Category Archives: Patents – Federal Circuit

Had the CAFC been Jurors, They’d Have Told the Judge to Grant a Directed Verdict.

A first read of Muniauction v. Thomson left a bewilderment – was this the worst CAFC decision of 2008, or one of the worse patents in a 2008 appeal.  Such thoughts continued, until the complete fog thinned to a thin veil of haze.  It’s a candidate for both awards.  Not that I aver any understanding of bond auction methodology, but within a broad frame of reference it’s an auction of instruments with price parameters.  To reinvent to patent that as a internet based business method would require some obvious dancing down by State Street Bank.  Then, for exemplary work in the field of de novo appeal judging, the panel chooses to disagree with the Examiner, the patentee, the jury and the district judge.  No real rules of law are necessary, it was a race to a result, because post-KSR and post-J. Michel’s speaking tour, bad patents need to be smote from the rolls over at the USPTO.

Jurors did not find clear and convincing evidence of invalidity, and the district judge found that that evidence of secondary considerations was substantial enough to sustain the jury’s verdict.  The CAFC felt, had they been out of their robes, and in their civvies sitting as jurors, they would have seen the obviousness of the subject matter and the error of that district judge’s ways.

The claim interpretation apparently was not disputed, but it whipsawed the patentee.  The judge construed an “automatic computation” step, and extended that to hold that this step did not need to be performed on the platform on which the auction was conducted.  In the prior art, this computational element was off-board, that is, it might be done on the bidder’s computer, then uploaded to the auction.   By one translation, that meant this element was not present in the primary reference.  Could it there then be evidence of obviousness that was clear and convincing?

Free of any requirement for a teaching suggestion or motivation to combine, the CAFC takes the patent grant down.  This decision, and its reliance on the earlier Leapfrog Enterprises case, signal a death knell to methods of doing business, which were known, then adapted to an internet or networked environment.

Again, this patent may not have been strong, nor the invention altogether novel, but for an appellate court to invalidate based on its view of a evidence that perhaps was a preponderance, shows the power of the CAFC to do as it thinks right.  It is not a court of review, it is a de novo court.

With Pavao, You’ve Got the Power.

In a non-precedential show of its power, the CAFC reversed de novo in another case involving a JMOL motion reviewed under Ninth Circuit law. In today’s ruling in Heuft v. IDC, the panel finds a prosecution disclaimer in a parent patent, applies that to claims later issued from a divisional, then rules in toto on infringement, even the 112P6 issue that was not in the record. What need is there for district courts?

Maybe its just happenstance that the Heuft decision follows reversals of JMOL rulings by the CAFC applying the Pavao v. Pagay (9th Cir.) precedent. Prior reversals include the CAFC decisions in CollegeNet, Wechsler and Callicrate (the castration tools case). What none of these rulings illuminate is what cases will be decided, fully and finally, on appeal, and what cases the CAFC will decide in part with other issues remanded for further consideration. When the record is complete, and a correct claims interpretation made in the district court or CAFC, then the case should be decided in toto. That’s perhaps why the leading case on this point is captioned SeaChange. In Heuft, the lower court trial never considered 112P6 equivalents, but the CAFC went the extra kilometer, and ruled that the accused apparatus never could be “structurally equivalent” to the claims as construed (that is, as narrowed on appeal by prosecution disclaimer of the parent claims).

Guess that the function, way, result inquiries were unworthy of further consideration. Finding prosection disclaimer, then extending it to related patents, deciding issues not presented to the jury, and reversing on the law and facts in a patent case by applying a regional circuit case that affirmed a JMOL ruling in a civil rights case, alogether strikes this observer as strongarming results.

This 13 Thing Keeps Coming Up Decisively.

There’s a lot to think about on a Friday – do I have charcoal, will it rain, how come I’m still working on Monday’s work, what the numbers on my paycheck mean – oh, and that it is the 13th.  For all those lucky birds who were born on Friday the 13th, what can you tell us about how that rolls you along the tao of life.

This 13 thing infects decisive aspects of CAFC rulings.  Probably one of the more empiric IP blawgers could insert a chart here that statisticizes how many district court rulings are affirmed because of the intervention of a #13 circumstance.  Consider:

A CAFC panel, or at least two of them, troubled over the statute of limitations issues because it had been “thirteen years after the first patent was issued” when “Schlumberger reportedly represented …that Schlumberger owns the Barstow inventions.” DDB Technologies, L.L.C. v. MLB Advanced Media, L.P., (Fed. Cir. Feb.13, 2008).

Patent geeks find no reason to doubt that “the Lemelson patents occupied the “top thirteen positions” for the longest prosecutions from 1914 to 2001.” Symbol Techs., Inc. v. Lemelson Med., Educ. & Research Found., 422 F.3d 1378 (Fed. Cir. 2005).

Almost for certain it was not a random decision that the U.S. government “began requiring [V-chip] functionality in television sets thirteen inches or larger.” Sony Electronics, Inc. v. Guardian Media Technologies, Ltd., 497 F.3d 1271 (Fed. Cir. 2007).

It too was notable that the CAFC, in sanctioning a troll-to-be, seized upon that infringement complaint in Eon-Net LP v. Flagstar Bancorp, (Fed. Cir. Sept. 27, 2007) being “virtually identical” to thirteen other complaints “filed against parties with greatly disparate business operations.”

It is no wonder that a “thirteen-day jury trial” was needed to navigate around the alleged infringement of a claim construed to encompass “an array of microphones” arrayed around your skullcase. Medtronic Navigation, Inc. v. BrainLAB Medizinische Computersysteme GmbH, (Fed. Cir. February 7, 2007).

Certainly, one of refined taste for the bubbly {me} has no need for “applying the thirteen factors set forth in In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973), without deference” to negate a likelihood of confusion between a flute of Veuve Clicquot, the finest champagne of all, and some kid-sip marked Veuve Royale sparkling wine. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369 (Fed. Cir. 2005).

Some think these cases were decided on CAFC precedent, but there too is the deci-trio cum detritus theory of random order selection – chart please.  If your CAFC case gets a docket number that includes the #13, then wonder, ‘is it a sign?’

As I Had Said, I’m Saying What I Claim It Means.

June is off with a CAFC case in which the same counsel that prosecuted the patent argued for a non-literal interpretation of the issued claims.  If the client thinks that the patent you prosecuted will protect against infringement, then when you are asked ‘does it cover this,’ you may wonder how Markman would interpret the saying, ‘in a pickle.’  In Helmsderfer v. Bobrick Washroom, the fascinating market for baby-changing stations is at issue, and specifically, the embodiments of anti-vandalism stations.  That’s those things on the wall in airport restrooms where you set your laptop case while you’re downloading.

The patentee, through counsel, had claimed that an element was “partially hidden from view.”  Apparently, the accused element was totally hidden, but the patentee, through counsel, argued that to be hidden totally is also to be hidden partially.  That’d be completely partially – you know, like totally, dude.

You may’ve read many cases on claim differentiation, but this one is not the usual independent/dependent application of the doctrine.  Here, the patentee in other, non-litigated claims used the modifiers, “at least” and “generally.”  So, the CAFC applied differentiation to conclude that if you meant that the element was ‘at least partially’ hidden, then you would have so claimed it – you did not, and it will not be interpreted as if done. 

When the CAFC invoked claim differentiation to interpret claimed terms based on terms in other, non-litigated claims, the patentee in a move reminicent of Spy v. Spy, rejoined that the CAFC’s resulting interpretion was contrary to its oft-stated proscription against interpretations that end up not covering the preferred embodiment.  So, in a further Spy v. Spy manuver, the CAFC retreated within an appellate wall that kept it from determining whether any other, non-litigated claims might cover the preferred embodiment.  That closed the circle, which started with the CAFC looking at the other, non-litigated claims when applying claim differentiation, then refusing (like Lot’s Wife) to look there again.  Ah, to have the unfettered whim of de novo review – it’s so liberating and it makes everything come out the way you wish it to.

The point of this, and a recent post, is that you can convince your client that the patent he obtained from your prosecution will provide all the needed protection, but you may be unable to convince a court of that point.

Representing Your Own Exceptional Prosecution, Less Often.

Take an unscientific sample (1 month of CAFC rulings), sum how many times attorneys who prosecuted the application also presented the case in court, and draw nebulous conclusions therefrom (and before the month is over).

In May, there were 13 decisions where the attorneys named on the issued patents could be compared with those listed as counsel of record (in others, the attorney or firm went unnamed on the patent). Also, there was reason to put aside those cases where the litigant was an assignee of the patent/s, since that made it less likely that the prosecuting attorney still had a client relationship with the litigant. In the remaining ten cases, there were three where the same attorneys prosecuted the patent and litigated the infringement case. That the figure was over a quarter of the sample was surprising.

When the District Judge or CAFC is interpreting the claims based on the intrinsic evidence, i.e., the work of the attorney now litigating the patent case, there must be occasions where counsel advocates, but does so based on first-hand knowledge. What did an amendment or argument mean, or what was the applicant’s intent; what happened when the examiner was interviewed; what prior art was known but not disclosed, etc. Seems like a difficult task, and one that involves putting one’s own work between the crosshairs of the lawsuit and the client’s best interests.

In today’s ruling in Cat Tech v. Tubemaster, the CAFC titles a section “Semantic Antics” to describe one claim interpretation argument. Another passage calls a construction argument “strained” to the point that it “renders an important claim limitation …fundamentally meaningless.” Understanding your own wordsmithing is easy, but getting an accused infringer or a court to understand it in the way you had hoped for is less than easy.

Rule from 1880’s Against Broadening Amendments In Reexams Is Non-Precendential.

Today’s CAFC ruling in SWBT v. Collins, (5/27/2008), affirms a ruling that, in part, disallows an amendment in the reexam of a patent in litigation. The rule prohibiting broadening amendments in reexam goes back to the Bridgeport Brass, 104 U.S. 350 (1882) and Coon, 113 U.S. 268 (1885) cases, but a century later, the patent statute has set the standard in 35 USC 305. According to today’s opinion, the CAFC last looked at section 305 over ten years ago. Why isn’t the issue presented in Collins case worthy of a precedential ruling?

The panel holds that Collins could not use reexam to amend to avoid, i.e, to “address an adverse claim construction” by the district court. That point of emphasis may, or may not, align entirely with section 305, which says nothing expressly about claim construction avoidance. The statute first is permissive, not preclusive: the patentee “will be permitted to propose any amendment …and a new claim or claims thereto, in order to distinguish the invention as claimed from the prior art …or in response to a decision adverse to the patentability of a claim.” It continues with the limitation that “No …claim enlarging the scope of a claim of a patent …will be permitted in a reexamination.” There thus are three subsets of amendments proposed in reexams – (i) to “address” a claim construction, (ii) to distinguish from prior art, or to respond to an adverse patentability decision, and (iii) to enlarge the scope of a claim. The lines around those groupings may, or may not, define exact territories, and the boundaries between those may be uncertain.

This recalls the broadened area of “surrendered territory” debated in Hilton-Davis, and the interpreted breadth of the “sealing ring” limitation added in a reexam in Festo.

The section 305 issue is hardly certain in precedent, and the CAFC’s 1994 Freeman case came before the Hilton and Festo rulings, and moreover, the real issue of permitted amendments is less about the patentee’s intent or objective and more pointed on the scope of the proposed amendment. All of these bore in favor of an in-depth, precedential ruling on section 305, and not to pass the issue presented in Collins into the nonprecedential icebox.

Patent Sharks and a Euro Perspective on Circumnavigating Them.

The June issue of Harvard Business Review published the opinion and suggestions of Prof. Henkel of Munich Univ. of Tech., and Asst. Prof. Reitzig of the London Business School, about the pursuits of “patent sharks” in the U.S.  While no mentions of the CAFC, or of any past or proposed patent reforms, was refreshing, the Professors’ assessment and suggestions offer an unlikely way forward.

One repeated premise is the problem of “hidden” patents, and companies’ lack of awareness until being sued for infringement. Drawing upon the lurking “shark” metaphor, the article highlights the “kind of patent [that] remains hidden” and the problems “When patents are hidden.” How are patents, hidden? It notes that “Had Boston Scientific known of [Dr.] Saffran’s patent while” it was developing its stent, then “it most likely would have invented around his [Saffran’s’] technology.” My reaction, knowing little about that infringement case, was why would a company proceed to market in a crowded field of art like stents without going to school on all the prior art? To launch a $1B product, without having “known” what was in published, issued patents, and not having “known” in 2003 of an ‘invent-around’ option for a patent issued in 1997, seems like taking on avoidable, forseeable risks.

Another premise is that only “sharks” can obtain never-commercialized patents at, for example, a bankruptcy sale. What keeps tech companies from buying at fire sales, when the bankrupt was known to be doing development in their tech space? Again, these sales are on public notice, and open to the public – not hidden. If some start-up tanks, and it has the earliest-filed patent application in your company’s field of art, then get someone over to the auction to bid.

The Professors set out five suggestions. Numbers 1 and 5 urge fewer patents. #1 says to “move away from building huge patent portfolios” because that IP cannot be cross-licensed to a patent shark to end litigation. #5 says companies “must stop flooding patent offices with insignificant inventions.” Both of these may be wise, but neither offer any certain means to avoid or negate infringement suits. Suggestion #2 regards standards-setting, and avoiding development where the core technololgy may end up patented by one company, i.e., the Rambus cases. My perception is that Rambus doesn’t fit the profile of a patent “shark,” but that their transgressions are more remediable. The suggestion #3 to work with “competitors early in the R&D” stage is consonant with new business models, but again, it offers little direct insurance against being sued by some non-operating, patent holding company. The suggestion #4 to get the patent lawyers involved earlier in the project is the proposal closest to providing meaningful defenses to newly-developed technology being accused of infringing obscure, but findable, patents.

The article is just one more voice on the topic, and a non-legal perspective on remedying the problem with offered solutions. By never mentioning the ‘iceberg’ or the ‘fog’ out there, from the jurisprudential, uncertainties over the meaning of patents and their scope, the article is a bit adrift and looking out only for sharks.

That Uncertain Region Provokes Tension in the Districts.

Ah, the smell of the first nonprecedential opinion and a cup of java to start the morning. In a judgment order, the CAFC affirmed the non-infringement ruling in Airgo v. ArvinMeritor. Was the uncertain region between interpreting the spec and importing elements into the claims mentioned? The CAFC mentioned nothing, but in reply to the patentee’s contention that the Markman ruling had “import[ed] a feature from the preferred embodiment into the claims” the uncertain region was noted by the District Judge.

However, there is tension between the principle that the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess, i.e., the inventor’s lexicography, and the principle of claim differentiation”.

The tension was around elements that were claimed as “tubular” and “flexible” (callling to mind my two-hour interview with an examiner over the relative breadth of the terms “cylindrical,” “tubular,” and “hollow” ;and another time debating “resilient” versus “flexible”). The noted “tension” did not subside entirely, because the Judge worried he may not have navigated the uncertain region correctly. In denying prevailing party and exceptional case attorney fees, the District Judge all but acknowledges his uncertainty about claim intepretation as one factor that negated a finding of bad faith:

“Plaintiffs’ patent infringement claim was certainly not objectively baseless. The single most difficult issue in this case was construction of the claim term “tubular member” in Claim 1 of Plaintiffs’ ‘645 Patent. It was certainly at least arguable that the “tubular member” as used therein could be flexible, rigid or part flexible and part rigid depending upon the precedence given to differing rules of claim term construction.”

Should district judges, after reading all the CAFC rules of interpretation, be left wondering about what ‘precedence [need be] given to differing rules of claim term construction?’ Guess that the Airgo appeal was not the sort of ‘vehicle’ the CAFC looks for to re-map the uncertain region between interpretation and importation.  
It sort of was Don Dunner week at the CAFC. In this week’s rulings, Mr. Dunner represented appellants in Airgo v. ArvinMeritor, in Mangosoft v. Oracle, and in Aventis Pharm v. Amphastar. But then, maybe it wasn’t the week that Dunner hoped for, since the CAFC affirmed in each case.

I can CAFC clearly now that No. 2 infringes.

The CAFC acknowledges the need for split brain logic when assessing that ‘branch’ of res judicata known as claim preclusion, as just set forth in Acumed v. Stryker. On claim preclusion standards, the CAFC followed the law of the regional circuit, but when it determined what “claim” is or may be precluded by a prior adjudication, the CAFC relied on its own law. Is a blended rule necessary, or an exercise in conspicuous judging? Most circuits follow a Restatement approach, so the CAFC ought to follow in line. If that doesn’t get the CAFC where it wants to be on the issue, then it should disregard the regional circuits and hold that patent litigation preclusion requires a rule applied exclusively in patent cases. “Where, as here, the issue of claim preclusion heavily implicates the patent law, we apply the applicable Federal Circuit precedent. See Hallco, 256 F.3d at 1294; Kearns v. General Motors Corp., 94 F.3d 1553 (Fed. Cir. 1996).”

Next, the Acumed decision creates an impression of being result-oriented, rather than genuinely analytical. The key issue was whether infringement of a known, but unpleaded, device was preserved for later litigation after a judgment on the merits about a related or earlier version of the device. The governing rule would seem to be the “essentially the same” standard set down by the CAFC in Hallco v. Foster, but this panel works about and around that to reverse, and so, allow the second infringement claim to survive claim preclusion. It seems a result-seeking analysis, when one considers past statements about whether an assertion that ‘could have been’ presented is barred by the doctrine of claim preclusion.

“Claim preclusion refers to “the effect of foreclosing any litigation of matters that never have been litigated, because of a determination that they should have been advanced in an earlier suit.” 18 Charles Alan Wright, Arthur R. Miller & Edward H. Cooper, Federal Practice and Procedure § 4402 (2d ed. 2002); see also Nevada v. United States, 463 U.S. 110, 129-30 (1983) (a final judgment is “a finality as to the claim or demand in controversy . . . not only as to every matter which was offered and received to sustain or defeat the claim or demand, but as to any other admissible matter which might have been offered for that purpose” (quoting Cromwell v. County of Sac, 94 U.S. 351, 352 (1877))).

Did not the CAFC so state, weeks ago, in Nasalok v. Nylok (4/14/08)?
So then, how true is, this week in Acumed v. Stryker, that:

“None of these cases, however, support Stryker’s contention that a claim is barred by claim preclusion merely because it could have been raised in a prior action between the parties that was resolved on the merits. “

Once thought is given to whether the 2nd claim may survive under the regional circuit law, then the ‘could’a, should’a’ rule of Acumed v. Stryker is your get out of jail card.

Still the Most Unclear Region in the Area Between the Described and Claim Embodiments.

In a semantic universe created perfectly, where all lines and orbits are uniform, there would be no need for Markman rulings. Everything would be clear. If that universe was instead, near-perfect, then the interpretive rules would uniformly delineate when the description of the preferred embodiment is done to provide an enlightened interpretation, and done to avoid importing limitations into the claim. In our world, each CAFC ruling on the subject stands as a pillar, separate from others in result, but with a monolithic reliance on the same interpretive rules.

Decided today was Lucent v. Gateway (CAFC 5/8/08) involving a claimed “terminal device” that may or may not be confined to a ‘smartphone.’ The CAFC takes one sentence to dissect the twin levels of analysis that only those registered to practice before the PTO tend to grasp. “We agree with Lucent that the smartphone in the Detailed Description is merely a preferred embodiment but disagree that it cannot be considered in interpreting the meaning of the claims.” If a mental scalpel can slice that apart, then before sewing it all up, consider first whether the applicant had disclaimed or is estopped from so “interpreting the meaning.” That procedure entails not only the region between interpretation and description in a confined area, but is more broad, since any alleged disavowing “statements by the applicants must be read in the context of its overall argument “. Not here, there; no there, and there; you know what I’m saying.

In this case, the district court worked hard to apply CAFC precedent, and in that court and before the CAFC, counsel did a excellent job of arguing the competing rules and exceptions implicit in CAFC jurisprudence.
It’s a “terminal device” for the love of Pete, is that term all that hard to interpret? Yes, in an imperfect universe with misaligned, asymmetric rules of interpretation.