Updated Federal Circuit Rules of Practice

March 30th, 2016

From the Federal Circuit web site (last accessed 3/30/2016):

2016-03-29 21:39

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.

Washington and Lee to serve as “continuity of operations” site for CAFC

March 24th, 2016

 The Federal Circuit visited Washington and Lee University yesterday to hear oral arguments.  Washington and Lee has been named as the “continuity of operations”* site for the Federal Circuit in the event of an emergency.

The Federal Circuit will now sit at Washington and Lee once each year.  [Source]

*Continuity of Operations, as defined in the National Security Presidential Directive-51/Homeland Security Presidential Directive-20 (NSPD-51/HSPD-20) and the National Continuity Policy Implementation Plan (NCPIP), is an effort within individual executive departments and agencies to ensure that Primary Mission Essential Functions (PMEFs) continue to be performed during a wide range of emergencies, including localized acts of nature, accidents and technological or attack-related emergencies.

“Redundant” is the new “Abstract”

March 23rd, 2016

There was a great quote in the dissent by Judge Reyna in the Shaw Industries Group, Inc. v. Automated Creel Systems, Inc. decision published today.

Judge Reyna quotes the Burlington Truck Lines case from the Supreme Court:

“Expert discretion is the lifeblood of the administrative process, but unless we make the requirements for administrative action strict and demanding, expertise, the strength of modern government, can become a monster which rules with no practical limits on its discretion.” Burlington Truck Lines, Inc. v. United States, 371 U.S. 156, 167 (1962) (internal quotation marks omitted).

Your natural inclination might be to think that Judge Reyna was referring to the PTO’s unbridled enthusiasm for declaring claims “abstract” without the citation of any evidence to substantiate such an assertion.  In this case, however, the issue was the redundancy doctrine and how it is applied in inter partes reviews.  Apparently, “redundant” is the new “abstract.”

You can read the opinion here: [Link].

Overuse of “printed matter” doctrine

March 19th, 2016

The associate solicitor for the USPTO ran into a buzz saw in the form of Judges Taranto and Hughes in the oral argument of In re Distefano.  The USPTO was fortunate as Chief Judge Prost opted to write the opinion for the court in this case.  She was the least vocal during the oral argument in criticizing the PTO and the opinion was somewhat tame compared to the oral argument.

As one example of the criticism, Judge Hughes remarked during the oral argument:

I mean you’re really asking us to let you be lazy. I don’t mean to be mean about it, but this is the third printed matter case I’ve seen from you all and I’ve only been here two years. And, they’ve all involved instances like this where the Board is trying to fix a sloppy examiner’s rejection.

You can listen to that comment here: [Listen].

You can listen to the entire oral argument here: [Listen].

You can read the opinion here [Read].

Oral Argument from Sperry v. Florida ex rel. Florida Bar

March 15th, 2016

The Federal Circuit’s recent decision in In re Queen’s University deals with whether patent agent/client communications are privileged.  The Federal Circuit leans heavily on the US Supreme Court case  Sperry v. Florida ex real. Florida Bar to find that there is such a privilege.

The Oyez site has done a great job of making the oral arguments from the Supreme Court cases available for listening.  The playback of the oral arguments even shows a portrait of each justice when that particular justice speaks during playback.  At any rate, you can listen to the oral argument of the Sperry case via the Oyez site [here].

In footnote 2 of the dissent in In re Queen’s University, the dissent seems to dismiss the importance of the issue since no amicus briefs were filed in the case.  For what it’s worth, I consider myself pretty well apprised of what is going on in the patent world and I was not aware of the case until it was recently decided.  Moreover, the Office of Enrollment and Discipline shows that patent agents account for roughly 1/4 of all practitioners registered to practice before the USPTO:

Currently, there are 11045 active agents and 33133 active attorneys.

See https://oedci.uspto.gov/OEDCI/practitionerhome.jsp (last visited on 3/15/2016).

Conflating §101 with §103? . . . “The Supreme Court beat you to it”

March 13th, 2016

In the recent oral argument of Priceplay v. AOL, the advocate for Priceplay noted that he did not want to conflate §101 with §103.  Judge Moore interjected that “The Supreme Court beat you to it . . .” to the amusement of Judge Bryson, who was also on the panel. [Listen].

This oral argument is once again directed at §101 issues.  One interesting issue was whether a claim that recites two abstract ideas can be patent eligible under the Alice/Mayo test.

Another issue was whether the DDR Holdings case extends beyond internet technology to computer technology in general.

You can listen to the oral argument here: [Listen].

Oral argument of the week: Cloud Satchel v. Barnes and Noble et al.

March 9th, 2016

The Federal Circuit issued a Rule 36 Judgment in Cloud Satchel, LLC v. Barnes and Noble, Inc., et al.  If you like §101 issues, I think you’ll enjoy listening to this oral argument.  [Listen]

The court’s opinion is available here: [link].

Justice Thomas’ Colloquy

March 8th, 2016

Justice Thomas is known for not asking questions during oral argument.  By some accounts, it has been ten years since he last asked a question of counsel during oral argument.  Last week, however, during the oral argument of  Voisine v. U.S., Justice Thomas broke that streak.  You can listen to his questions here: [Listen].

Colonel Peter Marksteiner — New Clerk of the Court for the Federal Circuit

March 6th, 2016

From the Federal Circuit web site:

The court is pleased to announce the selection of Peter R. Marksteiner as the new Circuit Executive/Clerk of Court for the Federal Circuit.

Mr. Marksteiner is currently a Colonel in the U.S. Air Force and serves as the Director of Civil Law and Litigation for the Air Force. In that capacity he leads a team of 287 lawyers and para-professionals, working in 38 locations around the country, supporting a broad array of administrative and civil litigation, including before the federal courts of appeal.

Colonel Marksteiner entered the Air Force in 1986 and spent three years as a munitions and maintenance officer before being selected to participate in the first of two Air Force-sponsored legal education programs. During his 25 years as an Air Force Judge Advocate (“JAG”), Colonel Marksteiner served in multiple practice areas, including contracts, environmental, labor and employment, commercial space, torts and claims, fiscal, government ethics, Freedom of Information and Privacy Act, criminal prosecution and defense, and as a senior judge on the Air Force Court of Criminal Appeals. In addition to his numerous legal postings, Colonel Marksteiner also served as the Chief Information Officer, Chief of Strategic Planning & Communications, and Chief Personnel Officer for the Air Force’s worldwide legal workforce. Colonel Marksteiner also has extensive and varied teaching, training, professional writing and publication experience in the areas of federal sector labor and employment law and the use of Information Technology in knowledge-based organizations. Colonel Marksteiner is pending retirement from the U.S. Air Force.

Colonel Marksteiner holds a Bachelor of Science in Criminology, cum laude, from Florida State University, where he was also a Distinguished Graduate from the Air Force Reserve Officer Training Program, a Juris Doctor with Honors from Florida State University, a Master of Aeronautical Science from Embry-Riddle Aeronautical University, and a Master of Laws with Distinction from the Georgetown University Law Center. He is the recipient of numerous military awards and decorations, including the Legion of Merit and the ABA Standing Committee on Armed Forces Law Career Military Service Award for the Air Force.

Mr. Marksteiner will join the court staff on Monday, April 18, 2016.

SCOTUS Oral Argument Recording: Halo v. Pulse

March 3rd, 2016

The Supreme Court heard oral argument in the combined proceedings of Halo Electronics, Inc. v. Pulse Electronics, Inc. et al. and Stryker Corp. et al. v. Zimmer, Inc. et al. last week.  I have broken the argument down into the various speaker segments below:

Mr. Wall on behalf of Petitioners: [Listen]

Mr. Martinez on behalf of United States, as amicus curiae, supporting petitioners: [Listen]

Mr. Phillips on behalf of Respondents: [Listen]

Mr. Wall’s rebuttal:  [Listen].

The transcript is available [here].