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Posts Tagged: "todd dickinson"

Solicitor General Recommends Against Cert in Vanda, Perhaps Bolstering Athena’s Bid for Review

The United States Office of the Solicitor General has filed its brief in response to the Supreme Court’s March request for views in Hikma Pharmaceuticals v. Vanda Pharmaceuticals. The December 6 brief says that the Federal Circuit correctly held the relevant claims of Vanda’s patent-in-suit eligible, and that the case “is not an optimal vehicle for bringing greater clarity” on the topic of Section 101 law since the CAFC arrived at the correct result. Instead, the High Court should grant certiorari in a case like Athena Diagnostics v. Mayo Collaborative Services, in which the order denying en banc rehearing “was accompanied by multiple separate opinions articulating different understandings of Mayo and seeking clarification from this Court.”

Rest in Peace Friend: Remembering Donald Dunner

It is with great sadness that I write today on the occasion of the passing of a true legend in the patent world. Donald Dunner, a partner in Finnegan, Henderson, Farabow, Garrett & Dunner, LLP in Washington, D.C., passed away earlier today. “Don was a great lawyer and a wonderful man. He also gave enormously of himself, and his time, to our profession and its organizations,” said Todd Dickinson, former Director of the USPTO and current Senior Counsel at Polsinelli.  “It was a genuine privilege to work with him on many issues and to count him as a friend.” Indeed, aside from the many legal accolades Dunner so rightfully earned during his lifetime, he was as good and nice a person as he was an excellent attorney. Perhaps that shouldn’t be remarkable, but Dunner always had a grace and elegance that set him apart. He was a friend to judges and politicians, as well as a mentor to countless attorneys.

Patent Heavyweights Take Strong Stance Against ACLU Anti-Patent Reform Statements

Yesterday, 24 law professors, former Chief Judges of the Federal Circuit and former heads of the U.S. Patent and Trademark Office (USPTO) sent a letter to Senators Thom Tillis (R-NC) and Chris Coons (D-DE) and Representatives Jerrold Nadler (D-NY) and Doug Collins (R-GA) aimed at correcting what the letter characterizes as “misapprehensions of law and misleading rhetoric” on the subject of pending patent reform legislation. The letter makes specific reference to statements made by the American Civil Liberties Union (ACLU) claiming that the draft legislation to amend Section 101 of the patent law “if enacted would authorize patenting products and laws of nature, abstract ideas, and other general fields of knowledge.” The authors of yesterday’s letter, which included Retired Federal Circuit Chief Judges Randall Rader and Paul Michel and former USPTO Directors Todd Dickinson and David Kappos, called such statements “profoundly mistaken and inaccurate” and laid out in detail the specific inaccuracies. Rather than expanding the scope of 101 to abstract ideas and laws of nature, said the letter, “the proposed amendments preclude ‘implicit or judicially created exceptions to subject matter eligibility,’” and do not eliminate existing constitutional and statutory bars.

Reactions Roll in On Congress’s Proposed 101 Framework: ‘The Right Approach’ or ‘A Swing and a Miss’?

Yesterday, members of congress announced in a press release a proposed framework to fix patent eligibility law in the United States.Reactions to the framework were mixed. While many are delighted that the issue seems to be getting real attention on Capitol Hill, others are skeptical of some of the proposals. For example, Russ Slifer, former Deputy Director of the United States Patent and Trademark Office (USPTO), described the framework as “a big swing and a miss.” Having attended the meeting on the Hill yesterday in which the framework was released and discussed prior to being circulated to the public, Todd Dickinson of Polsinelli, and the former USPTO Director, said that he can understand how those seeing the proposal without having taken part in the dialogue might be alarmed. “There are still some big questions to answer, but I left the meeting encouraged by the momentum,” Dickinson told IPWatchdog. The discussion, which he described as decidedly “more lawyerly” than previous meetings on the topic, included staffers for both the House and Senate, and from both political parties, which “is a good sign that there is a continued intention to do something,” he said.

PTAB Grants Additional Briefing to Consider the Impact of USPTO’s Revised 101 Guidance

The PTAB not only assented to Mirror Imaging’s suggestion that a five-page brief be entered in advance of the hearing but added that parties may submit one brief for each of the four CBM review proceedings which were petitioned by Fidelity… This could be a pivotal moment in the history of the PTAB specifically, and the USPTO more generally. If Director Iancu can achieve the goal of having the Patent Office speak with one voice, with patent examiners and the PTAB all following the same law and guidance, he will have achieved a united Patent Office that has been elusive, but desperately needed.

Predicting Oil States after Supreme Court Oral Arguments

After oral arguments were held on Monday, November 27, 2017, I again asked a number of industry insiders what thoughts and predictions they now have after having the benefit of hearing the Q&A that took place between the Justices and the attorneys representing the petitioner, respondent and federal government. Their answers follow, and show that there is little agreement among those watching this case with respect to what the likely outcome will be.

Texas Representative Lamar Smith to Retire from Congress

Longtime Texas Representative Lamar Smith (R-TX), chairman of the House Committee on Science, Space, & Technology, will be retiring from his duties on Capitol Hill and will not seek reelection for another term of service. Smith, a former Chairman of the House Judiciary Committee and powerful member of the Republican leadership, will leave a void. His retirement marks the end of a 30-year tenure of public service and will immediately create a leadership void on the House committee responsible for overseeing our nation’s science and space policies.

Industry Reaction to the Federal Circuit’s Decision in Aqua Products v. Matal

First-take reaction to Aqua Products v. Matal from a distinguished panel of experts. Todd Dickinson: “I don’t think that I’ve ever seen such a collection of procedural somersaults and arcane discussion masquerading as an appellate opinion. ” Russell Slifer: “it would be wise for the USPTO and the PTAB to consider limiting all Board decisions wholly to the record developed during the proceeding. Eliminate the opportunity for a panel to issue a sua sponte reason for unpatentability.” Ashley Keller: “One could be forgiven for wondering if the Republic is truly well served entrusting such a tribunal with exclusive jurisdiction over patent appeals.” John White: “This decision puts neon highlights around what is wrong with the PTAB process as it pursues the political outcome of ridding the system of ‘troublesome’, aka: ‘commercially valuable’, patents.” Plus much more.

House Republicans Propose USPTO as an Independent Agency

This afternoon the House Budget Committee released a non-binding budget blueprint titled Building a Better America: A Plan for Fiscal Responsibility. As a part of this proposed fiscal year 2018 budget the House Budget Committee is proposing that the United States Patent and Trademark Office (USPTO) be made an independent agency.

Industry Reaction to SCOTUS First Amendment Decision in Matal v. Tam

Lauren Emerson, Baker Botts, LLP: “Today’s decision, while not surprising, is momentous, as any decision striking a longstanding legislative provision based on freedom of speech would be.  From a trademark practitioner’s perspective, Matal v. Tam is also remarkable in that it is the second decision in just over two years in which the Supreme Court specifically has taken note of the importance and value of trademark registration.   The decision has drawn additional attention as it undoubtedly marks the end of Pro-Football, Inc. (“PFI”)’s longstanding battle over its REDSKINS marks, as 2(a) will no longer bar registration of those marks either.   I have little doubt that in the weeks and months to come, we will see many new filings that will be more challenging to celebrate than Simon Tam’s hard-won victory.”

Patent Exhaustion at the Supreme Court: Industry Reaction to Impression Products v. Lexmark

Bob Stoll: ”And it is the international exhaustion holding that is particularly troubling. Sales abroad act independently from the US patent system and there is no impact from the US patent system on those sales. Yet in this decision, the Supreme Court says that the foreign sale now diminishes patent rights in the US. All sorts of goods, including life-saving pharmaceuticals, are sold at lower prices in poor nations. This decision will encourage powerful foreign groups to gather products up and send them back to the US to get the higher prices. Or, companies will not be able to lower prices and sell their products in those countries. Both the poor in distant lands and the innovators in the US will suffer.”

Industry reaction to SCOTUS patent venue decision in TC Heartland v. Kraft Food Group

What follows is reaction from a distinguished panel of industry insiders who have been following this case. Each have offered their own instant analysis, several pointing out that important questions remain about what this Supreme Court decision will mean for the many thousands of patent cases already filed, many that are now in inappropriate venues. It is probably fair to say that the ruling did not surprise most of our panel, although several point to the Supreme Court’s decision as more in a decade-plus line of cases that have continually eroded the rights of patent owners.

America’s Patent System: Mediocre and stabilized in a terrible space

“The results from the Patent Trial and Appeal Board reflect the procedures it applies, and in my judgment the procedures are wildly off base,” Judge Michel explained… “We’ve had PTAB final results… whatever the intentions were we don’t have to speculate… we have ample evidence of how it worked in practice. We know it doesn’t work satisfactorily.” *** “I don’t think things are really getting much better,” Kappos said. “We are in what I refer to as the leaky life raft.” When you are stranded and a leaky life raft comes along it looks great, but it doesn’t change the fact that it is still a leaky life raft. “The best you can say about 101 is that it has stabilized in a terrible space.”

Review of USPTO should start at the top, not with examiners

In an article published on April 23, 2017, Gene Quinn wrote about President Trump’s workforce reduction plan and his proposal for what it should mean for the United States Patent and Trademark Office. I agree with many of those proposals for reducing the size of the USPTO in accordance with the mandate set forth by President Trump, but believe that concentrating on a reduction in the number of patent examiners is not the only or necessarily the best approach… Review of USPTO middle and upper level management to determine who assigns junior, senior, primary and supervisory patent examiners to specific art units and reassignment of Office personnel is necessary.

The Uncertain Status of Michelle Lee Wounds the Patent System, Causes Political Anxiety

Going to DEFCON 1 has no doubt begun, and will only continue, as those who are opposed to Lee staying continue to publicly explain why she must go. As this story continues to drag out there will be more of this, and if she is nominated to serve as Director those that oppose her will be extremely well organized and will mount a significant challenge to her confirmation. The groundwork is already being laid. It could get very ugly I’m afraid, which would only divide the industry and seriously wound whoever is ultimately given the job.