Posts in Federal Circuit

Interview Sequel: Chief Judge Paul Michel

In July 2010 I had the privilege of interviewing Chief Judge Paul Michel of the Federal Circuit, who had just recently retired from the Court effective May 31, 2010. Chief Judge Michel spoke with me on the record for over 1 hour and 40 minutes, and even then I only was able to get to a fraction of the topics that the Chief Judge agreed to discuss on the record. Chief Judge Michel agreed to go back on the record with me to address those additional topics, such as the confirmation process to become a judge, the state of the federal judiciary, funding for the Patent Office, Federal Circuit decisions over his tenure on the Court and more. We had our second interview on September 24, 2010, again at the University Club in Washington, DC.

TiVo vs. Dish at the Federal Circuit: Examining TiVo’s Brief

Several weeks ago TiVo filed its brief in the matter of Tivo, Inc. v. EchoStar Corp., which will be heard en banc by the United States Court of Appeals for the Federal Circuit on Tuesday, November 9, 2010. The dispute between TiVo and EchoStar dates back to 2004 when TiVo sued EchoStar in the United States District Court for the…

Judge Dyk Suggests En Banc Review of CAFC Preamble Law

I would also like to take issue with Judge Dyk’s statement that it would simply be easier, and better, to say that anything in the preamble is limiting. Yes, that would certainly be easier and probably a better approach than the nebulous standard presently in place, but I doubt that would be to the Supreme Court’s liking given they seem to detest bright line rules, even when they make sense. I also protest such an approach because that has, as far as I can tell, never been the law, or at least not at any time during my practice career. So regardless of whether it is a better test it absolutely should not be applied retroactively to affect those rights obtained under the belief that what is in the preamble is not limiting.

Federal Circuit: Foreign Application Not Priority in Interference When it Only “Envisions” Invention

Last week the United States Court of Appeals for the Federal Circuit issued a ruling in Goeddel v. Sugano, which might be one of a dying breed should patent reform actually pass. The case dealt with an appeal from an interference proceeding where the Board awarded priority based on a Japanese application. The Federal Circuit, per Judge Newman, explained that it was inappropriate to say that the Japanese application demonstrated a constructive reduction to practice because the application merely would allow the skilled reader to “envision” the invention covered in the interference count. If patent reform passes (and yes that could really happen) cases like Goeddel would become a thing of the past, although priority determinations like this one in Goeddel will certainly not go away.

Looking Ahead to TiVo v. Dish at the Federal Circuit

Putting aside my disdain for the Supreme Court stepping into patent matters of any kind, what does seem clear is that the Supreme Court wants to pretend that patents are the same as any other area of law and the same processes and procedures pertaining to other areas of law apply equally to the patent world. See eBay v. MercExchange and Zurko v. Dickinson for but two examples. The Supreme Court also loves case by case approaches without hard and fast rules that can actually be objectively and even-handedly applied. See KSR v. Teleflex and Bilski v. Kappos for but two examples. So strictly adhering to this clear trend it would suggest that the Supreme Court would be quite open to giving district court judges broad latitude to enforce their own Orders when appropriate. This would allow the district courts discretion to handle different cases differently, so that would cover the case by case approach, and it would seem to be in keeping with theories of judicial economy, which are typically left to the district court to handle, particularly when procedure, process and management of the docket are at issue.

CAFC Denies Writ of Mandamus in PTO Interference Proceeding

Allvoice sought a remand of the Holt application to the examiner for further prosecution or to issue an order requiring AVRS to show cause why judgment should not be entered against the Holt application. Without requiring AVRS to even file a response, the Federal Circuit, per Chief Judge Rader, explained that there was simply no justification for the issuance of a writ of mandamus because there was no showing that an ordinary appeal wouldn’t suffice after the PTO finally disposed of the interference proceeding. Of course, that doesn’t take into consideration the need for Allvoice to quite title to proceed with its infringement action against Microsoft. The plot thickens!

Jumping Down the Rabbit Hole: Federal Circuit Ducks the Patent-Eligibility Issue in King Pharmaceuticals

With an opportunity to render some order out of the Bilski chaos, the Federal Circuit instead completely ducked the patent-eligibility issue clearly presented in King Pharmaceuticals. The Federal Circuit then created (and I do mean “created”) the new “an anticipated method claim doesn’t become patentable if it simply includes an informing step about an inherent property of that method” doctrine. With this new “doctrine,” we have now “jumped down the rabbit hole” into a surreal “Bilski in Patentland” world.

On the Record Interview with Chief Judge Paul Michel, Part 1

After 1 hour and 40 minutes I had hardly covered one-third of my questions, and I think you will see that we had a very lively discussion about many things, including Judge Michel’s investigation of President Nixon during Watergate, his investigation of Members of Congress during Koreagate, judicial ethics, working for Arlen Spector when he was a District Attorney and then again as a Senator, patent reform, the Patent Office, where things seemed to go out of control for the US patent system and much more. We even talked about Bilski v. Kappos, KSR v. Teleflex and how the patent system is tilting against independent inventors, start-ups and universities.

Through the Fuzzy Bilski Looking Glass: The Meaning of Patent-Eligible under 35 U.S.C. § 101

So now what does SCOTUS’ ruling in Bilski “really” mean to us “mere mortals”? First, we’ve got two “wild cards” to deal with as noted above: (1) Stevens has retired; and (2) what does Scalia’s refusal to join Parts II B-2 and C-2 of Kennedy’s opinion for the Court signify. Some aspects of “wild card” #2 are dealt with above, but as also noted, there are still some aspects which are unclear or at least ambiguous as to how this refusal by Scalia should be viewed. This lack of clarity/ambiguity will require some sorting out by the Federal Circuit, which may come as early as the reconsideration by the Federal Circuit of Prometheus, Classen, or even the appeal in AMP v. USPTO involving the gene patenting controversy. In AMP, District Court Judge Sweet’s invalidity ruling regarding the method claims for determining a pre-disposition to breast/ovarian cancer using the BRCA1 and BRCA2 genes relies at least in part upon the “M or T” test which, as noted above, SCOTUS unanimously relegated to “second class” status in Bilski as not the only test for patent-eligibility.

Foaming at the Mouth III: And Then Came Bilski

One reason I was quite interested in Bilski was because the Supreme Court (not surprisingly) ruled that the Federal Circuit’s “machine or transformation” test was too inflexible, much like the “teaching, suggestion and motivation” (TSM) test in KSR International v. Teleflex. So why my intense interest in the Supreme Court (aka the Judicial Mount Olympus) relegating the “machine or transformation” (aka MoT) test to “second class status” in Bilski? Besides the inanity of MoT as the sole test for patent-eligibility, I am interested because of Judge Sweet’s ill-advised reliance on MoT (now smitten by the thunderbolts from our Judicial Mount Olympus in Bilski) for invalidating Myriad’s method claims using its BRCA1 and BRCA2 gene sequence technology.

Section 273 is NOT a Red Herring: Stevens’ Disingenuous Concurrence in Bilski

Where this decision takes on a surreal quality is how the various Justices viewed the impact of 35 U.S.C. § 273 in determining whether “business methods” are patent-eligible. Justice Stevens and 3 other Justices (Ginsburg, Breyer and Sotamayor) are completely WRONG in treating 35 U.S.C. § 273 as if this statute doesn’t exist. Even Scalia, who obviously doesn’t like patents on “business methods” (by his refusal to join Part II B-2 of Kennedy’s opinion) couldn’t stomach rendering the language of 35 U.S.C. § 273 a nullity.

No $5.4 Trillion Bounty for False Patent Marking Bounty Hunter

In Perquignot v. Solo Cup Co., the stakes were truly mind-boggling: about $10.8 trillion in total. Approximately $5.4 trillion of that bounty would be the federal government’s share which the Federal Circuit characterized as “sufficient to pay back 42% of the country’s total national debt.” High stakes indeed! But unfortunately for the bounty hunter (Pequignot) in Perquignot, the Federal Circuit affirmed a district court grant of summary judgment that there was no “deceptive intent” on the part of the patentee (Solo Cup), thus no approximately $5.4 trillion bounty was owed.

IPO Honors Judge Michel and Dupont Inventors at Smithsonian

At these types of ceremonies everyone says such nice things, but what Judges Newman, Linn and Lourie said about Judge Michel seemed particularly heartfelt, and they seemed almost saddened to see their friend choose to leave and set out to make a difference advocating rather than opining. The video also included flattering comments from Chief Judge Anthony Joseph Scirica of the Third Circuit, one of Judge Michel’s former clerks and executives of the IPO. It was extremely tasteful, gave an appropriate but not lingering recap of his career and did not linger or go on at an uncomfortable length as these things sometimes can do. Extremely well done and kuddos to the IPO.

CAFC Judges Should Be Require to Examine Patent Applications

On Friday, May 28, 2010, USPTO Director David Kappos gave five suggestions for practitioners on the Director’s Forum (i.e., the Kappos blog). It would be wonderful if such things could occur in the prosecution of every case, but unfortunately the Federal Circuit has effectively prevented that from happening and forced upon the USPTO and the practicing patent bar a game of hide the ball, which benefits no one. With Congress not stepping up to the plate any time soon to do anything useful for the patent system there may be only one hope left; namely to get the CAFC judges to examine patent applications, sitting by designation, so they can better understand the mess they have created.

CAFC Judge Plager Says Definiteness Requirement Needs Teeth

As I’ve said before, no one could rightly accuse me of being biased against patents. But, as I also pointed out in this article on Judge Rader’s dissent in Media Technologies Licensing, LLC v. The Upper Deck Company, I don’t believe every patent is “bullet proof,” or to use Judge Plager’s phrase, that some patents aren’t built on “quicksand.” In fact, I agree with Judge Plager’s dissent in the denial of rehearing en banc in Enzo Biochem, Inc. v. Applera Corp., issued May 26, 2010, which argues that the “definiteness” requirement in the second paragraph of 35 U.S.C § 112 needs more “teeth” than Federal Circuit precedent appears to give it.