Seth Waxman, the 41st Solicitor General of the United States (1997-2001).
This is the final installment of my interview with Seth Waxman. In the finale Waxman goes through the process that the Supreme Court goes through to determine whether to accept a case and grant certiorari. As a former Solicitor General of the United States Waxman focuses on the interplay between the Supreme Court and the Solicitor’s Office, particularly detailing what is known as a Call for the Views of the Solicitor General, which Waxman explains comes in the form of an invitation to participate and share the U.S. government view of the issues. Of course, “[a]s a practical matter you cannot RSVP your regrets,” Waxman says jokingly.
Without further ado, here is the final installment of my interview with Seth Waxman.
WAXMAN: [Y]our first question was what does the Supreme Court look to in deciding what kinds of cases to take… [T]hey are looking for either a court that has incorrectly decided an unquestionably important issue. The paradigm would be a court has declared an act of Congress unconstitutional. The Supreme Court is going to review that. It may wait until a couple of other circuits have weighed in, but maybe not.
The other paradigm is there’s a split in the circuits. The same legal question with the same set of facts will definitely be decided differently in different jurisdictions. Then the Supreme Court has to step in because that can’t be in a national judicial system.
Have you ever wondered why the Supreme Court is taking so many patent cases over the last few years? In Part I of my interview with Seth Waxmanwe learned that while he was the Solicitor General of the United States, and even before ascending to that position, he advocated within the Department of Justice for at least occasionally seeking Supreme Court review of Federal Circuit cases. That lead from a trickle of cases to what has become a handful of cases year after year.
Personally I think there are plenty of cases that the Federal Circuit gets wrong and should be taken by the Supreme Court to get things correct. But that is now what the Supreme Court does. They are looking for meaty issues, not just to get some esoteric point of patent law correct. In fact, it is my observation that the more esoteric and the more incorrect the Federal Circuit the less likely the Supreme Court will get involved. But that is just my view from the sidelines.
Waxman, steeped in the rules, procedures and art of Supreme Court advocacy drills down deeper.
WAXMAN: Well, I think it’s a combination of several different things. When you’re talking about patent decisions of the Federal Circuit, for purposes of answering this question it’s useful to distinguish between rulings about litigation procedure in patent cases and rulings about the meaning of substantive patent law. With respect to the former, it’s easy to see why the Supreme Court’s interest would be piqued if a petitioner says, as it did for example in Medimmune, “there’s a general rule that applies across all the regional circuits with respect to standing in declaratory judgment actions. But the Federal Circuit applies a different rule in patent cases.” That is just the kind of disuniformity the Supreme Court is looking for. It’s proverbial “split in the circuits” that the Court feels it needs to address — where a particular law or set of procedures is being interpreted or applied differently in one part of the country than another.
Seth Waxman was the 41st Solicitor General of the United States, in that position from November 1997 until January 2001. Since the time he left the Department of Justice and put representing the United States behind him he has become one of the most sought after appellate advocates in the country. Waxman, who practices at WilmerHale in Washington, DC, has also become quite in demand in the patent community, both as a counselor during patent litigation and then as litigation turns into appeals he takes center stage.
Waxman has become one of America’s super lawyers, specializing in all kinds of appeals before the Supreme Court of the United States. He is in such demand in patent matters because the Supreme Court has never been known to be a warm and welcoming place for patent owners, but Waxman has achieved notable victory where many in the industry suspected certain defeat.
I spoke with Waxman in August 2012 on the record. What follows is Part II of my interview with Seth Waxman. In Part I we discussed the path to becoming Solicitor General and how and why Waxman decided to leave private practice. Part III (forthcoming) will discuss why the Supreme Court is so interested in patent cases, and the finale, Part IV (also forthcoming), will discuss the mechanics of a Supreme Court grant of certiorari, so stay tuned!
Seth Waxman is not your ordinary appellate attorney. He has an undergraduate degree from Harvard, a law school degree from Yale and early in his life he spent a year in Africa doing humanitarian work. Indeed, Waxman is committed to the cause of pro bono representation, which is far more than a polite nicety or done to score political points with the bar. One of America’s “super lawyers” devotes as much as 20% of his practice life to pro bono causes.
Waxman rose from law clerk to the Honorable Gerhard A. Gessell, to be a successful attorney in private practice for 17 years. Ultimately Waxman would be invited to work at the Department of Justice, where he became Associate Deputy Attorney General and finally Solicitor General during President Bill Clinton’s second term.
All of these accomplishments would be more than enough to fill out a lifetime spent in the law, but upon leaving the Department of Justice, Waxman has become nationally recognized and highly sought after as one of the preeminent appellate attorneys in America. He has also developed a particular niche in the area of patent law and litigation.
When the weight of the Supreme Court fist seemed poised to come down upon the presumption of validity enjoyed by patents it was Waxman who argued the case and prevailed. Such a victory was no small feat. This case presented a substantial uphill battle given the presumption of validity was so universally applied by the Federal Circuit. The only reason the Supreme Court would have taken the case would be to change the law, but thankfully that did not happen.
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.
As a part of this all-access look behind the scenes I interviewed Q. Todd Dickinson, the AIPLA Executive Director who is also a former Under Secretary of Commerce and Director of the U.S. Patent and Trademark Office. This interview took place at the conclusion of our day together.
In this segment of my two-part interview with Todd Dickinson we start by discussing how the AIPLA manages the daunting task of taking positions in virtually every IP issue that arises. We then transition into discussing first-to-file and the American Invents Act.
Without further ado, here is Part 1 of my exclusive interview with Todd Dickinson.
Justice Sonia Sotomayor delivered the opinion of the U.S. Supreme Court in i4i v. Microsoft.
This month I have been running a series of articles on the United States Supreme Court, which is now back in session as they open ever October with a new term. So far we have looked at Supreme Court Copyright Fair Use Cases and Supreme Court Trademark Cases. Today we switch things up a little and talk patents, focusing on one of the most important decisions the Supreme Court has made over the last generation — i4i v. Microsoft.
Some would argue that i4i v. Microsoft was not such an important case, and I suppose that is one way to look at this. The Supreme Court got the decision correct, so it just managed to keep the status quo in place. But if the Supreme Court had chipped away at the presumption of validity of a patent the way the Microsoft and many amici asked the patent system would be far worse off today. In fact, patents would almost not be worth the effort if they could so easily be challenged.
With this in mind I recently chatted with Michael Cannata, who is a Partner with NW Patent Funding Corporation. Through a joint venture with NW Patent Funding Corporation, Michael is an advisor and manager to the Northwater Intellectual Property Fund, which was established in 2005 as one of the 1st funds involved in patent litigation financing.
USPTO General Counsel Bernard Knight (left) and USPTO Solicitor Raymond Chen (right)
On August 1, 2012, I interviewed Bernard Knight and Raymond Chen at the United States Patent and Trademark Office. Knight is the General Counsel of the USPTO and Chen is Solicitor. I spent approximately one hour on the record with them in Knights Office.
In part 1 of the interview we discussed a wide range of issues, including where they got their start in the legal profession and how they rose to where they are, who they view as the client, what it is like to represent the United States, ethical dilemmas that present, the structure of the General Counsel’s Office and the process for giving Federal Register guidance on a variety of matters.
In this segment, which is the interview finale, we discuss the heightened expectation of fairness placed on government attorneys, what it is like to work for USPTO Director David Kappos, how the USPTO determines when to give guidance to examiners to reconcile case law, specifically using the KSR Guidelines as an example. Before Knight and Chen had to go I also managed to ask a few of those familiar “get to know you” questions at the end. Wait until you hear Knight’s answer for favorite pastime or hobby. Talk about a Renaissance man! The interview does end rather abruptly, but that was because we literally kept talking through the last minute they were available and on to their next set of meetings.
USPTO General Counsel Bernard Knight (left) and USPTO Solicitor Raymond Chen (right)
On Wednesday August 1, 2012, I had the opportunity to do something I have wanted to do for quite a while. I sat down on the record with both Bernie Knight and Ray Chen, the top two attorneys who represent the United States government at the U.S. Patent and Trademark Office. This starts the next phase of USPTO 2.0 interviews, which started earlier in the year.
Knight is the General Counsel at the USPTO, and Chen is the Solicitor. I have known each for a few years now, and I can’t tell you how many times I have asked them to go on the record for an interview. Obviously, they were cautious; uncertain what I would want to talk about. It would have been great to get into a substantive discussion about rules, law and legislation. That, however, would simply not be appropriate.
So my philosophy going into this interview was this: It wouldn’t be right for me to place Knight and Chen in a position where they had to say, “sorry, I can’t answer that question.” There is no point asking a question to which an answer could not realistically be expected, and which could violate attorney-client privilege if given. I don’t play those types of games, period. Furthermore, that isn’t why I have wanted to interview Knight and Chen. Knight and Chen represent the United States government and work for the people of the United States, but are stationed at the USPTO. I suspected at times that might put them at odds with the Administration. It also means their job as attorneys is different than what most of us will ever experience. So even if I hadn’t agreed to steer clear of substantive legal questions there were just too many process, procedure and ethics questions I wanted to ask.
On August 2, 2012, I spoke on the record with Erik Iverson, Executive Vice President for Business Development & External Affairs at the Infectious Disease Research Institute. In part 1 of the interview we caught up with Erik’s move from the Bill & Melinda Gates Foundation to IDRI. He is still engaged in humanitarian efforts, but he described IDRI as more of an “intentionally not for profit” biotech research and development company. We discussed the work IDRI is doing and how he is able to get large pharmaceutical companies to work with a 501(c)(3) entity that has as its primary mission humanitarian efforts in the global health sector.
In part 2, which is the final segment of the interview, we discuss the Obama Administration efforts to challenge the innovative community to put patents to work for humanitarian efforts. This project is called Patents for Humanity. Iverson and I discuss the project and whether it is likely to be successful, as well as the risk it runs of defining only one path to acceptably use patents for what the government views as humanitarian relief. For more on Patents for Humanity please see On Patents Aiding Humanity and Patents for Humanity Announced at White House Event.
Without further ado, we pick up right where we left off.
Recently USPTO Director David Kappos authored an article for publication on IPWatchdog (see On Patents Aiding Humanity) about the Obama Administration’s Patents for Humanity program, which was announced in February of 2012 at a White House event. verson was in attendance and he and I have chatted about this and other humanitarian efforts and uses of technology in the global health arena, so I thought this would make a perfect opportunity to catch up with him, learn more about the intersection of patents and humanitarian efforts and discuss Patents for Humanity.
Patents for Humanity in the news was also the perfect excuse to chat with Erik. I always enjoy our conversations. We touch base regularly and talk about industry matters, and I always leave those conversations wanting to write about something. Unfortunately, I have had the hardest time getting my head around what seems to be very counterintuitive — namely the use of patented technology for humanitarian purposes. I can confidently now say that I get it. I am happy to share this interview and hope that it can shed light on what might seem like an otherwise purely altruistic endeavor without much likelihood of success. There is great work being done in this space and it is indeed a “win-win” for everyone.
Without further ado, here is part 1 of my two-part interview with Erik Iverson.
Bob Stoll (right) at the White House, Nov. 2010, with then USPTO Deputy Director Sharon Barner.
On July 19, 2012, I interviewed Bob Stoll, former Commissioner for Patents of the United States Patent and Trademark Office. The interview took place in a conference room at Drinker Biddleon K Street in Washington, D.C. After 29 years working for the USPTO and a total of 34 years working for the government, Stoll retired on December 31, 2011. He then started his new, second career as a private citizen and all around patent specialist at Drinker Biddle in the firm’s Intellectual Property Group.
In part 1 of my interview with Stoll we discussed his adjusting to life in the private sector, the fact that he doesn’t enjoy the billable hour part of private practice (just like every other attorney I know) and we discussed politics a bit, as well as the U.S. economy and innovation policy. Part 2 of my interview, which appears below, picks up where we left off discussing Presidential politics and the buzz that engulfs D.C. every 4 years. We then move on to talk about how innovation drives the U.S. economy and I get his thoughts on why we haven’t seen a great new technology that has spawned an entirely new industry as we have coming out of so many recessions in the past. We then finish part 2 discussing changes to the patent examination process and how to streamline the examination process.
On July 9, 2012, the United States Patent and Trademark Office (USPTO) announced that they are extending the First Action Interview (FAI) Pilot Program. The extension of the program will be in conjunction with a comprehensive review of the program to determine whether any adjustments should be made to the program. Further inquiry will be made into whether the program should be extended further or made permanent. During its review, the Office will consider feedback from both internal and external stakeholders. Accordingly, in addition to announcing the extension of the program, the Office is requesting comments on the program.
The FAI Pilot Program is intended to expedite disposition of an application by enhancing communication between an applicant and an examiner at the beginning of the examination process. Specifically, the program allows an applicant to have an interview with an examiner prior to the issuance of an Office action, but after receiving the examiner’s search results and initially identified issues. It is the belief of the USPTO that by fostering this early communication the patent practitioner can bring the patent examiner up to speed quickly on the substance of the invention, while the patent examiner can discuss the prior art with the practitioner in an effort to crystalize issues before work even begins on a First Office Action.
Last month I wrote an article titled Trademark Skullduggery: Lawsuit Challenges Publication Service. This article discusses the recent lawsuit by Leason Ellis against USA Trademark Enterprises, Inc., which is one of the many companies that sends unsolicited mailings to trademark applicants and owners seeking to sell what in my estimation are worthless publication services. It is gratifying to see that recently the United States Patent and Trademark Office has posted a warning to its website warning individuals and businesses, saying: “Beware of companies with misleading solicitations to ‘help’ you with your trademark.”
Right after I wrote Trademark Skullduggery I was contacted by Matthew Bryan, who is the Director of the PCT Legal Division at the World Intellectual Property Organization (WIPO). He suggested: “a patent-side profile may be very useful and help complete the picture on these notifications…” It was an excellent suggestion, which lead me to write Patent Skullduggery: Patent Offices Warn of Patent Subterfuge. On the patent-side of the intellectual property world it seems that the schemes are even more scandalous because some companies seem send what truly appear to be official invoices.
As this was going on I contacted Bryan and asked him if he would be willing to answer a few questions on the record. He graciously obliged, and this brief interview was conducted via e-mail. As you will see, these schemes are lucrative. In one case that Bryan tells us about, in which he was an expert witness, a court in Florida “found that in the 2 years of operating, FIPTR had received over 2.5 million dollars in payments from PCT users just in the State of Florida.” With that kind of money potential it is easy to see why the scams persist.
Peter Pappas is an attorney who served in the Clinton White House Counsel’s office and who held important communications, government relations and policy positions at the State Department and at the FCC in the last Democratic Administration. After serving as a broadcasting executive overseeing legal, regulatory and government affairs and corporate communications, he was appointed by David Kappos to serve as Senior Advisor and Chief Communications Officer when Kappos took office. Although he is not a patent attorney, Pappas has quickly become an important and influential player in the patent community. He is now David Kappos’ Chief of Staff, a position he assumed last Fall, and a top advisor. His area of expertise is in politics, government and public relations. On January 24, 2012, I sat down with Peter Pappas to go on the record.
While there is no doubt that the rejuvenation of the Patent Office during the Obama Administration is directly related to the capable and steady leadership of Director Kappos, I equally have no doubt that Pappas has played a major role in reshaping the public image of the USPTO. During the Bush Administration there was a feeling that the patent bar was the enemy, not to be trusted. The flow of information from the USPTO to the industry and public was largely non-existent. That has all changed and Pappas has been at the center of coordinating the USPTO with other government agencies and in coordinating the message so that the industry and public can know and understand what the USPTO is doing and why.
How to Write a Patent Application is a must own for patent attorneys, patent agents and law students alike. A crucial hands-on resource that walks you through every aspect of preparing and filing a patent application, from working with an inventor to patent searches, preparing the patent application, drafting claims and more. The treatise is continuously updated to address relevant Federal Circuit and Supreme Court decision impacting patent drafting.
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