New dates and locations coming soon.
If you have not been reading and closely analyzing all of the Federal Circuit's patent opinions during the past years – you may unwittingly be flying blind in some areas of your practice.
In virtually every area of patent practice listed in the course syllabus, surprising and often startling opinions are emanating from the court. And often those opinions are at variance with established precedent without any admissions of the divergence by the majorities despite pointed, compelling demonstrations thereof in dissents and concurrences. See, for example, Judge Rader’s dissent from the court’s denial of rehearing en banc in LizardTech v. Earth Resources Mapping (Jan. 5, 2006) in which he noted that the LizardTech panel opinion, delivered only one day after a different panel opinion in JVW Enterprises v. Interact Accessories, resulted in “strikingly different” results. To Judge Rader, the lack of uniform standards to apply simply invites different panels of the court to produce opinions seemingly at odds with one another. This conflict has not been resolved, and it has continued in more recent cases such as Liebel-Flarsheim Co. v. Medrad, Inc. Judge Rader opines, by understatement, that these cases “must leave practitioners in a quandary.” Indeed! Clearly ex parte practice is not what it once was.
One of the areas that harbors the most unsettling and startling developments is the court’s linking of claim construction to the written description requirement, an area that Judge Rader has opined has become “opaque to the point of obscuring other areas of this court’s law.” This has resulted in a number of seemingly inconsistent panel opinions, especially in instances where the patent-in-suit has facially broad claims, but a narrowly drafted specification. In some instances, panels have concluded that the broad claims are invalid due to an alleged lack of written description (see LizardTech). Alternatively, some panels have concluded that the claims are not as broad as written, using statements made by the patentee in the specification (see Honeywell v. ITT (2006)) or prosecution history (see Atofina v. Great Lakes Chem. (2006)) as evidence that the patentee disavowed the broader claim scope. Thus, claims themselves no longer are necessarily the measures of the scope of the invention, even original claims in a predictable technology that are free of the prior art and fully enabled and described in the specification.
From Chaos to More Chaos? Claim Construction – Several judges on the Federal Circuit have now publicly acknowledged the claim construction chaos the court has generated that has plagued the entire patent bar and the federal district court judiciary during the past decade (as has been heralded and detailed during that decade in this and parallel PRG courses). The court’s en banc opinion in Phillips (July 12, 2005), while changing the methodology for claim construction by overruling the Texas Digital “dictionary first” line of cases, did nothing to change its procedure for construing claims, de novo, as a matter of law and without deference to the trial court or jury below.
In large part, the en banc majority merely repeated well-recognized patent law principles, but did little to rein in the ability of individual panels to apply (or not) those principles to specific appeals. And while the Phillips case actually turned on the doctrine of claim differentiation, other panels of the court, both before and since Phillips, have inconsistently applied the doctrine. Judge Mayer's dissent evidenced his personal frustration that the majority of judges on the court continue with the “delusion” that claim construction is a purely legal issue, devoid of factual content.
More recently, Chief Judge Michel along with Judge Rader and others, have questioned the court’s approach. In his dissent from the court’s denial of a motion to rehear en banc the panel decision in Amgen v. Hoechst (Nov. 22, 2006), the Chief Judge listed the many problems that have “emerged under the Markman-Cybor regime” including: (1) a steadily high reversal rate on claim construction issues; (2) a lack of predictability in appellate panel opinions that “may confound trial judges and discourage settlements;” (3) a failure to appreciate the work of district judges who have heard and read all of the evidence and who have spent more time than the Federal Circuit on claim construction issues; and (4) the inundation of the court “with the minutia of construing numerous disputed claim terms in nearly every patent case.” In Amgen, the original panel majority followed the Federal Circuit’s “no deference” standard in reversing a district court’s claim construction, despite the work of that judge who conducted two separate Markman hearings, conducted two separate bench trials over 32 days, employed an MIT professor as a technical advisor and a patent attorney as a legal advisor, and generated two opinions totaling 360 pages.
But, while Chief Judge Michel concluded that “the time has come for us to re-examine Cybor’s no deference rule,” the court has done nothing to address the issue in the two years since the denial of the rehearing. Yet, as a continuing stream of appeals on claim construction issues reaches the court, panels continue to reverse district courts at an alarmingly high rate.
From Order to Chaos? – Both the Federal Circuit and the Supreme Court have been making major changes to patent law in areas that had seemingly been well-settled. On April 30, 2007, the Supreme Court handed down its long-awaited decision in KSR Int’l Co. v. Teleflex Inc. The court has added chaos to the carefully developed law of obviousness. While on one hand reiterating that the Graham analysis controlled, the court on the other hand commented that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results,” and if there is a “design need” or “market pressure” to solve a problem, and if there are a “finite number of identified, predictable solutions,” that a combination was “obvious to try” may show obviousness. The court also commented that “[n]either the enactment of §103 nor the analysis in Graham disturbed this court’s earlier instructions concerning the need for caution in granting a patent based on the combination of elements found in the prior art,” citing Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., despite the clear writings of Judge Rich, co-author of the 1952 Act, and others that enactment of §103 was intended to do precisely that. Will KSR actually change the obviousness analysis? Only subsequent Federal Circuit case law will tell. For example, after KSR, a Federal Circuit panel majority in PharmaStem Therapeutics, Inc. v. ViaCell, Inc., held, over a strenuous, lengthy dissent by Circuit Judge Newman, that two pioneer patents on early work in using stem cells to treat certain diseases, which had survived reexaminations and had been found by a jury to be valid, were nevertheless invalid according to two Federal Circuit judges as representing “good science” and “useful contributions,” but not patentability.
The Supreme Court has also caused other major changes in the law. For example, the court’s decision in eBay Inc. v. MercExchange, LLC has caused the Federal Circuit to uphold compulsory licenses to adjudged patent infringers in Paice LLC v. Toyota Motor Corp. Moreover, even though the Supreme Court did nothing in Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc., the court’s inaction has led the Federal Circuit to make major changes to its §101 jurisprudence in In re Comiskey, In re Nuijten, and In re Bilski. The Federal Circuit, too, has been unafraid to make major changes, overturning nearly 25 years of willfulness precedent in In re Seagate Technology, LLC. Only time – and subsequent Federal Circuit decisions – will tell how far the shockwaves from these decisions propagate.
Smoothing the Troubled Waters! PRG earlier characterized this course as "Recognizing & Understanding Federal Circuit Russian Roulette." The continually increasing numbers of attendees at successive presentations of this Federal Circuit course suggest that the patent bar recognizes this aphorism to ring true.
All the above represents just some of the continually breaking judicial news from the Federal Circuit that will be covered at the Federal Circuit Law course. As attested to by hundreds of past course attendees, the faculty presents just the right amount of factual and legal detail for mastering each case discussed.
Legal ethics and inequitable conduct will be presented on the second day from 3:00 to 4:00 p.m., as currently estimated.