Patent Law Practice Center

Chief Judge Rader Apologizes for Recusals

On Friday, May 23, 2014, right before the long holiday weekend, news began to circulate that Chief Judge Rader had announced that he would be stepping down as Chief Judge of the United States Court of Appeals for the Federal Circuit.

Immediately, the Wall Street Journal and Law.com began speculating that Judge Rader’s decision to step down was tied to an email endorsing attorney Edward Reines, a patent lawyer at Weil Gotshal & Manges LLP and president of the Federal Circuit Advisory Council. This speculation picked up when Rader released a letter (see below) to the public addressed to the other members of the Federal Circuit apologizing for the appearance of impropriety associated with his email to Reines (whom he did not name directly), which necessitated his several recent recusals.

I find myself speechless, which doesn’t happen often. On the one hand, those that know Judge Rader know that he is extremely strong-willed and always eager for a vigorous substantive debate. The thought that any familiarity with someone who appears before him would lead to any advantage strikes me as thoroughly nonsensical. On the other hand, ethics for lawyers and even more so for judges is not about truth, but rather appearances.

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Patent Law Institute is Around the Corner!

The Patent Law Institute returns for another exciting 2 day run on March 19th and 20th in San Francisco, California. Panel discussions are designed to be of ultimate practice value to all three subgroups in the patent law community: patent prosecutors, patent litigators, and strategic/transactional lawyers.  The Patent Law Institute’s New York run was a great success, with rare frankness from the judiciary and attorney panelists. The Institute brings together hundreds of the best patent law practitioners, federal judges and PTO officials as faculty and as Institute participants. Don’t miss this opportunity to learn from and network with the best!

Customize your participation to best meet your practice needs. The Institute has 6 plenary sessions of interest to all patent lawyers. Add your choice of 6 breakout sessions in 3 tracks specially designed for patent prosecutors, patent litigators and those focusing on strategic and transactional aspects of patent law. Plenary sessions include:

-Keynote Address by Robert L. Stoll, Commissioner for Patents
-A dialogue with Federal Circuit Chief Judge Randall R. Rader
-Corporate counsel divulge critical issues that keep them awake at night
-A distinguished panel of Judges from critical U.S. District Courts
-The practice impact of the America Invents Act, and recent Supreme Court and Federal Circuit decisions
-Special Feature: Earn 1 hour of legal ethics credit

If you can’t attend the Institute in person, we’ve added a webcast of the first day of the Patent Prosecution breakout track. Originally it was not webcast from New York City, however, Institute attendees said that the PTO information was too important not to webcast and archive, so we have created this special viewing for you! I will be live blogging from the Patent Prosecution breakout as well.

RCT v. Microsoft – Fed. Cir. Attempts to Shift Focus Away from MOT Test

The following post comes from Clement S. Roberts (Partner at Durie Tangri and Practice Center Contributor).

On December 8 the Federal Circuit issued its first post-Bilski opinion on patentable subject matter when it decided Research Corporation Technologies Inc. v. Microsoft .

In RCT the court was asked whether RCT’s patents on digital image halftoning were directed to patentable subject matter.  Digital image halftoning is a technique for displaying tones (either shades of grey or colors) that lie between those that a monitor or printer can natively produce by creating a matrix of dots that blur together when viewed from a distance.  The patent was directed to a method for creating a halftoned image using a mask (essentially a series of prearranged dots of known values which can be compared to the pixels in a given image) and, in particular, for creating an improved mask through the use of a particular kind of mathematical operation.  For example, claim 1 of one of the two relevant patents called for:

A method for the halftoning of gray scale images by utilizing a pixel-by-pixel comparison of the image against a blue noise mask in which the blue notice mask is comprised of a random non-deterministic, non-white noise single valued function which is designed to produce visually pleasing dot profiles when thresholded at any level of said gray scale images. (more…)

Top 10 Issues for Patent Litigators in 2011

Written by Brandon Baum (Partner at Mayer Brown and Practice Center Contributor).

The end of the year is the time for top 10 lists.  Here, in no particular order, are my top 10 issues for patent litigators in 2011.

10.  Microsoft Corp v. i4i Ltd. Partnership., and the clear and convincing evidence standard where the defendant relies on uncited art.  Will the Supreme Court decide that a lesser burden of proof is required to show invalidity when art was never considered by the USPTO?  If so, this will profoundly change both litigation and prosecution practice.  My favorite possible implication – what presumption applies to a mongrel 103(a) combination of cited and uncited art?  And will the PTO experience a data dump of prior art, if Microsoft prevails?

9.  Global-Tech Appliances v. SEB S.A., and the standard for proving the mental state required for induced infringement.  Whatever language the Supreme Court uses to describe the mental state required to show inducement will send everyone scrambling to prove or disprove the existence of that mental state. (more…)

TiVo vs. Dish at the Federal Circuit: Examining TiVo’s Brief

Written by Gene Quinn ( of IPWatchdog and Practice Center Contributor)

Several weeks ago TiVo filed its brief in the matter of Tivo, Inc. v. EchoStar Corp., which will be hearden banc by the United States Court of Appeals for the Federal Circuit on Tuesday, November 9, 2010. The dispute between TiVo and EchoStar dates back to 2004 when TiVo sued EchoStar in the United States District Court for the Eastern District of Texas, alleging that its receivers infringe “hardware” claims (claims 1 and 32) and “software” claims (claims 31 and 61) of US Patent No. 6,233,389. The jury found there was willful infringement and the district court entered an injunction ordering EchoStar to cease infringing. It is this injunction that now is at the root of the dispute to be heard by the Federal Circuit. TiVo did not believe EchoStar lived up to the Order of the district court. The district court, seemingly out of an abundance of caution, decided not to utilize its summary contempt powers but held a year long proceeding to determine if infringement was ongoing. The district court found EchoStar was violating the injunction Order and acted accordingly. EchoStar appealed and argued that only a full patent infringement trial would suffice. The panel sided with TiVo over a strong dissent by Judge Rader, now Chief Judge of the Federal Circuit, who felt the summary proceedings were inadequate. For more see Looking Ahead to TiVo v. Dish at the Federal Circuit. So as the full Federal Circuit hears this case it is anticipated that the inherent powers of a district court to enforce their own Orders and administer justice will be front and center.

On September 10, 2010, TiVo, by and through their attorneys at Wilmer Cutler Pickering Hale & Dorr, filed their Brief for Rehearing En Banc with the Federal Circuit. The opening paragraph of the Introduction sets an ominous tone: (more…)