In what can really only be characterized as a stunning development, earlier today Judge Randall Rader of the United States Court of Appeals for the Federal Circuit announced that he is retiring effective June 30, 2014. This announcement comes only weeks after he stepped down as Chief Judge.
On May 23, 2014, then Chief Judge Rader announced that he would step down as Chief Judge of the Federal Circuit on May 30, 2014. At that time Rader also said that he would continue in active service on the Court, although the official announcement said that he will also undertake additional teaching, lecturing and travel. Given Rader’s statement that he would remain on the Court just weeks ago the announcement today is shocking. It is too early to know exactly why Judge Rader has made this decision, as news is just breaking, but the speed with which Rader has gone from Chief Judge, to Circuit Judge to private citizen is staggering.
By now much of the patent world likely already knows that Chief Judge Randall Rader has announced that he will step down as Chief Judge of the United States Court of Appeals for the Federal Circuit effective May 30, 2014. Many in the popular press are tying his decision to step down to his recent recusals, which were necessitated by an ill-advised email sent by Judge Rader praising a member of the patent bar that routinely appears before the Federal Circuit. On May 23, 2014, Judge Rader sent a letter to all of the other Judges on the Federal Circuit apologizing for his lapse in judgment and for the need to recuse himself. Given the timing of Judge Rader’s decision to step down and his apology letter it is easy to understand why many are speculating that the two are connected.
Given the anti-patent climate that has been created by major Silicon Valley technology companies, the Obama Administration and certain Members of Congress, the news that Judge Rader will step down as Chief Judge comes at a difficult time. As innovators celebrated the defeat of the latest round of patent legislation that would have weakened the patent system and patent rights generally, the industry is now face with losing Judge Rader, at least to some extent.
Judge Rader will stay on the Federal Circuit, he will continue to teach, lecture and travel, spreading the positive patent message that he delivers so uniquely well. Even though the Chief Judge is really only a leader among equals, there is no doubt that a bully pulpit is provided to a Chief Judge. Judge Rader was willing to talk about the virtues of the U.S. patent system generally, and continually raised issues relevant to businesses both small and large that innovate. His absence at this critical time will be missed.
EDITOR’S NOTE: What appears below are the prepared remarks for “The Honorable Howard T. Markey Distinguished Lecture on Intellectual Property Law,” given by Don Dunner at the John Marshall Law School on November 12, 2010. In light of the recent announcement that Chief Judge Rader will be stepping down as Chief Judge, Dunner granted us permission to publish this piece.
The title of my lecture today is “The Evolution of Patent Jurisprudence … from Giles Rich to Howard Markey to Randall Rader.” Why, you might ask, am I restricting myself to these three jurists if my subject is “The Evolution of Patent Jurisprudence”? Why not start at the beginning, for example, and talk of Article I, Section 8, Clause 8 of the Constitution, or the first patent act in 1790, or the beginning of the patent examination system in 1836, or the patent writings of Judge Learned Hand.
Those of you who are familiar with my career will know the answer: My 55 year career in patent law spans almost exactly the judicial tenures of Judges Rich, Markey and Rader. I have been specially blessed with my extensive interactions with all three judges, not to mention numerous oral arguments that I have been privileged to make before them. And so it seemed to me appropriate to spend my time today sharing my recollections and thoughts about these three giants of the patent profession.
Chief Judge Randall R. Rader today announced that he will step down as Chief Judge of the United States Court of Appeals for the Federal Circuit on May 30, 2014. Judge Rader will continue in active service on the Court, although the official announcement says that he will also undertake additional teaching, lecturing and travel.
This surprise announcement by Judge Rader, who turned 65 on April 29, 2014, means that Judge Sharon Prost will become the next Chief Judge of the Federal Circuit. Had Judge Rader served his entire term as Chief Judge succession rules would have meant that the title of Chief Judge would pass Judge Prost and go on to Judge Moore, who remains next in line after Judge Prost.
On Friday, May 9, 2014, the United States Court of Appeals upheld sanctions leveled against E.I. Du Pont de Nemours and Company and its subsidiary Pioneer Hi-Bred International, Inc. (collectively “DuPont”) by the United States District Court for the Eastern District of Missouri. See Monsanto Co. v. E.I. Du Pont De Nemours and Co.
DuPont had appealed from orders of the district court, which had imposed sanctions on DuPont by striking DuPont’s contract reformation defense and counterclaims and awarding Monsanto Company and Monsanto Technology, LLC (collectively “Monsanto”) attorney fees. Finding that the district court did not abuse its discretion the Federal Circuited affirmed the sanctions.
Monsanto developed a genetic modification in soybean seeds, marketed under the Roundup Ready® (“RR”) brand name and known as the 40-3-2 event (the “RR trait”), which enables soybean plants to tolerate the application of glyphosate herbicide that kills weeds. Monsanto obtained U.S. Patent RE 39,247E (the “’247 Patent”), which covers the RR trait, and granted Pioneer Hi-Bred International, Inc. (“Pioneer”) a nonexclusive license to produce and sell soybean seeds containing Monsanto’s glyphosate-tolerant traits. After Pioneer became a subsidiary of DuPont, Monsanto and Pioneer entered into an Amended and Restated Roundup Ready® Soybean License Agreement on April 1, 2002 (the “License”), which superseded the 1992 license.
Earlier today the United States Court of Appeals for the Federal Circuit ruled that Dolly the cloned sheep, and any other genetic clones, are patent ineligible in the United States because the “claimed clones are exact genetic copies of patent ineligible subject matter.” The case decided was In re Roslin Institute(Fed. Cir. May 8, 2014).
The Roslin Institute of Edinburgh, Scotland (Roslin) is the assignee of U.S. Patent Application No. 09/225,233 (the ’233 application) and had appealed from a final decision of the Patent Trial and Appeal Board, which held that all of Roslin’s pending claims were unpatentable subject matter under 35 U.S.C. § 101. The Board also rejected Roslin’s claims as anticipated and obvious under 35 U.S.C. §§ 102 and 103. Having determined that genetic clones are not patent eligible the Federal Circuit, in a decision by Judge Dyk who was joined by Judges Moore and Wallach, did not reach the 102 or 103 issues, instead simply affirming the Board’s rejection of the claims under § 101.
To tell the story involved in this case we must travel back to July 5, 1996, when Keith Henry Stockman Campbell and Ian Wilmut successfully produced the first ever cloned mammal from an adult somatic cell: Dolly the Sheep. The cloning method Campbell and Wilmut used to create Dolly was a significant scientific breakthrough. Campbell and Wilmut obtained U.S. Patent No. 7,514,258 (the ’258 patent) on the somatic method of cloning mammals, which was been assigned to Roslin. The ’258 patent was not at issue in this case.
Justice Sonia Sotomayor delivered the opinion for the Court.
Earlier today the United States Supreme Court shed significant light into the question of awarding attorneys fees under 35 U.S.C. § 285 to successful litigants in a patent infringement proceeding. The decision in Octane Fitness, LLC v. ICON Health & Fitness, Inc., was the primary decision of the day simply because that case was treated first by the Court and formed the basis of the Court’s decision in Highmark, Inc. v. Allcare Health Management System, Inc. Essentially, in Highmark, the Supreme Court found that the ruling in Octane was dispositive that that “an appellate court should apply an abuse-of-discretion standard in reviewing all aspects of a district court’s § 285 determination.”
35 U.S.C. § 285, which is an extremely short statute, authorizes a district court to award attorney’s fees in patent litigation to the prevailing party. In its totality, § 285 states: “[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party.” With such a simple statute you might wonder how or why it was necessary for the Supreme Court to step in and provide clarity. Because in 2005 the Federal Circuit departed from three decades of case law and made it difficult, if not impossible, for prevailing parties to demonstrate entitlement to attorneys fees.
In Brooks Furniture Mfg., Inc. v. Du tailier Int’l, Inc., 393 F. 3d 1378 (2005), the United States Court of Appeals for the Federal Circuit held that “[a] case may be deemed exceptional” under § 285 only in two situations: (1) “when there has been some material inappropriate conduct,” or (2) when the litigation is both “brought in subjective bad faith” and “objectively baseless.” The question put before the Supreme Court was whether the Brooks Furniture framework is consistent with the statutory text.
Steve Kunin has been in private practice at Oblon, Spivak for over a decade. Today he is on the firm’s Management Committee, serving as General Counsel, and he also co-chairs the firm’sPost-Grant Patent Proceedings practice group. Prior to entering private practice Kunin worked at the United States Patent and Trademark Office, rising to the level of Deputy Commissioner for Patents in charge of Patent Examination Policy. As a result of this experience at the USPTO, Kunin is a sought after expert who has testified as an expert witness by report, deposition or at trial on patent examination policy, practice and procedure in more than 80 cases.
I have known Kunin for years. We occasionally get together and swap e-mails. During one of our latest meetings I suggested that our conversation would make excellent reading. He agreed to once again go on the record for a wide ranging discussion of patents.
My interview with Kunin occurred on Wednesday, February 26, 2014, at his office in Alexandria, Virginia. We discussed everything from the Federal Circuit’s recent decision in Ballast Lighting, the CAFC’s continued love affair with de novo review, the Supreme Court refusing to allow bright line rules, patent office administrative trials, the role of a patent procedure expert in patent litigation and more.