March 30, 2007 by thomason.

According to the CAFC rules, a nonprecedential opinion is one not “adding significantly to the body of law.”  So then, why make new law, then mark the opinion nonprecedential.  This term of the CAFC might be called the ‘do-over’ term, in view of the number of appeals being reviewed for a second time, e.g., Liebel-Flarsheim, AquaTex, Transclean, E-Pass, Fuji (Jazz), Aspex, etc. 
Add to those, AFG Indus. v. Cardinal IG, (CAFC 03/30/07).  Over a dissent, the panel goes nonprecedential to create “exceptions” to a well-grounded rule of interpretation for product claims.  Quare: when a 2-1 nonprecedential ruling creates exceptions, may those “be employed or cited as precedent”?  CAFC Rule 47.6(b).  We’ll wait until that ‘tree falls in the woods’ and see.

The better rule was that patent claims for a product are “not limited to the process by which it was made.”  Vanguard Prods., 234 F.3d at 1372.  Without citing a case, the AFG Indus. (II/IIIrds) panel baldly states there are “exceptions” to that rule “when the validity of the patent depends on the use of a particular process.” 

With no case on point to cite for these “exceptions”, the 2/3rds panel opts for the maxims of “construed so as to sustain their validity” and the “statutory presumption of patent validity.”  If the ‘construe for validity’ tenet has validity after Liebel-Flarsheim, and also, lends itself to creating “exceptions” to the rule on construing article of manufacture claims as articles and not as products of any process, then does not this nonprecedential ruling add “significantly” to claim construction law?  The supposed caveat to any broad application of these “exceptions” is in the last clause of the same sentence, which perhaps limit application to product claims, whose validity depends on use of a particular process, but only “when such construction is supported by the record.” M’excuser?

In the beginning there was a rule, which begat exceptions, and from that were spawned limits on applying the exceptions  – what then became of the rule.

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March 28, 2007 by thomason.

In a patent for a “combination money clip and [credit] card holder” for “removably retaining paper currency [folding money] and cards therein,” the District Court ruled that:  “One-piece holder’ is construed as ‘a holder having no parts that separate from the unit during normal operation and containing no parts that are not integrally formed.’”  Storus Corp. v. Restoration Hdwre., (N.S. Calif. 3/22/2007). ISINIP note: “holder” means “holder” but “one-piece” means much more.

Patent “claim construction is an analysis wholly independent from plaintiff’s theory of infringement and is not influenced by such.”  Baldwin Graphic Systems v. Siebert, Inc., (N.D. Ill. 3/21/2007).   ISINIP note: does that suggest an essential defect in the precedential approach. 
“Hence, our construction of the claim term is not importing a limitation from the specification, but construing the claim in the context of the necessary limitations in the patent itself.” Id.  ISINIP note:  No confusion is reasonably foreseeable from this distinction drawn by the CAFC.

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March 23, 2007 by thomason.

Having patents accords the holder so much due process that it isn’t funny.  Liebel-Flarsheim docketed in 2001 (or earlier) a suit for infringement of a patent that issued in 1993, from an application divided from a 1991 parent application.  Liebel got all the due process accorded a patent applicant in the USPTO’s ex parte procedures, then all that a patentee plaintiff gets in district court when suing for infringement.  Liebel too, was due two appeals to the Federal Circuit, and the due process rendered there, was reversal of a summary judgment of non-infringement (Liebel 1), and affirmance of findings of infringed, but invalid (Liebel 2).

Liebel 1 is a pre-Phillips v. AWH decision on claim interpretation.  It courses through the vagaries of “importing” from the written description as apart from reading “in light of” it, of claim differentiation, of the “single embodiment” rule, and of “objectives” in the specification being read as limitations, and the presumptions against those and how rebutted.  Don’t go trying to find any of those constructs in the Patent Act, because none are the words of Congress made manifest.

Liebel 2 steps out onto the slippery surfaces laid down in 1.  The CAFC, being limited in its jurisdictional charter to only review the record, must embrace the claims interpretations ruling and dicta from Liebel 1 and the remand of 1.  Liebel, which overcame arguments of importing, singularity, differentiation, and presumptions in 1, now had to pass under the never-clear wand of enablement in 2. 

Let’s hold up, and take a question from the back, ”Yes, what is the CAFC’s doctrine on enablement?”  “The doctrine enables the use of Article III in our Constitution to operate as a grant of authority to legislate patent reform.”  Might I digress on that.  Even one skilled in the electronic arts can comprehend a “syringe” with an “injector” imparting “pressure,” so that one might too indulge in a presumption that, without unduly experimenting, those skilled in the syringe arts could fabricate those.  More often than ever, the CAFC invokes enablement to ‘trim down’ ever-growing fields of issued patents.  Each time you read a pending application for a wireless or web method of doing business, ask, is there enough here to enable all of this to be made?  If it is less apparent, than say, a syringe, then perhaps not.

Most commentators will seize upon the “irony” comment by the Liebel 2 panelists.  The patentee got so much breadth through claim interpretation, that it expanded beyond what the written description enabled one of skill to make and use.  Does not ever patentee want (1) breadth when its claims are allowed, and (2) breadth enough to capture the infringing embodiment, and (3) no more?  The retort of the CAFC to (1) and (2) is “beware of what one asks for.”  Magniloquent!

Due process allows the Court to expand beyond the actual controversy over one-for-one comparision between the claims and the accused device, and venture into whether a hypothetical artisan could, without undue experimentation, make and use something not plainly claimed, which something is not the accused infringing device.

All that due process is accorded to every patentee for only the few hundred dollars of filing fees charged by the USPTO.  Consider it like a 20-year eurail pass through the vagaries and curiosities of current patent jurisprudence.
Trivia: The optional name to this post was Dis-Enabling The Cincinnatians – why?  Because Liebel 2 quotes AK Steel v. Sollac often, and in both, fine Cincinnati patent lawyers were on the losing side of the enablement argument.

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March 22, 2007 by thomason.

Five months and three weeks have passed since the CAFC decided the motivation to combine, or TSM issue, in the Dystar case.  Since then, and with the intervening oral arguments to the Supreme Court in KSR v. Teleflex, the CAFC has shut down the channel that broadcasted obviousness rulings.  They decided non-infringement, anticipation, whatever, but no obviousness cases for nearly half a year.

Today, Judge Michel authored Pfizer v. Apotex, which casts into the TSM debate, and rules based on there being a requirement of a motivation, at least an implicit motivation to combine.  Now, it is time for the Supreme shoe to drop.

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March 22, 2007 by thomason.

The In re Seagate matter, still being briefed before the CAFC offers only one angle on some of the larger issues of attorney-client privilege in patent cases.  It’s not an all-in forum that would allow broadly applicable principles to be decided.  Watching those TV poker stars go all-in with a 9 and a jack does make you wonder, what’s the back-up plan – go back to selling real estate.  After the panel rules on In re Seagate what’s next, en banc or cert.?  Even then, it is just one case about how one boat tried to navigate the murky waters of selective waiver.

Petitioner Seagate vacillates, in its merits brief, between seeking a revamp of the fundamental rules, and urging enough action to relieve its one problem.  On page 6, it seeks one “clear rule …[to] foster predictability among courts,” but just before and after that, urges narrower consideration “in this factual setting,” and that, it’s case “may be resolved on the narrow” subsidiary question.  Simplistically, Seagate contends that having separate counsel, the one hired only to write the opinion letter, and the others hired to pitch the same defenses in court, entitles the client to twice the privileges – one for each attorney, and each insulated from the other.  The simple reply is that an alleged willful infringer could keep changing and adding counsel, whenever it wants or desires privilege protection anew.

The recently-decided Napster appeal, and some scars from my own litigation experience aided the effort to construct what an all-in battle over privilege in a patent case would entail, as follows.  Infringement suit begets a non-willfulness opinion letter.  One aspect of the opinion is invalidity, based on prior art, reasonably believed known to the patentee, but not cited to the PTO.  Trial counsel for the infringer signals intent to rely on the opinion, and to allege inequitable conduct.  The patentee seeks discovery of all communications related to what the opinion letter discusses, and the infringer seeks discovery of all communications related to the alleged fraud on the PTO, and the knowingly baseless infringement suit.  Both sides contend that no privilege remains, because of waiver or the crime-fraud exception.  That, is the all-in hand, the range of circumstances that would enable the CAFC to explore all the competing considerations about privilege and its exceptions.

Instead, the expected outcome of In re Seagate is another piecemeal treatment, sent into the same orbit as other fragmentary rulings on privilege.  Expect nothing here, any different than the piecemeal rulings on intrinsic & extrinsic evidence of claim meaning, or on the function-way-result or subject matter disclaimer-recoupment rules.  A result-reached, set out on well-worn figures of speech - a sword, a cloak, subjective intentions, a totality of circumstances, good faith and reasonable reliance.  It’s all in the next segment of another unfinished work.

What are the better solutions?  Set out procedural rules, as the 9th Circuit just did in the Napster appeal.  District courts, whether in the Eastern District of Wahoo or the Northern District of Citified, can apply stated rules more competently than metaphoric swords, shields, or prophylactics.  The simpler option, still, is to defer, until after decision on infringement and validity, all discovery on willfullness or inequitiable conduct.  That puts it when and where it matters, and prevents that discovery from aiding one side when the basic issues are being decided.

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March 21, 2007 by thomason.

The response brief soon is due on the In re Seagate mandamus petition over waiving the attorney-client privilege, even as to trial counsel, on matters addressed in an opinion letter introduced as a defense.  To partly paraphrase Charlie Manson, ‘Call me crazy, but’ has the CAFC been getting and granting more mandamus petitions?  Mandamus, which regards an equitable remedy when a ‘purely ministerial’ duty is not discharged, seems an odd way for an appeals court to create or clarify prevailing legal standards.  If the legal standards on “selective waiver” in willful infringement cases were clear, then mandamus might lie for disregard of those standards; but, applying unclear standards requires much more than a ‘ministerial’ act.

Ministerial means that “the duty in a particular situation is so plainly prescribed as to be free from doubt.”  Wilbur v. U. S., 281 U.S. 206 (1930); “But where there is discretion . . . even though its conclusion be disputable, it is impregnable to mandamus.” U. S. ex rel. Alaska Smokeless v. Lane, 250 U.S. 549, 555 (1919).  Would patent litigators give an ‘amen’ to one saying that the waiver issue after In re Echostar and the duty of care from Underwater Devices left patentees and infringers uncertain as to whether communications related to willful infringement remain privileged or become discoverable. Can In re Seagate clear it all up?

The present Seagate case, perhaps, was spawned by the noted In re Echostar footnote, which many understand as recognizing a complete waiver, even as to trial counsel, once an infringer signals reliance on opinion counsel’s freedom-to-practice letter.  District courts struggled with that aspect of Echostar, and their rulings went both ways.  In fact, before Echostar they went both ways.

Therein may lie one problem.  As a court of limited review, the CAFC panels put on their appellate blinders, and do microsurgery on an issue, as it arises in that one case.  Perhaps too, they remand for “proceedings not inconsistent with” their opinion, in that one case. After two or three of those, and a host of remand rulings by various Magistrates, an issue of discovery, such as In re Seagate presents, comes roaring back captioned as a petition for mandamus.  That Genesis does not lead clearly to Leviticus (origins that evolve into plain law).

Privilege and waiver law in patent cases is less about crystallized principles, than fairness hearings, justified with figurative language.  It ‘appears to evince a sword-and-shield strategy.’  The ’subject matter, being the same, enables evaluation of the infringer’s state of mind.’  Having ‘discharged its affirmative duty with a reasonably competent opinion’ discovery allows the ‘totality of the Read v. Portec circumstances to be illumined’ perhas with ‘clear and convincing evidence of willfullness.’  To some, the dialect that has grown up around the privilege/waiver issue is doublespeak for “I just feel like allowing discovery of all these privileged communications,” and here are some pithy phrases to justify that.

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March 19, 2007 by thomason.

Continuing with passages clipped from Markman rulings, review these:

“Therefore, the Court defines ‘tongue’ as ‘a protrusion extending distally from a side spaced inwardly from the top and bottom surfaces.’”
Alloc, Inc. v. Unilin Decor, (E.D. Wis. 3/8/2007).
-Quare: Does this cover speaking from only one side of your mouth?

“…regarding construction of ’said sealing portion being sufficiently soft to seal against an air flow tube, to form a radial seal against the air flow tube and cylindrical inner support’ …the Court concludes that the claim language has a meaning readily understood by one of skill in the art and does not require construction.”
Donaldson Co., Inc. v. Baldwin Filters, Inc., (D. Minn. 3/8/2007).
-Axiom: Plain is as plain does.

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March 19, 2007 by thomason.

The clarity of Federal Circuit jurisprudence often gets hammered.  The recent appeal and certiorari decisions in the Medimmune case, which spawned many (mini?) conferences on ‘what Medimmune means,’ today begat a ruling that, in two phrases, exemplifies the clarity of rulings on declaratory judgment jurisdiction.

 “…we conclude that the district court erred as a matter of law … Accordingly, we affirm. “
Cellpro v. Broadcom (CAFC 3/19/2007).  

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March 13, 2007 by thomason.

At death, an artist’s life is canonized by the art he has entrusted to the living.  It is saddening to hear that artist and professor, Ross Zirkle succumbed to cancer. 

History, law, religion, royalty, and common citizens all celebrate art, and so too, they revere the artist, who opens windows for us with their creative eye and inspired hand.  Their works, having been, as the law states “fixed in any tangible medium of expression,” enliven objects and domains, both observed and imagined by them, with the artist’s metaphysic.  When the artist dies, that metaphysic, that viewpoint, continues unchanged, and the windows that they have opened remain so. 

The enrichment, inspiration and instruction of this teacher and artist too remain with those who shared some time on this artist’s path through life.  R.I.P.

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March 12, 2007 by thomason.

Cuts and squibs from Markman rulings are now the chosen means to fill in the slow-newsday gaps between posts.  If ten judges can define ten terms of art in a fortnight, then would five persons of ordinary skill in the relevant art take as long.

An “item” as “used in this context would not include, for example, ‘cups of coffee’ which cannot be rented, but could include ‘bowling shoes’ which can be rented to customers.”
The term “movie” as ”used in the patents, was intended to include media such as documentaries, television series, cartoons, music videos, concert performance films, and instructional and educational programs.”  [quare: star vehicles; boy-meets-girl; westerns?].
Netflix, Inc. v. Blockbuster, Inc., (N.D. Cal. 2/20/2007). 

A court’s claim “construction need not be ‘extra right’ to avoid being wrong.”
SanDisk Corp. v. Memorex Products, Inc., (N.D. Cal. 2/21/2007).

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