At the conclusion of my day at the AIPLA I sat down for an on the record conversation with Q. Todd Dickinson, the current Executive Director of the AIPLA and former USPTO Director. In Part 1 of the interview we discussed how it is possible for the AIPLA to stay on top of the numerous, never-ending issues that present themselves in the Courts and at the USPTO.
In this final installment of my interview with Dickinson we discuss the Federal Circuit, including the rumors that I have heard about him possibly being on a short list for a future appointment to the Federal Circuit. As you will see, Dickinson deflected those rumors, although acknowledging they are flattering. We then move on to talk about judicial appointments in general, as well as the next big issue that will face the Federal Circuit in the coming years.
Without further ado, here is the conclusion of my interview with Todd Dickinson.
Todd Dickinson, AIPLA Executive Director, October 26, 2012, starts the panel discussion.
The annual meeting of the American Intellectual Property Law Association (AIPLA) was held last week in Washington, DC at the Marriott Wardman Park Hotel. The event was attended by well in excess of 2,000 attorneys predominantly from the United States, but with a strong contingency of attorneys from foreign firms. I personally had the opportunity to meet with attorneys from Canada, Japan, Korea and the United Kingdom.
One of the presentations I attended was the panel moderated by Todd Dickinson, who is the current Executive Director of the AIPLA and a former Director of the United States Patent and Trademark Office. Also on this panel were Judge Sharon Prost of the United States Court of Appeals for the Federal Circuit, USPTO Director David Kappos, Eli Lilly General Counsel Bob Armitage, Senior Counsel to the Senate Judiciary Committee Aaron Cooper and Oblon Spivak attorney W. Todd Baker.
Dickinson led an informative question and answer session centering on the expectations and early results from the various changes to the patent system implemented by the America Invents Act. The title of the panel discussion was simply – AIA – Will the New System Work? Not surprisingly, everyone was in agreement that the system will work, even if only because it has to work since now it is the law.
Todd Dickinson (right) escorts Judge Newman off stage after receiving the AIPLA Excellence Award.
On Friday, October 26, 2012, at the Gala dinner event at the Annual Meeting of the American Intellectual Property Law Association (AIPLA), Judge Pauline Newman of the United States Court of Appeals for the Federal Circuit received the 2012 AIPLA Excellence Award.
The Program for the event explained that the Excellence Award was presented to Judge Newman “in recognition of extraordinary leadership and service to the Intellectual Property Community, which is representative of a distinguished career marked by intellect, integrity, and an unwavering commitment to the administration of justice.”
The AIPLA has honored a number of excellent and worthy winners in the past including Chief Judge Howard T. Markey, Chief Judge Paul Michel, Judge Rich and Donald Dunner to name but a few. Judge Pauline Newman is now a recipient of this top industry recognition, and if you ask me she is deserving of being on the Mount Rushmore of this exclusive club.
On Sunday, September 30, 2012, Timothy Lee of Ars Technica wrote a terribly researched and demonstrably erroneous article attacking the Federal Circuit titled How a rogue appeals court wrecked the patent system. The article is a cheap shot, factually inaccurate and just plain embarrassing. Lee concludes the Federal Circuit is at the heart of all problems in the patent system, which is, itself, simply not true. Of course, conclusions are not evidence and if he could have backed up what he was saying with any kind of factual, true information then it would have been a matter of opinion. Instead, he was wrong about pretty much everything he wrote.
If most reporters knew anything about patents they would be embarrassed to have their names professionally associated with the drivel they try and pass off as news. But media ignorance of patents specifically and intellectual property generally is nothing new. Errors are so easy to document that it is virtually impossible to take them seriously. But then every once in a while an article crosses the line even for a know-nothing anti-patent zealot masquerading as a journalist.
Indeed, few articles have struck a nerve in me quite the way that a recent Ars Technica article did. The article is titled How a rogue appeals court wrecked the patent system. It is a cheap shot, factually inaccurate and embarrassingly incorrect “news” story that concludes the Federal Circuit is at the heart of all the problems in the patent system. A real Pinocchio tale.
How did the media get to such a low place, where sensationalism means more than truth? Once upon a time the media was viewed as a bastion of truth and integrity. They were viewed by the Founding Fathers as the virtual fourth branch of government. A free media would offer checks and balances against the three co-equal branches of the federal government, and by keeping the people informed would keep government in check. Oh how the mighty have fallen. There is hardly any such thing any more as a fair and objective media outlet. Simply put, truth doesn’t matter to the media. That which passes for news is full of errors, inaccuracies and outright lies. The public is being deceived, and in our little space the deception seems to be part of a coordinated effort to destroy the patent system as we know it.
Litigation involving incorrect claims of small entity status is very rare. In the 1998 case of DH Technology, Inc. v. Synergystex International, Inc., the small entity issue fee was paid for the asserted patent, even though it was later discovered that the patentee had over 500 employees (i.e., was now a “large entity”) at the time this issue fee was paid. Even so, the Federal Circuit overturned a district court ruling that the asserted patent had lapsed and was therefore unenforceable because the patentee had “incorrectly paid the small entity issue fee and because the statutorily-permitted time for correcting the error had passed.” Instead, the Federal Circuit held that 37 CFR § 1.28(c) (allowing an erroneous claim of small entity status and the erroneous payment of the small entity issue fee to be excused by paying the deficiency owed) controlled so that the patentee could still rectify this error (and underpayment of the issue fee), even though well outside the 1 year and 3 month “after the date of the notice of allowance” period specified in 37 CFR § 1.317(c) for correcting a good-faith error in claiming small entity status, as well as making up the deficiency for incorrectly paying the small entity issue fee.
DH Technology is the “easy case” where small entity status is lost due to a change in size of the patentee. But small entity status under 37 CFR §§ 1.27(a)(1) (person) or 1.27(a)(2) (small business concern) may also be lost if the rights in the invention are assigned, granted, conveyed, or licensed (or are subject to an obligation under contract or law to assign, grant, convey, or license, any rights in the invention) to someone other than a small entity (e.g., an entity having more than 500 employees). That was the situation in the recent case of Outside The Box Innovations. L.L.C. v. Travel Caddy, Inc. where an agreement between the patentee (Travel Caddy) and its distributor/seller (The Rooster Group, a large entity of greater than 500 employees) of the patented tool cases was deemed by the district court to contain a patent license clause for the purposes of 37 CFR § 1.27(a)(2). Even worse, the district court held that Travel Caddy had “committed inequitable conduct by claiming small entity status and paying reduced PTO fees, and that this conduct rendered both the ‘992 and ‘104 patents permanently unenforceable.”
Five years ago, on Thursday, September 20, 2007, the United States Court of Appeals for the Federal Circuit issued two decisions that provoked much debate, and which deserve to be remembered. One the Court got right and, sadly, one the Court got excruciatingly wrong.
The first case, In re Comiskey, seemed rather straight forward and certainly not earth shattering, except perhaps for one issue – namely that the Federal Circuit issued its decision on patentable subject matter grounds without patentable subject matter ever being an issue during prosecution or on appeal.
In Comiskey, one set of claims were directed to the purely mental process of arbitrating a matter and deciding the outcome. The Federal Circuit did not waste time pointing out that arbitration is extremely well known and could hardly be considered patentably new or nonobvious, rather they cut to the chase and explained that the law does not allow patents to be issued on particular business systems that depend entirely on the use of mental processes, deciding that “the application of human intelligence to the solution of practical problems is not in and of itself patentable.”
The America Invents Act (my how I hate that title!) has caused much change and rethinking about how patent law will be practiced in the future, especially patent prosecution in the USPTO. A slew of new (and in some cases, recast) procedures will be instituted to permit validity challenges, both pre-grant and post-grant. One of those new procedures is post-grant review which permits (under new 35 U.S.C. § 321(b)) a “request to cancel as unpatentable 1 or more claims of a patent on any ground that could be raised under paragraphs (2) or (3) of section 282 (relating to invalidity of the patent or any claim).” As those familiar with patent infringement litigation recognize, section 282 (aka, 35 U.S.C. § 282) referred to by new 35 U.S.C. § 321(b) also defines what defenses in may be raised in patent litigation “involving the validity or infringement of a patent”:
(1) Noninfringement, absence of liability for infringement, or unenforceability,
(2) Invalidity of the patent or any claim in suit on any ground specified in part II of this title as a condition for patentability,
(3) Invalidity of the patent or any claim in suit for failure to comply with any requirement of sections 112 or 251 of this title,
(4) Any other fact or act made a defense by this title.
In step with these new procedures authorized by the AIA, the USPTO has promulgated corresponding rule packages at a “fast and furious” pace. As part of the post-grant review rules package, the USPTO has interpreted what new 35 U.S.C. § 321(b) means in terms “grounds” that may be raised. See Ken Nigon’s Post Grant Review, Inter Partes Review and Transitional Program for Covered Business Method Patents. Interestingly, the USPTO post-grant review rules package has interpreted new 35 U.S.C. § 321(b), and more specifically 35 U.S.C. § 282(2), to mean that not only are 35 U.S.C. § 102 (novelty) and 35 U.S.C. § 102 (obviousness) proper grounds for a post-grant review request, but so is 35 U.S.C. § 101 (inventions patentable).