. Books could be reduced to a collection of non-copyrightable words. Music could be distilled into a series of non-copyrightable rhythmic tones. A painting could be viewed as a composition of unprotectable colors. Warrick’s impulse to unpack Lippitt’s diagram into ever-smaller and less-protectable elements is understandable, as copyright jurisprudence tends toward dissection.

Nevertheless, a limiting principle constrains this reductionism. We must focus on whether Lippitt has “selected, coordinated, and arranged” the elements of her diagram in an original way. Feist Publ’ns, 499 U.S. at 358, 111 S.Ct. 1282Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1004 (2d Cir.1995)see also Feist Publ’ns, 499 U.S. at 349, 111 S.Ct. 1282 (“[I]f the selection and arrangement are original, these elements of the work are eligible for copyright protection.”).

Judge Chen — Presiding Judge

Wednesday, February 5th, 2014

With all the new blood on the Federal Circuit these days, it has not taken long for some of the recent appointees to step into the role of presiding judge of various panels.  Judge Wallach has already had that responsibility.  Yesterday, even Judge Chen served as presiding judge in oral arguments.  The other panel members on Judge Chen’s panel included Judge Hughes and Senior Judge Clevenger.

When a presiding judge is part of the majority of judges deciding a case, he or she assigns the judge who will author the opinion for the court.  That is one reason that you often see the more senior judges authoring the majority opinions in high stakes en banc decisions  — namely, the most senior judge in the majority assigned himself or herself to author the opinion.

Amicus Briefs in Alice v. CLS

Sunday, February 2nd, 2014

The amicus briefs in Alice v. CLS are slowly becoming available on the SCOTUS blog.  In addition, you can find what appears to be the complete set (so far) on Alice’s website: [Link].