Posts Tagged: "Judge Moore"

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.

Earlier today the United States Court of Appeals for the Federal Circuit ruled that Dolly the cloned sheep, and any other genetic clones, are patent ineligible in the United States because the “claimed clones are exact genetic copies of patent ineligible subject matter.” — The holy grail of personalized medicine, at least with respect to organ transplantation, is to create an organ that is identical to what occurs in nature. Now we know that if that is accomplished the resulting organ will not be patentable. That being the case, why is anyone going to spend the billions, or possibly trillions, of dollars it will require to make this branch or personalized medicine a reality? Without possibility of exclusive rights research will dry up.

Perpetuating the myth that the computer is where the magic lies does nothing other than ignore reality. Software is what makes everything happen. or crying out loud, software drives a multitude of machines! Maybe the auto mechanic for Judges Judges Lourie, Dyk, Prost, Reyna and Wallach should remove the software from their cars. Perhaps as they are stranded and forced to walk to work they might have time to contemplate the world they seem to want to force upon the rest of us; a world hat clings to mechanical machines completely non-reliant on software. That will be great for the economy!

The only thing we know is this — the Federal Circuit issued an extraordinarily brief per curiam decision, which stated: “Upon consideration en banc, a majority of the court affirms the district court’s holding that the asserted method and computer-readable media claims are not directed to eligible subject matter under 35 U.S.C. § 101. An equally divided court affirms the district court’s holding that the asserted system claims are not directed to eligible subject matter under that statute.” Thus, the asserted claims are not patent eligible.

Vice-Chief Judge Moore: “The statute requires that each of the judges have scientific ability.  It doesn’t actually require particularized training in any one individual specific area.  Permit me to key off of what the Chief said earlier — we do use that to advantage in some instances.  For example, imagine a software controlled electro-mechanical device which is useful in a biotechnology operation.  I could throw four different judges with four different specialties – biotech, electrical, mechanical, and software – on that so that that panel as a whole could understand it better and help each other through the process.  And that is a huge advantage.  We have at least one team here at the Board that’s truly multidisciplinary.  They handle all types of cases from all types of disciplines without regard as to their own personal technical training aspects.”

Chief Judge Smith: “The unique thing about the job particularly right now – and I think this is true for my job and the Vice Chief Judge job – is that while we have many, many administrative duties they do not remove from us completely the non-administrative judging duties that we have.  And I think we both like a mix in which we also get to the judging, sitting on panels for example.  We are under-emphasizing that part of our jobs right now because we absolutely have to do that.  There’s only so much judging you can get to in the typical 18-hour day when you have so many other things to do.”

The interview took place on the Alexandria Campus of the USPTO in the Madison Building. We sat around a modest conference table in the office of Chief Judge Smith. We chatted for approximately 60 minutes. Smith and Moore give us a rare glimpse into the Board and the day-to-day inner workings of the two top Administrators who also work hard to seek opportunities to stay engaged and join panels whenever possible.

This is very good news for defendants and for the patent system. If Rule 11 is actually enforced against those who sue without a reasonable basis the bad actors will be wiped out. It will also work to identify those who are REALLY the patent trolls compared with those who are patent owner who simply seek redress for rights that are being trampled. As long as the bad actors operate the patent system will remain in jeopardy because the popular press and critics of the patent system unjustifiably paint all non-practicing entities with the same brush. Meaningful and appropriate use of Rule 11 will deal with the bad actors, while distinguishing from those non-practicing entities that have reasonable grievances that deserve consideration rather that ridicule.

On Thursday, September 20, 2007, the United States Court of Appeals for the Federal Circuit issued two decisions that provoked much debate, and which deserve to be remembered. The first case, In re Comiskey, seemed rather straight forward and certainly not earth shattering. In the other case of the day, In re Nuijten, the Federal Circuit determined that a propagating signal cannot be patented because it is does not qualify as patentable subject matter. Frankly, I think the ruling in Nuijten can be simply summarized by saying that Judges Gajarsa and Moore didn’t understand the technology. Thus, in baseball terminology, on September 20, 2007, the Federal Circuit went 1 for 2, which would put you on a sure path to enshrinement in Cooperstown, but is not what you would hope for when dealing with an area of patent law as fundamentally important as patentable subject matter.

While the Supreme Court may have expanded the reach of the Hatch-Waxman “safe harbor,” the Medtronic and Merck cases only involved pre-marketing FDA approval activity. But the recent split Federal Circuit panel decision in Momenta Pharmaceuticals, Inc. v. Amphastar Pharmaceuticals, Inc. has now (alarmingly in my view) further widened the applicability of this “safe harbor” beyond such pre-marketing FDA approval activity. In Momenta Pharmaceuticals, Judge Moore (writing for the majority joined by Judge Dyk) ruled that this “safe harbor” could also apply to post-FDA approval activity, even if that activity was at least arguably commercial in nature.

Although predictions on the outcome of an unusual case such as this are probably worthless, I think that it is most likely that this panel will rule in 2012 the same way that it ruled in 2011. It is probably safe to presume that the judges are fairly entrenched in their positions. In my view, no arguments were presented which show that Mayo was a game-changer with respect to the isolated DNA claims and the screening method claim. In particular, AMP’s main point about the relevance of Mayo—the preemption argument—was harshly criticized by Judge Moore. Among the three members of the panel, Judge Moore would appear to be the most likely to change sides, and I do not see this happening. Thus, I expect the same outcome as last year. However, the long-term outcome is much murkier, with an en banc hearing and/or a Supreme Court appeal almost certain.

All of this might be confusing to a Judge who is unfamiliar with computers, but that is not the test, is it? The question is supposed to be whether it would be confusing to a person of relevant skill in the relevant technology area. Indeed, disclosure sufficient for means-plus-function claiming may be implicit or inherent in the specification if it would have been clear to those skilled in the art what corresponds to the means-plus-function claim limitation. See MPEP 2181 and Atmel Corp. v. Information Storage Devices, Inc. (Fed. Cir. 1999). Indeed, the Federal Circuit in Atmel concluded that the title of the article incorporated by reference in the specification may, by itself, be sufficient to indicate to one skilled in the art the precise structure of the means for performing the recited function. So the focus is supposed to be on one of skill in the art even when interpreting whether the specification provides adequate support for means-plus-function claiming. Nowhere in the majority opinion is it stated that a person of skill in the art would not have known and would have found the claim vague or ambiguous.

In the recently issued case of ClearValue, Inc. v. Pearl River Polymers, Inc., Judge Moore, writing for the Federal Circuit panel, distinguished the holding in the 2006 case of Atofina v. Great Lakes Chemical Corp. In ClearValue, Judge Moore ruled that a process having a claimed raw alkalinity of “less than or equal to 50 ppm” was anticipated under 35 U.S.C. § 102 by a prior art process disclosing an alkalinity of “150 ppm or less.” I believe Judge Moore was correct in ruling that the claimed alkalinity of “less than or equal to 50 ppm” was anticipated by the art disclosed alkalinity of “150 ppm or less.” But her basis for distinguishing Atofina in ClearValue is very problematic in a number of respects, and could create further unnecessary confusion as to when a narrower claimed range in a process is anticipated by a broader range disclosed by the prior art. As illustrated by the ClearValue and Atofina cases, one area where the Federal Circuit sometimes struggles in articulating clear doctrine is when is a narrower claimed range in a process is anticipated under 35 U.S.C. § 102 by a broader range disclosed by the prior art.

I have wondered out loud whether the Judges of the Federal Circuit realize that the outcome is unpredictable until the panel has been announced. It seems that at least some do. How is that defensible? How do others not on the Court not see a problem? The law needs to be certain and predictable and at the Federal Circuit far too many times it is neither. Claims construction is but one of the areas as clear as mud. The Federal Circuit was created to bring certainty to the law, but what has transpired over the course of the last 10 years or so seems to be anything but certainty and stability. For crying out loud a patent is a property right and for any property rights regime to flourish it must be stable and certain! In the words of this generation: OMG!