Oral Argument Summaries - October 2007

This post contains oral argument summaries from the Federal Circuit's October 2007 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.

2007-1130  IN RE BILSKI (Bryson Clevenger Moore) 10-01-07 (2 of 5 stars)

This is another business method application that was rejected under Section 101 as reciting nothing more than a mental process.  The Board expressly asked the Federal Circuit for guidance in this area and the Fed Cir asked the government whether In re Comiskey (for which the PTO never developed a Section 101 rejection) had been sufficient guidance.  The government suggests that there should be a “technological” requirement for patents so Judge Moore asks how design patents could exist under such a system.  The PTO asks the court to reject the claim as a nonstatutory process (ala Comiskey?) that it is nothing more than an abstract idea.  Note:  The argument here is over one hour long.

2007-1145  INNOGENETICS v ABBOTT LABS (Bryson Clevenger Moore) 10-01-07 (1 of 5 stars)
This is a biotech case that raises issues of claim construction anticipation and the TSM test for obviousness.  The claims involve detection of a probe target complex or something like that.

2006-1393  CORDIS CORP v MEDTRONIC AVE (Bryson Friedman Keeley) 10-03-07 (3 of 5 stars)
The beginning of this argument was cut off.  The patents relate to stents.  Among other things the defendant-appellant Medtronic is challenging a “motivation to combine” jury instruction to which it never objected.  Also there were questions about the level to which statements in the prosecution created estoppels – i.e. the court was trying to interpret the statements in the file wrapper.  The patentee asserts that it could win on an alternative ground that the word “smooth” added during prosecution should be construed broadly.  Another claim term being construed was “substantially uniform thickness” and the question was the direction along which the uniform thickness was to be measured.  Apparently the question is whether a wall made of currogated material has a uniform thickness if the sheet has a uniform thickness but the undulations have varying heights.  Much of this case sounded pretty fact-dependent.  Note:  The argument was very long (even without the first part).

2007-1120  ADANG v UMBECK (Bryson Friedman Keeley) 10-03-07 (1 of 5 stars)
This is an interference over transforming and regenerating cotton with respect to the BT gene.  Apparently the Board held that Adang lacked written description for the count which covers more than simply insecticidal DNA.  Neither the appellant nor the appellee was asked many questions.

2006-1574  TIVO v ECHOSTAR COMMUNICATIONS (Bryson Plager Keeley) 10-05-07 (2 of 5 stars)
This is the personal video recorder (PVR) case of course and the appeal centers around claim construction.  The patentee Echostar had won a jury verdict of infringement.  There seems to be one main legal question i.e. what happens when a trial court refuses to construe and term and simply gives it to the jury – is it a legal questions a substantial evidence question or some mix?  On the claim construction merits there was a question whether the requirement that two signals be “separated” requires physical separation or simply logical separation.  Another limitation requires assembling video and audio components into “an” MPEG stream – the appellant argues it must be a single stream and appellee argues that no skilled artisan would ever understand the technology to be so limited because audio and video are always separate in this area.  In addition there was a question regarding whether a “source object” had to be something associated with an object oriented programming environment or could simply be any recognizable chunk of code.  There is also a DoE issue and the appellant asserts that the patentee’s expert’s testimony was too conclusory.  Note:  The low rating does not reflect that this cases is unimportant but that the argument ran more than an hour and often focused on case-specific factual issues.

2007-1047  IN RE BARNETT   (Schall Bryson Moore) 10-05-07 (1 of 5 stars)
This is an appeal of a rejection of claims to some sort of software invention for keeping track of a user and printing coupons for the user.  The discussion was very fact-specific and the panel sometimes questioned whether the claims actually recited the limitations that theappellant was using to distinguish the prior art.

2007-1206  F&G RESEARCH v PATEN WIRELESS(Schall Bryson Moore) 10-05-07 (1 of 5 stars)
The appellant claims this is an Asahi-like personal jurisdiction case – but apparently the patentee never showed that products sold by the defendant’s customers in the forum necessarily had the accused parts from the defendant in them.  So there may be an interesting question here or there might simply be a failure of proof.  The appellant does try to rely on web sites that were not in evidence – and Judge Bryson calls them “not judicially noticeable.”  The appellant admits that it needs the web sites to make the connection.  Interestingly someone was taking pictures at about 3:30 and Judge Schall politely asked them to stop.  [I’ve never seen that before.]

2007-1026  WISCONSIN ALUMNI v XENON PHARMA (Mayer Gajarsa Restani) 10-02-07 (1 of 5 stars)
WARF apparently licensed Xenon which then granted rights of some sort to Novartis – a grant WARF considered to be a breach so it sued and won a few million dollars.  The main question addressed at the argument is whether the Federal Circuit has jurisdiction over the appeal:  one party says the court does because one WARF’s claims is based on the Bayh-Dole Act which is part of the Patent Act whie the other party says the Bayh-Dole thing was only one of multiple alternative theories for breach (so no Section 1338 jurisdiction under Christiansen) and not a separate claim. 

2007-1080  MICRON TECH v MOSAID TECH  (Newman Rader Dyk) 10-02-07
This is a declaratory judgment case that was decided before Medimmune was decided – appellant Micron thinks it has a pretty good case for DJ jurisdiction in light of the intervening cases.  One key issue is whether the analysis is to be conducted on a patent-by-patent basis because there were 14 patents in this DJ suit – 7 were mentioned in a letter sent by Mosaid and 7 were asserted against other companies in the industry.  The district court also declined jurisdiction under its discretion so as to let the suit go forward in a different forum where Mosaid sued a day after the DJ filing.  Mosaid says even the 7 patents in the letter do not involve any dispute because Micron made no response at all (Mosaid says there must be some discussion for there to be a concrete dispute).  Judge Newman asks how there can be no dispute when Mosaid sued the next day – Mosaid responded by asserting that all the various Mosaid suits had different mixes of patents – Judge Rader said: “That’s pretty easy to manipulate … isn’t it?” [17:00]  Mosaid says: “The dispute must exist before the suit is filed.”

2007-1146  IN RE BEIGEL  (Newman Rader Dyk) 10-02-07 (1 of 5 stars)
The application claims relate to a technique for synching an RFID tag to an RFID tag reader.  The solicitor says the Beigel invention is relatively simple while the prior art Carroll system is more complicated and involves multiple rounds of synchronizing communications and that the Carroll system employs the same features in later rounds that the claims involve in a single rounds (a “bit timing clock signal”).  The solicitor says that the distinction drawn by Beigel on appeal was not in the broadest claims.  [The recording did not include the argument from the applicant.]

2007-1098  SOUTHERN GROUTS v LATICRETE INTL  (Mayer Jacobs Prost) 10-03-07 (2 of 5 stars)
The district court granted summary judgment of noninfringement due to prosecution history estoppel.  The original claims said “cement” the amended claims said “Portland” cement and the patentee now wishes the claims said “hydraulic” cement.  The appellant asserts that the record shows the applicants did not intend to give up all forms of epoxies.

2007-1150  IN RE CHATANI (Mayer Jacobs Prost) 10-03-07 (1 of 5 stars)
The appellant (Sony) argues that the claims implicitly require an order that is not present in the Cohen prior art.  The judges ask why the applicant did not simply amend the claim.  The solicitor also asserts that the issue was waived – the appellant simply asserts that it has clarified and reinforced an issue that was raised below (because it argued below that the prior art did not disclose the invention “in the same manner” as was recited in the claims).

2007-1125  HYPERPHRASE v GOOGLE (Michel Lourie Gajarsa) 10-03-07 (2 of 5 stars)
This is a claim construction case in which the question is whether a “data reference” requires that the thing identified as a data reference must actually refer  to another document or simply needs to play some sort of role in connecting one web page to another.  Most of the discussion was fairly case specific though there is a question about the effect of a definition that appears in a CIP application.  Disclaimer:  F&R represents Google in this case.

2007-1168  ERICO INTL v VUTEC CORP  (Newman Rader Dyk) 10-03-07
This is an appeal from a grant of preliminary injunction on claims for stringing prior art cable hooks in a manner suggested by some prior art wiring standard (e.g. with less than a foot of sag).  Appellant’s central point is that its product infringes but is identical to the admitted prior art and that a method cannot be patentable based on structures recited in the method.  The appellee relies heavily on vast commercial success and the appellant suggests there is no nexus between the claimed method and the success.  Judges Rader and Dyk challenged the appellee by noting that the standard was in the prior art and as soon as the hook was developed someone would know to use it according to the standard.  So this is a very KSR-like case. 

 

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