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The Federal Circuit is sitting at the University of Colorado Law School today.  You can catch the live video stream of the program here:  [Link].

Update:  The live video stream of the oral arguments has now concluded.

1)  The Honorable Pauline Newman was named a Fellow of the American Chemical Society in August.  You can read more about it here: [Link].  Congratulations to Judge Newman!

2)  The Federal Circuit reinstated portions of the original panel decision in Akamai v. Limelight.  [Link].  You may recall that the previous opinion was vacated when en banc review was granted.  The original panel opinion was previously removed from the Federal Circuit web site; but, it is available here.

3)  Upon remand from the Supreme Court, an en banc hearing was requested in the Ultramercial v. Hulu case (sometimes referred to as WildTangent).  The petition for an en banc hearing was denied last week.  [Link].  A request for rehearing en banc was filed on the same day  (August 22, 2012) in CLS v. Alice.  That petition was not addressed last week.

The Federal Circuit is sitting in Colorado next week to hear oral arguments.  There are numerous activities being held by the IP community during the week.  One of the events that looks quite interesting is a panel to be held at the University of Denver comprised of Federal Circuit judges discussing splits within the Federal Circuit.  The agenda for the event is as follows:

MORNING AGENDA: ORAL ARGUMENTS

University of Denver College of Law

Room 165

Oral arguments begin at 10:00 a.m.

AFTERNOON AGENDA: PATENT PERSPECTIVES FROM THE INSIDE

University of Denver College of Law

Room 165

2:15 – 5:00 p.m.

(CLE credits pending)

“Patent Perspectives from the Inside.” This conference will bring together two very different sets of “inside” perspectives, those of the judiciary and in-house counsel, to discuss specific issues in patent law.

Panel 1: 2:15 – 3:30 p.m.

“Addressing Splits within the Federal Circuit,” with Federal Circuit Judges (not yet announced).

The Federal Circuit Court of Appeals is made up of twelve judges. Although the Court often helps clarify patent doctrine, the judges also occasionally disagree about the law. Examples of recent intra-circuit splits have occurred in the context of subject matter patentability, enablement, claim construction, and divided infringement. Join our panel of distinguished judges in a discussion about how they deal with differences of opinions within the Federal Circuit. The panel will be moderated by Denver Law Assistant Professor Bernard Chao.

Panel 2: 3:45 — 5:00 p.m.

“Cease and Desist Letters: The Law and The Tactics,” with Cynthia Bright, HP; Aaron Brodsky, Oracle; Chris Byrne, formerly with Tessera Technologies; and Stephen Perkins, Covidien.

Preparing and responding to cease and desist letters typically falls on the shoulders of in-house counsel. These letters have surprising number of different legal and practical implications. These letters can provide declaratory judgment jurisdiction. They also give the recipient notice of the patent and show that the patent holder knew about the recipient’s products. This in turn can affect determinations of damages and willfulness. Join a panel of experienced in-house counsel from around the country to discuss what goes into preparing and responding to cease and desist letters. This panel will be moderated by Professor Tim Holbrook from Emory University School of Law.

PriceWaterhouseCoopers has released its annual publication on patent litigation statistics.  You can access the study at the PWC site: [here].

The Federal Circuit sat en banc this past Friday and heard the oral argument in Beer v. U.S. That case concerns judicial pay for Article III judges.  The judges of the Court of Appeals for the Federal Circuit are Article III judges; so, the outcome of the appeal could affect their pay.

Chief Judge Randall Rader made a statement immediately before the oral argument began acknowledging the fact that this case could affect the judges of the Federal Circuit themselves.  However, he noted that the “Rule of Necessity” required them to adjudicate the case:  [Listen].

Judge Rader’s statement:

Today’s appeal presents a somewhat unusual circumstance.  Any decision by this court may directly affect every member of not only the Federal Circuit but of the entire federal judiciary.  To some of us this is more than unusual, it is a little uncomfortable.  Yet the Supreme Court has stated that under the Rule of Necessity, we have a duty to decide cases involving judicial compensation in spite of any potential personal interest.  The Rule of Necessity states “although a judge had better not, if it can be avoided, take part in a decision of a case in which he has any personal interest, yet he not only may but must do so if the case cannot be heard otherwise.”

These appellants have brought a cognizable claim and are entitled to their day in court.  As noted by perhaps the greatest American judge, Chief Justice John Marshall, in 1821 the judiciary unlike the legislature does not have the luxury of inaction when faced with difficult decisions.  Whatever difficulties a case may bring “we have no more right to decline the exercise of jurisdiction which is given than to usurp that which is not given.”  It is under this mandate that we sit and hear this case today.

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

You might recall that in the KSR v. Teleflex opinion that the Supreme Court used the language “interrelated teachings.”  To the best of my knowledge, the Federal Circuit has not yet weighed in on the meaning of that phrase.  In the recently decided appeal of Sirona v. Kappos, a Federal Circuit panel actually had an opportunity to address the meaning of “interrelated teachings” as well as the phrase  “sufficiently interrelated.”  But, the panel opted not to write an opinion and issued a Rule 36 opinion instead.

Sirona v. Kappos concerned an appeal of a Board decision from an inter partes reexamination.  The Board found some of the claims under reexam patentable.  So, the appeal to the Federal Circuit pitted the inter partes reexam requestor against the patent owner (3M) and the Solicitor’s Office of the USPTO.

Because the Board found in favor of the patentee with respect to some claims by finding those claims patentable, the Solicitor’s Office was in the unique position of arguing in favor of patentability at the CAFC. Had 3M cross-appealed the Board’s rejection of other claims, I suppose the Solicitor’s Office would have been in the even more unique position of  having to argue in favor of the patentability of the allowed claims and in favor of unpatentability of the rejected claims!  I wonder which counsel’s table the PTO sits at in that instance.

With respect to the “interrelatedness” issue, the Board stated the following in its “Decision on Request for Rehearing”:

Sirona misunderstands the basis of our decision. Rather than determining that JP ‘966 and US ‘585 were not analogous art, our statement merely highlighted the deficiencies in Sirona’s attempt to establish a prima facie case of obviousness.

As we pointed out in our decision (Dec. 14 ), “a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,418 (2007). The Supreme Court made it abundantly clear that an obviousness analysis “must ask whether the improvement is more than the predictable use of prior art elements according to their established function.” !d. at 417. “Often, it will be necessary … to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” !d. at 418 (emphasis added).

Sirona did not provide any meaningful analysis on any of these factors. For example, other than conclusory statements that wholly disregard significant differences in the teachings of the prior art references and a vague reference to a “vast body of prior art pertaining to crowns, frameworks, and similar items” designed to fill the gaps (TPR Req. Reh’g 6), Sirona did not establish that JP ‘966 and US ‘585 are sufficiently interrelated to support their combination in the manner claimed in view of the differences present in the evidence and reasoning of record.

Specifically, while Sirona argues that the ‘694 Patent under reexamination describes the coloring of ceramics generally (TPR Req. Reh’g 4 ), such argument ignores the fact that the claims are not directed to the coloring of ceramics generally but rather the coloring of translucent dental ceramics obtained from a “pre-sintered dental ceramic workpiece” (claim 1 ). Here, neither Sirona nor the Examiner demonstrated that the prior art “greenware” or ”bisque phase of the ceramic article” would inherently or . necessarily be suitable as a pre-sintered dental ceramic workpiece (JP ‘966, ,-r,-r [0012], [0013]).  Sirona’s failure to satisfy its initial burden stands in stark contrast to the detailed analysis provided by 3M on this matter (Patent Owner’s Appeal Brief filed March 15, 2010 at 9-13; Patent Owner’s Opposition 1-4 ).

Sirona’s reliance on cases such as Wyers v. Master Lock Co., 616 F.3d 1231 (Fed. Cir. 201 0) and In re ICON Health and Fitness, Inc., 496 F .3d 1374 (Fed. Cir. 2007) is misplaced. Those cases involved simple mechanical inventions in which a person of ordinary skill in the art would have reasonably expected that the element in dispute (e.g., the gas spring designed to stably retain a structure in the vertical position as in ICON Health) would serve the same or similar function in either the invention or the prior art. In this case, in light of the deficiencies in Sirona’ s position that JP ‘966 and US ‘585 are sufficiently interrelated as discussed supra, Sirona did not persuasively demonstrate that a person of ordinary skill in the art would have predicted that the metal salt solutions of JP ‘966 would impart the same chemical and/or physical effects on dental products of the type here claimed, as explained by 3M (Opposition at 2-3). Accordingly, Sirona failed to articulate some reasoning with some rational underpinning to support its proposed obviousness rejection. KSR at 418.

The panel at the Federal Circuit (Judges Newman, Prost, and Moore) issued a Rule 36 opinion in this case.  That was surprising because there were a number of interesting issues that could have been addressed in a written opinion:

1)  Is the interrelatedness of references a question of law or fact and accordingly what is the proper standard of review on the issue?

2) Is interrelatedness relevant to “motivation to combine”?

3)  Is a “lacks interrelatedness” argument different from a “non-analogous art” argument?

4)  What is the test for determining when two references are interrelated “enough” to be deemed “sufficiently interrelated”?

5)  How should the Federal Circuit review a compound finding of fact by the Board?

You can listen to the Solicitor’s Office for the PTO argue here: [Listen].

You can listen to the counsel for the third party requestor argue here: [Listen].

The entire oral argument is available here: [Listen].

One takeaway from the Board decision is that “interrelatedness” is different from a non-analogous art argument.  Thus, even if all cited references are determined to be analogous art, one might still want to argue that the references are not sufficiently interrelated to establish a prima facie case of obviousness.

The Denver media is reporting that the Byron Rogers Federal Building has been selected as the site for the Denver Office of the USPTO.

The site is located in downtown Denver at 19th and Stout streets.

The link to the Denver Post article is available here: [Link].

The PTO is already starting the hiring process for administrative patent law judges for its new Denver, Dallas-Ft. Worth, and San Jose offices.  You can see the job listings here: [Denver], [Dallas – Fort Worth], and [San Jose].

The deadline for these particular listings is apparently Sunday, August 26, 2012.

Salary range:  $134,498-$165,300 per year.

The Federal Circuit heard oral argument yesterday in the appeal of the order granting a preliminary injunction in Apple v. Samsung.  The court previously granted expedited oral argument for this appeal.  You can listen to yesterday’s oral argument here:  [Listen].

Much of the oral argument was spent arguing about how to define the size of the market for the smart phones at issue.

What intrigued me, though, is that this is another “each” case.

The claim being discussed in the oral argument reads as follows:

You can listen to Apple’s attorney argue about the meaning of “each” in this sound bite [Listen]. The link to the order granting the preliminary injunction at the beginning of this post gives more of a discussion on the claim construction of “each” for the above claim.  See page 19 of the order.

Mud-slinging

Judge Moore also had some tips for brief writers at the end of the oral argument.  She noted that mud-slinging in the briefs turns off appellate judges.  [Listen].

I thought this was kind of a fun coincidence with the Myriad case.  The book “Mary’s Magic Microscope” was published in May of 2011.  The book is described as follows:

Mary’s Magic Microscope is the first in a series of books for children of middle-school age. It follows the journey of Mary McDoogle, a 12-year-old girl who finds a magic microscope in her grandpa’s attic that allows her to be transported into the micro world. Here, Mary discovers many new and wonderful adventures. She uses her microscope to fight crime, and help her dad, an FBI chief, capture the Sand Bandit, who stole the precious Star of Africa diamond. Imagine Nancy Drew meeting Alice in Wonderland on a Fantastic Journey. This book provides a unique insight into an amazing new scientific world.

You can order the book at this [Link].  Actor Stacy Keach is one of the co-authors.

The AMP et al. v. USPTO et al. case decided this past week (aka Myriad II) puts a new twist on the dreaded words “We’re from the government and we’re here to help you.”  In Myriad II it was the USPTO that was afflicted by the words “We’re from the Government Solicitor General’s Office and We’re Here to Help You.”

The Myriad case is unique in that the US Solicitor General’s Office pulled rank on the USPTO Solicitor’s Office for purposes of briefing and oral argument.  In the first oral argument of Myriad at the Federal Circuit (Myriad I), the SG’s Office brought unintended comic relief to the proceedings by proposing a “magic microscope” test.

One of the first questions asked at the oral argument of Myriad II in July was whether the SG’s Office was still advocating such a test.  Unwilling to distance itself entirely from its “magic microscope,”  the SG’s Office stated that it still found the “magic microscope” to be a useful metaphor.

One thing that interested me about the oral argument of Myriad II was Judge Bryson’s comment that in the past the US Attorney General’s Office has allowed an administrative agency to file, as an appendix to the SG’s brief, a brief that dissents  from the SG’s position.  Judge Bryson cited the TVA v. Hill, 437 U.S. 153 (1978) case as one example. [Listen].  (Judge Bryson worked for the US Solicitor General’s Office before being appointed to the court and argued many cases at the Supreme Court.)

At any rate, I took Judge Bryson’s comment as a suggestion that the US Solicitor General’s Office should allow the PTO to file its own dissenting brief in any subsequent appeals of Myriad II.  Whether the SG’s Office has enough confidence in the merits of its own position that it allows the PTO to file such a dissenting brief remains to be seen.

You can read the Federal Circuit’s Myriad II opinion here:  [Link].

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

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

Patent prosecutors will get a kick out of the relatively new phenomenon of the PTO arguing in favor of patentability.  This occurs whenever the Board of Appeals has ruled against a party that brought an inter partes reexamination.  At that point, the Solicitor’s Office for the PTO is placed in the position of defending the Board’s decision when an appeal is made to the Federal Circuit.

These appeals are now making their way to the Federal Circuit with increasing frequency.  There were at least two such appeals argued at the Federal Circuit last week.

You can listen to the PTO arguing in favor of patentability here:

Vanguard v. Kappos:  [Listen];

Rexnord v. Kappos:   [Listen];

Plasmart v. Kappos:   [Listen];

Vita-Mix v. Kappos:   [Listen];

CW Zumbiel v. Kappos:   [Listen]; and

Sirona Dental Sys. v. Kappos:   [Listen].

So far, the Solicitor’s Office seems to be arguing with the same level of zeal in defending these already issued patents as it does in arguing against the patentability of some applications.  Although, one has yet to see whom I view as the PTO’s designated hitters, Tom Krause and Ray Chen, make an appearance at the podium to argue in favor of patentability.

In the Plasmart appeal, Judge Moore noted the role-reversal for the PTO and asked the Associate Solicitor for the PTO if it felt good to argue in favor of patentability.  He said it did . . . .  [Listen].

The USPTO will be conducting additional roadshows this fall concerning the implementation of the America Invents Act.  Roadshows will be held by the USPTO in Denver, Los Angeles, Houston, Minneapolis, Detroit, Atlanta, New York, and Alexandria.

More information and the agenda is available here: [Link].

It would have been interesting to be a fly on the wall during the panel conference that followed the oral argument of  Momenta Pharmaceuticals et al. v. Amphastar et al., App. No. 2012-1062 (Fed. Cir. Aug. 3, 2012).  In that decision, Judges Moore and Dyk formed the majority while Chief Judge Rader formed the dissent.  In Chief Judge Rader’s dissent, he notes his disagreement with the majority and remarks that he was present during the drafting of the statutory provision in question.  See C.J. Rader’s dissent in Momenta at page 10 (“The authors of this section (and I hesitate to add that I was present through this legislative process) did not imagine that § 271(e)(1) would allow continuous, commercial infringing sales during any portion of the life of the patent.“)  This would echo a remark Chief Judge Rader made during the oral argument:  [Listen].  Before appointment to the federal bench, Chief Judge Rader served as Minority and Majority Chief Counsel to Subcommittees of the U.S. Senate Committee on the Judiciary.