This may be the hardest article ever for me to write. As Gene can tell you, writing about a parent who has had a tremendous impact and influence on your life, and who has just passed way isn’t easy. In my case, it’s Alvin Guttag, former patent examiner, former patent attorney, son, brother to two sisters, husband to my Mom, grandfather to five grandsons (two of which are my sons), and most importantly to me, my Dad.
Dad left this mortal world this past Thursday, December 27, at the age of 94, having experienced a full life and after a final year and a half of fairly steady (and occasionally precipitous) physical and mental decline. But what I’ll remember most about Dad is how he shaped me in so many important ways. As I’ve told many others, I truly sat at the knee of a master, both professionally and personally. What I’m going to focus on here is the professional part of Dad’s life.
For about 11 years, Dad was a patent examiner at the USPTO in one of the chemical art units. Dad then spent another 30 years or so as a patent attorney with the former IP law firm of Cushman, Darby, and Cushman, first as an associate, and later as a partner. In all, Dad prosecuted and obtained several thousand patents for his clients, mostly in the chemical arts. (That’s correct, several thousand patents.) Dad often wrote patent applications the old fashioned way, by hand, usually starting with the abstract, and going forward from there. (Dad was a converted left hander whose right-handed scrawl describing chemicals and chemical formulas looked something like a jumbled oscilloscope wave; his secretaries often needed a chemical dictionary to follow what he had written.) Litigators sometimes view patent prosecutors as not being that good as “putting money on the books” (as my Dad referred to billing). But the litigators at Cushman, Darby, and Cushman always respected Dad because Dad could bill out more than all but the top litigators in his firm. That’s because Dad worked hard (and long) at his patent prosecution craft.
Dad was also an interference specialist, a procedure that will eventually disappear under the AIA (the Abominable Inane Act). As Dad referred to them, interferences were an “archaic proceeding for determining the first to invent using artificial rules.” What’s truly ironic is that Dad, well before the AIA was even a “glimmer” in Congress’ eye, argued for ending interferences as being too costly to the parties to be justified. (Truly “ironic” as Dad likely put me and my three brothers through college, law school, and graduate school on what he earned in his burgeoning interference practice.) That’s was pure Dad to question the value, fairness, and justice of any legal proceeding, something he impressed upon me and my brothers early in life. (Dad also drilled into us that the “process” mattered as much as the “result” obtained by that “process,” i.e., an improper “means” could never justify achieving any “end,” no matter how proper that “end” might be.)
Dad said he had been involved in approximately 400 (I’m not making that number up either) of these interference “beasts” during his 30-odd year career. (Many of us patent prosecutors, including me who handled only 2 such “beasts,” would consider ourselves lucky to have completely avoided interferences during our entire prosecution career.) When it came to interferences, Dad knew every “trick in the book,” and some not even in the “book.” Any time I or my patent attorney brother Mark had an interference question, we would always go to the “fountain of knowledge.”
As a former chess player (and chess captain at MIT, his alma mater), Dad conducted interferences just like a chess match. Dad always understood what his “game plan” was in an interference proceeding. Listening to Dad describe his “interference motion tree” involving multiple motions, as well as multiple contingent motions, was breathtaking and something to behold. Here also are a few of Dad’s pithy “pearls of wisdom” on interference practice that I remember:
1. Don’t just make motions for the sake of making them. Any motion you submit should be for the purpose of putting yourself in a better position or your adversary in a worst position.
2. Make sure your evidence supports your count. You can have the “best” evidence in the world, but if it doesn’t support the count, it’s meaningless. Accordingly, if your evidence doesn’t support the count, you need to change the count.
Dad also had a fairly active appellate practice, first before the CCPA, and then before the Federal Circuit. Dad may not have been the most impressive speaker. But Dad had a very organized and logical mind. I could read Dad’s brief once, and completely follow his oral argument without ever again referring to his brief. He also understood how to “go for the jugular.” As one of my Dad’s former partner once remarked, Dad (also a former fencer at MIT) was a master at thrusting at his opponent with a rapier-like argument such that the opponent would figuratively “bleed out” before they knew what had verbally “hit” them.
I watched Dad argue twice, once before the CCPA, and once before the Federal Circuit. In fact, I’m going to use those two appellate arguments to illustrate why Dad was well-respected by his profession. (I never minded being called “Alvie’s boy” by those who knew Dad; “Alvie” was his nickname, used only by his firm and by members of his profession. We in the family simply knew him as “Al.”)
The CCPA case is memorable to me for many reasons, including Dad swearing me into the CCPA bar before the late Chief Judge Howard Markey. (I think Dad was more nervous about swearing me in than arguing the upcoming case before the CCPA!) The CCPA case that Dad argued was an interference (of course!) called Sheffner v. Gallo, 315 F.2d 1169 (CCPA 1975). In actuality, this interference was a “thinly veiled” ownership dispute between my Dad’s client (Aaron Leonard Sheffner), and the company (Mead Johnson) of which my Dad’s client was a former employee. Even more unusual was that, after losing this so-called “interference” before the Board of Interferences (which ruled that neither party could be awarded priority of the sole count involved because the count was invented by a “third party”), Dad was the only one to appear at that oral argument before the CCPA.
One thing that the Sheffner case particularly illustrates is how hard Dad fought for the “little guy.” My Dad’s client was on kidney dialysis, dying, and really not in a position to pay the fees that my Dad normally commanded for interferences. But that his client might not be able to pay didn’t matter to Dad; his client was the individual “David” in a struggle against the corporate “Goliath” on the other side. Instead, Dad took the case on a contingency fee basis, a rarity for Dad or probably any other patent prosecutor in that day.
Mead Johnson also made a serious tactical “error” in turning this interference into a “personal” battle with my Dad’s client. (One thing I learned about Dad was never EVER make the case “personal” with him or his client, or you were likely to regret doing so.) I also remember that Judge Rich tried to trip Dad up during oral argument on the interference rules, but Dad knew those rules, backwards and forwards. (I can also recall Judge Rich, or one of the other CCPA judges asking Dad whether it would have made sense to have had the Solicitor appear before the CCPA in this case, and my Dad responded “yes,” even though having the Solicitor appear might not have been helpful to Dad winning this case for his client.) The “good news” was that the CCPA completely reversed the Board of Interference’s ruling, holding that an award of priority couldn’t be refused based on inventorship of the count being someone other than the parties in the interference (i.e., third party inventorship was not “ancillary to priority” as it was referred to back in that day). Unfortunately, my Dad couldn’t stem the “race against the clock” for his client: the patent resulting from this interference issued to Aaron Leonard Sheffner after he had died.
The oral argument in the Federal Circuit case I witnessed illustrates how well Dad understood what “battle” had to be won in a prosecution “war.” I don’t recall the name of this Federal Circuit case, but it involved an ex parte examination of a patent application on a method for catalyzed polymerization of unsaturated monomers as I recall. The Board of Appeals had affirmed the Examiner’s rejection of Claims 1-43 for obviousness under 35 U.S.C. § 103 over certain prior art. What Dad realized was that his strongest argument for unobviousness over this art was in dependent Claim 43 (reciting a specific type of catalyst). If Dad couldn’t convince the Federal Circuit that Claim 43 was patentable, his client wasn’t going to prevail in the appeal.
So guess what Dad did? When Dad stepped up for his turn at oral argument, he started off by saying “the Solicitor keeps talking in his brief about independent Claim 1; I want to talk about dependent Claim 43.” So off Dad went explaining why dependent Claim 43 was unobvious over this art (based, as I recall, on the patent law doctrine in chemical practice that catalysts were “unpredictable.”) In what might be called a “bizarre turn of events,” the Federal Circuit panel (which again included Chief Judge Markey) affirmed the Board’s ruling with respect to Claims 1-42, but reversed that ruling as to dependent Claim 43. (In the resulting prosecution, Dad then amended these rejected 42 claims to depend from Claim 43, now written in independent form, to place the application in condition for allowance.) Again, Dad, the former chess master, had tactically maneuvered his pieces in the oral argument to achieve a successful outcome.
Like the Jedi master that he was, Dad was not only skilled practitioner, but also a great teacher of his patent attorney craft. I often joked how I and my other three brothers worked in Dad’s firm’s summer “boot camp” as office boys, patent searchers, and in my case, eventually as a law clerk. In other words, my brothers and I learned what I called the “family business” from the ground up through Dad. Dad also didn’t just teach us but also gladly helped the younger associates in his firm learn his craft. Dad never pushed me (or my brother Mark) to follow in his footsteps, but when I did, Dad took me under his wing, and instructed me in the “tricks of trade” (see above). Dad also had his “law digest,” a huge collection of patent law cases he summarized weekly from the USPQ on 3 x 5 cards, typing with his “three finger system” which he had developed to pass the federal government’s stenographer test back when he was an Examiner. Many of us were to benefit from using Dad’s “law digest.”
Now that Dad is gone, I’ll miss him dearly, including his fondness for poetry, anything Teddy Roosevelt, the Peanuts comic strip, and his corny “chemistry jokes” (e.g., what do several “Fe’s” in a circle form?). I’ll also miss the time we shared together doing long distance running on the roads and in races. (Dad was well known in running circles, especially in the DC area, competing in senior events well into his 80’s and continuing to run, even at a much slower pace, into his early 90’s, while at the same time enthusiastically supporting his fellow runners.) Dad was also instrumental in me developing my love of golf, even though Dad (by his admission) was probably one of the worst golfers ever to play the game. But most significantly, what will stay with me to end of my “mortal days” is Dad’s zealous sense of fairness and justice for all, especially for those who weren’t as fortunate, mighty or powerful. Dad was certainly “one of a kind.” I was truly “blessed” to be my Dad’s son.
*© 2012 Eric W. Guttag. Posted January , 2013 on IPWatchdog.com