The Senate Judiciary Committee hearings have not yet been set for Federal Circuit nominees Judge Kathleen O’Malley and Edward DuMont. However, looking through the C-Span video archives, I did run across the confirmation hearing for Judge Prost from back in 2001. In the video, Judge Prost is introduced at about 10:23 minutes into the video with many complimentary remarks by the senators. The question and answer session begins at about 22:30 into the video.
Judicial Confirmation Hearings
June 15th, 2010Chief Justice Roberts on Oral Argument
June 14th, 2010Anubis to welcome AIPLA visitors
June 13th, 2010If you are flying in to Denver for the AIPLA roadshow on the 24th of June (Judge Linn will be speaking at the event), you’ll be interested to know that a statue of Anubis — Egyptian god of the dead — will be at the airport to welcome you. The statue is at the airport temporarily to promote the opening of the King Tut exhibit in Denver on July 1st. Anubis can be found outside the south end of the main “terminal” building.
There is no truth to the rumor that the jackal headed Anubis will be appearing at the roadshow to discuss developments in the claiming of transgenic animals.
Divided Infringement and Contract Illegality
June 10th, 2010If any law student out there is looking for a note topic, divided infringement and contract illegality might make for an interesting topic. Namely, to the extent that a party argues that a contract obligates another party to commit an act that results in patent infringement via divided infringement, is that contract provision unenforceable for producing an illegal result, i.e., patent infringement. And, if the contract provision is unenforceable for producing an illegal result, can direction and control for divided infringement be established by the unenforceable contract provision?
Oral Argument of the Month — Akamai Tech v. Limelight Networks
June 9th, 2010The oral argument of the month for the month of June is Akamai Tech v. Limelight Networks which was argued on Monday. This oral argument is quite interesting — especially if you are dealing with divided infringement issues. In addition to a lengthy discussion of divided infringement, the judges were also interested in the use of “the present invention” phrase vs. the “preferred embodiment” phrase in the specification.
So far, there has been no opinion in the case. You can listen to the oral argument here: [Listen].
Swearing-In Ceremonies
June 8th, 2010The judges of the Federal Circuit from time to time will swear-in to the Federal Circuit bar their judicial law clerks. One of the nice aspects of this is that you can tell the genuine appreciation that the judges have for the work by their law clerks. It just so happened that one such swearing-in ceremony was one of Chief Judge Rader’s official acts as the new Chief Judge. [Listen].
Some Favorite Quotations
June 7th, 2010As someone who prepares patent opinions and drafts patent applications, I find the following quotations to be right on point. You might enjoy them, too.
“The specification and claims of a patent, particularly if the invention be at all complicated, constitute one of the most difficult legal instruments to draw with accuracy; and, in view of the fact that valuable inventions are often placed in the hands of inexperienced persons to prepare such specifications and claims, it is no matter of surprise that the latter frequently fail to describe with requisite certainty the exact invention of the patentee.”
Topliff v. Topliff, 145 U.S. 156, 171 (1892).
“Claim drafting is itself an art, an art on which the entire patent system today depends. The language through which claims are expressed is not a nose of wax to be pushed and shoved into a form that pleases and that produces a particular result a court may desire. The public generally, and in particular, the patentees’ competitors, are entitled to clear and specific notice of what the inventor claims as his invention. That is not an easy assignment for those who draft claims, but the law requires it, and our duty demands that we enforce the requirement.”
Exxon Chem. Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553, 1563 (Fed. Cir. 1995)(Plager, J. concurring).
“This court recognizes that such reasoning places a premium on forethought in patent drafting. Indeed this premium may lead to higher costs of patent prosecution. However, the alternative rule – allowing broad play for the doctrine of equivalents to encompass foreseeable variations, not just of a claim element, but of a patent claim – also leads to higher costs. . . .Given a choice of imposing the higher costs of careful [patent] prosecution on patentees, or imposing the costs of foreclosed business activity on the public at large, this court believes the costs are properly imposed on the group best positioned to determine whether or not a particular invention warrants investment at a higher level, that is, the patentees.”
Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1425-26 (Fed. Cir. 1997).
“These are ordinary, simple English words whose meaning is clear and unquestionable. . . . The dough is to be heated to the specified temperature. . . . Thus, in accord with our settled practice we construe the claim as written, not as the patentees wish they had written it. As written, the claim unambiguously requires that the dough be heated to a temperature range of 400°F to 850°F.”
Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1373-74 (Fed. Cir. 2004).
“If [the patentee], who was responsible for drafting and prosecuting the patent, intended something different, it could have prevented this result through clearer drafting. . . . It would not be appropriate for us now to interpret the claim differently just to cure a drafting error made by [the patentee]. That would unduly interfere with the function of claims in putting competitors on notice of the scope of the claimed invention.”
Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948, 951 (Fed. Cir. 1993).
“At best, the patent and the prosecution history show that the inventors or their representatives who drafted the claims and prosecuted the patent left considerable confusion in the record about whether the claimed invention uses heading or bearing. However, it is not the province of the courts to salvage poorly – or incorrectly—drafted patent claims.
Fair notice to the public, and to competitors, of what is claimed depends on our holding patentees to what they claim, not to what they might have claimed. It is the responsibility of those who seek the benefits of the patent system to draft claims that are clear and understandable. When courts fail to enforce that responsibility in a meaningful way they inevitably contribute an additional element of indeterminacy to the system. Sometimes being kind to a party results in being unkind to the larger interests of society.”
Honeywell International, Inc. v. Universal Avionics Systems Corp., 493 F.3d 1358, 1368 (Fed. Cir. 2007)(Plager, J., dissenting).
“This court acknowledges that the standard requiring control or direction for a finding of joint infringement may in some circumstances allow parties to enter into arms-length agreements to avoid infringement. Nonetheless, this concern does not outweigh concerns over expanding the rules governing direct infringement. . . . The concerns over a party avoiding infringement by arms-length cooperation can usually be offset by proper claim drafting. A patentee can usually structure a claim to capture infringement by a single party . . . . In this case, for example, BMC could have drafted its claims to focus on one entity. The steps of the claim might have featured references to a single party’s supplying or receiving each element of the claimed process. However, BMC chose instead to have four different parties perform different acts within one claim. . . . Nonetheless, this court will not unilaterally restructure the claim or the standards for joint infringement to remedy these ill-conceived claims.”
BMC Resources, Inc. v. Paymentech, L.P., 498 F. 3d 1373 (Fed. Cir. 2007).
“We take the characterization ‘functional,’ as used by the Patent Office and argued by the parties, to indicate nothing more than the fact that an attempt is being made to define something (in this case, a composition) by what it does rather than by what it is (as evidenced by specific structure or material, for example). In our view, there is nothing intrinsically wrong with the use of such a technique in drafting claims.”
In re Swinehart, 439 F.2d 210, 212 (C.C.P.A. 1971).
“A purely subjective construction of ‘aesthetically pleasing’ would not notify the public of the patentee’s right to exclude since the meaning of the claim language would depend on the unpredictable vagaries of any one person’s opinion of the aesthetics of the interface screens. While beauty is in the eye of the beholder, a claim term, to be definite, requires an objective anchor.”
Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342 (Fed. Cir. 2005).
Most recently in Haemonetics Corp. v. Baxter Healthcare Corp., 2009-1557 (Fed. Cir. June 2, 2010), the Federal Circuit provided another quote:
“An ‘error’ may have occurred in drafting claim 16, as Haemonetics’s counsel indicated during the district court’s claim construction hearing, J.A. 923, but it is what the patentee claimed and what the public is entitled to rely on.”
Haemonetics Corp. v. Baxter Healthcare Corp., 2009-1557 (Fed. Cir. June 2, 2010)
June 2nd, 2010
Judge Lourie almost always adds some comic relief to the oral arguments at the Federal Circuit. He certainly didn’t miss this opportunity: [Listen].
Means plus function hybrid claim?
June 1st, 2010One of the issues percolating at the Federal Circuit is to what extent a hybrid claim, i.e., a claim that includes claim elements for more than one class of patentable subject matter in 35 U.S.C. § 101, satisfies the definiteness requirement of 35 U.S.C. §112. Judge Clevenger recently wrote in his dissent in Vizio, Inc. v. ITC, 2009-1386 (Fed. Cir. May 26, 2010):
The majority is incorrect that the phrase “for identifying” imposes an additional requirement that an allegedly infringing DTV actually use the channel map for identifying. Imposing a method limitation on an apparatus claim is improper. See Microprocessor Enhancement Corp. v. Tex. Instruments Inc., 520 F.3d 1367, 1374 (Fed. Cir. 2008) (“A single patent may include claims directed to one or more of the classes of patentable subject matter, but no single claim may cover more than one subject matter class.”). This is so because it would be “unclear whether infringement [] occurs when one creates a system that allows the user to practice the claimed method step, or whether infringement occurs when the user actually practices the method step.” Id. at 1374-75 (quoting IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005)). Here, the majority’s additional use limitation unnecessarily creates doubt about the timing of infringement and the definiteness of claim 1 when no such quandary exists in the plain language of the claim. Claim 1 does not require use of the channel map to occur; instead only a means for forming the channel map is required.
The claim Judge Clevenger is concerned about reads:
1. Apparatus for decoding a datastream of MPEG compatible packetized program information containing program map information to provide decoded program data, comprising:
means for identifying channel map information conveyed within said packetized program information; and
means for assembling said identified in-formation to form a channel map for identifying said individual packetized datastreams constituting said program,
wherein
said channel map information replicates information conveyed in said MPEG compatible program map information and said replicated information associates a broadcast channel with packet identifiers used to identify individual packetized datastreams that constitute a program transmitted on said broadcast channel.
I think Judge Clevenger has a logical point with respect to his analysis of hybrid claims that have method and apparatus aspects. What about the claim in Diamond v. Chakrabarty, though? In that case, the Supreme Court approved of Chakrabarty’s micro-organism claim as satisfying section 101. Indeed, the Court seemed to suggest that Chakrabarty’s claim satisfied two of the four classes of subject matter under section 101:
Judged in this light, respondent’s micro-organism plainly qualifies as patentable subject matter. His claim is not to a hitherto unknown natural phenomenon, but to a nonnaturally occurring manufacture or composition of matter — a product of human ingenuity “having a distinctive name, character [and] use.” Hartranft v. Wiegmann, 121 U. S. 609, 121 U. S. 615 (1887).
Diamond v. Chakrabarty, 447 U.S. 303, 310-11 (1980).
Judge Rader on Judicial Confirmation Hearings
May 26th, 2010With the nominations of Judge Kathleen O’Malley and Edward DuMont to the Federal Circuit as well as Solicitor General Elena Kagan to the United States Supreme Court, I thought that this C-Span video from way back in 1994 of Judge Randall Rader discussing confirmation hearings before the Senate Judiciary Committee might be of interest:
Riding Circuit
May 25th, 2010Chief Judge Michel reported in his State of the Court address on May 20, 2010 that the Federal Circuit will be sitting in Atlanta, Georgia this November. The Federal Circuit usually makes at least one visit outside of D.C. each year. If you are curious when the last time was that the Federal Circuit sat in your city, you can view the list here: [Link].
Court of Errors
May 25th, 2010I thought this was a humorous comment by Judge Plager during the oral argument of Orion IP, LLC v. Hyundai Motor America, 2009-1130 (Fed. Cir. May 17, 2010), : “We’re a court of errors. We don’t make ’em –we correct ’em.” [Listen].
Does Wall Street Follow Oral Arguments?
May 23rd, 2010
Tivo 5-Year Stock Price
I’ve been curious whether there is any indication that institutional investors follow the oral arguments of patent cases at the Federal Circuit. The litigation between Tivo and Echostar finally presented an opportunity to explore this further.
As you can see from the chart above and the following court events in the Tivo/Echostar litigation, the price of Tivo’s stock has reacted quite significantly to the Tivo/Echostar litigation:
A: August 17, 2006, Judge Folsom issues an injunction against Echostar.
B: October 4, 2007, the Federal Circuit hears oral argument in the appeal of the injunction.
C: January 31, 2008, the Federal Circuit reverses-in-part (hardware infringement) and affirms-in-part (software infringement, damages, injunction) Judge Folsom’s decision.
D: June 2, 2009, Judge Folsom issues a contempt ruling in regard to Echostar’s design around design.
E: November 2, 2009, the Federal Circuit hears oral argument in the appeal of the contempt ruling.
F: March 4, 2010, a three member panel affirms the contempt ruling.
G: May 14, 2010, the Federal Circuit grants en banc review of contempt ruling.
A better graphic would show that Tivo’s stock price reacted significantly following events A, C, D, F, and G. It did not appear to react significantly in response to the oral arguments. Obviously, this offers just a couple of data points; but, it may indicate that institutional investors are not taking full advantage of their opportunities to evaluate patent litigation.
Regardless of the outcome of the Tivo/Echostar litigation, Tivo’s stock performance is a strong reminder that some investors value the power of patents.
(For the record, none of the above should be considered investment advice.)
In re Zurko re-emphasized
May 20th, 2010With the CAFC’s decision in Perfect Web Technologies, Inc. v. InfoUSA, Inc., 2009-1105 (Fed. Cir. Dec. 2, 2009), it struck me that the court was easing away from its precedent in In re Zurko, 258 F.3d1379 (Fed. Cir. 2001) that required some factual underpinning for an assertion of “common sense.” Indeed, in the oral argument of Perfect Web, the panel (Judges Linn, Dyk, and Prost) seemed curious about the applicability of In re Zurko in light of the Supreme Court’s KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007) decision: [Listen].
Yesterday, a panel of the court in In re Ravi Vaidyanathan, 2009-1404 (Fed. Cir. 2010) re-emphasized the principles of In re Zurko. Judge Newman writing for herself and Chief Judge Michel wrote:
We agree with the Solicitor that an explicit statement of the level of ordinary skill is not always necessary in evaluating the obviousness of a new technologic advance. But whether or not stated explicitly, the perspective of a person of ordinary skill must frame the obviousness inquiry, and assertions of what such a person of ordinary skill would have found to be obvious require sufficient explanation to permit meaningful appellate review. In this case, not only the Board but also the examiner announced their conclusions of obviousness without providing any evidentiary support or reasoning for why a person of ordinary skill in the field of the invention would have deemed it obvious to select and combine various steps from different references, in the manner of the applicant. This court explained in In re Zurko, 258 F.3d 1379 (Fed. Cir. 2001), that the entry of the PTO into the deferential review of the Administrative Procedure Act requires the agency to provide support for its findings:
With respect to core factual findings in a determination of patentability, . . . the Board cannot simply reach conclusions based on its own understanding or experience—or on its assessment of what would be basic knowledge or common sense. Rather, the Board must point to some concrete evidence in the record in support of these findings. To hold otherwise would render the process of appellate review for substantial evidence on the record a meaningless exercise.
Id. at 1386.
The PTO Solicitor argues that the Court in KSR held that a combination of elements from different prior art references is likely to be unpatentable if it would involve nothing more than “the predictable use of prior art elements according to their established functions,” KSR, 550 U.S. at 417, and that the Board applied this reasoning to the combination of Biggers and Johnson. KSR also clarified that recourse to “common sense,” viewed through the perspective of a person of ordinary skill, is not barred in the obviousness inquiry. As the applicant states, while KSR relaxed some of the formalism of earlier decisions requiring a “teaching, suggestion, or motivation” to combine prior art references, it did not remove the need to anchor the analysis in explanation of how a person of ordinary skill would select and apply the teachings of the references. See, e.g., id. at 417 (“If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”).
The applicant complains that the Board simply reasoned from the hindsight knowledge of his successful invention; he stresses that, unlike the facts in KSR, the various steps that he combined were not known to be combinable, and the result of increased precision in missile guidance to the target was not previously known or predictable.
Obviousness is determined as a matter of foresight, not hindsight. See id. at 421 (citing Graham, 383 U.S. at 36). KSR did not free the PTO’s examination process from explaining its reasoning. In making an obviousness rejection, the examiner should not rely on conclusory statements that a particular feature of the invention would have been obvious or was well known. Instead, the examiner should elaborate, discussing the evidence or reasoning that leads the examiner to such a conclusion. Generally, the examiner cites prior art references to demonstrate the state of knowledge. See 37 C.F.R. §1.104(c)(2) (“In rejecting claims for want of novelty or obviousness, the examiner must cite the best references at his or her command.”); Manual of Patent Examining Procedure (MPEP) §706.02 (8th ed., rev. July 2008) (“Prior art rejections should ordinarily be confined strictly to the best available art. [citing exceptions] Such rejec-tions should be backed up by the best other art rejections available.”). If it is not possible for the examiner to provide this type of information, the examiner might choose instead to provide an affidavit detailing the examiner’s own personal knowledge (as a person approximating one of ordinary skill in the art) of the technology in question. See 37 C.F.R. §1.104(d)(2) (“When a rejection in an application is based on facts within the personal knowledge of an employee of the Office, the data shall be as specific as possible, and the reference must be supported, when called for by the applicant, by the affidavit of such employee, and such affidavit shall be subject to contradiction or explanation by the affidavits of the applicant and other persons.”). Where, as here, prior art references are cited to support an obviousness rejection, the references themselves need not in every case provide a “specific hint or suggestion” of the alteration needed to arrive at the claimed invention; the examiner’s analysis “may include recourse to logic, judgment, and common sense available to a person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Perfect Web Techs. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). In these cases the examiner should at least explain the logic or common sense that leads the examiner to believe the claim would have been obvious. Anything less than this results in a record that is insulated from meaningful appellate review. Zurko, 258 F.3d at 1386. If the examiner is able to render a claim obvious simply by saying it is so, neither the Board nor this court is capable of reviewing that determination. See KSR, 550 U.S. at 418, citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”).
It is interesting to note that Judge Dyk, who seemed somewhat concerned about the viability of In re Zurko after KSR during the oral argument of Perfect Web, merely concurred in the judgment of the panel in In re Vaidyanathan rather than joining in the opinion. I wonder if that signals that there is more to come in regard to the viability of In re Zurko.
My two cents: In re Zurko is the public’s best defense against the arbitrary use of a “common sense” analysis under KSR.
You can read the court’s decision in In re Vaidyanathan here: [Read].
You can read the court’s decision in Perfect Web Technologies, Inc. v. InfoUSA, Inc. here: [Read].
You can read the court’s decision in In re Zurko here: [Read].
The First Patent Related to Software
May 19th, 2010I’ve been reading the new book “Patent Law for Computer Scientists: Steps to Protect Computer Implemented Inventions” (Springer publishing 2010) which was written by European Patent Examiners Daniel Closa, Alex Gardiner, Falk Giemsa, and Jörg Machek. One of the interesting observations that they make in the book is that the first patent ever granted that related to software is GB1039141 granted in 1966 and titled “A Computer Arranged for the Automatic Solution of Linear Programming Problems.” The assignee — British Petroleum Company.