717 Madison Place

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.

From The Third Branch, February 2000:

The Senate confirmation of Judge Richard Linn to the Court of Appeals for the Federal Circuit went right down to the wire in the waning hours of the 106^th Congress’ first session. “I realized when the Senate confirmed me on November 19, just before they adjourned,” said Linn, “that mine would be the last judicial confirmation of the 20^thcentury.” He mentioned that historical fact to his 13-year-old nephew, Christopher, whose great grandfather was Judge Orrin Lewis (E. D. Va.) and whose father and grandfather are attorneys. Christopher considered for a moment, then, with the legal acuity he’d obviously inherited, suggested his uncle therefore should be the first federal judge sworn in of the new century.

“I proposed to Chief Judge H. Robert Mayer that I be sworn in at the court on New Year’s Eve and he was very supportive,” said Linn, who couldn’t have chosen a better time or location for his ceremony. The chambers of Chief Judge Mayer look out on the Washington Monument, where fireworks and other festivities were scheduled as part of the nation’s millennium celebration.

In due course, family and friends gathered in Chief Judge Mayer’s chambers. Judge Alan Lourie (Fed. Cir.) had synchronized his watch with the cesium clock in Colorado, to assure to the second the accurate time, and at the stroke of midnight Judge Linn placed his hand on the bible to take the oath. “Just at that moment the fireworks erupted around the Monument,” relates Linn. “I was naturally focussed on the oath and making sure I didn’t leave out something, but it was difficult with all the fireworks going off.” With theatrical flair, a crescendo of fireworks broke over the Mall as Linn finished the oath. “I’ll never, ever forget it,” said Linn, the nation’s first new federal judge in the brand new 21^stcentury.

Natural disasters often drive home the value of a patent system that incentivizes all types of innovation — whether it be living organisms or business methods.  For example, the Chakrabarty case concerned a new living organism that could be used to help clean up oil spills.

You may have also heard of Nathan Myhrvold’s and Bill Gates’ applications for taking the bite out of hurricanes.  For example, claims of this particular application are directed at a method of doing business:  [Water Alteration Structure Risk Management or Ecological Alteration Management Systems and Methods].

The Supreme Court is set to hear oral argument tomorrow in the copyright case of Kirtsaeng v. John Wiley & Sons.  The ABA does a nice job of gathering the briefs for each Supreme Court case.  You can access the ABA’s Kirtsaeng preview at this link.

Merit Briefs

• Brief for Petitioner Supap Kirtsaeng, d/b/a Bluechristine99
• Brief for Respondent John Wiley & Sons

Amicus Briefs

• Brief for 25 Intellectual Property Law Professors in Support of Petitioner
• Brief for the American Library Association, the Association of College and Research Libraries, and the Association of Research Libraries in Support of Petitioner
• Brief for Association of Art Museum Directors, The Art Institute of Chicago, The J. Paul Getty Trust, Museum Associates dba Los Angeles County Museum of Art, the Museum of Modern Art, the San Francisco Museum of Modern Art, the Solomon R. Guggenheim Foundation,  the Whitney Museum of American Art, et al., in Support of Petitioner
• Brief for the Association of Service and Computer Dealers International, Inc., in Support of Petitioner
• Brief for Costco Wholesale Corporation in Support of Petitioner
• Brief for Ebay Inc., Google, Inc., Center for Democracy & Technology, Chegg, Computer & Communications Industry Association, Internet Commerce Coalition, Netcoalition, Netchoice, and Techamerica In Support of Petitioner
• Brief for Entertainment Merchants Association and National Association of Recording Merchandisers in Support of Petitioner
• Brief for Goodwill Industries International in Support of Petitioner
• Brief for Powell’S Books Inc., Strand Book Store, Inc., Half Price Books, Records, Magazines, Inc., and Harvard Book Store Inc. in Support of Petitioner
• Brief for Public Knowledge, Electronic Frontier Foundation, American Association of Law Libraries, Special Libraries Association, and U.S. Public Interest Research Group in Support of Petitioner
• Brief for Retail Litigation Center, Inc., National Association of Chain Drug Stores, American Free Trade Association, International Imaging Technology Council, and Quality King Distributors, Inc., in Support of the Petitioner
• Brief for the American Bar Association in Support of Respondent
• Brief for the American Intellectual Property Law Association in Support of Respondent
• Brief for the Association of American Publishers in Support of Respondent
• Brief for Business Software Alliance in Support of Respondent
• Brief for LicenseLogic, LLC in Support of Respondent
• Brief for the Motion Picture Association of America, Inc. and the Recording Industry Association of America in Support of Respondent
• Brief for Omega S.A. in Support of Respondent
• Brief for Professor Hugh C. Hansen in Support of Respondent
• Brief for the Software and Information Industry Association (SIIA) in Support of Respondent
• Brief for the Text and Academic Authors Association in Support of Respondent
• Brief for the United States in Support of Respondent
• Brief for Intellectual Property Owners Association in Support of Neither Party
• Brief for Knowledge Ecology International in Support of Neither Party

The Florida Bar offers a Board Certification program for its intellectual property attorneys.  [Link].

You can view some sample questions for the exam [here].

The proper use of the word “each” is pretty straightforward.  Right? If you are up to the task, select the correct sentence in the following groupings. Answers to follow in a later post.

I. a. Each of them sees many advantages in that plan.
b. Each of them see many advantages in that plan.

II. a. Each of the children is happy today.
b. Each of the children are happy today.

III. a. Every one of these four-door cars is ugly.
b. Every one of these four-door cars are ugly.

I was wondering how many patents have issued over the years that contain claim language referring back to a plurality of something.

Using the FreePatentsOnline search site last week I generated these results:

plurality — 1,663,532 patents

each of a plurality — 43,650

each of the plurality — 96,169*

each and every of the plurality — 5*

every one of the plurality — 105*

everyone of the plurality — 2*

all of the plurality — 5,056

at least one of the plurality — 33,431

one or more of the plurality — 7,456

any of the plurality — 4,314

at least two of the plurality — 4,864

two or more of the plurality — 1,129

plurality of the plurality — 423

sub-plurality of the plurality — 33

subplurality of the plurality — 14

some of the plurality — 5,037

several of the plurality — 87

few of the plurality — 5

most of the plurality — 35

either of the plurality — 43

none of the plurality — 628

enough of the plurality — 5

*One would think that if “each” were so well understood to mean “every one” that there would be a more even distribution between patents that recite “each of the plurality” (96,169) and patents that recite “every one of the plurality” (112).

At the beginning of each Supreme Court term, the Court releases the audio of the announcements of the decisions from the previous Supreme Court term.  An announcement is not an actual word for word reading of the Court’s opinion.  It is a short synopsis of the opinion.  One of those announcements was for the Mayo v. Prometheus decision.  You can listen to Justice Breyer read that announcement of the opinion here.

The announcement ran about seven minutes.  So, if you are pressed for time, you can listen to a speedier version here.

The Federal Circuit issued its en banc opinion in Beer v. U.S., __ F.3d __ (Fed. Cir. 2012) this afternoon.  The Beer opinion is not a patent case — it concerns judicial pay.

It is interesting that while the en banc Akamai case took a rather long time to decide by Federal Circuit en banc standards (Akamai took roughly nine months following oral argument), the Beer decision was on tap for public consumption pretty quickly (a mere five weeks following oral argument).

I’ve noted in the past that since becoming Chief Judge, Chief Judge Rader has not asked substantive questions during oral arguments of en banc cases.  This is odd as he doesn’t hesitate to ask questions during oral arguments of panel cases where he always serves as presiding judge.  The oral argument in Beer was no exception to this growing pattern.  If I ever attend a conference where  CJ Rader is speaking about en banc cases, I should ask him what the story is.

The Beer opinion along with its dissent and concurring opinions is available here.

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

Update:

The recorded program from the University of Colorado Law School program is available here.  Circuit Judges Lourie and Reyna were surprise participants in the program.  You can watch Circuit Judge Lourie beginning at about the 23:12 minute mark of the first video segment.  You can listen to Circuit Judge Reyna beginning at about the 1:21:40 mark of the first video segment.

——————————————————————————————

As part of the Federal Circuit’s visit to hear oral arguments at the University of Colorado Law School, a patent/antitrust program is being held today.  You can watch a live stream of the program here:  [Link].

Speakers include:  John Duffy (UVA), Ray Chen (Solicitor, USPTO), (Chad Hilyard (Chief IP Counsel, RockStar Consortium), Arti Rai (Duke), Fabian Gonell (Qualcomm), as well as a host of other interesting speakers.  Times listed below are Mountain time.

Welcome
1:00pm – 1:10pm

• Phil Weiser
  Dean
  University of Colorado Law School
  Executive Director
  Silicon Flatirons Center

Keynote
1:10pm – 1:25pm

• Julie Brill
  Commissioner
  Federal Trade Commission

Panel 1: The Institutional Roles of the PTO, the Federal Government, and the Judiciary in Shaping Patent Law
1:25pm – 2:25pm

• Philip Brimmer
  U.S. District Judge
  District of Colorado
• William Cavanaugh
  Partner
  Patterson Belknap Webb & Tyler LLP
• Raymond Chen
  Deputy General Counsel for Intellectual Property Law and Solicitor
  United States Patent and Trademark Office
• John Duffy
  Armistead M. Dobie Professor of Law
  University of Virginia School of Law

Moderator

• Michael L. Drapkin
  Partner
  Holland & Hart
  Adjunct Faculty
  University of Colorado

Panel 2: Scope of Patentability and Other Patent Policy Levers
2:25pm – 3:25pm

• Eugene Kim
  Senior Patent Counsel
  Zynga Inc.
• Leslie Leinwand
  Chief Scientific Officer
  Biofrontiers Institute, University of Colorado
• Arti Rai
  Professor of Law
  Duke University
• Mindy Sooter
  Partner
  Faegre Baker Daniels

Moderator

• Harry Surden
  Associate Professor of Law
  University of Colorado

Break
3:25pm – 3:40pmPanel 3: Competition Policy and Patents
3:40pm – 4:40pm

• Terrell McSweeny
  Senior Counsel, Antitrust Division
  United States Department of Justice
• Scott Partridge
  Chief Deputy General Counsel
  Monsanto
• John Ryan
  Chief Legal Officer
  Level 3 Communications
• Greg Sivinski
  Assistant General Counsel, Antitrust Group
  Microsoft

Moderator

• Phil Weiser
  Dean
  University of Colorado Law School
  Executive Director
  Silicon Flatirons Center

Panel 4: Case Study of the Changing Wireless Landscape: Patent Portfolio Development and Acquisition and Litigation
4:40pm – 5:40pm

• John L. Cooper
  Partner
  Farella Braun + Martel LLP
• Fabian Gonell
  Vice President, Legal Counsel
  Qualcomm
• Chad Hilyard
  Chief IP Counsel
  Rockstar Consortium US LP
• Suzanne Michel
  Senior Patent Counsel
  Google
• Sharis Pozen
  Partner
  Skadden, Arps, Slate, Meagher & Flom LLP

Moderator

• Jonathan Sallet
  Silicon Flatirons Senior Adjunct Fellow
  University of Colorado
  Partner
  O’Melveny & Myers LLP