Argument Recap

Last week the Federal Circuit heard oral arguments during its September sitting in Washington DC. Here is a short recap of Intellectual Ventures I LLC v. EMC Corp., one of the argued cases we’re following.

As previewed on this blog, the Federal Circuit heard arguments in this case about the extent to which the United States Patent Trial and Appeal Board may fill in gaps in a non-obviousness analysis based on two sources: the language of the specification of the patent-in-suit and expert testimony. As a preliminary matter—and perhaps indicative of the importance of the case—note that the oral argument before Judges Taranto, Chen, and Stoll lasted almost one hour and twenty minutes, well beyond the thirty minutes typically seen in cases at the court.

On the merits, the parties spent significant time disputing the meaning of claim language in the patents-in-suit. William Milliken arguing for Intellectual Ventures and Cynthia Vreeland arguing for EMC both used analogies in an attempt to convince the court that “assessing” and “representing” either mean the same thing as “allocating” or have distinct meanings. Milliken analogized the storage of data to renting a car. He argued that allocating is different than assessing and representing in the same way that a rental car company assesses and represents whether it has a car available for a customer who calls, but it does not allocate the car to that customer until the customer arrives at the store. Vreeland, by contrast, analogized the data strorage process to a hotel reservation. She noted that when a customer makes a reservation with a hotel, the hotel will assess and represent to the customer that it has a room available and simultaneously allocate the room to that customer.

If the case indeed turns on this claim construction dispute, the court may not address the underlying legal question of the appropriate use of the specification of the patent-in-suit and expert testimony in filling gaps in an obviousness analysis.