Posts Tagged: "Chief Judge Rader"

On April 2, 2010, I had the privilege of conducting an on the record Interview with Judge Randall Rader, the soon to be Chief Judge of the United States Court of Appeals for the Federal Circuit. Some weeks earlier I wrote to Judge Rader requesting the opportunity to conduct an interview. I explained that leading up to his becoming Chief Judge of the Federal Circuit there would likely be increased interest in the Federal Circuit and in him in particular. In my letter I explained I would not ask about specific issues or cases, and that my objective was to discuss his experiences on the Federal Circuit, how cases are handled and what, if any, preparations are underway for him to become Chief Judge. Judge Rader granted my request, and what appears below is a transcript of my conversation with him.

Nothing in the appealed issues in Pressure Products (claim construction, denial of motion for JMOL, leave to amend answer) even remotely hints at or suggests the basis for this five judge panel. In fact, Pressure Products has all the markings of a fairly ordinary, garden variety patent infringement case. So why not the standard three judge panel? Not a word of explanation.

Sitting by designation in the United States District Court for the Eastern District of Texas, soon to be Chief Judge of the Federal Circuit, Judge Randall Rader, granted summary judgment to Google Inc. and AOL LLC in the case brought by Performance Pricing, Inc., which alleged infringement of U.S. Patent No. 6,978,253. Judge Rader ruled that there was no infringement and summary judgment was appropriate because there were no genuine issues of fact in dispute. More specifically, Rader determined that AdWords does not contain a price-determining activity.

Coming as no surprise, a majority of the en banc Federal Circuit just ruled in Ariad Pharmaceuticals v. Eli Lilly &Co. that there is there is a separate and distinct “written description” requirement in the first paragraph of 35 U.S.C. § 112. Also not surprisingly, there were multiple concurring (and dissenting) opinions. Judge Lourie (writing the majority opinion) has now won the on-going debate that has raged between him and Judge Rader (who has strenuously argued there is no written description requirement separate and distinct from the “enablement” requirement) since the 1997 case of Regents of the University of California v. Eli Lilly & Co.

TiVo, Inc. (NASDAQ: TIVO), owner of U.S. Patent 6,233,389, titled “Multimedia Time Warping System,” was a big winner today at the United States Court of Appeals for the Federal Circuit when the CAFC handed down its decision in Tivo, Inc. v. EchoStar Corp. A majority of the 3 judge panel hearing the case agreed with the district court and ratified the contempt order against EchoStar (NASDAQ: SATS) and Dish Network (NASDAQ: DISH). On news of the Federal Circuit ruling TiVo stock immediately surged ahead well over $5, up over 50%. Within less than 1 hour TiVo stock when from trading just over $10 a share, trading at $10.31 at 11:06 am EST, to trading at $16.07 at 11:42 am EST.

Normally, I find Judge Rader, the heir apparent for Chief Judge of the Federal Circuit, to write cogently and persuasively, even in dissent. Witness his withering blast in In re Bilski where he rightly takes the majority to task for the nonsensical “machine or transformation” test. But unfortunately, like the line from Hamlet, Judge Rader “doth protest too much, methinks” without case law support in his dissent in Media Technologies.

Unfortunately, those who oppose software patents frequently, if not always, want to turn the patentability requirements as they apply to software and business methods into a single step inquiry. They want it all to ride on patentable subject matter, which is a horrible mistake. The majority of the Federal Circuit got it completely wrong in Bilski, and other notable recent decisions. Patentable subject matter is a threshold inquiry and should not be used to weed out an entire class of innovation simply because bad patents could and will issue if the other patentability requirements are not adequately applied. That is taking the “easy” way out and is simply wrong.

I am just getting back from a week in San Francisco, California teaching the PLI Patent Bar Review Course at PLI’s California Headquarters in downtown San Francisco.  I am back in the office after having taken the red-eye, with a stop over in Long Beach, California before the cross country trek to DC.  As has become so common, while I…

Earlier today the Chief Judge Paul Michel of the United States Court of Appeals for the Federal Circuit issued an Order declaring the pending appeal of Dr. Tafas and GlaxoSmithKline moot due to the fact that USPTO Director David Kappos has withdrawn the rules. The Federal Circuit per Judge Michel, however, denied the motion of the USPTO and GlaxoSmithKline to…

After Monday’s oral argument, many are trying to divine how the U.S. Supreme Court will rule in the Bilski v. Kappos, and whether the Federal Circuit’s “machine or transformation” test will survive. Having now read the oral argument transcript, my own prognostication is that the Federal Circuit’s “machine or transformation” test will be trounced as too inflexible, although the Supreme…

If you are going to read only one of the briefs in this case I would strongly recommend the Medtronic amicus brief, which was filed in support of neither party. Much of the Medtronic brief is devoted to explaining what the company does, some of the key medical innovations created by the company, why these innovations have helped improve the quality of health care for real people, and what technologies they will no longer be able to seek patent protection for, which will all but certainly lead to less medical innovation, which is hardly good for society.

Lets be perfectly clear, the Patent Office does not call me and ask my input regarding anything, which should be readily apparent to those who read IPWatchdog.com regularly.  Had the Patent Office done so, and actually taken my suggestions to heart the Department of Justice would not have needed to ask the Federal Circuit to hold off on taking the…

As we continue to wait for President Barack Obama to select the next Undersecretary of Commerce for Intellectual Property (a.k.a. the Director of the USPTO), I feel compelled to make yet another nomination.  As some may know, since September 2008, I have periodically nominated various people who I thought would make a good choice for the next PTO Director, including…

Last Thursday I wrote regarding the USPTO, GlaxoSmithKline and Dr. Tafas jointly requesting an extension of time within which to either request reconsideration or rehearing en banc of the Federal Circuit’s decision in the claims and continuations saga.  This morning I learned that the Federal Circuit has granted the requested extension of time, so the parties have until the end…

I knew it was bad news when I saw that Judge Rader did not write the opinion, but rather concurred in part and dissented in part.  But, as I predicted, the Federal Circuit issued its decision while I am in Chicago teaching the PLI Patent Bar Review Course and unable to devote real time to writing about the GlaxoSmithKline and…