Here’s the latest.

How to Choose the Next Federal Circuit Judge: Stick with Experience

Reported by Judge Paul Michel (Ret.) at IP Watchdog

With Judge Wallach announcing his pending senior status, President Biden has the opportunity to name a nominee to the Federal Circuit. Retired Judge Michel offered his opinions with IP Watchdog and called for a nominee with experience in the patent field.

To me, this all suggests that the nominee to fill the vacancy on the CAFC expected in May should be a seasoned patent litigator. And ideally one who has represented both patent owners and accused infringers. And preferably one with exposure to the PTAB as well as trial and appellate courts. But most importantly, a patent lawyer who believes in patents! Such a litigator should be able to resist the gravitational pull of ever-expanding extensions of Supreme Court decisions such as Mayo/Alicee-BayKSRLexmarkHelsinn, etc.

Judge Michel cited the growing patent docket of the Federal Circuit and the current number of patent lawyers on the bench to support the need for another expert in patent law on the Federal Circuit. The retired Federal Circuit judge also critiqued the current Federal Circuit for the reduction in predictability and stability of the court. According to Judge Michel, Recent decisions by the Federal Circuit and the Supreme Court, the diverging opinions of the current judges, and the lack of en banc patent cases have led to a decrease in the cohesion of patent law doctrine.

Patent law was a mess when the court was legislated into existence four decades ago. Its first chief judge had a “Phoenix List” of major problem areas, which the court resolved in its first decade and beyond. Have we now come full circle with patent law’s lines being badly blurred?

Judge Michel hopes that President Biden will keep these problems and criteria in mind when choosing a nominee for the Federal Circuit.

In “Landmark” Ruling, Court Raises Threshold for Firing Feds

Reported by Eric Catz at Government Executive

The Federal Circuit issued a opinion that impacts the ability of federal agencies to place employees on performance improving plans (PIPs) prior to further disciplinary action. Eric Catz recaps the decision in the case involving a NASA employee appealing the decision of the Merit Systems Protection Board to affirm his removal. While the MSPB only looked at whether NASA could justify firing the employee after issuing the PIP, the Federal Circuit also looked at the statutory authority for NASA to place the employee on a PIP. The court found that agencies going forward must show cause before placing an employee on a PIP.

Shaw, Bransford and Roth, a federal employment law firm that filed a brief to bolster Santos’ argument, said the court had issued a “landmark opinion” on the case. The holding will have a governmentwide impact on agencies’ “burden of proof in all performance-based terminations,” the firm said.

For more information, see our coverage.

Inventors, Tech Are Taking The Brunt Of Alice Axes

Reported by Dani Kass at Law360

Last Tuesday, Mark Lemley and Samantha Zyontz from Stanford Law School published a study on the effect of Alice on patent eligibility challenges. Dani Kass summarizes the study where Lemley and Zyontz found that Alice has impacted software patents and individual inventors as opposed to companies and nonpracticing entities the most in appeals before the Federal Circuit. The Federal Circuit also has been invalidating patents less frequently recently .

The authors attributed that to early attacks on “low-hanging fruit,” procedurally earlier settlements in weak cases and a 2018 Federal Circuit decision called Berkheimer, which said that such invalidity motions can involve factual questions that can’t be resolved at the motion to dismiss stage

However, the Federal Circuit still invalidates patents at a high rate when faced with a patent eligibility question.

Then, in a result that the authors describe as “striking,” the study found that 88.9% of Federal Circuit decisions involving patent-eligible subject matter end in invalidity decisions, compared to 56.7% of district court rulings. The report added that 52.5% of those Federal Circuit decisions were made in one-line orders, and all 85 of those Rule 36 orders upheld invalidations.

Lemly and Zyontz conclude by encouraging further research.