Oral Argument Summaries - January 2009

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

2008-1077  DCT  ICU MEDICAL v ALARIS MEDICAL (Michel Prost Moore) 01-05-09 (3 of 5 stars)
The patent in this case relates to some sort of valve in a medical device that has a “spike” and a seal.  The main question is whether (1) a spike requires a point; and (2) the spike must pierce the seal.  Apparently the accused device is a hollow tube and the seal is split down the middle before the spike gets to it.

ICU is represented by Frank Scherkenbach of Fish & Richardson and I believe that Alaris is represented by Tim Malloy of McAndrews Held & Malloy.

2008-1453  PTOIN RE GLEAVE (Michel Prost Moore) 01-05-09 (2 of 5 stars)
The issue in this case is whether a really really long prior art list of species should be taken to teach each species or should instead simply be taken to teach the genus (since a skilled artisan presumably would not have time to fully consider each member of the list).  The rejected claims cover a particular oligo (a 15-mer) of a sufficient length to act as an anti-sense inhibitor.  Interestingly a list of compounds might fail for enablement reasons whereas a list of oligos is readily enabled (because they are apparently easy to create) so enablement is not an issue here.

2008-1240  DCT  DEPUY SPINE v MEDTRONIC SOFAMOR (Newman Bryson Linn) 01-05-09 (3 of 5 stars)
 Defendant Medtronic lost $200+ million at trial on a patent for a spine fixing mechanism.  Medtronic raises four errors: (1) the district court should not have kept Medtronic's DoE “ensnarement” defense from the jury (the district court found that the supposedly ensnaring prior art actually taught away from the hypothetical claim; there is also discussion about whether ensnarement is a law/fact issue like obviousness or is a totally legal issue because it is a limit on the DoE); (2) Depuy’s convoyed sales theory depended wholly on a theory that the patented invention let Medtronic get a “foot in the door” to sell other products that had no functional relation to the patented products; (3) for lost profits there was no evidence of a demand for the patented invention because the invention was hidden inside a larger assembly and the functions performed by the assembly could be performed by noninfrining assemblies (also Medtronic argues that the court erred in failing to tell the jury that Medtronic waited to develop a design around only because it had won summary judgment earlier in the case); and (4) the court erred in refusing to let Medtronic pursue a reverse DoE defense (and Medtronic's supposed pressing of that claim led to sanctions I believe).  There is also an issue on willfulness and whether Medtronic had an objective basis to believe its actions were okay.

2008-1228  DCTECOLAB v FMC CORP (Rader Gajarsa Dyk) 01-06-09 (2 of 5 stars)
The issue in this case appears to be whether an applicant’s argument can create a disavowal and estoppel when the examiner rejects the argument and explains why the argument is wrong and the prosecution then moves on to other points before the examiner allows the case.  The claim is a “consisting essentially of” claim that recites a particular anti-microbial for killing germs in meat processing plants and the applicant unsuccessfully argued to the examiner that the claims excluded all anti-microbials other than the recited one.  There also also some issues regarding anticipation and obviousness but they seem pretty case-specific.

2008-1144  DCTE-PASS TECH v 3COM (Bryson Linn Prost) 01-06-09 (1 of 5 stars)
This case has been up before and this time the district court sanctioned the plaintiff/patentee for taking shifting infringement positions (including asking for additional discovery before summary judgment) that the district court viewed as being designed to delay the inevitable bad result in bad faith.  The patentee asrgued that such a rationale would seem to point to problems with the attorneys and that because the district court awarded fees against the client but not the attorneys there must be something wrong with providing any sanction at all.

2008-1249  DCTZIPWALL v FASTCAP (Michel Prost Gettleman) 01-07-09
This is a claim construction appeal for the term “compressive mechanism” -- the issue is whether that term covers only springy things or can also cover things like a car jack.  The patentee/appellant argues that the term must be construed broadly because the patent discusses pneumatic and hydraulic embodiments (but the panel asks why those embodiments could not be “springy”).  This appeal suffered a Rule 36 summary affirmance.

2008-1235  DCTLENCCO RACING v JOLLIFFE  (Rader Schall Dyk) 01-07-09 (1 of 5 stars)
This appeal comes from a dismissal based on a failure of Jollife’s replacement counsel to show up at the district court.  It sounds like the original counsel thought replacement counsel was hired but that the deal was not done yet.  Original counsel thus filed a motion to withdraw along with a statement saying that replacement counsel was on board and the district court later dismissed the case.  Another interesting point is that the order on appeal is a refusal to grant a motion for reconsideration under Rule 60(b) and not the dismissal itself because the notice of appeal came too late for the main order.  This appeal suffered a Rule 36 affirmance.

2008-1284  DCTCROWN PKG TECH v REXAM BEVERAGE (Bryson Gajarsa Moore) 01-07-09 (1 of 5 stars)
The district court granted summary judgment of no DoE infringement based on a substantially different “function.”  The appellant asserts that the district court erred in identifying multiple functions for the recited limitation and especially in doing so as a legal rather than factual issue and especially (according to appellant) when both experts agreed that there was a single function (though the appellee’s briefing apparently argued otherwise).  There is also some Celotex discussion about whether the appellant met its summary judgment burdens.  Finally Judge Gajarsa asked at the end whether the district court dealt with the counterclaims – another case where perhaps there is no final judgment because of a failure to dispose of counterclaims.  Ugh.

2008-1311  DCTBOSS INDUSTRIES v YAMAHA MOTOR (Newman Schall Gajarsa) 01-08-09 (1 of 5 stars)
This is a claim construction appeal where the district court apparently granted SJ of noninfringement.  The question is whether “base”/“base section” is the bottom-most part of a snowmobile seat (the court’s construction) or simply part of the bottommost portion.  The patentee relies on the fact that the claims are “comprising” claims and on an assertion that the specification is inconsistent with the court’s construction.  There is also a question of whether “adjacent” means “next to” (the court’s construction) or can instead include some intervening stuff.  There is some question of whether the district court erred by starting its claim construction with a dictionary.

2008-1363  DCTNARTRON CORP v SCHUKRA USA (Lourie Dyk Prost) 01-08-09 (1 of 5 stars)
This is an inventorship case where the district court granted summary judgment of co-inventorship (and presumably either invalidity or a lack of jurisdiction for failure to join the other inventor).  The patentee/appellant asserts that the feature provided by the additional inventor (a lumbar support extender where the invention centered around automotive seat massagers) was conventional and from the prior art – even though it was the subject of a separate dependent claim.  However it appears the patent also identified the feature as being in the prior art.  The alleged co-inventorship grew out of a joint development arrangement so be careful with your business partners kids.

2008-1184  PTOIN RE KUBIN (Rader Friedman Linn) 01-08-09 (3 of 5 stars)
This is the big biotech obviousness case.  The claims cover some isolated piece of a gene while the prior art discloses a probe (P38) for encoding that fragment (a cDNA molecule known as NAIL).  The Board found the invention obvious to try but Kubin centers his argument on an asserted lack of reasonable expectation of success.  Judge Rader pressed the parties over the effects of O’Farrell on the one hand and Deuel on the other.  The application is apparently owned by Immunex/Amgen.  This is a great panel: (1) the smartest judge on the court (Friedman); (2) a non-technical judge who has really taken to this unpredictable arts stuff (Rader); and (3) a patent attorney who is not a biotechie (Linn).

2008-1367  DCTFELIX v AMERICAN HONDA (Rader Friedman Linn) 01-08-09 (2 of 5 stars)
This case has claim construction issues and Festo rebuttal issues where the district court granted SJ of noninfringement.  The invention relates to a pick-up truck having a bed that can be covered (and I think it can be opened to the cab too).  The main claim construction question is whether “mounted” simply means “positioned,” or also requires a more permenant attachment and affixation.  For Festo rebuttal the plaintiff added a “channel” and a “gasket” by amendment but argued only that the prior art lacked a channel – thus the patentee asserts that it should still get DoE coverage for the gasket.

2008-1369  PTOIN RE SPIRITS INTERNATIONAL (Rader Linn Dyk) 01-09-09 (4 of 5 stars)
 This is a TM case involving an alleged geographically deceptive mark – Moscovyska (sp?) for vodka that is made in Kaliningrad (which is over by Poland and is geographically separated from the main of Russia – I learned some georgraphy here).  The relevant and pretty interesting legal issue is whether the relevant public is all vodka drinkers or only vodka drinkers who can read Russian.  The latter of course are much more likely to figure out that Moscovyska is a derivative of Moscow and to care which Russian city is the home of the vodka.  (Simple Americans like me assume that all Russian vodka is equally great and miss the fact that words beginning with Mosco- must be related to Moscow.)  Interestingly the parties drew the judge – Judge Rader – who wrote the closest cases in this area and also the only or one of the only U.S. judges who is fluent in Russian.  This was a good argument with a couple knowledgeable attorneys and a very engaged panel.

2008-1201  ITCNINESTAR TECHNOLOGY v ITC (Michel Schall Prost) 01-09-09 (1 of 5 stars)
The appellant opens by indicating that the Commission/ALJ and the government (and presumably the opponents) have each made a “misrepresentation” with respect to the purpose of the invention and another matter.  The invention relates to printer cartridges having electrical “contacts.”  The substantive question is whether the claims which apparently were combination claims should have been found obvious – it appears the Commission found them not obvious.  The government starts by indicating that it is “puzzled” by certain of the appellant’s arguments.

2008-1413  PTOPIVONKA v AXELROD (Michel Schall Prost) 01-09-09 (1 of 5 stars)
This is an interference and the main issue appears to have been the positioning of parties as junior or senior.  It appears that the junior party is arguing that it did not know it was going to be the junior party until too late in the game.  The parties’ positions apparently changed because of a determination of whether one of the parties should get the benefit of an earlier priority filing.

2008-1433  DCTFITNESS QUEST v MONTI (Michel Schall Prost) 01-09-09 (1 of 5 stars)
The sound on this argument was horrible.  The Fed Cir asked for supplementation on Federal Circuit jurisdiction since the counterclaims had not been dismissed – the parties apparently believe it matters that the claims were in a DJ complaint (I don’t understand).

2009-1071  DCTELI LILLY v TEVA PHARMA (Michel Rader ____) 01-14-09 (1 of 5 stars)
 This is another crazy Hatch-Waxman case.  The questions are whether the Fed Cir has jurisdiction over a district court’s extension of the 30-month Hatch-Waxman stay and whether in this case the district court erred in extending the stay in light of a party’s “failure to cooperate.” 

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