Happy New Year!

By Jason Rantanen

The coming year is certain to bring a host of interesting and important changes to patent law that we will continue to write about, and I wish all of Patently-O's readers a prosperous, rewarding, and enjoyable 2011.  Not to be overlooked, though, are a few events that occurred during the past few weeks:

Judge Kathleen O'Malley joins the Federal Circuit: Just a few days after the Senate confirmed her nomination, former Northern District of Ohio Judge Kathleen O'Malley was sworn in by Chief Judge Rader.  She becomes the tenth active non-senior judge on the court.  As an experienced jurist, she will likely have an immediate impact on the court's jurisprudence, although presumably she will not participate in the two currently-pending en banc appeals, TheraSense v. Becton Dickinson and Tivo v. Echostar.

Changes to Federal Rules of Appellate Procedure: On December 1, 2010, three changes to the Federal Rules of Appellate Procedure went into effect.  These changes consisted of adding a definition of the term "state" that includes the District of Columbia and United States commonwealths and territories (Fed. R. App. P. 1) and modifying several rules that referred to Federal Rule of Civil Procedure 58(a)(1).  These rules now refer to Federal Rule of Civil Procedure 58(a) (the separate document judgment rule) in its entirety.   In addition, Fed. R. App. P. 29 now requires more information about who assisted with an amicus brief, including whether a party's counsel authored the brief in whole or in part, whether a party or its counsel contributed money intended to fund preparing or submitting the brief, and the identity of any persons other than the amicus curiae, its members, or its counsel who contributed money that was intended to fund preparing or submitting the brief.  The complete list of changes is available in a letter from Jan Horbaly, the CAFC Clerk of Court.

USPTO Opens Detroit Office: As Dennis predicted earlier, on December 16, Director Kappos announced plans to open the first USPTO satellite office in Detroit, Michigan.  The office will open in 2011, and represents an effort to broaden the PTO's workforce through geographic diversity.  Depending on the success of the Detroit office, the PTO will consider opening additional satellite offices. 

Patent Pilot Program for U.S. District Courts: On December 17, Congress gave its final stamp of approval to H.R. 628, which establishes a pilot program to encourage the enhancement of patent case expertise among district court judges.  Under the Act, at least six district courts will be designated for the program.  Judges in these districts will be able to request to hear cases involving patent issues, although patent cases will still be randomly assigned regardless of whether a judge is so designated.  However, non-designated judges may decline to accept a patent case if it is assigned to them, and should this occur the case will be re-assigned to a designated judge.  In effect, this program will hopefully provide a slight push towards some judges hearing more patent cases than others (and thus developing more expertise in that area), but stops well short of creating a specialized court of trial judges who hear only patent cases (and, unlike the original bill, in the final version there is no money appropriated for specialized training or clerks for designated judges).  The Act also requires periodic reporting of comparison data between designated judges and non-designated judges on issues such as their respective reversal rates by the CAFC.

17 thoughts on “Happy New Year!

  1. Ohh lookie, another windmill.

    Maybe we needs the AI brothers to come in again and esplain to Malcolm that Bilski said that business method patents are fully legal (categorically speakin – course, actual patents be dependen on actual details).

    Can we get a Bilski 86 !!! exclamation?!

  2. Promote the progress!!!

    Exactly. Without some form of patent protection, how can those banks be assured of making a profit on their fees?

    And how can they compete in the marketplace if their competitors can charge the exact same fees?

  3. In other news

    link to online.wsj.com

    As regulation curtailing financial institutions from levying certain charges on consumers has mounted over the past year, banks have had to dream up new fees to replace those now trimmed by laws. Credit-card users have experienced new inactivity fees and foreign-exchange charges, while checking accounts have gotten hit with new monthly maintenance fees.

    Banks are considering additional fees on credit cards and checking accounts. But they also are looking at new ways to make money on cash machines and especially debit cards as regulators pinch the cards’ conventional revenue streams.

    Promote the progress!!! I can’t wait to see the patents on these genius revenue-generating methods. They’ll look just like Bilski except they’ll recite some transforming step of printing out a transaction log. You can’t stop these brilliant inventors!!!!!

  4. It seems Congress might finally be *starting* to take patent law somewhat seriously. Even more encouraging recent IP news: the formation of a congressional IP subcommittee. Though it’s questionable as to whether this will lead to much-needed patent reform, nevertheless the Obama administration’s continued efforts on behalf of intellectual property are very much welcomed.

  5. >>I declare 2011 the Year of the Mental Step.

    >>Posted by: Malcolm Mooney

    I declare 2011 the Year of the Blogging Dopes.

  6. I haven’t been able to find a readily-available listing of en banc Federal Circuit cases either. That’s something that would be useful to compile.

    As I understand it, senior judges that participated in the original panel decision may elect to sit on the court en banc for that rehearing. Thus, it seems to be a matter of preference – I don’t have any hard facts as to why Judge Mayer decided not to sit, so I’d just be speculating as to the reasons. The same goes for Judge Friedman, who was eligible to sit on the TheraSense rehearing panel, but according to the transcript chose not to.

  7. I thought that the “old” was to be “out” before the new year…

    …not cobbled together for a new post like this one.

  8. “Given your comment, though, it is probably worthwhile to look back at past en banc opinions that were argued before but released after a new judge joined the court.”

    Is there any easy way of finding these past en banc opinions? The last new judge was Moore in 2006 and there were no rehearings en banc that year at the CAFC

    (link to cafc.uscourts.gov)

    The judge added before her was Prost in 2001 and finding the en banc cases back then is difficult.

    Is the judicial economy argument the reason Judge Mayer didn’t join the TiVo en banc. I can’t seem to find a good reason for his absence. Again this a case where the rules seem to permit him to vote but it appears that he will not.

    Thanks.

  9. Eric – While the rules seem to permit her to vote (or at least I haven’t seen anything in them that prohibits her from voting), oral argument on the appeals took place two months ago, and opinion drafting is probably well already underway. So as a matter of judcial economy, it wouldn’t make sense. Given your comment, though, it is probably worthwhile to look back at past en banc opinions that were argued before but released after a new judge joined the court.

  10. Regarding O’Malley why do you say “presumably she will not participate in the two currently-pending en banc appeals, TheraSense v. Becton Dickinson and Tivo v. Echostar”? The CAFC rules seem to allow her vote on the briefs in a pending en banc case.

    Thanks.

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