717 Madison Place

Listening to oral argument recordings from various cases presents an opportunity to try and read the tea leaves as to where the Federal Circuit is heading with respect to a particular area of the law.  The oral argument in Walker Digital v. Microsoft, 2011-1419 (Fed. Cir. 2012) presents one such opportunity. 

In the oral argument of Walker Digital v. Microsoft, which was argued on March 9, 2012, Judge Moore made a comment about the patentee having a problem if the claims were construed in such a way that they required joint infringement.  The Akamai v. Limelight and McKesson v. Epic cases were argued en banc four months earlier — so, presumably, Judge Moore knew as of March 9, 2012 which way the CAFC was headed in deciding those cases when she made her comment.  You can listen to the sound bite yourself and see if you think it indicates how the CAFC will decide those en banc divided infringement cases: [Listen].

As a sidenote, Judge Moore also took a friendly shot at patent prosecutors and their alleged deficiencies when it comes to knowing the rules of grammar:  [Listen].  Ouch.  Of course, a patent prosecutor is entitled to be his or her own grammarian.  See Chicago Steel Foundry Co. v. Burnside Steel Foundry Co., 132 F.2d 812, 814-15 (7th Cir. 1943), cited in Jonsson v. Stanley Works, 903 F.2d 812, 820-21 (Fed. Cir. 1990).

Federal Circuit court watchers interested in section 101 issues might want to take note that the Federal Cicuit has denied en banc review in Fort Properties v. American Master Lease, LLC, 2009-1242 (Fed. Cir. 2012).   The denial is referenced on the court’s weekly disposition page: [Link].

The BNA had a nice article summing up the recent roundtable on Mayo v. Prometheus that was held at George Washington University last week.  Retired Chief Judge Paul Michel of the Federal Circuit was one of the speakers.  He is quoted as saying:

[I] didn’t think it was a close call at all.  I felt that it was easy passage through Section 101.  But the Supreme Court’s ruling is attitudinally a throwback to pre-Chakrabarty cases like Gottschalk v. Benson and Parker v. Flook.  It presents a vague standard.  How are the more than 7,000 patent examiners and the thousands of patent attorneys and judges going to apply this?  It’s going to be chaos unless the Supreme Court reworks this territory.  It’s most unfortunate.

While it is too bad that Chief Judge Michel has retired from the CAFC, it is nice that he is now free and willing to speak his mind.

Front row: Judges Clevenger, Plager, Newman, Rader, Mayer, Lourie, and Schall. Back row: Judges O’Malley, Prost, Linn, Bryson, Gajarsa, Dyk, Moore, Reyna, and Wallach.

(Click on image for a better view.)

Below:  Nominee Richard Taranto.

The oral arguments in Akamai v. Limelight and McKesson v. Epic took place over 5 1/2 months ago.  I was curious how long it normally takes the court to issue its en banc opinions.  If the chart below showing recent en banc cases is any indication, the decisions should be issued soon.

The U.S. Court of Appeals for the Federal Circuit is one of only two federal appellate courts that Sandra Day O’Connor has not sat on by designation since retiring from the Supreme Court.  The other court, also located in Washington, D.C., is the U.S. Court of Appeals for the D.C. Circuit.

Justice O’Connor sat with the other courts of appeal during these years:

1st:  2008

2nd: 2006

3rd:  2008

4th:  2008, 2009, 2010, 2012

5th:  2009

6th:  2009

7th:  2010

8th:  2007

9th:  2006, 2009, 2011

10th:  2008

11th:  2010

I’m not sure why Justice O’Connor has not sat with the appellate courts located in Washington, D.C.  Perhaps it is by coincidence or perhaps it is by design.  If by design, the Federal Circuit’s upcoming visit to Colorado this fall would afford it an opportunity to invite Justice O’Connor to sit with the court outside of Washington, D.C.

  Each year the Colorado Bar Association publishes its annual survey of legal developments from the previous year. I wrote the chapter this year for developments in intellectual property law.  Most if not all of the developments covered in my chapter were at the federal level; so, the chapter might still be of interest to those of you who don’t practice in Colorado.  At any rate, if you are looking for a concise summary of the major patent, trademark, and copyright developments from 2011, you can order/download a copy (for a nominal fee) [here].

I have added an “audio key” to the blog that attempts to provide a representative sound bite of each judge’s voice.  Hopefully, this will help people identify a particular judge when listening to recordings of oral arguments.  You’ll see the link to the audio key on the upper right hand portion of the site.

If you are curious which judge is speaking during an oral argument recording, my suggestion is to:

(1) pull up the decision (usually provided as a link on the web post);

(2) note from the opinion who the judges on the panel are; and

(3) use the following sound bites as an audio key to identify the speaker:

Chief Judge Rader [Listen]

Circuit Judge Newman [Listen]

Circuit Judge Lourie [Listen]

Circuit Judge Bryson [Listen]

Circuit Judge Linn [Listen]

Circuit Judge Dyk [Listen]

Circuit Judge Prost [Listen]

Circuit Judge Moore [Listen]

Circuit Judge O’Malley [Listen]

Circuit Judge Reyna [Listen]

Circuit Judge Wallach [Listen]

——————–

Senior Judge Gajarsa [Listen]

Senior Judge Mayer [Listen]

Senior Judge Plager [Listen]

Senior Judge Clevenger [Listen]

Senior Judge Schall [Listen]

——————–

Chief Judge Michel (retired) [Listen]

———————

Senior Judge Archer (deceased) [Listen]

Senior Judge Friedman (deceased) [Listen]

Director David Kappos of the USPTO will be the keynote speaker at the University of Colorado Law School patent event later this afternoon.  He is scheduled to speak at 2:15-2:45 Mountain time.  I’m sure local practitioners are curious if there will be any announcement about a possible Denver satellite patent office.*

—————————————————————————————————-

*Update: 

There was no announcement about satellite offices. 

You can watch the recorded video of Director Kappos’ presentation [here].   You can see Director Kappos’ slides from his presentation here: [Link].

Looking over Abraham Lincoln’s patent the other day, I noticed the boilerplate portion of his specification.  It reads:  

I wish it to be distinctly understood, that I do not intend to limit myself to any particular mechanical arrangement, in combining expansible buoyant chambers with a vessel, but shall vary the same as I may deem expedient, whilst I attain the same end by substantially the same means.

Courts from time to time have pointed to boilerplate to support their positions.  Indeed, this happened just the other day in Judge Prost’s opinion for the court in Aventis Pharma v. Hospira, __F.3d __ (Fed. Cir. 2012)(emphasis added):

This interpretation of “perfusion” also is consistent with the teachings of the specification. Although the specification does refer to perfusions with a stability of at least eight hours, see ’561 patent col.2 ll.43-45 (“The new perfusions [referring to examples in the specification] are stable from a physical standpoint, that is to say no precipitation phenomenon is seen to appear within approxi-mately 8 hours.”), and the disclosed examples of perfu-sions have stabilities exceeding eight hours, see id. at col.2 l.59-col.3 l.26, these general descriptions of the characteristics of embodiments do not suffice to limit the claims. See Thorner, 669 F.3d at 1366 (“It is likewise not enough that the only embodiments, or all of the embodi-ments, contain a particular limitation.”). Indeed, the specification expressly instructs that the disclosed examples “are not to be considered as limiting the invention.” ’561 patent col.2 ll.53-54. Moreover, in contrast to the specification’s discussion of anaphylactic and alcohol intoxication manifestations, nothing in the specification indicates that a minimum stability of eight hours is an essential feature of the claimed perfusion or an advantage of the perfusion over the prior art. See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906-09 (Fed. Cir. 2004) (distinguishing cases where the court narrowly construed an otherwise broad claim term).

The authors of the book “Drafting Patents for Litigation and Licensing” have documented other occasions where the presence of boilerplate, as well as the omission of boilerplate, was noted by a court.  For example, in Rexnord Corp. v. Laitram, 274 F.3d 1336,1345 (Fed. Cir. 2001), Judge Clevenger writing for the court said:

Moreover, the written description explicitly states that aside from the preferred embodiment, “[t]he invention is capable of other embodiments and of being practiced or being carried out in various ways.” ‘550 patent, col. 3, ll. 57-59. The inventor was careful to consistently use phrases throughout the written description such as: “In one embodiment …”, “Before one embodiment …”, “of other embodiments …”, “of a preferred embodiment …”, or “In the particular embodiment….” These phrases reflect the inventor’s teaching that his invention could be embodied “in various ways.” Finally, the inventor explicitly qualified his detailed “Description of A Preferred Embodiment” by stating that “it is to be understood that the invention is not limited in its application to the details of construction and the arrangements of components set forth in the following description or illustrated in the drawings.” ‘550 patent, col. 3, ll. 54-57.

In contrast, the omission of boilerplate was noted by a district court judge in Honeywell Intern., Inc. v. ITT Industries, Inc., 330 F. Supp. 2d 865, 880 n. 12 (E.D. Mich. 2004):

 Importantly, there is absolutely nothing in the specification to contradict this characterization by implying that the invention is broader than a fuel filter or that a fuel filter is merely an example part.¹²

Footnote 12. For example, the boilerplate statement that other embodiments and variations will be readily apparent to persons of ordinary skill in the art, which appears in many patents after the written description and before the claims, is not present in the ‘879 patent.

I ran across three patent claim term glossaries that are available for free from the Public Patent Foundation web site [Link]. 

The glossaries are for: 

Electronics, Computer, and Business Method claim terms: [Link];

Mechanical, Electro-mechanical, and Medical Device claim terms: [Link]; and

Chemical, Pharmaceutical, and Biotechnology claim terms:  [Link].

You may recall that Chief Judge Rader’s band “De Novo” performed at the “House of Blues” in San Diego back in January.  DLA Piper has posted an extensive photo slideshow of the performance here: [Link] and [Link].

I have often thought it would be interesting if someone would start a Wikipedia page listing past Federal Circuit clerks — much like Wikipedia has done with Supreme Court clerks.  It would be interesting to see where the clerks go after their service on the court and which undergrad and law schools the clerks attended.  To what degree do they go to work at the Solicitor’s Office, in-house, or private practice?  It would also be interesting to see how different technical areas are represented via clerks’ technical degrees. 

Searching for something else this evening, I stumbled across the web site The Clerkship Scramble [Link].  It had some information about law schools attended by recent clerks.  Maybe readers can help that blogger fill out the roster for blank years:

Chief Judge Randall R. Rader
Howard T. Markey National Courts Building
717 Madison Place, N.W., Suite 901
Washington, DC 20439
2012-13:
2011-12: GW
2010-11: SLS, GULC, WUSTL
2009-10: American
2008-09: Boalt, Iowa
2007-08:
2006-07:
2005-06:
2004-05:
Chief Judge Rader has four term clerks.

Judge Pauline Newman
Howard T. Markey National Courts Building
717 Madison Place, N.W., Suite 801
Washington, DC 20439
2012-13: NYU
2011-12: NYU, UIUC
2010-11: HLS, NYU, UIUC
2009-10: UIUC, George Mason
2008-09: GULC, George Mason
2007-08:
2006-07:
2005-06:
2004-05:
Judge Newman has four term clerks.

Judge Alan D. Lourie – OFF PLAN
Howard T. Markey National Courts Building
717 Madison Place, N.W., Ste. 908
Washington, DC 20439
2012-13:
2011-12: Boalt, GULC, UT, Fordham
2010-11: SLS, UT, Fordham
2009-10: UM
2008-09: HLS, HLS, SLS
2007-08:
2006-07:
2005-06:
2004-05:
Judge Lourie has four term clerks.

Judge William C. Bryson – OFF PLAN
Howard T. Markey National Courts Building
717 Madison Place, N.W., Room 910
Washington, DC 20439
2012-13:
2011-12: UVA, NU, GW, BC
2010-11: HLS, Boalt, Duke
2009-10: UM
2008-09: GULC
2007-08:
2006-07:
2005-06:
2004-05:
Judge Bryson has four term clerks.

Judge Richard Linn
Howard T. Markey National Courts Building
717 Madison Place, N.W., Suite 816
Washington, DC 20439
2012-13:
2011-12: SLS, GW, Loyola-Chicago
2010-11: SLS, GW, George Mason, Loyola-Chicago
2009-10: HLS, SLS, George Mason
2008-09:
2007-08:
2006-07:
2005-06:
2004-05:
Judge Linn has four term clerks.

Judge Timothy B. Dyk – OFF PLAN
Howard T. Markey National Courts Building
717 Madison Place, N.W., Suite 915
Washington, DC 20439
2013-14: NYU
2012-13:
2011-12: YLS, UT
2010-11: YLS, GULC, UT
2009-10: Duke, NU, GULC, GULC
2008-09: HLS, GULC, UT
2007-08: HLS
2006-07:
2005-06:
2004-05:
Judge Dyk has four term clerks.

Judge Sharon Prost
Howard T. Markey National Courts Building
717 Madison Place, N.W., Suite 808
Washington, DC 20439
2012-13:
2011-12:
2010-11: SLS, GW
2009-10: Cornell, American
2008-09: Penn, Chicago-Kent
2007-08:
2006-07:
2005-06:
2004-05:
Judge Prost has four term clerks.

Judge Kimberly A. Moore – Alumni Preferred, Hiring Now for ’13-14
Howard T. Markey National Courts Building
717 Madison Place, N.W., Room 913
Washington, DC 20439
2012-13:
2011-12: Penn, Emory
2010-11: USC, GW, George Mason
2009-10: GW
2008-09: UM, UT, GW
2007-08:
2006-07:
Judge Moore has four term clerks.

Judge Kathleen M. O’Malley
Howard T. Markey National Courts Building
717 Madison Place, N.W., Room 907
Washington, DC 20439
2012-13:
2011-12: NYU, Ohio St., Arizona State, Syracuse
2010-11: SLS, GULC, Ohio St., Arizona State
Judge O’Malley has four term clerks.

Judge Jimmie V. Reyna
Howard T. Markey National Courts Building
717 Madison Place, N.W., Room 809
Washington, DC 20439
2012-13:
2011-12: GULC, Pittsburgh, Pittsburgh
Judge Reyna has four term clerks.

Judge Evan J. Wallach
Howard T. Markey National Courts Building
717 Madison Place, N.W.
Washington, DC 20439
2012-13:
2011-12:
Judge Wallach has four term clerks.

Senior Judge Haldane Robert Mayer
Howard T. Markey National Courts Building
717 Madison Place, N.W.
Washington, DC 20439
Judge Mayer has career clerks only.

Senior Judge S. Jay Plager
Howard T. Markey National Courts Building
717 Madison Place, N.W., 4th Floor
Washington, DC 20439
2012-13:
2011-12:
2010-11: GW
2009-10:
2008-09:
2007-08:
2006-07:
2005-06:
2004-05:
Judge Plager has one term clerk.

Senior Judge Raymond C. Clevenger, III
Howard T. Markey National Courts Building
717 Madison Place, N.W., 5th Floor
Washington, DC 20439
2012-13:
2011-12: SLS, UVA
2010-11:
2009-10: NYU
2008-09: GW
2007-08:
2006-07:
2005-06:
2004-05:
Judge Clevenger has two term clerks.

Judge Alvin A. Schall
Howard T. Markey National Courts Building
717 Madison Place, N.W.
Washington, DC 20439
2012-13:
2011-12:
2010-11: George Mason
2009-10: Duke
2008-09: Penn, GW, Iowa
2007-08:
2006-07:
2005-06:
2004-05:
Judge Schall has two term clerks.

Judge Arthur J. Gajarsa
Howard T. Markey National Courts Building
717 Madison Place, N.W., 8th Floor
Washington, DC 20439
2012-13:
2011-12: Penn
2010-11: SLS, UT, BC
2009-10: SLS
2008-09: UT
2007-08:
2006-07:
2005-06:
2004-05:
Judge Gajarsa has one term clerk.

(I have to admit that some of the abbreviations used above threw me for a second.  I was pretty certain that the court was not hiring clerks from the Society of Laparoendoscopic Surgeons (i.e., SLS).  But, it took a couple of further searches to locate Stanford Law School as being abbreviated that way, as well.)

In the oral argument of In re LG Electronics, Inc., App. No. 2011-1248 (Fed. Cir. 2012), the Associate Solicitor for the USPTO argued that a purportedly limiting statement in the specification of the Applicant’s patent under reexamination should not be considered a clear disavowal.  One argument that the Associate Solicitor relied upon was that there could be no clear disavowal when the boilerplate of the same specification called for the claims not to be limited by the disclosed embodiments.

In what sounded like a tongue-in-cheek comment to me, Judge Newman remarked:

Well, that’s very interesting.  We’ve seen that identical boilerplate in probably six or seven million patents.  And, now you’re telling us that for the first time we should … apply it. 

You can listen to Judge Newman’s remark here:  [Listen].

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

You can review the Rule 36 opinion here: [Read].

The Senate Judiciary Committee held a voice vote on Thursday on the nomination of Federal Circuit nominee Richard Taranto.  By voice vote, Mr. Taranto’s nomination was approved by the committee and will now proceed to the full Senate. 

There was one “No” vote recorded on Mr. Taranto’s nomination by Senator Lee of Utah.  As this article [Link] on the Blog of Legal Times explains, however, that “No” vote probably had more to do with recent recess appointments than Mr. Taranto’s qualifications.  The article notes that Senator Lee plans to vote “No” on all of President Obama’s judicial nominees until the White House rescinds its recent recess appointments made during a two day legislative break in January.