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Still clinging to first-to-invent

1. Patently-O: Patent Law Blog 09.06.06 / 9am

   Professor Kimberly Moore Unanimously Confirmed

   Without controversy, the nomination of Professor Kimberly Moore (George Mason) to become a Federal Circuit judge has been unanimously confirmed by the Senate (92 - 0). Congratulations! Patent Attorney Matthew Buchanan uses the headline: Activist Profes…
2. SurelyYouCanDoBetterThanThat 09.07.06 / 12pm

   This is probably the dumbest post I’ve seen yet on Kimberly Moore’s nomination/confirmation. There are good reasons to oppose her nomination, but none of the ones here hold any water.

   1. Do you have a source for Hal Wegner’s “activist professors” list, or did you make that up?

   2. What is an activist professor, anyway? Professors are supposed to express their policy preferences. I think we can safely assume that Ms. Moore knows enough about the differences between law review articles and judicial opinions to understand that “the world would be a better place if” isn’t appropriate for the latter.

   3. Not many of the other judges on the court are registered patent attorneys either. Only Judges Lourie and Newman made much of a career of prosecuting patents. While prosecution experience is relevant to deciding appeals, it is hardly a necessity. Her lack of experience on this front is a good basis for criticizing her paper, but not for criticizing her appointment to the bench.

   Were I to criticize the merits of her nomination, I’d think about (1) whether an academic is really what the court needs right now, (2) whether at 38 she’s experienced enough for the job, and (3) presuming that the answer to #1 is yes, whether she’s the best available.
3. J. Matthew Buchanan 09.07.06 / 2pm

   Thanks for the comment. I’m honored to be considered “the dumbest” (probably) post that you’ve read on the subject.
   A few thought I had after reading your comment:
   First…keep in mind, the post doesn’t mention any opposition to her nomination or confirmation. Most of the bar seems to believe that Professor Moore will make an excellent jurist…I have no reason to believe otherwise.
   The points I raised are “things to think about when considering the significance of Professor Moore’s appointment and confirmation.” Each of the items I list about Judge Moore, I think, are interesting from a patent policy point of view. That’s why I listed them.
   I personally believe that the bench could benefit from more judges with prosecution experience. The fact that this isn’t mentioned or discussed in connection with Federal Circuit appointments and confirmations shows that it’s really a non-issue for those involved in the process. My mentioning her lack of prosecution-related experience is simply meant to show where we’re at on this issue…it’s not a knock on Judge Moore.
   Regarding Hal Wegner’s “list of Activist Professors,” I think that about half of the patent bar (I’m exaggerating, but not by much) receives Hal’s daily e-mails with his terrific insight and commentary. As far as I can tell, Hal first circulated the list of ‘Top Ten Activist Patent Professors’ for 2005-2006 on August 21, 2006. Want your own copy? Ask Hal to be included on “the list.”
   What is an ‘activist professor’? According to Hal’s list: “A significant population of patent academics actively litigate at the Court and are cited by real world litigators at that level.” He couched that in support of academics that do so and in criticism of the Federal Circuit for continuing to ignore these folks.
   You’re question of ‘what is an activist professor, anyway?’ reminds me of a line in Uncle Buck, one of the greatest films ever made (again, exaggerating, a bit). When confronted by a principal about his niece being a ‘dreamer’ in class, the good Uncle realized and stated ‘I don’t think I want to know a 4 year old who isn’t a dreamer.’ (I’m paraphrasing).
   I don’t think I want to know a professor who isn’t an activist. Hal didn’t use the term in a negative sense. Regarding professors, I don’t either. Indeed, I view it as a positive one.
   While I don’t think it is good reason to oppose her appointment and confirmation, I believe that her position on continuation applications and practice is worthy of consideration. She’s against continuation applications as a class and is strongly opposed to the practice. While I haven’t done the research, I’m willing to assume that a sizeable portion of the patents that arrive at the Federal Circuit issued from continuation applications. Her ability to separate her dislike for continuation applications and practice from the legal issue at hand is, in my opinion, critically important.
   I think I’ve addressed all of your points. Please feel free to post a follow-up or send an e-mail if you’d like.
4. Richard Cauley 09.07.06 / 3pm

   Well, this has to be the shrillest post I’ve seen for the appointment for a Federal Circuit judge.

   Despite your belated explanations, the term “activist” when applied to judges has long been used as a negative code word by the right wing to attack judges they do not like for political reasons — this was certainly how I read your post — not “activist” as meaning “appears in court a lot.” Indeed, I can’t imagine what an “activist” Federal Circuit judge would be — pro patent? pro infringer? anti-obviousness?

   On the concerns of your anonymous poster about her qualifications vis-a-vis being an academic, I think I agree with him. I have only read her “Worthless Patents” and “Valuable Patents” articles, which were far too “economic” for my taste and mostly unconvincing.

   I do completely disagree with your swipe at her not being a registered patent attorney — a “qualification” which is vertually useless to being a patent litigator and completely useless to being a judge.

   What I am much more concerned about is her lack of judicial experience. I think we would have all been better served by capping Ron Whyte’s esteemed career in N.D. Cal. by putting him on the Federal Circuit.
5. J. Matthew Buchanan 09.07.06 / 4pm

   “Dumbest” and “shrillest” at the same time - now I know I’m really connecting with my audience!
   In all seriousness, Richard, thanks for the comment. Here’s a few quick thoughts in response:
   The post is titled “activist professor….” not “activist judge….” Sorry your read it in the opposite direction. It’s not a code word for anything…it’s a label for a professor that has tried to implement change in patent policy over the years. In that light, and in her professorial role, she’s an activist for sure.
   Will Judge Moore be an acitivist judge? Who knows. How would we know if she is one? Let’s watch the issues develop over the years and see what she does with them.
   While it appears that you oppose academicians changing careers in favor of the federal bench, I have no issue with it. I’m sure there are great examples of success stories, and also of failures. I think it’s a bit silly to oppose professors as judges simply because they’re a bit too academic.
   Reasonable minds can differ on the registered patent attorney point. Like I said in comment #2, I think the bench could benefit from more judges with prosecution experience. “Completely useless”…I really don’t think so. The significance of the fact that Judge Moore is not a patent attorney is that it highlights the lack of criticality surrounding this issue. No one cares.
   Lack of judicial experience? Guess what…no one cares about that, either.
6. KMoore Student 09.08.06 / 12pm

   Richard Cauley — Ironically, Moore is a self-described textualist, and is a big Scalia fan.

   Matt — you may be interested to know that Moore gave us your page as the source for the recently-updated and redlined version of H.R. 2795 last fall that we discussed in Patent Law I.
7. Gideon 09.08.06 / 12pm

   Richard Cauly Wrote:
   “I do completely disagree with your swipe at her not being a registered patent attorney — a “qualification” which is vertually useless to being a patent litigator and completely useless to being a judge.”

   Having a Reg Number, by itself, does not mean much.

   Having a Reg Numebr and using it to prosecute patents, on the other hand, means very much, with respect to later litigation.

   To wit, if you have no prosecution experience whatsoever, then, IMO, it is prima facie malpractice to represent a client in a patent infringement suit. IMO this can be overcome by a showing that the intricacies of patent prosecution are understood.

   I have yet to meet a non-Reg attorney who has qualified.

   At lower tier firms and firms desperate for business - any business - non Reg # attornies run patent cases and use Reg #s to run down technical details. But at the larger firms, patent litigations are run by patent attorneys, not attorneys who happen to do patent litigation.

   The shrill comment quoted above is, virtually no doubt, that of a non - Reg # attorney who has an inferiority complex about not having a Reg. #.

   I remember at one of the large firms when the woman next door to me started beefing that Reg #s shouldn’t get paid more. Why? She asked.

   I told her because tomorrow I could do your job and be up to speed in a month. You, on the other hand, couldn’t do my job if we gave you a year to get up to speed.

   Simple really.

   I also remember attending a CLE class in DC for patent law. This guy gets up and starts with “now you don’t have to be technically savvy or a patent lawyer to litigate a patent case.”

   Wow. I wouldn’t hang my ass out that far if a dozen firemen were waiting with a catch thingy for me.

   As a point of reference, I worked on a case - run by a patent attorney - with a non Reg guy who I will describe as the best attorney with whom I have ever had the privilege to work. After 4 months on a case with me, he was still asking me questions on basic priority matters.

   Finally, with regard to the new judge, she appears to be perfectly suited to further restrict patent rights in the U.S. - any person who makes such sweeping statements about continuations is, IMO, uninformed.
8. Gideon 09.08.06 / 1pm

   As a follow up, I went to the Wang Hartmann and Gibbs site to check out what the Reg # deal was.

   Bing!

   I won’t make any conclusions, because shrill people tend also to be people who scream “libel” when you point out their weaknesses, but here is what I found . . .

   among the folks who litigate patents, there are a few reg #s and a few not. The nots have undergrad degrees like “English”, “Law”, and one that made me fall off my seat - “rhetoric”!! That will be useful when reading the SC decision eviserating the MTC standard that is due out this term!

   I also notice that one of the Reg Numbers is named “Gibbs” - a named partner - and he is the third guy on the professionals list, right after the other named partners, Wang and Hartmann. Gibbs is the only named partner listed as an intellectual property guy.

   So this guy Gibbs, who was minted a Patent Attorney with a Reg Number in 1998, is in charge of patent litigation at the firm, if we can assume that all non-name-professionals doing patent work answer to him, regardless of 20 years non Reg number experience.

   !
9. Richard Cauley 09.11.06 / 3am

   I am reluctant to respond to personal attacks, especially on someone else’s site, but I do want to note that I do not have a “Reg. #” I do not have an ‘inferiority complex” and I am in charge of patent litigation at WHG (and a quite good one, IMHO — I have been litigating patent cases for the better part of 15 years — and am quite up on continuations and the MST test, thank you very much). Indeed, I have found that patent prosecutors have a much more conservative view as to what will constitute obviousness and motivation to combine than is normally accepted in court — Federal Judges, unlike PTO examiners are not “Reg #s” either — and that is who my audience is.

   I have my speciality, litigation, and there is nothing special about patent litigation or more complicated than any other kind of litigation. I do get the assistance of registered patent attorneys, but I reject (and resent) the implication that I am committing “malpractice.” Notably, Mr. “Gideon” has chosen to remain anonymous so that the rest of us cannot examine his credentials.

   Although, Gideon, we do seem to be in agreement on one thing — I am very much in favor of strengthening patent rights — despite the fact that I mostly represent defendants.
10. Gideon 09.11.06 / 12pm

    Mr. Cauley, now where did you read a personal attack? I merely made a few generalizations and a few observations.

    I don’t know you from Adam.

    Your response, although predictable, was quite entertaining, however, and worthy of a quick rejoinder. . .

    “I have my speciality, litigation, and there is nothing special about patent litigation or more complicated than any other kind of litigation.”

    Of course you are right. The thousands of malpractice attorneys in the country could no doubt step right into a patent litigation and not miss a step.

    “. . . but I reject (and resent) the implication that I am committing “malpractice.”"

    First, there was no implication - there is only your inference. I made clear that I thought a Non-Reg holding himself out was prima facie malpractice, but that the presupmtion could be rebutted.

    Truth be told, it’s all about experience. If you’ve done nothing but patents for 20 years, then I would guess you are very qualified.

    If you have litigated Torts, Corporate, Malpractice, and so on for 20 years, with a few patent cases scattered in, then I’d want to ask you a few questions before concluding you’re qualified.

    As for “it’s the same as any other type of litigation”, all I can say is that the numbers don’t support your contention.

    I’ll further add that most litigators I have met who aren’t Reg Numbers are about as technically sophisticated as mice.

    But, according to your claim (wink), a guy who has a degree in Rhetoric and no experience in electronics is qualified to run a 1 million dollar a month litigation involving semiconductor circuitry.

    Sure.
11. Richard Cauley 09.11.06 / 6pm

    “Gideon”:

    I am glad to see that we are mostly in agreement. Patent litigators who are not technically sophisticated have no business running [or even near] patent litigation. Having a degree in rhetoric (this is not me, BTW), however, is not a disqualification for becoming technically sophisticated no more than a technical degree is a guarantee of such sophistication Having a “Reg #” is not a requirement for being technically sophisticated, as I am sure you will agree. Indeed, I have seen very qualified EEs (who were registered patent attorneys and litigators) struggle when they were in a case outside of their technology.

    I would heartily agree that someone who is not technical who had not successfully worked on a number of electronically-based patent cases would have no business “running” a multi-million dollar electronic patent case. However, a good litigator who has been around these cases for a number of years who has the sense to surround himself with technically trained patent attorneys can do an excellent job for his clients. I would put this guy — one of my old partners and an economics major — who tagged Intel for $1 billion — right up there.

    http://www.mwe.com/index.cfm/fuseaction/bios.detail/object_id/be4f6003-cda0-400b-9bf1-30fa4f425591.cfm
12. Commenter #1 09.15.06 / 5pm

    My apologies for the tone (and the first sentence) of the first comment to this post. As you point out in your response (which is much more polite than I deserved), I misunderstood your initial post.

    You also raise a fair point about the fact that Judge Moore has expressed a number of strong views about what she thinks the patent law will be, and it will be quite interesting (and probably important) to see whether her views affect her ability to apply the law as it is.

    Again, I apologize for the initial comment. I started with a flawed premise, and all of the ensuing nastiness flowed from that.
13. J. Matthew Buchanan 09.18.06 / 10am

    No need to apologize…you really triggered a great discussion, which is the purpose of the comments section anyways.

    My biggest concern about Judge Moore, as I said previously, is her opposition to continuation applications as a class. Her ability to separate this opinion on whether continuations should be available from the fact that they are, currently, a perfectly legal option is of critical importance. We currently have no reason to doubt that she will do this adequately.

    We’ll need to watch particularly closely if we move to a regulatory and/or statutory structure that grants discretion as to whether a continuation filing should be allowed or should have been allowed to be made, such as that established by the USPTO proposed rule. An appropriate issue arising under such a framework might make her opinion on continuations highly relevant.
    Thanks again for the comment…and for kicking off the discussion.

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