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.
Justice Samuel Alito, authored the Limelight decision for a unanimous Court.
There are some who are questioning the wisdom and correctness of the Supreme Court’s recent decision, authored by Justice Alito for a unanimous Court, in Limelight Networks, Inc. v. Akamai Technologies, Inc. One particular point of criticism seems to be centered around the fact that the Supreme Court failed to take into consideration the existence of 35 U.S.C. § 271(f). Section 271(f) was enacted by Congress to overrule a 1972 Supreme Court decision that held that supplying parts to be assembled outside the United States could not result in infringement of a U.S. patented combination machine because the assembly occurred outside the territorial reach of the U.S., and therefore beyond the scope of the exclusive rights granted by a U.S. patent.
We recognize that certain Supreme Court patent decisions over the past several generations have legitimately raised questions about the Court’s familiarity with overall patent law concepts. Indeed, the Supreme Court has been criticized, including here on IPWatchdog.com, for muddying patent waters, failing to articulate clearly applicable standards and promulgating rulings that seem internally inconsistent, if not scientifically inaccurate. Any legitimate criticism of Supreme Court patent jurisprudence should, however, be on a case-by-case basis. Further, it is important to recognize that the Supreme Court does from time to time get a patent decision perfectly correct. See Diamond v. Chakrabarty, Diamond v. Diehr, Octane Fitness v. ICON Health & Fitness, Highmark v. Allcare, Gunn v. Minton, Bowman v. Monsanto, i4i v. Microsoft and Kappos v. Hyatt.
This current criticism swirling around Limelight seems misguided. Arguing that the Supreme Court erred by misinterpreting, or failing to apply, 271(f) misses the point entirely. The question presented in the appeal to the Supreme Court was whether there can be infringement under 271(b) if there is no direct infringement under 271(a). Infringement under 271(f)(1) was not at issue in the case, and 271(f)(1) was not relied upon by the Federal Circuit below.
Justice Alito began the decision with this summation:
“This case presents the question whether a defendant may be liable for inducing infringement of a patent under 35 U. S. C. §271(b) when no one has directly infringed thepatent under §271(a) or any other statutory provision. The statutory text and structure and our prior case law require that we answer this question in the negative. We accordingly reverse the Federal Circuit, which reached the opposite conclusion.”
At issue was the alleged infringement of U. S. Patent No. 6,108,703 (’703 patent), which claims a method of delivering electronic data using a “content delivery network,” or “CDN.” The ’703 patent also provides for the designation of certain components of a content provider’s website to be stored on Akamai servers. The process of determining which component to store on Akamai servers was known as “tagging.”
Earlier today the United States Supreme Court handed down its decision in Nautilis Inc. v. Biosig Instruments, Inc., which dealt with the appropriate standard for indefiniteness under 35 U.S.C. 112(b). It should be noted, however, if you read the case you will see mention of 35 U.S.C. 112, ¶ 2, which was the section of 112 at issue in the case. Congress has since relabeled section 112 to sections (a) through (f). In any event, the statute at issue reads as follows: “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.” This is the section that defines the so-called definiteness requirement for patent claims.
In an opinion delivered by Justice Ginsburg for a unanimous court, the Federal Circuit was overruled, although it may wind up being much ado about nothing because it seems that the Supreme Court was concerned with the language used to articulate the indefiniteness standard, not specifically whether the claims at issue were indefinite.
The patent in dispute, U. S. Patent No. 5,337,753 (’753 patent), issued to Dr. Gregory Lekhtman in 1994 and assigned to respondent Biosig Instruments, Inc., concerns a heart-rate monitor for use during exercise. Claim 1 of the ’753 patent covers a heart monitor, and in two places uses the term “spaced relationship.”
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.