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Back on Friday, July 29, 1994, the CAFC decided In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994). (A memorable date for me, as I was taking the Colorado bar exam on that date.) The opinion was a highly fractured one with multiple dissents. One of the main issues of contention was whether the Federal Circuit had jurisdiction to hear the appeal, because it stemmed from an enlarged panel decision at the Board. Whether the USPTO had the authority to use such enlarged panels under the statute in place back then had to be determined to decide if the appellate court had jurisdiction.

Judges RICH, NEWMAN, LOURIE and RADER, voted in favor of the court having jurisdiction.

Judges ARCHER, Chief Judge, NIES and PLAGER, concurred in the conclusion.

Judges MAYER, MICHEL, CLEVENGER and SCHALL dissented.

This issue seems relevant to me because Alappat was mentioned again today in the concurrence in Polaris v. Kingston.

The Arthrex panel’s underestimation of the Director’s power is particularly evident in light of this court’s prior en banc decision in In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994), abrogated on other grounds by In re Bilski, 545 F.3d 943 (Fed. Cir. 2008). Alappat contained strong language about the ability to control the composition and size of panels. See, e.g., id. at 1535 (noting that “the Board is merely the highest level of the Examining Corps, and like all other members of the Examining Corps, the Board operates subject to the Commissioner’s overall ultimate authority and responsibility”). While the duties of the Board and the Director have changed since Alappat was decided, the authority to determine the Board’s composition for reconsideration of an examiner’s patentability determination mirrors the current authority with respect to inter partes review. Compare 35 U.S.C. § 6(c) (2012) (giving the Director authority to designate “at least 3 members of the Patent Trial and Appeal Board” to review “[e]ach appeal, derivation proceeding, post-grant review, and inter partes review”), with 35 U.S.C. §7(b) (1988) (giving the Commissioner power to designate “at least three members of the Board of Appeals and Interferences” to review “adverse decisions of examiners upon applications for patents”). Therefore, I believe the panel should have at least discussed how Alappat’s view of the power to control the Board might impact the Appointments Clause analysis.

Polaris v. Kingston, slip opinion at footnote 5 (Fed. Cir. January 31, 2020)(Judges Hughes and Wallach in concurrence).

One should keep in mind that the Alappat decision was highly fractured. Three of the majority remain on the court, as do three of the dissenters. However, an en banc panel from an appeal of either Arthrex or Polaris would only include full time circuit judges — not senior judges. Therefore, Judges Newman and Lourie would be the only surviving members from Alappat to serve on such an en banc panel.

This prior post provides some historical context for Alappat, as well: [In 1992, 75% of the BPAI judges objected to the manipulation of the composition of Board panels].

Since Judge Hughes compared the current statute to a previous statute with respect to the Board, I wonder if there is any merit in going back further in time to when the Supreme Court decided Brenner v. Manson? See this earlier post for more on that, including Supreme Court audio: [Brenner v. Manson — footnote 6.].

The oral argument of the week is from TELESIGN CORPORATION v. TWILIO, INC., No. 2019-1312 (Fed. Cir. Jan. 9, 2020).

I thought this oral argument might interest those of you who like to follow patent eligibility issues.

The panel of Judges Dyk, Taranto, and Chen issued a Rule 36 Judgment [Link].

The oral argument is available here:

If you are in Denver on Thursday, January 30th, the Denver Patent Office is hosting a biotech roundtable:

Details:

Thursday, January 30, 2020

1:30 p.m. – 4:00 p.m.

Registration & Networking begins at 1:00 p.m.

United States Patent and Trademark Offices

1961 Stout St

15th Floor Conference Room

Denver, CO 80294

1:00 p.m. – 1:30 p.m. Registration and Networking

1:30 p.m. – 1:40 p.m. Introductions

•     Molly Kolcialski, Director of the Rocky Mountain Regional Office of the USPTO

•     Jerry Lorengo, Director of TC3700 (medical, surgical, and diagnostic instruments)

•     Andrew Wang, Director of TC1610 (organic compounds: bio-affecting, body treating, drug delivery, steroids, herbicides, pesticides, cosmetics, and drugs)

1:40 p.m. – 2:10 p.m. Restriction Practice, Renee Claytor, SPE 1651 (Fermentation, Microbiology, Isolated and Recombinant Proteins/Enzymes)

2:10 p.m. – 2:30 p.m. Application Initiatives/Online resources, Ram Shukla, Acting Assistant Regional Director of the Rocky Mountain Regional Office of the USPTO

2:30 p.m. – 2:45 p.m. After-final practice, Raul Tamayo, Senior Legal Advisor, Office of Patent Legal Administration

2:45 p.m. – 3:00 p.m. Break

3:00 p.m. – 4:00 p.m. Question and Answer Session, Roundtable Discussion to include discussions on 101, written description, and enablement

Registration Link.

The Federal Circuit has updated its guidelines for oral arguments. From the Federal Circuit website:

UPDATED ARGUMENT RESOURCES

The Clerk’s Office has released an updated version of its Guide for Oral Argument, which incorporates several changes including a revised Courtroom Decorum Policy and new Guidelines for Counsel During Argument.  This document and other resources are available on the Argument Resources page of the court’s website.   

Among other changes, the guide has added a new section VI:

VI. Guidelines for Counsel During Argument

The following guidelines are provided to assist counsel in making the best use of the allotted time at argument.

• Counsel should not interrupt a judge.
• Assume the court is familiar with the facts of the case.
• Minimize reading.
• Have a copy of the appendix and be familiar with the location of items.
• Assume the court is familiar with the briefs and appendix contents.
• When raising new authority at argument, provide a copy to opposing counsel ahead of time.
• Stop your argument when your time expires unless the court permits you to continue.
• Answer questions directly.
• Avoid pejoratives.
• When referring to specific portions of the appendix, provided accurate page citations.
• Do not respond to a question with an unqualified citation to your brief in response to a question
• Counsel seated at counsel tables should neither make inappropriate facial gestures nor engage in exaggerated gesticulation.

It looks like the Utah State Bar has another outstanding line-up of speakers for its IP Summit on February 21st. [Link]. Chief Judge Prost and Director Iancu are a couple of the keynote speakers, as well.