Remember that the Court of Appeals for the Federal Circuit, sitting en banc, is scheduled to hear oral argument in Cardiac Pacemakers v. St. Jude Medical next Monday (June 1st). The en banc appeal is limited to the following question:

Wondering about the value of method claims in a patent application directed at an apparatus/composition “invention?” A recent decision of the Court of Appeals for the Federal Circuit reminds us that method claims might preserve your ability to file an infringement claim in certain situations where asserting apparatus claims is blocked by less than perfect marking practices.

The oral argument from Contech Stormwater Solutions v. Baysaver Technologies included an interesting discussion regarding the proper construction of the term “siphon.” The debate focused on whether the term requires an intermediate elevation – a high point between the fluid source and the drain output. Counsel for patentee argued that the ordinary meaning of the term can include this “up and over” structural arrangement, but does not require it. The classic beer bong illustrates the issue perfectly. Especially when compared to its distant cousin – the classic two-beer-hat.

Both Dennis Crouch and Stephen Albainy-Jenei have posted excellent summaries of the Tafas v. Doll case. If you’re looking for more information on this complex case – and the uncertain future of the proposed rules that would limit continuations, Requests for Continued Examination, and claims – be sure to check out both the Patent Baristas post and the PatentlyO post.

The Court of Appeals for the Federal Circuit issued its opinion in the Tafas v. Dudas case (now styled as Tafas v. Doll). I provided several updates on Twitter as I read the opinion, and reproduce them below for the wider audience.

Over the next several weeks, we’re likely to see introduction of new patent reform legislation in the House and Senate, appointment of a new Director of the Patent and Trademark Office, and a decision from the Court of Appeals for the Federal Circuit on the controversial proposed continuation rules. Who says patent law is boring, stuffy, and uneventful?

In In re Bilski, the Court of Appeals for the Federal Circuit ushered in a new era for patentability of process claims. Under Bilski, a process claim must be “tied to a particular machine or apparatus”or must “transform[] a particular article into a different state or thing.” A recently issued patent includes a claim to a “method for detecting and processing fraud and credit abuse” that makes you wonder about how strict the Office is applying the Bilski test. And a comparison between this claim and a recent application of the test by the court reveals the difficulty associated with applying the vague test against which all process claims now must be evaluated.

Today’s caselaw environment seems to have sent the phrase “valid and infringed” into the closet of the lexicon of American patent law. We just don’t see it very often these days, thanks in large part to KSR v. Teleflex and a few other key decisions. I’ve assembled a validity scorecard to help stakeholders watch the trend as it continues to develop. Here’s the scorecard for January, 2009.

Claim construction is one of the most challenging tasks in the patent law game. We all struggle with it – prosecutors, examiners, litigators, judges. Lack of clarity and loyalty in the law aside, the task is a difficult one because, no matter how clear the meaning of a term is to you, it might have an entirely different meaning to someone else. This is often true irrespective of what the rest of the patent says about the meaning of the term, including the claim language, the specification, and the prosecution history. Nothing illustrates this point better than a recent exchange between Judge Rader and counsel for the patent owner in Boston Scientific v. Cordis.

Last week in Boston Scientific v. Cordis, the Court of Appeals for the Federal Circuit declared invalid several claims of a Boston Scientific patent covering drug-eluting stents. While the conclusion of obviousness might not be surprising, the analytical path leading to the conclusion is very interesting and is worthy of attention. The court failed to cite Graham v. John Deere and did not discuss “the factors.” Perhaps more intriguing, the court did note – twice – that the skilled artisan would have been motivated to combine the separate embodiments of the prior art patent to arrive at the claimed invention.