Archive for March, 2012

Associate Solicitor Encourages Federal Circuit to Apply Boilerplate from Specification

Saturday, March 31st, 2012

In the oral argument of In re LG Electronics, Inc., App. No. 2011-1248 (Fed. Cir. 2012), the Associate Solicitor for the USPTO argued that a purportedly limiting statement in the specification of the Applicant’s patent under reexamination should not be considered a clear disavowal.  One argument that the Associate Solicitor relied upon was that there could be no clear disavowal when the boilerplate of the same specification called for the claims not to be limited by the disclosed embodiments.

In what sounded like a tongue-in-cheek comment to me, Judge Newman remarked:

Well, that’s very interesting.  We’ve seen that identical boilerplate in probably six or seven million patents.  And, now you’re telling us that for the first time we should … apply it. 

You can listen to Judge Newman’s remark here:  [Listen].

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

You can review the Rule 36 opinion here: [Read].

Richard Taranto Nomination Proceeds to Full Senate

Friday, March 30th, 2012

The Senate Judiciary Committee held a voice vote on Thursday on the nomination of Federal Circuit nominee Richard Taranto.  By voice vote, Mr. Taranto’s nomination was approved by the committee and will now proceed to the full Senate. 

There was one “No” vote recorded on Mr. Taranto’s nomination by Senator Lee of Utah.  As this article [Link] on the Blog of Legal Times explains, however, that “No” vote probably had more to do with recent recess appointments than Mr. Taranto’s qualifications.  The article notes that Senator Lee plans to vote “No” on all of President Obama’s judicial nominees until the White House rescinds its recent recess appointments made during a two day legislative break in January.

Vote on Richard Taranto Held Over

Sunday, March 25th, 2012

The nomination of Richard Taranto to the Federal Circuit as well as the nominations of other judges were on the schedule of the Senate Judiciary Committee for March 22nd, 2012; but, discussion of those nominations had to be held over for a later date when not enough senators showed up for the meeting.  Senator Leahy characterized the lack of attendance by Republican senators as a boycott.  Ranking member Grassley was in attendance and stated that there was no reason that he knew of for a boycott and objected to characterizing the lack of attendance as a boycott.

There is some sense that judicial nominations are growing as a political issue in this election year.  So, it will be interesting to see how Mr. Taranto’s nomination is affected in the upcoming months.

Results of Executive Business Meeting – March 22, 2012
The Senate Judiciary Committee held an executive business meeting to consider pending nominations and legislation on March 22, 2012.


I. Nominations

Richard Gary Taranto, to be United States Circuit Judge for the Federal Circuit
Held Over

Robin S. Rosenbaum, to be United States District Judge for the Southern District of Florida
Held Over

Gershwin A. Drain, to be United States District Judge for the Eastern District of Michigan
Held Over

Gregory Keith Davis, to be United States Attorney for the Southern District of Mississippi
Held Over




II. Bills

S.2159, A bill to extend the authorization of the Drug-Free Communities Support Program through fiscal year 2017 (Leahy, Grassley, Feinstein)
Held Over

Super-skill vs. Ordinary Skill

Sunday, March 25th, 2012

The oral argument in In re  Ammar Al Ali, App. No. 2011-1086 (Fed. Cir. 2012)  had a couple of interesting sound bites that I thought might be of interest. 

In this first sound bite, Chief Judge Rader inquires how one of ordinary skill in the art would be aware of the cited art — which sounded as though it was all unpublished patent applications filed around the same time at the Patent Office by third party inventors. [Listen].

In this second sound bite, Chief Judge Rader and the Associate Solicitor for the PTO disagree over whether the viewpoint of a third-party inventor in a prior application should be treated as the viewpoint of one of “super-skill” in the art and not as the viewpoint of one of “ordinary skill” in the art.  [Listen].

The court issued a Rule 36 Affirmance of the PTO’s rejection of the claim(s) at issue.

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

Oral Argument Mayo v. Prometheus

Wednesday, March 21st, 2012

Now that the Mayo Collaborative Services, et al. v. Prometheus Laboratories, Inc., 566 U.S. ___ (2012) decision has issued, some folks might once again be interested in the oral argument.  The oral argument is available on the OYEZ site [here].

Richard Taranto’s Responses to the Senate Judiciary Committee’s Questions for the Record

Friday, March 16th, 2012

The Senate Judiciary Committee has now posted on its website Federal Circuit nominee Richard G. Taranto’s answers to the committee’s written questions.  Once again the committee asked no specific questions on patent law or intellectual property.

The last question and answer were interesting from the perspective of the AIA.  As features such as First to File and Post Grant Review go into effect, one can imagine that there will be attempts to draw parallels to the laws of foreign nations.  The last question and answer read as follows, respectively:

Question:  Do you believe foreign nations have ideas and solutions to legal problems that could contribute to the proper interpretation of our laws?

AnswerThe proper interpretation of our laws is that which gives effect to the ideas and solutions that our lawmakers enacted, not any ideas foreign nations have. Beyond that fundamental principle, there also are vital practical reasons for courts, in interpreting our laws, to resist looking at foreign ideas and solutions: inviting such inquiries can multiply costs, produce unreliable and inaccurate pictures of foreign systems that are not easily understood by outsiders, and harmfully divert attention from arrival at the proper domestic result, which is already a difficult enough task.

You can read all the questions and answers here: [Read].

Judge Linn Wonders Aloud about the Legitimacy of “mere design choice” Rejections

Thursday, March 15th, 2012

In the oral argument of In re Printless Previews, App. No. 2011-1273 (Fed. Cir. 2012), there was an interesting sound bite when Judge Linn wondered aloud about the propriety of examiners rejecting claims by saying a missing element was merely a matter of design choice:

I can remember way back when when I was an examiner, some of the toughest problems we faced were when we went out, we did comprehensive searches, and we found references that covered every element of the claim except one little thing.  And, it was common practice back then, and I think you’re justifying the practice, that the examiners very frequently would say ‘Well the claim is rejected A in view of B and C — with respect to the last element, that’s a matter of mere design  choice of no patentable consequence.’  It was a nice phrase. It had a nice ring to it. But I often wondered whether that was legitimate or not.


You know from your own experience whether this practice has changed since Judge Linn’s days as an examiner.

This case had a Rule 36 judgment.  But, you can listen to the entire oral argument here:  [Listen].

Oral Argument on Tribal Land?

Tuesday, March 13th, 2012


The Federal Circuit will be coming to Colorado this fall to hear oral arguments as part of its mandate to periodically sit somewhere outside of Washington, D.C.  A small percentage of the cases on the Federal Circuit’s docket each year are cases concerning federal claims by indian tribes.  I’m intrigued with the idea that the Federal Circuit could conduct one of its sessions on tribal land.  After 30 years of visiting constituencies in various states, it seems justifiable that at least one session of the court be held on tribal land.  I’m not sure what kind of a turnout that session would get; but, I think it would be an historical opportunity for the court.  (I don’t know whether any other federal court of appeals has ever heard oral argument on indian lands.)  My understanding is that tribal lands are held in trust by the U.S. government on behalf of the respective indian tribes.

The Federal Circuit Bar Association’s website has a committee focused on Federal Indian Law.  The blurb on their page states:

Federal Indian Law is an important component in the origin, history and specific jurisdiction of the U.S. Court of Appeals for the Federal Circuit, and remains an important practice area in the Court, today. The U.S. Court of Appeals for the Federal Circuit has helped shape Federal Indian Law in many landmark or significant cases. In addition, the year 2006 marks the 60th year anniversary of the establishment of the Indian Claims Commission which, 30 years later, was abolished. Many remaining cases devolved to the docket of the United States Court of Federal Claims and were reviewed by the Federal Circuit. Among its goals, this Committee seeks collaboration with the Federal Circuit Historical Society, as well as other interested Committees, in examining the impact of the Indian Claims Commission and its ultimate assimilation into the Court of Claims. The opportunity to develop a special edition of the Federal Circuit Bar Journal on this topic is also a possibility as part of the activity surrounding this anniversary.

One good venue for holding oral arguments would be the Southern Ute Indian Reservation down in the southwestern part of the state where Colorado, New Mexico, Arizona, and Utah border one another.  As you can see from the map below, that site is proximate a large area of different tribal lands (e.g., Ute Mountain Tribe, Southern Ute Tribe, Navajo Nation, and Jicarilla Apache).  And, it is recognized for having a nice facility for holding oral argument. (Click on the map for a higher quality view.)



Videos of Appellate Arguments

Monday, March 12th, 2012

The regionals for the Giles S. Rich moot court competition will take place this coming weekend in Houston, Boston, Chicago, and Silicon Valley.  If you are a student competing in the competition, you might want to watch some actual oral arguments before competing.  The Ninth Circuit has posted videos of recent oral arguments to its web site.  You can access them here:  [Link].

Two of the nation’s more famous advocates appear in the following appellate arguments: [Ted Olson in Perry v. Hollingsworth] and [David Boies in Perry v. Brown].  Also, the Facebook v. Connectu oral argument featured Joshua Rosenkranz who has argued frequently before the Federal Circuit [Video].

Dyk v. Taranto, Dewsnup v. Timm

Friday, March 9th, 2012

It is interesting to note that while in private practice Federal Circuit Judge Timothy Dyk and Federal Circuit nominee Richard Taranto faced off at the Supreme Court in the case of Dewsnup v. Timm.  The case concerned the bankruptcy code.  Mr. Taranto’s client prevailed in that 1992 case.

You can listen to the oral argument of Dewsnup v. Timm at the Oyez site:  [Listen].

You can read the opinion [here].

You could be here . . .

Tuesday, March 6th, 2012

San Diego

You could be in San Diego on April 2nd, if you sign up to attend the 2012 AIPLA Electronic and Computer Patent Law Summit being held at the University of San Diego College of Law.  [Download Brochure].

Vacancy effects?

Sunday, March 4th, 2012

The recent vacancies on the Federal Circuit might be having an effect on the court’s ability to issue opinions with the same speed as in the past.  This past week the court issued its opinion in General Electric v. ITC, App. No. 2010-1223 (Fed. Cir. 2012).  The oral argument in the case was held on February 10, 2011 and the decision issued on February 29, 2012.  So, it took more than a year for the opinion to issue — without any dissenting or concurring opinion.

One interesting sound bite from the oral argument in General Electric v. ITC was the exchange betweeen Judges Rader and Linn and counsel for the ITC, James Worth, with respect to how much time should be allotted to the ITC in oral argument for this case and other cases of its nature:  [Listen].

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].

Richard Taranto Nomination Hearing

Thursday, March 1st, 2012

The Senate Judiciary Committee yesterday conducted the nomination hearing for Federal Circuit nominee Richard Taranto.  The hearing was a little bit more like the hearings we are used to seeing for Supreme Court Justice nominees in the sense that many of the questions focused on judicial philosophy. 

It appeared that the hearing was only attended by three senators — Senator Franken (Minnesota), Senator Grassley (Iowa), and Senator Lee (Utah).  Questions were asked by all three senators.  Senator Franken asked Mr. Taranto about his clerking for Justice Sandra Day O’Connor.  Senator Grassley asked Mr. Taranto about the Defense of Marriage Act.  Senator Lee questioned Mr. Taranto about judicial philosophy.  No material, if any, questions were asked about patent law.

The webcast is still available at this link:  [Link].  The hearing begins at the 31:30 mark.  I would commend for your viewing the section at 52:15-59:30 as the most interesting portion.

One interesting note is that Mr. Taranto comments that both his grandmothers are over 100 years old and still living.  So, if Mr. Taranto follows in their footsteps, he could end up making an impact on the Federal Circuit for a very long time, just as Judges Rich, Friedman, and others have done.