Judge Paul Michel, University Club, Washington, DC, July 9, 2010
On Friday, July 9, 2010, I had the honor and privilege to sit down with the recently retired Chief Judge of the United States Court of Appeals for the Federal Circuit, the Honorable Paul Michel. I met Judge Michel several weeks earlier at the Center for American Progress and we struck up a conversation as we sat waiting for the presentation by United States Patent Office Director David Kappos. I asked Judge Michel if he would consider going on the record with me, and he agreed. After trading several e-mails and a phone call, the interview was scheduled to take place at the University Club in Washington, DC, on July 9. In fact, I interviewed Judge Michel in the Benjamin Franklin room, which seemed particularly fitting.
As I do with all my interviews, I submitted questions in writing to Judge Michel prior to the interview. I was not limited to these questions, but the questions were intended to outline the topics to be covered. I would estimate that the questions were sufficient for a 1 hour interview, which was what was agreed upon. After 1 hour and 40 minutes I had hardly covered one-third of my questions, and I think you will see that we had a very lively discussion about many things, including Judge Michel’s investigation of President Nixon during Watergate, his investigation of Members of Congress during Koreagate, judicial ethics, working for Arlen Specter when he was a District Attorney and then again as a Senator, patent reform, the Patent Office, where things seemed to go out of control for the US patent system and much more. As you will see in Part 4, we even talked about Bilski v. Kappos, KSR v. Teleflex and how the patent system is tilting against independent inventors, start-ups and universities.
The sequence of events of In re Swanson is well known. A jury determined that the patent was valid and infringed. The trial court’s judgment based on the jury’s verdict was affirmed by the CAFC. The accused infringer then filed a reexamination request, and the PTO rejected the claims. The CAFC affirmed the rejection, despite having earlier found the claims to be valid – the CAFC reconciled these apparently contradictory results by noting that validity is a different issue at the PTO than it is in court. This surprising outcome in Swanson is one of the reasons that reexamination is so popular among accused infringers.
Judge James Cohn of the Southern District of Florida has now taken the Swanson approach one step further – in Flexiteek Americas v. PlasTEAK (Case No. 08-60996-civ-Cohn/Seltzer) he has withdrawn a permanent injunction on basis of an advisory action in a reexamination, which found the patent-in-suit to be invalid.
Alice enters another world through the looking glass
In Chapter 6 of Lewis Carroll’s Through the Looking Glass, Humpty Dumpty tells Alice scornfully “when I use a word, it means just what I choose it to mean – neither more nor less.” After reading and compositing the various opinions by the nine SCOTUS Justices in USPTO v. Bilski, I, like many others, are still wondering what is a patent-ineligible “abstract idea” (other than Bilski’s claimed method for instructing buyers and sellers how to protect against the risk of price fluctuations in a discrete section of the economy, i.e., hedge against such risks) and especially what does “patent-eligible” really mean under 35 U.S.C. § 101. The composite opinions by SCOTUS in Bilski concoct a standard for patent-eligibility that is as fuzzy and circular as the logic Humpty Dumpty employed on Alice.
As you might imagine, there are many takes on what the SCOTUS Bilski ruling actually says, including mine. See Section 273 is NOT a Red Herring: Stevens’ Disingenuous Concurrence in Bilskiwhere I waxed lyrical about now retired Justice Stevens’ disingenuous sophistry in his concurrence which treats 35 U.S.C. § 273 as if it didn’t exist, but which is, in fact, an implicit, if not explicit, recognition and acceptance by Congress that “business methods” (however you characterize them) ARE patent-eligible subject matter under 35 U.S.C. § 101. See also Foaming at the Mouth III: And Then Came Bilskiwhere I commented on the most recent “thunderbolt” from our Judicial Mount Olympus as SCOTUS summarily granted certiorari in Prometheus Laboratories, Inc. v. Mayo Collaborative Services and Classen Immunotherapies, Inc. v. Biogen Idec, and then vacated and remanded both cases to the Federal Circuit to reconsider (with equally “fuzzy” guidance) in light of SCOTUS’ ruling in Bilski.
It is becoming popular in some circles to beat up on companies that employ people, make a profit and actually have the audacity to patent their innovations. In this bizarro world the logic, what little of it seems to prevail, suggests that no incentives are necessary in order innovation because innovation will just happen naturally. This naive view of the world ignores the human condition, among many other things. An appropriate incentive structure promotes innovation and benefits society. Even the most irrational and illogical critic has to agree that not all incentives to innovate are evil. Exhibit 1 – the Orphan Drug Act of 1983.
Yesterday, John F. Crowley, CEO of Amicus Therapeutics (Nasdaq: FOLD) and a member of the Board of Directors of the Biotechnology Industry Organization (BIO), testified on behalf of BIO at the Senate Committee on Health, Education, Labor and Pensions. This full committee hearing focused on rare and neglected disease. Mr. Crowley, provided background and perspectives on the current state of drug development for orphan products, and made a series of recommendations to the Committee regarding the establishment of additional incentives for companies to develop more treatments for rare and neglected diseases.
Yesterday the United States Patent and Trademark Office held a public meeting on the so-called Three Track examination proposal, with everyone in agreement that the proposal is quite welcome, at least in principle. On June 4, 2010, the USPTO published a Notice in the Federal Register setting out the preliminary Three Track proposal and setting Tuesday, July 20, 2010 as a date for the public to come to the Alexandria, Virginia campus to let PTO Officials hear their thoughts. This public meeting proceeds the due date of written comments by a full month, and many of those who spoke explained they would continue to review the proposal and follow up with additional written comments. For more information on the specifics of the proposal please see USPTO Announces New Examination Rules.
One thing can be said definitively: everyone thinks it is a good idea, no one has issues with accelerating applications (Track 1) or allowing them to remain on course as today (Track 2), but there were numerous concerns raised about applicants slowing applications down (Track 3). The good news for the PTO, however, is that speaker after speaker highlighted the same or similar concerns, so it does appear as if there are a finite set of manageable considerations for the PTO to address. In fact, the senior PTO Officials that I spoke with after the public meeting were extremely pleased and quite grateful. I was told by one senior PTO Official that the points raised were all good and that the PTO intends to take them into consideration and address the concerns, along with whatever written feedback they receive. What a refreshing change that will be!
Earlier today the Wall Street Journal gave front page space to a story relating to the United States Patent and Trademark Office. Widely regarded as one of the “papers of record” in the United States, one might expect that the Wall Street Journal had brought its considerable clout to an important issue plaguing our time, such as an horribly under funded Patent Office that is holding innovation hostage, costing America perhaps millions of jobs. NO! Rather than educate itself and others, thereby exposing in real terms for the everyday observer the plight of the Patent Office and what it means to the United States economy, the Wall Street Journal wrote a front page article on the errant creation of a trademark class associated with medical marijuana.
Don’t get me wrong, every tabloid should have front page news story about pot, medical marijuana and have an image of a VW bus over the tag “the Canny Bus,” as the Journal did earlier today. Call me crazy, but I expected more from the Wall Street Journal.
Over the last several weeks “patent trolls” have been back in the news. The mother of all patent trolls, NTP, which won over $600 million from Research in Motion as the result of a successful patent infringement litigation over the popular BlackBerry phone, is back at it again. NTP is now suing Apple, Google, Microsoft and others alleging that smart phone e-mail systems infringe its patents. See, for example Bad News for Tech Heavies?and NTP sues Apple, Google, Microsoft and others.
Not long ago Attorney John M. Desmarais, who wasone of the attorneys who represented GlaxoSmithKline in their effort to stop the claims and continuations rules from becoming effective, left the practice of law. He acquired 4,500 patents and is going to throw his hat into the ring, presumably representing himself, going after those large companies that he believes are infringing his patents. See Billion Dollar Lawyer Desmarais Quits Firm to Troll for Patents.
Just this past week, Kelley Drye & Warren, the firm that represented Dr. Tafas in the claims and continuations challenge, filed an $11.4 billion lawsuit on behalf of XPRT Ventures, LLC. Many in the popular press and in the blogging community are, like lemmings heading off a cliff, referring to XPRT as a patent troll. But what evidence do that have of that? As far as I can tell little or none; mostly none. See eBay’s PayPal Sued for $11.4 Billion for Patent Infringement.
The United States Patent and Trademark Office (USPTO) will be holding a public roundtable discussion on its proposed Enhanced Examination Timing Control Initiative, also known as “Three-Track,” currently under consideration by the USPTO. The purpose of the roundtable meeting is to solicit opinions from the public on the proposed initiative. The meeting will be held on Tuesday, July 20, 2010, from 1:30 p.m. to 5:30 p.m. at the USPTO headquarters in the Madison Building Auditorium, which is located at 600 Dulany Street, Alexandria, VA, 22314. The meeting will also be webcast. Web cast information is available on the USPTO’s website by visiting http://www.uspto.gov/patents/announce/3track.jsp.
The proposed ”Three-Track” initiative would provide applicants greater control over when their applications are examined and promote greater efficiency in the patent examination process. The proposal is designed to provide applicants with the timing of examination they need and to reduce pendency of patent applications.