May 30, 2008 by thomason.

When a deadline is missed or a requirement passes without response, learned patent counsel file a petition seeking relief. Experience with petitions has shown that the contentions that often fail are: blaming the USPTO or claiming that it contributed to the problem, arguing against the unfairness, or expressing surprise or dismay about the situation. The more effective approach is to unsheath one’s sword, then fall forward upon it. Blame thyself, grovel, perhaps do some self-flaggellation - never deny, admit admit - that you’re to blame. If you don’t, then the Petition likely gets denied, and then you’re really stuck.

Consider the malpractice suit, Landmark Screens v. Morgan Lewis, 5:08CV2581 (N.D. Cal.). The PTO, in its increasingly common effort to get additional filing fees, issued a restriction requirement. Counsel divided out claims to be filed as a second application, but failed to include the original spec, and used an out-fo-date form for incorporating the earlier application by reference. The first application issued before the notice of missing parts went out. The incompleteness of the divisional filing prevented it from being accorded a filing date, and the issuance of the earlier application meant no application with the earliest filing date was pending.

The Morgan Lewis attorney filed a petition, which relied largely on the “I” defenses: intent, interests of justice, and indicia of completeness. The petition was not accompanied by an affidavit, or an explanation accepting blame.  The petition was denied, and the filing date lost.  That argument in the petition about the USPTO taking 10 months to send out the notice of incompleteness was acknowledged to be “unfortunate,” but that did “not shift responsibility” (or the misfortune) to the PTO. Same too with the ‘intention’ and ‘indicia’ contentions - “The applicant must be ‘vigilant and active’ in complying with” patent prosecution requirements. That translates to: accept blame, call yourself negligent or non-vigilant.

The countervailing concern is that signing an affidavit that admits screwing up could invite a malpractice claim. But then, if the petition is denied, such a claim is to be expected. If the petition is granted, however, then it’s only client comforting time or a public relations issue, instead of facing up to a client’s publicly-filed complaint.

Posted in Uncategorized | Comments Off

May 28, 2008 by thomason.

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.

Posted in Patents - Federal Circuit | Comments Off

May 27, 2008 by thomason.

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.

Posted in Patents - Federal Circuit | Comments Off

May 23, 2008 by thomason.

With regularity, CLE presentations on ethics are devoted to “civility” among lawyers, esp. litigators (that’s an alligator not in an alley), but not much about judging with civility. For many years, and in many vicinages, patent litigators acome with the reputation of being painful to deal with or outright obnoxious. It has to be wondered whether this tends to provoke derisive comments in judges’ patent case opinions; or, is it that reputation deserved. Here’s a few passages from one court, over a ten-day period, in patent rulings:

“The present motion is nothing more than an attempt to get a second bite at the apple and should therefore be denied on that ground alone.”

The “Court finds the motion confusing.”

“In effect, they may be conceding [the point]… but would nevertheless like to continue to belabor this point ad infinitum.”

The party’s “opening memorandum made no effort whatsoever to justify the motions.”

“Neither plaintiff nor defendant have given a ‘compelling reason’ [for the position taken].”

“It is unfair for counsel to blame the judge for their own failure.”

These comments emit an odour of disgust, of veiled contempt, and in a way accuse, patent counsel of being deceptive or dissembling. Is that deserved? That is known only to those actually in these cases.

During many trips to many federal courts, my belief is that the most obnoxious attorneys during trials are criminal defense attorneys. They can get away with about anything, and the Judges, fearing reversal, will let it go on without comment. The irony is that these Judges are less civil to civil litigants, than to counsel in criminal cases. No federal judge, in my experience, would say during a trial and in front of a jury that a criminal defendant’s position was “meritless,” or was a “waste of everyone’s time” - but, many would say that in a civil case.

So, I’ll stand up for the litigating patent bar, even though it includes some litigators who act like classAasses. Is it a fair for Judges to say that patent cases are the ‘most boring’ cases? Go, sit through a trial about tax evasion, or medicare overcharging, or a lot of statutory cases, and see how those excite you. Think that that patent litigator is a wiseacre? Watch some criminal defense attorney that drives a Rolls or Lambo with a vanity plate, and you often see trial theatrics that make patent lawyers looks like something from moot court class.

Posted in Uncategorized | Comments Off

May 19, 2008 by thomason.

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.

Posted in Patents - Legislation, Patents - Federal Circuit | 1 Comment »

May 16, 2008 by thomason.

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.

Posted in Patents - Federal Circuit | Comments Off

May 15, 2008 by thomason.

Thomas Berg (University of St. Thomas, St. Paul/Minneapolis, MN - School of Law) has posted the abstract of Intellectual Property and the Preferential Option for the Poor (5 Journal of Catholic Social Thought 193 (2008). As abstracted, Professor Berg’s paper advocates elimination of IP restraints so as to provide benefits, such as patented medicines, to the poor. It struck me as odd that I cannot freely obtain a paper about giving intellectual property away freely; I seem to have to buy the paper.

There should be little disagreement over providing medicine to the poor, and that IP monopolies should give way to that goal. Still, the paper’s focus on IP monopolies or restraints is perhaps a bit off. It is the distribution of the medicine or the beneficial IP that is restrained, usually by those governments that take charge of or have responsibility for the poor populations. If shipments of medicine are sent, addressed to “Those Most In Need,” then numerous instances of diversion or even destruction of the goods are to be expected. That human factor, not the force of IP protections, is what so often gums up the good works.

Posted in IP-Antitrust | Comments Off

May 13, 2008 by thomason.

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.

Posted in Patents - Federal Circuit | Comments Off

May 8, 2008 by thomason.

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.

Posted in Patents - Federal Circuit | Comments Off

May 1, 2008 by thomason.

The recent Markman ruling in Toro v. Ingersoll-Rand, 06CV3073 (D. Minn. 4/21/08), came after an earlier order “barring admission of extrinsic evidence, including expert witnesses,” citing, Inpro II, 450 F.3d 1350, 1357. No one apparently qualified as a hypothetical person of ordinary skill in walk-behind mechanics.  They were either not hypothetical, or were not ordinary, but in all respects, were extraneous.

This infringement case, over “walk-behind” machinery involved yet again, the claim term “substantially.” The meaning of “providing substantially unobstructed viewing” was disputed. To clear that up, the Court ruled that “substantially” meant unobstructed or “largely” unobstructed. Mr. Roget’s bestseller was not cited.
From that point of clarity, the dispute moved on to interpret the claim term “comfortably,” as in controls that are “configured” for an operator to “comfortably reach.”  The defense contention was that “comfortably” is subjective, and so, indefinite under Section 112. Surprisingly, the term was added to overcome prior art, which had controls that the operator could reach, “if at all, only by extending his arms straight out from his shoulders.” That amendment and argument was bolstered on the grounds that the “comfortably” limitation provided the (unexpected?) result of avoiding what “would be cumbersome and tiring.” The Judge concluded that “‘comfortably’ requires no construction.”  That took a load off.

This weekend, try to largely enjoy, comfortably watching the Kentucky Derby from somewhere you have an unobstructed view of the Greatest Two Minutes in Sports.

Posted in Uncategorized | Comments Off