Oral arguments and the sister circuits

July 21st, 2009

Roughly half of the federal courts of appeal make their recordings of oral arguments available for download:

1st Circuit – Yes

2nd Circuit – No

3rd Circuit – Yes

4th Circuit – No

5th Circuit – Yes

6th Circuit – No

7th Circuit – Yes

8th Circuit – Yes

9th Circuit – Yes

10th Circuit – No

11th Circuit – No

D.C. Circuit – No (can listen real-time though)

Federal Circuit – Yes

As indicated above, the D.C. Circuit even allows for listening in real-time although it doesn’t  make the recordings available for download:[Link].

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Riding circuit

July 20th, 2009

The Houston Intellectual Property Law Association web site reports that the CAFC will be visiting Houston in November 2009 to hear oral arguments.  [Read]  The visit is slated for November 3rd and 4th along with a seminar on one of those days.  HIPLA is a very active bar association and a great model for bar associations in other cities.

The Federal Circuit has also been invited to sit at the University of Colorado this year.  However, there has not yet been any indication as to whether that invitation has been accepted.

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Judge Rader gets a pay raise

July 19th, 2009

There was a light-hearted moment at the oral argument of Abbott Labs  v. Sandoz when counsel for Sandoz thanked the court with a slight mis-step causing Judge Rader to conclude he had just been given a pay raise: [Listen]

This case was unusual in that after this oral argument the CAFC sua sponte undertook en banc review of product by process claims.  Yet, the CAFC did not conduct an en banc oral argument.  One would think that an issue important enough to cause the CAFC to undertake en banc review would similarly be important enough for en banc oral argument and an opportunity for amicus briefs.

The en banc opinion can be found here:  [Read]

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Oral Argument of the Month — April 2009

July 17th, 2009

Since everyone’s time is short I thought I would start posting an “oral argument of the month” that is worth the effort to listen to.  The oral argument of the month for cases decided in April 2009  is the In re Kubin case.  You can download the oral agrument or play it from here: [Listen]. 

The decision is available here: [Read].

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BPAI — Requesting Oral Argument

July 16th, 2009

The number of appeals being filed at the BPAI level has increased significantly in recent years.  In 2005, roughly 3000 appeals were filed.  In 2008, that number had doubled to roughly 6000.  See http://www.patentlyo.com/patent/2009/01/bpai-appeal-sta.html.  Moreover, the rate of reversal has apparently dropped from a 40% reversal rate in 2005 to a 20% reversal rate in 2009.  Again, see http://www.patentlyo.com/patent/2009/01/bpai-appeal-sta.html.  Obviously, one can expect that a greater number of appeals from the BPAI will now be making their way to the CAFC.

One important practice tip that might be of interest to some readers is that requesting oral argument at the board level can provide a possible procedural advantage.  Former Administrative Patent Judge William F. Smith of Woodcock Washburn in Atlanta has noted in some AIPLA presentations that the merits panel of a case being orally argued will generally convene a pre-hearing conference where all Board members on the merits panel will meet to review the issues to be argued.  In contrast, a case presented solely on the briefs  is in most cases initially considered by one member of the merits panel and then conferenced with a second member of the merits panel.  If the first two members agree on the disposition of all the issues in the appeal, the draft opinion is drafted reflecting the conference decision.  Thus, the third member of the merits panel will see the decision for the first time when it is circulating and already has two signatures.  Therefore, it behooves an appellant to request oral argument because the appeal initially receives the consideration and insight of all three ALJ’s about the merits of the case rather than just two.

It has been reported in recent months that the Board is now requiring ALJ’s to provide a justification as to why they need to write a dissenting opinion before receiving credit for it.  See http://www.patentlyo.com/patent/2009/05/bpai-shuts-down-dissent-in-favor-of-efficiency.html  Thus, there is now even less incentive for an ALJ to draft a dissenting opinion that might be enlightening when the case is appealed to the Federal Circuit.

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Present Invention

July 13th, 2009

The case of Netcraft Corporation v. Ebay, Inc.  from December of 2008 is instructive to patent prosecutors who still use the term “present invention” in their patent drafting practice.  The defendant-appellees relied heavily on an argument that the claims of the patent at issue should be limited because of applicant’s use of the phrase “present invention.”  The plaintiff-appellant on the other hand argued that there was no general rule that use of the phrase “present invention” in the specification automatically limits the claims.

The defendant-appellee’s argument can be heard here: [Listen]

The plaintiff-appellant’s argument can be heard here  [Listen] and here [Listen].

The entire oral argument can be heard here: [Listen].

And, the Federal Circuit’s opinion can be found here: [ http://www.cafc.uscourts.gov/opinions/08-1263.pdf ] .

At the end of the day, the Federal Circuit did rely heavily on applicant’s use of present invention.  It stated:

Netcraft argues that there is no “general rule that any use of ‘the present invention’ in the specification automatically limits the claims, as Defendants seem to believe.” Appellant’s Reply Br. 22; see also id. at 19 (“Defendants contend that the case law supports the draconian result that any use of the phrase ‘present invention’ limits the claims to the embodiment described.”). We agree with Netcraft that use of the phrase “the present invention” does not “automatically” limit the meaning of claim terms in all circumstances, and that such language must be read in the context of the entire specification and prosecution history. See Rambus Inc. v. Infineon Techs. AG, 318 F.3d 1081, 1094 (Fed. Cir. 2003). For the reasons below, however, we agree with the district court that the common specification’s repeated use of the phrase “the present invention” describes the invention as a whole, see Claim Construction Order at *6, and, as will be discussed further below, that the prosecution history does not warrant a contrary result.

This oral argument might also be of interest to those familiar with the name Morgan Chu.  Mr. Chu has received accolades in years past as one of the top patent litigators in the country.  He argued for the defendant-appellee in this case.

Posted in Claim construction, Oral Advocates | Comments Closed

“Deep in the heart of [EAST] Texas . . .”

July 12th, 2009

The In re Volkswagen case is an important case recently decided en banc by the United States Court of Appeals for the Fifth Circuit.  Essentially, this case gives some guidance to the federal judges in the Eastern District of Texas (as well as the other districts of the Fifth Circuit) as to when it is proper to transfer a case to another district court.   The case concerned a lawsuit that was initially before Judge Ward of the Eastern District of Texas.  Judge Ward is well-known among patent litigators as one of the judges in the Eastern District of Texas who enjoys hearing patent cases.    He is also one of the reasons that the Eastern District of Texas has seen so many patent cases filed there in recent years.  And, he recently sat by designation at the United States Court of Appeals for the Federal Circuit. 

During oral argument, the Chief Judge of the Fifth Circuit did comment about Judge Ward’s consistency in assessing the impact of travel time to the “deep heart of East Texas.” [Listen]

The full oral argument can be heard here: [Listen]  One interesting thing to take note of  when listening to this oral argument at the Fifth Circuit is that counsel is entitled to reserve time to make uninterrupted remarks.  After that time period, the judges may ask their questions.  This custom does not appear to be followed by the Federal Circuit where judges can begin asking their questions right out of the gate.

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Against all odds . . . .

July 5th, 2009

Judges on the Court of Appeals for the Federal Circuit are obviously a talented group of individuals.  Recently, Judge Randall Rader had an opportunity to show off some of his linguistic skills in a trademark appeal concerning Russian-made Vodka.  Apparently, Judge Rader is not only fluent in Russian but also Finnish. Judge Rader noted that he spoke Russian early in the proceedings [Listen] and later closed the oral argument with these remarks in Russian[Listen].

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“Detailed Description of the Invention”…unusual?

July 2nd, 2009

The audio below is one of the more alarming statements that I have heard in listening to the various oral arguments from the Court of Appeals for the Federal Circuit.  It highlights the disconnect in some instances between the Federal Circuit and attorneys that draft and prosecute patent applications.  In Technology Properties Ltd. v. ARM Ltd., Judge Dyk asked appellant’s counsel about the heading “Detailed Description of the Invention” that appeared in the patent at issue.  Judge Dyk commented that this was an unusual heading and that most patents he had reviewed used “Detailed Description of the Preferred Embodiments.”  And, he implied that because language different from “Detailed Description of the Preferred Embodiments” was used in the patent at issue that the patent should be construed more narrowly [Listen].

Those comments should come as a surprise to any patent attorney who has spent any amount of time drafting patent applications and working with the Code of Federal Regulations or the Manual of Patent Examining Procedure.  The Code of Federal Regulations at 37 CFR 1.77(b)  recommends using the heading “Detailed Description of the Invention.”  Furthermore, MPEP sections 608.01(a) and 608.01(p) use the phrase as well.  In fact, MPEP section 608.01(p) is itself dedicated to the “Detailed Description of the Invention.”  Practitioners have indeed moved away from using the phrase “Detailed Description of the Invention” and often use just “Detailed Description”  — but it is disconcerting to hear this audio. 

The Federal Circuit in recent years has made a bigger deal out of phrases like “the present invention” and “the invention.”  One hopes that in doing so the judges are aware of what the PTO is recommending to patent practitioners and examiners via its regulations and the MPEP.

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Next time, wear a tie . . . .

June 30th, 2009

Readers may recall the incident last year in which a lawyer had a wardrobe malfunction and elected to forego the traditional tie when appearing before the Federal Circuit. 

See article here:   [Read]     

Listen to Judge Rader’s comment here: [Listen].

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Construing “Real-time”

June 30th, 2009

Inventors often emphasize that one of the distinguishing features of their invention is that it can operate in “real-time” versus the slower working of the prior art.  However, just what “real-time” entails can be quite difficult for a patent attorney to define and for the public to grasp from reading a patent’s claims, specification, and prosecution history.  In the oral argument for Netcurrents Information Services, Inc. v. Dow Jones and Co., the entire oral argument was spent trying to understand how “real-time” should be construed and whether the district court erred in its grant of summary judgment based on its construction of “real-time.”  Despite the lengthy oral argument, the Federal Circuit affirmed summary judgment in a non-precedential per curiam opinion under Federal Circuit Rule 36 (i.e., no explanation given for the affirmance). 

In addition to the fact that this oral argument highlights how difficult it can be to adequately define “real-time,” this case is also interesting in this interchange between one of the judges on the panel and counsel for the defendant/appellee where the judge recites a passage from the Summary of the patent and the attorney responds by citing a passage from the Abstract.  It should highlight to patent prosecutors the importance of those sections when drafting an application: [Listen].

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This is a brother-in-law case, your honor.

June 16th, 2009

Oral arguments at the Court of Appeals for the Federal Circuit not only may provide some insight into the viewpoints of the various judges; but, these arguments sometimes provide opportunities for humor, as this recent exchange in Crater Corp. v. Lucent Technologies demonstrated: [Listen]

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