“Learning is not attained by chance, it must be sought for with ardor and attended to with diligence.”
Abigail Adams (1780)
I used to enjoy attending what I still think of as the Kayton Courses; namely, three day intensive courses on topics of interest to patent practitioners. With the internet, these courses seem to have fallen by the wayside. I hope that some enterprising group of practitioners will pick up the mantle and revive this format of courses. Maybe a group like Strafford could use their platform to expand into this type of deep-dive offering.
I think my September 1st resolution will be to be more proactive in sharing my thoughts about IP laws with my Congresspeople. If you are of the same mindset, I’ve added a link to the front page of this site called “Contact Your Congresspeople.” You should be able to use it to quickly find contact information for your personal Congresspeople, as well as membership lists for pertinent IP committees in Congress.
Don’t be shy about reaching out to your Congresspeople and inviting them to relevant meetings of the IP community. I’m sure they would welcome the opportunity to visit with members of their constituencies.
The Federal Circuit Judicial Conference is approaching. It is scheduled for September 7th, 2022 in Washington, D.C. Here’s the agenda:
2022 JUDICIAL CONFERENCE
Time
Description
Speakers
7:00 a.m.
Check-in Breakfast
8:30 a.m.
State of the Court and Welcome
Kimberly A. Moore, Chief Circuit Judge U.S. Court of Appeals for the Federal Circuit
8:45 a.m.
Federal Circuit Judges PanelMs. Maynard will moderate a panel discussion with the Judges of the Federal Circuit addressing observations from the bench about the best practices when advocating before that court and other matters of concern in the day-to-day handling of appeals in the Federal Circuit.
Moderator:Deanne E. Maynard, Partner Morrison Foerster LLPPanelists:The Judges of the Federal Circuit
10:15 a.m.
Networking Break
10:35 a.m.
Tribunal and Agency PanelJudge Taranto will moderate a discussion with judges and officials from tribunals within the Federal Circuit’s jurisdiction addressing trials, fact-finding, and decision-making in their respective tribunals.
Moderator:Richard G. Taranto, Circuit Judge U.S. Court of Appeals for the Federal CircuitPanelists:Margaret Bartley, Chief Judge U.S. Court of Appeals for Veterans ClaimsElaine D. Kaplan, Chief Judge U.S. Court of Federal ClaimsMark A. Barnett, Chief Judge U.S. Court of International ClaimsDavid S. Johanson, Chair U.S. International Trade CommissionCathy A. Harris, Acting Chair U.S. Merit Systems Protection BoardDerrick Brent, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director U.S. Patent and Trademark Office
Time
Description
Speakers
11:30 a.m.
Networking Break
12:15 p.m.
Luncheon
12:45 p.m.
Keynote Speaker
Elizabeth B. Prelogar Solicitor General of the United States
1:15 p.m.
American Inns of Court Professionalism Award
The American Inns of Court Professionalism Awards are awarded each year in participating federal courts to a lawyer or judge whose life and practice display sterling character and unquestioned integrity, coupled with ongoing dedication to the highest standards of the legal profession and the rule of law.
1:30 p.m.
Administrative Law Panel
Moderator:Paul D. Clement, Partner Clement & Murphy PLLCPanelists:Raymond T. Chen, Circuit Judge U.S. Court of Appeals for the Federal CircuitPatricia A. Millett, Circuit Judge District of Columbia Circuit Court of AppealsLisa Blatt, Partner Williams & Connolly LLPJeffrey A. Lamken, Partner MoloLamken LLP
2:45 p.m.
40th Anniversary: A Review of the Federal Circuit
Moderator:Timothy R. Holbrook, Vice Provost for Faculty Affairs and Asa Griggs Candler Professor of Law Emory University School of LawPanelists:Rochelle C. Dreyfuss, Pauline Newman Professor of Law; Co-Director, Engelberg Center on Innovation Law & Policy New York University School of LawScott M. McCaleb, Partner Wiley Rein LLPMark A. Robbins, Interim Executive Director U.S. Election Assistance CommissionMartin F. Hockey, Jr. Deputy Director U.S. Department of Justice Civil Division, Commercial Litigation BranchElizabeth J. Drake, Partner Schagrin Associates
I think the last panel looks interesting. SMU School of Law had a similar topic at its symposium last year, where it looked back at the Federal Circuit experiment. I thought this was an interesting discussion of whether the Federal Circuit is a “captured” specialized government body and whether inconsistent patent decisions stir the pot to give patent law and the Federal Circuit greater prominence and prestige:
One of the interesting aspects of the federal judiciary is that Article III judges sometimes sit by designation in courts other than their home court. From the Federal Circuit, Judge Dyk has sat by designation with the First Circuit on a regular basis. The Federal Circuit used to invite judges from other courts to sit by designation; but, it has not done so much recently. Quite frankly, that has been a good move. The court has its own challenges without having to deal with additional voices, who are likely less familiar with the vagaries of patent law. Plus, it avoids any uncomfortable conversations about the Federal Circuit’s patent eligibility jurisprudence.
You can see some of the First Circuit opinions that Judge Dyk has been a part of in recent years at this [Link]. In a cursory search, I did not come across any Rule 36 Judgments in this list.
Judge Cunningham was confirmed by the Senate more than a year ago. It is interesting how limited an opportunity she has been given by her colleagues to write any patent opinions. The court issues so many Rule 36 opinions that Judge Cunningham has only had a chance to author a handful of patent/trademark opinions herself. By my count, these are the only three patent/trademark “opinions” that she has authored — although this list includes some “orders” of the court relating to patent cases:
Judge Nina Wang was confirmed by the Senate last week as Colorado’s newest US District Court judge. Judge Wang has a good deal of patent law experience and has taught patent litigation and trial advocacy at the University of Colorado Law School. Here’s a link to an earlier post: [Link]. Here is an announcement: [Link].
It will be interesting to see if the US District Court for Colorado experiences an uptick in patent lawsuit filings.
We are finally starting to get some insight into the behind the scenes operation (meddling?) in the management of PTAB panels. The Government Accountability Office has released a report with respect to the operation of the PTAB. One of the important facts revealed by the report is that: “the majority of judges (75 percent) surveyed by GAO responded that the oversight practiced by U.S. Patent and Trademark Office (USPTO) directors and PTAB management has affected their independence, with nearly a quarter citing a large effect on independence.”
Also, “the majority of judges GAO surveyed reported they experienced pressure to adhere to management comments and to change or modify an aspect of their decision for an America Invents Act (AIA) trial on challenges to the validity of issued patents.”
The public always assumes that there is transparency in the operation of the PTAB. But, what do we really know about the machinery at work behind the scenes? PTAB judges must meet certain technical and legal requirements to serve as PTAB judges, with the assumption that they are the ones making decisions on a particular case. What do we know of the technical and legal CV’s of the behind-the-scenes people requesting changes in opinions?
One judge we spoke with described a situation where management expanded a panel to include members of PTAB executive management; however, the names of the management officials never appeared on the final decision, nor were the parties privy to the expansion.
Preliminary Observations on Oversight of Judicial Decisionmaking, Government Accountability Office, July 21, 2022 at page 21.
The US Solicitor General’s office has filed its brief in American Axle v. Neapco. The SG recommends that the Supreme Court grant certiorari in the case and asserts that the Federal Circuit was wrong in this decision.
You can listen to the oral argument at the Federal Circuit here:
You can review the Federal Circuit’s original opinion here: [Link].
You can review the Federal Circuit’s modified opinion here: [Link].
You can review then-district-court-judge Stark’s opinion here: [Link].
Update 5/30/22:
Some interesting quotes from Judge Moore’s dissents in the original opinion and the updated opinion:
The majority’s validity goulash is troubling and inconsistent with the patent statute and precedent. The majority worries about result-oriented claiming; I am worried about result-oriented judicial action. I dissent.
AMERICAN AXLE & MANUFACTURING v. NeapCo Holdings, 939 F.3d 1355 (Fed. Cir. 2019)(Judge Moore in dissent at 1375).
The majority concludes, though no party argued it at any point in this litigation or appeal, that the claim terms “positioning” and “inserting” have different meanings. And only because of its newly proffered, completely sua sponte construction, claim 22 is deemed ineligible. There is simply no justification for the majority’s application of its new Nothing More test other than result-oriented judicial activism. This is fundamentally unfair. I dissent from this unprecedented expansion of § 101.
AMERICAN AXLE & MANUFACTURING v. Neapco Holdings, 967 F.3d 1285 (Fed. Cir. 2020)(Judge Moore in dissent at 1305).
The quote for the day comes from Judge Newman’s dissent in In re Schreiber:
I feel for those who tread the arcane path of patent soliciting, for this court’s insistence on the importance of the limitations in the claims seems to have lost its way.
I posted previously that the Supreme Court was construing a “use” based statute in LeDure v. Union Pacific Railroad Company. The Court announced this week that the Justices split 4-4 on the decision with Justice Barrett taking no part in the decision.
The oral argument of the day is from the Federal Circuit’s decision in the design patent case In re Surgisil, 14 F.4th 1380 (Fed. Cir. 2021).
The Federal Circuit opinion is available here: [Link].
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If you were trying to recall the claim language in In re Schreiber (popcorn dispenser vs. oil can spout)– a utility patent case, rather than a design patent case — here is a link to that §102 anticipation case: [Link].
I ran across this article about the canons of claim construction. It is from back in 2005 and pre-Phillips; but, I thought it was pretty interesting. District court judges would probably enjoy it: [Link].