Recently retired Supreme Court Justice John Paul Stevens spoke at the University of Colorado Law School last night. He has a memoir scheduled to come out in early October. It will be interesting to see if it has anything to say about patent law.
Justice Stevens Visits Colorado Law School
September 23rd, 2011Pro Hac Vice
September 22nd, 2011
Chief Judge Rader and Prof. Sean O'Connor of "Pro Hac Vice"
Those of you in the Bay Area might want to take note that Chief Judge Rader will be speaking at the Court of Federal Claims Western Bench and Bar Retreat on October 18th.
Apparently, Chief Judge Rader is a member of the band “Pro Hac Vice.” The band is scheduled to perform on the 18th as part of the evening ceremonies. I do not know if any of their hits are available on iTunes. You can see the schedule of events for the seminar to be held at the Claremont Hotel in Berekeley here: [Link].
Here is a link to a “Pro Hac Vice” performance: [Link].
DOJ Briefs in Biotech Section 101 Cases
September 21st, 2011I was curious what approaches the DOJ/PTO briefs had taken in recent biotech section 101 cases. Here are links to the briefs by the DOJ in:
LabCorp v. Metabolite (Supreme Court): [Link]
The Association for Molecular Pathology et al. v. Myriad (Federal Circuit) (as you may recall the PTO did not join in this brief): [Link]
Mayo v. Prometheus (Supreme Court): [Link].
Oral Argument Date for Akamai Tech. v. Limelight Networks and McKesson Tech. v. Epic Systems Corp.
September 20th, 2011The date has been set for the en banc oral arguments of two divided infringement patent cases, Akamai Tech. v. Limelight Networks and McKesson Tech. v. Epic Systems Corp. The date will be Friday November 18, 2011.
The issue that the parties were asked to brief in the Akamai Tech. v. Limelight Networks case is:
1. If separate entities each perform separate steps of a method claim, under what circumstances would that claim be directly infringed and to what extent would each of the parties be liable?
The issues that the parties were asked to brief in the McKesson Tech. v. Epic Systems Corp. case are:
1. If separate entities each perform separate steps of a method claim, under what circumstances, if any, would either entity or any third party be liable for inducing infringement or for contributory in-fringement? See Fromson v. Advance Offset Plate, Inc., 720 F.2d 1565 (Fed. Cir. 1983).
2. Does the nature of the relationship between the relevant actors—e.g., service provider/user; doctor/patient—affect the question of direct or indirect infringement liability?
Questions for the Record — Judge Evan Wallach
September 19th, 2011As a follow up to the Senate Judiciary Committee hearing for Judge Evan Wallach’s Federal Circuit nomination, he has submitted his responses to the Senate Judiciary Committee’s written questions. You can view his responses [here]. The questions were somewhat more pointed than have been asked of other Federal Circuit nominees.
Supreme Court Briefing for the 2011-2012 Term Patent Cases
September 18th, 2011The ABA posts the briefs, including the briefs of amici, for forthcoming Supreme Court cases. You can follow the briefing for the three patent cases on the 2011-2012 term calendar of the Supreme Court at these links:
Caraco Pharmaceutical v. Novo Nordisk A/S, Docket No., 10-844
Kappos v. Hyatt, Docket No., 10-1219
Mayo Collaborative Services Services v. Prometheus Laboratories, Inc., Docket No., 10-1150 . (Of particular note, the amicus brief of the United States is available [here].)
The oral argument dates have not been announced.
Hans Gruber and the Federal Circuit
September 18th, 2011Yes, that Hans Gruber.
A panel of the Federal Circuit was trying to evaluate the construction of the term “bearer instrument” in a recent oral argument. Counsel for the defendant-appellee was explaining that, with respect to bearer instruments, title passes by delivery without endorsement. As an illustration, he used the example of Hans Gruber trying to steal bearer bonds in the movie Die Hard. [Listen]. While the analogy resonated with me, I couldn’t tell from the recording if it did with the panel. As it turns out, Hans Gruber is a very well-known character. He is the 46th most notorious villain in the last 100 years of the movies, according to the American Film Institute.
You can listen to the entire oral argument in Privacash, Inc. v. American Express Co. et al. [here].
You can read the court’s opinion [here].
Snooze, ya lose
September 17th, 2011A week ago, there were at least three subject matter eligibility cases that had been orally argued but not yet decided by the Federal Circuit: Dealertrack v. Huber (argued on May 4th, Dyk, Linn, Plager); Fuzzysharp Technologies Inc. v. 3D Labs, Inc. (argued on July 7th, Bryson, O’Malley, Reyna); and Ultramercial v. Hulu (argued on August 4th, Rader, Lourie, O’Malley). The cases are of particular interest because they will continue to develop the court’s jurisprudence in the area of subject matter eligibility, post-Bilski. Moreover, with what appears to be significantly divergent viewpoints about subject matter eligibility by various Federal Circuit judges, as evidenced by the Research Corp. Technologies v. Microsoft and CyberSource Corp. v. Retail Decisions, Inc. panels, the earliest decision to issue will serve as precedent to subsequently decided cases.
At first glance, one might have expected Dealertrack to issue first. As it turns out, it was Judge Rader’s panel in Ultramercial v. Hulu that took home the honors on September 15th. Now a cynic might wonder if this was “gamesmanship” in that the most-recently argued case was decided first and a mere six weeks after oral argument. However, in actuality, the Ultramerical case really only concerned the single issue of subject matter eligibility that had been decided on summary judgment by the district court. So, perhaps Ultramercial just happened to be an easy one.
On another note, the Dealertrack decision should be interesting. The panel is comprised of Circuit Judges Dyk, Linn, and Plager. Judge Dyk authored the CyberSource opinion. Judge Plager was a member of the unanimous panel in the Research Corp. Technologies opinion. I’ll venture a guess that Judge Linn is authoring the Dealertrack opinion for the court.
Dr. Oz’s Patent
September 15th, 2011You may be familiar with Dr. Mehmet Oz who often appeared on the Oprah Winfrey Show. He now has his own syndicated televison show. This past August he and his co-inventors had a patent issue titled “System and Method for Determining an Objective Measure of Human Beauty.” It is patent number 8,005,270.
Claim 1 of the patent reads:
1. A beauty quantification system comprising:
a beauty quantification processor;
a beauty measure datastore, wherein the beauty measure datastore comprises quantifiable measures of beauty of a body region;
a beauty score datastore;
a user computing device;
a network; and
a beauty enhancement processor,
wherein the beauty quantification processor comprises instructions for:
receiving user data indicative of physical attributes of a selected body region of the user;
obtaining measures of beauty from the beauty measures datastore associated with the selected body region;
evaluating the user data against the beauty measures of the selected body region;
determining a user score indicative of the beauty of the selected body region of the user;
storing the user score in the beauty score datastore; and
comparing the user score to a score stored in the beauty score datastore; and
wherein the beauty enhancement processor comprises instructions for:
receiving from the user a selection for an enhancement of the selected body region;
applying the selected enhancement to the selected body region; and
determining an enhanced user score indicative of the beauty of the selected body region after application of the selected enhancement.
You can read the entire patent [here].
Federal Circuit Judges to Participate in E.D. Texas Conference
September 14th, 2011The Federal Circuit has posted on its website an announcement about an upcoming conference sponsored by the Eastern District of Texas Bench and Bar (to be held in Dallas). It looks like quite an interesting three day conference that should be particularly interesting to in-house patent counsel. The announcement reads:
Chief Judge Rader, Circuit Judge Linn, Circuit Judge O’Malley, Circuit Judge Reyna and Circuit Mediator Amend to Participate in the 2011 Eastern District of Texas Bench Bar Conference
Chief Judge Randall Rader, Circuit Judge Richard Linn, Circuit Judge Kathleen O’Malley, Circuit Judge Jimmie Reyna and Circuit Mediator James Amend will participate in the 2011 Eastern District of Texas Bench and Bar Conference from September 25 to 27, 2011 in Las Colinas, Texas. Among the topics to be discussed are “Judicial Economy versus De Novo Review in Claim Construction”, “The Ethics of Advocacy”, “Emerging Management Techniques & Tradeoffs in Multiple Party Cases”, “Corporate Counsel: Views of ED Texas, Federal Circuit and Judicial Patent Reform”, and “Settlement Perspectives: Impediments to Resolution of IP & Other Complex Cases”. Click here for the conference schedule. Registration is available here .
Confirmation Hearing for Judge Evan Wallach
September 12th, 2011The Senate Judiciary Committee’s hearing for Judge Evan Wallach took place last week. Judge Wallach was introduced to the committee by Senate Majority Leader Harry Reid.
You can watch the video of the hearing at this [LINK]. Senator Reid introduces Judge Wallach at about the 32:10-36:08 minute portion of the video. Judge Wallach answers questions at about the 42:33-63:50 minute portion of the video.
Confirmation Hearing for Judge Evan Wallach — September 7th
September 5th, 2011The Senate Judiciary Committee has posted on its website the date and time for Judge Evan Wallach’s confirmation hearing for a seat on the Federal Circuit bench. The hearing is currently scheduled for Wednesday September 7, 2011 at 12:30 Mountain time (2:30 Eastern time).
The link with all the pertinent information and a further link to the webcast is available here: [Link].
Judge Moore Sticks up for Patent Prosecutors
September 1st, 2011On the heels of Cybersource Corp. v. Retail Decisions, Inc., an opinion that would have made Justice Douglas blush, the Federal Circuit has decided Classen Immunotherapies, Inc. v. Biogen-Idec et al., 2006-1634 (Fed. Cir. Aug. 31, 2011). What interested me most about this decision was Chief Judge Rader’s additional views in which he was joined by Judge Newman.
Chief Judge Rader took issue with patent attorneys responding to Supreme Court precedent by drafting claims to avoid abstract ideas. Chief Judge Rader characterized this as “gamesmanship.” This is disappointing because it reflects a fundamental misunderstanding of what patent attorneys are doing. At a basic level, they are zealously representing their clients. At a claim drafting level, they are simply trying to color within the lines of what they believe to be the borders of eligible subject matter.
For example, if subject matter is a circle, and the outermost edge of the circle is a characterization of the subject matter that is so abstract as to constitute an abstract idea, drafting a claim to include that outermost area should violate section 101. However, if one doesn’t try to claim that outermost area, he or she should be fully entitled to claim the inner parts of the circle, whether that be an apparatus claim, a method claim, a composition of matter claim, or even an article of manufacture claim. For example, just because one can’t claim the idea of sitting, that doesn’t mean one shouldn’t be able to claim all types of chairs. The same holds true for Beauregard claims or any other type of claim that does not claim an abstract idea. The rules shouldn’t change just because software is involved.
The following is an excerpt of what Chief Judge Rader wrote in his additional views in Classen:
The patent eligibility doctrine has always had significant unintended implications because patent eligibility is a “coarse filter” that excludes entire areas of human inventiveness from the patent system on the basis of judge-created standards. For instance, eligibility restrictions usually engender a healthy dose of claim-drafting ingenuity. In almost every instance, patent claim drafters devise new claim forms and language that evade the subject matter exclusions. These evasions, however, add to the cost and complexity of the patent system and may cause technology research to shift to countries where protection is not so difficult or expensive.
The first unintended consequence, claim drafting evasion, has occurred several times in the past. After all, patents require a translation of technology into text, i.e., patent claims. Inevitably the subject matter exclusions of eligibility doctrines depend on the way that claims are drafted. Thus, careful claim drafting or new claim forms can often avoid eligibility restrictions. Eligibility then becomes a game where lawyers learn ingenious ways to recast technology in terms that satisfy eligibility concerns.
Two well-known examples of claim drafting to circumvent eligibility restrictions are the Beauregard claim and the Swiss claim. The Beauregard claim was devised to draft around restrictions on software imposed in Gottschalk v. Benson, 409 U.S. 63 (1972). Benson denied eligibility to mathematical algorithms, a category broad enough to endanger computer software in general. The Beauregard claim form, however, was for “computer programs embodied in a tangible medium.” In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995). Claims were re-drafted so that the intangible computer code in Benson instead became an encoded tangible medium in Beauregard. See id. at 1584 (PTO stating it will treat such claims as patent eligible subject matter); MPEP § 2106 (8th ed. Rev. 8, July 2010) (same).
…
When careful claim drafting or new claim formats avoid eligibility restrictions, the doctrine becomes very hollow. Excluding categories of subject matter from the patent system achieves no substantive improvement in the patent landscape. Yet, these language games impose high costs on patent prosecution and litigation. At the same time, the new games can cheat naïve inventors out of their inventions due to poor claim drafting. Moreover, our national innovation policy takes on characteristics of rewarding gamesmanship.
In addition to gamesmanship, eligibility restrictions increase the expense and difficulty in obtaining a patent. By creating obstacles to patent protection, the real-world impact is to frustrate innovation and drive research funding to more hospitable locations. To be direct, if one nation makes patent protection difficult, it will drive research to another, more accommodating, nation.
Classen, C.J. Rader’s additional views at pages 2-4 (emphasis added).
In response to Chief Judge Rader’s additional views, Judge Moore stood up for claim drafters noting that careful claim drafting is a virtue, not a vice. She wrote:
3 With all due respect to my colleagues, I do not agree with the additional views. First, the additional views improperly criticizes litigants for arguing that abstract ideas are exempt from patent protection. We are bound to follow Supreme Court precedent which clearly and explicitly holds that abstract ideas are not eligible for patent protection. Diamond, 450 U.S. at 185 (“Excluded from such patent protection are . . . abstract ideas.”); Parker, 437 U.S. at 589 (“[A]bstract intellectual concepts are not patentable . . . .”). Second, I favor “careful claim drafting” and think it a virtue, not a vice. If § 101 causes the drafting of careful, concrete, specific claims over abstract, conceptual claims, I see no harm. The world will have clear notice of the scope of such patent rights. Finally, in this global age, it is not immediately clear to me why the scope of patent rights should dictate the location of the innovation. Chinese companies do not move to the U.S. to carry out their research when they want a U.S. patent. Regardless, any decision on “national innovation policy” such as what will “frustrate innovation” or “drive research funding” should be left to Congress. We do not have the resources, institutional expertise or the mandate to weigh the competing incentives to innovation. Our job is to take the statute as we find it and apply it to the facts of the case before us.
Classen, Judge Moore’s dissent at pages 13-14 (emphasis added).
The recent demonizing of Beauregard claims and assertions of gamesmanship leaves one feeling a little bit like an outlaw in the old west:
* “Boilerplate Bill” is also wanted for continuation filin’, IDS submittin’, zealously representin’, gum chewin’, software protectin’, dog pettin’, Examiner collaboratin’, and algorithmin’. He is considered armed and dangerous, as his mild-mannered, patent attorney personality has been known to bore people to death.
Hindsight — In re NTP
August 30th, 2011The decision in In re NTP, Inc., 2010-1243 (Fed. Cir. April 1,2011) has a good observation about hindsight analysis when a cited combination of references results in a superfluous component. While the facts of the opinion dealt with superfluous RF networks, one could see it being persuasive in regard to combinations of references that result in superfluous computer networks, transmitters, etc. Judge Moore wrote for the panel (Gajarsa, Moore, and Clevenger):
As an initial matter, our construction of “electronic mail [message]” is irrelevant to this basis for rejection because the AAPA is the “Background Art” of the subject specifications that includes the four-item description of electronic mail. Further, the AAPA clearly teaches the other limitations of the claim with the exception of the RF network. Harrison teaches the use of an RF network to deliver data. Thus, the Board’s findings regarding the content of the references are supported by substantial evidence. However, we hold that, as a matter of law, the claims would not have been obvious to one of ordinary skill in the art based on the combination of the AAPA and Harrison. The Board improperly relied on hindsight reasoning to piece together elements to arrive at the claimed invention. “Care must be taken to avoid hindsight reconstruction by using `the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.'” Grain Processing Corp. v. American-Maize Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (quoting Orthopedic Equip Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir. 1983)). Given any network, we could likely carve out a possible “interface” and combine it with Harrison to hold that the addition of a RF information transmission network would have been obvious. This type of piecemeal analysis is precisely the kind of hindsight that the Board must not engage in. The Board’s position is further weakened by the fact that the AAPA already discloses an RF network that connects portable computers to the system. ‘960 patent col.2 ll.1-4. Thus, adding an RF network to element #2 in the figure would render the RF network connecting the portable PCs in figure 1 superfluous. Because it is based on improper hindsight reasoning, we reverse the Board’s rejections based on the AAPA in view of Harrison.
In addition to the above comment by the panel that the PTO’s reasoning was based on hindsight, there was also a chorus of “hindsight” by the judges during the oral argument when the topic came up for discussion: [Listen].
You can read the entire opinion here: [Read].
You can listen to the oral argument here: [here]. The oral argument is extremely long (over three hours). It was very well argued by both sides.
Federal Circuit — Oregon Bound
August 24th, 2011The Federal Circuit will hit the trail and visit Oregon this October. The court will sit at Lewis and Clark Law, Wilamette Law, Pioneer Courthouse, the U.S. District Courthouse, and the University of Oregon Law. Here’s the published schedule of cases in case you reside near those places:
Panel D: Tuesday, October 4, 2011, 10:00 A.M., Lewis & Clark Law
| 2010-7073 | CVA | ALEXCE V DVA | [argued] |
| 2011-1120 | DCT | SEIKO EPSON V CORETRONIC CORP | [argued] |
| 2011-1199 | DCT | SYNOPSYS V RICOH CO | [argued] |
| 2011-5063 | CFC | RESOURCE CONVERSATION GROUP V US | [argued] |
| 2011-3048 | MSPB | NASUTI V MSPB | [on the briefs] |
| 2011-1195 | PTO | IN RE XIAO | [on the briefs] |
Panel E: Tuesday, October 4, 2011, 2:00 P.M., Willamette Law
| 2010-1526 | DCT | DOW CHEMICAL V NOVA CHEMICALS | [argued] |
| 2011-3031 | MSPB | YOUNIES V MSPB | [argued] |
| 2011-1158 | PTO | IN RE PERSONALIZED MEDIA | [argued] |
| 2011-1198 | DCT | FALANA V KENT STATE UNIV | [argued] |
| 2011-3037 | MSPB | EXUM V DHS | [on the briefs] |
| 2011-1275 | PTO | IN RE TAYLOR | [on the briefs] |
Panel I: Tuesday, October 4, 2011, 2:00 P.M., Pioneer Courthouse
| 2010-1512 | CIT | CANEX INTL LUMBER V US | [argued] |
| 2011-7030 | CVA | CHANDLER V DVA | [argued] |
| 2011-1114 | DCT | THORNER V SONY COMPUTER | [argued] |
| 2011-1162 | BCA | JP DONOVAN CONSTRUCTION V NAVY | [argued] |
| 2011-7104 | CVA | MCNULTY V DVA | [on the briefs] |
| 2011-7119 | CVA | URBAN V DVA | [on the briefs] |
Panel F: Wednesday, October 5, 2011, 10:00 A.M., U.S. District Court
| 2009-3263 | MSPB | MCGEE V AIR FORCE | [argued] |
| 2010-1519 | DCT | GROBER V MAKO PRODUCTS | [argued] |
| 2010-3181 | MSPB | SMITH-NWAGWU V VA | [argued] |
| 2011-1159 | PTO | IN RE REHRIG PACIFIC | [argued] |
| 2011-3118 | MSPB | BURROUGHS V ARMY | [on the briefs] |
| 2011-3141 | MSPB | BURROUGHS V ARMY | [on the briefs] |
Panel G: Wednesday, October 5, 2011, 10:00 A.M., U.S. District Court
| 2010-1498 | DCT | RUSSELL V US | [argued] |
| 2011-1230 | DCT | RUSSELL V US | [argued] |
| 2010-1534 | DCT | MEDICINES CO V KAPPOS | [argued] |
| 2011-1157 | DCT | KIMBERLY-CLARK V FIRST QUALITY | [argued] |
| 2011-7110 | CVA | O’DANIELS V DVA | [on the briefs] |
| 2011-3133 | MSPB | HAHN V EPA | [on the briefs] |
Panel H: Thursday, October 6, 2011, 2:00 P.M., University of Oregon Law
| 2010-1251 | DCT | UNITED ACCESS V EARTHLINK | [argued] |
| 2011-1091 | DCT | TEVA PHARMA V ASTRAZENECA PHARMA | [argued] |
| 2011-7037 | CVA | MAHER V DVA | [argued] |
| 2011-1107 | CIT | GPX INTL TIRE CORP V US | [argued] |
| 2011-7111 | CVA | GRIFFIN V DVA | [on the briefs] |
| 2011-3138 | MSPB | NATTY V USPS | [on the briefs] |