Posts Tagged: "dissent"

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Thursday issued a precedential decision holding that SAS Institute , Inc. failed to establish copyrightability of its asserted software program elements. Judge Newman dissented, arguing the ruling “contravenes the Copyright Act and departs from the long-established precedent and practice of copyrightability of computer programs” and that it represents a “far-reaching change.”

Talk about snatching victory from the jaws of defeat! That is precisely what the Federal Circuit did for HEC Pharm Co. recently in Novartis Pharmaceuticals Corp. v. Accord Healthcare Inc. et al (No. 2021-1070). In what can only be characterized as an astonishingly unprecedented procedural betrayal of justice, Novartis recently found itself on the losing side of a request for panel rehearing. Save for a moment just how extraordinarily uncommon it is for the Federal Circuit to grant panel rehearing, and likewise save for a moment how extremely uncommon it is for the Federal Circuit to overrule a prior panel decision even when a panel rehearing is granted. But in Novartis Pharmaceuticals v. Accord Healthcare, neither of the panel members in the majority of the original opinion even agreed to rehear the case, let alone agreed to reverse their prior ruling.

The Federal Circuit upheld the district court’s damages award of approximately $140 million for Sprint after Time Warner was found to infringe claims of five patents covering technologies related to methods for linking circuit-switched and packet-switched networks within a telecommunications system. Despite the nonprecedential designation, Circuit Judge Haldane Mayer issued a dissenting opinion reflecting his views that the damages award should be vacated and the asserted patent claims found invalid for failing the written description requirement… The Federal Circuit majority also disagreed with Time Warner that the references to the 25 percent rule of thumb in the 2007 Vonage verdict made it inadmissible as evidence to the jury in district court.

Dissent is not the highest form of judgment for judges on the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO).  As discussed in further detail below, our own analysis indicates that dissents for ex parte appeals are found in about .5% of decisions issued by the PTAB.  A PTAB judge deciding an ex parte appeal is more than ten times less likely to dissent than a Federal Circuit (CAFC) judge. Relying on internal USPTO policies and former PTAB judges’ personal experiences, a recent spate of commentary has provided different explanations regarding the rarity of dissents for ex parte appeals.  We were still left wondering why some judges go out of their way to write dissents.  In an effort to better understand this issue and what the dissents might reveal about the ex parte appeal process in general, we conducted a statistical analysis of dissents in recent ex parte appeal decisions.

On Friday, June 15th, the Court of Appeals for the Federal Circuit denied a petition for panel rehearing and rehearing en banc in Xitronix Corporation v. KLA-Tencor Corporation. The petition for rehearing was filed by KLA-Tencor after the Federal Circuit first decided Xitronix back in February of this year, where the appellate court held that it didn’t have jurisdiction to hear an appeal in a patent case which only involved claims of monopolization under U.S. Supreme Court standards set in 1965’s Walker Process Equipment v. Food Machinery & Chemical Corp.

The Court of Appeals for the Federal Circuit recently issued a decision in DSS Technology Management v. Apple, which reversed an earlier decision by the Patent Trial and Appeal Board (PTAB) to invalidate patent claims covering a wireless communication networking technology… While this may seem like an ordinary, garden variety misapplication of the law of obviousness by the PTAB, there is more beneath the surface. In this case one of the Administrative Patent Judges hearing the case at the United States Patent and Trademark Office (USPTO) was APJ Matt Clemens, who previously represented Apple as a defense attorney in patent infringement matters prior to joining the board… It is astonishing that the Patent Trial and Appeal Board STILL does not have Rules of Conduct or any kind of Code of Judicial Ethics that applies to Administrative Patent Judges. This is inexcusable, period.

Today, Judge Newman is the Federal Circuit’s most prolific dissenter, and her dissents are important. Former Chief Judge Paul Michel noted that “Judge Newman may hold the record for the most dissents. But her dissents have great force and often persuade other colleagues over time.” Judge Kimberly Moore concurred, saying “[w]hat people may not realize is that many of her dissents have later gone on to become the law—either the en banc law from our court or spoken on high from the Supremes.” She noted that “Merck v. Integra comes to mind. It’s a case where she wrote a very strong dissent. The Supreme Court took it and not only changed the state of the law to reflect what she had written, but they cited her outright in the opinion.”