Archive for the ‘Oral Advocates’ Category

Janet Gongola Arguing at the Federal Circuit

Saturday, March 3rd, 2012

Janet Gongola is the Patent Reform Coordinator at the USPTO responsible for rolling out the new rules packages for the implementation of the AIA.  If you subscribe to Hal Wegner’s daily email listserv, you may have seen him refer to her affectionately as the “Rules Czarina.”  She was a former law clerk for retired Chief Judge Paul Michel and District Court Judge Sue Robinson.  In addition, she served as in-house counsel at Eli Lilly back in my hometown of Indianapolis.

Ms. Gongola was most recently with the solicitor’s office at the USPTO and has argued frequently at the Federal Circuit.  The oral argument in In re Kubin, 561 F.3d 1351 (Fed. Cir. 2009)  between Ms. Gongola and Barbara Rudolph was a particularly memorable and impressive one (by both advocates).  [Listen].

Immersion Corp. v. Sony

Wednesday, November 24th, 2010

I ran across an old oral argument from 2006 for Immersion Corp. v. Sony Computer Enterntainment America, Inc. et al., 2005-1358 (Fed. Cir. April 4, 2007).  The oral argument is interesting mainly because it features three heavyweights in the patent field: Don Dunner, Mark Lemley, and Morgan Chu. 

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

You can read the court’s opinion here: [Read].

Former US Solicitors General Arguing at the Federal Circuit

Monday, October 4th, 2010

I thought it was interesting that September featured opinions in Federal Circuit appeals that had been argued by two former US Solicitors General, Seth Waxman and Paul Clement. In addition, former US Solicitor General Ted Olson just recently filed a Petition for Writ of Certiorari on behalf of Microsoft in the I4I v. Microsoft case. That made me curious just how often former US Solicitors General get involved with patent cases, particularly how often they argue at the Federal Circuit.

It turns out the list is pretty slim. From what I could tell, only Seth Waxman, Ken Starr, and Paul Clement have argued cases in the last four years that the Federal Circuit has been recording oral arguments.

Here are links to those oral arguments if you want to take a listen:

Seth P. Waxman

Monsanto v. Scruggs (Fed.Cir. 2006) [Listen] [Read].

Tivo v. Echostar (Fed. Cir. 2008) [Listen Part I] [Listen Part II] [Read].

Depuy v. Medtronic (Fed. Cir. 2009) [Listen] [Read].

Tivo v. Echostar (Fed. Cir. 2010) [Listen] [Read (Now vacated)].

Medtronic v. Brainlab (Fed. Cir. 2010) [Listen] [Read].

Spine Solutions v. Medtronic (Fed. Cir. 2010) [Listen] [Read].


Kenneth W. Starr

Kyocera v. ITC (Fed. Cir. 2008) [Listen Part I] [Listen Part II] [Read].


Paul D. Clement

Romala Stone v. Home Depot (Fed. Cir. 2010) [Listen] [Read]

Sharon Barner Arguing at the Federal Circuit

Wednesday, September 1st, 2010

Prior to taking one of the top positions at the USPTO as Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO, Sharon Barner was in private practice in Chicago.  She has argued at least once before the United States Court of Appeals for the Federal Circuit. 

You can listen to her argument before the Federal Circuit in Automed Technologies v. Microfil, LLC, 2006-1620 (Fed. Cir. Jul. 16, 2007) here: [Listen].

You can read the court’s opinion in that case here: [Read].

Nominee Edward C. DuMont’s Oral Argument at the Federal Circuit

Tuesday, May 4th, 2010

Edward C. DuMont of WilmerHale is President Obama’s nominee to replace Chief Judge Michel.  I posted previously that I had not been able to find any cases where Mr. DuMont had argued before the Federal Circuit.  Well, I stumbled across one.  He argued on behalf of the intervenor in the recent oral argument for the en banc appeal  in Princo Corp. v. ITC on March 3, 2010.  The en banc opinion has not yet issued.

You can listen to Mr. DuMont’s argument before the en banc panel of the Federal Circuit here: [Listen].

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

Judge Daniel M. Friedman

Saturday, December 5th, 2009

The answer to the quiz in the previous post is: Judge Daniel M. Friedman.

At age 93, Judge Friedman still regularly takes part in Federal Circuit cases.  Almost his entire adult life has been in public service:

Born 1916 in New York City, NY

Columbia University, A.B., 1937

Columbia Law School, LL.B., 1940

Professional Career:
Private practice, New York City, 1940-1942
Attorney, Securities and Exchange Commission, Philadelphia, PA, and Washington, DC, 1942
U.S. Army, 1942-1946
Attorney, Securities and Exchange Commission, Philadelphia, PA , and Washington, DC, 1946-1951
Assistant chief, Appellate Section, Antitrust Divison, U.S. Department of Justice, Washington, DC, 1951-1959
Office of the U.S. Solicitor General, U.S. Department of Justice, Washington, DC, 1959-1978
Assistant to the U.S. solicitor general, 1959-1962
Second assistant to the U.S. solicitor general, 1962-1968
First deputy U.S. solicitor general, 1968-1978
Acting U.S. Solicitor General, 1977

Federal Judicial Service:
Judge, U. S. Court of Appeals for the Federal Circuit
Reassigned October 1, 1982; Assumed senior status on November 1, 1989.

Chief judge, U.S. Court of Claims, 1978-1982.

The biographies of the other judges of the Court of Appeals for the Federal Circuit can be found [Here] and [Here].

For some reason, the biographies of only two former judges (Judge Howard T. Markey and Judge Wilson Cowen) are included on the Federal Circuit web site.

Public Service

Tuesday, December 1st, 2009

I have the consolation of having added nothing to my private fortune during my public service, and of retiring with hands clean as they are empty.”    

–Thomas Jefferson

I am always struck by the impressive careers in public service by many of our judges. Unfortunately, as Chief Judge Michel noted in his retirement announcement the other day, the judges of the Federal Circuit have served while apparently not receiving a pay raise in the last twenty years.

One notable example of a distinguished career in public service is the Federal Circuit judge featured on the following recording. It is an oral argument from the 1970’s before the US Supreme Court. Can you name him? [Listen] Hint: Prior to being appointed to the bench, he was the acting Solicitor General of the United States.

Oral Advocate — Thomas W. Krause, Associate Solicitor

Wednesday, August 19th, 2009

I am always impressed when I listen to recordings of Tom Krause arguing before the Federal Circuit on behalf of the PTO.  He comes across as knowledgeable, fair, and articulate.  Most importantly, it does not appear that he is trying to pursue any hidden agenda.  Rather, he always seems to be trying to accurately apply existing case law to the facts at hand.

Mr. Krause recently argued the case of In re Siemens Water Technologies Holding Corp.  You can listen to the entire oral argument here: [Listen].  I think this case is particularly interesting for the way that Judge Clevenger probed for an explanation of  how the PTO goes about making the factual determination of combining references in a 103 rejection and whether an examiner should be entitled to such a high degree of deference in stating a prima facie case of unpatentability in matters of “common sense” and “design choice” [Listen].  

Most prosecutors will get a chuckle out of this exchange about the limits on the use of “design choice” by examiners: [Listen].

The Rule 36 opinion is available here: [Read].

Oral Advocate — Mark Lemley

Friday, August 7th, 2009

Many patent practitioners know of Stanford professor Mark Lemley for his voluminous body of work on patent law.  One rather infamous article was co-authored with now Federal Circuit Judge Kimberly Moore entitled “Ending Abuse of Continuation Applications” and advocated for a limit of one continuation application. [Read]

Regardless of whether you agree with Professor Lemley and Judge Moore on the fairness of such a limitation or find it somewhat divorced from the practical reality of patent prosecution before today’s USPTO, I think you will agree with me that he is an excellent oral advocate.  You can listen to his oral argument in Monsanto Co. v. McFarling  [Here].

Role reversal

Wednesday, July 29th, 2009

Judge Roderick McKelvie is one of the most highly-respected district court judges to have overseen patent cases.  He served as a U.S. District Court judge for the district of Delaware from 1992-2002.  Relatively recently, he returned to private practice with Covington and Burling, LLP in Washington, D.C. 

You can listen to Judge McKelvie argue before the Federal Circuit on behalf of the University of Pittsburgh here [Listen] in the recent case of  Univ. of Pittsburgh v. Varian Medical Systems, Inc.

Present Invention

Monday, July 13th, 2009

The case of Netcraft Corporation v. Ebay, Inc.  from December of 2008 is instructive to patent prosecutors who still use the term “present invention” in their patent drafting practice.  The defendant-appellees relied heavily on an argument that the claims of the patent at issue should be limited because of applicant’s use of the phrase “present invention.”  The plaintiff-appellant on the other hand argued that there was no general rule that use of the phrase “present invention” in the specification automatically limits the claims.

The defendant-appellee’s argument can be heard here: [Listen]

The plaintiff-appellant’s argument can be heard here  [Listen] and here [Listen].

The entire oral argument can be heard here: [Listen].

And, the Federal Circuit’s opinion can be found here: [ ] .

At the end of the day, the Federal Circuit did rely heavily on applicant’s use of present invention.  It stated:

Netcraft argues that there is no “general rule that any use of ‘the present invention’ in the specification automatically limits the claims, as Defendants seem to believe.” Appellant’s Reply Br. 22; see also id. at 19 (“Defendants contend that the case law supports the draconian result that any use of the phrase ‘present invention’ limits the claims to the embodiment described.”). We agree with Netcraft that use of the phrase “the present invention” does not “automatically” limit the meaning of claim terms in all circumstances, and that such language must be read in the context of the entire specification and prosecution history. See Rambus Inc. v. Infineon Techs. AG, 318 F.3d 1081, 1094 (Fed. Cir. 2003). For the reasons below, however, we agree with the district court that the common specification’s repeated use of the phrase “the present invention” describes the invention as a whole, see Claim Construction Order at *6, and, as will be discussed further below, that the prosecution history does not warrant a contrary result.

This oral argument might also be of interest to those familiar with the name Morgan Chu.  Mr. Chu has received accolades in years past as one of the top patent litigators in the country.  He argued for the defendant-appellee in this case.