Oral Argument Summaries - August 2008

This post contains oral argument summaries from the Federal Circuit's August 2008 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.

2007-1420  DCT  LEXION MEDICAL v NORTHGATE TECH (Michel Rader Schall) 08-04-08 (2 of 5 stars)

This is a post-trial claim construction appeal that involves procedural and substantive issues.  The main procedural issue was whether the trial court was required to construe certain disputed limitations.  The main substantive question is whether a claim reciting a predetermined temperature can cover a temperature range (beyond a range that includes mere measurement error).  A secondary question is whether a limitation requiring sensing a temperature in a certain area can be met by a system that indirectly determines the temperature by sensing a temperature at a different area and applying a simple adjustment.  The defendant is the appellant and is represented by Meredith Martin Addy from the Brinks Hofer firm (in front Judge Michel for whom she clerked).

2008-1157  DCT  DURATECH IND v BRIDGEVIEW MFG (Michel Rader Schall) 08-04-08 (3 of 5 stars)

This is a claim construction appeal for a patent on some sort of hay bale machine where the district court found that the term “manipulator” was wholly lacking in structure and the limitations was thus in “means plus function” form even though it did not use the word “means.”  The panel reversed nonprecedentially; this might have been a very big case if the panel had affirmed.

2007-1450  PTO  IN RE BASELL POLIOLEFINE(Newman Lourie Linn) 08-04-08 (1 of 5 stars)

This is an appeal from a double patenting rejection of claims for two-part polymer over a three-part polymer (or perhaps the other way around or perhaps I completely missed the substantive point).  The main point was whether the PTO could institute a reexam based on a double patenting rejection that had been made back in the days of In re Portola and In re Recreative Technologies (decisions holding that a “new” question of patentability for triggering a reexam could not be based on art that had previously been before the examiner) and before the legislation overruling those decisions had been passed.  A second procedural issue was whether the PTO needs to make explicit findings on each of the Graham factors (because it almost never does so).

2007-1539  DCT  PREDICATE LOGIC v DISTRIBUTIVE SOFT (Newman Lourie Linn) 08-04-08 (2 of 5 stars)

This is a claim construction appeal in which only the appellee attended the argument.  The issues generally relate to how certain open-ended language is to be interpreted so as to determine whether the claims were broadened and/or narrowed during reexamination.

2008-1170  DCT  EUCLID CHEMICAL v VECTOR CORROSION (Newman Lourie Linn) 08-04-08 (1 of 5 stars)

This is an ownership issue that revolves around the language of an ambiguous assignment.  The question is whether the assignment which focused on transfer of ownership in applications was effective to transfer ownership in a patent that had already issued.

2007-1544  DCT  INVISTA N AMER v RHODIA POLY (Newman Linn O'Grady) 08-05-08 (2 of 5 stars)

This is an arbitration case.  The broad issue is whether a Section 256 inventorship action can be pushed into arbitration at all.  The more specific issue is whether a subsidiary that did not sign the agreement that compels arbitration can compel arbitration when sued by the party that signed the agreement with the subsidiary’s parent (I think).  The facts appear to be that Invista and the parent entered into a confidentiality agreement and then the parent assigned rights to a patent to the subsidiary.  Invista claims that its people should be named on the patent and that the parent improperly gace confidential information to the subsidiary.

2008-1154  PTO  AYCOCK ENGINEERING v AIRFLITE (Newman Linn O'Grady) 08-05-08 (3 of 5 stars)
 

This is a TM opposition case that depends on the Board’s construction of Aycock’s services.  In particular the description of services covered providing arrangements for flights on air taxis and in the 30-ish years Aycock has used the mark it has only been in an attempt to sign up pilots t oprovide such services (but not in the Board’s view the actually provision of the services themselves).  As a result Aycock lost his needed priority.

2008-1173  DCT  DEPUY MITEK v ARTHREX (Newman Linn O'Grady) 08-05-08 (2 of 5 stars)

A jury found noninfringement for a braided suture having coated threads that allows the threads to slide past each other and thus makes the suture more flexible.  The patentee/appellant argues that all of the defendant’s noninfringement testimony was directed at the manner in which its overall product worked and not at how the particular claimed invention which is a sub-part of the product worked.  The appellee argues that the appellant is simply rearguing fact issues that the jury has decided.

2007-1545  DCT  QUALCOMM v BROADCOM (Mayer Lourie Prost) 08-05-08 (3 of 5 stars)

This is the appeal from the trial in which Qualcomm was sanctioned heavily for (allegedly?) falsely stating that it had no role in a standard-setting process when in fact its people had been at the meetings.  Because of the (alleged) withholding of evidence Broadcom did not really know that it had an equitable estoppels defense so it mainly pursued a waiver defense.  Broadcom asked for waiver as to companies practicing the standard and the district court gave waiver as to the entire world.  The main question on appeal is whether waiver can extend this far.  This is a good argument to review because of the contrast in approaches between appellant’s counsel and appellee’s counsel (Bill Lee).

2008-1148  PTO  IN RE LEE (Mayer Lourie Prost) 08-05-08 (1 of 5 stars)
 

Lee’s invention involves placing some epitope in a polio vaccine so as to create a treatmen for AIDS.  The application was filed pro se and was apparently 3 pages long so it is perhaps not surprising that the Board applied enablement and written description rejections.  The filing date is 1992 (the case has been to the Board 4 times I believe).  This case suffered a Rule 36 summary affirmance.

2008-1151  PTO  IN RE LUNDAHL (Rader Schall Illsto) 08-06-08 (1 of 5 stars)

This is an appeal from obviousness rejections for an invention relating to a window screen that attaches with Velcro between the sash and the opening/closing window frame.  The prior art appears to have used Velcro to attach a screen around an open car window and separately to have put a screen between the sash and the frame.  Lunndahl tries to rely on commercial success evidence but has some troubles proving a nexus.  This case suffered a Rule 36 summary affirmance.

2008-1014  DCT  ALLAN BLOCK v E DILLON (Michel Moore O'Grady) 08-06-08 (1 of 5 stars)

It appears that Allan sued Dillon and that they reached an agreement that would give ownership of all “improvements” by Dillon to Allan’s design would be owned by Dillon.  Allan later sued and the district court ordered Dillon to assign its patent to Allan.  Allan appeals the district court’s refusal to award attorney fees under the terms of the contract – relying on Minnesota contract case law.  There are also some issues regarding claim construction and whether the district court imported limitations into the claims.  Dillon argues that the district court interpreted “improvements” too broadly so as to situations where Dillon improved on something that was in the public domain even if the improvement itself was of a particular Allan block design.  Apparently the appellant raised numerous issues on appeal because Chief Judge Michel chided them for it at the beginning of the argument.  This case suffered a Rule 36 summary affirmance.

2008-1029  DCT  COHESIVE TECH v WATERS CORP (Mayer Linn Prost) 08-06-08 (1 of 5 stars)

The main question here seems to be whether and how a patent applicant can disclaim coverage that would otherwise plainly be covered by the claim.  The patentee appeals summary judgment of noninfringement for some claims and a refusal to find willful infringement for other claims.  The invention seems to relate to some sort of chemical column filled with particles and the question is the meaning of the term “about” in the claims.  The discussion is whether the patentee disclaimed particle sizes outside the exact sizes in the claimed range.  There is also some discussion about whether the district court understood the difference between compression of the particles and collapsing of the particles.  The appellee’s attorney does a pretty good job.

2008-1053  DCT  BAYCHAR v BURTON CORP (Mayer Linn Illston) 08-07-08 (1 of 5 stars)

The appellant tried to fight off a summary judgment motion by establishing an earlier date of invention using a conclusory declaration from the inventor that lacked corroboration.  It seems that the appellant admits it had nothing more than a declaration of the inventor and no corroboration.  There is also some discussion regarding whether the applied prior art showed all the limitations in any event.  The patents relate to breathable shoe components.  This case suffered a Rule 36 summary affirmance.

2008-1133  DCT MERCK v APOTEX (Mayer Linn Illston) 08-07-08 (3 of 5 stars)

I love the million ways that generics and brandeds find to create new fact patterns.  Here it looks like Merck disclaimed its patent but that HatchWaxman still prevents Apotex from marketing right now.  The parties discuss the similarities and differences with cases such as Caracao (which involved a SuperSack-style covenant not to sue).  Apotex wants a “trigger of the ‘failure to market’ forfeiture provision.”  The question on appeal is whether Apotex can maintain a DJ claim in these circumstances.  There is a fair amount of discussion regarding whether one of the parties is getting an unfair advantage here.  The appellee asserts that the disclaimed patent does not exist any more so that there can be no jurisdiction and also argues that this case is coming too late to do any good in any event.

2008-1050  DCT  REVOLUTION EYEWEAR v ASPEX EYEWEAR (Newman Schall Moore) 08-07-08 (2 of 5 stars)

This is a SuperSack case (i.e. the patentee granted a covenant not to sue in an attempt to force dismissal of the case) but here the patentee apparently only gave up on past infringement.  The question I guess is whether Medimmune requires something more for the defendant to maintain an action for the infringement going forward.  The patent relates to bottom-mounted eyewear (whatever that is).

2008-1135  DCT  TEHRANI v POLAR ELECTRO (Newman Rader Prost) 08-08-08

The main issue ius whether a patient must be a sick individual and whether the “cardiac function” must be the function of the patient rather than a cadiac function of an individual that serves as a reasonable fill in for the patient.  There is some question about limiting the claims to a particular statement in the specification when that statement included the permissive term “may.”

2007-1572  ITC  LINEAR TECHNOLOGY v ITC (Mayer Lourie Schall) 08-08-08 (1 of 5 stars)

This is an appeal from an ITC determination that certain nclaims were anticipated.  The technology involves controlling current through two different electrical phases in a power supply.  The appellant says the prior art controlled current in only one phase.  Most of the discussion is case-specific and relates to what the prior teaches or does not teach.  There is some discussion about what it means to show that there was no “substantial evidence,” where the burden of proof is “clear and convincing evidence.”  There is also a question of whether the preamble is a limitation and if so whether a “voltage regulator” is limited to a structure that holds a single output voltage (and whether the patent discloses anything other than a single output voltage).

2008-1140  DCT  EXCELSTOR TECH v PAPST LICENSING (Mayer Lourie Schall) 08-08-08

This appeal probes the intersection of LG Electronics and Medimmune.  In particular Excelsior claims that it does not have to pay a fee under a license it has with Papst because it purchased its products from licensees of Papst and so Papst’s patent rights have been exhausted with respect to those purchases.  The panel really wonders why it would not have been more straightforward for Excelsior to bring a contract action.  Excelsior explains that under a contract action Papst would argue that it is free under a particular term of the license but Papst does not have such an excuse under the law of exhaustion.