Archive for the ‘Uncategorized’ Category
One would think that it would be impossible to panel shop at the Federal Circuit; but, I wonder if clever litigants have done so to a limited extent. For example, I noticed that Judge Dyk frequently sits by designation with the US Court of Appeals for the First Circuit during the last week of July/first week of August. Presumably, he does not sit with the Federal Circuit in August during those years. Therefore, I wonder if an appellant has ever cared enough about not having Judge Dyk on the panel that it calculated the average time for briefing etc. and strategically filed the notice of appeal on a date that would most likely have the Federal Circuit hear the argument in August? I suppose that there’s a pattern as to when senior judges hear oral arguments, as well. For example, a litigant with a 101 issue might not want — let’s just pick a random judge, Judge Mayer — to hear its case. I wonder if such a litigant has ever looked at the history of appearances and strategized accordingly. Of course, such litigants would have been significantly limited by the narrow window that one has to file a notice of appeal after a decision by a lower tribunal.
The Federal Circuit can easily counter such tactics by being random with its scheduling.
It is interesting that in the May 2016 Subject Matter Eligibility Guidance, the USPTO continues to rely upon Rule 36 opinions as being instructive. The Federal Circuit does not always address all issues on appeal to reach an affirmance of the Board. For example, in In re Gleave the court stated:
Therefore, we affirm the Board’s rejection of claims 1, 4, 15, and 18-21 of the ‘493 application under § 102(b). We need not reach the § 103 obviousness rejection.
To the extent that an appeal resolved by a Rule 36 opinion contained more than a §101 rejection, how can the USPTO be certain that the Federal Circuit was affirming the rationale of the §101 rejection rather than just a §103 rejection, for example?
Moreover, I’m reminded of Judge Moore’s comment in the oral argument of In re Collins, App. No. 2011-1293 (Fed. Cir. 2012). Judges Moore and Reyna took the PTO to task for a sloppy rejection of a claim. An exasperated Judge Moore would remark “I think this is a terrible rejection. I think you all [USPTO] have done a really sloppy job. . . . This is ridiculous. This is a bad rejection. There’s a good rejection you could have made. This isn’t it.“ [Listen] and [Listen]. The Board was affirmed by a Rule 36 opinion in that case.
Finallly, do a search of the MPEP. See if you can find any place in the MPEP where the USPTO relies upon Rule 36 opinions of the Federal Circuit.
If you’re about to submit a response to a §101 rejection, please note that the May 2016 Subject Matter Eligibility Guidance Update was announced today. Here is the link to the updated materials on the United States Patent and Trademark Office web site: [link].
I suppose that if there were ever to be a National Patent Prosecution Day, it would have to be celebrated on May 2nd. After all, that is the anniversary of the Topliff v. Topliff decision in which the Supreme Court of the United States acknowledged:
The specification and claims of a patent, particularly if the invention be at all complicated, constitute one of the most difficult legal instruments to draw with accuracy, and in view of the fact that valuable inventions are often placed in the hands of inexperienced persons to prepare such specifications and claims, it is no matter of surprise that the latter frequently fail to describe with requisite certainty the exact invention of the patentee, and err either in claiming that which the patentee had not in fact invented, or in omitting some element which was a valuable or essential part of his actual invention.
Topliff v. Topliff, 145 U.S. 156, 171 (1892).
I suppose another candidate would be June 16th. That is the anniversary of Diamond v. Chakrabarty:
The Committee Reports accompanying the 1952 Act inform us that Congress intended statutory subject matter to “include anything under the sun that is made by man.” S. Rep. No. 1979, 82d Cong., 2d Sess., 5 (1952); H. R. Rep. No. 1923, 82d Cong., 2d Sess., 6 (1952).
Diamond v. Chakrabarty, 447 U.S. 303, 100 S. Ct. 2204, 65 L. Ed. 2d 144 (1980).
Just a few odds and ends:
1) Patently-O’s birthday is today. Can you guess how many years? Happy Birthday, Patently-O!
2) Those filing patent cases in Delaware in hopes of having noted patent jurist Judge Sue Robinson hear their case might want to take note that Judge Robinson is slated to take senior status next February. [source] Congratulations, Judge Robinson. Judge Robinson sat by designation with the Federal Circuit back in 2007.
3) Temple Grandin received her own kids’ playing card from the USPTO over the weekend. [Source]. Congratulations, Dr. Grandin.
I don’t believe that I ever posted Justice Thomas making the announcement of the Alice v. CLS decision. You can listen to that announcement [here].
The deadline is quickly approaching for nominating inventors for the National Medal of Technology and Innovation. If you are without a nominee and disillusioned by the Supreme Court’s patent eligibility test, I would have suggested that you consider nominating the inventors from the patent that was deemed patent ineligible in Ariosa v. Sequenom, 788 F.3d 1371 (Fed. Cir. 2015) — that’s Patent No. 6,258,540. However, I suspect that those inventors are British.
From the USPTO website:
Nominations Sought for National Medal of Technology and Innovation
The Department of Commerce’s United States Patent and Trademark Office (USPTO) is seeking nominations for the 2016 National Medal of Technology and Innovation.January 13, 2016Press Release 16-01
Washington - The Department of Commerce’s United States Patent and Trademark Office (USPTO) is seeking nominations for the 2016 National Medal of Technology and Innovation. The medal is presented each year by the President of the United States and is this country’s highest award for technological achievement.
The medal is awarded annually to individuals, teams (up to four individuals), companies or divisions of companies for their outstanding contributions to America’s economic, environmental and social well-being. By highlighting the national importance of technological innovation, the medal also seeks to inspire future generations of Americans to prepare for and pursue technical careers to keep America at the forefront of global technology and economic leadership.
The USPTO administers the medal program on behalf of the Secretary of Commerce. Detailed information about the requirements for submission of a nomination as well as a nomination form can be downloaded at NMTI Nominations. All completed nominations must be submitted to the USPTO by midnight (ET), April 1, 2016.
For more information about the process, please contact: email@example.com(link sends e-mail).
From the Federal Circuit web site (last accessed 3/30/2016):
The United States Court of Appeals for the Federal Circuit has amended the Federal Circuit Rules of Practice. The new rules are available here including a summary of changes. The amendments are extensive and include incorporating the terms of the Administrative Order Regarding Electronic Case Filing dated May 17, 2012; revising the requirements for confidential markings; as well as other updates, conforming changes and editorial corrections throughout. The revised rules are effective and shall apply to all appeals docketed on or after Friday, April 1, 2016. The notice version of the Rules of Practice 2016 will soon be replaced by a new web-structure version with enhanced electronic functionality.