James Carmichael is a former Administrative Patent Judge on the Board of Patent Appeals and Interferences (now the Patent Trial and Appeal Board). Jim was employed by the U.S. Patent and Trademark Office (PTO) for eight years, including working in the electrical and computer division of the Board as an Examiner-in-Chief. Currently he represents inventors and patent challengers before the PTO in patent prosecution and inter partes review proceedings. Jim regularly serves as an expert witness on PTO prosecution and post-grant procedures.
Before becoming a Judge, Jim served for five years as an Associate Solicitor of the PTO. In that capacity, he represented the agency in federal court litigation and argued more than thirty cases at the U.S. Court of Appeals for the Federal Circuit. The cases Jim handled included patentability and reexamination. He was also Coordinator of attorney discipline proceedings. Jim helped develop PTO procedures relating to the duty of disclosure as well as post-grant proceedings.
Jim graduated from Yale University in 1984, and from University of Wisconsin Law School in 1987 with honors. During law school, he served as an Associate Editor of the Wisconsin Law Review.
Jim is a registered patent attorney and admitted to the bar in Washington, D.C. and California.
Oil States v Greene’s Energy, 584 U.S. ___ (2018), just decided that patents are a public right, a franchise right, akin to a right to erect a toll bridge, and not personal property (slip op. at 9). What was unfortunately never addressed in Oil States, and which the court specifically left the door open for, was that patents rights are still property rights for the purpose of Due Process–the inference being that IPRs may fail under the Due Process or Takings Clause. Indeed the court seemed to lament that Oil States did not challenge the retroactive application of IPRs and their constitutional sufficiency on a broader basis.
A casual observer may read the Aatrix dissent, or cases cited therein, to say it is improper to consider extrinsic evidence. In particular, the dissent quotes Secured Mail Sols. LLC v. Universal Wilde, Inc., 873 F.3d 905, 912 (Fed. Cir. 2017), which says “[T]his court has determined claims to be patent-ineligible at the motion to dismiss stage based on intrinsic evidence from the specification without need for ‘extraneous fact finding outside the record.’”. But Secured Mail is itself quoting In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 613–14 (Fed. Cir. 2016), where the court found it unnecessary to look outside the record because the patent itself admitted so much of the claimed invention employed well-known technology. Neither Secured Mail nor TLI explicitly prohibited a patentee from relying on extrinsic evidence, especially where the specification does not admit the technology is conventional.