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The Senate Judiciary Committee has scheduled a hearing for Federal Circuit nominee Richard G. Taranto.  The hearing is scheduled for February 29, 2012 at 2:30 ET in Room 226 of the Dirksen Senate Office Building.  The member of the Senate Judiciary Committee presiding over the hearing will be . . . Al Franken. 

Mr. Taranto is a nominee for the only open seat on the Federal Circuit.

You can watch the hearing [here].

Usually Senator Grassley asks nominees what the Federal Circuit meant by the “irrefragable proof” standard in its 1999 decision Lachance v. White, 174 F.3d 1378 (1999).  Maybe he’ll switch it up this time and ask Mr. Taranto for a definition of an “abstract idea.”  Another good question might be whether Mr. Taranto believes that a judge has a duty to actually apply Research Corporation Technologies v. Microsoft, 627 F.3d 859 (2010), even if he/she doesn’t like it.

It is too bad that more applicants don’t appeal decisions by the BPAI and TTAB. Since 1997, the judges of the Federal Circuit have decided, on average, 50 such appeals per year. Roughly 11.8 percent of the appeals from the USPTO (i.e., BPAI and TTAB) that were decided by the Federal Circuit have been reversed. The above chart shows the yearly statistics. (Click on the chart for a higher quality image.)  As you can see, in recent years the reversal rate by the Federal Circuit has been above the historical average.  

It seems logical that the USPTO’s efforts to to reduce its backlog of patent appeals will result in more appeals being made to the Federal Circuit.  Whether such an increase in workload for the Federal Circuit will drive a need for an additional seat on the bench remains to be seen. 

The statistics are available on the Federal Circuit web site.

I could easily be wrong about this; but, it looks like the court will soon hear its first oral argument concerning Facebook.  The appeal is Leader Tech v. Facebook and the oral argument is scheduled for March 5th.

The appeal briefs are available here: [Appellant’s Brief], [Appellee’s Brief], and [Appellant’s Reply Brief].

I mentioned in an earlier post that I’m part of the planning committee for the AIPLA Electronic and Computer Patent Law Summit that is being held in San Diego on April 2, 2012.  The program is shaping up nicely and registration should be open soon.  I’ll post a registration link once it is available; but, in the meantime, here is a look at the schedule.  As you can see, we’ve got a great group of speakers lined up for you.  If you have never seen Ted Sichelman talk about his research on high tech startups and the patent system, I can recommend it highly.  Also, we’re fortunate to have the General Counsel of Qualcomm, Donald Rosenberg, as the luncheon speaker this year — so that should be quite interesting.  Actually, in my unbiased opinion, all the talks look interesting. So, hopefully we’ll see you in San Diego!

[Brochure]

[Link to Registration Page]

 Monday, April 2, 2012

University of San Diego School of Law

San Diego, CA

The AIPLA Electronic & Computer Patent Law Summit will be a fast-paced, multi-session seminar covering timely, advanced, and emerging issues including standards, strategic patent portfolio development, and patent litigation trends. Hear from leading practitioners on the latest changes in law and practice that most directly affect their law practices.

Who Should Attend?

•          In-House Counsel and Advanced Patent Practitioners in the electronic and computer fields

What You Will Learn:

•          Strategic decision making in the new first-to-file system

•          Patent practice and innovation in standards/open source

•          How the patent portfolio use and acquisition landscape is changing

•          Trends in distributed infringement

•          Plus, a keynote address from Donald Rosenberg, Executive Vice President and General Counsel of  Qualcomm

Registration information will be on the AIPLA website shortly.

CLE Credit

We are an approved provider by most states requiring CLE and have applied for credit for this meeting to all states requiring CLE. The number of credit hours will vary depending on the requirements of the individual state. For 50-minute states, up to 9.6 CLE credit hours are available. Certificates of Attendance, Attendance Sign-in Rosters and all other CLE information for various states will be available at the Registration Desk.

The 2012 AIPLA Electronics and Computer Patent Law Summit has been approved for Minimum Continuing Legal Education credit by the State Bar of California (a 60-minute state) in the amount of 8.0 credit hours. AIPLA certifies that this activity conforms to the standards for approved education activities prescribed by the rules and regulations of the State Bar of California governing minimum continuing legal education. CLE calculations are as follows:

•          420 minutes without lunch

In the recent oral argument of In re Collins, App. No. 2011-1293 (Fed. Cir. 2012), Judges Moore and Reyna took the PTO to task for a sloppy rejection of a claim.   An exasperated Judge Moore would remark “I think this is a terrible rejection.  I think you all [USPTO] have done a really sloppy job.  . . . This is ridiculous.  This is a bad rejection.  There’s a good rejection you could have made.  This isn’t it.”   [Listen] and [Listen].  I suspect that patent prosecutors everywhere who have had to explain sloppy rejections to their clients are thinking to themselves “Welcome to my world, Judges Moore and Reyna.”

Judge Moore would remark that she probably shouldn’t say that the PTO did a sloppy job and that she appreciates that the PTO is stressed and trying to incorporate new appellate judges.  However, my take is that if the PTO is not put on notice when it is doing a sloppy job, it can’t improve itself.  So, hats off to Judge Moore for calling it as she sees it.

The panel issued a Rule 36 opinion, presumably finding that the deferential standard that must be applied to Board decisions required an affirmance.

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

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

There will be a second public hearing for purposes of the study on Genetic Diagnostic Patents.  It is scheduled for San Diego in March.  The PTO has posted the schedule for pre-registered and unregistered comments:

Public Hearing on Genetic Diagnostic Testing

University of San Diego
5998 Alcalá Park San Diego, CA 92110-2492

Friday, March 9, 2012
9:00 a.m. – 4:00 p.m.

Agenda
WebEx Information Event number: 996 692 518 Event password: 123456 Event address for attendees: https://uspto-events.webex.com/uspto-events/onstage/g.php?d=996692518&t=a

Teleconference information
Call-in toll number (US/Canada): +1(408) 600 – 3600 Access code: 996 692 518

United States Patent and Trademark Office Panel
Teresa Stanek Rea, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office
Janet Gongola, Patent Reform Coordinator
Stuart Graham, Chief Economist
George Elliott, Technology Center Director (Biotechnology)

9:00 AM: Welcoming Remarks
Teresa Stanek Rea, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office
9:10 AM: Opening Commentary (Video)
Congresswoman Debbie Wasserman Schultz, U.S. House of Representatives
9:20 AM: General Commentary for Congressionally-Mandated Studies Under the AIA
Janet Gongola, Patent Reform Coordinator
9:25 AM: Overview of Genetic Diagnostic Testing Study
Stuart Graham, Chief Economist

9:35 AM: Scheduled Testimony
9:35 – 9:50 AM Mercedes Meyer, Member, Board of Directors, American Intellectual Property Law Association
9:50 – 10:05 AM Richard Marsh, Executive Vice President, General Counsel and Secretary, Myriad Genetics
10:05 – 10:25 AM Christopher Holman, Associate Professor of Law, University of Missouri-Kansas City School of Law
10:25 – 10:40 AM Carlos Candeloro, Patent Attorney (Biotechnology)
10:40 – 10:55 AM Break
10:55 – 12:00 PM Open Floor for Unscheduled Testimony
12:00 PM: Break for Lunch
1:30 PM: Open Floor for Unscheduled Testimony (continued)
Closing Remarks Janet Gongola, Patent Reform Coordinator

The PTO has posted the initial schedule for the first public hearing on genetic diagnostic testing patents.  Note that there is time allotted for those who did not pre-schedule their testimony, in case you missed the deadline.

Public Hearing on Genetic Diagnostic Testing

United States Patent and Trademark Office (USPTO)

600 Dulany Street, Alexandria VA

Madison Auditorium

Thursday, February 16, 2012

9:00 a.m. – 4:00 p.m.

Agenda

WebEx Information

Event number: 992 693 923 Event password: 123456 Event address for attendees: https://uspto-events.webex.com/uspto-events/onstage/g.php?d=992693923&t=a

Teleconference information

Call-in toll number (US/Canada): +1(408) 600 – 3600 Access code: 992 693 923

United States Patent and Trademark Office Panel

Teresa Stanek Rea, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office

Dana Robert Colarulli, Director, Office of Governmental Affairs

Janet Gongola, Patent Reform Coordinator

Stuart Graham, Chief Economist

George Elliott, Technology Center Director (Biotechnology)

9:00 AM: Welcoming Remarks

Teresa Stanek Rea, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office

9:10 AM: Opening Commentary (Video)

Congresswoman Debbie Wasserman Schultz, U.S. House of Representatives

9:20 AM: General Commentary for Congressionally-Mandated Studies Under the AIA

Janet Gongola, Patent Reform Coordinator

9:25 AM: Overview of Genetic Diagnostic Testing Study

Stuart Graham, Chief Economist

9:35 AM: Scheduled Testimony

12:05 PM: Break for Lunch

1:30 PM: Open Floor for Unscheduled Testimony

Closing Remarks      Janet Gongola, Patent Reform Coordinator

The oral argument in HTC Corp. v. IPCom, App. No. 2011-1004 (Fed. Cir. 2012) is an interesting oral argument that focuses on claim construction issues.  The case is also a good example of how the word “that” can be dangerous in drafting claims.

An exemplary claim at issue was claim 1:

A mobile station for use with a network including a first base station and a second base station that achieves a handover from the first base station to the second base station by:

storing link data for a link in a first base station, holding in reserve for the link resources of the first base station, and

when the link is to be handed over to the second base station:

initially maintaining a storage of the link data in the first base station,

initially causing the resources of the first base station to remain held in reserve, and

at a later timepoint determined by a fixed period of time predefined at a beginning of the handover, deleting the link data from the first base station and freeing up the resources of the first base station, the mobile station comprising:

an arrangement for reactivating the link with the first base station if the handover is unsuccessful.

The point of contention was whether the word “that” referred back to “mobile station” or referred back to “network.” 

For clarity, the court enumerated the claim elements as follows:

[1] A mobile station for use with a network including a first base station and a second base station that achieves a handover from the first base station to the second base station by:

[2] storing link data for a link in a first base station,

[3] holding in reserve for the link resources of the first base station, and

[4] when the link is to be handed over to the second base station:

[5] initially maintaining a storage of the link data in the first base station,

[6] initially causing the resources of the first base station to remain held in reserve, and

[7] at a later timepoint . . . deleting the link data from the first base station and freeing up the resources of the first base station, the mobile station comprising:

[8] an arrangement for reactivating the link with the first base station if the handover is unsuccessful.

The court concluded that the word “that” referred back to the word network and that the six functions in paragraphs 2-7 merely define the environment in which the mobile station operates.  

I’m left wondering if the patent owner won the battle but lost the war.  It strikes me that the claim now boils down to:

A mobile station … comprising:

an arrangement for reactivating the link with the first base station if the handover is unsuccessful.

As you can see, the newly construed claim is a single means plus function claim.  (And, if you had any doubt, the opinion notes that the parties agreed that the claim element is a means plus function element.)  Section 112, paragraph 6 permits combination claims to use means plus function language; but, the court recognized in In re Hyatt, 708 F.2d 712 (Fed. Cir. 1983)  that single means claims are invalid under section 112, paragraph 6.

You can listen to the oral argument [here].

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

With the flurry of activity surrounding the implementation of the AIA, it is easy to miss some of the announcements about public hearings and the opportunity for public comment.  One of my biotech colleagues pointed out to me that TODAY is the deadline to register to present oral testimony concerning the PTO’s required study of genetic diagnostic testing.

To register to present oral testimony at either the hearing in Washington, D.C. on February 16, 2012 or in San Diego on March 9, 2012, my understanding is that one should email the following information to Saurabh Vishnubhakat at saurabh.vishnubhakat@uspto.gov: (1) The name of the person wishing to testify; (2) the person’s contact information (telephone number and email address); (3) the organization(s) the person represents, if any; (4) an indication of the amount of time needed for the testimony; and (5) a preliminary written copy of the testimony. The PTO noted that the public hearings would be made available via a webcast.

For more information on the hearings and the PTO press release see this link on the PatentDocs blog.

Judge Wallach Being Sworn In Back in November

Judge Fogel

The Federal Circuit’s newest member, Circuit Judge Evan Wallach, took part in his first oral argument as a judge on the United States Court of Appeals for the Federal Circuit today.  Chief Judge Rader was the presiding judge on the panel and welcomed Judge Wallach.  Judge Jeremy Fogel of the Northern District of California and the new Director of the Federal Judicial Center is sitting by designation with the Federal Circuit this month; and, Chief Judge Rader offered kind remarks towards Judge Fogel, as well: [Listen].

My understanding is that Judge Wallach did not take part in the en banc oral arguments of Akamai v. Limelight and McKesson v. Epic  which were argued shortly after his swearing-in in November — however, he is entitled to serve on the en banc panels that will decide those cases.  Decisions in those cases are forthcoming.

The Honorable David Kappos is testifying before the House Subcommittee on the Judiciary today in a hearing titled “Prior User Rights: Strengthening U.S. Manufacturing and Innovation.”  Other notable witnesses testifying are Bob Armitage (General Counsel of Eli Lilly and Co.), Dennis Crouch (needs no introduction), Dan Lang (Vice President for Intellectual Property at Cisco Systems), and Dr. John C. Long (Vice President of Assoc. of American Universities).

You can watch the hearing [here].

You can view the speakers’ written statements at this [link] by selecting each speaker’s name.

Interesting to note that the Federal Circuit recently granted en banc review of an intervening rights case but without supplemental briefing by the parties or oral argument.  Amicus briefs are allowed and due by February 10th.  So, to the extent any relevant issues are raised by these hearings, they will have to be brought to the attention of the court by the amici rather than the parties.