Posts Tagged: "Federal Circuit"

Every once in a while you stumble across a situation where what is fair seems obvious. At those moments we are all too frequently reminded that we do not have a fairness system, but rather we have a justice system. Which is one way to say that I think the Federal Circuit made a terribly poor decision; one that flies in the face of common sense, and frankly common decency. If the legal system cannot fix a mistake like this before the mistake has even been made public then the system is broken

The Federal Circuit held that the district court correctly applied collateral estoppel to the ’774 patent because reexamined claim 33 contains the same memory limitation previously found in claims 1 and 19, and because the ’774 patent reexamination never addressed that limitation or the presence of RAM. Instead, the reexamination focused exclusively on a limitation in claim 33 that is completely unrelated to the sole memory limitation, which made claim 33 identical to claims 1 and 19, which had already been construed, at least insofar as the presence of RAM was concerned. The Federal Circuit did, however, point out that this ruling should not be construed to stand for the proposition that a reexamination prosecution history could not create a new issue that would preclude the application of collateral estoppel.

I would have to think that this decision, which required the Federal Circuit to construe claim terms, would have to be presidential in at least some ways, unless the outcome in this case will not have any implication for the claims themselves or the patent. I guess I just don’t understand the concept of a nonprecedential claim construction. I cannot fathom a nonprecedential order in a real property boundary dispute. The whole point of suing over real property is to get a decision that is binding. Patents are property and it strikes me that the definition of the metes and bounds of what is covered in the claim really has to be presidential. If it isn’t presidential what is the point? This type of disposition is what leads to patent claims being construed to mean one thing in one case and another thing in another case. It is frustrating.

In the latest decision (“Ultramercial-3”), the panel reached the opposite conclusion and affirmed the dismissal. This apparent turnaround was based on two intervening events: (1) the Supreme Court’s Alice decision in June; and (2) the fact that Chief Judge Rader was no longer on the court, and his place on the panel was taken by Judge Mayer. Much has, and will be, written about the first of these factors, so I would like to focus on the second, and in particular, the diametrically opposed views of Judges Rader and Mayer on a very important procedural issue; namely, whether the lack of patent-eligible subject matter should be a basis for dismissing a case at the outset based only on the “intrinsic” evidence, i.e., the patent itself and its prosecution history in the USPTO, without any discovery, expert testimony and/or claim construction.

While there can be disingenuous arguments made about the abstractness of a media product or a sponsor message, who in their right mind could ever even suggest that “an Internet website” is abstract? Is “an Internet website” abstract? Is the “general public” abstract? Is a consumer abstract? Contemplate these questions as you, a member of the general public continues to read this article on this Internet website! We apparently have jumped the shark and turned the law of software patent claims into a useless, ridiculous philosophy assignment that asks whether something that clearly exists doesn’t exist. So are you, a consuming member of the general public who reads Internet websites real, or are you abstract?

The Federal Circuit issued a decision in CardSoft v. Verifone, which the Court overturned the district court’s claim construction. Overturning a district court’s claim construction is hardly unusual, and perhaps more typical than it really should be, but that is another story for another day. What was unique about this particular case was that the Federal Circuit also went on to rule that CardSoft had waived any argument that the defendants had infringed under what they determined to ultimately be the correct claim construction.

The label “anti-patent” is not meant as a criticism or insult. Instead I mean it is a purely descriptive way that recognizes a distinct and very real viewpoint; one that we have seen periodically throughout history but which is inconsistent with what the Framers believed. Therefore, I disagree with Judge Chen that it is not helpful to recognize that there are Judges on the Federal Circuit who, based on their written decisions, show a tendency to eschew a pro-patent viewpoint.

Kara Farnandez Stoll is presently a partner at Finnegan, Henderson, Farabow, Garrett and Dunner, LLP in Washington, D.C. She has extensive experience in patent litigation, and has represented clients at both the district court and appellate levels. Stoll has served as lead counsel on a number of cases before the United States Court of Appeals for the Federal Circuit.

The district court imposed a fee-shifting sanction as a condition of permitting AntiCancer to supplement the Preliminary Infringement Contentions that the district court found defective under Patent Local Rule 3.1. The district court issued an Order that would have allowed AntiCancer to supplement its infringement contentions, but only if it concurrently pay the attorney fees and costs incurred by the defendants in connection with their motion for summary judgment related to the defective infringement contentions. AntiCancer objected to this condition, and the district court entered summary judgment… It seems fundamentally unfair for a defendant to have to pay for a filing that becomes nullified by amended infringement contentions, whether they appear in an Amended Complaint or in a filing required by a local rule.

In a concurring opinion, Judge O’Malley, who was joined by Judge Hughes, wrote that she felt constrained by the Federal Circuit’s precedent in In re Seagate and Bard Peripheral Vascular v. W.L. Gore, but that recent Supreme Court decisions call into question the continued viability of that precedent. As such, Judges O’Malley and Hughes have urged the Federal Circuit to reconsider en banc the standard for awarding enhanced damages under 35 U.S.C. 284. With willful damages back on the table future patent reform is in question.