Oral Argument Summaries - April 2009

This post contains oral argument summaries from the Federal Circuit's April 2009 sitting.  I listen to the arguments on planes or in my car, and I do not write the summaries until later, so please use these summaries only for issue spotting, and check the actual MP3's if you want complete accuracy.

2008-1588  DCT  GLOBAL PATENT v PANTHERS BRHC (Lourie Gajarsa Prost) 03-30-09
This is a split infringement case ala BMC v Paymentech and Muniauction.  The patent relates to software used by hotels and resorts, and seems to involve activity at the client and the server.  Interestingly, the case appears to have been dismissed under Rule 12 rather than on summary judgment.  The patentee argues that because the server downloads software to the client when it is accessed, the server exerts the necessary control under the case law.  The appellee argues that the user of the client exercises free will and is not controlled by the hotel or its web site.  This case suffered a Rule 36 summary affirmance.

2008-1289  DCT  CRATER CORP v LUCENT TECHNOLOGIES  (Michel Schall Linn) 03-30-09
 Crater contracted to provide to Lucent technologies undersea cable couplers for a confidential government project, and Lucent agreed not to “sell” any couplers using the technology.  It seems that Lucent only developed prototypes, but very little is known because of the government’s assertion of the state secrets doctrine.  One Lucent witness testified that couplers were sold.  However, the district court ruled that the witness’ testimony was not so clear and that summary judgment of no breach could be granted.  This case suffered a Rule 36 summary affirmance.

2008-1590  DCT  BLACK v CE SOIR LINGERIE  (Michel Schall Linn) 03-30-09
This is an obviousness case in which the district court apparently granted SJ of obviousness.  The patent relates to a bra having a breast covering device that is large – the patentee emphasizes that it would have been unexpected to achieve a concealing function by making something larger.  But the panel indicates that might not be true where the larger size permits the device to have a more gradual taper.  The patentee also accuses the district court of failing to consider all the features in the prior art and of failing to find nexus for commercial success.  This case suffered a Rule 36 summary affirmance.

2009-1001  DCT  GEMTRON v SAINT-GOBAIN  (Michel Schall Linn) 03-30-09
 This is an interesting infringement case.  The patent calls for a flexible extension on a structure for holding a shelf in a refrigerator.  The accused structure is apparently only flexible when it is heated to 150 degrees during manufacture in Mexico.  The defendant-appellant argues that the patentee admitted that the claim is not in product-by-process format so there can be no infringement in he U.S.

2008-1600  DCT  ORTHO-MCNEIL PHARMA v MYLAN LABS  (Mayer Dyk Moore) 03-30-09
This is a costs appeal over $1,000,000 in translation costs.  The appellant says the translations were not “necessary,” that the costs depended on estimates and that the costs should have been reduced because the translations were shared with another litigation.  The panel emphasizes that it is limited to an “abuse of discretion” review.

2008-1368  DCT  BLACKBOARD v DESIRE2LEARN  (Bryson Moore Cudahy) 03-31-09
This software case appears to have three issues.  First, a claim construction issue – i.e. the defendant/appellant was found to infringe and now argues that the district court’s construction of “user” was so broad that it allowed the inventor and the patentee’s experts to testify in a manner inconsistent with the patent.  The claim construction leads to a requirement that the patented system have a single login.  Second, there is an infringement issue by which the defendant/appellant asserts that the evidence shows that its software was installed from Canada.  The patentee/appellee says that testimony by the defendant’s employee could be interpreted as indicating that the installation occurred from the U.S.  Third, the patentee apparently lost on a 112/6 issue (I assume the claim was found invalid for lack of corresponding structure) and argues that the district court erred in identifying the function and in identifying the structure.

2008-1548  DCT  BLACKBOARD v DESIRE2LEARN  (Bryson Moore Cudahy) 03-31-09 (2 of 5 stars)
This is a “costs” appeal in which the first question is whether discovery costs in the form of producing production documents as TIFFs is recoverable under 28 USC 1920.  Apparently, few or no appellate courts have addressed the issue of electronic production, but all district courts have awarded costs if they would have awarded costs for paper production.  There is also a battle over $1800 in OCR costs.  A more interesting discussion centered on 35 USC 288, which prevents a patentee from recovering costs if any of its asserted claims is invalidated (see 112/6 issue above).  Judge Moore expresses concern that the provision – at least as discussed in O’Reilly v. Morse with respect to a related earlier provision, makes no sense.  I am guessing that she will be writing something on this point.

2008-1408  PTO  IN RE BYERLY (Bryson Moore Cudahy) 03-31-09 (1 of 5 stars)
This is an inherency rejection of a Kimberly-Clark application for diaper material that has a particular “wicking index.”  I personally find this appeal fascinating for two reasons.  First it touches on issues reciting an invention using a measurement technique parameters or terminology that may not have been mentioned in prior art publications but may nonetheless have been present in the art.  That is a very tough issue – particularly when such a patent issues and you are stuck as the defendant.  (I’m not saying that’s what Byerly is trying to do here though.)  Second both attorneys Meredith Martin Addy from Brinks Hofer for Bylerly and Tom Stoll for the PTO) and one of the judges (Judge Moore) worked at the court when I worked there – and are all really good folks.  Either they are impressive I am getting old or both.  This case suffered a Rule 36 summary affirmance.

2008-1290  DCT  AIR TURBINE v ATLAS COPCO (Schall Plager Prost) 03-31-09 (1 of 5 stars)
This is a contract case in which the parties had an agreement that a prevailing party should receive “costs and legal expenses.”  The issue is whether “legal expenses” includes attorney fees – the district court held that agreements to award fees have to be very specific in Florida and that this contract failed.  The appellant/defendant asserts that fees are plainly a legal expense and that even if the provision is ambiguous, the parties both plainly included the provision to cover fees as evidenced by testimony from the plaintiff’s 30b6 witness and by the plaintiff’s seeking fees in its complaint.

2008-1482  DCT  PURECHOICE v HONEYWELL INTL (Mayer Gajarsa Linn) 03-31-09 (1 of 5 stars)
This is a claim construction appeal in which the court below appears to have found noninfringement.  The first term is “air quality,” and the patentee argues that the term should include temperature and humidity in addition to the presence of contaminants (the district court looked only to contaminants).  The issues seem pretty case-specific, though there is an issue of disavowal (during prosecution) in the argument.

2008-1434  DCT  EVERY PENNY v AMERICAN EXPRESS  (Michel Bryson Cudahy) 04-01-09 (1 of 5 stars)
2008-1438  DCT  EVERY PENNY v FIRST DATA (Michel Bryson Cudahy) 04-01-09
These are O2 Micro cases – i.e. the patentee/appellant argues that the district court erred by failing to construe certain claim terms but also seems to argue that the court over-construed certain other terms.  The patents relate to gift cards or paid-value cards similar to what you can get at Starbucks.  The particular claim construction issues seemed pretty case-specific.

2008-1421  PTO  IN RE TAN (Lourie Rader Dyk) 04-01-09 (1 of 5 stars)
The petitioner argues that the Board erred in construing “liquid crystal” and “comprising.”  The petitioner argues that the former cannot include mixtures (in part because “comprising” in this case is not fully open-ended) and the PTO answers that the claim is open-ended and the application does not preclude mixtures.  I was busy during the argument so I really did not catch much, and all the issues seemed very case-specific.  This case suffered a Rule 36 summary affirmance.

2008-1437  PTO  IN RE HICKMAN  (Mayer Plager Bryson) 04-02-09 (1 of 5 stars)
Hickman argues that the Board applied a “broadest possible interpretation,” rather than a “broadest reasonable interpretation” that looked to the specification and drawings.  The main issue relates to whether servers, to be “separate” from each other, have to be in different buildings.  There is also a procedural question of whether Hickman waived an argument objecting to the BPAI judges by first raising it in a docketing statement at the Federal Circuit, when he allegedly should have requested reconsideration.  The PTO says that it believes this is the last case to challenge a BPAI judge (see In re DBC).  This case suffered a Rule 36 summary affirmance.  This case highlights the problem of putting too much weight on adjectives and adverbs in claims, when more precise descriptive phrases should perhaps be used, especially when the adverb or adjective is the distinction over the prior art.

2008-1446  PTO  IN RE SIEMENS WATER TECH  (Bryson Clevenger Linn) 04-03-09 (1 of 5 stars)
This appeal is from an obviousness rejection of a modular system for removing contaminants from a gas stream in view of a unitary system for doing the same thing.  The applicant asserts that such a change may be obvious in the abstract but is not obvious here because modularity provides certain nonobvious advantages.

2008-1502  DCTCOREBRACE v STAR SEISMIC  (Lourie Friedman Prost ) 04-03-09 (2 of 5 stars)
This is a “make”/”have made” case in which the district court dismissed the case under Rule 12(b)(6) because the defendant had a license.  The appellant argues that “make” rights include “have made” rights EXCEPT where there is a reservation of rights, as there apparently was here (the reservation appears to generally reserve all “rights not expressly granted”).  So the question is whether the right to have made is inherently and expressly part of the right to make.  The relevant contract law is Utah law, though the state has no decision in this area.  This is another one of those areas in which I thought we would have had all the issues worked out by now (of course I thought the same about the Hatch-Waxman Act in 1998 – a bit like the PTO Director who thought everything had been invented 50 years ago).

2008-1546  PTO  IN RE MCNEIL-PPC (Michel Rader Dyk) 04-03-09
The main issue in this appeal is whether the appeal deadline runs from the date on the web page of the image file wrapper (IFW) or the date on the piece of paper in the IFW.  The PTO indicates that while the IFW is the official record of the prosecution, that does not mean that the date on the web page trumps the date on the electronic image of the paper page.  On the merits, the case relates to a tampon product with a core having a first density and ribs having a second density.