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It would be interesting to see a plot of the rise and fall of use of the term “the present invention” in patent applications.  With cases like Scimed v. Advanced Cardiovascular Systems, 242 F.3d 1337 (Fed. Cir. 2001) and Honeywell v. I.T.T., 452 F.3d 1312 (Fed. Cir. 2006),  I suspect there has been a precipitous drop in use of “the present invention” as a stand-alone phrase.  The oral arguments in recent appeals in the pharmaceutical arena highlighted the issue once again.

In the appeal of Albany Molecular Research, Inc. v. Dr. Reddy’s Labs, Ltd., No. 2011-1232 (a case that settled after oral argument), Judge Bryson raised the issue of “the present invention” language with the patent owner’s counsel: [Listen].  Later in the oral argument, the attorney for the opposing side asserted that the stand-alone phrase had limiting effect, as well: [Listen].

Subsequent to that first oral argument, a second oral argument was held in the case of Aventis Pharmaceuticals, Inc. et al. v. TEVA Pharmaceuticals USA, Inc. et. al, 2011-1335, -1336 (Fed. Cir. 2013).  The two cases concerned different patents that share a common specification.  During the second oral argument, a discussion of “the present invention” language once again took place.  Judge Bryson asked the attorney for the patent owner whether the language “the present invention” was limiting:  [Listen].  Later in the oral argument, the attorney for the opposing side advocated for a limiting claim construction based on the use of “the present invention” in the Abstract, Summary, and Detailed Description sections of the patent:  [Listen].

While Judge Bryson seemed curious during both oral arguments about the impact of  “the present invention” language, his dissent in the Aventis case (as well as the majority’s opinion) ultimately makes no mention of “the present invention” language.

You can listen to the entire oral argument of 2011-1232 here: [here].

You can listen to the entire oral argument of the Aventis case here:  [here].

You can read the Aventis opinion here: [Link].

1) The House Committee on Small Business conducted a hearing on the impact of the AIA earlier this month. Patently O’s Dennis Crouch was one of the witnesses. You can see more materials here: [Link].  Small companies develop 16 times more patents per employee than large firms.

2) The Federal Circuit sat en banc last Friday for oral argument in Berry v. Conyers, a merit systems protection board case. You can listen to that oral argument here: [here].

3) The BNA PTCJ ran an interesting article a few weeks ago that might interest readers.  The article addressed three recently issued “informative opinions” by the PTAB that construed “processor” as a means plus function term.  The author of the article is Andy Spence.  You can access the article here [Link].  I’m not sure what the process is for designating a PTAB opinion as an informative opinion, as opposed to a standard opinion.  By happenstance, all three opinions were by five judge panels.

I was pleased to see GW Law professor (and former Wash. U. Law professor) Scott Kieff nominated to the ITC last September.  However, since then it does not appear that he has received a nomination hearing.  The Senate Finance Committee is the committee tasked with such a hearing.  That committee appears to be as slow as the Senate Judiciary Committee is with some of its nominations.

The Senate Judiciary Committee voted this past Thursday to approve the nomination of Raymond Chen to the Federal Circuit.  Solicitor Chen’s nomination will now move to the full Senate for consideration.  [Link]

The Federalist Society has posted the video of the recent conference entitled “Is the Patent System Working or Broken? A Discussion with Four Distinguished Federal Judges.”  That conference was held on May 14th and featured Circuit Judges Michel (ret.) and Gajarsa (ret.), as well as Judge Posner.  The link for the video is available here.

The Federal Circuit will be holding its 15th Annual Bench and Bar Conference on June 19th-22nd at the Broadmoor in Colorado Springs, Colorado.  You can view the agenda here.

I believe at least one of the judges might be speaking to the Colorado Bar Association prior to the conference.  I’ll post that information as it becomes available for those of you who might want to make your travel plans to allow you to go to that luncheon.

Actually, the person I would like to see speak right now is retired Chief Judge Paul Michel.  I’m sure he would have some interesting and candid thoughts on the CLS v. Alice decision.

I was curious whether Judge Lourie had ever relied upon the Supreme Court case of Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336 (1961) (“Aro I”) in the opinions that he has authored for the court.  It turns out that he has. Here are some examples.

This court, however, has rejected a claim construction process based on the “essence” of an invention. See, e.g., Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1345 (Fed.Cir.2002) (“It is well settled that `there is no legally recognizable or protected essential element, gist or heart of the invention in a combination patent.'”) (citing Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 345, 81 S.Ct. 599, 5 L.Ed.2d 592 (1961)).

Ormco v. Align, 498 F.3d 1307, 1322 (Fed. Cir. 2007).

We agree with Cooper, however, that the district court erred in granting summary judgment that the asserted claims of the ‘119 patent are invalid for failure to meet the written description requirement. In Vas-Cath, we held that “under proper circumstances, drawings alone may provide a `written description’ of an invention as required by § 112.” 935 F.2d at 1565, 19 USPQ2d at 1118. Drawings constitute an adequate description if they describe what is claimed and convey to those of skill in the art that the patentee actually invented what is claimed. Id. at 1566, 935 F.2d 1555, 19 USPQ2d at 1119. In Vas-Cath, we reversed the district court’s grant of summary judgment of invalidity of claims to a double lumen catheter having a combination of features. In particular, we disagreed with the court’s statement that one could not tell from the drawings what combination of the disclosed features constituted “the invention” because “[t]hat combination invention is what the [patent’s] drawings show.” Id. at 1565, 935 F.2d 1555, 19 USPQ2d at 1118. The court’s concern with “what the invention is” was misplaced, we explained, because there is no “legally recognizable or protected `essential’ element, `gist’ or `heart’ of the invention in a combination patent.” Id. (quoting Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 345, 81 S.Ct. 599, 5 L.Ed.2d 592 (1961)).

Cooper Cameron v. Kvaerner Oilfield Products, 291 F.3d 1317, 1322 (Fed. Cir. 2002)

The disputed term at issue, “perforated,” appears not in the claims but rather in the district court’s construction of a disputed claim term. We note, as an initial matter, that “we do not ordinarily construe words that are not in claims.” Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1334 (Fed.Cir. 2009); see also AroMfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 339, 81 S.Ct. 599, 5 L.Ed.2d 592 (1961) (“[T]he claims made in the patent are the sole measure of the grant.”). However, in those cases in which the correct construction of a claim term necessitates a derivative construction of a non-claim term, a court may perform the derivative construction in order to elucidate the claim’s meaning.

Advanced Fiber Technologies Trust v. J & L FIBER, 674 F. 3d 1365, 1373 (Fed. Cir. 2012)

Circuit Judge Richard Taranto sat for his first oral argument at the Federal Circuit yesterday.  Chief Judge Rader offered these welcoming remarks: [Listen].

The Federal Circuit also has a visiting judge this month.  Judge Dee Benson of the District of Utah heard oral arguments today at the Federal Circuit.  Judge Benson and Judge Rader served together on Senator Orrin Hatch’s staff in the 1980’s.

The Senate Judiciary Committee quietly conducted the confirmation hearing for Raymond Chen last Wednesday.  While only three senators on the committee were present for the hearing, the questioning was refreshingly more patent-centric than in recent hearings for Federal Circuit nominees.

The video of the April 24th hearing is available at this page: [Link].

You can view the introduction of Mr. Chen at the 23:20 minute mark.

Mr. Chen makes his own introductions at the 29:25 minute mark.  There was an impressive turnout of supporters.

The questioning by the senators can be viewed at approximately the 38:00-41:16 (Hirono), 41:16-49:48 (Grassley), and 58:40-1:01:59 (Lee) minute segments.

One might wonder if Senator Hirono has drunk the Kool-Aid of the anti-software-patent lobby, based on some of her questioning.  She strikes me, however, as much more astute than that.

The Federal Circuit recently affirmed the PTO in the appeal of In re Karl Urquhart by way of a Rule 36 Judgment.  The oral argument is of interest in that it addresses broadest reasonable interpretation (BRI) of claim language as well as functional language.

Claim 13 of the application was one of the claims at issue.  Claim 13 recited:

Claim 13 (REJECTED)  A semiconductor processing
system comprising:
     a semiconductor process tool including a tank, wherein the semiconductor tool is
configured to process a semiconductor component; and
     a blender system comprising:
          a blender unit configured to receive and blend at least two chemical compounds
and deliver a solution comprising a mixture of compounds at selected
concentrations to the tank, wherein the tank retains a selected volume of a
chemical solution bath; and
          a controller configured to maintain at least one compound within a selected
concentration range in the chemical solution bath, wherein the controller
controls at least one of:
              operation of the blender unit to maintain the concentration of the at
least one compond within a selected concetration range within the solution
delivered to the tank; and

               a change in flow rate of solution into and out of the tank when a

concentration of the at least one compound within the chemical solution bath falls outside

of a target range.

The claim was deemed anticipated by a patent directed at a bathtub that mixed hot and cold water, US Patent 1522120.

The Appellant argued that the PTO had failed to properly apply the language “a semiconductor process tool.”  For example, in its appeal at the Board level the Applicant/Appellant cited In re Suitco Surface:

Claim 13 requires the claimed system to have “a semiconductor process tool including a tank, wherein the semiconductor tool is configured to process a semiconductor component.”  Even if you disregard the “configured to” portion, the claim still requires “a semiconductor process tool including a tank.”  The Examiners insist that a bathtub is a semiconductor process tool.  A bathtub is not even remotely related to a semiconductor process tool.  The absurdity of this claim construction argument is matched only by the Examiner’s stubborn refusal to acknowledge that it is absurd. Unfortunately, this sort of thing has become all too commonplace within the USPTO.  MPEP §2111; In re Suitco Surface, Inc. (Fed. Cir. Case No. 2009-1418, decided April 14, 2010)(“The PTO’s construction here, though certainly broad, is unreasonably broad.  The broadest-construction rubric coupled with the term ‘comprising’ does not give the PTO unfettered license to interpret claims to embrace anything remotely related to the claimed invention.”).

You can listen to the oral argument [here].

You can view the Rule 36 Judgment [here] that affirmed the rejection of the claims.

The Federal Circuit illustrated its flexibility last month by conducting an oral argument with one of the parties participating by telephone.  It appeared to be a rare circumstance.  The oral argument was scheduled for March 7th and a snowstorm along the East Coast caused many flights to be canceled.  So, in this particular circumstance the appellant was allowed to argue by telephone.  The USPTO appeared in court as the appellee.

You can listen to the oral argument here: [Listen].

You can review the Rule 36 Judgment here: [Link].

The Supreme Court has now posted the audio of the oral argument that took place on Monday in FTC v. Actavis.  The recording of the oral argument is available here.

If you were busy filing patent applications on March 15th and missed the PTO’s presentation on First-Inventor-to-File, the PTO has posted the link to the video.  The link is available here: [link].

The Power Point presentation is available here: [link].

On some of the other blogs, commenters have been wondering aloud if the Federal Circuit’s newest judge, Richard Taranto, will be allowed to participate in the CLS v. Alice case.  CLS v. Alice was argued prior to Judge Taranto joining the Federal Circuit.  Assuming there is no recusal, history suggests that Mr. Taranto will participate.

Judge O’Malley was sworn-in on December 28, 2010 and participated in three en banc cases that were argued before she was sworn-in (Therasense, Tivo, and Slattery).  Judge Reyna was sworn-in on April 7, 2011 and participated in two en banc cases argued before that date (Therasense and Tivo).  Indeed, Tivo was decided less than two weeks after Judge Reyna was sworn-in.  So, the door is still open for Todd M. Hughes to participate if/when he is confirmed.  Ray Chen participated in an amicus brief in the CLS v. Alice case — so, one would assume that he would recuse himself if sworn-in before the decision issues.

Richard Taranto was sworn-in on Friday March 15th as the newest judge on the Federal Circuit.