April 30, 2007 by thomason.

I reprise my comment from Nov. 29th, after the O/A to the Court of Supremes.

“In the end, though, the outcome in KSR is predictably like the broadening done in Hilton-Davis and Festo.  The strict test will be supplanted by a more flexible standard for proving obviousness.”

Today’s KSR ruling acknowledges that the TSM approach does prove obviousness, and that there “is no necessary inconsistency between the idea underlying the TSM test and the Graham analysis.”  After that double-negative, the Court fails to pronouce a replacement standard.  It is ‘as they say’ now, and not what they said.

So, first, it was written that any of several modes of proof will work for equivalence, and now, that same sort of ’totality’ of proofs approach will be applied to proving obviousness.  All this provides is vagary, and one borne out of a 1952 statute that does not set explicit standards.  From that statutory omission, the minds of reasonable robed figures may disagree about what proves what and what standard might best apply.  But, they are unanimous in rejecting rigidity.

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April 27, 2007 by thomason.

Until the Supremes work their magic in the KSR v. Teleflex case, the district courts continue to apply the teaching, motivation or suggestion standard as a necessary element of challenging a patent as obvious.  Just last week, the summary judgment ruling in Semiconductor Eng. v. Chi Mei Opto. (N.D. Cal. 4/19/2007) cited In re Rouffet, Ecolochem and Dystar as requiring some TSM “if more than one prior art reference is employed.”  The TSM standard is even built-in to the Local Patent Rules in the N.D. Cal., “A plain reading of Patent Local Rule 3-3(b) indicates that OSTI is required to specifically indentify each combination and the motivation for the combination.”  Sick A.G. v. Omron Sci. Tech. (N.D. Cal. 4/24/2007).  This all may change with Teleflex but for now, it’s the law.

Indeed, the requirement of an initial disclosure that identifies the “motivation” element of an obviousness challenge, is set forth in many case scheduling orders, even where there are no local rules for patent cases.  One wonders how quickly the IP litigation bar can adapt to the new rules of proving, or defending, an assertion of obviousness.  It was somewhat of a surprise that the TSM issue was left out of the current proposal for patent reform.

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April 20, 2007 by thomason.

Claim construction to some is about context, and to others it is a pure definitional exercise on a per-word basis.  To talk the talk, one would talk like this.

For those unaware of what e-mailers of ordinary skill understand, the “claim term ‘E-mail message’ is construed to mean ‘an electronic message.’”  Digital Impact, Inc. v. Bigfoot Interactive, Inc., (N.D. Calif. 4/13/07).
 
If you’re a person of skill in the art of “creating realistic computer animations of characters,” then guess whether a “gesture action” is a “defined movement of joints over time which symbolizes or emphasizes an idea, sentiment or attitude,” or is it “body part undulation executed under the control of a set of coupled frequency and range signals.”  One expert opined that even the “casual pose” of an animated character would “entail at least some undulation,” while the other felt that the character movements are “random, rather than undulatory.”  The Court agreed that anime action was not about sentiment or attitude, but had to be “body part undulation.”  N.Y.Univ. v. Autodesk, Inc., (S.D.N.Y. 4/10/07).
 
Consider the best two ‘money-quotes’ from recent rulings on Markman issues.  The “fact that [one] construction arguably results in a partial (but far from total) redundancy …is an almost unavoidable function of the less than perfect precision of common English usage.”  NYU v. Autodesk.  A “sound claim construction need not always purge every shred of ambiguity.”  Acumed v. Stryker, (CAFC 4/12/2007).  Challenging those are remarks in fn. 2 of Acumed, which augur against forcing the “district court’s definition” to be “so concatenated,” and elevating the CAFC’s “de novo review” to be above “the atmospherics of the Markman hearing.”
 
Some people spend way too much time reading dictionaries. 

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April 18, 2007 by thomason.

The gateway toward patent reform legislation was narrowed in the Patent Reform Act of 2007, as described by Sen. Leahy in his statement summarizing the bills.  It eliminates the provision on inequitable conduct, which I’ve commented on in every forum open to me.  The 2007 version get down to the essential elements of “first-to-file” and “post-grant opposition,” which others have debated extensively.

The most interesting part of the new bill, IMO, was the provision granting jurisdiction to the Federal Circuit for interlocutory appeals of Markman rulings.  Whether the core problem is “patent quality” by the PTO or “activism” by the CAFC, the Markman rulings are where the rocket launches or aborts.  Interlocutory appeals should do as much to curtail the cost of patent litigation as anything proposed.

The provision, in the Senate bill, extends the “exclusive jurisdiction” of the Federal Circuit to appeals “from an interlocutory order or decree determining construction of claims in a civil action for patent infringement.”  Sec. 10(b).  This could expedite the litigants tasks in those districts, such as the N.D. Calif., where the Markman issues have to be part of initial disclosures, and rulings come earlier than in districts with no local patent rules.

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April 18, 2007 by thomason.

After affirming a rather routine non-infringement analysis, and remanding for a DOE analysis, the CAFC in Itamin v. Magnestar undertook review of a Rule 11 ruling.  It provoked the question, why is a Rule 11 analysis of the bona fides of a patent complaint reviewed according to the “law of the regional circuit”?  The effect is that the same patent complaint filed in various circuits may or may not be ruled frivolous.  Since patent suits, and the pre-filing investigation (if any), are issues that never reach the regional circuits’ dockets, then there’s not much “law of the regional circuit” to be applied by the CAFC.

In districts where patent suits are more frequently filed, it might be understood that to be adequate, a pre-filing investigation must involve having a claim chart prepared, and/or a validity chart, and/or buying and testing the accused subject matter.  In other districts, it is enough that some salesperson saw the competitor’s product, from afar, at a trade show - no test, no buy, no claim chart.

Thus, the CAFC rule of applying the regional circuit’s rule, is to have no Rule 11 standards for patent complaints.  At least it means that the rule is unknown, and as with many issues, only becomes known after the CAFC takes a look at it. 

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April 16, 2007 by thomason.

All that a federal complaint requires is a “short and plain statement of the claim.”  FRCvP 8(a); Swierkiewicz, 534 U.S. at 512 (2002) (a 28-word complaint).  Recently noted are complaints which turn a phrase finely, and which are quotable in press reports.  What is better - to plead ‘just the facts’ or more?

One new sort of allegation, is to plead the state of the law.  Our Supreme “Court further held that Sony was not liable for supplying the technology that allows the consumer to make such copies.”  20^th Century Fox v. Cablevision, (S.D.N.Y.). The “federal copyright law does not extend to protect a fictional charager in the abstract, outside of any particular storyline or work, since the character was and is an idea and concept and federal copyright law specifically does not extend to, cover, or preempt laws dealing with [that].” Friedrich v. Marvel & Sony, (S.D. Ill.).  No matter how you say it, these allegations will be answered with ‘pleads law not facts.’

Another new tactic is to plead the equities, even in a law case. “Industry observers noted this fundamental shift in the competitive landscape.”  Oracle v. SAP, (N.D. Calif.).  “Indeed, there appears to be a general consensus in the [TV &] film industries that DVRs do not violate the Copyright Act.”  Cablevision  “YouTube has harnessed technology to willfully infringe copyrights on a huge scale, depriving writers, composers and performers of the rewards they are owed for effort and innovation, reducing the incentives of America’s creative industries, and profiting from the illegal conduct of others as well.”  Viacom v. YouTube, (S.D.N.Y.).  Does any of that plead how “the pleader is entitled to relief”?  Rule 8(a)(2).

Essaying in your next IP complaint may get it noticed.  My favorite pleaded allegation (and one that cries out for answers) is:  “By day, taciturn and reserved with an outwardly tough demeanor, he hides the loss felt from the death of his father, Barton Blaze, the affection he feels for Roxanne, the love of his life, his guilt over his inability to save the life of Crash Simpson, the only father he’d ever known, and a heart of unparalleled concern for those around him.”  Friedrich v. Marvel & Sony (The “Ghost Rider” copyright suit).

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April 13, 2007 by thomason.

The blawgerific reports found here provoke numerous comments to be sent in, or do they?  Daily, about a dozen spam solicitations come into the comment box.  In honor of this dreizehn Frietag, here are some of the things offered.  Presumably clicking thorough to any one of them will work a hardship on my network appliance.

There are offers for Russian calling cards and Dobermans (do I need these?), for home appliance insurance and water trampolines (I can’t use these).  Some perhaps come from loyal, but odd, readers of this blawg, “I post naked.”  Then, there are those that either offer the obscure or the salacious, such as Ethiopian eunuch, chest freezer or garter bells {sic}.  And, those are all that I will admit to writing down before I deleted them.  The point is, comments are welcome, if germane.

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April 12, 2007 by thomason.

Today, the CAFC affirmed a refusal to register lawyers.com on the Supplemental Register.  Why? Because lawyers are “generic.”  More to my way of thinking was the point that whether the matter sought to be registered is, or is not, generic, is a question of fact.  That provokes the paradox, that as a matter of fact, lawyers are not generic, but the word lawyers is generic.  Perhaps Pee Wee Herman said it best: “I know you are, but what am I.”

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April 12, 2007 by thomason.

It comes as some surprise that last month, there were nearly 16,000 page visits to this blawg.   Yet, almost no other IP site or patent law blawg provides a link to this page.  It’s not on the leading lists, it’s not on Blawg Review, or Technorati, or digg, etc.  It too is a given that only a narrow segment of business people and lawyers have an interest in patent law and IP practice.

The level of traffic does keep me writing, and being curious, and searching for answers.  Thanks for visiting, and please come again.

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April 10, 2007 by thomason.

Predictable rules for interpretation of patents are among the most desirable features for CAFC jurisprudence.  Risk is measurable only to the extent it is predictable.  Two courts, looking at the same intrinsic evidence, should come close to the identical result when interpreting the same claim terms.  Fuzzy rules produce fuzzy, or incongruent results, as explicated in Comcast v. Finisar, (N.D. Calif. 04/06/2007).  That case interprets the same terms in the same patent as had been read in an earlier district court ruling from the E.D. of Texas.

An “information database” in Texas means “a collection of computerized information which can be accessed,” but in California that I-db means “a dynamic, structured collection of digitized data capable of being held in computer storage.”

A “hierarchically arranged set of indices” in NoCal means “a set of ranked indices used to reference data …with the higher-level indices giving access to the lower-level indices.”  However, in MarshTex, that same “hierarchical” index set simply is a “set of indices for referencing data in said information database.”

Even the more perceptible claim phrase, “downloading into a memory storage device” yields differing interpretations in the SanFran and Marshall courthouses.  The Texas construction is “transferring data into a memory storage device the data packets specified in the filter data,” and while in California, it “means transferring the desired data into a device capable of saving it for later access.”

Plainly, the two constructions are material different, such that the scope of the patent claim is difficult to ascertain, even after two rulings.  What will these terms mean when both cases reach the CAFC?  If Markman and Phillips do not enable judges skilled in the art of claim construction to reach the same or substantially the same interpretations, then the CAFC should try again to craft a predictable model for deciding what claim terms mean.  The Judge in California must expect an appeal, having offered the following remark on the reviewable record:  “[my] constructions are made without the benefit of the entire file history [which neither party lodged with the Court, and so] it would be most unfair for any party to rely on other file history passages [apart from those “few snippets” cited].”

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