June 30, 2007 by thomason.

It’s the week of too much sun {sp?}, drinking, and exploding things.  Too much cutting across the bow of another, revving that car that you’re too old to drive, flying the Cessna low over the beach, and all while in a general state of distraction about what the Judge or opposing counsel will do next.

Take care and enjoy the week celebrating our Independence.

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June 29, 2007 by thomason.

Perusal of this term’s rulings by the Supreme Court (or just the news-bites about them) informs that unanimity was less likely than predictability as to which block of Justices would take sides against the other on a given issue.  We’ll call that the ‘hotness of the button’ measure of scrutiny.

Another prevailing measure was the Court’s striking of mechanical rules, absolutes, and per se standards.  That may be consonant with the idea of ‘let the Judges judge.’  A cynic’s view is that, without clearly-drawn rules or by striking precdents that set mechanical tests, these judges are more free to inflict their own view on our cases.  It becomes harder to urge a judge to rule, when clear precedent states how to decide, than when the High Court has fuzzied up the standards.

In the patent cases decided this term, strict rules, set by the COA created by statute to establish precedent in patent cases, were made less strict, or stricken, e.g., Mercexchange and Teleflex.  Largely, the Justices negated the old rules, and replaced them with, well, depends on who you ask.  Did the Supremes decide anything, or were they against principles?  Consider these (unfairly snipped) passages from the patent docket.

They considered “the applicability of licensee estoppel under these circumstances.”  Medimmune, and whether, “under all the circumstances …there is a substantial controversy …of sufficient immediacy and reality to warrant” court intervention. Id.  “Under these circumstances, it would be imprudent for us to decide whether the District Court should, or must, decline to issue the requested declaratory relief.”  Id.    They re-conceived the Graham v. Deere inquiries, noting that, “While the sequence of these questions might be reordered in any particular case, the factors continue to define the inquiry that controls.”  KSR.  Noted too, was a need to ask “whether the facts of a situation require it to issue an injunction.”  Mercexchange.

In my experience, precedent that revolves upon “factors” and “circumstances” and “questions,” results in tossing everything to the jury or to a trial judge to decide.  Clear, well-delineated, rules of law and standards of proof => those tend to end district court cases, and to decide appeals - on the law, not on varied ”factors” or due to deference to “clear error” review on appeal. 

If you were older, or younger, then you would remember the “Word of the Day” on Pee-Wee’s Playhouse.  If you recall, when anyone said it, everyone had to “scream real loud.”  It’s a contest.  What was the “Word of the Term”?  IMO, the word was “plausible” as used in the cases on sufficiency of pleadings, but “circumstances” may be the precedential term that makes litigants “scream real loud.”

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June 26, 2007 by thomason.

First I’d read the briefs in KSR, then came oral argument, then I read the opinion.  All along, the question was what was the origin of this new, non-specific measure for obviousness.  Maybe the Supremes, or their clerks, had been reading old issues of The New Yorker magazine, or other articles about the saga of the late inventor of the intermittent windshield wiper.  That case in more well-known by the citation, Kearns v. Chrysler Corp., 32 F.3d 1541, 1545, 31 USPQ2d 1746, 1749 (Fed. Cir. 1994), cert. den’d, 514 U.S. 1032; Kearns v. Porsche, Kearns v. Ferrari 39 F.3d 1194, and 53 F.3d 335 (Fed. Cir. 1994), cert. den’d, 516 U.S. 820, and 62 F.3d 1430 (Fed. Cir.), cert. den’d, 516 U.S. 989.

Recent reading lead me to a 1993 interview with The New Yorker magazine, in which Ted Daykin, a former Ford engineer, disputed the novelty of Prof. Kearns invention of the intermittent wiper. Daykin claimed that Kearns’ “electronic timing device was an obvious thing to try next.”  He rhetorically asked: “How can you patent something that is in the natural evolution of technology?”   Draw the parallels, at the time of the 1993 interview, Deere v. Graham and the 1952 patent act were the law, now KSR is the law.  Daykin’s observations stood out as some engineering minds’ precursor to rhetoricals posed at oral argument in the KSR case, which later morphed into the Supreme Court’s decision, and holdings such as the following:

“The same constricted analysis led the Court of Appeals to conclude, in error, that a patent claim cannot be proved obvious merely by showing that the combination of elements was ‘obvious to try.’” * * * “When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under §103.”

The Justices of our Supreme Court are not automotive engineers, but they obviously think like them.

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June 26, 2007 by thomason.

Today the U.S. Supreme Court denied certiorari to the patent-validity & antitrust case, Joblove v. Barr Labs.

Joblove is the tamoxifen citrate case decided by the 2^nd Circuit, which affirmed the district court’s decision that a settlement between the patentee-pharmaceutical company and a generic manufacturer did not restrain trade in violation of the antitrust laws, and dismissed claims made by a class of consumers.  The decision explored the “tension” between the Sherman Act and the Patent Act, which share the goal of “goal of stimulating competition and innovation,” but which provoke a “tension between restraints on anti-competitive behavior imposed by the Sherman Act and grants of patent monopolies under the patent laws.”

Spin it which ever way a denial of cert. can be spun, but some may see it as a “pro-business” affirmance that rejects a ‘new’ type of antitrust action against the U.S. pharmaceutical manufacturers and their patent portfolios.

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June 22, 2007 by thomason.

While the Viacom v. YouTube (Google) lawsuit gets the most press, the earlier-filed Tur v. YouTube likely will tread the same path through the DMCA, earlier.  Just issued was an order denying cross-motions for summary judgment on the DMCA exemptions.  Judge Cooper observed that there “is clearly a significant amount of maintenance and management that YouTube exerts over its website [after videos are uploaded], but the nature and extent of that management is unclear.”  Summary judgment was denied, inter alia, because “there is insufficient evidence before the Court concerning the process undertaken by YouTube from the time a user submits a video clip to the point of display on the YouTube website.”

The ruling notes the pre-conditions a website must meet to be eligible for the DMCA safe harbors.  While not at issue on these motions, 17 U.S.C. Section 512(i)(1)(B) requires that the site operator “does not interfere with standard technical measures.”  The statute further explains that these are “technical measures used by copyright owners to identify or protected copyrighted works and [etc.].”

One wonders whether clipping the ‘money shot’ from a video, uploading that excerpt, and converting it to Flash or other view-ware, involves acts that “intefere with,” or that do not “accomodate” the technical aspects of the original work that “identify” it as that of the copyright owner?  The legislative history, and indeed the statute itself, suggests that these “standard technical measures” result from some standards-setting “process.”  17 U.S.C. Section 512(i)(2)(A).  However, the video format used by the copyright owner is one promulgated by a standards-setting process, esp. if the original was not in Flash.  On that basis, clipping part of it, and converting the format would be, IMO, interfering with a feature of the work that helps identify it.

Congress, in its heavily-lobbied wisdom, has shown some tendency to coin terms when writing laws that try to adapt copyright to emerging technologies.  Try to read the foregoing statutory provision on “standard technical measures” that are not to be interfered with, then skip to 17 U.S.C. Section 1202 and read the prohibitions against those who “intentionally remove or alter any copyright management information.”    There seems some possible overlap between “standard technical measures” and “copyright management information” since both deal with “identifying” information conveyed with the copyrighted work.

Whether YouTube can fit its model within the confines of the DMCA exemptions from liability remains to be seen, but unauthorized versions of copyrighted works will continue to be seen on YouTube until the law is construed.

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June 22, 2007 by thomason.

If your practice time permits, then print a copy of the Judge Hellerstein’s ruling sanctioning the law firms which represented the companies that insured the WTC.

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June 19, 2007 by thomason.

At the recent Senate Judiciary hearing, the Coalition for Patent Fairness offered remarks supporting the “Patent Reform Act of 2007″ through the testimony of the General Counsel of Palm.  Specifically, they “support interlocutory appeal to the [CAFC] from Markman rulings.”

Palm’s General Counsel (who is not listed on the USPTO Roster of attorneys) related a case history, which may or may not reflect a need for interlocutory appeals of Markman rulings.  A disputed claim term was construed, “favorably to Palm,” and the company was granted summary judgment.  That “claim construction was reversed” by the Federal Circuit, and remanded.  The “second Markman hearing” as to the claim term was decided “again to Palm’s advantage” and was “sustained on the second appeal” to the CAFC.   How is that any different, in timing, costs or outcome, than the contemplated interlocutory appeal of a Markman ruling?

Palm’s example, and the proposed interlocutory appeal, involve two appeals.  The cost the time from filing a complaint to final judgment, and the tasks necessary to reach that point, seem to be the same in the Palm example and if there were interlocutory, Markman appeals.  The difference is that, there would be two appeals in every patent case.  The Palm example involved two appeals only because the first Markman ruling was dispositive, presumably of non-infringement.  In other words, dispositive Markman rulings get appealed now, and promptly; the proposed reform would add non-dispositive Markman claim construction rulings to the appeal docket.

The threshold question is whether an interlocutory ruling is worth much.  An interlocutory order “is subject to revision at any time before the entry of judgment adjudicating all the claims and the rights and liabilities of all the parties.”  FRCvP 54(b).  At a ‘first’ Markman hearing, the judge MAY construe the then-disputed claim terms, or only some of terms may then be construed.  The construction MAY be tentative, and expressly, the Judge’s order may state it is subject to revision later.  So, is that appealable?  What if there are subsequent Markman rulings, are each one appealable?  Will it be necessary to wait until after all the infringement contentions, and all of the validity challenges are flesh-out before the Court is ready to interpret the claims - knowing that an interlocutory appeal will follow?  Let that be decided by the reformers, and their lobbyists, and the reform coalitions or consorts.

With that ‘first’ Markman ruling made and appealed, the matter will be remanded.  If error was found, the a ’second’ Markman will be needed (perhaps a 2nd interlocutory appeal, too?).  Central to evaluating the worth of these interlocutory appeals is the jurisprudence on interlocutory orders.  Only notions of stare decisis or the law of the case suggest that an interlocutory ruling will remain unchanged.  All that has to happen is more prior art to be presented, or perhaps supplemental expert reports, or a change in the law governing claim construction, and any interlocutory order might be changed based on ‘changed circumstances.”

Interlocutory appeals of Markman rulings may sound like a fix, but claim constructions that are dispositive get appealed now.  If claim construction is not dispositive, then does it make sense to stop the litigation of the dispositive issues, while the CAFC reviews the non-dispositive claim construction issues?  Even if they reject what the district court has done, on remand, a second, non-dispositive claim construction ruling will be the result.  How many mini-trials does it take to make one whole?

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June 14, 2007 by thomason.

My lunchtime reading was recent testimony to the Senate Committee on “The Future of American Innovation” (was that proposed as the name for a ride at Tomorrowland; no, that was “House of the Future”).  Having not spent my formative years inside the D.C. Beltway, it is an unknown whether legislative committees (like litigants) only call witnesses expected to provide helpful testimony; or is the approach more random.

Random choice resulted in a print-out of testimony from the Chief IP Counsel at Goldman, Sachs, appearing also for SIFMA, AB(ankers)A, and FSR.  Concern was expressed over “a system out of balance” and “in need of substantial reform.”  The organizations refused to be cast on either side of the reform debate, and noted was their willingness to finance innovators large and small.  No less testimony though was devoted to their status as patentholders, as well as potential defendants (scions vs. trolls, oh my!).  The guiding metaphor was “balance,” as in a see-saw needing to be “rebalanced.”  The fear was the see-saw now is “overweight” with notions based in the Industrial Revolution, and underweight on “value drivers of the knowledge economy” (those may include drivers in play at golf courses near Palo Alto).

The primary point was the represented financiers support for the post-grant opposition procedures in S. 1145.  No longer will patentees have to wait for an infringement to defend or to lose their patent, it could be immediate.  The testimony referred to untapped, and yet-unexamined “troves of prior art,” and how to “improve patent quality” with a “balanced mechanism for firms to inject prior art” into post-grant oppositions.  That injection would enjoy the added feature, not available in Court, that “the challenger need only prove invalidity under the more equitable [to whom?] preponderance of evidence standard [and] without the [pesky] presumption of validity.”

So, let us take up an example, using USP 6,975,996 assigned to Goldman Sachs for “Electronic Subpoena Service.” The `996 tries to solve the “lack of coordination amongst [gov’t] agencies conducting investigations” of financial institutions.  The claimed “computer-implemented” method receives the subpoena, associates it with a recipient, picks a method of delivery over communication networks, transmits it, and tracks responses to the subpoena.  Novel, useful, non-obvious – let the phosita decide.  The `996 lists 125+ prior art patent documents, and over 30+ lines of “other” art – ALL of which was examined under the pre-KSR standard for non-obviousness.  Indeed, a final rejection, based on anticipation and obviousness, issued against the application.  But, there it is today.

Consider this, the `996 issues post-KSR, and post-grant oppositions are permitted - how much might it cost Goldman Sachs to defend the invention, again and against those previously-considered 125+ patents, plus against an ‘injection’ from the “troves of prior art” in the files of the opposers, and when only a preponderance and no presumption are in play?  It likely will cost the patentee a lot, or about the amount of money that Goldman Sachs makes every 14 or 15 minutes.

Is our patent system constrained within “an ‘Industrial Revolution-era’ view of the world”?  Preaching pejoratives against the I. Revolution, and arguing for radical changes to protect the E. Revolution is a dicey proposition.  But, as the politicos best understand the quote from one denizen of Dogpatch: ‘if’n you ain’t fer it, yur agin it.’  Patent reform, priceless.

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June 14, 2007 by thomason.

My prior entry “About March” regaled about that month’s ”nearly” 16K visitors to this site.  My surprise continues, since in April and May, the visits were nearly 17K.  Thanks so much for your interest!

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June 13, 2007 by thomason.

A post on patently-o remarked about Chief Judge Michel’s efforts in providing comment and analysis to legislators considering reforms to the Patent Act.  It linked to a June letter from “Chambers” of the “Chief Judge” which criticizes a proposed revision on damages apportionment, and it closes with an offer to explain his “May letter to the Chairman”.  Since the letter is fairly pointed, it provoked inquiry into the appropriateness or limits on a sitting Judge communicating views, as a Judge, on pending legislation.  As with so many ethical issues, there are canons, comments and considerations, but then, few answers.

The general rule, applied to our federal judiciary, is permissive:

“A judge may … consult with, an executive or legislative body or official on matters concerning the law, the legal system, and the administration of justice to the extent that it would generally be perceived that a judge’s judicial experience provides special expertise in the area.”  Canon 4 (same text adopted in Delaware).

Even under that permissive version, this Canon of the “Code provides very limited circumstances under which a judge may consult with or participate in the other branches of government.”  Georgia Ethics Op. No. 233.

The version of Canon 4, in Ohio, New York and Arizona, negates the near-identical permissive statement, generally, subject to a pro se exception.

(C)(1) A judge shall not … consult with an executive or legislative body or official except on matters concerning the law, the legal system, or the administration of justice or except when acting pro se in a matter involving the judge or the judge’s interests.

The California version takes that further, and adds to the pro se exception:

(1) A judge shall not … officially consult with an executive or legislative body or public official except on matters concerning the law,* the legal system, or the administration of justice or in matters involving the judge’s private economic or personal interests.

The New Jersey version allows the Judge to “consult” but, only when the subject of the legislation is part of his judicial duties.

C. A judge may … otherwise consult with an executive or legislative body or official, but only on matters concerning the administration of justice with which the judge is charged with responsibility by the Rules of Court.

Some states place the issue under the broader topic of “extra-judicial” activities, and others slot it under the even-broader matter of “avoiding the appearance of impropriety.”

“A judge who spends a significant amount of time speaking out on legislative issues during the legislative session could be perceived as allowing those activities to interfere with the judge’s judicial duties, and could be seen as attempting to exploit the judge’s position.”  “A judge could not, for instance, … express an opinion on how a statute might be interpreted by the judge.”  Utah Ethics Advisory Committee Informal Opinion 01-1 (January 25, 2001).

Where then does this leave the question – should the Chief Judge lend his title to any particular legislative initiative?  IMO, it is troublesome.  So many commentators have divided the legislative proposals between those favored by one sector of the patenting community, or another.  To support one proposal nearly necessitates a disclaimer against the appearance that the Judge is aligned with one camp, and not the other.  To argue that text in a proposed statute has “shortcomings” and that it would result in “massive” expense, in “vastly more complicated” proceedings, and a “period of great uncertainly,” etc., may, or may not, be objective commentary from the Chief.

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