Many of us in the patent world (me included) have pounded our heads against the reasoning (not result) expressed in Mayo Collaborative Services v. Prometheus Laboratories, Inc.  See A Matter of Patent Law Despotism: The Nonsensical Reasoning in the Supreme Court’s Mayo Collaborative Services Decision Part 2*.  The reasoning in Mayo Collaborative Services makes no patent law logical sense on numerous grounds, including disregarding an important paragraph in the Supreme Court’s 1981 case of Diamond v. Diehr that is not only binding precedent, but also tells us that Breyer’s opinion repeatedly does what this paragraph from Diehr says not to do in an analysis of method or process claims under 35 U.S.C. § 101.

But the question now becomes what do we do to keep the reasoning in Mayo Collaborative Services from exploding into completely irrational, as well as patent law insane doctrine?  The way forward to patent-eligibility rationality, as well as sanity, is through the remand decision in Classen Immunotherapies, Inc. v. Biogen IDEC.  See CAFC on Patent-Eligibility:  A Firestorm of Opinions in Classen.  Put differently, there may yet be “light” in this currently “dark” patent-eligibility tunnel.

In what seems to be a continuing trend, the United States Court of Appeals for the Federal Circuit is continuing to show increasingly little tolerance for abusive patent litigation tactics. In the most recent pronouncement along these lines the Federal Circuit, per Judge O’Malley (with Judges Newman and Prost joining), ruled the district court appropriately awarded the defendant $3,873,865.01 in attorney fees and expenses under § 285, as well as $809,788.02 in expert fees.  See MarcTec, LLC v. Johnson & Johnson (Jan. 3, 2012).

MarcTec originally filed suit in the Southern District of Illinois against Cordis Corporation and Johnson & Johnson, who is the parent company of Cordis Corporation, but not otherwise involved in making or selling the accused product. MarcTec alleged Cordis infringed U.S. Patent Nos. 7,128,753 and 7,217,290. After claim construction, the district court granted Cordis’s motion for summary judgment of noninfringement. On a prior appeal the Federal Circuit then affirmed the district court’s construction and the judgment of noninfringement based on that construction.  See the non-precedential opinion in MarcTec v. Johnson & Johnson 2009-1457.

The CAFC’s split panel decision this past week – In re Construction Equipment Company – extends the PTO’s authority to reexamine a patent even where its validity has already been adjudicated and confirmed by the courts.  Yet the CAFC once again fails to explain how a PTO reexamination finding that a patent is invalid effects an earlier judicial determination that the same patent is valid and infringed.

In re Swanson

The authority of the PTO to reexamine a patent that has previously been found to be valid by the courts was established by the CAFC’s 2008 decision, In re Swanson.  There, the patent owner sued for infringement.  A jury found that the patent was not infringed, but additionally found that the patent was not invalid over the so-called Duetsch reference.  The trial judge denied the various post-trial motions, confirming the jury’s verdict.  And the CAFC affirmed the trial judge’s judgment regarding validity, explicitly finding that “Deutsch” did not anticipate the patent claims.

Over the weekend I wrote an article titled Turning Your Idea into an Invention.  In the article I talked about the fact that you do not need to have a prototype, but rather you need to be able to describe your invention with enough detail so that others will be able to understand what you have invented.  This is true except in the scenario of a perpetual motion machine, which I acknowledged in the article.  I didn’t want to go off on what would have been a lengthy tangent, but I knew as I was typing that paragraph I would circle back and fill in the blanks regarding the law as it pertains to perpetual motion machines.

The laws of physics and nature tell us that it is impossible for a machine to produce more energy than it consumes, which creates a very real impediment to obtaining a patent. Such a machine is characterized as a perpetual motion machine and when claimed as such it is ordinarily and routinely rejected by the United States Patent and Trademark Office. The rejection provided by the Patent Office for a claim that recites a device capable of producing more energy than it consumes is a utility rejection, which is based on the belief that an invention cannot have utility if it does not work.

On Monday, April 30, 2007, the United States Supreme Court issued its much anticipated decision in KSR International Co. v Teleflex, Inc.  For many months patent pundits tried to predict how the Supreme Court would handle the Federal Circuit “teaching, suggestion and motivation” test, used to determine whether a particular patent claim is obvious.  Predictions of this sort are usually no more reliable than predictions of any other kind, and while everyone had an opinion, few actually anticipated what the Supreme Court would do.  Whether the surprise that was KSR was owing to the patent bar being willful blind or simply having misplaced hope is another story for another day.

The Supreme Court dislikes bright line rules, but surely they wouldn’t opt for a totality of the circumstances approach to obviousness and throw away TSM, thereby leaving some 6,000+ patent examiners to make their own determinations about the qualitative value of an invention?  Isn’t that what erasing “flash of creative genius” was meant to do away with? Sadly, the Supreme Court put on display their severe lack of understanding for all to see, believing obviousness to be about common sense.  But who’s common sense?  What boundaries would be put in place?  As is all to familiar, the Supreme Court took the “we decide, you figure it out” approach.  I guess they loathe showing their work, which is probably why they aren’t mathematicians!

On Friday, September 30, 2011, the University of New Hampshire School of Law unveiled its new Franklin Pierce Center for Intellectual Property, which is a new 12,000+ square-foot building located in Concord, New Hampshire. I was in attendance for the festivities, which included speeches, a dinner, a lifetime achievement award for Judge Pauline Newman and a Conference.

There is much to write about the event, but I will start my week long coverage with an overview of the event. As the week progresses I will delve into some interesting substantive discussions that took place over this Intellectual Property weekend in the Granite State, including: (1) Chief Judge Rader tell me during the Judges’ panel: “You aren’t making any sense…” (check back Tuesday afternoon 10/4/2011 for more on this); (2) Chief Judge Rader daring anyone to come up with proof that the Supreme Court’s decision in KSR did anything to change previous Federal Circuit case law on obviousness (I’ll take that challenge!); and (3) Jon Dudas, the former Under Secretary of Commerce for Intellectual Property, succinctly (and correctly) explaining that the funding of the United States Patent and Trademark Office is similar in ways to a Ponzi scheme.

While to many Franklin Pierce Law Center is not a household name, in the intellectual property world Franklin Pierce is indeed a brand name that has achieved lofty distinction as a result of the great successes of its alumni. However, Franklin Pierce Law Center is no more.  The small, independent law school located in Concord, New Hampshire, has affiliated with the University of New Hampshire, and well on its way to what will inevitably become a complete merger with UNH.  Already, the former FPLC is now the University of New Hampshire School of Law, but the unique spirit of Franklin Pierce has not been lost, and neither will the name be lost either.  The University of New Hampshire School of Law will formally open its new Franklin Pierce Center for Intellectual Property on September 30 and October 1 with an academic conference, panel discussions and a formal event attended by judges and legal scholars from across the country. 

Just as all of us have slowly started to absorb the implications of the remand in Prometheus Laboratories, Inc. v. Mayo Collaborative Services, as well as the triumvirate of opinions in Association for Molecular Pathology (AMP) v. USPTO, on the standard for patent-eligibility under 35 U.S.C. §101, the Federal Circuit (finally) issued its long awaited (by some of us) remand decision in Classen Immunotherapies, Inc. v. Biogen IDEC. That there was a majority (and a dissenting) opinion in the remand of Classen wasn’t surprising. But that there was yet a third “additional views” opinion would likely not have been predicted by anyone. And it is that “additional views” opinion, along with the majority and dissenting opinions, that will certainly generate a “firestorm” through the Federal Circuit, and which may eventually reach the Supreme Court. The judicial donnybrook on the question of what the standard is (or should be) for patent-eligibility under 35 U.S.C. §101 is about to begin in earnest.

As my fellow patent attorney, Kevin Noonan, poignantly says on Patent Docs, the Classen remand decision “[couldn’t] be more different from the Federal Circuit’s earlier decision.” That earlier decision (with Judges Moore and Newman on the panel), which came out not long after the Federal Circuit’s famous (and some would say “infamous”) en banc Bilski decision, is astounding for its brevity (one paragraph of 69 words), or as Kevin also poignantly observed, the claimed method was longer than the opinion by 20 words. As I also commented when that earlier opinion came out, it was ghastly for completely failing to explain how the “new” Bilski “machine or transformation” test was applied to the claimed method. See CAFC: Method for Calibrating Drug Dosage is Transformative.

Back in the “good ol’ days,” the Supreme Court rarely granted review of a Federal Circuit case involving patent law doctrines.  One such “rare” instance where the Supreme Court did review (and partially affirmed and partially overturned the Federal Circuit) was the 2002 case of Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. involving when the doctrine of prosecution history estoppel barred an assertion of patent infringement based on the doctrine of equivalents when there was any amendment that narrowed the patent claim at issue.”  See When Patent Doctrines Collide:  Supreme Court Rules Claim Amendments Do Not Necessarily Preclude Assertion of Infringing Equivalents.

Like the most recent run of decisions overturning Federal Circuit patent jurisprudence, the Supreme Court found, in Festo, that the Federal Circuit’s rule that, whenever prosecution history estoppel applied, there would be no range of equivalents for the amended element, was too “inflexible” for the High Court’s taste.

The phrase “jump the shark“ comes from one particular scene in the television series “Happy Days.”  In the premiere episode for season 5, which aired on September 20, 1977, Arthur Fonzarelli (aka “The Fonz” or “Fonzie”) was challenged to jump a shark.  The water-skiing Fonz successfully jumped the shark and simultaneously spawned a new pop-culture phrase referring to the moment that a television show had run out of ideas.  A television show would “jump the shark” when the peak had been reached and it was believed that everything was downhill from there.  While that was not really a fair characterization of Happy Days given that it enjoyed many more years of popularity, over the years the phrase has broadly become synonymous with the moment when an undeniable decline has commenced.

By accepting cert. in Kappos v. Hyatt the United States Supreme Court has clearly and undeniably jumped the shark in terms of patents.  This case, which raises issues of such little importance to the greater scheme of patent law, is hardly appropriate for Supreme Court consideration.  The Supreme Court is wasting its time hearing this case and denying the slot to a far more important matter, which is nearly unconscionable.

The conundrum created by the Federal Circuit’s joint infringement doctrine and its impact on protecting interactive computer-based technologies got worse last week with McKesson Technologies, Inc. v. Epic Systems Corp. McKesson Technologies involved a patented interactive electronic method for communicating between healthcare providers and patients about personalized web pages for doctors.  Judge Linn’s majority opinion (and a “thin” at majority at that) ruled that, because the initial step of the patented method was performed by the patient while the remaining steps were performed by the software provided by the healthcare provider, there was no infringement, direct, indirect, joint or otherwise of the patented method.

After the Federal Circuit ruled in Ariad Pharmaceuticals v. Eli Lilly there is a separate and distinct “written description” requirement in the first paragraph of 35 U.S.C. § 112, some may have thought that all might be quiet on the “written description” front.  But the recent case of Crown Packaging Technology, Inc. v. Ball Metal Beverage Container Corp., suggests that all may no longer be quiet on that front.  In fact, I’ll express the “heretical” view that the Federal Circuit missed the real “written description” issue in this case, namely what is (or should be) the impact of the “characterised in that” (or as we Americans would phrase it “characterized in that”) language used in the common patent specification of the two patents involved in this case.

In part 1 of my interview with Don Dunner we talked about how he managed to  become the the dean of CAFC appellate advocates, arguing more than 150 cases before the court.  We also discussed many of his most high profile cases and his approach to handling multiple simultaneous appeals.  In this second installment of my interview with Dunner we talk about which judges on the Federal Circuit ask the most difficult questions, who he thinks are capable candidates for future federal circuit vacancies, why the Federal Circuit was created as a specialty court, continued hostility toward a purely specialty court and Congressman Issa’s attempt to create a pseudo-specialty trial court for patent issues.  We also touch upon the familiar fun questions and learn that one of Dunner’s favorite movies is a well known courtroom comedy.

Yesterday the United States Court of Appeals for the Federal Circuit, in a split decision with Judge Lourie writing and Judge Bryson joining, took a step forward in the evolution of the law of obviousness that confirms my worst fears about obviousness in this post-KSR era.

I have written about KSR v. Teleflex numerous times and we have engaged in thought-provoking and sometimes heated debate in the comments to those articles. We have argued about the extent to which the obviousness laws have changed, and many have sought to calm my fears by pointing out that even under the ridiculously naive approach to obviousness set forth by the Supreme Court in KSR it was still necessary under previous Supreme Court rulings that the prior art teach each and every element of the invention. In short, it has been argued by many that even after KSR it is not an appropriate rejection, or reason to invalidate an issued claim, that it would be “common sense” to modify elements within the prior art in a wholly new way and then combine the “common sense” modifications. I did agree that was true, at least until yesterday.

Inventive Step is reporting that President Obama has renominated Edward C. DuMont and Jimmie Reyna to serve on the United States Court of Appeals for the Federal Circuit.  Oddly, the press release announcing the renomination of DuMont and Reyna, along with the renomination of 40 others, is not available from WhiteHouse.gov.  On January 5, 2011, President Obama forwarded numerous nominations to the Senate, but the press release naming the 42 judges isn’t available. The only place where I could find a copy of the press release, which was apparently sent to some journalists and just not published otherwise, is here.

In any event, President Obama nominated both DuMont and Reyna in 2010.  DuMont was nominated in April to take the position opened by the retirement of Chief Judge Michel and Reyna was nominated in September to take the position opened by Judge Mayer’s decision to take senior status.  Neither individual had a hearing in the Senate Judiciary Committee, a prerequisite to an up or down vote by the full Senate.  Perhaps the Senate Judiciary Committee will take swifter action on these nominations in 2011, but even if they do there is no guarantee that the Senate will have an up or down vote.