Federal Circuit

RAMBUS: The battle over hold-ups in industry standard setting

If you help your industry adopt your patented technology as a standard and then sue companies that use the standard, bad things can happen. You might lose your patent rights, be sued or prosecuted for antitrust violations, unfair competition, and fraud. Even if you ultimately win your case at trial ... or on appeal ... the cost of getting mired in allegations of abusing the standards process can be high. Rambus, a memory design and patent licensing company, presents a case study in how costly and time consuming standards-related patent disputes can be. The cost to the industry can be even higher, … Read more

Quick appellate review of patent claim constructions: Is the door opening for interlocutory appeals?

The most difficult issue in many patent cases is claim construction, that is, the court's interpretation and articulation of what exactly the claims of the patent mean. Interpreting patent claims is hard work. It usually involves consideration of technical jargon that, especially when significant time has passed since the patent was filed, may be obsolete or just plain awkward. As a result, courts don't always get claim construction right the first time. Indeed, a substantial percentage--depending on whom you ask, the anecdotal figure is around 50 percent--of trial court claim constructions are successfully challenged on appeal.

The high reversal rate for claim construction is especially problematic because most claim construction decisions cannot be immediately appealed. Interpreting the claims is only the first step in the infringement analysis. After they're interpreted, that construction has to be applied to the accused product or process. Most often that's something the jury is supposed to decide, which means you may have to go through a long and costly trial before a judgment is entered. That judgment--either that the patent claims are infringed or they are not--is what the U.S. Court of Appeals for the Federal Circuit (the "Federal Circuit") ultimately reviews.

However, if the claim construction was wrong in the first place, the jury's verdict on infringement is usually wrong, too. That means a second trial will likely be necessary, which results in more work for the courts, more time lost in litigation, and more money spent on lawyers. The rub, argue critics, is that much of this additional expense and inefficiency could be avoided if claim construction opinions could be appealed prior to a final judgment on infringement.

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Aristocrat case raises requirements for means-plus-function software patent claims

The Federal Circuit's recent decision in Aristocrat Technologies will require software patent drafters to take more care to describe the algorithms covered by their software--or risk patent invalidity. ( See Aristocrat Technologies.) The court held that expert testimony that a programmer would know how to write code to perform a given function cannot supplement an incomplete patent disclosure when software claims are written using "mean-plus-function" format. Means-plus-function format means that something is claimed by the function it performs rather than by a specific structure--for example, a means-plus-function claim might recite a "means for fastening paper together" … Read more

Is an unsecured FTP server publicly accessible?

Unlike other areas of the law where doing something in public can land you in a lawsuit (or at least a courtroom with a nice, slightly used orange jumpsuit), sometimes in patent law doing things in public can get you out of a lawsuit.

When a company finds itself in court defending against a patent lawsuit, it will usually assert two major defenses. First, the company will say "I don't practice (or produce) what is claimed in this patent." Second, a defendant in a patent lawsuit will also attempt to "invalidate" the claims of the patent by showing that "prior art" described the claims in the patent prior to the application date of the patent. While this defense can take multiple forms (see, for example, 35 U.S.C. ? 102 ), a defendant must often show that the prior art relied upon was in fact publicly known or publicly used. So now its time for a pop quiz--which one of three options would you consider not being "publicly accessible" for the purposes of United States patent law:

A: The use of a centrifuge in a secure laboratory at the National Institute for Health;

B: The posting of a paper on an unsecured FTP server; or

C: Indexing a dissertation in a paper file and placing it on a shelf...in Germany.

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Patent court of appeals heads to Silicon Valley

The U.S. Court of Appeals for the Federal Circuit will be on tour in Silicon Valley the week of November 3.

The court, which is in charge of reviewing appeals of patent-related cases for the entire United States, normally works only in Washington, D.C. So if you live near Silicon Valley, and you're interested in patent law, this is a rare opportunity to see the judges in your own backyard.

Judges from the court will hear cases at several locations during that week including at Santa Clara University School of Law, Stanford University School of Law, and … Read more

End of an era? Patentability of business method patents

Maybe you are of a sufficient vintage to remember the game show Let's Make a Deal. But have you ever thought about the similarities between that show and the U.S. patent system?

In the game show, contestants would have to pay a price (a wallet containing $500) to see what was behind door No. 3 (maybe a live goat; maybe a brand new faux wood-paneled station wagon). Similarly, in the U.S. Patent and Trademark Office, the government pays a price (allowing a unique brand of monopoly) to see what is in envelope No. 3 (your invention). The analogy may seem far-fetched, but the basic premise is the same: that is, paying a price to see what is otherwise concealed. And even in the realm of patent law, sometimes the government ends up with...a goat.

Fortunately, unlike the game show, there are several ways the USPTO can get out of the deal even after the envelope is opened and the invention disclosed. To be worthy of a patent, the invention must be new, useful, and non-obvious. While the "new" and "non-obvious" requirements normally get most of the attention, the USPTO and the U.S. Court of Appeals for patent cases (the Federal Circuit) have taken a somewhat surprising approach in the past couple of months to back out of deals with potential patentees--rejecting patent applications on the basis of usefulness. In other words, the Federal Circuit has been deciding that certain classes of inventions just aren't patentable.

What is really creating a buzz in the patent world is that the USPTO and the Federal Circuit have recently addressed an almost decade-old class of patents that has developed a reputation as the runt of the litter as far as patents go--business method patents. Love them or hate them, the Federal Circuit's 1998 decision in the State Street Bank case has been widely interpreted to allow for the patenting of new and novel business methods. Since that case, the USPTO has been inundated with business method patent applications and, more specifically, software applications. The question is, will this trend continue?

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Are the rules changing for patent suit site selection?

Forum selection--or the ability to choose the geographic location of the court where a suit for patent infringement is litigated--is one of many controversial issues related to patents these days.

Generally, the first person to file the lawsuit gets to choose where the suit is brought. This is called the "first-to-file" rule. It works much like the lines you stand in at the grocery store, airport security, or countless other places; it's simply first come, first served.

However, in the context of patent litigation, being first in line is a big deal. Different courts have different procedural … Read more