The judges are seated according to seniority/tenure on the court. For example, Chief Judge Prost is seated in the middle of the front row, as the most senior. To her right is Judge Newman who has the longest tenure on the court. To Chief Judge Prost’s left is Judge Mayer, who has the second longest tenure on the court after Judge Newman. The seating continues to alternate about Chief Judge Prost by tenure. In the back row, the arrangement by tenure continues and is centered about Judge Bryson. The court’s two newest appointees, Judges Hughes and Stoll, bookend the back row.
Archive for May, 2016
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].