The Solicitor General is often referred to as “The Tenth Justice.” I was looking to see if the Solicitor General’s Office had yet filed its requested brief in American Axle and came across this recent Senate confirmation hearing for Solicitor General nominee Elizabeth Prelogar. The introduction begins at the 4:00 minute mark; the questioning begins at the 2:17:20 minute mark.
I thought the discussion of parties that the Solicitor General’s Office consults with before determining its position on a matter, including “agencies with equities” in the matter, was interesting at the 2:36:18 minute mark.
The Federal Circuit announced that Judge Tiffany Cunningham was sworn-in on September 1, 2021. More details are available at this link: [Announcement].
Judge Cunningham’s bio is now on the court’s website at this link and reads:
TIFFANY P. CUNNINGHAM was appointed by President Joseph R. Biden in 2021 and assumed duties of her office on September 1, 2021. Prior to her appointment, she served as trial and appellate counsel for companies and individuals in complex patent and trade secret disputes. From 2014 to 2021, Judge Cunningham served as a partner at Perkins Coie LLP in Chicago, Illinois. She also was a member of the Executive Committee of Perkins Coie LLP from 2020 to 2021. She served as a partner at the Chicago office of Kirkland & Ellis LLP from 2007 to 2014 and as an associate at the same office from 2002 to 2007. During her time in private practice, she was recognized on The Best Lawyers in America, Super Lawyers, and Leading Lawyers lists. Judge Cunningham clerked from 2001 to 2002 for the Honorable Timothy B. Dyk, Circuit Judge of the United States Court of Appeals for the Federal Circuit.
Judge Cunningham received her S.B. in Chemical Engineering from the Massachusetts Institute of Technology in 1998, and her J.D. from Harvard Law School in 2001. She is a member of the Phi Beta Kappa and Tau Beta Pi honor societies.
One of the things I particularly like about the FedCircuitBlog is the page dedicated to en banc Federal Circuit cases. It makes it very easy to see what the Federal Circuit has been focusing its attention on. Apparently, over the past few years that focus of attention has been on veterans cases. You have to go all the way back to 2018 in Click-to-Call v. Ingenio to find a Federal Circuit en banc decision on patent law. The Federal Circuit granted en banc review in another veterans case just last month in Taylor v. McDonough — its fifth veterans en banc case since 2018.
I guess it makes sense, patent law is already very clear. đ
In AMERICAN AXLE & MANUFACTURING v. NEAPCO HOLDINGS, 966 F.3d 1347 (Fed. Cir. 2020), Judge Dyk wrote a concurring opinion in the denial of rehearing en banc. He notes that with respect to step one in the Alice inquiry there can be a factual issue.
âThe step-one âdirected toâ inquiry in this case, as in OâReilly, is what the claim says. As to that question, the panel does not suggest that there can never be a factual issue, but there is no such factual issue here.â
Judge Moore was on her game in the oral argument of WINDY CITY INNOVATIONS, LLC v. FACEBOOK, INC., No. 2020-1153 (Fed. Cir. Feb. 8, 2021). It was a LOL moment for me when I heard her make this wry comment:
She followed up with a little poke at Federal Circuit §101 precedent:
The oral argument of the day is from today’s opinion in In re Kirilichen. The Federal Circuit wrote:
We are unable to discern the agencyâs basis for reject- ing Appellantsâ teaching-away arguments (or whether the issue was addressed at all). The Director seems to suggest that the Board resolved this issue by finding âthat the claimed invention, Rothstein, and Lee all employ tapering.â Appelleeâs Br. 10; see Board Decision, 2020 WL 5231917, at *4 (reasoning that Appellantsâ arguments regarding the âtaperingâ of Leeâs components were unpersuasive because âRothstein[âs], Lee[âs], and Appellant[sâ] devices all rely on taperingâ). We disagree that the Board (or the examiner) sufficiently addressed Appellantsâ teaching-away argu- ments. First, the examinerâs findings with respect to Lee were limited to general preassembly by press fittingâthe examiner stated that âthe only teaching . . . gleaned from the disclosure of Lee is that it is known to be advantageous to press fittingly pre-assemble two components of a sealing insert.â J.A. 526 (emphasis in original). Second, the Boardâs decision makes no mention of teaching away, and the Boardâs generic statement that each of the three de- vices relies on tapering falls short of âsetting out [the Boardâs] reasoning in sufficient detail to permit meaningful appellate reviewâ of the teaching-away issue. See Power Integrations, Inc. v. Lee, 797 F.3d 1318, 1327 (Fed. Cir. 2015). And âwhether a reference teaches away from the claimed inventionâ is a âquestion[] of fact,â Meiresonne v. Google, Inc., 849 F.3d 1379, 1382 (Fed. Cir. 2017), that is not for us to decide in the first instance in this appeal, con- trary to the Directorâs suggestion that we do so, see Appel- leeâs Br. 16â18 (arguing for a finding that Lee âdoes not teach awayâ).
In re Kirilichen, 2021-1168 (Fed. Cir. July 20, 2021).
Here are a couple of interesting sound bites from the oral argument; Chief Judge Moore’s questions to the Appellant and to the Office, respectively, sum up the ultimate decision that the court rendered.
Now, after Arthrex, with the Director being responsible for decisions emanating from the PTAB, will the Solicitor’s Office be able to pick and choose which issues of a PTAB decision to defend at the Federal Circuit and which not to? Stated differently, must the Director now defend decisions of the PTAB lock, stock, and barrel? It would seem so.
USPTO to expand Law School Clinic Certification Program
Program accepting law school clinic submissions through December 31, 2022June 1, 2021
The United States Patent and Trademark Office (USPTO) is extending the submission deadline for expanding its Law School Clinic Certification Program by admitting additional schools into the program. Founded in 2008, the program currently includes 60 law school clinics and offers patent and trademark applicants access to pro bono services. It also gives law students, under the supervision of a faculty clinic supervisor, experience in practicing intellectual property law before the USPTO.
The program is administered by the USPTOâs Office of Enrollment and Discipline (OED). Participating law school clinics must maintain the requirements for USPTO certification in order for students to practice before the agency.
âThe USPTO is committed to fostering a strong and vital patent system,â said Drew Hirshfeld, performing the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO. âThe development of legal skills through practical experience allows advocates to effectively support and represent their clientsâ interests.â
Submissions from interested law school clinical programs will be accepted on a rolling basis through December 31, 2022. Details of the program expansion and application materials are available on the Law School Clinic Certification Program page of the USPTO website.
For additional information and application submission guidelines, please contact Jennifer Harchick, Emily Sprague, Gerard Taylor, Kim Weinreich, or Charlema Grant by telephone at (571) 272â4097 or lawschoolinformation@uspto.gov.
The JPTOS asked that I post this request for article submissions. Isn’t it about time for you to update your CV with a new published article?
The Journal of the Patent and Trademark Office Society (“JPTOS”), America’s premiere intellectual property law journal for over one hundred years, hereby announces an OPEN CALL FOR SUBMISSIONS by direct email to editor@jptos.org or on Scholastica (go to https://jptos.scholasticahq.com and to set up a Scholastica account go to http://scholasticahq.com). After taking a publishing hiatus due to the pandemic, we are back on track for publishing Volume 102 and onwards! Thus, we are calling all practitioners, judges, law professors, law students, economists, legal professionals, writers and anyone with interest in the fields of intellectual property, law and technology! We are seeking articles involving intellectual property (patents, trademarks, copyrights, trade secrets, or hybrids between all such forms) or law & technology (blockchain, cryptocurrencies, NFTs, artificial intelligence, 3D printing, social media, privacy/surveillance, biotechnology, pharmaceuticals, COVID vaccine patents or patent policy and topics) and all related fields. JPTOS is one of the oldest intellectual property journals in the United States and for over a century, we have been at the very forefront of the intellectual property debate and we will stay there ONLY with your contributions. Again, you may directly email your submissions to editor@jptos.org or contact that email address for any questions about the Journal. In addition, see the above Scholastica website or our official website at http://jptos.org for further details regarding submission guidelines, our staff and Board of Governors, contact information, subscriptions or ordering/accessing past issues. Looking forward to your submissions!
I stumbled upon this compendium of open source casebooks that I thought was pretty cool. The list includes open source casebooks on the subjects of: IP, Copyright, Patent, Trademark, Advertising, Music, Licensing, Internet, Artificial Intelligence, Telecommunications, National Security, IP & Administrative, and IP & Antitrust Law. Here’s the link: https://james.grimmelmann.net/files/casebooks .
Judge Evan Wallach of the Federal Circuit assumed senior status today. I always admire the judges who take senior status when it becomes available. They free up slots on the court for new judges while still making themselves available for significant participation on the court as senior judges. It is a selfless act that expands the ranks of the court.
Ronald Reagan once quipped that the nine most terrifying words in the English language are: “I’m from the government and I’m here to help.” I thought it was somewhat humorous that Judge Newman, who was appointed by Reagan, heard a similar sentiment from the Solicitor’s Office when the Solicitor’s Office intervened in the Biogen v. Iancu appeal.
And while we understand that “[t]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation,” we also recognize that we cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.
Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358 (Fed. Cir. 2017).
The oral argument of the day comes from Biogen v. Iancu. This case was decided in December 2020; but, it was argued in December of 2019. It took the Federal Circuit over twelve months to decide the appeal by a Rule 36 judgment. How strange. If a case qualifies for Rule 36, why would the panel take so long to dispatch the appeal? Usually, Rule 36 judgments issue within a few weeks of oral argument, at the longest. This one took over a year from the date of oral argument.
I took a look on PACER and there were no clues as to why the decision took a long time. The panel was comprised of Judge Newman, Judge Moore, and Judge Chen. I have some theories on why it could have taken a long time. One, perhaps the court was pondering taking the case en banc sua sponte. Two, perhaps there was a majority and a dissent and no strong opinion on either side. So, after protracted deliberation, the panel opted for a Rule 36. Three, perhaps Covid got in the way somehow.
There were two issues that might have prompted a sua sponte en banc review. First, Judge Newman has been vocal about the Director interloping into appeals of IPR’s when one of the parties drops out. [Link] Such was the case in this oral argument, where Judge Newman again challenged the presence of the Director at the oral argument.
Second, the PTAB invalidated the claims at issue based on a five reference combination — in the unpredictable art of treating cancer, no less. Judge Moore once again expressed some concern about a rejection that involved so many references.
Perhaps the court was considering this case as a potential vehicle for overruling or putting some gloss on In re Gorman (authored by Judge Pauline Newman). For previous times when Judge Moore and others have expressed concern about combining a smorgasbord of references, see this previous post [Link]. At the end of the day, perhaps this outcome was best. If the court is going to address obviousness rejections based on an excessive number of references, it seems best to tee up that issue after Judge Moore has become Chief Judge. At that point she will have seniority to author the opinion.
At any rate, the oral argument was very well done and merits being the oral argument of the day. You can listen to the entire oral argument here:
Query: Would the Federal Circuit be better served by appointing an amicus to defend the arguments of the party that drops out of an appeal of an IPR? It is somewhat confusing as to whether the Director is representing the Director’s position, the PTAB’s position, or the dropped-out party’s position when the Director intervenes in an appeal like this. Moreover, the government has previously argued that it can take a position opposite to what the PTAB decided and pick and choose which parts of the PTAB decision to defend at the CAFC. So, I think it can be confusing to the Federal Circuit judges who probably assume that the Director by default is defending all of the positions taken by the PTAB. Should the Federal Circuit adopt an operating procedure that requires the government to identify which portions of the PTAB decision (or arguments below of the dropped-out party) that the government does not endorse at the time of filing its brief? Seems unlikely to me that the government would feel comfortable endorsing all the positions that a dropped-out party took below.
The recent scrutiny of Judge Newman’s fitness to continue as an active judge on the Federal Circuit might shed some light on this protracted Rule 36 Judgment. These orders released by the CAFC suggest that Judge Newman took extended periods of time to author opinions and some authorship responsibilities were re-assigned as a result: March 24, 2023 Order and April 13, 2023 Order.