November 2004

Federal Circuit: Claims Should Be Interpreted for Internal Consistency and Operablility

Frank’s Casing Crew v. Weatherford Intl. (Fed. Cir. 2004).

Frank’s Casing owns a patent on a device for remotely controlling an oil-well casing.  (U.S. Patent No. 5,049,020). Because sections of casing can be up to 36 inches in diameter and weigh 300 pounds per foot, manual alignment is difficult and poses a significant risk of injury.  Frank’s Casing brought suit against Weatherford, charging patent infringement.

The district court (W.D. Oklahoma) granted summary judgment of noninfringement after interpreting the means-plus-function claim language of Frank’s patent. 

On appeal, Frank’s Casing argued that the district court improperly imported structure into the term "means for selectively pivoting" that was unnecessary to perform the function of pivoting a boom about a horizontal axis. 

The Federal Circuit affirmed, finding that the district court’s interpretation is necessary and "to conclude otherwise would render the patent internally inconsistent and the invention inoperable."

Noninfringement Affirmed.


Judge Posner to hear Amazon Patent Case

Pinpoint v. Amazon. (N.D. Ill. Aug 31, 2004) (Posner, J.).

Pinpoint has sued Amazon for infringement of its patented system for scheduling broadcast and providing access to video programs. (E.g., U.S. Patent No. 5,758,257). Pinpoint claims that Amazon’s website infringes by providing personalized book and music video suggestions. 

In its most recent press release, Pinpoint announced that Judge Richard A. Posner of the 7th Circuit, U.S. Court of Appeals will be sitting by designation as the district judge presiding over the jury trial.  According to Judge Posner’s order in the case, the jury trial will begin at 9:00 am on December 6.

Always Controversial

Judge Posner has a reputation for thinking outside the box.  In his last patent case, Posner created a new equitable defense to infringement that would bar enforcement of a patent when the patentee’s own conduct significantly inhibits non-infringing practice of the prior art.  That case, SKB v. Apotex [I, II, III, IV], involving hemihydrates, was affirmed by the Federal Circuit but is currently being considered for an en banc rehearing. 

It is speculated that the Apotex case has sparked some contention within the halls of the CAFC.  This speculation stems from the fact that the en banc petition has been sitting undecided for over six months.

Now a Blogger

After a stint as a guest blogger at Professor Larry Lessig’s blog, Judge Posner has started a blog in cooperation with Nobel Winner Gary Becker.  The Becker-Posner blog is not fully functional yet, but keep your eyes peeled.

My Prior Post on Pinpoint v. Amazon
More Info on the Pinpoint v. Amazon

Coolsavings wins patent appeal


Catalina Marketing v. Coolsavings (Fed. Cir. 2004) (03-1548) (unpublished).

Catalina owns a patent on a method for distributing electronic coupons. Coolsavings runs a website that uses user demographics to target coupon offers. Catalina sued Coolsavings for Infringement. Catalina appeals the district court’s claim construction and subsequent dismissal for noninfringement.

On appeal, the Federal Circuit affirmed the district court’s opinion, finding that the District Court had properly construed means-plus-function language by importing limitations from the specification.

Dismissal of Catalina’s Infringement suit Affirmed.

Happy Thanksgiving


I hope that everyone has a happy Thanksgiving. Even if you are not in the U.S., I suggest that you take the day off to celebrate.  Although I love turkey, I hope that you don’t deep-fat fry yours.

The U.S. Patent and Trademark Office Joins in the Celebration of Thanksgiving
Recognizes patents and trademarks related to Thanksgiving

The Department of Commerce’s United States Patent and Trademark Office joins in the celebration of Thanksgiving by recognizing some patents and trademarks associated with this festive holiday.

Food often takes center stage at Thanksgiving, and there are many well-known Thanksgiving-related products protected by patents and trademarks. One way to spend more time with family and less in the kitchen cleaning up is by using a disposable cooking pan (patent #5,628,427) or a cooking jacket (patent #4,942,809) for the turkey, ham or roast. One non-traditional, but increasingly popular, way to cook a turkey is deep-frying, and one type of equipment used in this preparation is protected by patent # 5,758,569.

Some well-known trademarks associated with turkey and dressing, must-haves at many Thanksgiving tables, are Butterball (registration #1151836) for turkey products and Stove Top (registration #0949459) for stuffing. What holiday feast would be complete without cranberry sauce such as Ocean Spray (registration #2150919)? Desserts are always the final complement to a Thanksgiving feast. For those that do not bake their own, Sara Lee’s slogan for its pies and cakes, "Nobody Doesn’t Like Sara Lee," is protected by trademark registration #1885156.

These patents and trademarks, as well as the more than six million patents issued since the first in 1790 and the 2.3 million trademarks registered since 1870, can be seen on the Department of Commerce’s U.S. Patent and Trademark Office web site at

USPTO News: Changes to 35 U.S.C. 103(c)

In addition to changes to the PTO Fees, Congress has also passed the "Cooperative Research and Technology Enhancement (CREATE) Act of 2004." The Act is now awaiting Presidenet Bush’s signature.  The purpose of the Act is to promote collaborative research.  As such, some previously considered prior art will be excluded from consideration if it arose from a joint research agreement.

There may be a need for your clients to immediately make amendments in joint research agreements to make sure that they qualify under the new law.  Second, currently pending applications may be amended to disclose the names of the parties to the joint agreement.  In addition, in some cases, broadening reissues (granted in last two years) may be obtained if the narrowly issued claims were restricted because of now excluded prior art.

— Dennis

The text of the Act is listed below:


    “(c)(1) Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.

    “(2) For purposes of this subsection, subject matter developed by another person and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person if–

    “(A) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made;

    “(B) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and

    `”(C) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

    “(3) For purposes of paragraph (2), the term `joint research agreement’ means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.”.


    (a) IN GENERAL.–The amendments made by this Act shall apply to any patent granted on or after the date of the enactment of this Act.

Senate Confirms Jon Dudas as Head of USPTO

The U.S. Senate has confirmed Jon W. Dudas as Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.  The confirmation was unanimous!

Mr. Dudas was nominated by President George W. Bush as Under Secretary and Director in March 2004 and was appointed on July 30, 2004. He served as Acting Under Secretary and Director from January 2004 until assuming his current position. Mr. Dudas was Deputy Under Secretary and Deputy Director from January 2002 until he became the Acting Under Secretary.

In May, I reported on the bill in Congress that would dramatically alter patent filing fees.  That bill has now passed both the House and Senate and is awaiting President Bush’s signature.  Here is a brief rundown:

Current Fees    

Fees in Bill

Filing Fee


Filing: $300
Search: $500
Examination: $200
Total: $1000

Extra independent claims >3



Claims >20



Long disclosure


$250 for ea. 50 sheets over 100

Electronic Filing


$225 discount

Issue Fee



Small entities retain 50% cut.

5-year patent prosecution backlog in near future?

Link: USPTO funding is in the news again.  MSNBC is reporting a serious threat of 5-year prosecution backlogs without better funding from Congress.

Unless long-overdue reforms are put in place and the agency’s budget is expanded, the current backlog will balloon further, and the average time it takes to win a patent — now more than two years — will double in five years, according to the acting head of the agency, Jon W. Dudas.

IP law Associations Support PTO Fee Increase only if Accompanied by Anti-Diversion Legislation

Patent office fee diversion has been a thorn in the side of all the major Intellectual Property Law Associations.  The associations agreed to support a major fee increase at the PTO if that fee increase was linked to an anti-diversion provision.  In March 2004, the House passed HR 1561 that included both the fee increase and an anti-diversion provision.  The Senate has not passed parallel legislation, and now looks likely to support the fee increase without the accompanying fiscally responsible anti-diversion provision.  This change is unacceptable to the Associations. 

As Congress began consideration of a 2005 omnibus appropriations bill yesterday, eight trade and professional associations including IPO wrote to House appropriators urging that any patent fee legislation include language to prevent fee diversion and that the fee increase not be limited to one year.  Associations included the National Association of Manufacturers and the U.S. Chamber of Commerce.  For the text of the letter, click here.

For more information, read the article by Sarah Lai Stirland of the National Journal.



Federal Circuit Warns Against Citations of Non-Precedential Opinions

By Dennis Crouch

Under the rules of the Court of Appeals for the Federal Circuit (CAFC), non-precedential opinions may not be cited in briefs submitted to the Court.  Federal Circuit Rule 47.6(b) provides that an opinion designated as non-precedential “must not be employed or cited as precedent.”  The CAFC reasons that these opinions are essentially throw-away judgments that do not “significantly [add] to the body of law.”  Noted attorney Hal Wegner has gone so far as to say that non-precedential opinions are “not worth reading or studying as a routine matter.”


Despite the rule, attorneys sometimes cannot resist citing to an unpublished opinion that is directly on-point.  In a recent opinion, the Court drew a line in the sand and issued a stern warning to any attorney contemplating whether to use a non-precedential opinion in a brief.  In the order titled In re violation of Rule 28(c), ___ F.3d ____ (Misc. No. 774) (Fed. Cir. Nov 5, 2004), the CAFC pronounced that in the future, “violations of the Federal Rules of Appellate Procedure, or of our Local Rules of Practice, will likely result in sanctions”  regardless of whether or not the violations are “inadvertent.”  Although the case involved Rule 28 rather than Rule 47, in its opinion, the Court specifically indicated its disapproval of the citation of non-precedential opinions:


Violations of . . . Rule 47.6 which prohibits the citation of nonprecedential opinions . . . are all too frequent. In addition to imposing an unfair burden on opposing parties, violations of our rules also burden the court. The court must consider a large number of appeals each year. It can only conduct its work fairly and efficiently if counsel cooperate by abiding by the pertinent rules.


Federal Circuit Judges have previously spoken out against the citation of unpublished opinions.  Although notorious for its split opinions, a unanimous appellate body argued in an open letter that allowing citation of unpublished opinion may “adversely affect the administration of justice by skewing the allocation of judicial resources, delaying issuance of precedential opinions, increasing the issuance of judgments without an accompanying opinion, and harming litigants.” 


In the background of the CAFC’s firm stance is a movement to change the Rules of Appellate Procedure to allow the citation of unpublished opinions.  Earlier this year, a U.S. Judicial Conference advisory committee endorsed a proposed rule that would allow citation of unpublished appellate decisions.  So far, nine of the thirteen appellate courts allow some citation of unpublished opinions.  If enacted, the new rule would allow such citations in all the appellate courts.


In re violation of Rule 28(c) arose as a side issue in a patent litigation suit between Esab Group and Centricut.  At the district court, Esab Group won a multi-million dollar judgment against Centricut for infringement of Esab’s patent relating to plasma welding products.  Centricut appealed the judgment and the measurement of damages.  Esab cross-appealed, asking for a modification of the judgment on damages.


Rule 28(c) and its associated Practice Notes limit the content of cross-appeal reply briefs to issues presented by the cross-appeal.  However, Esab’s reply brief consisted of 23 pages, about 20 of which related only to the main appeal and not the cross appeal. 

The appellate panel declined to impose monetary sanctions against the offending attorney, but noted that “we wish to make clear that it is the duty of counsel to familiarize themselves with applicable rules, and that, in future cases, serious violations of applicable rules, whether or not ‘inadvertent,’ will potentially subject counsel to sanctions.”

I continue to read unpublished opinions for a couple of reasons. (i) First, I have found that these opinions are occasionally ground-breaking and important.  For instance, recently the Federal Circuit supported the use of articles downloaded from the Internet as evidence that a mark was merely descriptive.  In re DSS Environmental, Inc., (04-1041) (Fed. Cir. October 20, 2004) (unpublished opinion).  Even though the decision cannot be cited as precedent, it is still an important landmark.  (ii) In addition, the day may come when these opinions suddenly become good law.  When that day comes, I will be ready.

Dennis Crouch ( is an attorney at the intellectual property law firm of McDonnell Boehnen Hulbert & Berghoff LLP in Chicago.  He is also author of the popular Patently-O Blog (


Appeals Court halts preliminary injunction against generic maker of Tussi-12D.

MedPointe Healthcare v. Hi-Tech Pharmacal (Fed. Cir. November 17, 2004) (unpublished opinion).

MedPointe was awarded a preliminary injunction against Hi-Tech to prevent Hi-Tech from manufacturing or selling cough medicine in violation of MedPointe’s patent.  (U.S. Patent No. 6,417,206).  The patent covers MedPointe’s oral medicine known as Tussi-12D

Hi-Tech conceded infringement, but argued that the district court erred in concluding that it had not raised a substantial question of validity.  Hi-Tech produced some evidence indicating that compositions similar to the MedPointe’s patent have been in use since 1938 (Candettes Throat Lozenges).

Preliminary Injunction Rule: Issuance of a preliminary injunction rests on an overall process of balancing, a preliminary injunction cannot be granted if the movant is unable to show a reasonable likelihood of success on the merits. 

In this case, MedPointe “must present a ‘clear case’ supporting the validity of the patents in suit, thus showing that Hi-Tech’s invalidity defense lacks substantial merit.” 

Holding: The court found that Hi-Tech’s uncontroverted testimony showing the similarity between the patent and Candettes to be sufficient to prevent an issuance of a PI.

Dissent by C.J. Mayer: “Because I cannot join in the court’s de novo review of the district court’s findings of fact, I respectfully dissent.”

The case is now remanded to the New Jersey District Court for trial. 

McFarling v. Monsanto: On Petition for Writ of Certiorari

McFarling v. Monsanto (Supreme Court Docket No. 04-31).

After being shut-out at the district and appeals courts, Mississippi Delta Farmer Homan McFarling has petitioned the Supreme Court of the United States for a writ of certiorari — asking the high court to hear his case.

Roundup-Ready (R) soybeans have become extremely popular in the the U.S.  The genetic modification added by Monsanto allows soybean plants to resist the broad-leaf herbicide.  Monsanto’s patents on the genetically modified seed is even more important now because Roundup has gone off-patent. 

When a farmer purchases seeds from Monsanto, the company requires that the farmer agree not to retain any seeds from the resulting crop for replanting.  These second generation seeds are genetically identical to the ones originally purchased — and thus, fall under the scope of the patents.  Monsanto brought suit against McFarling after the farmer violated his agreement and saved second generation soybean seeds to replant his 5,000 acre farm.

McFarling now questions whether Monsanto has any right to control the trade of the second generation seeds — Is Monsanto’s limitations on use of the second generation seeds an unlawful restraint of trade?

In my quick review of the briefs for and against certiorari, it appears that Monsanto’s attorneys have put their best foot forward by showing that there are no true circuit splits, a key feature in the Supreme Court’s decision whether to accept a case on appeal.  All the same, McFarling’s case has a certain flair that may push the court to accept the case.


USPTO answers questions from Individual Inventors.

The USPTO has released the transcripts of its most recent inventor chat.  In the chat session, the PTO gathers several of its patent procedure experts and answers questions that are posted in an on-line forum.  Here are excerpts of several interesting question/answer series.

Inventor: When a patent is accepted by the patent office for reexam, how long does it take to finish and or what is the full time process window?

USPTO Expert: All re-exams are handled with special dispatch, i.e. the examiner takes them out-of turn. It is difficult to put a time frame on it, since it depending on the complexity of the prosecution and the number of actions. We are not familiar with the term, “full time process window.”  Hope this answers your question.

Inventor: I am having trouble finding answers to my questions on the USPTO’s website. I find it a little perplexing. Perhaps I need an “Idiot’s guide to the USPTO.

USPTO Expert: You should contact the Inventors Assistance Center and speak to one of the representatives there for answers to specific questions. Contact them at 1-800-786-9199.

Inventor: What is the average time between paying issue fee and being published?

USPTO Expert: The average time is 3-4 months.

Inventor: If I file a design patent application, do I place “patent pending” or design patent pending on the product? Also, is shading still necessary on design patents?

USPTO Expert: Once a design patent application is filed with the USPTO “patent pending” may be included on the commercial product in which the design is embodied. Also, while surface shading is no longer required by 37 CFR 1.152, applicants are encouraged to include surface shading on the claimed design shown in the drawing so as to clearly understand its shape and contour.

Inventor: Does the 20-year clock on patent duration begins at the priority date?

USPTO Expert: The twenty year patent term is not measured from the filing date of a provisional application. See 35 U.S.C. 154(a)(3) which states that “[p]riority under section 119, 365(a), or 365(b) of this title shall not be taken into account in determining the term of a patent.” The basis for relying upon a provisional application in a subsequently filed non-provisional application is 35 U.S.C. 119(e), which is specifically excluded in calculating the patent term under 35 U.S.C. 154(a)(3).

For all utility and plant applications filed on or after June 8, 1995, the twenty year term is measured from the filing date of the non-provisional application. If the non-provisional application claims benefit under 35 U.S.C. 102, 121 or 365(c) to an earlier filed application, then the twenty year patent term is measured from the earliest effective U.S. filing date for which benefit is claimed.

Patent Enforcement is not Terrorism

Pirates are traditionally thought of as mean guys with guns and boats who rape, rob, and plunder.  Terrorists use bombs and other forms of violence and intimidation to achieve their political objectives.  However, of late, copying of works protected by patent and copyright has been regarded as a form of piracy and as supporting terrorism.  Today, an article in the New York Times described ‘patent terrorism’ as the enforcement of patent rights by holding companies.  A few years ago, Microsoft officials even accused Apple of being a patent terrorist.
Lets get rid of this terminology.  A company that uses the courts to enforce a patent is not a terrorist.  To use these words so liberally will quickly dilute their meaning and leave us confused when we encounter the real terrorists.

The Canons of Claim Construction

There are many canons of claim construction.

  • Claims should be construed as of the time of the invention.
  • Limitations should be given their “ordinary meaning” as understood by a skilled artisan.
  • Claim construction begins with dictionary, encyclopedia, and treatise definitions.
  • Dictionaries, treatises, and encyclopedias are critical to claim construction.
  • Claim differentiation applies to presume a difference in meaning and scope when different words or phrases are used in separate claims.
  • Preamble terms are not claim limitations.
  • Limitations in the specification may not be read into the claims.
  • Express limitations in the specification should be read into the claims.
  • Claims should be construed to cover preferred embodiments.
  • Claims should be construed to uphold their validity.

The immediate question is whether the en banc decision in Phillips v. AWH will (i) present a cleanly revised list or (ii) simply add another rule to the list. (Listing adapted from a presentation by Kevin Casey).

Supreme Court Requests Bush Administration’s View on Seed Patent Controversy

McFarling v. Monsanto (Supreme Court Docket No. 04-31).

Homan McFarling was sued by Monsanto for saving seeds and replanting them.  The seeds had been genetically modified by Monsanto to resist Roundup (R) herbicide and were patented. (U.S. Patents 5,633,435 and 5,352,605). 

At the Federal Circuit, McFarling argued that the Sales Agreement from Monsanto involved an unlawful misuse of Monsanto’s patents by restricting use of “god-made” second-generation seeds. The Appellate Court disagreed. Because the first-generation seeds (sold by Monsanto) were nearly identical copies to the second-generation seeds, the Court found that the patent scope includes both generations. Thus, the Court rejected McFarling’s appeal and held that the Sales Agreement did not impermissibly extend Monsanto’s rights.

Now, McFarling has taken the suit to the Supreme Court.  In case No. 04-31, McFarling is asking the Court to to overturn the Federal Circuit’s ruling and presents two questions:

1. May a patent holder lawfully prohibit farmers from saving and replanting seed as a condition of the purchase of patented technology?

2. Does obtaining patents on products which are the subject of licensing agreements afford an absolute defense to any claim that the licensing agreements violate the Sherman Act?

The Supreme Court has asked the Solicitor General to brief in this case expressing the views of the United States.  It is expected that the Bush Administration, through the Solicitor General, will support Monsanto’s position. 

Interim Patent Term Extension Granted for Brexidol

The PTO has granted an interim term extension for U.S. patent No. 4,603,123.  The patent claims the active ingredient piroxicam betadex that is used in Brexidol (R).  A New Drug Application (NDA) for Brexidol (R) has been filed with the FDA and is currently undergoing regulatory review. 

Brexidol (R) is an NSAID that is believed to work by blocking the production of a prostaglandin which the body produces in response to injury or certain diseases. This prostaglandin would otherwise go on to cause swelling, pain and inflammation.

Interim Patent Extension

The term of a patent is extendable if delays in production were caused by delays in a regulatory approval process.  35 U.S.C. 156(d)(5) provides for an interim extension if a patent is about to expire and the patentee believes that the regulatory review period will exceed the term of the patent. The application for an interim extension may not be filed until the six month period prior to the expiration of the patent, but must be filed at least 15 days before the expiration of the patent.  An applicant may not apply for more than four interim extensions and each extension may be for no more than one year.

Patent Drafting Tip: Focusing on the problem

One role of the patent attorney is to help the inventor think more broadly.  One way to accomplish this is by thinking about an “objective” of the invention — what problem is being solved by the invention?

These days, many practitioners believe that explicitly stating the objectives of the invention is taboo.  However, even if you do not write about the objectives, they should be at the heart of your thinking during the patent drafting process.  Russ Krajec, a Colorado based patent agent has written about his methodology:

I try to focus on the problem being solved by the invention and to include every possible embodiment that could be used to solve the problems of the brand new field. . . . In a crowded field, the problem may be pretty narrow. For example, if the invention was a lower cost version of a common item, the problem solved is cost reduction. By looking at the invention from a ‘problem solved’ standpoint, I can more easily identify other solutions to the lower cost solution. These other solutions give the patent much more commercial value, since it cuts a much wider swatch to protect the basic concept, which is cost reduction.

Krajec notes that his problem-centric approach also helps overcome the potential for easy work-arounds and results in a stronger, more valuable patent.