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Grammar always makes for an interesting subject during oral argument.  In the oral argument of Sanofi Aventis et al. v. Apotex, Inc. et al., App. No. 2011-1048 (Fed. Cir. Oct. 18, 2011) several grammatical issues were raised.  As background, the parties were arguing over the terms of a settlement agreement and whether the term “damages” included prejudgment interest.  Part of this discussion, as you will hear, centered around the grammar of 35 U.S.C. sec. 284 which reads:

35 U.S.C. 284  Damages.

Upon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court.

 

When the damages are not found by a jury, the court shall assess them. In either event the court may increase the damages up to three times the amount found or assessed. Increased damages under this para­graph shall not apply to provisional rights under sec­tion 154(d) of this title.

 

The court may receive expert testimony as an aid to the determination of damages or of what royalty would be reasonable under the circumstances.

 

(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-566 (S. 1948 sec. 4507(9)).)

Judge Moore first raised the grammatical issue with Defendant-Appellant’s counsel and noted that she had been consulting her copies of Strunk & White and The Chicago Manual of Style: [Listen]. 

The issue came up again in the discussion with Plaintiff-Appellee’s counsel:  [Listen] and [Listen].

This is the third time that I have heard Judge Moore refer to Strunk and White during various oral arguments.  So, if you are making grammatical arguments to the court, you might take into consideration that at least one judge uses that text as a resource.  However, it should be noted that another judge has commented during a different oral argument that “Strunk and White does nothing for me.”

There actually aren’t that many instances where grammatical texts have been cited in Federal Circuit decisions.  Some of the texts that have been cited are:

1)  C. Dallas Sands, 2A SUTHERLAND STATUTORY CONSTRUCTION, 4th ed.;

2)  Leggett, Mead & Charvat, Prentice-Hall Handbook for Writers (6th ed. 1974);

3)  S. Baker, The Complete Stylist and Handbook (3rd ed. 1984);

4) William Strunk, Jr. & E.B. White, The Elements of Style 27 (4th ed. 2000); and

5)  Margaret Shertzer, The Elements of Grammar 47 (1986).

One of the issues in the third sound bite included above concerned whether “or” should be interpreted as a “non-exclusive disjunctive,” i.e., whether “or” can mean “and.”  Judge Dyk had this to say about the statutory construction of the word “or” in his dissent from the denial of en banc review of  McCormick v. Dept. of Air Force, App. No. 02-3031, (Fed. Cir. May 21, 2003).

Van Wersch rested entirely on the notion that we are compelled to interpret the word “or” in 5 U.S.C. § 7511(a)(1)(C) as not meaning “and” (an approach that our decision in this case applied to section 7511(a)(1)(A)). We held that “[t]o adopt the reading of the statute that the government urges would require us to ignore the meaning of the word `or’ that the dictionary, common sense, and the experience of life all bring to us.” Van Wersch, 197 F.3d at 1151. The consequence was that an individual falling under either (a)(1)(A)(i) or (ii) or (C)(i) or (C)(ii) was considered to be an “employee” with full appeal rights. In fact, we are not so constrained in the reading of the word “or”. The Supreme Court ruled over 100 years ago that “[i]n the construction of statutes, it is the duty of the court to ascertain the clear intention of the legislature. In order to do this, courts are often compelled to construe `or’ as meaning `and.‘” United States v. Fisk, 3 Wall. 445, 70 U.S. 445, 447, 18 L.Ed. 243 (1865) (emphasis in original). More recently, in an opinion by Justice Harlan, the Court in De Sylva v. Ballentine, 351 U.S. 570, 76 S.Ct. 974, 100 L.Ed. 1415 (1956), similarly stated that “[w]e start with the proposition that the word `or’ is often used as a careless substitute for the word `and’; that is, it is often used in phrases where `and’ would express the thought with greater clarity. That trouble with the word has been with us for a long tim[e].” Id. at 573, 76 S.Ct. 974. The Supreme Court then interpreted the word “or” in section 24 of the Copyright Act as meaning “and”, in order to give full effect to Congress’s intent as expressed in the evolution of the statutory provision and in the legislative history. Id. at 573-80, 76 S.Ct. 974. Our sister circuits have likewise read “or” to mean “and” or “and” to mean “or” in order to effectuate Congress’s intent. See, e.g., United States v. Moore, 613 F.2d 1029, 1040 (D.C.Cir.1979) (Interpreting “or” to mean “and” in 18 U.S.C. § 1623(d), because “a strict grammatical construction will frustrate legislative intent.”).^[2] The present case is one of those cases where we must construe “or” in subsections (1)(A) and (1)(C) to mean “and.” The language is ambiguous, but the underlying purpose is clear.

Finally, the oral argument of Sanofi et al. v. Apotex, Inc. et al. features some very talented advocates.   You can listen to the entire oral argument [here].

You can read the court’s opinion in Sanofi [here].

Pursuant to 28 U.S.C. § 295, Circuit Judge Bryson has been designated by the Chief Justice of the United States to preside over four cases in the Eastern District of Texas. The cases assigned to Judge Bryson are: Docket No. 2-08-cv-70 Personalized Media Communications, LLC v. Echostar Corp., et al.; Docket No. 2-08-cv-196 eTool v. National Semiconductor; Docket No. 2-08-cv-471 TQP Development v. ING Bank FSB, et al. ; and Docket No. 2:08-cv-313 Versata, et al. v. Internet Brands, et al.

Chief Judge Rader swearing in Circuit Judge Wallach while Senator Reid holds the Lincoln Bible.

Circuit Judge Evan Wallach was sworn in today as a circuit judge on the United States Court of Appeals for the Federal Circuit. 

One interesting feature of the swearing in ceremony was that the Lincoln Bible was used.

Circuit Judge Wallach’s bio reads as follows:

Evan J. Wallach was appointed to the United States Court of Appeals for the Federal Circuit by President Barack Obama in 2011, confirmed by the Senate on November 9, 2011, and assumed the duties of his office on November 18, 2011. Prior to his appointment, he served for sixteen years as a judge of the United States Court of International Trade, having been appointed to that court by President William J. Clinton in 1995.

Judge Wallach worked as a general litigation partner with an emphasis on media representation at the law firm of Lionel Sawyer & Collins in Las Vegas, Nevada from 1982 to 1995. He was an associate at the same firm from 1976 to 1982.

While working with the firm, Judge Wallach took a leave of absence to serve as General Counsel and Public Policy Advisor to Senator Harry Reid from 1987 to 1988. From 1989 to 1995, he served in the Nevada National Guard as a Judge Advocate. In 1991, while on leave from his firm, he served as an Attorney/Advisor in the International Affairs Division of the Judge Advocate of the Army at the Pentagon.

Judge Wallach, a recognized expert in the law of war, has taught at a number of law schools, including Brooklyn Law School, New York Law School, George Mason University School of Law, and the University of Müenster in Münster, Germany.

Judge Wallach has received a number of awards, including: the ABA Liberty Bell Award in 1993; the Nevada Press Association President’s Award in 1994; and the Clark County School Librarians Intellectual Freedom Award in 1995.

Judge Wallach served on active duty in the Army of the United States from 1969 to 1971. During his military career, he was awarded the Bronze Star, the Air Medal, the Good Conduct Medal, the Meritorious Service Medal, the Nevada Medal of Merit, the Valorous Unit Citation, a Vietnam Campaign Medal, and the RVN Cross of Gallantry with Palm.

Judge Wallach received his B.A. in Journalism from the University of Arizona in 1973, his J.D. from the University Of California, Berkeley in 1976, and an LLB with honors in International Law from Cambridge University in 1981.

The Federal Circuit held oral arguments in Akamai Tech v. Limelight Networks and McKesson Tech v. Epic Systems today.  These cases deal with divided infringement issues.

You can listen to the Akamai Tech v. Limelight Networks oral argument [here].

You can listen to the McKesson Tech v. Epic Systems oral argument [here].

We usually think of the process for appointing a federal judge as: nomination, Senate Judiciary Committee hearing, Senate confirmation vote, and swearing-in.  This report from the Congressional Record Service [link] explains the process that takes place between the confirmation by the Senate and the actual swearing-in:

After Senate Confirmation

Under the Constitution, the Senate alone votes on whether to confirm presidential nominations, the House of Representatives having no formal involvement in the confirmation process. If the Senate votes to confirm the nomination, the secretary of the Senate then attests to a resolution of confirmation and transmits it to the White House.154 In turn, the President signs a document, called a commission, officially appointing the individual to the Court. Then, the following technical steps occur:

 

The signed commission is returned to the Justice Department for engraving the date of appointment . . . and for the signature of the attorney general and the placing of the Justice Department seal. The deputy attorney general then sends the commission by registered mail to the appointee, along with the oath of office

and a photocopy of the confirmation document from the Senate.155

 

Upon the appointee’s receipt of the commission and accompanying documents, only the formality of being sworn into office remains. In fact, however, the incoming Justice takes two oaths of office — a judicial oath, as required by the Judiciary Act of 1789, and a constitutional oath, which, as required by Article VI of the U.S. Constitution, is administered to Members of Congress and all executive and judicial officers. In recent years, the usual practice of new appointees has been to take their judicial oath in private within the Court, and, as desired by the Presidents who nominated them, to take their constitutional oaths in nationally televised ceremonies at the White House.156

 

I was curious why no announcement has been made that Judge Evan Wallach, recently confirmed by the Senate, has been sworn in to office.  The delay might be the residency requirement for Federal Circuit judges. 

As you are probably aware, the residency requirement was adopted with the creation of the Federal circuit and states in 28 U.S.C. 44(c) that:

TITLE 28 > PART I > CHAPTER 3 > § 44

§ 44. Appointment, tenure, residence and salary of circuit judges

(a)The President shall appoint, by and with the advice and consent of the Senate, circuit judges for the several circuits as follows:

Circuits	Number of Judges
District of Columbia	11
First	6
Second	13
Third	14
Fourth	15
Fifth	17
Sixth	16
Seventh	11
Eighth	11
Ninth	29
Tenth	12
Eleventh	12
Federal	12.

 

(b)Circuit judges shall hold office during good behavior.

 

(c)Except in the District of Columbia, each circuit judge shall be a resident of the circuit for which appointed at the time of his appointment and thereafter while in active service. While in active service, each circuit judge of the Federal judicial circuit appointed after the effective date of the Federal Courts Improvement Act of 1982, and the chief judge of the Federal judicial circuit, whenever appointed, shall reside within fifty miles of the District of Columbia. In each circuit (other than the Federal judicial circuit) there shall be at least one circuit judge in regular active service appointed from the residents of each state ^[1] in that circuit.

 

(d)Each circuit judge shall receive a salary at an annual rate determined under section 225 of the Federal Salary Act of 1967 (2 U.S.C. 351–361), as adjusted by section 461 of this title.

As far as I can tell, the America Invents Act did not ultimately repeal this provision. So, according to the statute, Judge Wallach needs to establish residency within fifty miles of Washington, D.C. before he can become an active judge of the Federal Circuit.

Judge Wallach noted the following in response to the Senate Judiciary Questionnaire:

3. Address: List current office address. If city and state of residence differs from your

place of employment, please list the city and state where you currently reside.

 

United States Court of lnternational Trade

One Federal Plaza

New York, New York 10278

 So, presumably his former residence was New York and he needs to meet the necessary requirements to establish residency within fifty miles of Washington, D.C. before he can be sworn-in.  What the necessary requirements are for establishing residency within 50 miles of Washington, D.C, I have no idea.  But, if the rules for establishing in-state tuition for Maryland apply, for example, he might be in for a wait as long as six months.  If that is the case, perhaps it will be a good excuse to spur Congress into action to finally revise 28 U.S.C. 44(c).

Richard G. Taranto is the most recent nominee for a seat on the United States Court of Appeals for the Federal Circuit.  His nomination replaces that of Edward C. DuMont who recently asked to have his nomination withdrawn, after waiting eighteen months for the Senate Judiciary Committee to schedule a hearing on his nomination.

The press release from the White House on Mr. Taranto’s nomination reads as follows:

Richard Gary Taranto: Nominee for the United States Court of Appeals for the Federal Circuit
Richard Gary Taranto is a partner at the two-person law firm of Farr & Taranto, located in Washington, D.C. He has argued 19 cases before the Supreme Court of the United States and has extensive experience litigating intellectual property and patent cases before both the Federal Circuit and the Supreme Court.

Taranto was born in New York City. He received a B.A. summa cum laude in 1977 from Pomona College in Claremont, California. He then attended Yale Law School, where he served as an Article and Book Editor on the Yale Law Journal and obtained his J.D. in 1981. Upon his graduation from law school, Taranto clerked for the Honorable Abraham Sofaer of the United States District Court for the Southern District of New York. The following year, from 1982 to 1983, he clerked for the Honorable Robert Bork of the United States Court of Appeals for the District of Columbia Circuit. He then clerked, from 1983 to 1984, for the Honorable Sandra Day O’Connor of the Supreme Court of the United States.

In 1984, Taranto joined the firm of Onek, Klein & Farr, in Washington, D.C. He left the firm in 1986 to spend three years as an Assistant to the Solicitor General in the Office of the Solicitor General of the United States Department of Justice. In 1989, Taranto returned to Onek, Klein & Farr as a partner. In 1991, he became a named partner at the firm, which has been known as Farr & Taranto since 1994.

Taranto has taught a course on patent law at Harvard Law School and several courses on different topics at the Georgetown University Law Center. He has also served, since 2009, as a member of the Appellate Rules Advisory Committee for the United States Judicial Conference.

You can listen to Mr. Taranto argue a Federal Circuit case concerning a transgenic corn plant modified to produce insecticidal proteins here: [Syngenta Seeds v. Monsanto] (beginning at about the 14:40 minute mark).

You can listen to Mr. Taranto argue a Federal Circuit case relating to voice over IP (VOIP) telephony here: [Verizon Svcs. v. Vonage Hlds.] (beginning at about the 23:52 minute mark).

The denial of en banc review yesterday in Retractable Technologies, Inc. v. Becton, Dickinson and Co. is a good example of how oral arguments can foreshadow issues at the Federal Circuit.  In this previous post “Cybor Watch” , Judge Moore’s comments during oral argument foreshadowed a possible desire to revisit the Federal Circuit’s Cybor decision.  Yesterday’s dissents by Judge Moore (joined by Chief Judge Rader) and by Judge O’Malley articulated just such a desire to revisit Cybor.

While the court can revisit the Cybor decision sua sponte, it will be interesting to see if litigants press the issue more aggressively in the future — especially with two spots still to fill on the Federal Circuit’s roster of judges.

I am always amazed when I look at this 2008 statistic cited by Chief Justice Roberts: the Federal Judiciary accounts for 0.2% of the United States’ budget.

In his annual report in 2008, Chief Justice Roberts made these comments:

The Judiciary, including the Supreme Court, other federal courts, the Administrative Office of the United States Courts, and the Federal Judicial Center, received a total appropriation in fiscal year 2008 of $6.2 billion. That represents a mere two-tenths of 1% of the United States’ total $3 trillion budget. Two-tenths of 1%! That is all we ask for one of the three branches of government—the one charged “to guard the Constitution and the rights of individuals.” Alexander Hamilton, Federalist No. 78.

 

Despite the miniscule amount the Judiciary adds to the cost of government, the courts have undertaken rigorous cost containment efforts, a process begun four years ago, long before the current economic crisis. In September 2004, the Judicial Conference—the judges who set policy for the Judiciary—endorsed a cost-containment strategy that called for examining more than fifty discrete operations for potential cost savings. My predecessor, Chief Justice William H. Rehnquist, was well known for insisting that the courts operate efficiently. The Judiciary nevertheless has found new ways to achieve significant savings in three general areas: rent, personnel, and information technology.

 

The Judiciary has initiated a program to contain rent costs, which accounted for about 19% of our 2004 budget. We first identified and eliminated rental overcharges through an extensive audit of rent expenditures. We then adopted growth caps, which will result in space limitations for judicial personnel—including judges—and deferring new construction. Those efforts have produced significant savings. In 2004, the Judiciary estimated that it would devote $1.2 billion of its 2009 budget to rent. The Judiciary now estimates its rent requirement will be $1.0 billion, a 17% reduction.

 

We have also examined ways to control the growth of personnel costs, which accounted for 57% of the Judiciary’s 2004 budget. The majority of the Judiciary’s personnel budget—nearly 90%—is for support staff, including clerks, secretaries, and administrative personnel. The Judiciary has revised the way it sets salaries for court employees to ensure that compensation is not out of line with employee responsibilities, job skills, and performance. The courts are continuously looking for other ways to do more with less. For example, judges now employ not more than one career law clerk to assist them with legal research and associated duties, where in the past many judges employed two or even more. Judges instead are making greater use of less experienced “term” law clerks who can provide useful service for one or two years at a lower cost. As additional measures, the Administrative Office and the Federal Judicial Center instituted selfimposed hiring freezes, trimmed budget requests, and voluntarily declined to fill vacant positions to reduce expenses. In aggregate, those measures should save as much as $300 million from 2009 through 2017.

 

The Judiciary is steeped in history, but not tied to the past: We have increased efficiency through the use of information technology, which accounted for 5% of the Judiciary’s 2004 budget. The courts now routinely use computers to maintain court dockets, manage finances, and administer employee compensation and benefits programs. The Judiciary has achieved significant savings through more cost-effective approaches in deploying those systems. For example, the courts have found that they can employ new technology in tandem with improvements in their national data communications network to consolidate local servers and other information technology infrastructure. The Judiciary’s consolidation of its jury management program resulted in a savings of $2.0 million in the first year and an expected annual savings of $4.8 million through 2012. A similar consolidation of the probation case management system is projected to save $2.6 million over the same period. The Judiciary is currently undertaking a consolidation of technology in its national accounting system, which is expected to achieve savings and cost avoidances totaling $55.4 million through 2012. Those at the Office of Management and Budget or the Congressional Budget Office may not be impressed by these numbers, but don’t forget: The entire Judicial Branch accounts for only 0.2% of the Nation’s budget. For us, these are real savings.

 

The Supreme Court itself has worked hard to contain costs, holding back on requests for new funding until absolutely necessary. For 2009, the Court submitted a budget that called for no new spending and requested only the standard, government-wide inflationary adjustments to its budget. The Court’s personnel have kept an eagle eye on expenditures for an ongoing building renovation—the first since the building was completed in 1935—to update and repair antiquated systems and improve security. That renovation, now expected to be completed in 2010, has fallen behind schedule. That apparently is not unusual in Washington. But this project remains on budget despite those setbacks—a welcome departure from the Washington norm.

 

As all these efforts illustrate, the Judiciary is committed to spending its tiny share of the federal budget responsibly and will continue to make sacrifices to contain the costs of administering justice. We have worked amicably with our appropriators in Congress to achieve these results. But the courts cannot preserve their vitality simply by following a non-fat regimen. The Judiciary must also continue to attract judges who are the best of the best.

 

During these times, when the Nation faces pressing economic problems, resulting in business failures, home foreclosures, and bankruptcy, and when Congress is called upon to enact novel legislation to address those challenges, the courts are a source of strength. They guarantee that those who seek justice have access to a fair forum where all enter as equals and disputes are resolved impartially under the rule of law.

 

The courts decide issues of momentous importance to the litigants and to a broader community of persons affected by the outcomes of precedentsetting decisions. The legal issues in today’s global, technology-driven economy are increasingly complex, and judges must respond with wisdom and skill acquired from study, reflection, and experience. If the Nation wants to preserve the quality of American justice, the government must attract and retain the finest legal minds, including accomplished lawyers who are already in high demand, to join the bench as a lifelong calling.

 

I suspect many are tired of hearing it, and I know I am tired of saying it, but I must make this plea again—Congress must provide judicial compensation that keeps pace with inflation. Judges knew what the pay was when they answered the call of public service. But they did not know that Congress would steadily erode that pay in real terms by repeatedly failing over the years to provide even cost-of-living increases. Last year, Congress fell just short of enacting legislation, reported out of both House and Senate Committees on the Judiciary, that would have restored cost-of-living salary adjustments that judges have been denied in past years. One year later, Congress has still failed to complete action on that crucial remedial legislation, despite strong bipartisan support and an aggregate cost that is miniscule in relation to the national budget and the importance of the Judiciary’s role. To make a bad situation worse, Congress failed, once again, to provide federal judges an annual cost-of-living increase this year, even though it provided one to every other federal employee, including every Member of Congress. Congress’s inaction this year vividly illustrates why judges’ salaries have declined in real terms over the past twenty years.

 

Our Judiciary remains strong, even in the face of Congress’s inaction, because of the willingness of those in public service to make sacrifices for the greater good. The Judiciary is resilient and can weather the occasional neglect that is often the fate of those who quietly do their work. But the Judiciary’s needs cannot be postponed indefinitely without damaging its fabric. Given the Judiciary’s small cost, and its absolutely critical role in protecting the Constitution and rights we enjoy, I must renew the Judiciary’s modest petition: Simply provide cost-of-living increases that have been unfairly denied! We have done our part—it is long past time for Congress to do its.

You can read the entire report here: [Link].

The E-discovery committee of the Federal Circuit Advisory Committee has published a model court order for e-discovery for U.S. district courts.  The announcement and model order are available here: [Model Order]. 

The e-discovery committee is made up of: Chief Judge James Ware (ND Cal), Judge Virginia Kendall (ND Ill), Magistrate Judge Chad Everingham (ED Tex), Chief Judge Randall Rader (Fed. Cir.), Tina Chappell, Richard “Chip” Lutton, Joe Re, Edward Reines, Steve Susman, and John Whealan.

The oral arguments for two en banc patent cases dealing with the issue of divided infringement are set for November 18, 2011.  Here are the parties’ briefs to the Federal Circuit for these two en banc cases:

Akamai Technologies, Inc. v. Limelight Networks, Inc. 

Akamai’s Principal Brief as Plaintiff-Appellant: [Link].

Limelight’s Principal Brief as Defendant-Cross-Appellant:  [Link]. 

Akamai’s Reply Brief:  [Link].

Vacated Federal Circuit Panel Decision:  [Link].

Previous oral argument in front of initial three judge panel: [Listen]
 

McKesson Technologies, Inc. v. Epic Systems Corp.

McKesson’s Principal Brief as Plaintiff-Appellant:  [Link].

Epic’s Response Brief as Defendant-Appellee:  [Link].

McKesson’s Reply Brief :  [Link].

Vacated Federal Circuit Panel Decision:  [Link].

Previous oral argument in front of initial three judge panel:  [Listen]

The oral argument in Ultramercial, LLC  et al. v. Hulu LLC et al., 2010-1544 (Fed. Cir. September 15, 2011) is one that I think will interest many practitioners.  The case deals with the issue of subject matter eligibility under 35 U.S.C. section 101 for a claim directed at distributing copyrighted products (e.g., songs, movies, and books) over the Internet.  Claim 1 reads as follows:

1)  A method for distribution of products over the Internet via a facilitator, said method comprising the steps of:

a first step of receiving, from a content provider, media products that are covered by intellectual property rights protection and are available for purchase, wherein each said media product being comprised of at least one of text data, music data, and video data; a second step of selecting a sponsor message to be associated with the media product, said sponsor message being selected from a plurality of sponsor messages, said second step including accessing an activity log to verify that the total number of times which the sponsor message has been previously presented is less than the number of transaction cycles contracted by the sponsor of the sponsor message;

a third step of providing the media product for sale at an Internet website;

a fourth step of restricting general public access to said media product;

a fifth step of offering to a consumer access to the media product without charge to the consumer on the precondition that the consumer views the sponsor message;

a sixth step of receiving from the consumer a request to view the sponsor message, wherein the consumer submits said request in response to being offered access to the media product;

a seventh step of, in response to receiving the request from the consumer, facilitating the display of a sponsor message to the consumer;

an eighth step of, if the sponsor message is not an interactive message, allowing said consumer access to said media product after said step of facilitating the display of said sponsor message;

a ninth step of, if the sponsor message is an interactive message, presenting at least one query to the consumer and allowing said consumer access to said media product after receiving a response to said at least one query;

a tenth step of recording the transaction event to the activity log, said tenth step including updating the total number of times the sponsor message has been presented; and

an eleventh step of receiving payment from the sponsor of the sponsor message displayed.

‘545 patent col.8 ll.5-48.

Judge Lourie inquired that one looks to the claim language to determine the steps of a method rather than relying on some sort of general idea: [Listen].

His statement for the court in Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1347 (Fed. Cir. 2010)(en banc) is consistent with the approach that claims define subject matter:

Claims define the subject matter that, after examination, has been found to meet the statutory requirements for a patent. See In re Vamco Mach. & Tool, Inc., 752 F.2d 1564, 1577 n. 5 (Fed.Cir.1985). Their principal function, therefore, is to provide notice of the boundaries of the right to exclude and to define limits; it is not to describe the invention, although their original language contributes to the description and in certain cases satisfies it. Claims define and circumscribe, the written description discloses and teaches.

But, Chief Judge Rader asked why in a section 101 analysis does one have to worry about particular claim terms, since all one is evaluating is subject matter eligibility. Shouldn’t one just look to the field that “this” is in in order to see if that field is precluded under 35 U.S.C. section 101: [Listen].  This line of questioning would echo his questions from the oral argument in Research Corp. Techs. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010): [Listen]. 

At another point in the oral argument, Judges Rader and O’Malley took defendant-appellee’s counsel to task for asserting that economic ideas such as a “transaction” were by definition abstract: [Listen].

Finally, Judge O’Malley echoed the sentiment of the patent bar when she commented that she wasn’t sure what the Supreme Court made clear in Bilski: [Listen].

You can listen to the entire oral argument here: [Listen].
You can read the court’s opinion here: [Read].

The Federal Circuit has announced a memorial session to be held for Circuit Judge Daniel Friedman, who passed away earlier this year.