Posts Tagged: "Judge S. Jay Plager"

the United States Court of Appeals for the Federal Circuit determined that the United States Federal District Court for the Southern District of California abused its discretion when it refused to award a victorious patent plaintiff a permanent injunction where the patentee directly competes with the infringer. The case is Presidio Components v. American Technical Ceramics. The opinion was authored by Chief Judge Rader and joined by Judge Plager and Judge Wallach. Perhaps this case will be a turning point, something of a Twisted Sister moment. You know — “we’re Not gonna take it, no, we ain’t gonna take it, we’re not gonna take it anymore…” I sure hope so!

Leading up to the swearing in, PTAB Vice-Chief Judge James Moore explained the need for the new Judges, as well as pointing out that the USPTO has already had 13 covered business method patent reviews and 42 inter partes reviews initiated just since they became available on September 16, 2012 in the second wave of implementation of the America Invents Act (AIA). “We have doubled our hearing review capacity,” Moore explained. He also said that the approximately 27,000 cases pending at the Board this year “was a high water mark and we will recceed from there thanks to the help of those sitting behind me,” referring to the soon to be sworn in APJs.

I have wondered out loud whether the Judges of the Federal Circuit realize that the outcome is unpredictable until the panel has been announced. It seems that at least some do. How is that defensible? How do others not on the Court not see a problem? The law needs to be certain and predictable and at the Federal Circuit far too many times it is neither. Claims construction is but one of the areas as clear as mud. The Federal Circuit was created to bring certainty to the law, but what has transpired over the course of the last 10 years or so seems to be anything but certainty and stability. For crying out loud a patent is a property right and for any property rights regime to flourish it must be stable and certain! In the words of this generation: OMG!

Whether the term “body” encompassed “multi-piece” structures became the crux of the claim construction issues in Retractable Technologies. The District Court for Eastern Texas, apparently applying the doctrine of claim differentiation, construed independent Claims 1 and 43 to cover a “body” which might be a “multi-piece” structure. Accordingly, the District Court denied post-trial motions by the alleged infringer (Becton Dickinson or “BD”) to overturn the jury verdict that BD infringed these Claims of the ‘224 patent. Judge Lourie (writing for the panel majority) reversed the District Court, ruling that the term “body” was limited to a “one-piece” structure in light of the ‘224 patent specification.

Judge Kathleen O’Malley was confirmed by the United States Senate earlier today. O’Malley’s confirmation, along with the confirmation of 18 others in recent days, is the result of a deal between Senate Democrats and Republicans that ensured passage of 19 nominations in exchange for an agreement not to move forward with other controversial nominations, including the hotly challenged nomination of Goodwin Lui, who is Associate Dean and Professor of Law at University of California Berkeley School of Law.

As a result of the useful, concrete and tangible result test and in conjunction with the disposition of the business method exception that never existed in the first place, software could come out of the closet and out into polite patent society. Gone were the days that patent attorneys would protect software by pretending that it was the hardware that presented the magic. So rather than claim a machine that accomplished a certain task patent attorneys could acknowledge that the machine is not the piece that makes things unique, but rather the software that drives the machine is the patentable innovation, of course presuming that it is new and nonobvious.

As I’ve said before, no one could rightly accuse me of being biased against patents. 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.