deral
Circuit Tea Leaves
1-2
Federal Circuit
Cases You Need to
Know
2
Obscure Patent
2-3
IP Headlines
4
H&B IP Attorneys
4
Did You Know?
4
Practice Tip
I.P.
Monthly
Reading Federal Circuit Tea Leaves
Eugene R. Quinn, Jr.,
IP Monthly author is Of Counsel
with Hiscock & Barclays
Intellectual Property &
Technology Practice Group and
founder of
IPWatchdog.com
,
dedicated to providing a free
Internet resource for Intellectual
Property Law, Internet Law and
Antitrust Law.
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Phillip P. Whaling
Practice Tip
35 U.S.C. § 112, 6 provides
the opportunity for one to
draft patent claims in what is
called means-plus-function for-
mat. This means-plus-function
format is dangerously seduc-
tive. Rather than write a detailed descrip-
tion of the structure, connection and/or
interrelation of the elements of the claim,
all that you need to do is write the claim
in a very simple, easy to understand sen-
tence. The means term in a means-plus-
function limitation is a generic reference
for the corresponding structure disclosed
in the specification. The key to under-
standing means-plus-function format is
appreciating that the meaning of a claim
that employs this format is specifically lim-
ited to that which is disclosed in the speci-
fication and nothing more. Because
means-plus-function format is so limiting
it is generally frowned upon, except in
limited fields of endeavor. Having said
this, there have been a number of recent
cases reported where dedication to the
public has occurred because the specifica-
tion discloses but no claims cover.
Appropriate use of means-plus-function
language can broaden protection and may
insure to some extent against dedication
to the public. Consider employing means-
plus-function format in addition to any
other claims you file. The key is to use
means-plus-function in addition to, rather
than in place of, specific claims.
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Did You Know
Since granting the first copyright in 1790, the
United States government has granted approx-
imately 30,787,934 copyrights. This number
is only approximate because given the record-
keeping practices employed between 1790 and
1869 it is impossible to provide an exact
count. Nevertheless, the Copyright Office
estimates that approximately 150,000 copy-
rights were granted between 1790 and 1869.
For the most part, copyright registrations have
continually increased over the years. Recent
year totals, however, are down when compared
to the number of registrations granted in 1990
and 1991. In 1990 there were some 643,602
copyrights granted and in 1991 some 663,684
copyrights were granted, which is the highest
single year total on record. While these num-
bers may seem high, they are far lower than
they could be and perhaps should be.
Copyrights are admittedly not the strongest
type of intellectual property, thanks in large
part to fair use and public domain issues, but
they do last for an extraordinarily long time,
they are extremely cheap to acquire, and they
do provide significant rights in the case of
infringement. Rights are, however, contingent
upon federal registration. Without a federal
registration attorneys fees and statutory dam-
ages, the largest weapons in the copyright own-
ers arsenal, are unavailable.
On July 21, 2004, the United States Court of
Appeals for the Federal Circuit issued an order
explaining that the entire court would reconsid-
er the panel decision in Phillips v. AWH Corp.
In its rehearing order the Federal Circuit
requested additional briefing on some seven dif-
ferent questions, several of which relate to the
proper use of dictionaries and at least one of
which will perhaps put the Federal Circuit on a
collision course with the United States Supreme
Court, particularly the Supreme Courts
Markman decision.
Careful consideration of recent Federal
Circuit decisions suggests that the various panels
may be trying to soften up the blow of what will
be a monumental decision. Increasingly the
focus seems to be on what the person of skill in
the art would understand. Certainly this in and
of itself is nothing earth shattering, particularly
given that is what patent law is supposed to
focus on, but there have been a number of panel
decisions over the past 12 months that have
strayed away from such a focus. Certain Federal
Circuit decisions have seemingly paid extraordi-
nary deference to the heavy presumption
sometimes given to ordinary meaning, even
when that was not what industry insiders would
have understood, and even when the meaning
of terms as understood today was not at all what
the industry would have understood at the time
of issuance.
Also clear is that a number of the judges on
the Federal Circuit are uneasy with the high
claim interpretation reversal rate. This is noth-
ing new, it has been a bone of contention in cut-
ting dissents for years. Nevertheless, we may be
Continued on Page 2
viewing a perfect storm brewing, one that will
see ordinary meaning presumptions evaporate,
and where terms of art and the meaning to one
of skill in the art is a question of fact and not
reviewable de novo. This may seem straight for-
ward to some and blasphemous to others. Stay
tuned, the Phillips case promises to be exciting.
Federal Circuit
Cases You Need to
Know
Recently the United States Court of Appeals
for the Federal Circuit has issued several opin-
ions that are certainly worth knowing about.
First, in another en banc decision, this time
in Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH
v. Dana Corp., 2004 U.S. App. LEXIS 19185
(Fed. Cir., September 13, 2004). Knorr-
Bremse Systeme Fuer Nutzfahrzeuge GmbH is
the owner of United States Patent No.
5,927,445 (the 445 patent) entitled Disk
Brake For Vehicles Having Insertable
Actuator, and sued on July 27, 1999. At trial
to the United States District Court for the
Eastern District of Virginia, the appellants
Dana Corporation, Haldex Brake Products
Corporation, and Haldex Brake Products AB
were found liable for infringement and willful
infringement. No damages were awarded, for
there were no sales of the infringing brakes. brought in Federal Court, because 1338(a) provides exclusive jurisdic-
tion in the Federal Courts over matters arising under the patent laws.
Nevertheless, in the Xechem case the Federal Circuit explained that
ownership issues are generally left to the state courts and state courts
may apply federal law. This, however, would require the presence of
subject matter jurisdiction, which could not be present thanks to
MCV, Inc. v. King-Seeley Thermos Co. and 28 USC 1338.
Another point that begs to be addressed regarding the Xechem
case is that when confronted with a request to change inventorship
the Federal Circuit inexplicably concludes that ownership issues are
left to state courts. While this is true it is completely non-responsive
to the issues presented. In the United States inventorship and own-
ership are completely different concepts. Given the proliferation of
patents and the growing involvement of State Universities one can
only hope the Federal Circuit will reconsider this issue en banc or
the Supreme Court will take up the case to clear up any confusion
that may have been created as a result of the Florida Prepaid
Postsecondary Education Expense Board v. College Savings Bank,