Guest Post: The Great Haste and Less Milling of Beer v. United States

 

Guest Post: The Great Haste and Less Milling of Beer v. United States (Fed. Cir. 2010, cert. pet. pending)

By Andrew Dhuey

When patent litigators hear the term “rocket docket”, they usually think of the U.S. District Court for the Eastern District of Virginia, long-known for its dedication to accelerated justice. The term doesn’t usually call to mind the U.S. Court of Appeals for the Federal Circuit, though its docketing-to-disposition time has averaged a reasonable 9-10 months. The recent case of Beer v. United States, however, shows that it is possible to have the Federal Circuit decide your appeal on the merits and rule on your en banc hearing petition in a mere 85 days, docketing to disposition.

Beer concerns a newsworthy issue dear to the hearts of federal judges: their pay. Eight current and former federal judges seek to recover cost-of-living adjustments Congress promised federal judges in 1989, but failed to deliver in 1995-97, 1999 and 2007. While the Beer parties disagreed on whether this deprivation of COLAs was an unconstitutional diminishing of judicial pay, they all agreed that the Federal Circuit rejected this exact position in Williams v. United States (Fed. Cir. 2001). In 2002, the Supreme Court denied cert. in Williams over the dissent of Justice Breyer, joined by Justices Scalia and Kennedy.

With the issue resolved in Williams, why did these federal judges raise the same pay issue again in a 2009 U.S. Court of Federal Claims case? The answer rests not with any changes in the law, but instead with changes in the makeup of the Supreme Court. All four justices who joined the court since 2002 (Chief Justice Roberts and Justices Alito, Sotomayor and Kagan) replaced justices who voted to deny cert. in Williams. Assuming the Beer judges still have the three Williams dissenters on their side, they can win on the merits with two of the four newest justices.  

Of course, before they could even file their cert. petition, the Beer judges needed to work their way through the Claims and Federal Circuit courts. To expedite that process, the judges conceded that both the Claims court and the Federal Circuit panel were bound to follow Williams. Their purpose was to overturn Williams, which could only be done by the Federal Circuit sitting en banc, or by the Supreme Court.

On Nov. 3, 2009, thirteen days after filing their notice of appeal at the Federal Circuit, the Beer appellants filed a Petition for Initial Hearing En Banc or, in the Alternative, Motion for Summary Affirmance. Alas, the clerk’s office rejected this filing since the appellants included a copy of their trial court complaint, and that apparently is not okay. [Side note to Judge Beer, et al: none of your court clerks can hold a candle to Federal Circuit clerks when it comes to finding a way to reject a filing]. Appellants’ counsel, Christopher Landau of Kirkland & Ellis, resolved this problem the following day, and the case was then before all 12 active Federal Circuit Judges.

On Jan. 15, 2010, the court denied the petition for initial hearing en banc over the dissent of then-Chief Judge Michel, joined by Judges Lourie and Moore, and the separate dissent of Judge Newman. With that denial of the en banc petition, a three-judge panel granted the Beer appellants’ motion for summary affirmance, with a concurrence by Judge Mayer, who reiterated his previous view that Williams was wrongly decided, but that “neither Congress nor the Supreme Court has done anything in the interim that would warrant this court taking the matter up again.” The Federal Circuit had thus resolved Beer on the merits, en banc, only 85 days after docketing.  

So what, you ask? How could this possibly be of interest to you, a patent litigator? Well, you have a point – you probably won’t have occasion to stipulate at the district court or the BPIA, and on appeal, that your client is toast due to applicable, binding Federal Circuit case law. But some patent litigants are out to make a big, precedential splash (e.g. ,the ACLU in its challenges to the BRCA gene patents). Perhaps in some of these “big picture” cases, a litigant has no realistic hope on the merits, absent the overruling of a Federal Circuit panel decision. [This was not the case for the ACLU, which actually won at the district court].  Or perhaps obliterating a binding precedent would be so valuable to a litigant (e.g., a “frequent defendant”) that it would be willing to concede away weak but non-frivolous arguments on the merits in order to directly attack the harmful precedent, post haste.

Maybe you’ll never have a Beer, but in the right, highly-exceptional patent case, you might want to use the Beer strategy.

Andrew Dhuey is an appellate lawyer last seen being chased by a flower-carrying guy in a dress.

32 thoughts on “Guest Post: The Great Haste and Less Milling of Beer v. United States

  1. Oops, you be right Bwa.

    Perhaps I was just blinded by that sense of humor and the inability to understand how a successful attorney could consider himself really a “success” without (gasp) his own website.

    The troll comment should indeed have gone to appellate attorney.

    Now the real question – who do I send my bill to?

  2. Ping,
    What? My “capricious” labeling of AA as a troll. How was it capricious? Do you know what capricious means?

    Andrew Dhuey wrote an interesting article and AA’s post was nothing but “flame” (aka an ad hominem attack). My suggestion to AD was to ignore AA instead of write multiple responses then invite AA to write a critique and bill AD for it.

  3. IANAE, the way it seems to work in practice is the examiner reads the (MPF) claim on the prior art, leaving it to the applicant to argue that the prior art is not the same as or obvious variations of the disclosed means in view of the prior art. The issue of equivalents never arises — nor should it arise as it issue is not equivalence, but obviousness.

  4. IANAE, thanks. I asked because, for me, it doesn’t get any more fundamental to any properly functioning patent system than that the petitioner gets a 20 year monopoly (with which to intimidate the industry) ONLY when he/she delivers an enabling disclosure, and when the range of that disclosure is commensurate with the scope of the claim being duly issued to that petitioner by the PTO.

    That’s why I was so alarmed, when you overlooked the small matter of enablement (elsewhere still called “sufficiency of disclosure”).

    Of course, you are right, that it depends which art you are in. The EPO routinely revokes for insufficiency in chem/bio but such decisions in mech/EE are as rare as hens’ teeth.

  5. What if the specification fails to enable the subject matter of the claim? Is that claim invalid?

    Okay, you got me. I was thinking more along the lines of indefiniteness and art-based invalidity, but I’ll concede the point.

    Still, all the structure you need is by definition in the spec. There can’t be a whole lot of wiggle room between that and enablement/WD, though I guess it will depend on the art. And if your corresponding structure includes a perpetual motion machine…

  6. IANAE, you write:

    “As long as the claim, when properly construed according to law, is both definite in scope and clear of the prior art, on what rational basis can you say the claim is invalid?”

    and I’m thinking about enablement. What if the specification fails to enable the subject matter of the claim? Is that claim invalid? I feel it ought to be, if only because, but for its presence, the patent could instead be valid, no?

  7. Since equivalents are involved,

    Equivalents to the corresponding structure, not equivalents to the broad functional language in the claim. It still doesn’t actually matter what the claim literally says, because the scope of the claim is narrowed as a matter of law. I guess there’s always the pathological case where the spec discloses so much corresponding structure that anything with the function is equivalent, but that’s still not indefinite – it’s just really broad.

    The claim is not subject to two interpretations, one of which being the broad literal meaning. If it were, 112 6th would be meaningless. 112 6th says the claim has one particular interpretation. Besides which, if the prior art is equivalent to your corresponding structure you’re getting a 102 or a 103 anyway. It doesn’t matter if you get a 112 or not.

    Of course, a claim that does not invoke the 6th paragraph might be rejected under both 112 and 102. I’ve definitely seen that since Donaldson.

    Since Donaldson, however, I have never seen a combined 112/102 rejection.

    You might get one if the spec didn’t disclose any corresponding structure at all, because then 112 6th can’t tell you what the claim means. The 102 might technically be improper because the claim doesn’t legally mean anything at all, but it’s a nice courtesy for the examiner to find an anticipation of the broad literal reading.

  8. IANAE, check: “If a claim is subject to more than one interpretation, and at least one interpretation would render the claim unpatentable over the prior art, the proper course of action is for the examiner to enter two rejections: (1) a rejection based on indefiniteness under 35 U.S.C. 112, second paragraph, and (2) a rejection over the prior art based on the interpretation of the claim which renders the prior art applicable,” link to uspto.gov

    Since equivalents are involved, even using 112, p. 6’s narrowing construction, a claim that literally reads on the prior art reasonably could extend to cover the prior art. Thus, even the PTO recognizes that both a Section 112, p. 2, and a prior art rejection are appropriate.

    Since Donaldson, however, I have never seen a combined 112/102 rejection.

  9. “But what about”, I’m going to ignore some great advice up there about the “need to learn to ignore the anonymous commenter” and respond to you.

    My “firm” is me working from home, and it’s been that way for 15 years. I’ve always been very open about that. One of the luxuries of being a contingency fee patent litigator and a pro bono appellate lawyer is that I’ve never needed to impress anyone with an office in a skyscraper, a fancy website, or any of the other trappings that have nothing to do with good lawyering.

    Don’t want to hire me? Fine, but please leave the door open on your way out for the next person in line. And that’s not bragging — that’s going to be true of just about any patent litigator willing to work on contingency, or on appeal for free.

  10. If the claim literally reads on the prior art it is indefinite.

    Well, no. If a claim reads on the prior art it is anticipated.

    But who cares what the claim “literally reads on”? As long as the claim, when properly construed according to law, is both definite in scope and clear of the prior art, on what rational basis can you say the claim is invalid?

    The purpose of section 112, paragraph 6, was to limit the scope of the claims for infringement purposes to the subject matter disclosed and enabled, and equivalents thereof.

    See, there’s your problem. 112 6th doesn’t say anything about “for infringement purposes”. We agree, I should hope, that a claim has only one construction for both validity and infringement purposes. Also, as was pointed out by Donaldson, 112 6th says nothing about the claim being issued or infringed. It says “such claim shall be construed”. So that’s how you construe the claim. Period. Whether an improper construction of the claim (e.g. a “literal reading”) encompasses the prior art is completely and totally irrelevant, because that’s not what is claimed.

    But note, the novel feature itself has to be claimed in the claim.

    And it is. You just have to know that a particular claim term is defined in the spec. The good news is that, unlike ordinary cases where claim terms are defined in the spec, a means-plus-function claim tells you in the body of the claim itself that the spec contains an important definition.

  11. IANAE, it may be a fine point of distinction, but the essence of the Lundberg holding is that the functional definition in the claim itself must define over the prior art — it must tell you what the invention is without reference to the corresponding structure. If the claim literally reads on the prior art it is indefinite.

    The purpose of section 112, paragraph 6, was to limit the scope of the claims for infringement purposes to the subject matter disclosed and enabled, and equivalents thereof. There was never any intention that the claims be so broad and nonspecific as to literally read on the prior art.

    Prior to Halliburton, it was generally considered that means plus function claims were perfectly fine when they were claiming the old elements of the combination. As such, such claim form was an efficient way of claiming means known to the art for performing the claimed function. When however, the novelty was in the element claimed functionally, otherwise known as functional at the point of novelty, there was no justification for such a broad reading. When the patent owner in the Halliburton case made such an argument, the Supreme Court gagged.

    Beginning with cases such as Westinghouse vs. Boyden Power Brake, the Supreme Court narrowly construed such functional language (functional at the point of novelty) to cover the corresponding structure described the specification equivalents. The Supreme Court in Halliburton disagreed that such claims were valid at all, because they were indefinite.

    Now when Congress enacted section 112, paragraph 6, its intention was to restore the law to its state prior to Halliburton. It is important to understand what the state of the law was. Clearly, therefore if old elements are being claimed, their scope broadly includes not only the disclosed means but known equivalent means broadly construed. Secondly, if the novel feature is claim functionally, is limited to the corresponding structure described the specification and equivalents, narrowly construed.

    But note, the novel feature itself has to be claimed in the claim. The claim itself is not excused from defining over the prior art within its four corners. There is no justification for that anywhere in the law — that is, until In re Donaldson.

  12. Are there any litigators “willing to concede away weak but non-frivolous arguments on the merits in order to directly attack the harmful precedent, post haste” — which might increase the risk of a malpractice suit and decrease their billable hours?

    You better have a sophisticated client driving this strategy because I can’t imagine litigators pitching this strategy on their own.

  13. IANAE, that’s not all what Donaldson said.

    It’s what Donaldson said it was expressly overruling in Lundberg.

    Lundberg had held that Section 6 does not trump Section 2, that claims still have to define over the prior art within their four corners.

    Donaldson didn’t contradict that. Anyway, you can’t know what is within the four corners of the claim until you’ve read the specification.

    112 6th paragraph is just a fancy way of using a claim term that is defined in the specification. You become your own lexicographer depending on what corresponding structure you describe, and it’s clear from the spec what your claim covers. The law tells you what is within the four corners of the claim, and that’s why the PTO is not permitted to construe the claim differently.

  14. Judges suing for higher judge pay and you’re surprised that a court would take that case up in an expedited manner?

  15. I have a fairly good sense of humor

    No, you do not.

    This is quickly evident by your capricious labeling of an opponent to Mr. Dhuey as “troll”.

    I have found that the people who are quick to use that term are the same people that lack any sense of humor and that think themselves “above the fray”. These people tend to haughtily think that they, of course, are right in all things, and that there is no real need for discussion and definitely no need for different viewpoints.

    Of course, we could be literal in taking your advice of ignoring anonymous commentators, since Bwa is himself (herself?) and anonymous commentator. I would not offer such advice, since some anonymous commentators offer pearls of wisdom and deep insight wrapped in lyrical musings and biting zings, but my great modesty makes me stop describing my anonymous contributions (but ya’ll are welcome to praise me).

  16. Andrew Dhuey,

    So I found your article interesting and googled to find your firm… are you really a patent attorney without a website? And you expect people to trust you with highly technical issues when your “firm” does not have a website? I have a fairly good sense of humor, but this is beyond me.

  17. Andrew Dhuey,

    You need to learn to ignore the anonymous commenter. Also, very bad call in “Which brief(s) of mine didn’t you like, appellate attorney? Any constructive criticism to offer on them? Please send me your critique, along with an invoice per your normal billing rate.”

    Never invite a poster, even if he/she is a troll, a means to make a claim against you. What if AA actually does make a critique and send it to you along with an invoice. Honestly, he would have some grounds to claim you solicited it from him.

  18. Regardless, “appellate lawyer”, if you’re going to slam my writing with a post like this:

    I hope this “appellate lawyer” doesn’t usually write this away [sic]. Oh wait, I’ve seen some of his briefs.

    Plus this statement is just wrong: “The Federal Circuit had thus resolved Beer on the merits, en banc, only 85 days after docketing.”

    The en banc Federal Circuit has not resolved Beer on the merits.

    Posted by: appellate attorney | Aug 12, 2010 at 02:03 PM

    …be especially careful to avoid typos (“write this away”). I might write this and I might write that, but I never write away — I write from home.

  19. I consider the case of Beer more interesting. From a procedural standpoint.

    Thatta be from the procedure of drinkin that thar case!

  20. IANAE, that’s not all what Donaldson said. Lundberg had held that Section 6 does not trump Section 2, that claims still have to define over the prior art within their four corners.

  21. “http://www.law.com/jsp/nlj/PubArticleNLJ.jsp?id=1202464205038&slreturn=1&hbxlogin=1”

    Is AD a fin hero or is AD a fin hero?

  22. en banc Lundberg

    The court that heard Lundberg only ever sat en banc. Do panels of the Federal Circuit normally consider all CCPA decisions as binding as en banc Federal Circuit decisions? How many judges does it take to change a light bu… a CCPA precedent?

    Anyway, all Donaldson really said was that a law that on its face applies to everyone who construes a patent claim is applicable to the PTO when they construe a patent claim. It’s really not that big a deal.

    I consider the case of Beer more interesting. From a procedural standpoint.

  23. Gag. En banc Donaldson overruled en banc Lundberg, but the government did not appeal. That was a mistake, but the issue will never arise again because Donaldson favored applicants and the Government has no discretion to raise the issue again.

    But Donaldson IMHO was one of those cases wrongly decided and blatantly so.

  24. Thanks, jimmy. Maybe you could say nice things about me to appellate attorney, who appears to dislike me.

  25. John, res judicata in the claim-preclusion sense applies only to relitigation by the same party (or one in privity with). I don’t believe there is any overlap between the list of judges who are plaintiffs in Beer and those who were in Williams.

    As for Rule 11, once again, the Supreme Court denied cert. in Williams, and that should by no means preclude other litigants from giving the court another chance to review the question, eight years later.

  26. the earlier two COLAs should be barred by res judicata.

    They might still convince the Supreme Court to reconsider them as “COLA Classic”.

  27. Which brief(s) of mine didn’t you like, appellate attorney? Any constructive criticism to offer on them? Please send me your critique, along with an invoice per your normal billing rate.

    As for the en banc resolution on the merits, I think that is accurate here. Unlike a cert. denial, which by no means reveals the Supreme Court’s view of the merits, here the court sitting en banc considered a direct challenge to a precedential panel decision and chose to leave it in place. That is for all practical and precedential purposes a resolution on the merits of the Beer appellants’ position.

  28. FRCP 11 (b) includes the requirement that:

    (2) the claims, defenses, and other legal contentions are warranted by existing law or by a nonfrivolous argument for extending, modifying, or reversing existing law or for establishing new law;.

    Is it a nonfrivilous argument that the makeup of SCOTUS has changed since the earlier decision? Also, presumably, only the 2007 COLA is at issue since the earlier two COLAs should be barred by res judicata.

  29. I hope this “appellate lawyer” doesn’t usually write this away. Oh wait, I’ve seen some of his briefs.

    Plus this statement is just wrong: “The Federal Circuit had thus resolved Beer on the merits, en banc, only 85 days after docketing.”

    The en banc Federal Circuit has not resolved Beer on the merits.

  30. IANAE, it’s not really a “do-over” at the Supreme Court, since it denied cert. in Williams. It is very common for the court to deny cert. on a question once or even several times before later agreeing to resolve it.

  31. Andrew, thanks for reporting on this case, and the reason for its unusual speed. When Beer parties make a claim that they are being unfairly denied COLA, the first question has to be who is driving it and why.

    I suppose the practical problem with this approach is walking the fine line between “this is a very important question that has been resolved” and “this is a very important question that needs to be revisited”. At what point do you stop being a legitimate advocate for a change in the law and become a vexatious litigant jumping the queue to ask the Supreme Court for a do-over?

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