Posts in Federal Circuit

The clearly erroneous Wall Street Journal article in question was published on December 15, 2013, under the title Jimmy Carter’s Costly Patent Mistake. The article, written by Gordon Crovitz, seems to take the position that patents stifle innovation, although Crovitz thesis is not explicitly stated. As ridiculous as it is to suggest that patents stifle innovation, this ill-defined Crovitz thesis isn’t the major issue with the fiction published by the Wall Street Journal. Crovitz erroneously states that software was not patentable until the Federal Circuit changed the rules of patent eligibility. That is simply false. There can be no dispute or argument to the contrary. Crovitz is wrong.

The absolute truth known to everyone in the innovation community is that pioneering innovations become commonplace. What was revolutionary at the time the invention was made becomes taken from granted. In hindsight pioneering innovations look insignificant because they have become ubiquitous. The public, judges and critics find it difficult (assuming they try) to determine whether that which is commonplace today was really, truly obvious decades earlier as of the critical date. Even when an honest and fair obviousness inquiry is undertake it can be exceptionally difficult to put yourself back to before the invention was made in order to determine what was known and what was obvious at the time. But let’s dispense with the ridiculousness, shall we? The overwhelming majority of the world was not at all knowledgeable about or clued into the World Wide Web at the time this innovation was first made. So let’s dispense with the histrionics.

This ruling cannot stand, and the CAFC needs to step back from the brink. The CAFC has vastly overreached in Soverain v. Newegg, and it is imperative that the Supreme Court hear the case and that Soverain prevail. This attack on patent-holders and the adverse implications from the change proposed by Newegg are unprecedented, and would deal a devastating blow to any U.S. patent-holder, large or small. The proposed change would alter the law and effectively eviscerate the patent system.

In a non-precedential opinion issued October 18, 2013, the Federal Circuit decision calls into question the overall utility of forum selection clauses in contractual relationships. In fact, Eli Lilly lost its bid to have its dispute with Genentech and City of Hope heard in the Northern District of California despite having a forum selection clause in the governing contract that stated the parties would litigate any dispute in the Northern District of California.

Clouding IP Faces Inter Partes Review at the USPTO. ***** Goodlatte’s Second “Discussion Draft” of Patent Reform Legislation. ***** IPO White Paper Calls for Update to Patent Examination System. ***** The After Final Consideration Pilot 2.0 (AFCP 2.0), which had been scheduled to expire on September 30, 2013, has been extended through December 14, 2013. ***** Patent Litigator Becomes Managing Partner at Kilpatrick Townsend & Stockton. ***** The requirement for consonance applies to both the patent challenged for double patenting (i.e., the challenged patent) and the patent being used as a reference against the challenged patent (i.e., the reference patent).

The en banc Federal Circuit on September 13, 2013, heard oral argument on whether to overrule its en banc decision in Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998), and hold that claim construction can involve issues of fact reviewable for clear error, and that it is not entirely an issue of law subject only to de novo review. On appeal is the district court decision that a person of ordinary skill in the art would understand the claim term “voltage source means” to correspond to a rectifier or other voltage supply device. It thus rejected ULT’s argument that the term invokes Section 112 ¶6 and that the claim is invalid for indefiniteness for lack of specific structure in the specification. A Federal Circuit panel reversed in a nonprecedential decision, concluding from a de novo review that “voltage source means” does invoke Section 112 ¶6 and that the claim is invalid for indefiniteness. That panel decision was vacated when the appellate court decided to consider the claim construction issue en banc.

Not surprisingly, the decision of the latest Federal Circuit case on software patent eligibility – Accenture Global Services, GMBH v. Guidewire Software, Inc. – could be predicted from the makeup of the CAFC panel. Judge Lourie, joined by Judge Reyna, issued the majority opinion that the system claims were invalid. The Court followed the analysis for determining patent eligibility from CLS Bank, 717 F.3d 1269 (Fed. Cir. 2013) and affirmed the district court’s finding that the system claims of U.S. Patent No. 7,013,284 (“the ‘284 patent”) were ineligible. Judge Rader predictably dissented from the majority and stated that he would hold the system claims to be patent-eligible subject matter. One takeaway from this decision is that the Court remains predictably divided. In this case, all three judges on the panel ruled in a way that was consistent with their ruling in CLS Bank, 717 F.3d 1269 (Fed. Cir. 2013).

Earlier today the United States Court of Appeals for the Federal Circuit issued it latest decision in Soverain Software LLC v. Newegg, Inc. (Fed. Cir., September 4, 2013). This latest decision was necessitated by the limited grant of rehearing ordered on June 13, 2013. The rehearing was granted for the purpose of clarifying the status of claims 34 and 35 of Patent No. 5,715,314. Before jumping into the substance of this case, the first thing I noticed was that Seth Waxman of Wilmer Cutler Pickering Hale and Dorr was listed as the lead attorney for Soverain Software in both the petition for rehearing and the ensuing briefs. It is hard to imagine that Soverain has brought in Seth Waxman at this late stage if they are not contemplating an appeal to the Supreme Court.

Last week the United States Court of Appeals for the Federal Circuit issued a decision in the latest appeal in the Apple/Samsung epic patent battle. See Apple, Inc. v. Samsung Electronics Co. (Fed. Cir., August 23, 2013). In this situation the parties really were not fighting against each other; instead finding themselves arguing on the same side against the decision of the district court to allow sensitive information to be publicly available. On August 9, 2012, Judge Lucy Koh of the United States District Court for the Northern District of California issued a decision that denied in part the parties’ motion to seal certain filings. In general, Judge Koh sealed information about the parties’ production and supply capacities, confidential source code, third-party market research reports, and the pricing terms of licensing agreements. However, Judge Koh ordered unsealed documents disclosing the parties’ product-specific profits, profit margins, unit sales, revenues, and costs, as well as Apple’s own proprietary market research reports and customer surveys and the non-price terms of licensing agreements. The Federal Circuit, per Judge Prost with Judges Bryson and O’Malley joining, determined that the district court abused its discretion in refusing to seal the confidential information at issue in the appeals, ultimately reversing and remanding the case for further proceedings consistent with this decision.

The issue of interest in this case centered around whether there was a pre-AIA 102(b) on-sale bar. You might expect such issues not to be worthy of a Federal Circuit precedential opinion, but there was an issue with respect to whether there really was a contract in place before the critical date, but also an issue about whether the on-sale bar could apply when the offer for sale was from a Hamilton Beach supplier to Hamilton Beach themselves. The short answer is that the Federal Circuit, over a dissent by Judge Reyna, determined that there was a triggering offer for sale and it is of no concern whether the offer for sale was initiated by a supplier who was making the units at the request of the patent owner.

While in the Solicitor’s Office at the USPTO Chen’s notable Federal Circuit arguments included In re Bilski, In re Nuijten, and In re Comiskey. While I disagreed with the Federal Circuit decision in each of those cases I still believe Chen to be an excellent choice for the Federal Circuit. While some may look at the cases where Chen defended the Board, that was his job and I would caution reading to much into the briefs filed looking for a window into the judicial philosophy of Chen. Indeed, I have every reason to expect that he will align himself with the pro-patent wing of the Court.

1. Reed Tech takes over USPTO Contract from Google. 2. Pharma Patent Settlements Saved $25.5 Billion for US Health System. 3. Coffee Analysis Smart Phone App for that Perfect Brew. 4.FDA Approves Brain Wave Test to Assess ADHD in Children. 5. CAFC Copaxone® Patent Ruling Allows May 2014 Generic Launch. 6. A Permanent Injunction in a Patent Infringement Case! 7. Post-Grant Proceedings Treatise Publishes.

United States Marine, Inc. (USM) sued the United States government in the United States District Court for the Eastern District of Louisiana under the Federal Tort Claims Act (FTCA), 28 U.S.C. § 1346(b) and 28 USC §2674. USM alleged that the United States misappropriated USM’s trade secrets. Specifically, USM claimed that the United States Navy, which had lawfully obtained USM’s proprietary technical drawings under a contract (to which USM was not a party), owed USM a duty of secrecy that it breached by disclosing those drawings to a rival private firm for use in designing military boats for the government.

As in the U.S., when drafting claims in China, one must describe the invention sufficiently to enable a person skilled in the art to make and use the claimed invention. For software patents, a flow chart and explanation should be included, along with drawings and description of associated hardware. Portions of the source code may be included for reference. Software claims may be drafted as either method or apparatus claims. However, Justin Shi, patent attorney at Sony Mobile Communications in Beijing, warns that apparatus claims may be deemed invalid if they are phrased only in means-plus-function language and fail to describe the apparatus or its embodiments.