The Federal Circuit Upholds its Legislative Mandate
Byrne v. Wood Herron & Evans (Federal Circuit, March 22, 2012)
Every now and then, a court will produce an opinion that seasoned practitioners may find to be – well, a bit odd. This might be the reaction of some in reading the scholarly, but somewhat obliquely argued Dissenting Opinion in the Federal Circuit’s recent alleged patent malpractice case of Byrne v. Wood Herron & Evans. Others may find that these highly intellectual, but rather disembodied, judicial comments could be a bit lacking in historical perspective.
In particular, the Dissent appears to struggle mightily, inter alia, in citing to a multiplicity of non-patent cases, in an apparent attempt to demonstrate that:
- the Federal Circuit is (or perhaps should become) somehow just like any of the non-patent, regional courts of appeal, and
- the resolution of underlying “case within a case” patent issues is purportedly just another mundane example of the “tension” between federal and state jurisdiction.
True, some courts and judges can become a bit overwrought over the “political” overtones and twinges of the controversial subject of federalism. One recent example comes to mind. In the case of Carter v. ALK Holdings, 605 F.3d 1319 (Fed. Cir. 2010), my clients were partners in a law firm that had been sanctioned for their temerity in the filing of a malpractice lawsuit in federal court – and wherein the sued patent lawyer had allegedly violated the standards of 37 CFR and the MPEP guidelines governing the conduct of registered patent attorneys and patent agents in practicing before the USPTO. Indeed, the District Court judge was so “certain” that there could be no federal jurisdiction (despite a very large body of directly-in-point law to the contrary) that he sua sponte imposed Rule 11 sanctions on these attorneys for the onerous “offense” against federalism of their having petitioned their government! Interestingly, and most unfortunately, after the (albeit rather obvious) reversal by the Federal Circuit, this particular federal judge was forced to resign from the bench on drugs, weapons and morals charges.
But, more to the present point, the Dissent in Byrne would do well to remember – and possibly to have included in its worthy academic treatment – reference to both the House and Senate bills that had created the Federal Circuit some thirty (30) years ago. Those of us who were practicing then remember the problem well, and for example, the very “obvious” differences in the obviousness standards between the Eighth Circuit and several of the other Circuits. For example, I had the privileged of arguing on remand, the case of Blonder Tongue Labs v. University of Illinois Foundation, 402 U.S. 313 (1971), together with its intersection between collateral estoppel and forum shipping, but this did little to solve the problem created by the continuing co-existence for the next decade of several sub-sets and/or versions of the patent law. Clearly, and the Byrne Dissent’s musings to the contrary regarding non-“substantiality” of the patent law issues to be decided there, fifty state courts pronouncing (and, whether under the guise of “federalism”, or otherwise) their own views of the federal patent law would be a yet further aggravation.
Manifestly, the express and continuing (but apparently forgotten) raison d’être of the Federal Circuit is to “unify the patent law”. Hence, and given this legislative mandate, the Federal Circuit is objectively unlike any other federal court, and the patent law is distinctly different from all other areas of the law. To pretend otherwise, as the Dissent in Byrne seems to do, would be to create a struggling opinion for limping around the point, but never to focus on the issue before the court. And, moreover, the Plaintiff’s broad and preemptive casting of the issue as supposedly comprising a “standard of care” would seem to combine obfuscation with self-fulfilling prophesy, and inasmuch as the real question is far more specific – i.e., what is to be the articulated definition of the seminal claim-drafting duty under the patent law of a registered patent lawyer or patent agent in practicing before the USPTO?
Importantly, and although the underlying accusations of malpractice are given but brief treatment in the Byrne Opinion(s), the seasoned practitioner might suggest the traditional view that a patent lawyer’s duty — at least in the so-called “predictable arts” — would be to draft patent claims that read on the disclosure, and specifically the preferred embodiment, and if possible a reasonable number of disclosed alternative embodiments.
One reason is that the disclosure is the statement by the inventor to the patent attorney setting forth what the inventor has invented. A patent attorney cannot be charged with the duty to invent. And, ethical matters of self-dealing aside, if the patent attorney were indeed to become a joint inventor, an entirely different relationship (and set of duties) would have resulted.
Secondly, the patent attorney cannot rationally be charged with the tri-partite duties of (a) inventing undisclosed embodiments, (b) describing such previously un-invented embodiments, and only thereafter (c) claiming embodiments that had not been invented by the inventor.
Accordingly, any alternatively proposed candidates for articulation of the requisite claim drafting duty that are fatally divorced from the underpinnings of the disclosure (i.e., what was actually invented) rapidly become operationally untenable. For example, creative malpractice plaintiffs may propose to the courts a “standard of care” requiring the drafting of patent claims that are:
- “as broad as possible” (whatever that could mean?),
- “so broad that they read on everything that will ever be created, but not so broad as to impinge on any prior art that might be subsequently found”, or
- the all-time favorite pseudo-standard, as apparently suggested by the Plaintiff Byrne, “as broad as might be granted”,
- etc., etc.
But, all claim drafting fantasies aside, one would be hard-pressed to find a case where the patent scrivener would be, or should be, expected to magically divine the structure of yet-to-be created devices, and thus to disinclude from the prosecuted patent claims those limitations that would not read on such in futuro devices!? To so pretend, would create not only a magically aberrational patent law, but would also create the new chimerical profession of patent lawyer qua guarantor. As this cannot be the patent lawyer’s function, the profession awaits a single, unified and cogent pronouncement on the scope of this claim drafting duty under the patent law. The place where this will be found is in the federal courts — as supervised by the unifying influence of the Federal Circuit, and subject to occasional correction by the Supreme Court.
– Bob Ward
This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. The opinions expressed in this article are those of the author only and are not necessarily shared by Dilworth IP, its other attorneys, agents, or staff, or its clients.