Judge Stoll tells AIPLA Alice/Mayo ‘a difficult line of cases to administer’

By Gene Quinn
October 26, 2018

Lisa Jorgensen (Left) with Judge Kara Stoll of the U.S. Court of Appeals for the Federal Circuit (right).

Lisa Jorgensen (Left) with Judge Kara Stoll of the U.S. Court of Appeals for the Federal Circuit (right).

Earlier this afternoon Judge Kara Stoll of the U.S. Court of Appeals for the Federal Circuit spoke to a luncheon audience at the American Intellectual Property Law Association (AIPLA) annual meeting in Washington, DC.

AIPLA Executive Director Lisa Jorgensen sat with Judge Stoll for a fireside chat. Jorgensen began by asking Stoll to tell the audience about the story of how she received the call inquiring about her interest in being appointed to the Federal Circuit.

“Family is very important to you, I’m going to ask you about the call you received to see if you were interested in going onto the Federal Circuit,” Jorgensen said.

“It was a Saturday and I was in a toy store with my kids, and everything sort of slowed down,” Stoll said as the audience chuckled. “I thought I’ve had a great career and I’m encouraging my kids to try new things, so I should as well. I knew this would be a great opportunity for me.”

“Seeing these cases as a judge it’s very different because I have to decide if a trial judge erred,” Stoll explained as she talked about the issue of waiver, addressing things that she views differently now that she is a judge compared to when she was an attorney. As an attorney Stoll explained that she didn’t think waiver should be applied very often, if at all. Now, however, Stoll explained that since the role of the Federal Circuit is to determine if the trial judge erred it makes more sense to her that if the issue wasn’t raised below it should be considered waived because you simply cannot say the trial judge erred when the issue was never raised and considered.

Jorgensen then pivoted to attempt to ask more difficult questions regarding the current climate and standing of the patent system. As you might have expected, Stoll treaded lightly, but did respond.

Jorgensen asked whether the current patent environment is limiting or helping innovation. “You all here probably have a better view if innovation is being limited,” Stoll explained. “One of the more challenging issues I’ve seen since I’ve been at the court is the 101 test and the Alice/Mayo test. It is a difficult line of cases to administer… I do find that and have found that to be a challenging area in the cases I’ve worked on at the Federal Circuit.”

Judge Stoll acknowledged that it can be very difficult for clients who have invested under one set of rules to then later on find out that that patents they acquired are no longer valuable because the law has changed. She said:

“As somebody who has worked in patents for a long time I realize it can be very difficult for clients where you’ve invested in your intellectual property under one set of rules only to have the rules completely change and your intellectual property is then of no value or of uncertain value. And on 101 I also think it is important not to confuse Section 101 with Sections 102 and 103, but that said to the extent there is any need for change that would be for Congress or the Supreme Court.”

“We have had the Supreme Court tell us that we do not need special patent rules,” Stoll said as she explained one area where amicus briefs can be helpful. She would explain that amicus briefs can be helpful when they point out new information and explain how that same or similar issue is handled under copyright law, for example.

“Something that distinguishes a good appellate lawyer from a great appellate lawyer is knowing the record well,” Stoll said. “A great attorney at oral argument hears the question asked and answers the question asked with yes or no and with an explanation, if necessary…. And is willing to make concessions… it is better to admit you don’t know something than pretend that you do.”

“A great brief can really dig into the issues more. Get into the facts and details of the case law to show why your client should win,” Stoll explained. “It is surprising that some briefs do not tackle the issues in the level of depth I need.”

 

Image Source: Gene Quinn.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 9 Comments comments. Join the discussion.

  1. Anon October 26, 2018 3:03 pm

    To me, this is yet another admission:

    “As somebody who has worked in patents for a long time I realize it can be very difficult for clients where you’ve invested in your intellectual property under one set of rules only to have the rules completely change and your intellectual property is then of no value or of uncertain value. And on 101 I also think it is important not to confuse Sections 102 and 103, but that said to the extend there is any need for change that would be for Congress or the Supreme Court.”

    I remember when KSR was unleashed by the Supreme Court, and I inquired as to whether or not all of the “in process” applications would need to be “reset” under the newly changed law. I even contacted the legal folks at the Patent Office.

    I was told — far and wide — that the law itself was not changed, but merely the understanding of the (unchanged) law was “made current.”

    This is an admission because of the particular structure of patent law, which does NOT lend itself to the authority of the judicial branch to actually CHANGE the law through common law law writing evolution.

    I am well aware that our Constitution does allow one branch to share its authority with another branch, but Constitutionality of such sharing is heavily constrained.

    The Court (and the follow up common law law writing by Judge Stoll and the court of the CAFC) violate separation of powers when they CHANGE the patent law as written by Congress.

  2. Concerned October 26, 2018 3:08 pm

    Judge Stoll just said it. The law changed (in paragraph #8 of this article).

    SCOTUS did not interpret the law with Alice, SCOTUS changed the law as implied in Judge Stoll’s comments.

  3. B October 26, 2018 4:51 pm

    “‘A great brief can really dig into the issues more. Get into the facts and details of the case law to show why your client should win,’ Stoll explained. ‘It is surprising that some briefs do not tackle the issues in the level of depth I need.’”

    Now here’s where I get ANGRY. CAFC judges have shown a distressing habit of ignoring any issue in a brief that they deem inconvenient, including arguments on evidence, legal requirements and prejudice.

    Maybe the problem isn’t the 10,000+ attorneys who slaved endless hours trying to decipher the god-awful, unholy mess of contradictions that is the CAFC’s s101 jurisprudence.

    This from an attorney that personally likes Judge Stoll.

  4. Night Writer October 26, 2018 4:57 pm

    Any competent patent attorney could easily narrow Alice and Mayo. Still I can’t believe that Stoll was selected as a judge. She was known for her poor character at Finnegan. What a joke to get people like this appointed to the CAFC.

  5. The Time Is Now To Act October 26, 2018 6:24 pm

    The Commissioner is shining the bat signal up on the hill re 101 but where is Batman?

    In the new Congress is Sen. Coons Batman?

    Somebody needs to be.

    In the meantime, perhaps those in Congress who possess the power to make a change can take the children of patent holders shopping for toys. Difficult line of cases to be sure..

    I guarantee if affected patent holders were sitting in that audience the rhetoric of ‘those poor clients’ would have been met with a different reaction.

    In other political situations we see Americans forcing an audience in elevators with Congressional leaders.

    For the new Congress, it is time families affected by the mess that is 101 and AIA be heard by Congress.

    Perhaps we are learning those hearings need to start in the elevators and hallways as US Inventor has done.

    Come on Sen Coons – this is your game to win for inventors. Put on the cape!

  6. B October 27, 2018 11:06 am

    @ Night Writer “She was known for her poor character at Finnegan.”

    and Finnegan isn’t exactly known for the character of its partners!!!

  7. Pro Say October 27, 2018 1:18 pm

    … the CAFC’s s101 jurisIMprudence.

  8. Night Writer October 27, 2018 1:42 pm

    B >>Now here’s where I get ANGRY. CAFC judges have shown a distressing habit of ignoring any issue in a brief that they deem inconvenient, including arguments on evidence, legal requirements and prejudice.

    This exactly right. It is coming from the justices feeling they can just whatever they want to get the result they want. The fact is the rot comes from the top.

    Alice is queen/king empowerment decision. It gives all the power to fact finder and leaves the D and P as supplicants to the monarch.

  9. staff November 5, 2018 9:58 am

    ‘it can be very difficult for clients where you’ve invested in your intellectual property under one set of rules only to have the rules completely change and your intellectual property is then of no value…’

    For inventors and small businesses it means ruin. In most every case it means we have invested years if not decades of our lives and often our life’s savings into an invention we have no chance of ever commercializing or even benefiting materially from. All we can do is sit on the curb distraught and in disbelief while our large multinational competitors parade by lavishly enriched from our inventions they have ‘legally’ stolen. Yet the Constitution establishes that all ‘useful inventions’ are deserving of a patent. Clearly the law, in some cases as legislated and in others as adjudicated, no longer encourages inventors, but rather discourages if not obstructs them. It has legalized theft of them. The law and as many believe in some instances those who adjudicate on it must be changed. One if not both are broken. Our bill will repair all and once again inventors will have a realistic expectation we will be able to commercialize our inventions.

    For our position and the changes we advocate (the rest of the truth) to restore the patent system, or to join our effort, please visit us at https://aminventorsforjustice.wordpress.com/category/our-position/
    or, contact us at aifj@mail.com

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