January 2008

Federal Circuit Residency Requirements

PatentLawPic13228 USC 44(c) provides that any newly appointed Federal Circuit judge must live within fifty miles of the District of Columbia. This rule appears to unduly limit the judges that may be appointed to the CAFC.  Other circuits also have residency requirements, but those circuits serve only a limited geographic area. And, the geographic boundaries of the regional circuits are often quite large. The Tenth Circuit, for instance meets in Denver, but Judges may reside 900 miles away in southern Oklahoma. Likewise, the First Circuit, which sits in Boston, includes one judge who resides in Puerto Rico. The other ‘national’ appellate court — the DC Circuit — has no residency requirements.

The Senate’s version of Patent Reform would eliminate the Federal Circuit residency requirement. From the Committee Report:

Without casting any aspersions on the current occupants of the Federal Circuit bench, the Committee believes that having an entire nation of talent to draw upon in selecting these judges could only be a benefit. The duty stations of the Federal Circuit judges will, of course, remain in the District of Columbia. Judges in regional circuits often travel considerable distances for court sessions within the circuit, far from their homes and chambers, and there is no practical reason why Federal Circuit judges could not do so as well. Discussion of changes Section 11 of the Act eliminates the residency restriction for Federal Circuit judges by repealing the relevant portion of subsection 44(c) of title 28.

Hal Wegner has often argued that the geographic limitation should be eliminated:

“There should be no special geographic limitation on the residence of Federal Circuit judges. To those who would say that it is important that judges live close to a central courthouse to be with all their colleagues[, that notion] goes against the reality of most circuits. For example, the Seventh Circuit sits in Chicago, yet six of the regular members of the court have chambers outside Illinois, four in Wisconsin and two in Indiana. The Third Circuit, which generally meets in Philadelphia, has members with chambers in New Jersey and Delaware, and one with chambers 300 miles away in Pittsburgh.”

The appointment process will be especially important over the next several years as several of the current judges move to senior status. Within two years, most of the current judges will be eligible for senior status.  (I sincerely hope that these experienced judges continue their decisions without slowing down.)

Claim Construction: CAFC Cautions Co-Interpretation of System and Method Elements.

PatentLawPic133Baldwin Graphics v. Siebert (Fed. Cir. 2008). [UPDATED 1/15/08 7:30pm]

Judge Moran of the Northern District of Illinois granted Siebert’s motion for summary judgment of non-infringement — finding that Baldwin’s patented printing press cleaning system and method did not extend to cover Siebert’s products. On appeal, the CAFC reversed the district court’s claim construction and remanded.

“A” Means One or More: In a well tred battle, the CAFC found that the lower court had mistakenly limited the claim element of “a pre-soaked fabric roll” to only allow for a single fabric roll.  This follows the general rule that “a” or “an” are interpreted as “one or more.”  Exceptions do apply, but only when the patentee has shown “clear intent” to limit the meaning of those articles. As a corollary, later use of “the” or “said” when referring to the element either in the patent or in PTO correspondence does nothing to alter the rule.

System versus Method Elements: The parties agreed that the system element “reduced air content cleaning fabric” was substantially similar to the method of “reducing air content of a cleaning fabric.”  Judge Moran interpreted these together and required that the system element also have reduced air content “prior to being wound.” On appeal, the CAFC cautioned district courts about joint interpretation of system and method claims and found that the lower court had improperly imported a limitation into the system.

Patently-O Bits and Bytes No. 2

  • Patent Reform: A draft report on S.1145 is available here.  [via PatentDocs]. Although currently supported by more Democrats than Republicans, this is a bipartisan bill that could pass. A summary:
  • Change the system to a “first-inventor-to-file” system;
  • Reduce patent damage awards;
  • Enhance post-grant opposition proceedings;
  • Provide for publication of all applications;
  • Allow for better third-party submissions;
  • Limit patent infringement venues;
  • Allow the PTO to set its own fees;
  • Remove the residency restriction for judges on the United States Court of Appeals for the
    Federal Circuit;
  • Authorize USPTO to require pre-filing patent searches and explanations;
  • Re-vamp the doctrine of inequitable conduct;
  • Clarify the rules on unintentional delays in filing;
  • Limit patent infringement liability for electronic check processing;and
  • End USPTO “fee diversion”.
  • Patent Reform: Remember, the House has already passed the companion bill. Passage could allow President Bush to ride out of office as the innovation president.
  • Patent Baristas discusses PTO’s “Suspicious Behavior” in the Tafas case.
  • Inequitable Conduct: Backdating in Patent Law

    OccamASP v. IQ Hong Kong (E.D. Wisc. 2007)

    In 2001, Armament Systems (ASP) sued IQ Hong Kong and twenty-three other companies for infringement of its LED flashlight patent. (Patent No. 6,190,018).  Litigation was stayed while the PTO conducted a defendant-requested ex parte reexamination.  The patent subsequently was re-confirmed by the PTO as valid and litigation resumed in 2004.

    During reexamination, the inventor (and ASP president) submitted a Rule 131 declaration evidenced by an early sketch of the invention.

    Inequitable Conduct: The defendants allege that the sketch submitted during re-exam was a false document that had been fraudulently back-dated to overcome cited prior art.

    A patent applicant’s inequitable conduct during prosecution can render a patent unenforceable. Inequitable conduct is proven with (1) affirmative misrepresentations of material facts with (2) intent to deceive the PTO.  Because most PTO proceedings are ex parte, inequitable conduct has been seen as an important tool to ensure proper applicant behavior.

    ElectroStatic Detection: The defendants forensic expert used an ElectroStatic Detection Apparatus of the submitted sketch to uncover imprints of other sketches made on the same graph pad but with much later signature dates.  Using the physical evidence, the expert (former FBI chief of questioned documents) testified that it was a ‘near certainty’ that the submitted sketch had been falsely back-dated.

    The inventor disputed these charges and instead offered several alternative potential methods by which the imprints could have occurred. This amorphous story did not help his cause — as noted by the court:  “[The inventor’s] evidence, taken as a whole, demonstrates that ASP has offered shifting, inconsistent, and un-corroborated explanations to account for indentation of the later sketches on Q1. As such, the evidence undermines the credibility of the [new] explanation offered by [the inventor] for the first time a trial.”

    Occam’s Razor: Applying Occam’s Razor, the court sided with the simplest explanation — that of falsification.  As the basis for allowance, the submission was clearly material. Falsification secured a finding of intent. Thus, the court found the patent unenforceable for inequitable conduct.

     The case is now on appeal to the CAFC.

    Patently-O Bits and Bytes

    Top Thirty Patent Law Programs (Ranked by Patently-O Hits!)

    This post is silly, but still interesting. Below, I have listed a ranking of the top thirty law school patent programs based solely on the number of Patently-O* visits received from the associated university in the calendar year 2007. In theory, the number of hits has some correlation with the intensity of interest in patent law issues at the particular school. Of course, university computers represent only a small portion of the 2.8 million total hits received in 2007.

    Rank School Relative Score
    1 The George Washington University 100%
    2 University of Texas at Austin 75%
    3 DePaul University 74%
    4 Columbia University 72%
    5 University of Virginia 72%
    6 University of California at Berkeley 61%
    7 Harvard University 59%
    8 University of Tennessee 54%
    9 Cornell University 54%
    10 Boston University 52%
    11 Georgetown University 49%
    12 New York University 47%
    13 University of Houston 46%
    14 Stanford University 45%
    15 University of Missouri-Columbia 44%
    16 Washington University 42%
    17 University of Chicago 41%
    18 University of Iowa 41%
    19 Indiana University-Purdue University at Indy 39%
    20 Suffolk University 38%
    21 George Mason University 38%
    22 University of Richmond 35%
    23 University of Washington 33%
    24 Northwestern University 29%
    25 American University 29%
    26 Indiana University 29%
    27 University of Michigan 28%
    28 Santa Clara University 25%
    29 Ohio State University 24%
    30 University of Minnesota 23%

    There are many issues with this study. Here are a few: First, law school rankings are generally quite silly. Second, some schools may not use their name in their IP address — making them lose their ranking. This appears to be true of Franklin Pierce Law Center. Schools where students (and professors) primarily study away from campus building may also rank relatively lower.  Fourth, many of these hits come from the Technology Transfer office rather than the law school.

    Up next… Top Thirty Procrastinating IP Law Firms based on number of Patently-O hits…

    The Telephone Gambit: Chasing Alexander Graham Bell’s Secret

    Telephone%20gambitby Seth Shulman

    I thank Dennis Crouch for letting me tell Patently-O readers directly about my latest book, The Telephone Gambit: Chasing Alexander Graham Bell’s Secret out this week from W.W. Norton.

    The book recounts my experience, while working for a year as a fellow at MIT’s Dibner Institute for the History of Science and Technology, of stumbling upon evidence that reveals a twisted mystery surrounding Alexander Graham Bell’s role in the invention of the telephone. Working from Bell’s laboratory notebooks and his voluminous correspondence, I soon found myself caught up in the surprising story behind the invention of the telephone: a tale of romance, unchecked ambition—and corruption at the U.S. Patent Office.

    In the book, I try to capture the feel of the rich and exciting time in which Bell lived at the second half of the 1800s. This was, after all, one of the true golden ages of invention. As Thomas Hughes notes in his classic historical work American Genesis, the number of U.S. patents issued each year during this period rose astronomically. Consider, for instance, that the U.S. Patent office issued 688 patents in 1846 but, by 1890 was issuing more than 26,000 annually. Talk about dramatic technological change!

    The rapid technological change emerging in a Victorian, horse-and-carriage era serves as the backdrop for my tale, but the focus of the book is tight: I wrote it as a kind of a nonfiction detective story, recounting my own story of becoming relatively obsessed with chasing down clues about Bell’s life and times in rare archives and artifact collections around the world to unravel the surprising and long-hidden truth about him.

    In the course of my research, I unearth a “smoking gun” that leaves little doubt that Bell furtively—and illegally—plagiarized his initial telephone design from his major competitor, Elisha Gray in his quest to secure what would become the most valuable U.S. patent ever issued. It is shown below. The sketch circled at the right appears in Alexander Graham Bell’s notebook on March 8, 1876, two days before his famous success calling to Watson in the next room. The circled inset on the left is a confidential patent filing (then called a caveat) rival inventor Elisha Gray had made at the U.S. Patent Office three weeks earlier.

    Bell.Smoking.Gun

    This is not the denouement of the story, but rather its start. When I discovered this connection, I decided to go back to all the primary documents to learn what I could about how Gray’s elegant and successful liquid transmitter design for the telephone could have ended up in Bell’s laboratory notebook. I wanted to know whether it could possibly be true that Bell plagiarized the telephone, how he could have gotten away with it, why Gray wouldn’t have contested his claim, and why we remember history the way we do. I shed light on all these questions as the story unfolds.

    Reviews are just starting to come in and they mostly very gratifying. Barnes & Noble Review just wrote “It’ll be stacked in the science shelves, but The Telephone Gambit might be an early contender for best thriller of the year…Shulman pulls it off, producing a book that’s rigorous, provocative, and, like any thriller worth its salt, a blast to read.” I hope the many readers of this site with expertise in patenting will give the book a look and feel free to share their perspective about the story with me via my website www.sethshulman.com.  

    Paper Posted to Non-Indexed FTP Site Not 102(b) Prior Art

    Internet Gateway TechnologySRI Int’l v. Internet Security Systems (Fed. Cir. 2008).

    In Delaware federal court, SRI accused ISS of infringing four  patents relating live traffic analysis of computer network gateways.  On summary judgment, Judge Sue Robinson held the patents invalid — anticipated by SRI’s own prior work.

    In a split panel, the Federal Circuit vacated — finding a lack of evidence that SRI’s prior publication was sufficiently publicly available more than one year before the patent applications were filed.

    Event History:

    • Aug 1, 1997 — “Live Traffic” paper e-mailed to a conference chair and posted the paper on an accessible SRI FTP site as a “backup” for the conference chair. Paper remained on the FTP site for seven days.
    • Nov 10, 1997 — SRI displays the paper on its website.
    • Nov 9, 1998 — SRI files its patent application.

    Although 35 USC 102(b) contains no explicitly requirement of ‘public accessiblity’ of a prior printed publication, such accessibility has long been required and fills-out the definition of the term ‘publication.’

    In the 2006 Bruckelmyer case, the CAFC noted that public accessibility could be satisfied if a person who is “interested and ordinarily skilled in the subject matter” could locate the publication using “reasonable diligence.”  Otherwise hidden publications can often be considered accessible if they are somehow indexed or cataloged by subject.

    In Bruckelmyer, the court found that an unpublished Canadian patent document was sufficiently accessible because it was related to an on-point issued patent and could be retrieved at the Canadian patent office.

    In this case, the court found insufficient evidence to rule on summary judgment. The FTP server was publicly accessible. However, it was uncataloged and would have been difficult to search. Additionally, only one non-SRI person (the conference chair) was shown to have knowledge of the paper on the FTP site.

    Thus, the court vacated summary judgment for further development of the facts.

    Judge Moore dissented — arguing forcefully that the facts showed public accessibility of the FTP site. (For instance, the FTP site had been used previously and was linked-to from over 70 Google Group posts). Procedurally, Judge Moore also faulted SRI for failing to present any facts on its side (as opposed to attorney argument). Under Rule 56, an opposing party “must set forth specific facts showing that there is a genuine issue for trial.”

    Remembering Mark Banner

    With regret, I report the passing of leading patent attorney Mark T. Banner. Mark was generous and helpful to me in my first few years of practice in Chicago. He was also an occasional Patently-O contributor.

    Mark T. Banner, a Partner in the law firm of Banner & Witcoff, Ltd., died in Tucson, Arizona, Sunday, December 30, at age 57. At the time of his death he was with his wife of thirty two years, Kathie German, and surrounded by those he loved and who loved him.

    Mark was a leader in the field of intellectual property law, specializing in jury trials of technologically complex cases for both plaintiffs and defendants across the country. He was an avid user of the latest technology in an effort to improve cost-effective trial presentations. Mark lectured frequently on patent law, trade secrets, and other intellectual property matters, as well as how to conduct patent trials. He served as a faculty member of the first National Institute of Trial Advocacy program specifically geared to patent litigation trial skills. He was also an adjunct professor at the John Marshall Law School and the Georgetown Law Center, teaching courses on patent law advocacy and enhanced use of technology in the trial of complex cases. Mark served as Chair of the American Bar Section of Intellectual Property Law, and was a bar course administrator for the Master Class on Appellate Advocacy, taught by the Hon. Paul R. Michel, Chief Judge, United States Court of Appeals for the Federal Circuit. For his work in intellectual property law, Mark was listed in Euromoney’s “Guide to the World’s Leading Patent Law Experts” and featured in The Best Lawyers in America, the Leading American Attorneys, The International Who’s Who of Patent Lawyers and the Illinois Super Lawyers.

    Mark received a B.A. degree from Purdue University and went on to receive his law degree from the John Marshall Law School, where he was a member of the Law Review and graduated with high honors.

    Those in the intellectual property law field know well Mark’s rich legacy of accomplishments and recognitions for those accomplishments. He spoke and published widely on the patent law and its importance to encouraging creativity and promoting the general welfare of our country. Those who knew him loved him for his wit, his integrity, his determination, his passion for life and his commitment to teaching.

    In addition to his wife, Mark is survived by his two sisters – Peggy (Mrs. James) Dau of Bartlesville, and Pamela (Mrs. Robert) Banner Krupka of Los Angeles, two brothers Donald J. (Helen) of Pueblo  (Colo.),Brian E. (Cathleen) of Washington, DC., his step-mother Jean Banner of Tucson,  and his step sisters Nancy (Mrs. Robert) Phipps of Nashville, Helen (Mrs. George) Smith of Atlanta, and Louise ( Mrs. Robert) Whitaker of Franklin  (Tenn.).

    A memorial service will be held in Chicago in January 2008.

    The family requests that memorials be made to the Donald W. Banner and Mark T. Banner Scholarship Fund at the John Marshall Law School (315 South Plymouth Court, Chicago IL 60604).

     

    Wegner’s Top Ten for 2008

    Hal Wegner has released his top ten upcoming cases for 2008:

    1. Quanta v. LG – Patent “Exhaustion”
    2. McFarling – Patent “Exhaustion”
    3. Kubin – Biotech Obviousness; Enzo Disclosure
    4. Classen v. Biogen – “Metabolite déjà vu”
    5. Convolve v. Seagate – Petition from In re Seagate
    6. Bilski – Patent-Eligibility under § 101
    7. Sanofi-Synthelabo – The Plavix Case
    8. Sang Su Lee II – Post-KSR Motivation
    9. Ferguson – Method of Marketing a Product
    10. Barnett – Internet-driven Method

     Hal Wegner’s list focuses on utility patent litigation. I would add three other cases from a slightly different vein:

    • Tafas v. Dudas – Challenging the PTO’s power to implement rules limiting continuations and claims. (summary judgment briefs filed).
    • Egyptian Goddess v. Swisa – Redefining the meaning of infringement and claim construction for design patents. (rehearing en banc pending).
    • Bender v. Dudas – Challenging the PTO’s ability to regulate patent attorney business relationships that go beyond ‘practice before the office.’ (on petition for certiorari).