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The oral argument of the week is from COMPRESSION TECHNOLOGY SOLUTIONS, LLC v. EMC CORPORATION, No. 2013-1513 (Fed. Cir. Mar. 10, 2014). The case was argued on March 4, 2014 and resulted in a Rule 36 affirmance.  The oral argument addresses patent eligibility issues under 35 U.S.C. §101.

With Alice v. CLS to be decided by the Supreme Court in a mere 3.5 months, it is interesting that the panel decided this case so promptly.

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

You can review the Rule 36 opinion here: [Link].

The Reply Brief in Alice v. CLS Bank is now available.  You can download it [here].

Professor Mann of the SCOTUSblog has a nice evenhanded overview of the Alice v. CLS case:  [Link].

I believe Alice’s reply brief is due today or tomorrow.  I’ll post it when it becomes available.

In the briefing of Alice v. CLS, the two sides have noted that consideration must be given to all elements of a claim.  Alice notes this in its brief on pages 29-35.  CLS acknowledges this principle in its brief in footnote 6.

This general rule applies to many areas of patent law:

Additional amicus briefs have been filed in Alice v. CLS.  You can access the briefs from Alice’s website:  [Link].

I was trying to see if any of the briefs in support of CLS cite to the Aro I or Mercoid cases from the Supreme Court — so far, I have not found any that do so . . . .

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].

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].

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].

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.

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 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.

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. 1282; Knitwaves, 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.”).

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.

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].

Whenever patent eligibility issues under 35 U.S.C. §101 go up to the Supreme Court for review, I’m often curious how firms, including firms on amicus briefs, advocating for limited interpretation of §101 navigate positional conflicts of interest.  For example, arguing on behalf of one client that computer implemented methods should not be patentable would seemingly be to the detriment of a prosecution client that is currently claiming such an invention or owns patents directed to such inventions.

There is a recent article on positional conflicts of interest in the Texas Law Review available at this [Link].  Perhaps somebody can talk David Hricik into covering this issue on Patently-O.