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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.

Agenda

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

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inquires how one of ordinary skill in the art would be aware of the cited art — which sounded as though it was all unpublished patent applications filed around the same time at the Patent Office by third party inventors.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].

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?

Answer:  The 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].

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.

[Listen]

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].

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.)

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].

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 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].

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].

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.

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