Archive for October, 2021

Who are the PTAB judges?

Saturday, October 30th, 2021

I was looking for a recording on YOUTUBE of yesterday’s symposium on patent law by the SMU Dedman School of Law and instead ran across this previous symposium session about the PTAB:

One of the interesting tidbits from the video is when Professor Semet shares some of her research about the backgrounds of the PTAB judges. You can see her discussion beginning about the 23 minute mark of the video.

Through a FOIA request and follow-on research she has reviewed the backgrounds of about one half of the PTAB judges and determined the following statistics:

38% are female;

23% were former examiners;

13% were formerly PTAB lawyers or from the USPTO Solicitor’s Office;

19% were former Federal Circuit clerks;

85% have private practice experience;

40% are engineers/scientists;

48 is the median age;

29% attended D.C. area law schools;

74% did not attend T14 law schools.

Here’s a link to an earlier video where Professor Semet discusses the research (beginning about the 10 minute mark) [Link].

I’m surprised by the “40% are engineers/scientists” number. That’s all? Perhaps that statistic is actual work experience as an engineer/scientist, rather than just degree earned.

Patent Law Symposium

Tuesday, October 26th, 2021

There is an interesting virtual symposium scheduled for this Friday. It is being hosted by SMU Dedman School of Law, the FedCircuit Blog, and the Tsai Center for Law, Science, and Innovation.

The three topics look really interesting.

Panel I: The Rise of the Western District of Texas: Forum Selling and Forum Shopping in Patent Trial Courts; Or, the Failure of T.C. Heartland

Panel II: Arthrex, the PTAB, and the USPTO Director’s New (Temporary?) Authority over Patent Opposition Proceedings 

Panel III: The Federal Circuit: Is Its Exclusive Jurisdiction Still Needed Given the Supreme Court’s Renewed Interest in Resolving Disputes over Patent Law?

More details and registration information are available at this [LINK].

I thought the third panel looked particularly intriguing. That panel is focused on the impact of the Supreme Court in patent law and whether there is a continuing necessity for the Federal Circuit. It would seem that there are some other factors at play, as well, when it comes to whether there is a continuing necessity for the Federal Circuit. For example, given the Federal Circuit’s ineptitude in framing a workable rule for §101 that fosters innovation in today’s information economy, is the CAFC really serving the purpose it was designed for? The Federal Circuit hasn’t voted to take a patent case en banc in over three years — again, is it really serving the purpose it was designed for? The Federal Circuit has to rely heavily on Rule 36 Judgments to dispose of its docket of cases. Would it be better to distribute that workload of cases across the other circuits so that the case law could be developed with more written opinions? (I’m just being a gadfly with these questions; but, I do see them as significant failures by the court in recent years.)

Oral Argument of the Day: Tyler Research Corp v. ENVACON, Inc.

Monday, October 25th, 2021

The oral argument of the day is from the CAFC oral argument in TYLER RESEARCH CORPORATION v. ENVACON, INC., No. 2020-2081 (Fed. Cir. Apr. 7, 2021). I enjoyed listening to this oral argument recording because it dealt with forum non conveniens issues. It brought back memories of first year civil procedure class.

You can listen to the oral argument here:

The Rule 36 Judgment is available here: [Link].

Judge Dyk provided a historical overview of forum non conveniens in

Halo Creative & Design Ltd. v. COMPTOIR DES INDES, 816 F.3d 1366 (Fed. Cir. 2016).

Oral Argument of the Day: SmithKline Beecham Corp. v. Apotex Corp. (Jan. 2004)

Tuesday, October 19th, 2021

The Federal Circuit updated its web site the other day. The new oral argument list shows that one of the first oral arguments that was made available to the public by the Federal Circuit web site is from SmithKline Beecham Corp. v. Apotex Corp., 365 F.3d 1306 (Fed. Cir. 2004).

I thought this might be an interesting “Oral Argument of the Day” for several reasons. First, it was one of the last oral arguments made by Ford Farabow of Finnegan Henderson Farabow Garrett and Dunner at the Federal Circuit. Second, Judge Rader (retired) was the presiding judge and he always held lively oral arguments. This is no exception. Third, it was an appeal from a Northern District of Illinois trial where it appears that Judge Posner of the Seventh Circuit sat by designation. Fourth, the claim recited only four words with no preamble: “Crystalline paroxetine hydrochloride hemihydrate.” 

I’m not sure why this oral argument was recorded in January of 2004. Perhaps the Federal Circuit was experimenting with recording oral arguments at that time. During 2006, the Federal Circuit began a regular practice of recording oral arguments.

The opinion for the court is available here: [Link].

One interesting sound bite by Judge Rader, commenting on the district court’s claim construction as being policy driven, is available here:

The recording of the entire oral argument is available here:

The patent is available here: [Link].

Quotes for the day

Monday, October 18th, 2021

C.    Review the Claims

The claims define the property rights provided by a patent, and thus require careful scrutiny. The goal of claim analysis is to identify the boundaries of the protection sought by the applicant and to understand how the claims relate to and define what the applicant has indicated is the invention. Examiners must first determine the scope of a claim by thoroughly analyzing the language of the claim before determining if the claim complies with each statutory requirement for patentability. See In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998) (“[T]he name of the game is the claim.”).

MPEP Section 2103 (I)(C).

Finally, when evaluating the scope of a claim, every limitation in the claim must be considered. Examiners may not dissect a claimed invention into discrete elements and then evaluate the elements in isolation. Instead, the claim as a whole must be considered. See, e.g., Diamond v. Diehr, 450 U.S. 175, 188-89, 209 USPQ 1, 9 (1981) (“In determining the eligibility of respondents’ claimed process for patent protection under § 101, their claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made.”).

MPEP Section 2103(I)(C).

Query: Would analogous paragraphs be helpful footnotes for the Federal Circuit’s internal operating procedures?

Decision maker bias

Wednesday, October 13th, 2021

In today’s split-decision in Mobility Workx v. Unified Patents, LLC, I thought the majority decision and the dissent were interesting for their discussion of previous cases and scholarly work describing where there is a potential for decision maker bias to occur. In a cursory review of the decision, I did not see any discussion of the Federal Circuit’s decision in Eolas Technologies, Inc. v. Microsoft Corp., 457 F.3d 1279 (Fed. Cir. 2006). In that case, the Federal Circuit discussed the Seventh Circuit’s practice of reassigning cases to a new district court judge upon remand for retrial from the Seventh Circuit or from the Federal Circuit.

The Seventh Circuit appears unique among the circuit courts of appeals because it sets forth its law on judicial reassignment in the form of a rule. Thus, contrary to Eolas’ arguments, Circuit Rule 36 is not merely an internal glossary for construing silence in Seventh Circuit opinions as a direction to reassign a case on remand. Rather, the Seventh Circuit rule makes reassignment the norm, unless our sister circuit alters the default rule with an express assignment back to the same judge. “The purpose of Rule 36 is to avoid, on retrial after reversal, any bias or mindset the judge may have developed during the first trial.” Cange v. Stotler and Co., 913 F.2d 1204 (7th Cir.1990) (emphases added). Because the operation of Rule 36 avoids “any bias or mindset” that “may have developed,” the law of the Seventh Circuit differs from that of other circuits. See, e.g., Procter & Gamble Co. v. Haugen, 427 F.3d 727, 744 (10th Cir.2005) (“[W]e will remand with instructions for assignment of a different judge only when there is proof of personal bias or under extreme circumstances.”) (internal quotes and citation omitted); Glen Holly Entm’t v. Tektronix Inc., 343 F.3d 1000, 1017-18 (9th Cir.2003) (explaining that reassignment considerations include “whether the district court judge would have substantial difficulty in putting out of his or her mind previously expressed views”); United States v. Microsoft Corp., 56 F.3d 1448, 1463 (D.C.Cir.1995) (explaining that reassignment does not require a finding of actual bias or prejudice, “but only that the facts might reasonably cause an objective observer to question the judge’s impartiality”) (internal quotes and citation omitted).

Eolas Technologies, Inc. v. Microsoft Corp., 457 F.3d 1279, 1283 (Fed. Cir. 2006).

You can read that Federal Circuit opinion [here]. I think it is interesting to note the steps that are taken to avoid the appearance of bias even at a level as high as the district court level.


Tuesday, October 12th, 2021

I’m always interested to see the word “each” come up in claim construction or infringement cases. The Federal Circuit’s decision in Traxcell Technologies, LLC v. Nokia Solutions and Networks OY et al., 2020, 1440, 2020-1443 (Fed. Cir. Oct. 12, 2021) addressed the word “each” again. This time around the court appears to treat the word “each” as merely superfluous and thus providing no distinguishing effect in a doctrine of claim differentiation analysis. That is to say, the court concluded that the various claims all say the same thing, just differently phrased — not to be confused with the various claims saying different things, just differently phrased.

Judge Prost writing for the court stated:

Traxcell first argues that the claims don’t require location to be tied to specific devices. On this point, Traxcell relies on the doctrine of claim differentiation. Because some claims recite the “location for each . . . device,” it says, the claims without “each” do not require per-device locations. But claim differentiation is “a guide, not a rigid rule,” especially if the claim language is clearly to the contrary. Wi-LAN USA, Inc. v. Apple Inc., 830 F.3d 1374, 1391 (Fed. Cir. 2016) (quoting Marine Polymer Techs., Inc. v. HemCon, Inc., 672 F.3d 1350, 1359 (Fed. Cir. 2012)). And Traxcell provides no adequate reason why the mere presence of “each” should have this importance—especially where the various claims all just seem to say the same thing differently phrased. As we explained, each claim recites the location of a device, or “locating” a device. See, e.g., ’284 patent claim 1 (“locating at least one said wireless device”). Not the average of many locations. The fact that some claims require multiple device locations (i.e., locations for “each” device) does not mean that broader claims only requiring a single device location need not be tied to a specific device.

Traxcell Technologies, LLC v. Nokia Solutions and Networks OY et al., 2020, 1440, 2020-1443 (Fed. Cir. Oct. 12, 2021)(slip op. at pages 9-10).

Here are some previous posts where the word “each” came up:

[“Each” — Hard cases make bad law],

[The meaning of “each” ….],

[“Each of a plurality”], and

[Oral Argument of the Month: Timebase v. Thomson].

By the way, I seem to recall that there was another “each” case recently. If I run across it in the future, I’ll add it here.