Repeated Use of Permissive Language

One of the reasons that I enjoy listening to the recordings of the Federal Circuit oral arguments is for the creative arguments that are not eventually addressed in the court’s opinion.  Oftentimes, there is no need for the court to address these arguments in the resulting opinion because another issue on appeal makes the arguments moot.  Such was the case in Intellectual Science and Technology v. Sony Electronics, Inc., 2009-1142, (Fed. Cir. Dec. 15, 2009).

One of the issues that was on appeal in Intellectual Science and Technology v. Sony Electronics, Inc. was whether repeated use of the phrase “multitasking” in describing an embodiment in a permissive context (e.g., “capable of multitasking”, “including multitasking”, “such as multitasking”) mandated that the “multitasking” language in the preamble be considered as an element in the claim.  This is the query Judge Rader had for plaintiff-appellant’s counsel: [Listen].  And, this is the exchange between Judge Rader and defendant-appellee’s counsel on the same issue: [Listen].

The court did not have to address the issue in the opinion.  Instead, it said:

Intellectual Science also appeals the district court’s construction of the term “with multitasking function” in the preamble of claim 1 of the ’575 patent. The construction of that term, however, does not affect the issue of adequate information to create a factual issue on infringement of the “data transmitting means” in the accused devices. Because Intellectual Science did not show a genuine issue of material fact on one of the limitations in the accused devices, this court need not reach the district court’s construction of another. See TechSearch, 286 F.3d at 1371 (“To establish literal infringement, all elements of the claim, as correctly construed, must be present in the accused system.”).

 Judge Rader also noted in one of his hypotheticals that he is an ABBA and a Beatles fan.  Counsel quickly invoked the title of the song “Dancing Queen” by ABBA into his response — proving, as many have long suspected, that the rough and tumble world of patent litigation eventually turns all patent litigators into ABBA fans  [Listen].

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

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