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Todd M. Hughes was nominated for the Federal Circuit on February 7, 2013.  The Senate Judiciary Committee recently posted his committee questionnaire.  The questionnaire is available here: [Link].

Mr. Hughes listed his most significant litigation matter as Haas v. Peake, 525 F.3d 1168 (Fed. Cir. 2008) which concerned the interpretation of a statute governing disability compensation for Agent Orange exposure.

You can listen to Mr. Hughes in the oral argument of the Haas case here: [Listen].

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

The oral argument of the month is from Biax Corp. v. Nvidia Corp., 2012-1387 (Fed. Cir. Feb. 8, 2013)(Rule 36 Judgment): [Listen].

I thought that this oral argument was interesting because it touched on several issues that are of interest to practitioners.  For example, each side seemed to argue that the use of the phrase “the present invention” helped their case.  The term “the present invention” appeared in the specification and in arguments in the prosecution history.  While the term “the present invention” was used in the specification, the specification was also asserted to disclose multiple embodiments.  Strong statements in the prosecution history were asserted to effect a clear and unmistakable disavowal — yet, the appellant cited authority for why those statements did not necessarily apply to the claims in dispute.

After listening to the oral argument, you might find yourself wondering if a written opinion rather than a Rule 36 Judgment would have been helpful to understand the court’s thought process.

I do a fair amount of opinion work as part of my law practice; so, I’m always interested in cases where the doctrine of claim vitiation is a topic during oral argument. The doctrine of claim vitiation has yielded some interesting comments from the bench in past cases.  See these posts for past comments by Chief Judge Rader. [Link], [Link], and  [Link].

Judge Moore had some frank words about the doctrine of claim vitiation during the oral argument of Source Vagabond Systems Ltd. v. Hydrapak, Inc., 2012-1408 (Fed. Cir. 2013)(Rule 36 Judgment):  [Listen] and [Listen].  In the second sound bite, she notes that she would be happy to “scratch it out of existence.”

You can listen to the entire oral argument from Source Vagabond here: [Listen].

Personally, I find the doctrine of claim vitiation to be a useful tool when there clearly  is no equivalent.  However, I understand the court’s frustration with how to apply the doctrine.

Here is one more post on the related issue of the specific exclusion principle: [Link].

Two recently decided Federal Circuit cases that deal with claim vitiation are:

Deere and Co. v. Bush Hog, LLC et al.,  __ F.3d __ , Nos. 2011-1629, -1630, -1631 (Fed. Cir. 2012)(Chief Judge Rader writing for the court) [Link]; and

Brilliant Instruments, Inc. v. Guidetech, LLC, __ F.3d __, No. 2012-1013 (Fed. Cir. 2013)(Judge Moore writing for the court; Judge Dyk in dissent) [Link].

The transcript from the Supreme Court oral argument in Bowman v. Monsanto is now available [here].

Judge Leonard Davis of the Eastern District of Texas sat by designation with the Federal Circuit last week.  Since Chief Judge Rader took over the Chief Judge position from Paul Michel, relatively few district court judges have sat by designation with the Federal Circuit.

So far, Sandra Day O’Connor has yet to sit by designation with the Federal Circuit.  She has sat by designation with every other circuit court of appeals except the D.C. Circuit Court.

The Federal Circuit sat en banc for two oral arguments last Friday.

The audio for the oral argument in Robert Bosch v. Pylon Mfg. Corp. is available [here].

The audio for the oral argument in CLS Bank v. Alice Corp. is available [here].

Professor Sean O’Connor has posted some photos of Chief Judge Rader’s band DeNovo performing in Beijing this past October: [Link].

I understand there is no truth to the rumor that the opening act for De Novo is the Ipse Dixit Chicks.

The Federal Circuit will sit en banc and hear oral argument in the cases of CLS v. Alice and Bosch v. Pylon in exactly one month.

The questions presented in CLS v. Alice are:

a. What test should the court adopt to determine whether a computer-implemented invention is a patent ineligible “abstract idea”; and when, if ever, does the presence of a computer in a claim lend patent eligibility to an otherwise patent-ineligible idea?

b. In assessing patent eligibility under 35 U.S.C. § 101 of a computer-implemented invention, should it matter whether the invention is claimed as a method, system, or storage medium; and should such claims at times be considered equivalent for § 101 purposes?

At this stage, the big questions in my mind are whether: (1) Richard Taranto will have been confirmed and sworn-in by February 8th; and (2) whether either Judge O’Malley or Judge Moore will have any reason to recuse themselves.  With respect to this second issue, I hope not.

In the en banc appeal of Bosch v. Pylon, the court will consider:

a. Does 28 U.S.C. § 1292(c)(2) confer jurisdiction on this Court to entertain appeals from patent infringement liability determinations when a trial on damages has not yet occurred?

b. Does 28 U.S.C. § 1292(c)(2) confer jurisdiction on this Court to entertain appeals from patent infringement liability determinations when willfulness issues are outstanding and remain undecided?

Richard Taranto was re-nominated for a seat on the Federal Circuit on Thursday.  You can read the press release from the White House [here].

With Judge Bryson apparently taking senior status next week, I thought it might be of interest to take a look back at his confirmation hearing before the Senate Judiciary Committee in 1994:

We will now turn to the introduction of William C. Bryson, of Be-

thesda, MD.

Senator Sarbanes, if you would come forward.

STATEMENT OF HON. PAUL S. SARBANES, A U.S. SENATOR

FROM THE STATE OF MARYLAND

Senator Sarbanes. Senator DeConcini and Senator Simon, I am

very pleased to be here this afternoon to introduce William C.

Bryson, a distinguished resident of Maryland who has been nomi-

nated by the President to serve as a U.S. circuit judge for the Fed-

eral Circuit. Bill is sitting right here behind me.

I must say he brings an extraordinary record before this commit-

tee, a graduate of Harvard College, magna cum laude, in 1969, and

from the University of Texas Law School in 1973, where he was

editor-in-chief of the Texas Law Review.

After he graduated from the University of Texas Law School, he

clerked first for Judge Henry Friendly, one of our Nation’s most

distinguished jurists, in the second circuit, and then was law clerk

for Justice Thurgood Marshall on the Supreme Court.

Bill Bryson then went into practice here in Washington for 3

years where he did civil and criminal litigation, mainly Federal, at

the trial and appellate levels. Since 1978 — in other words, for the

last 15, 16 years — he has been in the Department of Justice in in-

creasingly more senior and responsible positions.

He started as assistant to the Solicitor General. He then became

chief of the Appellate Section in the Criminal Division. He then

was Special Counsel to the Organized Crime and Racketeering Sec-

tion of the Criminal Division; that was from 1982 to 1986.

From 1986 to the present, he has been in the Solicitor General’s

office. He was a Deputy Solicitor General, one of four deputies to

the Solicitor General responsible for supervising and briefing and

the argument of cases before the Supreme Court. He twice has

been the Acting Solicitor General. In between the resignation of

one Solicitor General and the appointment of another, he served as

the Acting Solicitor General. Until just a few weeks ago, he was

Acting Associate Attorney General following the resignation of

Webster Hubbell.

So he has, in effect, given a career of dedicated public service in

the Justice Department, and he has been recognized at every step

along the way and I just want to mention two or three of these rec-

ognitions.

In 1984, the Federal Bar Association gave him the Tom C. Clark

Award. It is awarded annually to a Federal agency lawyer for out-

standing service as a government lawyer. In 1985, he received the

Department of Justice Exceptional Service Award, the highest

award in the Department of Justice. It is given annually to the

Justice Department attorney who has rendered the most excep-

tional service. In 1990, he was the first recipient of the Beatrice

Rosenberg Award, which is awarded annually by the District of Co-

lumbia bar for outstanding service as a government attorney.

He has had an extraordinary record. It is one of very distin-

guished public service. I think this appointment is very well mer-

ited. He will be an outstanding member of the Federal circuit, and

I commend him to the committee most strongly and urge your fa-

vorable recommendation. I look forward to his early confirmation

by the Senate.

Senator DeConcini. Thank you, Senator Sarbanes. We appre-

ciate your taking the time to introduce Mr. Bryson and your strong,

strong recommendation.

(more…)

The Denver Business Journal is reporting that the USPTO will open a temporary satellite office at the Federal Center in Lakewood, CO (a western suburb of Denver) on January 2, 2013.  This will allow the Denver Patent Office to get up and running with its hiring efforts while the renovation of the permanent office space in downtown Denver is completed.  The link to the article is available here:  [Link].

When the Federal Circuit visited Denver this past October, I attended one of the seminars where Judges Rader, Linn, and Wallach spoke.  They noted that the Federal Circuit, relative to some other circuit courts, is considered to be a very collegial court.

The proceedings prior to some relatively recent oral arguments highlighted this point:

Swearing-in ceremony for Judge Prost’s clerks and remarks by Judge Moore: [Listen];

Judge O’Malley’s first panel as presiding member and remarks by Judge Plager: [Listen]; and

Swearing-in ceremony for Judge Plager’s clerk: [Listen].

I’m beginning to think that the Federal Circuit really likes lollipops.  Today in In re Fox, the court denied trademark protection for lollipops in the shape of a rooster, under the scandalous matter doctrine.  Less titillating but more infamous is the court’s decision in In re Gorman, where the court in an opinion authored by Judge Newman (!) affirmed a Board decision that relied on a combination of thirteen (13) references to deny patent protection for a lollipop shaped like a thumb.  The Gorman claim read as follows:

16. A composite food product, comprising:

a candy core, said candy core being in a generally liquified form when formulated, heated, blended and poured into a mold and in a substantially thumb-shaped hardened form when cooled and removed from said mold;

said thumb-shaped hardened form comprising said candy core positioned along a vertical axis and comprising a rigid joint-shaped portion, a rigid upper portion extending upwardly from said rigid joint-shaped portion along said vertical axis, and a rigid lower portion extending downwardly from said rigid joint-shaped portion along said vertical axis, said upper portion having a rigid finger nail-shaped portion with an upper rigid tip providing a rigid top end of said thumb-shaped hardened form and a rigid convex back extending rearwardly and downwardly from said rigid tip, and said rigid lower portion having a rigid bottom end and defining a recessed opening comprising a handle-receiving socket about said vertical axis;

a removable resilient shell comprising a substantially thumb-shaped, elastomeric material selected from the group consisting of rubber and flexible plastic, said shell providing

a mold for receiving and molding said liquified candy form,a removable outer protective cover positioned about and covering said hardened form comprising said candy core, and

a toy and novelty item for placement upon the thumb of the user when removed from said hardened form comprising said candy core;

said thumb-shaped elastomeric material comprising said removable resilient shell comprising a flexible joint-shaped portion, a flexible upper portion extending upwardly from said flexible joint-shaped portion along said vertical axis, and a flexible lower portion extending downwardly from said flexible joint-shaped portion along said vertical axis, said upper portion having a flexible finger nail-shaped portion with an upper flexible tip providing a flexible top end of said shell and a flexible convex back extending rearwardly and downwardly from said flexible tip, and said flexible lower portion having an enlarged open ended diverging base, said base having a larger circumference and transverse cross-sectional area than other portions of said shell and providing the bottom of said shell, said open ended based defining a plug-receiving chamber and an access opening for entrance of said liquified form and discharge of said hardened candy form, and a set of substantially symmetrical arcuate lobes extending radially outwardly from said base, said lobes being circumferentially spaced from each other and providing manually grippable flange portions to facilitate manual removal of said shell from said core;

a plug positioned in said plug-receiving chamber adjacent said bottom of said shell, said plug abutting against the bottom of said core and providing a cap for substantially plugging and sealing the open end of said mold and cover to help enclose said candy core, and said plug comprising a food grade material selected from the group consisting of bubble gum, chewing gum, chocolate, and food grade wax;

a handle having a connecting portion connected to said plug and said candy core and positioned in said plug-receiving opening and having a manually grippable handle portion extending downward from said connecting portion along said vertical axis; and

a substantially planar annular disk for abuttingly engaging and removably seating against said base and said lobes adjacent said plug, said disk defining a central axial hole for slidable receiving said handle portion and having an outer edge with a maximum span larger than said access opening but less than the maximum diameter of said symmetrical set of lobes to substantially minimize the interference with manually gripping of said manual grippable flange portions of said lobes, said disk being of a material selected from the group consisting of paper, paperboard, and plastic, and providing a removable closure member and seal for substantially closing said access opening and sealing said plug and said candy core within said shell.

You can read the In re Gorman opinion here: [Link].

At the end of their term serving as clerks at the Federal Circuit, clerks for Federal Circuit judges are typically sworn-in to the Federal Circuit bar by their judge.  Judge Dyk recently swore-in his clerks.  [Listen].

I recognized the name of one of Judge Dyk’s clerks.  Lisa L. Ouellette is the author of the Written Description blog.