I often find myself telling clients that the law surrounding 35 U.S.C. §101 is in a state of flux. Others might argue that clusterflux would be a more apt description.
Judge Bryson made a fitting observation about 35 U.S.C. §101 during the oral argument of PerkinElmer, Inc. et al. v. Intema Ltd., 2011-1577 (Fed. Cir. Nov. 20, 2012). He noted that when it comes to questions, §101 is a gift that never stops giving. [Listen].
Looking for oral arguments from state courts? Audio and video of oral arguments from selected state courts may be accessed here: Link. (Scroll down)
Judge O’Malley spoke at the Stanford patent law program in May, which is available on You Tube. You can view her comments here:
One can easily access the audio recordings of oral arguments from the Federal Circuit website. However, for those who prefer to use iTunes, I noticed that recent recordings are available from iTunes at this link for free.
In reading Judge Moore’s dissent in Norgren v. ITC, __ F.3d __ (Fed. Cir. 2012) that issued the other day, her comment about the functional language in the claim at issue caught my eye. The claim at issue read:
1. Connecting structure for contiguously connecting
together a pair of fluid-flow elements, each
fluid flow element including a generally rectangular
ported flange so as to define a pair of ported
flanges associated with the fluid-flow elements,
said connecting structure comprising:
a four-sided, generally rectangular clamp adapted,
in its operative clamping position, to engage, in
parallel relationship with one another, the pair of
ported flanges, one of said sides of the clamp being
pivotally mounted so that said one side can be
pivoted out of said operative clamping position in
order to permit reception of said flanges into the
clamp and then pivoted back into said operative
clamping position,
sealing means for establishing fluid-tight communication
between the respective ports formed in
said flanges, and
locking means for releasably locking said one side
in said operative clamping position, in which position
the clamp urges the flanges towards one another
thereby establishing together with said
sealing means, said fluid-tight communication between
said ports.
In discussing the functional language, Judge Moore comments that the functional language is a requirement of the claim that must be treated as a claim limitation:
We must look to the precise claim language and be
ever vigilant not to strip away patent rights by eliminating
claim limitations. This claim requires the clamp to be
both “generally rectangular” and “four-sided” in structure.
Hence, while something with six sides (like the SMC
ported flange pictured above) might be generally rectangular,
that does not mean it is “four-sided.” The claim
does not require that the flange be four-sided, but it does
require that the clamp be “four-sided.” The claim also
recites the functional limitation that the clamp must be
“adapted, in its operative clamping position, to engage
. . . the pair of ported flanges.”
Hence the claims require that the clamp is: (1) foursided;
(2) generally rectangular; and (3) adapted in its
operative position to engage the flanges. These are three
distinct requirements, three distinct claim limitations.
The ALJ clearly understood this. The majority, however,
improperly combines the structural and functional claim
limitations to conclude that only the operative portion of
the clamp must be four-sided and generally rectangular.
(Emphasis added).
In view of Judge Moore’s remarks, look for more uniform examination within the PTO of claims that include “adapted to” and other functional language — or not.
This might be of interest to those of you with easy access to the Library of Congress. I wonder if Box 599 holds anything of interest for the briefing of CLS v. Alice: [Link].
Richard Taranto was nominated a year ago today for a seat on the US Court of Appeals for the Federal Circuit. Mr. Taranto’s nomination followed the failed nomination of Edward DuMont, who was a nominee between April of 2010 and November 2011. The open seat on the bench for which Mr. Taranto is a nominee has been vacant since Chief Judge Paul Michel’s retirement from the Federal Circuit on May 31, 2010. The nomination of Mr. Taranto fell victim to the Leahy-Thurmond rule earlier this year. With the election now concluded, Mr. Taranto’s nomination should advance to a vote by the full Senate.
You can watch the nomination hearing for Mr. Taranto here.
The Supreme Court of the United States heard oral argument today in the case of Already v. Nike. The question presented is:
Whether a federal district court is divested of Article III jurisdiction over a party’s challenge to the validity of a federally registered trademark if the registrant promises not to assert its mark against the party’s then-existing commercial activities.
The transcript of the oral argument is available here: link.
The audio of the oral argument is available [here.].
Justice Breyer’s famous comment is available [here].
The briefs are available here:
If I am interpreting the US Courts’ website correctly, Judge William C. Bryson is scheduled to take senior status on January 7th. That means that it is likely that at least three new Federal Circuit judges will be sworn in within the next year.
WILLIAM C. BRYSON was appointed by President William J. Clinton in 1994. Prior to his appointment, Judge Bryson was with the United States Department of Justice from 1978 to 1994. During that period, he served as an Assistant to the Solicitor General [1978-79], Chief of the Appellate Section of the Criminal Division [1979-83], Counsel to the Organized Crime and Racketeering Section [1983-86], Deputy Solicitor General [1986-94], Acting Solicitor General [1989 and 1993], and Acting Associate Attorney General [1994]. He was an Associate at the Washington, DC law firm of Miller, Cassidy, Larroca and Lewin from 1975 to 1978. Judge Bryson served as Law Clerk to the Honorable Henry J. Friendly, United States Court of Appeals for the Second Circuit from 1973 to 1974, and as Law Clerk to the Honorable Thurgood Marshall, Supreme Court of the United States, from 1974 to 1975. Judge Bryson received an A.B. from Harvard College in 1969 and a J.D. from the University of Texas School of Law in 1973.
From The Third Branch, February 2000:
The Senate confirmation of Judge Richard Linn to the Court of Appeals for the Federal Circuit went right down to the wire in the waning hours of the 106th Congress’ first session. “I realized when the Senate confirmed me on November 19, just before they adjourned,” said Linn, “that mine would be the last judicial confirmation of the 20thcentury.” He mentioned that historical fact to his 13-year-old nephew, Christopher, whose great grandfather was Judge Orrin Lewis (E. D. Va.) and whose father and grandfather are attorneys. Christopher considered for a moment, then, with the legal acuity he’d obviously inherited, suggested his uncle therefore should be the first federal judge sworn in of the new century.
“I proposed to Chief Judge H. Robert Mayer that I be sworn in at the court on New Year’s Eve and he was very supportive,” said Linn, who couldn’t have chosen a better time or location for his ceremony. The chambers of Chief Judge Mayer look out on the Washington Monument, where fireworks and other festivities were scheduled as part of the nation’s millennium celebration.
In due course, family and friends gathered in Chief Judge Mayer’s chambers. Judge Alan Lourie (Fed. Cir.) had synchronized his watch with the cesium clock in Colorado, to assure to the second the accurate time, and at the stroke of midnight Judge Linn placed his hand on the bible to take the oath. “Just at that moment the fireworks erupted around the Monument,” relates Linn. “I was naturally focussed on the oath and making sure I didn’t leave out something, but it was difficult with all the fireworks going off.” With theatrical flair, a crescendo of fireworks broke over the Mall as Linn finished the oath. “I’ll never, ever forget it,” said Linn, the nation’s first new federal judge in the brand new 21stcentury.
Natural disasters often drive home the value of a patent system that incentivizes all types of innovation — whether it be living organisms or business methods. For example, the Chakrabarty case concerned a new living organism that could be used to help clean up oil spills.
You may have also heard of Nathan Myhrvold’s and Bill Gates’ applications for taking the bite out of hurricanes. For example, claims of this particular application are directed at a method of doing business: [Water Alteration Structure Risk Management or Ecological Alteration Management Systems and Methods].
The Supreme Court is set to hear oral argument tomorrow in the copyright case of Kirtsaeng v. John Wiley & Sons. The ABA does a nice job of gathering the briefs for each Supreme Court case. You can access the ABA’s Kirtsaeng preview at this link.
The proper use of the word “each” is pretty straightforward. Right? If you are up to the task, select the correct sentence in the following groupings. Answers to follow in a later post.
I. a. Each of them sees many advantages in that plan.
b. Each of them see many advantages in that plan.
II. a. Each of the children is happy today.
b. Each of the children are happy today.
III. a. Every one of these four-door cars is ugly.
b. Every one of these four-door cars are ugly.