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Last week, the Federal Circuit issued its opinion in Golden Hour Data Systems, Inc. v. EMSCHARTS, Inc. et al., 2009-1306 (Fed. Cir. Aug. 9, 2010).  The main issue in the case concerned alleged inequitable conduct by the patent agent who prosecuted the application.  Judge Ward of the Eastern District of Texas had ruled in the district court case that the patent was unenforceable due to inequitable conduct by the patent agent.

Essentially, the arguments on appeal centered on whether the patent agent had “intent to deceive the patent office.”  As I understand it, the patent agent, prosecuting the application in 1998, had been given a brochure by the inventor shortly after the filing of the application.  The brochure was undated.  The patent agent had a practice of not submitting undated material to the patent office because it would not be considered by the examiners. So, the patent agent summarized the brochure and submitted the summary via an IDS.  The summary, however, did not disclose information from the middle of the short brochure that Judge Ward found material.

The defendants’ attorney argued that because Judge Ward had found that even a cursory review of the brochure would have made someone aware of the material information that this amounted to “selective disclosure” by the patent agent rather than non-disclosure.  The defendants also argued that it was inconsistent to say that you couldn’t submit the entire brochure as being undated and to say that you weren’t aware of the material information; because, even a cursory review to check for the date allegedly would have made one aware of the material information.

The Federal Circuit seemed to feel that Judge Ward danced around the intent issue.  So, they remanded the case back to Judge Ward.

This oral argument is pretty interesting if you are a prosecutor.  It highlights just how easy it is to get run over by the inequitable conduct bus ten years after you’ve filed an IDS and no longer have the necessary recollection of the facts to be able to defend yourself.

Here are some of the more interesting portions of the oral argument:  [Listen], [Listen], [Listen], [Listen], and [Listen].

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

You can read the Federal Circuit opinion here: [Read].

Federal Circuit nominee Judge Kathleen O’Malley was affirmed by the Federal Circuit last week.  To be clear, she has not yet been “confirmed” by the Senate; but, her district court judgment was “affirmed” by Judges Bryson, Gajarsa, and Prost  in  Baran v. Medical Device Technologies, Inc. et al., 2010-1058 (Fed. Cir. Aug. 12, 2010).

Judge Linn noted during his presentation at the AIPLA CLE in Denver that when the Federal Circuit sits in Atlanta this November, they will be sitting at: Georgia State University College of Law, Emory University School of Law, Atlanta’s John Marshall Law School, and the U.S. District Court in Atlanta.

TruePosition, Inc. v. Andrew Corp., 2009-1389 (Fed. Cir. Aug. 12, 2010) was decided today via a Rule 36 affirmance.  The curious thing about this case is that the oral argument took place back on February 5th.  Typically, Rule 36 opinions issue within a few days of oral argument.  The district court’s infringement judgment was for more than $48M.

The oral argument is interesting in that in addition to discussing standard setting issues, it also deals with when activities in the U.S. might constitute an offer for sale in the U.S. that is actually communicated in a foreign country to an offeree. [Listen].  One proposed hypothetical was the sending of an email with the offer details from the U.S. to the offeror’s agent in the foreign country, who would then communicate the offer to the offeree on foreign soil.

The appellant argued for application of Rotec Industries v. Mitsubishi Corp. et al., 215 F.3d 1246 (Fed. Cir. 2000). [Link].

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

The opinion is availble here: [Read].

Have you ever run across a patent that discusses a prior art reference in the Background of the patent; but, in looking at the References Cited section of the patent as well as the file wrapper for the patent you see that the reference mentioned in the Background was neither IDS’d  by the applicant nor cited by the examiner?  Have you ever wondered whether that amounts to inequitable conduct?  I’ve researched the issue a little in the past and never was able to locate a case that decided the issue.  So, I was intrigued to hear the oral argument in Ring Plus v. Cingular Wireless, 2009-1537 (Fed. Cir. Aug. 6, 2010) which had similar facts.

The panel determined that there was insufficient evidence to prove intent to deceive the PTO.  It noted that this was not a non-disclosure case because the references at issue were disclosed in the application itself (i.e., in the Background section).   The district court’s finding of unenforceability due to inequitable conduct was reversed.  The opinion stated:

Cingular notes that the applicants prepared, but decided not to file, an IDS that listed both Strietzel and Sleevi. Again, this evidence relates to materiality, but not intent. While it may have been relevant if this was a non-disclosure case, it is not; Sleevi and Striezel were disclosed in the application itself.

The exchanges between the judges and the attorneys during the oral argument were very interesting.   The defendant-appellee argued that MPEP Section 609 in force in 2004 required citation of the reference by the applicant.  [Listen] and [Listen].

The plaintiff-appellant argued that the MPEP requires the examiner to read the application before conducting a search.  Since a search was conducted, the plaintiff-appellant argued that the examiner must have read the entire application and been aware of the references. . . . [Listen].

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

You can read the court’s opinion here: [Read].

Judge Lourie of the United States Court of Appeals for the Federal Circuit recently sat by designation on the United States Court of Appeals for the Third Circuit.

Here are a few of the opinions that he authored:

United States v. Martinez, 2008-1027 (3d Cir. Mar. 4, 2010).  [Read]

LionHeart Holding GRP v. Phila. Contributionship Ins. Co., 2008-1533.1 (3d Cir. Mar. 4, 2010).  [Read]

Hua Lan An v. Attorney General of the United States, 2008-3732 (3d Cir. Mar. 8, 2010).  [Read]

Bapu Corp. et al. v. Choice Hotels Intl., Inc., 2009-1011 (3d Cir. Mar. 16 2010).  [Read]

You probably already saw retired Chief Judge Michel’s editorial in yesterday’s New York Times (and mentioned on the Patently-O blog today).  If not, here is the link: [LINK].

The goal of the $1 B infusion into the Patent Office is to reduce the backlog of patent applications over the next few years.  If you haven’t sent the article to your clients, congressional representatives, or editor at your local business journal, you might want to do so.  After all, all politics is local.  Here are links for helping you contact your local congressperson, if you are interested in doing so: [HOUSE] [SENATE].

While it is easy to see where the PTO could spend the money and increase staffing, increasing the ranks of registered patent attorneys to respond to the increase in applications being processed could be a different matter.  I suspect associate salaries could be in store for a roller coaster ride if such funding is secured.

The other day in WebZero v. Clicvu, Judge Bryson characterized an argument as being akin to Charles Dickens’ character Wilkins Micawber:

As we have noted before, a party seeking further discovery under Rule 56(f) is “required to state with some precision the materials he hope[s] to obtain with further discovery, and exactly how he expect[s] those materials would help him in opposing summary judgment. It is not enough simply to assert, à la Wilkins Micawber, that ‘something will turn up.'” Simmons Oil Corp. v. Tesoro Petroleum Corp, 86 F.3d 1138, 1144 (Fed. Cir. 1996). Accordingly, we hold that the district court did not abuse its discretion in failing to order additional discovery.

That got me to thinking that if I were ever to analogize a Supreme Court patent case to a fictional character, I would have to opt for KSR v. Teleflex and Charles Edward Biffen (a.k.a. “Biffy”):

“And there in a nutshell you have Charles Edward Biffen.  As vague and woolen-headed a blighter as ever bit a sandwich.”

                                                                                                                    —  Carry On, Jeeves by P.G. Wodehouse

The U.S. District Court for the District of South Dakota recently issued its opinion in Larson Mfg. Co. v. Aluminart Products Ltd., CIV 03-4344 (D.S.D. July 29, 2010).  You might recall that this case was on remand from the Federal Circuit to consider inequitable conduct issues concerning the failure to cite office actions from related cases. 

The court applied the three part test for inequitable conduct finding that (1) two omitted office actions were highly material; (2) clear and convincing evidence of intent to deceive the USPTO was established and unrebutted; and (3) in balancing the equities, Larson’s conduct was not so egregious as to warrant holding the patent unenforceable.

You can read the district court’s opinion here:  [Read].

Today in Becton Dickinson and Co. v. Tyco Healthcare Group, LP, 2009-1053 (July 29, 2010), Judges Linn and Mayer reversed Chief Judge Sleet of the U.S. District Court for the District of Delaware.  Judge Gajarsa filed a dissenting opinion.

One issue that interested me from skimming this decision was that despite the court noting that the claim language was unambiguous, the majority still made the statement that the claims should be construed to preserve their validity.  Since Liebel Flarsheim v. Medrad was decided in 2004, I have always been under the impression that claims should be construed to preserve their validity only where the claims are first determined to be ambiguous.

The panel first noted that the claims were unambiguous on page 8 of the opinion:

“The unambiguous language of the asserted claims, as well as the disclosure in the specification, requires an added spring element that moves the safety guard toward the tip of the needle.” 

The opinion later goes into the analysis of preserving validity on page 12 of the opinion:

 

Furthermore, if the hinged arm and spring means are not separate structures, then the asserted claims are clearly invalid as obvious over the prior art.  See Whittaker Corp. v. UNR Indus., Inc., 911 F.2d 709, 712 (Fed. Cir. 1990) (“[C]laims are generally construed so as to sustain their validity, if possible.”). The first three elements of Becton’s claimed invention—the needle, the protective guard, and the hinged arm—were disclosed in several prior art patents. See U.S. Patent Nos. 4,911,706; 4,898,589; 4,790,828. The Hagen patent, U.S. Patent No. 4,735,618, specifically discloses a safety needle, a guard and a hinged arm, which includes hinges comprised of thinned pieces of plastic. What distinguished the claimed invention from the prior art was the addition of a spring means separate from the hinged arm. See ’544 patent col.1 ll.33-34 (discussing “prior art needle shields [that] are hingedly attached to the hub of the needle cannula”).

In contrast, Liebel-Flarsheim v. Medrad, 358 F.3d 898, 911 (2004) states the following:

“This court has frequently alluded to the “familiar axiom that claims should be so construed, if possible, as to sustain their validity.” Rhine v. Casio, Inc., 183 F.3d 1342, 1345 (Fed.Cir.1999) (internal quotation marks omitted). At the same time, however, the court has “admonished against judicial rewriting of claims to preserve validity.” Id. Accordingly, unless the court concludes, after applying all the available tools of claim construction, that the claim is still ambiguous, the axiom regarding the construction to preserve the validity of the claim does not apply. See AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234, 1243 (Fed.Cir.2003) (“That axiom is a qualified one, dependent upon the likelihood that a validity-preserving interpretation would be a permissible one.”); Generation II Orthotics Inc. v. Med. Tech. Inc., 263 F.3d 1356, 1365 (Fed.Cir.2001) (“[C]laims can only be construed to preserve their validity where the proposed claim construction is `practicable,’ is based on sound claim construction principles, and does not revise or ignore the explicit language of the claims.”); Elekta Instrument S.A. v. O.U.R. Scientific Int’l, Inc., 214 F.3d 1302, 1309 (Fed.Cir.2000) (“having concluded that the amended claim is susceptible of only one reasonable construction, we cannot construe the claim differently from its plain meaning in order to preserve its validity”).”

Neither the majority opinion nor the dissent mentioned the Liebel-Flarsheim case.

You can read the Becton Dickinson opinion here: [Read].

The Senate Judiciary Committee Hearing for Federal Circuit nominee Kathleen O’Malley took place this afternoon. The link to the recording of the proceeding is available here: [Link to Webcast]. Judge O’Malley is introduced by Senator Brown at about 23:10 into the recording. The questioning begins at about 35:19 into the recording.

A large contingent of friends and family of Judge O’Malley attended the hearing, including seven of her former law clerks.

Judge O’Malley fielded questions from several members of the committee. In particular, Senator Sessions noted that as a US district court judge, Judge O’Malley had been reversed twice in regard to some death penalty cases. He inquired whether she would be willing to apply the death penalty if confirmed to the Court of Appeals for the Federal Circuit . . . .

Unless Congress significantly revises the penalty for false patent marking, I’m skeptical that Judge O’Malley or any judge sitting on the Federal Circuit will see any death penalty cases in the near future. To give Senator Sessions the benefit of the doubt, I suppose one might encounter such a case while sitting by designation as either a district court judge (as Judge Rader has done recently) or on a panel for another circuit (as Judge Lourie has done recently).

After Senator Sessions completed his questioning, Senator Al Franken of Minnesota questioned Judge O’Malley. His questioning focused on the issue of network neutrality.

The Senate Judiciary Committee will hold its hearing for Federal Circuit nominee Kathleen O’Malley tomorrow.  The hearing is scheduled for 2:30 Eastern time: [Link to Webcast].