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.
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.
The Department of Justice stepped in to argue the AMP v. Myriad case five years ago today. It was during that argument at the Federal Circuit that the patent world got to hear about the DOJ’s “Magic Microscope” test. One year later, the case would make its way to the Supreme Court, where the PTO did not join in briefing the case. That contrasts with Cuozzo v. Lee, currently pending at the Supreme Court, in which both the PTO and the SG’s Office are briefing the case together.
© Johnson and Vobach 2016
Judge Moore noted the Magic Microscope test in her concurring opinion in the case:
Although the Patent Office has consistently followed the same policy for a decade (and arguably a century or more), the United States, as an amicus represented at argument by the Solicitor General, now argues that the Patent Office’s published guidelines are incorrect and a misstatement of the law. In place of these guidelines, the Solicitor General suggested that we should use a “magic microscope” as part of our section 101 analysis. If we could observe the claimed substance in nature using this microscope, the Solicitor General argues, it is not patentable. The magic microscope test applies equally to portions of a larger, naturally occurring molecule. For example, the optical field of view could be zoomed to see just a sequence of fifteen nucleotides within the chromosome. As long as you could “see” the claimed molecule in nature using the magic microscope, it would fall into the “laws of nature” exception and be unpatentable subject matter.
Certainly the magic microscope has curb appeal—its child-like simplicity an apparent virtue. The magic microscope, however, would not see the claimed DNA molecules at issue in this case. An isolated DNA molecule has different chemical bonds as compared to the “unisolated” sequence in the chromosome (the ends are different). In short, the claimed molecules cannot be seen in nature through the magic microscope. While you may be able to see the order of DNA nucleotides in the chromosome, the isolated fragment of 1369*1369 DNA is a different molecule. It may be that the microscope can also break and form chemical bonds to yield the claimed isolated DNA. Even so, the microscope must make some decisions: should the isolated DNA begin and end in a phosphate? a hydrogen? a hydroxyl? a methyl group? an acyl group? These decisions might be obvious to a person of ordinary skill in the art, but they are not inherent to the unisolated sequence as part of the chromosome. Creating the claimed isolated DNA sequences therefore results in a distinctly unnatural molecule. Even the dissent agrees that the isolated DNA molecules at issue require cleaving chemical bonds, though it disputes the importance of the resulting distinct “`molecular species.’” Dissent at 1375 (quoting Linus Pauling, The Nature of the Chemical Bond 6 (3d ed.1960)). The magic microscope test simply does not work the way the government claims.
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: firstname.lastname@example.org(link sends e-mail).