Supplemental Examinations to Consider, Reconsider, or Correct Patent-Related Information: A Tangled Web Indeed

A pending legislative proposal would authorize the U.S. Patent and Trademark Office (USPTO) to undertake a “supplemental examination” of an issued patent to “consider, reconsider, or correct information believed to be relevant to the patent.” It would further bar the federal courts from holding a patent unenforceable “on the basis of conduct relating to information” considered during supplemental examination. The obvious intent of the proposal is to constrain the federal courts’ power to entertain inequitable conduct-based challenges. Its emergence is unsurprising, given the mounting dissatisfaction with the courts’ application of the inequitable conduct doctrine. However, because the bill proposes to provide patent owners a forum for effectively purging the taint associated with intentionally undermining the integrity of the patent procurement process, it raises a number of interesting questions. This essay examines ethics-related implications of the supplemental examinations proposal. “Ethics” is broadly defined here to extend beyond potential ethics and discipline-related considerations for practitioners to related implications for the USPTO, the courts, and the patent system generally

The Vactican Council of 1870

Rome ever looks for a complete restoration of its might and power. Although the 19th century marked the dissolution of the papal states (l870 ), and thus put an end to the pope\u27s hopes and aspirations for a complete restoration of temporal power, still we see an increase in the spiritual power which makes up for the diminution in temporal authority. As Dr. Graebner remarks in the above-quoted article, the principles and aims of the popes of the 19th century did not differ from the aims of the medieval popes, but agreed in all respects, since all popes tried to secure a firm hold on the consciences of the people subject to their jurisdiction

Lawyers Acting Badly, or Not? Misconduct in IP Litigation: Recent Examples and the Questions They Raise

Misconduct in civil litigation is not a new phenomenon. Nor is it confined to particular types of cases. Because of their characteristic intensity. however, intellectual property cases may be more likely to inspire bad behavior than other types of cases. The associated pressures seem, on occasion, to lead litigants and trial lawyers to succumb to the temptation to step outside the bounds of vigorous advocacy. Trial and appellate judges in a number of recent IP cases have wrestled with the issue of whether certain litigation tactics crossed the line between advocacy and abuse. For example, trial judges have recently rebuked counsel for: • trying to prejudice jurors against the plaintiff patentee by asking them if they had “a problem with a company that puts its headquarters offshore on a Caribbean island in order to avoid paying U.S. taxes”, in violation of an order in limine; • “prolong[ing] the proceedings unnecessarily (thus unduly imposing upon the jury’s time), [seeking] to mislead both the jury and the Court, and [flouting] the governing claim construction as set forth by the Federal Circuit”; • “persist[ing] in improperly trying to equate [the patentee’s] infringement case with the current national banking crisis implying that [the patentee] was a banker seeking a ‘bailout’” • knowingly pursuing a meritless lawsuit; and • contributing to a “massive discovery failure”. In several of these and other cases, however, sanctions awards have been subsequently reversed or modified, including because the conduct at issue was viewed as insufficiently egregious, as not unreasonable, or even as entirely within the rights of the sanctioned firm or attorney. These reversals raise a number of issues, including whether reviewing courts are too tolerant, how trial judges are affected by litigation misconduct, sanctions proceedings, and reversals, what motivates aggressive litigation behavior, and the collateral consequences of litigation misconduct. Whatever the outcome, these decisions serve as sobering examples of how even intelligent, experienced counsel can get caught up in the heat of the battle that is modern intellectual property litigation, and the potentially devastating consequences of that conduct

The Religious Beliefs and Practices of the Ancient Slavs

The religion of the pagan Slavs seems to have been a purely domestic religion with the idea of a state religion not entering into the S1avic concept of one’s relation to the supreme being. The religion of the early Slavs has also been characterized as of the non-fanatical type. It is a question as to whether such a statement permits of a broad application. As a matter of fact Orloff limits it to the religion or the Southern Slavs maintaining that it was of a purer kind than the Scandinavian or that of the northwestern Slavs

Power or Prudence: Which Is It?

In limiting patent litigants’ access to the declaratory judgment remedy, the U.S. Court of Appeals for the Federal Circuit has primarily invoked the “actual controversy” requirement imposed by the U.S. Constitution and the federal Declaratory Judgment Act. However, an examination of Federal Circuit decisions and those of the district courts reveals that the courts have often confused, or blurred the distinction between, constitutional requirements and the discretion the Act affords the federal courts to decline to exercise jurisdiction. Specifically, the courts often attribute constitutional significance to factors that instead bear on policy. It is important to distinguish between jurisdictional limits and policy considerations when deciding justiciability issues in patent cases. Misapplication of the law, or even mere imprecision in the allocation of jurisdictional and prudential considerations, engenders confusion among the affected parties – litigants and potential litigants – who then bear the costs of this confusion in the form of uncertainty, higher litigation expenses, and forgone opportunities. Furthermore, when the courts are attentive to the distinction between the jurisdictional and prudential bases for justiciability decisions, they are more likely to carefully evaluate the policy implications of those determinations. Litigants, in turn, will be motivated to provide courts with more careful analysis. The likely results include the development of better policy and improved judicial decisionmaking

Whose Rules Rule? Federal Circuit Review of Divergent USPTO and District Court Decisions

The potential utility of reexamination in the context of patent litigation has caught the attention of litigants, commentators, and the courts. However, concurrent litigation and reexamination proceedings proceed independently. Thus, in any given situation involving such proceedings, there is the possibility that the Federal Circuit will encounter issues in appeals from determinations of the district court and the U.S. Patent and Trademark Office relating to the scope or validity of the same patent claims, which issues have traveled to the court on separate tracks. And, because the courts and the USPTO approach claim construction and validity determinations differently, they can reach different conclusions even on the same evidence. Accordingly, there is the possibility of divergent outcomes in the district court and USPTO. So what happens when the Federal Circuit is faced with (arguably) conflicting USPTO and district court determinations? In recent years, we’ve begun to receive relevant guidance, as the Federal Circuit has been asked to weigh in and decide “whose rules rule” in a variety of circumstances. This paper summarizes what we’ve learned in the process, and identifies some questions that remain for decision

Civil Actions - Voir Dire - Insurance - Effect of Insurance Company Advertising

The Supreme Court of Montana has held that an attorney may ask prospective jurors on voir dire if they have been exposed to insurance company advertisements that correlate high jury verdicts in personal injury cases with increased premiums for all insured. Borkoski v. Yost, 594 P.2d 688 (Mont. 1979)

Patent Office Contested Proceedings and the Duty of Candor

The implementation of post-grant trial proceedings in the U.S. Patent and Trademark Office is one of the most significant aspects of the Leahy-Smith America Invents Act. Practitioners have a great deal of new subject matter to master, including the governing statutes and rules, and instructive Patent Trial and Appeal Board decisions. All of this new law is superimposed, however, on an existing legal landscape relating to the practitioner’s duty of candor and potential consequences for candor violations. Furthermore, the new law creates additional candor and disclosure obligations specifically applicable in post-grant contested proceedings.This paper discusses the “old” and “new” candor obligations of practitioners – their sources, their reach and applicability, and the potential consequences for their breach – in the context of the representation of clients in the new USPTO post grant contested proceedings. It identifies several examples of statements and conduct in post-grant proceedings that may particularly implicate the practitioner’s duties of candor and/or disclosure and, accordingly, warrant heightened care on the part of practitioners (registered and unregistered) and parties who participate in the new proceedings

Power or Prudence: Toward a Better Standard for Evaluating Patent Litigants\u27 Access to the Declaratory Judgment Remedy

This Article discusses the Federal Circuit\u27s treatment of the justiciability of declaratory judgment claims in patent cases, in light of the Declaratory Judgment Act and the relevant provisions of the U.S. Consitution