Patent Law

On predicting outcomes of CAFC decisions

By Lawrence B. Ebert, Esq.

It is hard to imagine that GlaxoSmithKline and Dr. Tafas could have drawn a better three judge panel then they did for this appeal of Judge Cacheris? ruling. The judges assigned to the panel hearing the case were Judges Rader, Bryson and Prost, who took turns laying it on the government attorney, USPTO General Counsel Toupin. It is hard to imagine based on the barrage of questions thrown at Toupin that this panel is going to do anything other than affirm Judge Cacheris? decision and rule that the claims and continuations rules were beyond the authority of the Patent Office and cannot be implemented.

Hmmm, the 20 March 09 decision stated: we find that Final Rule 78 conflicts with 35 U.S.C. § 120 and is thus invalid.
Accordingly, we affirm the district court?s grant of summary judgment that Final Rule 78 is invalid, vacate its grant of summary judgment with respect to Final Rules 75, 114, and 265, and remand for further proceedings consistent with this opinion.

The IAM blog is currently making a big deal about future appointments to the CAFC. Of the Tafas panel:

Judge Prost was appointed by President George W. Bush in 2001. Prior to her appointment, Judge Prost served as Minority Chief Counsel, Deputy Chief Counsel, and Chief Counsel of the Committee on the Judiciary, United States Senate from 1993 to 2001.

Judge Bryson was appointed by President William J. Clinton in 1994. Prior to his appointment, Judge Bryson was with the United States Department of Justice from 1978 to 1994.

Judge Rader was appointed to the United States Claims Court by President George H. W. Bush in 1989 and served on that court until his appointment to the Federal Circuit in 1990. Prior to his appointment, Judge Rader served as Minority Chief Counsel, Staff Director, Senate Committee on the Judiciary, Subcommittee on Patents, Trademarks, and Copyrights from 1987 to 1988.

The 2 votes of the 2-1 decision were from a Republican appointee and a Democrat appointee. None of the judges has previous experience as a registered patent attorney.

Likely the most "reform-minded" judge of the CAFC is Judge Moore who was appointed by President George W. Bush in 2006, and who was editor of The Federal Circuit Bar Journal from 1998 to 2006, which journal published three articles by Quillen et al. on very questionable assertions of high patent grant rate. Judge Moore was co-author of "Ending Abuse..."

See also

http://ipbiz.blogspot.com/2008/12/ipwatchdog-summarizes-tafas-oral.html

http://ipbiz.blogspot.com/2008/11/oral-argument-in-tafas-5-dec-2008.html

While at Harvard, Obama said of the HLR: "Just remember, folks: Nobody reads it."

Extending Holmes: --Law reviews and blogs, the work of boys and always will be....---

Full post as published by IPBiz on March 22, 2009 (boomark / email).