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This post is a little bit off-subject; but, I thought I would mention it anyway since I think it would be of interest to patent attorneys.  Malcolm Gladwell is an interesting author who writes for the New Yorker and has had some very successful books in recent years, such as Blink, The Tipping Point, and Outliers.  He often writes about innovation.  In looking at his web site on Friday, I noticed that he had written an article for the New Yorker back in May of 2008 about Nathan Myhrvold of Intellectual Ventures.  You can find this article [Link] and other articles on his website at www.gladwell.com .

I also noticed that Mr. Gladwell’s site says that he is available as a guest speaker.  For those planning future AIPLA, ACPC, ABA, etc. meetings, he might make for an interesting speaker.

Many times arguments that are made during oral argument do not get any mention in the decisions of the Federal Circuit.  As a result, they can fly under the radar of the patent bar for quite some time until the argument is ultimately repeated and mentioned by the Federal Circuit in an opinion or even relied upon.  

In listening to the recording of the oral argument In Univ. of Pittsburgh of the Commonwealth System of Higher Ed. v. Hedrick, there was one such argument that caught my attention.  Appellant argued that perhaps the strongest evidence in a dispute over inventorship was the fact that the inventors of two provisional applications had included method claims in the two provisional applications but had not included any claims directed to a composition of matter.   The appellant argued that due to the omission of such claims in the two provisional applications that the inventors listed on the provisionals were admitting that they were not inventors of such a composition of matter as of the filing date of the provisionals. [Listen]

I think such an argument would be alarming to most patent prosecutors.  There is very little case law concerning the effect of provisional applications.  It’s been my experience that most practitioners write at least one claim in a provisional application but do not write complete claim sets.  In fact, many would argue that no claim is required for a provisional  that will serve as the priority document for a US non-provisional application. (Although, it seems prudent to include at least one claim — especially for future foreign filing purposes.)  So, to hear someone argue that one must essentially  include a full claim set in a provisional application is disconcerting.  As noted above, the Federal Circuit panel did not address the argument in its decision.

Roughly half of the federal courts of appeal make their recordings of oral arguments available for download:

1^st Circuit – Yes

2^nd Circuit – No

3^rd Circuit – Yes

4^th Circuit – No

5^th Circuit – Yes

6^th Circuit – No

7^th Circuit – Yes

8^th Circuit – Yes

9^th Circuit – Yes

10^th Circuit – No

11^th Circuit – No

D.C. Circuit – No (can listen real-time though)

Federal Circuit – Yes

As indicated above, the D.C. Circuit even allows for listening in real-time although it doesn’t  make the recordings available for download:[Link].

The Houston Intellectual Property Law Association web site reports that the CAFC will be visiting Houston in November 2009 to hear oral arguments.  [Read]  The visit is slated for November 3rd and 4th along with a seminar on one of those days.  HIPLA is a very active bar association and a great model for bar associations in other cities.

The Federal Circuit has also been invited to sit at the University of Colorado this year.  However, there has not yet been any indication as to whether that invitation has been accepted.

The number of appeals being filed at the BPAI level has increased significantly in recent years.  In 2005, roughly 3000 appeals were filed.  In 2008, that number had doubled to roughly 6000.  See http://www.patentlyo.com/patent/2009/01/bpai-appeal-sta.html.  Moreover, the rate of reversal has apparently dropped from a 40% reversal rate in 2005 to a 20% reversal rate in 2009.  Again, see http://www.patentlyo.com/patent/2009/01/bpai-appeal-sta.html.  Obviously, one can expect that a greater number of appeals from the BPAI will now be making their way to the CAFC.

One important practice tip that might be of interest to some readers is that requesting oral argument at the board level can provide a possible procedural advantage.  Former Administrative Patent Judge William F. Smith of Woodcock Washburn in Atlanta has noted in some AIPLA presentations that the merits panel of a case being orally argued will generally convene a pre-hearing conference where all Board members on the merits panel will meet to review the issues to be argued.  In contrast, a case presented solely on the briefs  is in most cases initially considered by one member of the merits panel and then conferenced with a second member of the merits panel.  If the first two members agree on the disposition of all the issues in the appeal, the draft opinion is drafted reflecting the conference decision.  Thus, the third member of the merits panel will see the decision for the first time when it is circulating and already has two signatures.  Therefore, it behooves an appellant to request oral argument because the appeal initially receives the consideration and insight of all three ALJ’s about the merits of the case rather than just two.

It has been reported in recent months that the Board is now requiring ALJ’s to provide a justification as to why they need to write a dissenting opinion before receiving credit for it.  See http://www.patentlyo.com/patent/2009/05/bpai-shuts-down-dissent-in-favor-of-efficiency.html  Thus, there is now even less incentive for an ALJ to draft a dissenting opinion that might be enlightening when the case is appealed to the Federal Circuit.

The In re Volkswagen case is an important case recently decided en banc by the United States Court of Appeals for the Fifth Circuit.  Essentially, this case gives some guidance to the federal judges in the Eastern District of Texas (as well as the other districts of the Fifth Circuit) as to when it is proper to transfer a case to another district court.   The case concerned a lawsuit that was initially before Judge Ward of the Eastern District of Texas.  Judge Ward is well-known among patent litigators as one of the judges in the Eastern District of Texas who enjoys hearing patent cases.    He is also one of the reasons that the Eastern District of Texas has seen so many patent cases filed there in recent years.  And, he recently sat by designation at the United States Court of Appeals for the Federal Circuit. 

During oral argument, the Chief Judge of the Fifth Circuit did comment about Judge Ward’s consistency in assessing the impact of travel time to the “deep heart of East Texas.” [Listen]

The full oral argument can be heard here: [Listen]  One interesting thing to take note of  when listening to this oral argument at the Fifth Circuit is that counsel is entitled to reserve time to make uninterrupted remarks.  After that time period, the judges may ask their questions.  This custom does not appear to be followed by the Federal Circuit where judges can begin asking their questions right out of the gate.