“Thorough review of each topic and each CAFC decision. Good discussions among speakers and attendees. Very knowledgeable speakers.”
Fred Burkhart: Gardner, Linn Burkhart & Flory, Federal Circuit Law (2010-2012) October 2012 attendee.
"I've been attending this course, periodically, over a number of years and it continues to get better and better." -- Steven Fontana: Fontana Int'l., Federal Circuit Law (2007-2009) October 2009 attendee.
Please note that the faculty members listed for this course are subject to change prior to the actual course date.
This one-of-a-kind faculty, all past Law Clerks and Technical Advisors spanning the court's history, provide matchless inside perspective and candid, unequaled insight to Federal Circuit law - past, present and future. This now becomes particularly unique given the America Invents Act of 2011 (AIA), and the lecturers' commentary on whether and how the AIA may affect Federal Circuit law.
Why Should You Take This Course?
Each week the Federal Circuit publishes opinions that materially “clarify” and sometimes “alter” existing practice. One cannot competently practice as a patent attorney today, in prosecution, litigation, counseling or licensing without an understanding of the Federal Circuit’s most recent opinions. The distinguished faculty of Federal Circuit Law (2011-2013) will expertly guide you through two years of relevant and up-to-the-minute cases in an interactive lecture format that encourages active attendee participation. Moreover, lecturers will discuss new cases in the context of prior cases (many outside the two-year time span), thus giving you not only “current law,” but also a perspective on how the law has changed.
American Invents Act of 2011 (AIA)
The AIA was signed into law by President Obama on September 16, 2011, and represents, by many interpretations, the most significant change to the U.S. patent system since 1952. The Act, among other things, initiates a “first-inventor-to-file system (FITF), and includes provisions on post grant review (PGR), inter-partes review (IPR), preissuance and comment, supplemental examination, a revised “grace period” and redefinition of prior art to include subject matter that is “otherwise available to the public,” expands the defense of prior commercial use, retains best mode as a disclosure requirement, but removes best mode as a ground of invalidity, and significantly alters the false marking statute. But those are just the highlights. Apart from the sweeping changes, including a rewrite of Section 102, the Act has sections that will raise questions for years to come until resolved through the courts.
Some portions of the Act became effective immediately – other portions variously become effective 1 year or 18 months after signing. In general, the FITF portions become effective for applications filed on or after March 16, 2013, and for years to come, practitioners will have to practice under parallel systems – the “old” law and the “new” law.
The lecturers will explain, as appropriate, how the results in particular cases may be affected by the AIA.
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, surprising and often startling opinions are emanating from the court. Often those opinions are at variance with established precedent, but without any admission or acknowledgement of the variance by the panel majorities despite pointed, compelling demonstrations thereof in dissents and concurrences. This course provides deep insight into the Federal Circuit’s opinions over the past two years and tells you what you need to know to continue to be an effective practitioner. As Chief Judge Rader opines, by understatement, these cases “must leave practitioners in a quandary.” Indeed! Clearly ex parte practice is not what it once was.
Perhaps indicative of the court’s “split” on claim construction, for example, is the opinion in Retractable Technologies, Inc. v. Becton, Dickinson & Co. (2011). The panel majority, lead by Judge Lourie, concluded that “body” in the claims required a one-piece body, while the dissent by Chief Judge Rader urged that the claim language and claim differentiation clearly required the conclusion that “body” was not limited to a one-piece body. A divided court declined to rehear this case en banc, yet the split in the court still percolates.
The court also continually issues panel opinions that do not necessarily overturn prior panel opinions, but significantly limit the same. An example is In re Katz Interactive Call Processing Patent Litigation (2011), that limits WMS Gaming, Inc. v. International Game Technology (1999) and Aristocrat Technologies Australia Pty Ltd v. International Game Technology (2008), in the area of means-plus-function limitations. Is Katz a "narrow exception," as characterized by a panel majority in Ergo Licensing v. CareFusion (2012), or has the court gone too far in following WMS, as Judge Newman advocated in dissent?
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, according to Chief Judge Rader, has become “opaque to the point of obscuring other areas of this court’s law.” This linking 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 Ariad Pharmaceuticals, Inc. v. Eli Lilly Co. the court en banc confirmed that there is a separate written description requirement that applies outside of the priority context—that separate and apart from whether the specification enables the claims, the specification must contain a “written description” of the invention. Nevertheless, the court remains splintered on this issue and several judges believe that the invalidation of a claim on the basis that it is broader than the invention described in the specification is inconsistent with the Federal Circuit’s rule of claim construction that embodiments from the specification should not be imported as limitations to the claims. Also, in Crown Packaging Technology, Inc. v. Ball Metal Beverage Container Corp. (2011), the court, in an opinion by District Judge Whyte, N.D. Calif., sitting by designation, and over a dissent by Circuit Judge Dyk, reversed a district court’s conclusion that the specification lacked sufficient written description support given the breadth of the claims, noting that original claims, in some instances, may provide written description support, despite statements to the contrary in Ariad. Nevertheless, Judge Moore, writing for the court in Boston Scientific Corp. v. Johnson & Johnson (2011) reiterated the “rule” from Regents of the Univ. of Cal. v. Eli Lilly & Co. (1997) that “[a] written description of an invention involving a chemical genus, like a description of a chemical species, ‘requires a precise definition, such as by structure, formula, [or] chemical name,’ of the claimed subject matter sufficient to distinguish it from other materials”
Another “hot” topic is “joint infringement.” The Federal Circuit issued its en banc decision in Akamai Technologies, Inc. v. Limelight Networks, Inc. and McKesson Technologies, Inc. v. Epic Systems Corp., but avoided answering the fundamental question. As a result, joint infringement may depend on whether a claim may avoid a conclusion that multiple entities are required to infringe if the claim simply defines the “environment” in which infringement must occur per Advanced Software Design Corp. v. Fiserv, Inc. (2011).
The Federal Circuit continues to surprise the bar in other areas as well with its statutory interpretations. For example, in August Technology Corp. v. Camtek, Ltd. (2011), the court rejected a jury instruction based on the AIPLA’s model jury instructions, and concluded that a device may be the subject of an offer for sale prior to Its “being ready for patenting,” but also concluding that there is no actual offer for sale until after conception.
Also, practitioners writing applications for computer-aided inventions must thoroughly understand the implications of cases such as Ergo Licensing v. CareFusion (2012), holding claims calling for a "programmable control means" invalid for failure to disclose a corresponding algorithm - although such devices are "off the shelf" devices. And Noah Systems v. Intuit (2012) holding claims invalid because the disclosed algorithm did not implement all claimed steps.
Litigation practitioners will be interested in In re Bill of Lading (2012), setting out the pleading requirements for direct, contributory and induced infringement.
But the pendulum swings. After the Supreme Court’s opinion in KSR International Co. v.Teleflex, Inc. (2007), seemingly rejecting at least a rigid showing of a motivation to combine reference teachings, the validity of many patents drawn to mechanical and many electrical inventions under § 103 became doubtful. However, the pendulum appears to be swinging back - Judge (now Chief Judge) Rader’s dissent in Media Technologies Licensing, LLC v. Upper Deck Co. (2010) that “[l]urking just beneath the surface of this court’s blindness to the underlying facts supporting non-obviousness is a bias against non-technical arts,” seems to have sparked (albeit not in that case) a renewed view of the requirement for motivation. Nevertheless, some panels of the Federal Circuit now permit reliance on “common sense” to find patents invalid under § 103, - and more egregiously, despite the lack of lack of any reference supporting the same. When this will end is anybody’s guess. But Chief Judge Rader’s opinion in Unigene Laboratories, Inc. v. Apotex, Inc. (2011), suggests that the court will increasingly insist on some showing of motivation, thus perhaps swinging the pendulum back pre-KSR. This course examines the Federal Circuit’s post-KSR cases in detail. Will the many areas of inequitable conduct currently in doubt be resolved by the Federal Circuit’s en banc view in Therasense? And the court’s adoption of a “but-for-plus” standard of materiality? Doubtful – but maybe. For example, how does witness credibility impact on "intent"? Compare Aventis Pharma v. Hospira (2012) with 1st Media v. Electronic Arts (2012). And what about the flood of cases held back pending the Federal Circuit’s decision in Therasense? The course will examine Therasense in detail, with suggestions on complaince with Rule 56(a). The AIA also offers “supplemental examination” which may “cure” alleged inequitable conduct. Claims of legal malpractice are increasing at an alarming rate. The Federal Circuit provided some solace in Immunocept, LLC v. Fulbright & Jaworski LLP (2007), holding that it has jurisdiction of legal malpractice claims under certain circumstances. But the Supreme Court granted cert. in Gunn v. Minton (Tex. 2011), and concluded that state courts, rather than federal courts, have primary jurisdiction in malpractice actions, even those that involve substantial questions of patent law. Nevertheless, the Federal Circuit continues to issue opinions that affect the basic practice of patent law.
The Supreme Court has also been active in developing the patent law, often rebuffing the Federal Circuit for failing to adhere to Supreme Court precedent. For example, in In re Bilski, the Federal Circuit attempted to clarify the test for determining whether a claim recites patentable subject matter under § 101 by holding that its “machine or transformation test” is the sole and exclusive inquiry. The Supreme Court promptly rejected the Federal Circuit’s machine or transformation test as the sole test for patentable subject matter, but declined to articulate a clear test to replace the Federal Circuit’s test thus leaving a vacuum for the Federal Circuit to fill. The Supreme Court also thoroughly rejected the Federal Circuit's view of § 101 in Mayo Collaborative Services v. Prometheus Labs (S.Ct. 2012), but the Federal Circuit responded in Myriad (2012) in a 106-page opinion continuing to advocate its view of § 101. These and other cases involving § 101 will be examined in detail.
For example, a panel in CyberSource Corp. v. Retail Decisions, Inc. (2011), questioned the validity of Beauregard-type claims, but as a panel opinion could not overturn Beauregard. Does that signal the demise of such claims? And the court has taken CLS Bank v. Alice Corp. (2012) en banc to again address the issue of patent eligibility. In other areas, the Federal Circuit has quashed long-standing abuses. In Uniloc USA, Inc. v. Microsoft Corp. (2011), for example, the Federal Circuit held, in the area of damages, that “as a matter of Federal Circuit law that the 25 percent rule of thumb is a fundamentally flawed tool for determining a baseline royalty rate in a hypothetical negotiation.” The 25% rule, used for more than a decade, thus disappears. Indeed, in LaserDynamics v. Quanta Computer (2012), the Federal Circuit further narrowed the entire market value rule almost to oblivion.
In yet other areas, the Federal Circuit has further “explained” and thus limited prior even en banc opinions, such as in Spectralytics, Inc. v. Cordis Corp. (2011) further explaining and limiting In re Seagate Technology, LLC, (2007) (en banc).
Those are but highlights. Federal Circuit opinions even over the brief span of two years have created law that practitioners must know – especially in light of the changing composition of the court. Additionally, although the focus is on the Federal Circuit, recent Supreme Court cases are addressed as well. For example, the Supreme Court has granted cert in Bowman v. Monsanto (2012) raising issues of infringement potentially having broad implications to the biotech community. The Supreme Court may, once again, rebuff the Federal Circuit's rationale.
Smoothing the Troubled Waters?
PRG formerly characterized this course as “Recognizing & Understanding Federal Circuit Russian Roulette.” The continually strong attendance at presentations of this Federal Circuit course suggests that the patent bar recognizes this aphorism to ring true.
In many respects, this is a user-designed dynamic course. Course evaluations are collected and analyzed to determine the topics and emphasis users desire. For the many that have attended this course punctually every two years, the curriculum, in response to user input, retains the topics you have come to expect, but has been expanded to include separate chapters and lectures on Federal Circuit en banc cases and Supreme Court cases, selected important cases that do not conveniently fit within a single topic (“crossover cases”) as well as noteworthy practice & procedure cases, noteworthy appellate practice cases, joint infringement, and selected Hatch-Waxman cases, among others – and now including the AIA.
All of 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 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.
The full substance of the course is captured in the Federal Circuit Patent Law three-volume text, which extends over 1,500 pages.