Federal Circuit Blog

Oral Argument Summaries - May 2009

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

2008-1415  ITC  NORGREN INC v ITC (Schall Gajarsa Moore) 05-04-09 (1 of 5 stars)
This is a claim construction case involving a clamp that receives a flange.  The main question is whether the flange has to be wholly within te clamp.  A second questin is whether a "generally rectangular ported flange" requires four separate tabs to extend outward from a central rectangular hub or whether only two are sufficient.  In other words the question seems to be whether the rectangular flange is the entire structure or only the parts of the structure that stick outward.

2008-1456  DCT  HEALTHPORT CORP v TANITA CORP (Schall Gajarsa Moore) 05-04-09 (1 of 5 stars)
The district court had granted summary judgment of noninfringement and the patentee argues (1) the court had imported a limitation into the claims and (2) misidentified corresponding structure for a « means » limitation.  On the former the patent indicates that it is important that a patient not move when being measured by the invention so the district court read such a limitation into the claim.  The patentee emphasizes that the claim is an apparatus claim so reading such a limitation into the claim is particularly wrong.  On the latter the patentee argues that the structure for a « mounting means for removably attaching» should include a computer in the patent.  The defendant cross-appeals to get its fees for a frivolous case.  This appeal suffered a Rule 36 affirmance. 

2008-1468  DCT  UNIV OF PITTSBURGH v HEDRICK  (Mayer Rader Bryson) ) 05-04-09 (2 of 5 stars)
This case asks the court to draw the line between a hypothesis and a real conception.  The invention relates to stem cells and the appellant asserts that the conception did not occur until the inventors actually found a particular cell in their test sample.  The appellee asserts that any lack of certainty in the inventors’ records simply shows pragmatic scientific caution.  One problem for the appellee is that the patent lists a co-inventor who was not even around on the alleged date of conception.

2008-1498  DCT  SOFPOOL v INTEX RECREATION (Mayer Friedman Rader) 05-05-09 (1 of 5 stars)
This is a design patent case that was tried before Egyptian Goddess and the panel thus seems inclined to send the case back for a new trial.  It seems there might be a question of whether the appellant waived the issue but that issue is not pushed very much.  The appellee argues that the instructions were substantially correct when read as a whole.  This case was quickly vacated in a non-precedential opinion.

2008-1500  DCT  ANASCAPE v MICROSOFT (Newman Gajarsa Dyk) 05-05-09 (2 of 5 stars)
This case might ask what happens when incorporated material is inconsistent with the specification of the patent-in-suit.  The invention here is a multi-axis motion-controlled game controller and the question is whether the incoporated material includes a disclaimer and thus acts to limit the invention to a controller that uses a single input mechanism.  Much of the argument centered on what was disclosed by particular figures in the patent-in-suit.  Separately there is an issue of whether the damages award makes any sense or is simply a compromise verdict.  Bill Lee from Hale & Dorr represents appellant Nintendo (Microsoft must have settled out or deferred in the argument). 

2008-1509  DCT  BD TRUSTEE LELAND v ROCHE (Linn Prost Moore) 05-05-09 (1 of 5 stars)
The district court granted summary judgment of obviousness.  The appellant argues that the court made serious fact findings on issues such as predictability and the level of skill in the art.  There is also a major question here about whether the assignment from the inventors violated Bayh-Dole and the practical result if it did.

2008-1554  DCT  FARRAGO v RAWLINGS SPORTING (Mayer Lourie Gajarsa) 05-06-09 (1 of 5 stars)
This is a claim construction case relating to a athletic leg support.  The patent requires a shape having four surfaces as opposed to a prior art less comfortable triangular shape.  The question appears to be whether a continuoius curve can define two distinct surfaces or must be a single surface (which I presume drives the question of whether the defendant has 3 or 4 surfaces).  This appeal suffered a Rule 36 affirmance.

2008-1589  DCT  BIOLUMIX v CENTRUS INTL (Rader Linn Prost) 05-06-09 (1 of 5 stars)
The issue in this case is whether a patent assignment is subject to an arbitration clause.  The issues sound pretty case-specific.  There was an alter ego finding by the district court without discovery.  This appeal suffered a Rule 36 affirmance.

2008-1448  PTO  IN RE BOSE CORP (Michel Dyk Moore) 05-06-09 (3 of 5 stars)
This is an interesting appeal.  A trademark applicant in an apparent misunderstanding of the law signed a declaration that a mark was being used in interstate commerce when no products had been sold with the mark in several years but the applicant was making repairs to the goods.  The Board said the person knew or should have known his reading of the law was wrong so it found the registration unenforceable.  There is extensive discussion about whether the Fed Cir’s mention of « knew or sould have known » in its prior Torres decision required the panel to affirm (or go en banc).  Judge Moore pointed to a decision by then-Judge Alito in which he explained the « should have known » language does not excuse a court or Board from finding actual deceptive intent but instead was used by the court as a signal that it did not believe the witness on its way to finding that the witness had deceptive intent.

Chuck Heiken of Fish & Richardson represented Bose.

2009-1023  DCT  AMGEN v ARIAD PHARMACEUTICALS  (Michel Dyk Moore) 05-06-09 (3 of 5 stars)
This is a claim construction case where the claim says « in the cell » and the question is where that is and what must occur there.  A lot of the discussion was case-specific biotechie stuff.

Evan Chesler of Cravath represented the appellant and he’s pretty good.

2009-1029  PTO  IN RE BAGGETT (Gajarsa Plager Linn) 05-07-09 (1 of 5 stars)
This was an appeal from the rejection of claims that are directed to making determinations for the pricing of airfares in a manner that is computationally efficient.  There was discussion about what the prior art actually disclosed.  Notes:  Baggett was represented by Dennis Maloney of Fish & Richardson.  The argument started with the admission of two of Judge Gajarsa’s law clerks.

2009-1019  DCT  NETCURRENTS INFO v DOW JONES  (Gajarsa Plager Linn) 05-07-09 (1 of 5 stars)
This is a claim construction case in which the claims require updating of certain information in real-time and the question is whether daily updates can be considered to be real-time.  The district court had granted summary judgment of noninfringement.  Netcurrents asserts that was infringement (or at least a fact issue) even under the district court’s construction and that the district court erred in accepting allegedly inconsistent and conclusory testimony from Dow Jones’ witnesses.  This appeal suffered a Rule 36 affirmance. 

2008-1544  PTO  IN RE REIFFIN  (Mayer Bryson Prost) 05-07-09 (1 of 5 stars)
The appellant in this reexamination argues that the Board acted ultra vires by considering questions of patentability that were not new—i.e. the effective filing date which he says was implicitly considered by the prior examiner apparently.  He also makes a claim construction argument regarding whether two components had to be part of a single unit (an issue he accuses the solicitor of running away from).  The argument sounded very fact-specific—though interestingly the patent application was filed 27 years ago (and I presume this related to the Reiffen v. Microsoft litigation though I do not know that).

2009-1045  DCT  WEDGETAIL v HUDDLESTON DELUXE (Schall Gajarsa Dyk) 05-08-09 (1 of 5 stars)
Appellant argues that it was denied procedural due processvia an opportunity to move for attorney fees and costs.  Apparently the judge simply made a statement in court that led the appellant to believe it could not move on the issues.  This case may have ben affected by the Supreme Court’s recent Shinsecky ruling that requires a party to show harmful error from being denied such an opportunity.

2009-1047  DCT  GARBER v CHICAGO MERCANTILE EXCH (Michel Lourie Prost) 05-08-09 (1 of 5 stars)
This is a case concerning the interpretation of a Rule 41 stipulation.  The actual facts were not too clear to me though the appellant argues that the district court erred in discerning the parties’ intent.  The case may turn on whether Ruloe 41(a)(1) for stipulated dismissals is self-executing (the appellant’s position) or instead requires some sort of intervening judicial action.  The appellee instead argues that the agreement falls under Rule 41(a)(2) -- even though it was called a « stpiulation «  -- because it contained a condition.

 

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. 

 

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.

 

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.” 

Oral Argument Summaries - November 2008

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

2007-1487 Clearvalue v. Pearl River (Newman Schall Dyk) 11-03-08 (2 of 5 stars)

A judge in the E.D. Tex. imposed death penalty sanctions and $2.7 million in fees and costs on the defendant and its attorney for failing to produce test data about the accused product.  The basis for refusing production was work product immunity but at most the testing had been done for another case regarding product liability issues.  The appellants (attorney and company) seem to challenge the size of the sanction more than the existence of the sanction.

2007-1578 Sumitomo Mitsubishi v MEMC Electron (Newman Plager Schall) 11-04-08 (2 of 5 stars)
This is an antitrust case where apparently the patentee’s patents were found invalid for lack of enablement and the accused infringer argues that the patentee also fraudulently asserted a false claim for priority.  Most of the argument revolves around the Fed Cir’s sua sponte raising of its jurisdiction because all of the original patent claims had been dismissed without prejudice and all that remained was an antitrust claim.  If that claim depended solely on sham and Walker Process bases the Fed Cir has jurisdiction but if the defendant alternatively pled a claim for violations from the patentee’s patent pooling the Fed Cir would not have jurisdiction.  On the merits there was a lot of discussion of the difference between the intent requirement for inequitable conduct and the intent requirement for fraud.  The patentee emphasized that much of its case was solid (even if its enablement position was problematic) thus indicating no fraudulent intent.  The district court apparently found that there was no fraudulent intent.

2008-1332 Clock Spring v. Wrapmaster (Bryson __  Dyk) 11-04-08 (1 of 5 stars)
This is an obviousness appeal and the patentee-appellant argues that the Fed Cir should consider certain new objective indicia evidence that was added on appeal – which the appellant asserts was first made relevant by a recent Fed Cir opinion (Cygnus).  There is also an issue regarding the experimental use exception to the on sale bar where the magistrate found the patent invalid but the district court found it valid.  The Fed Cir questions whether the asserted experimentation was aimed at the invention as claimed as opposed to being directed to a form of the invention that was uncertain with respect to its operability.

2008-1124 Acumed v. Stryker (Mayer Lourie Gajarsa) 11-04-08 (3 of 5 stars)
This is an appeal over the entry of a permanent injunction.  Appellant Stryker’s main argument is that the district court gave too little weight under eBay to Acumed’s granting of licenses to its patent to other companies and to the public interest of having access to healthcare solutions. (Stryker asserts that the Acumed nail which would replace the enjoined Stryker nail poses a health risk.)  Acumed says Stryker did bad anticompetitive things.

2008-1125 Dippin Dots v Mosey (Mayer Lourie Gajarsa) 11-04-08 (3 of 5 stars)
This is a follow-up appeal where the question is whether $4.2 million in fees should be awarded for an exceptional case where the patentee failed to tell the PTO about a prior public use but the Fed Cir in a prior appeal found that there was insufficient evidence of “fraud.”  On remand the district court explained that it had found inequitable conduct fraud not fraud fraud (or at least that's what it sounds like from the argument).  The patentee argues that the district court ignored the prior Fed Cir decision.  There is also some question about how much can be awarded when a patent case succeeds for a defendant but a corresponding antitrust counterclaim does not succeed.

2008-1283 Mathworks v. Comsol (Rader Linn Moore) 11-04-08 (1 of 5 stars)
This is a claim construction and claim differentiation case:  the district court apparently limited “ranking” to “fitness ranking” in a software invention even though a dependent claim related to fitness ranking.  The appellee argues that the patentee used a narrow meaning throughout the specification and the prosecution history.  There is also discussion about whether a term can have an “ordinary” meaning standing alone without first figuring out its meaning within the patent.  There is also some question whether claim differentiation creates a presumption or is merely a guideline (and only in independent-dependent situations).

2008-1073  Boston Scientific v. Cordis Corp. (Lourie Rader Prost) 11-05-08 (3 of 5 stars)
A jury found that Cordis’ Cypher drug-coated stent infringes BSC’s patent.  Cordis first asserts that the district court erred in construing “non-thrombogenic coating” in absolute terms rather than in terms relative to the response of a bare metal stent.  Separately the claim requires an implantable medical device with a drug-free outer coating.  Cordis applies a drug-free outer coating but the drug immediately begins leeching into this outer coating (which is subsequently NOT drug-free).  So the question is whether the Cypher is “implantable” (there seems to be a potential distinction between physical or technical implantability on the one hand and medical implantability on the other) and/or a “medical device” in the short time period before the leeching occurs and before it is sterilized.  There is also an issue regarding whether the patents would have been obvious though this issue seems to be very case-specific.

2008-1314 Takeda Pharma v Teva Pharma (Michel ___ Ware) 11-05-08 (2 of 5 stars)
The defendant-appellant argues that Judge Robinson from D. Del. who has tried dozens of patent cases erred in balancing materiality and intent when she found no inequitable conduct.  This seems like a steep climb.  The drug relates to lazamprezol and ameprozol anti-ulcer medicine (sp?).

2008-1129  WaveTronix v.  EIS Electronic (Newman Schall Patel) 11-05-08 (1 of 5 stars)
This is a claim construction appeal where EIS challenges the construction of “probability density function estimation (PDFE)” and “defining lanes (on a roadway).”  There was no Markman process or claim construction order but there was a 14-day pre-trial conference that included live expert testimony.  The substantive issues on claim construction were confusing (to me at least) and seemed very case-specific.  The invention relates to methods of measuring traffic levels on roadways.  The defendant asserts that the patentee’s system is precise and complex while its system is simpler though less precise.

2008-1123 Informatica Corp. v. Business Objects (Mayer Gajarsa Prost) 11-06-08 (1 of 5 stars)
The main issue is the construction of “transformation object” in a software patent.  Business Objects was found by a jury to infringe and it asserts on appeal that the magistrate changed the claim construction in the middle of trial—though it is objecting only to the construction and not to the process of changing the construction mid-trial.  Business Objects seems to assert that its transformations are performed by something other than objects and that Informatica expanded the concept of an object to include loosey-goosey stuff that is not really an object.

2008-1416 Applied Medical v US Surgical (Mayer Gajarsa Prost) 11-06-08 (3 of 5 stars)
Applied (the patentee) argues that it should have a new trial because the district court erroneously told the jury that it could consider the “outer portions” of the accused device even though those outer portions were not part of the corresponding structure for the means-plus-function limitation in the case.  The Fed Cir already identified the proper corresponding structure in a prior appeal.  The legal question is how much consideration if any can be given to non-corresponding structures that may have some effect – in a way that might relate to the corresponding structure -- on the way the accused device operates.

2008-1167 Lacks Indus. V. McKechnie Vehicle (Michel Clevenger Moore) 11-06-08 (3 of 5 stars)
Lacks appeals from a finding on summary judgment that it suffered an on sale bar arguing that it was trying to promote interest in its invention but was not making offers for sale and in any event the evidence does not indicate what exactly was offered for sale (i.e. that there was no proven “nexus” between the thing offered for sale and the patent claims).  There is some discussion about the proper standards of review for grants and denials of summary judgment and whether the Fed Cir could grant summary judgment for the patentee on this issue (i.e. whether it could impose a 180 degree reversal).

2008-1279 Synthes (USA) v. GM DOS REIS (Schall Friedman Bryson) 11-07-08 (4 of 5 stars)
This is a personal jurisdiction case where the defendant brought allegedly-infringing medical device products into the country for a trade show.  The defendant claims it only showed the products to foreign buyers because it does not yet have FDA approval – and thus it did not infringe inside the country.  The main question is thus whether bringing the products into the country for a not-fully-commercial purpose amounted to “importing” the products so as to trigger personal jurisdiction under Beverly Hills Fan.  There is also some concern about how much a court needs to review the merits of a case when analyzing personal jurisdiction – i.e. does it merely need to determine that the plaintiff’s allegations are non-frivolous or must it do more?  This should be a good case because it’s an interesting issue with some of the smartest judges around.

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.

 

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. 

 

Federal Circuit Oral Argument Summaries – September 2007

These are VERY ROUGH summaries of the cases argued to the Federal Circuit in September 2007.  I listen to the arguments in my car – often when I am distracted. So use these only for issue spotting, and listen to the MP3 yourself (and get copies of the briefs) if you want a 100% accurate story.

2007-1108 MAURICE MITCHELL INNOV V INTEL CORP (Rader Moore Yeakel) 09-04-07 (2 of 5 stars)

Another case where the prosecutor messed things up by using “means” limitations without thinking.  The relevant terms were “switch means,” and “means for causing….”  The issue on the “switch means” limitation was whether it was subject to 112/6 and then if so, what it corresponding structure (if any) was.  The issue on the second limitation was a failure to link the three functions in the limitation to any structure in the specification.  The appellant argues that the level of skill in the art should be high, and such a smart person could figure it out (Cf. Overhead Door.).  [Whenever someone’s main argument relates to what “one of ordinary skill in the art” would understand, with no connection to any evidence, there is a problem.]

2007-1093 PHARMA RESOURCES V ROXANE LABS (Michel Moore Cote) 09-05-07 (2 of 5 stars)

The patent covers a steroid for treating AIDS that is provided with a surfactant and is “stable.”  The district court agreed with the patentee that the term “stable” did not require stability for a particular period, but then apparently granted summary judgment of nonenablement because the specification said very little about the enormous number of surfactants that could/would be used.

2007-1133 DIGEO INC V AUDIBLE INC (Michel Moore Cote) 09-05-07 (3 of 5 stars)

This is a section 285 exceptional case appeal.  Audible won as a defendant and then sought additional discovery to show that Digeo did not conduct a competent pre-suit investigation.  The district court denied the discovery and relied on a declaration from Digeo.  I think the Audible attorney had a very good, relaxed, conversational style that more people should try to emulate.

      

2006-1633 SINORGCHEM V ITC (Newman Dyk Yeakel) 09-05-07  (3 of 5 stars)

This is a chemical case dealing with nitrobenzene, where the claims require that a certain item interfere with a reaction.  The issue is whether the ITC erred in adopting an express definition in the patent, but not including an “e.g.” clause that was in the definition.  The ITC reasoned that the example conflicted with a particular embodiment in the patent.  The definition, including the “e.g.” clauses, was even in quotes.  So the issue is whether, and when, plainly stated lexicography can be trumped. 

2006-1641 BIOVAIL LABS V ANCHEN PHARMA (Newman Dyk Yeakel) 09-05-07 (2 of 5 stars)

This appeal is from a summary judgment of noninfringement.  The claims require that a tablet be “free of stabilizer,” and the question seems to be whether the presence of something (HCL) that is nominally a stabilizer, but in an amount too small to stabilize, is “free of stabilizer.”  There was lots of discussion regarding whether this was a legal claim construction issue or, instead, a factual issue.  The discussion was also interesting because the court was looking at an ANDA description, and not an actual product.

2007-1097 ELBEX VIDEO V SENSORMATIC ELECTRON (Dyk Moore Cote) 09-06-07 (1 of 5 stars)

The panel was not thrilled with this case – noting that the parties’ briefs were like “ships that pass in the night” and questioning the appellant about characterizations of the accused system.  The patent relates to a security system that associates a break-in sensor with a camera, and allows an operator to control a particular camera (and not other cameras in the system) by sending commands using an address from the most recent sensor to trigger an alarm.  The district court granted summary judgment, and the issue seems to be a failure of proof, i.e., whether the appellant established that actual control signals are sent to the accused cameras.  There is a separate issue about whether an alleged error in the patent should be recognized and forgiven.

2006-1275 RESEARCH CORPORATION V MICROSOFT (Newman Friedman Rader) 09-06-07 (3 of 5 stars)

The district court found inequitable conduct based on failure to disclose certain test results to the examiner.  The panel seems to think the results did not really relate to the claimed invention, and tht they showed that a certain approach was not as good as other approaches, but not that the certain approach (which apparently was tied to the patent) was inferior   The panel questioned whether it had the power to reassign a case on remand (Judge Real had already found the inventors to not be credible).  The appellant also asserts error in a grant of summary judgment of noninfringement.

2007-1069 IN RE BENZER (Newman Friedman Rader) 09-06-07 (1 of 5 stars)

The invention relates to some sort of “input and output pad” (or something like that), and although the prior art labels its pad only as an “input” pad, it also shows current going to and coming from the pad – so the Board concluded that the claims were anticipated.  There was some discussion, which I did not understand, regarding the distinction between an anticipation rejection and a rejection because the claims as drafted are too broad (I thought they were the same thing).  Also, the appellant argued that the Solicitor had made a new argument in its brief, and that the appellant was prejudiced by not being able to introduce evidence to counter the argument.

2007-1154 INTL FLORA V DESERT WHALE (Rader Clevenger Dyk) 09-07-07 (2 of 5 stars)

This is a res judicata case, where the prior decision found a lack of standing in an TM opposition, and the current case involves a TM cancellation proceeding.  Judge Dyk was skeptical because the allegations for standing were the same both times – he also did not think a particular case supported the appellant.  Judge Clevenger also has a great colloquy with the appellant – classic style.

2007-1162 SYSTEMS DIVISION V TEKNEK (Michel Newman Moore) 09-07-07 (3 of 5 stars)

This case seems to have a huge back story.  APPARENTLY, there was prior litigation on patents, the defendant lost, and the principals of the defendant moved money out of the defendant while the suit was pending (and perhaps after the case was clearly going badly).  The patentees then brought a separate suit in California to get the money from the principals (who apparently are from Scottland).  The principals-appellants assert that there was no personal jurisdiction because the only harm in California was harm to he patentee, and all specifi personal jurisdiction cases have required harm to others in the forum (distinction w/o a difference?).  The panel wondered why fraudulent transfers were not affronts to the court and to the people of California.  The appellants also argued for forum non convience, but the panel questioned whether the issue was really just forum less convenient.

2006-1602 HONEYWELL INTL V HAMILTON SUNDSTRAN (Newman Rader Dyk) 09-07-07 (2 of 5 stars)

This is a Festo case.  The accused equivalent appeared to involve using the position of guide vanes on a jet engine to determine where in its operation the engine is, and then to control the engine with respect to surge control.  HS argued that the equivalent was foreseeable because people already knew that inlet vane position affected engine operation; Honeywell argued instead that the use of inlet vanes for control was not known.  Apart from the “foreseeability” issue, there was also a tangentiality issue, but I forget what it is because I listened to this one long ago.  (Hey, you aren’t paying for this.)

Federal Circuit Oral Argument Summaries – August 2007

These are VERY ROUGH summaries of the cases argued to the Federal Circuit in August 2007.  I listen to the arguments in my car – often when I am distriacted. So use these only for issue spotting, and listen to the MP3 yourself (and get copies of the briefs) if you want a 100% accurate story.

2006-1565  POSTX CORP V SECURE DATA (Newman Lourie Prost) 08-06-07 (2 of 5 stars)

The defendant previously won summary judgment of noninfringement and then sought an antitrust claim under PRE for sham litigation.  The question is whether lack of a prefiling investigation necessarily creates sham litigation even if it turns out (luckily for the patentee) the suit was reasonable.  In addition, the district court held that the Postx and its VC (or something like that) were not competitors, so there was no problem with them supposedly conspiring to file a sham lawsuit.

2007-1087  GP INDUSTRIES V ERAN INDUSTRIES (Newman Lourie Prost) 08-06-07

The district court enjoined the patentee from telling the defendant’s customers about their infringement.  The appellant argues that the court: (1) erred in not requiring that the assertions be objectively baseless; and (2) by shifting the burden to the patentee to prove that it would succeed on its claims.  There was some discussion about the standard of review for objective baselessness, where the standard at the district court was a “likelihood of success on the merits.”  Judge Lourie asks what the harm is when the patentee could always sue the customers, and the appellant gives a reasonable answer.  The defendant was a company started by former employees of the plaintiff, and the letters to customers alleged many wrongs including RICO violations.  There were also some questions about what the injunction prohibited.

2007-1116  FOREMOST IN PACKAGING V COLD CHAIN (Rader Schall Linn) 08-06-07 (1 of 5 stars)

This is an appeal from summary judgment of noninfringement relating to some sort of package.  The argument was all very fact specific and I could not understand it.  Lot of discussion about the geometry of a “product cavity.”

2006-1583  DOLBY LABS V LUCENT TECHNOLOGIES (Rader Schall Linn) 08-06-07 (2 of 5 stars)

This is an appeal by patentee Lucent from a Rule 11 sanction – Lucent asserts that the defendant’s marketing literature said the products include the accused feature (Dolby AC-3 technology), but it appears that Lucent might have waited too long after receiving relevant depositions before dismissing its claims.

2006-1579  SAMSUNG ELECTRONICS V RAMBUS (Rader Schall Farnan) 08-07-07 (2 of 5 stars)

This case warms the heart of an appellate geek like me because Rambus was appealing to establish that it had no right to appeal.  Specifically, the district court had made some very unfavorable findings but had ultimately refused to impose fees against Rambus, and Rambus wanted to establish that those findings would not be collateral estoppel in later suits, since those findings were not appealable.  The panel tried to get both sides to admit that they were forum shopping.  Rambus was represented by Richard Taranto.

2007-1091  IN RE BURROWS (Rader Schall Farnan) 08-07-07 (1 of 5 stars)

This is an appeal of an obviousness rejection for a system that generates a coupon relating to travel on a computer and stores it on the computer.  The applicant asserts that this is a great advance over prior systems that actually printed the coupon.  A paraphrase from the rebuttal argument:  “How could the Patent Office just operate of its own whim and caprice?  Aren’t we then back to where we were years ago, as just a nation of men, and not laws?”

2006-1266  ZENON ENVIRONMENTAL V US FILTER (Newman Lourie Linn) 08-07-07 (3 of 5 stars)

Appellant first argues that incorporation by reference requires great particularity – Judge Lourie seemed to think the incporation was pretty clear but related to something other than what the patentee (Zenon) wanted to incorporate.  On a second issue, the appellant asserts that there was clear lexicography in the patent that should control over all other claim construction considerations.  There was also a cross-appeal on claim construction, in that the district court allegedly read several limitations into the claims.

2007-1014  AMGEN V ITC (Newman Lourie Linn) 08-07-07

The question here is whether the research exemption of Section 271(e)(1) can apply to method claims that are performed outside the U.S., where the resulting drug is imported into the U.S.  The is also a subsidiary question about whether the wording of Section 337 (covering ITC actions) would make the result any different than if this were a district court action.

2007-1117  US PHILIPS V IWASAKI ELECTRIC (Newman Lourie Linn) 08-07-07 (2 of 5 stars)

This is a claim construction case for a patent on halogen lamps.  Th claims recite a halogen content around 10-4, and the patentee/appellant argues that such a recitation is different from, and broader than, 1x10-4 (at least to a skilled artisan in that field).

2006-1637  CAPITAL BRIDGE V IVL TECHNOLOGIES (Michel Schall Bucklo) 08-08-07 (1 of 5 stars)

This is a claim construction appeal from a summary judgment of noninfringement, and focuses around an interpretation of statements made by the applicants during prosecution.  The preambles required that something be “wirelessly transmitted,” and the district court found this limitation to be vitiated.  The appellant appears to argue that there nonetheless is no need for a wireless transmitter.  At 7:42, after counsel made an assertion, the court asked:  “That isn’t true, is it?”  There is also a question of whether the appellant was raising a new issue at oral argument.

2007-1132  EON-NET LP V FLAGSTAR BANCORP (Michel Schall Bucklo) 08-08-07 (2 of 5 stars)

This is an appeal from a summary judgment that Flagstar has a license, and imposition of sanctions.  The appellant argues that, to get there, the district court messed up its sua sponte construction of “document file” (or something like that) so as to not cover paper documents.  The panel questions whether the district court really did construe the claims in that manner.  The panel also wonders why the appellant did not ask for a Markman hearing after the district court seems to have made a claim construction on the way to reaching a decision on license.  In the end, it seems that the appellee brought a broad motion for nonliability based on license, and that the appellant may have, or may not have, been on notice at some point that claim construction was going to be a subsidiary issue for the general motion.

2006-1634  CLASSEN IMMUNO V BIOGEN IDEC (Newman Moore Farnan, Jr.) (2 of 5 stars)

The main question is whether the 271(e)(1) exception for FDA preparatory activities can apply to post-approval actions that are directed to FDA reporting that is not related to safety issues.  The secondary issue relates to whether the patents here are “research tools” and whether that matters.  Finally, there is a question whether the claims are invalid under Section as covering a mere mental process.

2007-1199  ASTELLAS PHARMA V RANBAXY (Newman Moore Farnan, Jr.) (3 of 5 stars)

This is a double patenting case with pretty clear facts:  the first patent covers a method of making a compound, and the second claims the compound.  The defendant/appellant questions how a compound could possibly be nonobvious in light of the process for making the compund.  Apparently, the district court had relied on the fact that the claims were in different statutory classes (though I don’t understand that point).  The appellant did not believe that the requirement for focusing solely on the earlier claims made any difference, and emphasized that “same invention” double patenting was in play here.  There was also some discussion about whether “effective amount” was sufficiently clear language in the prior patent.  The appellee seems to suggest there is some difference between making an invention-to-invention comparison (which is okay according to the appellee) and making a claim-to-claim comparison (which is not okay).  Under that logic, the appellee notes that the process and the compound are wholly different.  The panel shows concern about giving the patent an improper extension of term.  The appellee says it is okay, relying on the General Foods decision for the concept that the second patent can dominate the first.  There’s also a debate over whether In re Freeman has been overruled.

2006-1638  Z4 TECHNOLOGIES V MICROSOFT (Lourie Linn Bucklo) 08-09-07 (2 of 5 stars)

The appellant leads with a claim construction issue, asserting the district court erred in construing “user” to cover people and computers, where the claims and specification distinguish users from computers.  There is also a Section 102(g) issues here about a product initially developed outside the U.S., sold in Brazil, but reduced to practice before the critical date in the U.S.  Also, the district court had instructed the jury that corroboration must come form a single document, and z4 suggested that an inventor needs to be named for 102(g), and that it is not enough to show that an invention existed (and that there thus was necessarily a prior inventor).  Judge Bucklo asked whether the errors in instruction might have been harmless.  There is also a Section 271(f) issue in this appeal (although z4 says there is no 271(f) issue).  Disclaimer:  F&R represented Microsoft in this appeal. 

2007-1034  INTL GAMCO V MULTIMEDIA GAMES (Rader Friedman Moore) 08-09-07 (2 of 5 stars)

This is yet another case asking whether an exclusive licensee had sufficient rights to bring suit (i.e., to have standing).  Here, the assignment or license seemed to be territorial, though varying, i.e., wherever the New York Lottery operates.  This was an interlocutory appeal.

2007-1057  CARITAS TECH V COMCAST (Newman Rader Prost) 08-10-07 (1 of 5 stars)

This is a claim construction appeal that relates to teleconferencing, and centers around fact-specific issues that I could not understand from the argument.  Apparently, the main question is whether a “telephonic connection” is limited to an end-to-end connection, i.e., whether it is from one phone to another phone, or whether it is from a phone to a switch (which is not an endpoint).

2007-1074  SCHWARZ PHARMA V PADDOCK LABS (Michel Lourie Moore) 08-10-07 (2 of 5 stars)

The district court found that prosecution history estoppel blocked the DoE – and one question is whether this is a factual issue or a legal issue.  The technology relates to the use of magnesium oxide as a stabilizer against cycloization and discoloration (sp?).  Apparently, there was general interchangeability, but perhaps not interchangeability for the particular purpose here.  There are also questions of whether foreseeability is a legal or factual issue.

Federal Circuit Oral Argument Summaries - February 2007

These are VERY ROUGH summaries of the cases argued to the Federal Circuit in February 2007.  They are provided as a mechanisms for spotting cases that may issue in 3-5 months that have interesting issues.  Because of the disclaimers discussed in the January 2007 entry, they are not always complete or wholly accurate; listen to the MP3 of an argument (and get copies of the briefs) if you really want to know what is going on.  I did.

2005-1492  FESTO CORP v SMC CORP (Michel Newman Dyk) 2-5-07

This time around, the district court was tasked with determining whether two accused equivalent features were “foreseeable” when the applicant made the amendment.  She (Judge Saris) determined that the patentee did not meet its burden of overcoming the presumption, even though it presented evidence.  Judge Dyk (and the rest) asked if the equivalent was so unforeseeable as to be nonobvious, why should the patentee get to cover it?  They were not really satisfied with any of the answers; the attorneys and panel seemed to be looking past each other.  The argument was 1:30:00 long.

2006-1203  SYNGENTA SEEDS v MONSANTO COMPANY (Mayer Schall Bryson) 2-5-07

This is some sort of biotech, codon case.  The battle seems fairly fact-specific, and relates to whether JMOL of non-obviousness should be granted – this is a tough one for the appellant/patentee (I think Syngenta).  In addition, there is an issue (which seems to be closer, based solely on the argument) about whether the Syngenta patent adequately incporated another patent by reference, so as to pass the written description requirement – the question is how specific one needs to be in order to incorporate by reference.  The appellant is represented by Don Dunner; the appellee by Richard Taranto.  Note that these parties have a second argument this month also.

2006-1309  IN RE REED ELSEVIER (Mayer Schall Bryson) 2-5-07 (4 of 5 stars)

Reed is attempting to register LAWYERS.COM for its lawyers.com web site.  It seems to admit that the general website contains material that would make the mark generic, but argues that it has narrowed its description of goods to cover only a sub-set for which the mark is not generic.  Reed’s problem, of course, is that visitors to its web site likely will not understand what services the mark is covering and what it is not, and I suspect that is the reason for the rejection.  This could be an interesting case, as it seems there is little law in the area.  It was important enough that Solicitor Whealen arguedit himself (or maybe he just had nothing else to do).

2004-1440  ENTEGRIS INC v PALL CORP (Gajarsa Linn Moore) 2-5-07 (1 of 5 stars)

The district court granted a preliminary injunction, the defendant appealed, the defendant withdrew the appeal, and then the district court simultaneously dissolved the injunction (because new prior art brought into question the patent’s validity) and made a contempt citation.  The panel really challenged whether this was the sort of interlocutory appeal the court could here, since there is nothing appealable about dissolving an injunction and because the defendant was no longer appealing the grant of the injunction.  The cross-appellant wanted there to be jurisdiction so that it could challenge the dissolution of the injunction.  The appellant argued that the injunction was modified when the district court applied it against colorable imitations of the infringing products—the panel really was not buying this argument.  The appellant was also trying to rely on the cross-appeal as establishing jurisdiction.

2006-1371  IN RE PETRUS ACM NUIJTEN (Gajarsa Linn Moore) 2-5-07 (5 of 5 stars)

This is the big case about whether a “signal” can be patented.  The facts present the issue well because the invention really is part of the bits and bytes of the signal, i.e., the invention is relates to marking a file (typically represented by stored or traveling bits, thelatter of which is a “signal”) so that it can be identified such as to stop piracy.  The court seemed to think it had to resolve two questions: (1) whether the signal is something more than a mere idea or product of nature, and (2) whether the signal was “tangible.”  The Patent Office said it was only energy, not matter, and was thus intangible, while Nuijten (an employee of Phillips) said it was no less tangible than a lightening bolt.  Interestingly, Nuijten argued that the signal fit under both the “manufacture”  and “process” categories of Section 101.  Associate solicitor Chen did a very nice job and earned himself credibility with the panel (and me) by providing clear, honest answers to fairly difficult question.  Although this was definitely a “low energy” argument, both attorneys did a nice job.

2006-1497  POLYPRO v ADDISON (Gajarsa Linn Moore) 2-5-07 (1 of 5 stars)

This is an on-sale bar case, where the appellant says there is no evidence the patented invention was sold before the critical date – apparently, appellant’s position is that the judge connected general admissions about sales to the patented invention when there was no evidence to make the connection.

2006-1240  ORMCO CORPORATION v ALIGN TECH (Lourie Dyk O’Malley) 2-6-07 (1 of 5 stars)

The district court imported an “automatic” operation limitation into the claims when the claims plainly had no such limitation, but there was a clear disclaimer in the prosecution history.  The battle was over whether that limitation could be snuck into the claim.

2006-1429  IN RE LEVINE (Lourie Dyk O’Malley) 2-6-07 (1 of 5 stars)

The invention relates to some sort of overlay paper that is placed on a graphing machine.  The appellant did not make entirely clear what limitation(s) was missingin the prior art.  There was also an issue regarding whether the appellant raised motivation to combine as the only argument on obviousness in his opening brief, and then whether he added certain deficiencies in the prior art in his reply brief or at oral argument (waiver).  The case suffered a Rule 36 affirmance.

2006-1504  PODS v PORTA STOR (Lourie Dyk O’Malley) 2-6-07 (1 of 5 stars)

The microphone was not good on the appellant, so it was hard to tell what was going on.  The defendant/appellant raised ten or more issues, apparently, but focused on claim construction, arguing (based on statements in the file wrapper) that a certain claimed frame had to go all around a particular container.  The appellant argues that it could have won on obviousness had the district court not improperly excluded its expert.  In addition, the district court granted JMOL of infringement under the doctrine of equivalents, and Judge Dyk really questioned the appellee that holding.  The appellee says that the appellant never raised the point below, but Judge Dyk notes that the appellant waived its right to argue waiver on appeal.  I could not understand what the parties were raising in this appeal.

2006-1244  DESIGNING HEALTH v ERASMUS  (Michel Rader Schall) 2-6-07 (2 of 5 stars)

In an earlier appeal, the Fed Cir apparently held, as a matter of law, that the appellant had not proven damages for its fraud claim.  Somehow, appellant is back up and is arguing that it should get another trial on damages.  Appellant makes an argument that it has sufficient evidence, and that it tried unsuccessfully to get in at the first trial.  The appellant does try to raise 7^th amendment and due process issues, and also cites a Supreme Court case for the first time at the argument.  There were a number of interesting arguments.

2006-1506  DATATREASURY v ELECTRONIC DATA   (Michel Rader Schall) 2-6-07

This was a venue battle.  A first case in the ND Tex was coming close to trial (though the judge had made no Markman or SJ rulings, and thus had not invested too much in the case) when the judge dismissed it in favor of another case by Datatreasury against a bunch of defendants.  EDS said the judge abused his discretion in finding that judicial economy was a good reason to transfer, since so much work would need to be repeated in the ED Tex case.  The panel was all over EDS because of the deferential standard of review, and all over DT for wanting to have the case in the ED Tex.  Example questions posed to DT:  “Why do you supposed your opponent is so afraid of ED Tex? …  Why do you so want this case to be in the ED Tex?”  The case suffered a Rule 36 affirmance.

2006-1260  ACUMED LLC v STRYKER CORPORATION (Gajarsa Linn Moore) 2-6-07

This is a fairly fact-specific claim construction case.  The appellant accuses the district court of relying too much on dictionaries.  The main dispute seems to be whether a “curve” must not include an “angle” (apparently a sharp change in direction) to it.  The appellant’s product apparently includes such a sharp change in direction.

2006-1542  HENKEL CORP v PROCTOR & GAMBLE (Gajarsa Linn Moore) 2-6-07

In this interference, the issue on appeal relates to the burden to show appreciation of reduction to practice.  The invention is a detrergent that maintains some detergent capability past a pre-wash cycle (I think it’s those little packs you put in your disjwasher), and the appreciated (or perhaps unappreciated) feature was a dissolution rate.

2006-1294  REGAL ELECTRONICS v PULSE ENGINEER (Newman Mayer Prost) 2-6-07 (3 of 5 stars)

This is a claim construction and vitiation case.  The patent covers some sort of signal conditioning device having a block near a “right angle turn” of some wires.  The accused device has two straight wires that intersect ata right angle.  The appellant says the district court messed up the claim construction by thinking of “turn” as a verb rather than a noun.  The panel did not seem to buy that argument, but was very interested in vacating on the vitiation point.  (The appellee argued that two straight wires were the opposite of wires that turn, so that there was vitiation.)

2006-1472  MONSANTO COMPANY v SYNGENTA SEEDS (Rader Gajarsa O’Malley) 2-7-07

Patentee Monsanto makes two claim construction arguments in asserting that summary judgment of noninfringement should not have been granted: (1) finding that a claim reciting “obtaining progeny obtained by the process of claim 1” was a dependent claim; and (2) adding functional language to the claim so that it covered only a plant rather than a gene.  On the first point, Syngenta apparently uses the stuff from claim 1, but performed claim 1 before the patent issued.  (Or the issue may be whether a process in which only the last step is performed after the patent issues, is an infringement.)  Monsanto also argues that the district court erred on enablement by holding that Monsanto had to enable all sorts of uses rather than a use.  The patents are the “Lundquist” patents; Ron lundquist has moved from being a very capable inventor to being a very capable principal at Fish & Richardson.

2006-1515  BIOMEDICAL PATENT v STATE OF CA DHS (Rader Gajarsa O’Malley) 2-7-07

This is yet another sovereign immunity case.  The state sought to intervene in a case and obtain discovery of positions taken by the appellant BiomedPatent.  It seems the state litigated for a long time before claiming immunity.  The state notes that it intervened in 1997, long before the Act blocking sovereign immunity claims was declared unconstitutional by the Supreme Court (but Judge Gajarsa notes that the state cannot unwaive its immunity). 

2006-1523  BYRNE v BLACK & DECKER (Rader Gajarsa O’Malley) 2-7-07

Judge Gajarsa opened by asking about the Fed Cir’s jurisdiction, since the counterclaim of invalidity was still outstanding – but the panel did not follow up at the oral argument.  (It sounds like it will in its opinion.)  On the merits, the appellant argues that the district court erred in granting JMOL of noninfringement for its string trimmer having a “guide structure” with a “generally planar … surface,” where the accused structure appears to use a wire.

2006-1330  BAUM RESEARCH v UNIV OF (Newman Friedman Moore) 2-7-07

The appellant university is appealing from a rejection of its attempt to assert sovereign immunity.  There are two potential problems: (1) the university did not raise the point until after trial (but does the jurisdictional nature of sovereign immunity excuse this problem?), and (2) the university entered a license in which it expressly agreed to be subject to the jurisdiction of the court.  However, the license was signed by someone who may not have had authority.  There was some question whether she had to have actual authority, or could also have apparent authority.  There was lots of discussion about whether she could have no right to waive immunity, but could still have the power to contract on the U’s behalf (she was apparently the head of the licensing department, so this could be a problem.)

2006-1496  LINQ INDUSTRIAL v INTERTAPE  (Mayer Linn Prost) 2-7-07

This case received a Rule 36 affirmance.  Judge Linn starts by noting that the appellant was raising 13 issues on appeal, so that perhaps none of them was particularly good – the appellant said that many flow from an alleged error in claim construction.

2006-1307  CENTRAL ADMIXTURE v ADVANCED CARDIA (Schall Gajarsa Prost) 2-8-07 (1 of 5 stars)

On the main issue, the appellant argues that the patentee’s certificate of correction should not have been issued because it made a substantive change (“osmolarity” to “osmolality” apparently, for measuring some blood property).  I would expect a precedential opinion in this case simply because the court has very little law in this area.

2006-1453  ARK WELDING v MEYER PRODUCTS  (Schall Gajarsa Prost) 2-8-07

The appeal challenges a grant of JMOL of no reasonable royalty damages, apparently – or perhaps a grant of JMOL of no willful infringement, where the defendant had a group of engineers study the patent.  The appellee raised a jurisdictional issue regarding payment of a judgment – apparently arguing that the payment created “full satisfaction” – but the question is whether the “full satisfaction” covered additional amounts that was at issue in the present case.  (The appellee argued that the Fed Cir had no jurisdiction.)

2006-1442  FRANKLIN ELECTRIC v DOVER CORP (Mayer Clevenger Linn) 2-8-07 (1 of 5 stars)

This is a claim construction appeal relating to whether “facilitate positioning“ requires physical contact to occur.  Although the appellant criticizes the district court for relying too much on dictionaries, this seems like a fact-specific case.  The appellee relies heavily on comments made by the inventors during prosecution.

2006-1455  YOUNG v LUMENIS (Lourie Prost Moore) 2-9-07

Appellant patentee appeals a judgment of indefiniteness (based on the term “near”) and inequitable conduct, for a patent on surgically declawing cats. The patentee asserts that a specific numeric limit is not applicable because the patients vary in size. On the inequitable conduct issue, the reference was ultimately submitted before the patent issued—and the Fed Cir has no case finding inequitable conduct in such a situation.

2006-1282  OSRAM GmbH v ITC (Newman Rader Dyk) 2-9-07

The appellant challenges claim construction of a patent covering white LEDs.  The question was whether a particular ingredient in an epoxy slurry was to be measured “by number” or “by volume.”  Judge Rader sounded very friendly to appellant OSRAM.  Apparently, it was customary to use volume, but it made more sense to use number—but the panel questioned whether there was testimony from an expert that it made more sense to use number.

2006-1465  L B PLASTICS v AMERIMAX HOME PROD (Newman Rader Dyk) 2-9-07  (3 of 5 stars)

The question is whether “heat welding” can cover a continuous line of hot metal adhesive – the patentee/appellant says the claim construction was too narrow and the district court erred in granting summary judgment of noninfringement.  Judge Rader thinks the prior art (which probably, in his view, renders the claim obvious) could prevent expansion of the claims to cover the accused products, and Judge Dyk wonders if Johnson & Johnston couldn’t be expanded to cover a situation in which prior art disclosing a certain technique is presented to the applicant, and then the applicant does not claim that technique.  The district court found the difference to be “foreseeable,” and thus ruled that it could not be covered by the doctrine of equivalents.  The appellant argues that “foreseeability” alone cannot block recourse to the doctrine.  Judge Dyk chastises the parties for marking too much material as confidential.  This panel might do something new to the doctrine of equivalents here.

2006-1329  TAKEDA CHEMICAL v ALPHAPHARM PTY (Lourie Bryson Dyk) 2-13-07

This is an appeal from a finding that the patent claims on some drug compound were not obvious.  The appellant argues that (1) the district court should have considered certain statements in a prosecution history to be part of the prior art, (2) the district court should not have allowed the patentee to show post-filing unexpected results, and (3) the district court erred in requiring Alpha to show complete predictability in order to prove obviousness.  The court seems to have erred on certain of the broader claims. There was also lots of discussion surrounding the issue of unexpected success.

2006-1364  TAKEDA CHEMICAL v RANBAXY LABS (Lourie Bryson Dyk) 2-13-07

This is an appeal from a finding of no inequitable conduct.  Judge Dyk had a lot of questions about what happened at trial, with respect to certain notebooks on which the appellant sought discovery that might have been important to the inequitable conduct issue.  It appears that thew claim is that the patentee should have disclosed certain internal testing with respect to an enablement issue. The district court may have granted summary judgment of no inequitable conduct (because the panel seemed to be pushing the appellee on this point).