Left to Right: DePaul Law Professor Josh Sarnoff, Chief Judge James Holderman (N.D. Ill.), Ray Niro, Chief judge Michel (CAFC, ret.), DePaul Law Professor Roberta Kwall.
Former Federal Circuit Chief Judge Paul Michel gave an invigorating speech at the DePaul University College of Law Center for Intellectual Property Law & Information Technology (CIPLIT®) on October 15, 2013 at the 15th Annual Niro Distinguished Intellectual Property Lecture on the topic “How to Retain Patent Enforcement While Reforming It – Judges and Counsel Should Manage Infringement Suits, not Congress.”
To an evenly divided room of practitioners and law students, Judge Michel urged practitioners to take action against Congress’ incorrect understanding of the patent system. Judge Michel explained legislators are proposing bills because they are being heavily lobbied by a small (but powerful and well-funded) coalition of companies. He highlighted the common problem with the nine active bills currently before Congress. If passed, the bills separately and together would weaken the patent system; not strengthen it. None of these current bills would address the problems with the current patent system: litigation is slow, complicated and unpredictable. The bills, however, would make litigation slower, more complicated and less predictable. In short, congress’ solution would add to the problem.
It is that time of the year where we all start to look ahead to the new year, perhaps making some New Year resolutions that are sure to last for at least a few days. Over the past several years I write an article titled “Patent Wishes,” and two years ago I contacted a number of my industry contacts to ask them what they wish for moving into the New Year. See Industry Insiders Make Patent Wishes for 2010.
With that in mind I once again contacted some of my friends to get them to go on the record with their patent and innovation related wishes for 2012. I was lucky enough to get a number of very thoughtful responses from individuals with a variety of experiences.
So without further ado, here are the wishes of some industry insiders for 2012. Please feel free to add your own wishes to the comments, and stay tuned for my annual Patent Wishes article where I write about my own wishes for the year ahead.
As you may have seen, IPWatchdog.com has been named to the ABA Blawg 100, which recognizes the top 100 blogs on the Internet written by lawyers for lawyers. This marks the third year in a row we have been honored by the American Bar Association Journal as a top 100 blog.
Now the voting begins. Last year we were voted the top IP Law blog and greatly appreciate the support we received. Once again this year we are in the same category — IP Law — as is Professor Dennis Crouch’s widely popular PatentlyO blog. If you are inclined to vote for us we would once again greatly appreciate your support.
Over the years IPWatchdog.com has continued to try and add additional perspectives from a wide variety of guest contributors, ranging from well respected practicing attorneys and agents to high profile academics to inventors and pro-patent lobbyists. It is hard to imagine providing such depth of analysis on such an array of topics without having truly wonderful guest authors. So we take this moment to say a very special thank you and to shine the spotlight on them. Each deserve to share in any recognition of IPWatchdog.com. While I am loathe to single any guests out I would be remiss if I didn’t separately thank both Beth Hutchens (10 contributions) and Eric Guttag (9 contributions)!
Without further ado, here are the guest contributors in alphabetical order, along with their contributions for 2011.
At this time of the year all typically sit back and reflect on the year that has been, spend time with family and friends, watch some football and set a course to follow into the new year. It is also that time of the year where we are inundated with lists, top 10 this, top 10 that, it gets rather mind numbing after a while. So with that in mind — I have my own top 10 list. I know, I know, but they are so much fun to put together and there is something useful about looking back and reflecting that helps put things into perspective.
Without further ado, here are the top 10 events that shaped the patent, innovation and intellectual property industry during 2010 — at least according to me, and with a heavy patent emphasis. What did you expect?
Last night the Intellectual Property Owners Association honored Judge Paul Michel, the recently retired Chief Judge of the United States Court of Appeals for the Federal Circuit, with the Distinguished IP Professional Award, which honors lifetime achievement. The IPO also honored a trio of Dupont inventors, George Lahm, Ph.D., Thomas Selby, Ph.D. and Thomas Stevenson, Ph.D., awarding them collectively the National Inventor of the Year Award for their work on Rynaxypyr®, which is a safe and environmentally friendly insecticide and affects only insects and does not affect mammals.
The IPO event was held at the Smithsonian Museum of Natural History, which was an excellent venue for this black-tie optional event. The event started at 7:00pm with drinks being served in the Hall of Geology, Gems and Minerals on the second floor. That is where I caught up with David Kappos and Judge Michel (see image left).
Kappos delivers speech at Center for American Progress, 6/2/2010
Earlier today the Center for American Progress hosted a speech given by David Kappos, Undersecretary of Commerce for Intellectual Property and the Director of the United States Patent and Trademark Office. The speech was open to the public, RSVP was required and space was limited. A light lunch was served. I was lucky enough to be present as a member of the Press, and unlike the United States Supreme Court which requires members of the press to sit in partial view seats behind the tall pillars with an extremely large diameter, the Center for American Progress reserved front row seating for the press. Not that such front row treatment is required, but it sure does make taking pictures far more easy, but I digress.
A packed room of at least 200 individuals, including the newly retired Chief Judge Paul Michel, former USPTO Director Q. Todd Dickinson, former USPTO Director Bruce Lehman and others listened to Kappos give an impassioned speech about how innovation can create jobs, how the Patent Office is unfortunately continuing to hold jobs hostage due to a staggering backlog of pending patent applications and how American economic security depends upon development of a comprehensive national IP strategy. This is something near and dear to my own heart, as readers of IPWatchdog.com know I have been beating that drum since before Kappos was appointed (for example see this, this, this and that; and more recently hereand here, among many others). But can Director Kappos persuade Members of Congress and others in the Executive Branch of the truth we all know?
As I’ve said before, no one could rightly accuse me of being biased against patents. See Judge Rader Doth Protest Too Much in Media Technologies. But, as I also pointed out in this article on Judge Rader’s dissent in Media Technologies Licensing, LLC v. The Upper Deck Company, I don’t believe every patent is “bullet proof,” or to use Judge Plager’s phrase, that some patents aren’t built on “quicksand.” In fact, I agree with Judge Plager’s dissent in the denial of rehearing en banc in Enzo Biochem, Inc. v. Applera Corp., issued May 26, 2010, which argues that the “definiteness” requirement in the second paragraph of 35 U.S.C § 112 needs more “teeth” than Federal Circuit precedent appears to give it.
The three patents, U.S. Pat. No. 5,328,824 (the ‘824 patent), U.S. Pat. No. 5,449,767 (the ‘767 patent), and U.S. Pat. No. 5,082,830 (the ‘830 patent), in Enzo Biochem involved compounds used in techniques for labeling and detecting nucleic acids. The district court granted summary judgment of invalidity of all of the asserted claims of each of these patents based on “indefiniteness” under 35 U.S.C § 112, second paragraph, or alternatively as anticipation under 35 U.S.C § 102. The “indefiniteness” ruling for each of the three patents related primarily to the phrase “not interfering substantially.” This phrase was used to define a linkage group present in the claimed compounds as “not substantially interfering” with the function of these compounds as detection probes with respect to both hybridization and detection (the ‘824 and ‘767 patents) or simply detection (the ‘830 patent).
But on some occasions, the patent planets align and Judge Newman gets to write the majority opinion in a Federal Circuit case. And fortunately for us patent prosecutors, In re Vaidyanathan is one of those cases where Newman waxed very eloquent in saying: “Obviousness is determined as a matter of foresight, not hindsight.” More importantly for us prosecutors, she provided us with useful case law precedent to challenge rejections which are long on conjecture and speculation, but extremely short on facts, evidence, logic, or reasoning. In short, Judge Newman flattened a factually unsupported and badly reasoned obviousness rejection under 35 U.S.C. § 103 in Vaidyanathan.
In a decision handed down earlier today in Avid Identification Systems v. The Crystal Import Corporation, a bad acting President of a closely-held company managed to create potentially bad inequitable conduct law for the rest of us. Intent to deceive was admitted, if you can believe that, but as it turns out the prior art withheld, a prior sale, was not invalidating and would not have lead to an appropriate rejection by the Patent Office. Nevertheless, the prior sale of an earlier version of the invention in question was the closest prior art and the Federal Circuit, per Judge Prost, explained that materiality does not require that the the withheld prior art lead to a good rejection. So Judge Prost applied the Patent Office law relative to materiality as it existed prior to the 1992 revision of 37 CFR 1.56. In a feat of mental gymnastics, however, Judge Prost quoted the current Rule 56 to support her decision, muddying the waters even further in the area of inequitable conduct. Who would have thought muddying the inequitable conduct waters was even possible!
On February 17, 2010, the United States Court of Appeals for the Federal Circuit issued an order in Hyatt v. Kappos vacating the previous decision issued by a 3 judge panel on August 11, 2009, when the case was then styled Hyatt v. Doll. Chief Judge Michel wrote for the court and was joined by Judge Dyk, with Judge Moore providing a strong dissent. The primary issue in Hyatt v. Dudas was whether the district court properly excluded evidence. An appeal was taken from the Board of Patent Appeals within the Patent Office to the United States Federal District Court for the District of Columbia pursuant to 35 U.S.C. 145. Hyatt argued that a plaintiff in a § 145 action is entitled to submit additional evidence subject to no limitations other than those imposed by the Federal Rules of Evidence. Not surprisingly, the Patent Office disagreed, arguing that § 145 actions are at least partly a form of appeal of PTO decisions and that evidence not submitted to the PTO through negligence must be properly excluded at the district court.
The appeal in Lucent Technologies, Inc. v. Gateway, Inc. from the Southern District of California was considered in many quarters as the potentially seminal case on how to calculate damages based on a reasonable royalty using the Georgia-Pacific factors, especially the “entire market value” rule (aka factor 13). That Microsoft and others were currently on the hook to Lucent Technologies (the patentee) for approximately $357 million in damages based on the jury award definitely raised some “eyebrows” about this case. In fact, with all the “hub-bub” about altering the “entire market value” rule in the damages provision of the Patent Law Reform Act of 2009 (S. 515 and H.R. 1260), the Federal Circuit’s handling of the damages award issue in Lucent Technologies case was being watched very carefully.
Peter Zura quotes remarks from Judge Michel. In one part Michel says:
I’ve been on the court for twenty years and eight months, and I cannot ever remember seeing a single patent, I’m sure they’re out there, but I can’t remember seeing one where every single claim was invalid. I’ve seen innumerable patents where some of the broader claims either were indefinitely broader or were damn close, but in all of those cases, the narrower claims seemed to me equally clearly to be plainly valid. So what we really have is a problem of some over-broad claims getting through the system, slipping through the sieve that in the ideal world would catch them.