Oral Argument Summaries - February 2009

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

2008-1158  DCT  KUHL WHEELS v GENERAL MOTORS (Michel Mayer Dyk) 02-02-09 (1 of 5 stars)
This is a patent case involving car wheels and how the spokes and other structures work to hold the wheels together.  The district court apparently found no infringement as a matter of law.  Kuhl also brings state law unfair comp claims apparently based on an assertion by a competitor that it was able to provide “the Kuhl wheel” (or something like that).  This case received a non-precedential affirmance.

2008-1436  PTO  IN RE NATURES REMEDIES (Michel Mayer Dyk) 02-02-09 (3 of 5 stars)
This is an appeal from an ex parte reexamination where the patentee is arguing that there was not substantial evidence that its pharmaceutical filings to the Dutch government were publicly accessible and thus prior art.  Apparently a company can block public access to its filings if such access would have a substantial adverse economic impact on the company.  The evidence of accessibility was a declaration from a government official saying that the document was available “in according with the attached laws and regulations.” (paraphrase).  It was ambiguous whether she meant “The document was public – see attached for support” or if she meant “The documents were public to the extent that the attached rules and regulations would make them public.”  The PTO argues that under the substantial evidence standard the Board had the right to choose one.  The patentee argues that there was absolutely no evidence to cause the Board to tip either way – and in fact the government official could not have had personal knowledge to reach such a conclusion because it would have required the official to know whether disclosure would have been financially harmful to the company.  The panel was pretty interested in this case.

2008-1242  DCT  DIGENE CORP v THIRD WAVE TECH (Lourie Rader Prost) 02-02-09 (2 of 5 stars)
The issue here is whether “consisting” as a transition phrase causes the claim term “a” to mean only “one” rather than its ordinary meaning of “one or more.”  (It seems that perhaps “a” does not really mean “one or more,” but instead that a claim recited “a” thing can cover one or more things when the claim is open-ended – in other words the claim is not directed to multiple items but it can cover multiple items because it only needs to be read on one item and the rest of the items are irrelevant.)  This is a biotech case where the claim requires hybridizing to particular strains (HPV52).  Judge Rader expresses frustration because the appeal came up without any context regarding how the accused system works.  (The court has been expressing such frustration and permitting such appeals for over a decade.)

2008-1427  PTO  CHAPMAN v CASNER (Lourie Rader Prost) 02-02-09 (1 of 5 stars)
This is an appeal from an obvious rejection out of an interference for a process of purifying oxycodone by mixing oxycodone with an acid and a salt incubating the mixture and exposing the mixture to certain reagents.  The appellant says the prior art does not disclose any of the three steps (at least not in application to oxycodone).  The appellant argues that its inventors discovered a particular unknown impurity which led to the claimed process – so discovery of the problem was the nonobvious thing.  The court emphasizes that the appellant’s application does not call out this discovery as being key to the invention.  The real parties in interest are [I did not catch this party] and Purdue Pharma (appellee).

My old law school classmate Doug Nemec of Skadden argued for the Purdue side.

2008-1208  DCT  LARSON v CORRECT CRAFT (Gajarsa Moore Arterton) 02-03-09 (1 of 5 stars)
This is an ownership and inventorship battle – Larson worked for Correct Craft and now claims that he was defrauded into assigning his rights to Correct Craft and he also wants to be the sole inventor on the patents.  The main issue at the argument was federal jurisdiction – i.e. whether the request for correction of inventorship (which did not mention Section 256) was sufficient to invoke federal subject matter jurisdiction.  The appellant appears to interpret Fina v. Ewen -- which asks under the mirror-image rule for DJ actions what claim the DJ defendant would have brought as a mirror image to the DJ plaintiff’s suit – as suggesting that the court here should look at the claim that the appellant could have brought if it had worded its complaint in a better way.  There is also some question about whether absent a legitimate claim to ownership Mr. Larson has a sufficient injury in fact (which apparently relates to his reputational interest in being a sole inventor rather than a joint inventor).  Judge Moore implores the parties to settle since the result of this battle is likely to be lots of expense and patents that will be tainted with all sorts of inequitable conduct evidence. 

2008-1117  ITC  LINEAR TECHNOLOGY v ITC (Mayer Lourie Schall) 02-03-09 (1 of 5 stars)
This is a fairly fact-specific case on infringement (the ITC found no infringement) involving whether the accused products (switching circuits of some sort) have certain claimed multiple modes of operation (apparently one is a sleep mode).  The patentee appellant appears to argue that the respondent’s expert added limitations to the claim construction when opining that there was not infringement.  There are also numerous other case-specific issues here such as whether a prior art device should have been found to anticipate if a corresponding product was found to infringe (or something like that).

2008-1320  DCT  PARK B. SMITH v CHF INDUSTRIES (Mayer Schall Gajarsa) 02-04-09 (1 of 5 stars)
This is a design patent case where the district court granted summary judgment of noninfringement using the point of novelty test (pre-Egyptian Goddess).  The appellee works very hard to argue that the accused product is so different from the claimed design that the Fed Cir can affirm as a matter of law on a ground different than that on which the district court relied.  The panel pushes back fairly hard on that point.  The appellant argues that even the district court’s ordinary observer test was flawed because Egyptian Goddess added a requirement that the ordinary observer be cognizant of the prior art.  The design is of a window shade mechanism.

2008-1467  DCT  NATIONAL INSTITUTE v FORD MOTOR (Rader Bryson Moore) 02-04-09  (1 of 5 stars)
Ford donated some patents to the National Institute (presumably in part to get a tax deduction) but retained some rights including (I think) the right to “practice” the “patent rights,” which are rights to exclude rather than affirmative rights to practice.  I was not paying enough attention to understand the posture of the case but it appears that perhaps Ford wants to enforce the patents (either that or the Institute wants to sue Ford or its customers).

2008-1430  DCT  TRANSCORE v ELECTRONIC TRANSACTION (Gajarsa Dyk Moore) 02-05-09  (4 of 5 stars)
This could be an important case because it asks whether a covenant not to sue triggers the exhaustion doctrine under Quanta v. LG.  It appears that the parties settled a prior dispute and then the patentee tried to sue customers of the party that received the convenant not to sue.  I find this case extremely interesting because I’ve always wondered what the difference is between a convenant not to sue and a license (or at least a non-exclusive non-transferable license).

2007-1357  ITC  FORD GLOBAL TECHNOLOGIES v ITC (Mayer Clevenger Rader) 02-05-09 (3 of 5 stars)
This case has an interesting issue:  whether a private demonstration can invalidate a design patent when the design is too complex for any of the viewers to have fully recreated it after they left the demonstration.  The demonstration was an invite-only preview of a Ford F150 concept truck and the design relates to the grill of the truck.  Although the demonstration was invite-only (and excluded industry professionals) and was closed to cameras or sketch pads the attendees did not sign NDA’s and were not otherwise limited in what they could tell outsiders.  There is also a minor issue about whether the infringement test applied by the ITC was sufficiently similar to the after-arising Egyptian Goddess test that remand would not be needed on the issue.

2008-1370  PTO  HOLT'S COMPANY v VIRGIN ENTERPRISES (Mayer Clevenger Rader) 02-05-09 (1 of 5 stars)
This is a res judicata case out of the TTAB.  Many years ago Holt’s apparently tried to get a first mark and lost an opposition (apparently on a default).  Holt’s is now trying to get a broader mark that is premised on the same first use date and the same exemplar as the prior mark and list the same goods.  Holt’s asserts that res judicata does not apply because the marks are different.  This case suffered a Rule 36 summary affirmance.

2008-1248  DCTARIAD PHARMACEUTICAL v ELI LILLY (Linn Prost Moore) 02-06-09  (1 of 5 stars)
The appellant/defendant argues that the claims are invalid as a matter of law for lack of written description or enablement (overbreadth) and an attempt to preempt a natural law under Section 101.   The claim appears to have a single method step for inhibiting NF-Kappa-B (or some genetic thing like that)..

2008-1447  PTO  HENKEL CORP v PROCTER & GAMBLE (Linn Prost Moore) 02-06-09  (1 of 5 stars)
This is a fact-specific appeal from an interference and the main issue on appeal is whether the prevailing party had sufficient corroboration.  The appellant argues that the corroborating evidence does not address the issue that is relevant to the claimed subject matter.  The technology relates to “dimpled” drug tablets and the effect of the dimpling compression on the dissolution rate of the tablet.  The argument focused very narrowly on a particular corroborating (allegedly corroborating?) document.