You can see information here.
Ah, teenagers. The story is here.
I’m doing some work for the Georgia judiciary’s CLE, and am putting together various materials. Below is a draft table reflecting the current state of the law on whether (a) a judge can use Facebook; (b) if so, can he be friends with any (if he does, he must disclose or recuse; (c) can he be friends with those who will appear regularly before him (if so, he must disclose or recuse. The chart reflects disagreement; what is truly fascinating are the rationales and the limitations, which I’m still digesting…
|Proper to use||Friend any lawyers (or recuse if judge does)||Friend if judge knows lawyer likely to appear?||Notes|
|NY||X||X||X||Judge may need to disclose relationship and recuse if it’s a close social relationship.|
|SC||X||X||X||Warns not to discuss anything related to judge’s position.|
|FL||X||X||X||Putting a ‘disclaimer’ on the page that ‘friend’ doesn’t mean ‘friend.’ However, a judge may belong to a non-legal group’s Facebook page of an organization (hobby, e.g.) that lawyers who appear before him participate in. Further, a candidate may friend lawyers who, if the person is elected, will appear before him.|
|KY||X||X||X||Warns use is “fraught with peril.”|
|CA||X||X||X||Imposes various limitations|
|OH||X||X||X||Judge must be constantly vigilant|
|OK||X||X||X||Fraught with peril.|
|TN||X||Judges must be constantly aware of ethics issues.|
|ABA||X||X||X||Must carefully evaluate whether disclosure required, or recusal.|
|CT||X||X||X||Gives 11 limitations on use.|
 N.Y. Op. 08-176 (Jan. 29, 2009).
 S.C. Advisory Comm. on Judicial Conduct Op. No. 17-2009 (Oct. 2009).
 Fl. S. Ct. Judicial Eth. Advisory Comm. Op. No. 2009-20 (Nov. 17, 2009). See also Fl. S. Ct. Judicial Eth. Advisory Comm. Op. No. 2012-12 (May 9, 2012).
 Fl. S. Ct. Judicial Eth. Advisory Comm. Op. No. 2010-06 (March 26, 2010).
 Fl. S. Ct. Judicial Eth. Advisory Comm. Op. No. 2010-06 (March 26, 2010).
 Fl. S. Ct. Judicial Eth. Advisory Comm. Op. No. 2010-05 (March 19, 2010). For restrictions on campaigns, see Fl. S. Ct. Judicial Eth. Advisory Comm. Op. No. 2010-28 (July 23, 2010).
 K.Y. Formal Jud. Ethics Op. No. JE-119 (Jan. 20, 2010).
 Cal. Judges Ass’n Jud. Ethics Comm. Op. No. 66 (Nov. 23, 2010).
 S.Ct. Ohio Bd. of Comm’rs on Grievances & Disc. Op. No. 2010-7 (Dec. 3, 2010).
 Ok. Jud. Eth. Advisory Panel Jud. Eth. Op. 2011-3 (July 6, 2011).
 Mass. Jud. Eth. Op. No. 2011-6 (Dec. 28, 2011).
 Tenn. Jud. Eth. Comm. Advisory Op. No. 12-01 (Oct. 23, 2012).
 ABA Formal Op. No. 462 (Feb. 21, 2013).
 Conn. Comm. on Jud. Ethics Informal Op. No. 2013-06 (March 22, 2013).
There has to be more to this dispute.
This is from a declaration I filed in a patent case.
I. Because Section 101 is not “specified” as a “condition for patentability,” and, further, is not a condition for patentability, a “violation” of Section 101 may not be raised in a covered business method proceeding.
The starting point of my analysis is a consideration of the statutory limitation on grounds that can be raised in a CBM proceeding. As part of a limited transitional program, Congress expressly and plainly limited the grounds that can be asserted in a CBM proceeding to a small subset of those than those that can be raised in patent infringement suits. Specifically, although 35 U.S.C. § 282 lists defenses in patent suits, under the AIA in CBM proceedings only the defenses listed in subsections (b)(2) and (b)(3) can be raised. 37 C.F.R. § 42.304. It is clear that subsection (b)(3) does not cover Section 101, since it cites only to sections 112 and 251.
As a consequence, the only potential basis for Section 101 to be a defense – and therefore a proper basis for CBM Review – is if it is within subsection (b)(2), which states: “(2) Invalidity of the patent or any claim in suit on any ground specified in part II [of Title 35] as a condition for patentability.” 35 U.S.C. § 282(b)(2).
Unless Section 101 is “specified” in “part II” as a “condition for patentability,” it is not a proper basis for instituting a CBM proceeding. Sections 100 to 212 are in part II of the Patent Act. Thus, Section 101 is in part II. However, of those one hundred and twelve separate sections, two are “specified” as “conditions for patentability” – sections 102 and 103. Their titles state:
102. Conditions for patentability; novelty.
103. Conditions for patentability; non-obviousness subject matter.
Thus, plainly sections 102 and 103 each is “specified” as a “condition for patentability.” Just as plainly, Section 101 is not “specified” as a “condition for patentability:”
101. Inventions patentable.
In my opinion, the words “specified” as “a condition for patentability” in subsection 282(b)(2) point to only two sections of the one hundred and twelve sections in part two: sections 102 and 103. Congress knew how to specify a condition for patentability by putting the words “condition for patentability” in the title: Section 101 is not specified as a condition for patentability. Any other reading of subsection 282(b)(2) renders the word “specified” superfluous, and it also renders the phrase “conditions for patentability” superfluous. Either result violates a basic tenet of statutory interpretation. Just as it is improper to read “in part II” out, it is improper to read these other express limitations out of the statute.
Even putting aside the fact that only two statutes in part II are specified as “conditions for patentability,” and assuming courts are free to allow defenses to be raised under subsection 282(b)(2) even though they are not specified as “conditions for patentability,” it is clear that, in substance, Section 101 is not a “condition.”
First, reading the statute as a whole (which proper analysis requires), there is no doubt that Congress knew how to write a “condition for patentability.” In substance, sections 102 and 103 are express conditions for patentability. Section 102 begins, “A person shall be entitled to a patent unless . . . .” Section 103 states that “a patent for an invention may not be obtained . . . if the differences” would have been obvious at the time of the invention. Section 102 conditions patentability on novelty; section 103 conditions patentability on non-obviousness.
In stark contrast, Section 101 permissively states that “[w]hoever invents or discovers any new and useful process . . . or any new and useful improvement thereof, may obtain a patent therefor,” but doing so is “subject to the conditions and requirements of this title.” Thus, Section 101 grants permission to an inventor to apply for a patent, subjecting issuance to the conditions and requirements of the title. Further, Section 101 does not limit the person’s entitlement to a patent, unlike Section 102 and 103. It is in my opinion that Section 101 does not “condition” patentability on the invention falling within Section 101: if Congress had wanted to condition patentability on Section 101, it perhaps could have done so, but it plainly did not.
Further, the same legislation that codified the transitional CBM proceeding expressly describes Section 101, not as providing a condition for patentability, but as merely setting forth “categories of patent-eligible subject matter.” AIA § 18(e). Consistent with this, Congress authorized the PTO to rely on certain prior art to invalidate a claim under sections 102 and 103, AIA § 18(c), but the statute never mentions Section 101 as a basis for invalidity.
For these reasons, it is in my opinion clear that, although it is in part II of the Patent Act, Section 101 is not specified as a “condition for patentability” and it is in substance not a condition. Consequently, it is not a ground for review in the CBM proceeding sought by defendant herein.
In my opinion, the clarity of the text ends the inquiry. The text of the statute is not ambiguous. Nor is it absurd to conclude that Congress chose not to make “ineligible subject matter” a basis for CBM: indeed, given the Congressional purpose of speedy review of covered business method patents, a Section 101 inquiry would bog down the PTO in the myriad factual issues underlying the inquiry – many of which involve facts external to the PTO, such as whether the patent “preempts” other methods (i.e., whether there are non-infringing alternatives), what was “routine” or “conventional” in the art, and other facts not likely to be shown entirely by prior art. Omitting Section 101 is far from absurd but instead matches the purpose and intent of Congress to create a speedy, certain proceeding. See generally, Ultramercial, LLC v. Hulu, LLC, 772 F.3d 1335 (Fed. Cir. 2013) (identifying some of the factual inquiries inherent in the question of eligible subject matter).
Even assuming, nonetheless, that it is proper to look beyond the text, in my opinion it is proper to look to the purpose of the statute and legislative intent. Both confirm the plain meaning of the statute.
The purpose of the statute confirms that the CBM procedure was adopted to address shortcomings with the PTO’s ability in the late 1990’s to find prior art, and that was Congress’s intent. The House report makes clear that the purpose was to deal with the perception that in the late 1990’s, the PTO had not found the best prior art to apply under sections 102 and 103:
A number of patent observers believe the issuance of poor business-method patents during the late 1990’s through the early 2000’s led to the patent ‘‘troll’’ lawsuits that compelled the Committee to launch the patent reform project 6 years ago. At the time, the USPTO lacked a sufficient number of examiners with expertise in the relevant art area. Compounding this problem, there was a dearth of available prior art to assist examiners as they reviewed business method applications. Critics also note that most countries do not grant patents for business methods.
The Act responds to the problem by creating a transitional program 1 year after enactment of the bill to implement a provisional post-grant proceeding for review of the validity of any business method patent. In contrast to the era of the late 1990’s-early 2000’s, examiners will review the best prior art available….
H. Rep. 112-98, at p. 54 (June 1, 2011) (emphases added). Thus, the committee report shows that the purpose of the amendments is consistent with the text: to allow those charged within infringement to show that the invention was not new or would have been obvious in light of “the best prior art available.” The report emphasized the lack of “a sufficient number of examiners with expertise in the relevant art area.” Nothing in the House report mentions the failure to recognize “abstract ideas” or the failure to properly apply Section 101. Further, it is absurd to suggest that in the late 1990s lack of access to prior art or lack of sufficient examiners with familiarity with prior art had any impact on the ability to determine what is a “law of nature,” or “abstract idea,” or the like. If anything, this shows that Congress enacted the CBM proceeding for the purpose of responding to the problem of difficulty in finding prior art and experts in the fields of business methods.
Beyond this, the legislative history of the AIA on this transitional program is, like almost all legislative histories, murky. I have reviewed the remarks made on the Floor of the Senate, and there is no doubt that a few members of Congress mentioned business method patents. A fair reading is that at least some members of Congress thought the source of the problem to be addressed was with “abstract” patents, while others believed the failure to consider the most pertinent prior art was the source of the problem. What controls is the language Congress enacted, not my speculation about the intent of a handful of elected representatives.
For the reasons shown above, in my view the text and committee report focus on prior art under sections 102 and 103. As enacted, in my opinion the AIA does not allow review of covered business methods for “eligible subject matter” in terms of Section 101.
II. Arguments I Considered but Found Incorrect.
I understand the PTO’s position is that Section 101 can be a basis for instituting a CBM Review. E.g., SAP Am., Inc. v. Versata Dev. Group, Inc., CBM2012-00001 (Jan. 9, 2013). Director Kappos justified the PTO’s position, not by focusing on the text, but by stating: “This interpretation is consistent with both the relevant case law and the legislative history.” The PTO in its decision in Versata relied upon the same grounds. For the following reasons, this interpretation is incorrect.
First, these authorities simply do not address the text of the statute. The statute is not ambiguous. It is not absurd. There is no reason whatsoever to move beyond the plain text.
Second, the Supreme Court case relied upon to support these views is Graham v. John Deere Co., 383 U.S. 1 (1966). That famous case about Section 103 had nothing to do with whether “eligible subject matter” was a condition for patentability, and did not decide that issue. Instead, in dicta analyzing the “condition for patentability” in Section 103, the court noted:
The Act sets out the conditions of patentability in three sections. An analysis of the structure of these three sections indicates that patentability is dependent upon three explicit conditions: novelty and utility as articulated and defined in § 101 and § 102, and nonobviousness, the new statutory formulation, as set out in § 103. The first two sections, which trace closely the 1874 codification, express the ‘new and useful’ tests which have always existed in the statutory scheme and, for our purposes here, need no clarification. The pivotal section around which the present controversy centers is § 103 . . . .
383 U.S. at 12-13. The statement actually undermines the argument that “eligible subject matter” is a condition for patentability. Graham explains that the Patent Act of 1793 had only two conditions for patentability: utility and novelty (both of which were once in the same statute, a precursor to sections 101 and 102). Id. at 10 (“Although the Patent Act was amended, revised or codified some 50 times between 1790 and 1950, Congress steered clear of a statutory set of requirements other than the bare novelty and utility tests reformulated in Jefferson’s draft of the 1793 Patent Act”). The Graham Court recognized that in 1952 Congress had added a third condition, non-obviousness. See id. at 14 (“Patentability is to depend, in addition to novelty and utility, upon the ‘non-obvious’ nature of the ‘subject matter sought to be patented’ to a person having ordinary skill in the art.’”) (quoting Section 103).
For these reasons, even if Graham is misapprehended as a definitive interpretation of Section 101, the Court’s opinion suggests that “eligible subject matter” is not a condition for patentability. If Graham stated that utility, novelty, and non-obviousness were conditions for patentability, then the Court’s statement that there are “three conditions” means “eligible subject matter” is not one: if “eligible subject matter” were also a condition for patentability, then there would be four, not three, conditions.
I have also seen others avoid the text but instead cite to dicta in Dealertrack, Inc. v. Huber, 674 F.3d 1315 (Fed. Cir. 2012) and to dicta in a footnote in Aristrocrat Techs., Austl. PTY LTd. v. Int’l Game Tech., 543 F.3d 657, 661 (Fed. Cir. 2008). Neither case decided whether Section 101 was a condition for patentability. Although the merits of a Section 101 issue was decided in Dealertrack, the patentee did not contend that Section 101 was not a statutory defense, and the court did not decide that issue. Further, dicta in both cases traces directly back to the dicta from Graham. But loose language can be found in other cases saying exactly the opposite. For example, the Federal Circuit has stated: “The two sections of part II that Congress has denominated ‘conditions of patentability’ are § 102 . . . and § 103 . . . .” Myspace, Inc. v. GraphOn Corp., 672 F.3d 1250, 1260-61 (Fed. Cir. 2012). The Supreme Court made essentially the same observation in Diamond v. Diehr, 450 U.S. 175, 190-91 (1981).
The important fact to me is that none of these cases parse the statutory text, or just examine the purpose and legislative history of the AIA discussed here. Ignoring the actual text in favor of what courts have said a statute says is obviously incorrect. In that regard, the Supreme Court has overridden judicial interpretations of statutes that failed to adhere to the text, and has done so even after decades of having lower courts adhere to those incorrect constructions. See Central Bank of Denver v. First Interstate Bank of Denver, 511 U.S. 164, 177 & 191 (1994) (overruling six decades of case law implying a cause of action), superseded on other grounds by 15 U.S.C. § 78(t)(e). Whatever a court says a statute says, the Constitution makes paramount what the enacted text actually says.
I have also considered whether this analysis improperly relies upon titles to interpret the text. I agree it is generally improper to use the title to interpret text, at least where the title contradicts or is inconsistent with the substantive text. But that principle has no application here: Congress in the text of subsection 282(b)(2) limited the grounds upon which a CBM proceeding may be based to those “specified” in “part II” as “conditions for patentability.” Thus, the statutory text of Section 282 says to look for things “specified” in “part II” as “conditions for patentability.” Consequently, I am not using the title of any statute to interpret the meaning of Section 101: I am applying the plain text of subsection 282(b)(2). I am not using the title to interpret the text with respect to either “specified” as a “condition for patentability” just as I am not with respect to the statute’s use of “specified” in “part II.” Further, as shown above, I use only the text of the statutes to conclude that Sections 102 and 103 are conditions, but Section 101 is not. Reading those three statutes in pari materia (together), it is clear sections 102 and 103 are conditions, but Section 101 is not. The titles confirm the interpretation of the text, but they are not the source of it.
I have also considered other aspects of the legislative history. For example, then-Director Kappos observed: “a key House Committee Report states that ‘the post-grant review proceeding permits a challenge on any ground related to invalidity under section 282.’ H.R. Rep. No.112-98, at 47 (2011).” Yet, it is undeniable that the text of the adopted statute points to only two subsections of Section 282, and so this sentence from that report flatly contradicts the enacted statute. A sentence in a committee report that directly contradicts the plain language does not control. As with most bills, the legislative history of the AIA contains many statements that are not the law, and a few that contradict the statute.
Others have pointed to this statement from a senator from Arizona, Senator Kyl: “section 101 invention issues” were among those “that can be raised in post-grant review.” 157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011). Relying on this statement for the proposition that eligible subject matter is covered by the text is doubly problematic. Foremost, “section 101 invention issues” is not in the enacted text. Further, the Supreme Court has long and repeatedly rejected relying upon one legislator’s statement as having been presented to Congress and enacted into federal law. Doing so jeopardizes the Constitutional requirements of enactment and presentment. This is especially true where, as here, that statement contradicts the plain text as well as other more weighty evidence of legislative intent, coming in the form of Senate reports from the AIA, Congressional reports on the 1952 Act, and Federico’s commentary, discussed above. Those sources – which, if entitled to any weight, are entitled to more weight than one Senator’s floor statement – contradict Senator Kyl’s subjective interpretation of the statute. Again, however, I believe none of this matters here.
To sum up, in my opinion dicta in cases does not control. Dicta in cases that do not analyze the statutory text do not control. A committee report that flatly contradicts the enacted text does not control. And one Senator’s opinion is not enacted statutory text.
 The Supreme Court has cautioned against giving weight even to committee reports, admonishing courts that “judicial reliance on legislative materials like committee reports, which are not themselves subject to the requirements of Article I [of the U.S. Constitution], may give unrepresentative committee members – or, worse yet, unelected staffers and lobbyists – both the power and the incentive to attempt strategic manipulations of legislative history to secure results they were unable to achieve through the statutory text.” ExxonMobil Corp. v. Allapattah Serv., Inc., 545 U.S. 546, 568 (2005). Here, the committee report simply confirms the plain text; it is not being used to interpret the text.
 As explained above, courts view legislative history, particularly more modern legislative history such that accompanying the AIA, with skepticism. Thus, I only note that the Senate report from 1952 and persuasive commentary by P.J. Federico confirm the plain meaning. First, both reports from 1952 Act state: “Section 101 sets forth the subject matter that can be patented, ‘subject to the conditions and requirements of this title.’ The conditions under which a patent may be obtained follow, and section 102 covers the conditions relating to novelty.” H. Rep. 1923, S. Rep. 1979 (82d Cong. 2d Session) (emphasis added). It is a perversion of the English language to read “the conditions under which a patent may be obtained follow” Section 101, but nonetheless in Section 101. Second and consistent with the plain text and these reports, Federico wrote that Section 4886 – which Congress in 1952 split up into what became sections 101, 102, and (in a sense at least) 103 – had “specified the subject matter for which a patent could be obtained and recited conditions for patentability. In the new code, this section has been divided into two sections, section 101 relating to the subject matter for which a patent may be obtained, and section 102 which defines statutory novelty and states other conditions for patentability.” P.J. Federico, Commentary on the New Patent Act (emphasis added) (available at http://ipmall.info/hosted_resources/lipa/patents/federico-commentary.asp). Thus, as a principal architect of the act, Federico recognized that while Section 4886 had both “identified the subject matter for which a patent could be obtained,” and “recited conditions for patentability,” under the 1952 Act “section 101 relat[ed] to the subject matter for which a patent may be obtained” but “section 102 defines novelty and states other conditions for patentability [e.g., statutory bars to patentability].” Id. Further, Federico’s description is consistent with the reviser’s note to the 1952 act, which stated that the “existing statute is split into two sections, section 101 relating to the subject matter for which patents may be obtained, and section 102 defining statutory novelty and stating other conditions of patentability.”
Okay, that’s true but… you’ll have to read here to see if he was upset about patent fees or something else.
Dennis has a great summary on the main page. We had a debate here a while back where my view was the First Amendment was irrelevant. I think the Supremes agree:
MR. PHILLIPS: Well, I have no doubt that Congress could well, I’m not sure about in all cases.
JUSTICE SCALIA: I mean, if it can do that, there’s certainly no First Amendment problem.
MR. PHILLIPS: Well, I’m not sure I concede that in all cases. I do think in the run of the mill cases, but when you’re talking about a situation where the assertion is that the conduct of the litigation, the bringing of the litigation itself is inappropriate
JUSTICE SCALIA: That’s an English rule. It used to be our rule. I don’t see how you can possibly say that it’s unconstitutional to make the loser pay.
JUSTICE KENNEDY: This is not your best argument. (Laughter.)
MR. PHILLIPS: It is not my best argument, I appreciate that.
I’m sure Dennis will do his usual magic, but Cyberphone Sys., LLC v. CNN Interactive (Fed. Cir. Feb. 26, 2014) is a prime example of the silliness of this judicial activism. The case is available here.
Here is the claim:
A method, comprising:
obtaining data transaction information en- tered on a telephone from a single trans- mission from said telephone;
forming a plurality of different exploded data transactions for the single transmission, said plurality of different exploded data transaction[s] indicative of a single data transaction, each of said exploded data transactions having different data that is intended for a different destination that is included as part of the exploded data transactions, and each of said exploded data transactions formed based on said data transaction information from said single transmission, so that different data from the single data transmission is separated and sent to different destinations; and
sending said different exploded data transac- tions over a channel to said different desti- nations, all based on said data transaction information entered in said single trans- mission.
What’s my gripe? First, the court says Section 101 “impliedly bars” certain subject matter. I won’t bore you by repeating the post below about the plain language and legislative history of that section, which shows no such language or intent.
More importantly, because the method claim — which expressly recites physical objects — “involves an abstract idea,” the court says section 101 is implicated. The “abstract idea” is “using categories to organize, store, and transmit information.”
Okay… but someone identify for me a method claim that does not “involve” an abstract idea (or mental step or natural phenom or natural law or…).
Now, because the claim “involves” an “abstract idea,” the court says that it’s not enough that this abstract idea can’t be performed by a human being. Instead, the court concludes that the claim covers the practical idea itself even though the claim is limited to organizing data and so on using telephones. Why? In part because you can use pretty much any telephone.
Okay… so what method claim is eligible? If it “involves” an abstract idea (whatever that is), and uses “conventional” things, nope. Even if it changes the world… not eligible.
This sort of “reasoning” is not very helpful.
Blogged below, the OED in recent years has reversed the position it took in 1985 about the scope of its rules, emphasizing that, now, they apply to even conduct that has nothing to do with practice before the Office. Let me parse through some of the issues this creates, and I no doubt will do more later.
The first one is a due process issue. A lawyer should be on notice that the USPTO rules apply to his conduct, no matter what. Given the adoption of Section 10.1 (discussed in the earlier post), and repeated formal responses during the notice & comment period in adopting the 1985 rules, that notice seems lacking. Statements by the OED director in speeches probably aren’t enough, I’d say.
The due process issues are much, much deeper, however. A recent case helps explain why. The USPTO, like (I think) every state, allows for “reciprocal discipline.” This means that if, say, Texas brings a disciplinary case against me, and I’m found guilty (or agree to guilt), the USPTO could (if I were registered, but I’m not) discipline me, too. I could avoid reciprocal discipline only by a sticking too a few very narrow paths above the reciprocal discipline chasm. See Selling v. Radford, 243 U.S. 46 (1971); 37 C.F.R. 11.24(d)(1).
One path requires showing that the state proceeding against me lacked due process. Matter of Brufsky, Proc. No. D2013-12 (USPTO OED Feb. 2, 2014). Among other things, due process requires that the lawyer have notice of the charge against him, have the opportunity to present evidence, testify, cross-examine witnesses, and present argument. Id.
Showing a lack of due process is a pretty tall order where the state has good attorney-disciplinary procedures in place and follows them. The lawyer in Brufsky tried and failed.
Now switch things to what the OED director has said lately — that the USPTO can discipline a lawyer when the conduct has nothing to do with practice before the Office. The OED director’s slides recount a case where a lawyer got sanctioned for discovery violations and that resulted in discipline — by an agreed order — of the lawyer by the OED for violating one of its rules. See In re Hicks. Can the USPTO apply Selling to this set of facts?
I’d say no. Unfortunately, Hicks was an agreed case (because the client wanted to avoid fighting — more on that below), but the OED order reads as if fact-findings made under Rule 37 and statements made by the Federal Circuit about his brief being misleading were sufficient.
First, there was no notice (I’d say) that Hicks had notice that his conduct could subject him to anything except the sanctions specifically authorized by Rule 37 for a discovery violation. Further but in this regard, even if he was on notice that he might be disciplined, a lawyer representing a client before a tribunal (in my hypo, the court hearing the car wreck case) is, ordinarily, required to follow only the tribunal’s ethical rules. So, Hicks had notice only that he was subject to discipline for violating whatever rules that federal court had chosen. Consequently, for due process to be met, the OED would have to show that Hicks had violated a rule applicable in federal court (probably the forum state’s rules). The agreed order refers only to the USPTO Rules.
Second, so far as I’m aware a lawyer faced with a Rule 37 motion can’t take the deposition of opposing counsel or other witnesses, or cross-examine anyone. There’s usually no live hearing on a Rule 37 motion — maybe oral argument.
Third, the premise of Selling and the USPTO regulations is that a proceeding occurred where the lawyer knew that discipline was a potential remedy. That’s not often the case in Rule 37 motions.
So, just something to chew on.
Friday, speaking in San Antonio on a generalized ethics symposium, but I’m speaking about prosecution bars and the role that ethics rules should play in informing their scope. I’m betting a dollar no one will have a clue what I’m talking about.
A long, long time ago I wrote this article, Remedies of the Infringer, which analyzed whether and to what extent contribution and indemnity claims were available to a party found to have infringed a patent, trademark, or copyright. What does Akamai do to the responsibility of lawyers to think through this issue more fully? How does it impact the upcoming Supreme Court decision?
Off to Austin.
The Inn’s site is here. If you’re not familiar with Inns of Court, let alone IP Inns of Court, they’re designed to foster mentoring and professionalism. I’m a member of the Atlanta Inn, and it’s served those purposes in style.
For those of you in Ohio, I’ll be speaking at the 16th Annual Richard C. Sughrue Symposium on Intellectual Property Law and Policy on March 10 in Akron, which you can read about here.
An article is here. (Note to WSJ: I would have linked to you but… noOOoO.) I found the case, but only on Westlaw, not at the N.D. Cal’s bankruptcy site. This is a potential big monkey wrench on hiring lawyers from imploding and exploding firms…
Okay, the New York Times is copying me! Kidding, of course, but there’s an op-ed here about how professors (all of them, not law alone) write garbage that no one reads. Nicholas Kristof wrote it. In part he says:
The latest attempt by academia to wall itself off from the world came when the executive council of the prestigious International Studies Association proposed that its publication editors be barred from having personal blogs. The association might as well scream: We want our scholars to be less influential!
A related problem is that academics seeking tenure must encode their insights into turgid prose. As a double protection against public consumption, this gobbledygook is then sometimes hidden in obscure journals — or published by university presses whose reputations for soporifics keep readers at a distance.
I co-authored a piece a long time ago when I had become tenured, and my colleague was pre-tenured. We watered it down a lot due to the latter fact, but it still made some good points. The title? Why there should be fewer articles like this one. It’s here.
Instead of rooting its analysis in the text or history of Section 285, the Federal Circuit has purported to borrow the two-prong test this Court has used to determine, for purposes of the Noerr-Pennington doctrine of antitrust law, whether particular litigation is a “sham.” The Federal Circuit’s test requires (1) a rigid and demanding threshold showing that a claim was objectively without justification; (2) independent evidence of the plaintiff ’s subjective state of mind in bringing the baseless claim; and (3) proof of these elements by “clear and convincing evidence.” These requirements have diminished Section 285’s effective- ness as a tool to discourage abusive patent litigation and mitigate injustice suffered by prevailing parties in particular cases. This Court should reject the Federal Circuit’s analysis, make clear that district courts have broad discretion to award fees in exceptional cases in accordance with equitable principles, and vacate the judgment below.
Full brief is here. Reads like my blog post, below, on this… and Chief’s recent concurrence (also below).
I need to digest this further, but I think I agree with the law profs. Among the change are, as you know, to eliminate the use of the simple forms (including patent infringement), to eliminate the discretion of a judge to allow discovery into matters that are relevant to the subject matter, but not to a claim or defense (which has huge repercussions given the CAFC’s holding (wrong, imho) that FRCP 9(b) applies to inequitable conduct claims, narrow the scope of discovery generally and with respect to specific forms, and more.
The law profs’ letter is here.
I’ve not been heavily involved in discovery in a long time, but apart from ESI issues, troll issues, and a few odd things, haven’t heard a whole lot of carping…
H and W are married. W invents something, and gets a patent. They divorce. W sues accused infringer on the patent. In response, accused infringer takes a license from H for a buck-fifty. Result?
From what I’ve seen over the years, a patent practitioner would say, “the invention is entirely W’s.” Also from what I’ve seen over the years, a divorce attorney in a community property state would say exactly the opposite. (Washington state has (or at least had) some even more interesting statutes about ownership of stuff developed by couples in business together.)
Y’all have fun with this draft article on an issue I should publish on but haven’t gotten around to that relates to competency in prosecution. Somehow, someway, we all think W should own all of the invention, but I’m not sure a state court would say so….
The article by folks at Burns & Levinson is here. It’s short, and the key takeaway is: ”it behooves in-house counsel to let their business clients know that if they are considering relinquishing control of the company, they likely will lose the right to keep communications with in-house or outside counsel confidential unless they contract to retain that right in the transaction documents.”
Back in 1985, when the PTO was for the first time going to adopt ethics rules specific to prosecution, a lot of people wrote comments concerned that the PTO was going to try to regulate practice beyond that before the Office. In response, the PTO did several things, all of which made it clear that it was not seeking to regulate practice not before the Office and to eliminate any doubt to the contrary.
First, it adopted 37 CFR 10.1. In part, that provision states: “This part governs solely the practice of patent, trademark, and other law before the Patent and Trademark Office.”
Second, in response to concerns that it was trying to regulate conduct not before the Office it said (several times, but here are two):
- “The PTO’s intent to regulate only conduct related or relevant to practice before the PTO.”
- “The preamble of § 10.1 indicates that Subpart 10 governs solely the practice of patent, trademark, and other law before the PTO.”
Third, in response to (many, many) comments saying “you should put ‘with respect to practice before the Office’ in specific rules,” that the PTO didn’t need to do so in light of its addition of 10.1.
So, it was clear that the PTO did not intend to regulate, and was not intending to regulate, conduct not before the Office. The PTO made that abundantly clear (I could put up a string cite of similar quotes from the notice & comment to the 1985 rules’ adoption.)
In recent speeches by OED Director Covey, he took this position: ”Practitioners are subject to discipline for not complying with USPTO regulations, regardless of whether their conduct was related to practice before the Office.” (Copies of these slides are here.)
I know that the OED has taken an extremely broad view of its jurisdiction. The slides themselves point to some cases. (Note: I’m not talking about reciprocal discipline — e.g., Texas disbars me; the PTO can, too. I’m talking about a practitioner who does something in federal court, say, and he gets sanctioned; the PTO can discipline that lawyer for that. This has zero to do with reciprocal discipline and the protections afforded by states in disciplinary proceedings.)
Someone help me reconcile these two positions. No statute changed between 1985 and 2014, so you don’t get an easy answer.
It is here. Having been at the CAFC clerking for Chief Judge Rader when this was decided, I found this very interesting. I’m not sure what I think of relying upon the idea/expression dichotomy…
There’s an article here, and it refers to an article in the Columbia Science & Tech L.J., here, about perceived abuse. The article cites to a survey it conducted that shows 25% of lawyers know of abuse.
The other side of the coin.
On a larger scale, it is quite odd to have the PTO saying, over and over again, that it got it wrong by issuing a patent.