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Wireless Agents LLC v. Sony Ericsson Mobile Communications AB was decided in a non-precedential opinion back in 2006.  Despite the date and non-precedential effect, I find it to be a very interesting opinion and oral argument.  From a patent drafting perspective, it touches on a whole host of different issues: (1) narrow summary; (2) “present invention” language; (3) criticizing the prior art in the specification; (4) boilerplate; (5) non-essential claim language; (6) plain meaning of claim terms; (7) clear disavowal;  and more.

The case concerned an appeal of a district court’s refusal to grant a preliminary injunction.  The claim language at issue was the term “alphanumeric keyboard.”  The Federal Circuit determined that the term “alphanumeric keyboard” did not include a twelve key keypad that allowed keying of all the letters of the alphabet and the numbers 0-9. 

The claim at issue read as follows: 

A hand-held, electronic computing device having a physical configuration comprising:

a body portion;

a display portion pivotally coupled to the body portion;

a constantly visible display carried by the display portion;

an alphanumeric keyboard carried by the body portion;

wherein the alphanumeric keyboard is at least partially concealed by the display portion when not in use; and

wherein the display portion pivots relative to the body portion in a plane that is generally parallel with the alphanumeric keyboard.

 
Perhaps the strongest factor in favor of limiting the meaning of “alphanumeric keyboard” was the number of times that the inventor criticized or distinguished keypads in the prior art. The panel seemed to focus on this during oral argument — note also Judge Rader’s stress on the phrase the “present invention” during questioning: [Listen], [Listen], and [Listen].

Interestingly, the attorney for the patent owner argued that the “alphanumeric keyboard” language wasn’t related to the object of the invention: [Listen].

For those who remember the Federal Circuit’s odd claim construction decision in E-Pass v. 3COM, it was interesting to hear Judge Rader’s comments about that case and his dismissal of it as a pre-Phillips dictionary case:  [Listen].

You can read the court’s opinion in Wireless Agents [Here].

I posted a few weeks ago about the case In re Skvorecz in which there was a discussion about the meaning of “each” when used to refer back to a plurality of items.  [LINK]  I stumbled across an oral argument from 2006 where the panel again was trying to understand what “each” meant in this context.

The claim at issue read: 

The relevant language was “a plurality of separate patient treatment stations each having a patient support for orienting a patient in a fixed position” and “a gantry at each treatment station.”

The defendant’s attorney argued that “each” meant “every.”   Judge Linn questioned whether, in a situation where there were three patient treatment stations, “a gantry at each treatment station” could mean that only two of the treatment stations need have a gantry while the third need not necessarily have a gantry.   Judge Bryson also suggested that perhaps there was some ambiguity as to the meaning of “each.”

Here is what defendant’s counsel argued: [Listen]

Here is what plaintiff’s counsel argued: [Listen]

Ultimately, the court did not address the meaning of “each” in its opinion since the patent was found invalid.  But, if one has to argue about the meaning of “each” for six minutes of an oral argument, I would question whether “each” indeed has a common and ordinary meaning.

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

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

Here’s an opportunity for you to be the judge.  Microsoft has appealed the permanent injunction imposed by Judge Davis of the Eastern District of Texas in i4i v. Microsoft.  Importantly, the permanent injunction would apply to any continuing infringement of US patent 5,787,449 by Microsoft’s Word product.  Judge Davis also approved $240 million in damages to i4i for infringement by Microsoft.   The Federal Circuit has issued a temporary stay of the permanent injunction pending a decision on the appeal. 

The oral argument at the Federal Circuit before Judges Schall, Prost, and Moore was conducted on September 23, 2009.  The court has not yet issued a decision.  Hence, you can decide how you would resolve this appeal.

You can listen to the oral argument below.  The oral argument was over an hour; so, I’ve divided it into three segments (1) Microsoft’s argument; (2) i4i’s argument; and (3) Microsoft’s rebuttal argument.

Microsoft’s argument: [Listen]

i4i’s argument: [Listen]

Microsoft’s rebuttal argument: [Listen]

Supporting documents including briefs and a link to the patent can be found at [Link].

In Kara Technology, Inc. v. Stamps.com, the panel reviewing the district court judgment was faced with reviewing a district court judge’s claim construction.  During the district court’s claim construction hearing, evidence from dueling expert witnesses was offered.  Judge Moore noted that the outcome of the review of the district court’s claim construction might differ depending on whether the panel reviewed the claim construction (1) de novo or (2) with deference to the district court judge’s evaluation of the expert evidence.  Judge Moore inquired of counsel for the defendant-appellee whether the court should revisit its en banc decision in Cybor v. FAS Technologies, Inc.    [Listen]  In Cybor, the Federal Circuit held that the court reviewed claim construction de novo including underlying issues of fact.

You may recall Judge Mayer’s dissent in the Phillips v. AWH Corp. case in which he commented:

Until the court is willing to reconsider its holdings in Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed.Cir.1995) (en banc), aff’d on other grounds, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996), and Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed.Cir.1998) (en banc), that claim construction is a pure question of law subject to de novo review in this court, any attempt to refine the process is futile. Nearly a decade of confusion has resulted from the fiction that claim construction is a matter of law, when it is obvious that it depends on underlying factual determinations which, like all factual questions if disputed, are the province of the trial court, reviewable on appeal for clear error. To pretend otherwise inspires cynicism. Therefore, and because I am convinced that shuffling our current precedent merely continues a charade, I dissent from the en banc order.

On another note, it was interesting to note that Judge Moore and her clerks apparently can communicate with one another electronically during oral arguments.  [Listen]

You can listen to the entire oral argument [Here].

You can read the panel’s opinion in Kara Technology, Inc. v. Stamps.com [Here].

You can read the en banc opinion in Cybor [Here].

Edwards Life Sciences v. Cook, Inc. concerns intraluminal grafts for use in treating aneurisms without open surgery.  This case is instructive for patent attorneys on many levels.  For example, takeaway patent drafting lessons are:

1) Try to be clear when drafting an application that more than a single embodiment is being disclosed in the application;

2)  Avoid use of the phrase “the present invention” or “the invention” lest it be used against you;

3) Be aware that distinguishing prior art in the specification can be used against you;

4) Be aware that use of the abbreviation “i.e.” has the effect of defining a term rather than serving as an example.  (An example would instead be indicated by “e.g.”)

These are not new lessons; but, when they occur in the same case, they can be highly instructive.

Two issues from some of my earlier posts came up again in this oral argument.  The first was Judge Rader inquiring of counsel as to how the invention was an advancement over the prior art. [Listen]  He made the same inquiry in the oral argument of Lydall/Thermal Acoustical v. Federal Mogul Corp., as well.

The second issue was the focus by the judges on the language “present invention.”  The written opinions in “present invention” cases usually couple (1) the fact that a single embodiment was disclosed in the specification with (2) the applicant’s repeated use of the “present invention” language.  However, when one listens to the oral arguments for these cases, it is the repeated use of the “present invention” language in the specification that the judges emphasize in their questioning.  You can listen to Judge Lourie [Listen] and Judge Moore [Listen] addressing this issue with appellant’s counsel.

You can read the court’s opinion [Here].

You can listen to the entire oral argument [Here].

The general rule in patent cases before the Court of Appeals for the Federal Circuit is that no new arguments are to be presented that could have been presented at the district court. The court summarized its position on this issue last year in Golden Bridge Technology v. Nokia, where it stated:

“[I]t is the general rule . . . that a federal appellate court does not consider an issue not passed upon below.” Singleton v. Wulff, 428 U.S. 106, 120 (1976). Our precedent generally counsels against entertaining arguments not presented to the district court. Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1426 (Fed. Cir. 1997) (“In short, this court does not ‘review’ that which was not presented to the district court.”). While appellate courts are given the discretion to decide when to deviate from this general rule of waiver, see Singleton, 428 U.S. at 121, we have explained that “prudential considerations” articulated by the Supreme Court counsel against hearing new arguments for the first time on appeal absent limited circumstances, see Forshey v. Principi, 284 F.3d 1335, 1353-54 (Fed. Cir. 2002) (quoting Hormel v. Helvering, 312 U.S. 552, 556-57 (1941)).

In Forshey, this court articulated an exemplary set of limited circumstances in which hearing arguments for the first time on appeal is appropriate: (1) “[w]hen new legislation is passed while an appeal is pending, courts have an obligation to apply the new law if Congress intended retroactive application even though the issue was not decided or raised below,” 284 F.3d at 1355; (2) “when there is a change in the jurisprudence of the reviewing court or the Supreme Court after consideration of the case by the lower court,” id. at 1356; (3) “appellate courts may apply the correct law even if the parties did not argue it below and the court below did not decide it, but only if an issue is properly before the court,” id.; (4) “where a party appeared pro se before the lower court, a court of appeals may appropriately be less stringent in requiring that the issue have been raised explicitly below,” id. at 1357.

Therefore, the following exchange between counsel for the appellee and Chief Judge Michel at oral argument in Bowling v. Hasbro caught my ear. Essentially, counsel for appellee noted that the appellant was asserting a new claim construction on appeal that could have been presented below. Chief Judge Michel appeared more open to the court entertaining such a new argument than the above quote from Golden Bridge might suggest. [Listen]

You can listen to the entire oral argument  [Here].

Lydall/Thermal Acoustical v. Federal Mogul Corp. is yet another case in the relatively recent line of “present invention” cases.  The Federal Circuit determined that the patentee had merely described a single embodiment of the invention in the specification and relied upon the patentee’s repeated use of the phrase “the present invention” to limit the scope of the claims at issue.  The court wrote:

We agree with Federal-Mogul that the specification of the ’260 patent discloses a single embodiment of the invention, viz., an insulating shield that includes a fibrous batt consisting of an insulating layer sandwiched between two binding layers that is, as discussed infra, needled on two sides. Although Lydall is correct in saying that the claim language “fibrous batt of fibers” does not, in isolation, suggest a layered batt, Lydall’s arguments completely ignore the consistent use of the term “batt” in the specification. It is fundamental that we give due weight to the specification when construing this claim term. Phillips, 415 F.3d at 1315.

We have stated that “when the preferred embodiment is described in the specification as the invention itself, the claims are not necessarily entitled to a scope broader than that embodiment.” Chimie v. PPG Indus., 402 F.3d 1371, 1379 (Fed. Cir. 2005); see Honeywell, 452 F.3d at 1318 (construing claim term to include fuel filter because “[o]n at least four occasions, the written description refers to the fuel filter as ‘this invention’ or ‘the present invention’”); SciMed, 242 F.3d at 1343 (construing term to include feature characterized as “the present invention”). In other words, when a patentee consistently describes one embodiment as “the present invention,” “[t]he public is entitled to take the patentee at his word.” Honeywell, 452 F.3d at 1318; see also SciMed, 242 F.3d at 1341 (“Where the specification makes clear that the invention does not include a particular feature, that feature is deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification, might be considered broad enough to encompass the feature in question.”). Such is the case here. The specification identifies a three-layered batt as “the present invention.” ’260 patent col.6 ll.50. In addition, the specification repeatedly describes the batt as having an insulating layer disposed between two binding layers. See id. col.6 ll.53–55, col.9 ll.21–25, col.13 ll.19–23. Lydall’s consistent description of “the present invention” as including a three-layered batt makes clear that the claimed “fibrous batt of fibers” must have three layers, an insulating layer sandwiched between two binding layers. The fact that the specification discloses that the insulating fibers may “at least in part” be made up of the same organic fibers as the binding layers does not dissuade us from our conclusion. It may be that the insulating layer and the binding layers are made from the same material, but the batt still has three layers. It is not, therefore, a single, homogenous layer. 

You can listen to Judge Rader inquiring about the “present invention” language [Here].   Attorneys in foreign countries should take note of this line of “present invention” cases.  Those attorneys practicing in the electrical arts in Japan, especially, would be well-advised to examine this issue before filing in the U.S.

The other issue that struck me as interesting in listening to the recording of this oral argument was Judge Rader’s inquiry about the advancement of the invention over the prior art. [Listen]   There is a tension when writing a patent application between (1) touting the benefits of an invention so that an examiner, jury, or judge will understand the value and utility of the patent, and (2) keeping the description sufficiently bland so as not to provide an adversary with any basis to limit the claims. See, e.g.,  Toro Co. v. Consolidated Industries, 199 F.3d 1295 (Fed. Cir. 1999); Inpro II Licensing, S.A.R.L. v. T-Mobile USA, Inc., 450 F.3d 1350 (Fed. Cir. 2006); and Vehicular Technologies Corp. v. Titan Wheel International, Inc., 212 F.3d 1377 (Fed. Cir. 2000).  This oral argument illustrates that judges do care about the utility of an invention; but, it also illustrates that one can introduce that utility at oral argument.

You can read the court’s opinion [Here].

You can listen to the entire oral argument [Here].