Oral Argument Summaries - March 2009

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

2008-1515  DCT  SAFFRAN v BOSTON SCIENTIFIC (Michel Dyk Prost) 03-02-09 (3 of 5 stars)
This is an R.E. Service “disclosed but unclaimed” appeal – sort of.  BSC’s Taxus stent was apparently found to infringe Saffran’s patent relating to a layer that is “minimally porous to macromolecules.”  (I’ve read that damages were $500 million)  BSC asserts that the quoted term should cover porosity controlled by pore size but not by chemical bonds and linkages.  BSC argues that embodiments in the patent regardinf chemical bonds and linkages were disclosed but not claimed.  BSC separately argues that Saffran disclaimed coverage by argument during prosecution.

2008-1402  DCT  BERNARDO FOOTWEAR v DILLARD'S (Bryson Linn Moore) 03-02-09 (1 of 5 stars)
This is a design patent case on a sandel where the issue centers on functionality.  The district court held in a bench trial that there was no infringement.  The main question seemed to be what the court should do with items in the design that are functional – and what standard the court is to use for determining functionality.  There was also some noise about the district court issuing a verbal rather than written claim construction though I don’t know what the big deal is there.  And the appellee argues that the standard of review for claim construction of a design patent should be – I think – the abuse of discretion standard.  There is also a question about whether the appellant adequately raised the functionality argument below.  Much of the discussion focuses on the ornamentality or functionality of stitching that passes through the sole of the sandles.  This case suffered a Rule 36 affirmance.

2008-1267  DCT  REVOLUTION EYEWEAR v ASPEX EYEWEAR (Michel Bryson Posner) 03-03-09 (2 of 5 stars)
This is a “capable of” case ala Intel v. ITC and others.  The patentee won $50+ million for a patent on eyeglasses that contain magnets in the frame so that tinted auxiliary lenses can be snapped onto the glasses.  The patent noted that the glasses had to be arranged so as to be “capable of” having the extra lenses attached to the top of the bows.  The accused glasses attach to the bottom but because magnetism radiates out in all directions they could also attach to the top (or at least some version of an auxiliary frame would be able to be attached t the top).  So the legal question is whether you can infringe a “capable of” claim even if it’s undisputed that no one ever employed the capability.

2008-1528  DCT  RITCHIE v VAST RESOURCES (Michel Bryson Posner) 03-03-09 (4 of 5 stars)
This could be a really big post-KSR case on the obviousness of substitutions.  The invention is the use of PYREX instead of regular glass or latex for a certain “marital aid” device.  It appears that the patent was found valid but not infringed.  The main issue is whether the substitution of PYREX for regular glass would have been obvious in this context.  The patentee also raises three claim construction issues:  (1) whether “lubricious” should include smooth and slippery or simply just slippery; (2) whether “bend” should cover curves and angles or just angles (it appears the patentee distinguished a straight piece of prior art by notin that its device had an angle and is now arguing that such a distinction was not needed to get over the art); and (3) whether “spherical” should be limited to round shapes.  There is also a Mars-like damages issue because people own the patent but their S-corp sells the product – the plaintiff says it should be able to get lost profits because the S-corp is required to pass profits through to the individual owners.  There also appear to be an issue of whether “lubricious” is indefinite because the patent gives no guidance for testing such a property.

This should be an interesting case – with perhaps the smartest appellate judge in America and the smartest judge on the Federal Circuit (apart from Judge Friedman) on the panel and the potential for a very entertaining opinion from Judge Posner who can write circles around most mortals.

2008-1516  DCT  PARAGON SOLUTIONS v TIMEX (Bryson Linn Moore) 03-02-09 (2 of 5 stars)
This is a prosecution disclaimer case.  The invention covers an exercise monitor with a watch.  The claims originally recited component A component B and a “display unit.”  The prior art showed all three in one housing so the Applicants amended to recite a “data acquisition unit” that comprises component A and component B where the data acquisition unit is separate form the display unit.  The question in the litigation is whether the “data acquisition unit” needs to be a single device – i.e. where compoant A and component B need t be in the same housing.  The patentee argues that any disclaimer was not clear and unambiguous enough to bite.

2008-1221  PTO  IN RE SKVORECZ  (Newman Friedman Mayer) 03-03-09 (1 of 5 stars)
The rejected claims relate to a wire chafing rack having tapered legs so that multiple racks can be stacked tightly.  The claims recite “at least 2 legs” and that “each leg” be tapered.  The prior art apparently shows 4 legs where 2 are tapered and 2 are not.  So the issue is whether “each leg” refers to each of two or more legs on the rack or each and every leg on the rack.  I personally believe it’s the former because the claim looks a lot like the claim in Predicate Logic v. Distributive Software which I briefed.  Judge Newman was not hiding the fact that she believed the opposite.  The solicitor says it could be either and the Board was entitled to select the broader interpretation.

2008-1282  DCT  BAYER SCHERING v BARR LABORATORIES (Newman Friedman Mayer) 03-03-09 (2 of 5 stars)
The district court found obviousness for drospironone (sp?) an oral contraceptive.  The appellant asserts that the district court mainly messed up its “predictability” analysis by finding a finite number of possible solutions but not finding proprerly that one was not predictable.  The question relates to whether micronization was uncertain and what it would do with respect to degredation of the drug in stomach acid.  The district court may have (or may not have) applied a “reasonable possibilities” standard for obviousness.  The appellee says the appellant is taking bits and pieces out of the district court’s opinion and using them out of context.

2008-1397  PTO  IN RE CALGON CARBON (Mayer Rader Posner) 03-04-09 (1 of 5 stars)
This is an appeal from an anticipation rejection.  The invention relates to some sort of achival preservation box containing carbon and some layers and some other stuff.  The argument seems very case-specific.  The case suffered a Rule 36 affirmance.

2008-1466  DCT  AGILENT TECHNOLOGIES v AFFYMETRIX (Mayer Rader Posner) 03-04-09 (3 of 5 stars)
This is an appeal through the district court from an interference where the question is which specification is supposed to be used for construing the relevant claim or count terms.  The invention relates to machines for mixing DNA juice on gene cheaps using bubbles and the relevant claim term is “closed chamber” (or something like that).  There is also a question about the standard of review to be applied by the district court and the Fed Cir with respect to evidence that was newly added in the district court proceeding.

I think Tom Jenkins from Finnegan represented the appellant.  He did a very nice job – he was conversational answered the questions conceded points he needed to concede and did not sound like he was constantly “spinning.”  It seems that his style got him pretty far.

2008-1222  DCT  MPT v MARATHON LABELS (Schall Archer Moore) 03-04-09 (1 of 5 stars)
This apparently is an appeal that is trying to figure out what the Federal Circuit said when in a prior appeal it remanded the case to have the district court modify an injunctions  It confuses me.  The appellee argues that this is a frivolous appeal.  This case suffered a Rule 36 summary affirmance.

2008-1545  PTO  IN RE FALLAUX (Schall Archer Moore) 03-04-09 (1 of 5 stars)
This is an appeal from a double patenting rejection.  There is some discussion about whether the 1-way test or the 2-way test should apply because the examiner would not have made the rejection under the 2-way test.  But the Board never reached that issue.  (Note that the 2-way test is applied when the PTO bears a certain level of blame for an earlier-filed application issuing after a later-filed application.)

2008-1410  DCT  TUNA PROCESSORS v HAWAII INTERNTL (Lourie Archer Linn) 03-05-09 (1 of 5 stars)
This is a Chef America case (or maybe not) – i.e. the question is whether operating something “at 250 degrees” requires the “heater” to be that temperature or the “heated” to be the temperature.  The invention relates to smoking tuna for sushi by burning sawdust filtering it and passing it over the fish as it is cooled.  A second claim construction issue concerned whether the term “cooled” was necessary past tense in the claim so that the operative item had to have been previously cooled before the claim step occurred.

2008-1441  DCT  UNIV OF PITTSBURGH v VARIAN MEDICAL (Gajarsa Clevenger Dyk) 03-05-09 (2 of 5 stars)
This is a standing case.  The U and Carnegie Mellon agreed in advance that all their joint work would be jointly owned but the Carnegie Mellon inventors assigned directly to the U.  The question is whether the agreement was self-executing or not.  The U also tries other ways to get around the agreement that don’t seem quite as strong as the debate over whether the agreement was self-executing.  You know we’ve had lots of standing decisions in the last 10 year.  I’d think people would be more attuned to the issue by now.

Former Judge McKelvie represented the U.

2008-1255  DCT  DIGITAL IMPACT v BIGFOOT INTERACTIVE (Lourie Schall Gajarsa) 03-06-09 (2 of 5 stars)
This is a joint infringement case ala BMC and Muniauction.  The Patentee appeals a grant of summary judgment of noninfringement for its patent on a method of tracking responses to emails.  The patentee says the requisite “control” for joint infringement  is technical control that is exerted by the various e-mail protocols.  The appellee asserts that the patentee ignores that the claims require involvement by a user to open an e-mail and that it exerts no control over such users.  I don’t believe the court brought up Muniauction with the appellant.  When the court asked the appellee if this was a BMC case the appellee noted that it was a BMC and Muniauction case. This case suffered a Rule 36 summary affirmance (on pretty much the same day the Supreme Court denied cert in Muniauction).

2008-1480  DCT  ASTRAZENECA PHARMA v TEVA PHARMA (Newman Rader Prost) 03-06-09
This appears to be an appeal from a finding of no inequitable conduct.  The big questions is whether Schmutz B is closer to the claims than is Schumtz X – so that it is relevant to materiality and cumulativeness.  One side argues that “closeness” needs to be measured using both structure and function.  The patentee says the examiner was only interested in structure. 

 

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