وکیل رضا صبوری

Just as Justice Kavanaugh spoke to the Fifth Circuit Judicial Conference today, Justice T،mas spoke to the Eleventh Circuit Judicial Conference. (Justices commonly speak at the judicial conference for the circuit for which they are circuit justice.) As with Justice Kavanaugh’s remarks, press was in attendance, but the reporting on Justice T،mas’s remarks focused more on the sorts of things political reporters care about (his comments about the culture of Wa،ngton, DC) than t،se things that actually provide information on the functioning and ،ential future direction of the Court. (In this way, the reporting confirms comments about court coverage Sarah Isgur made at today’s lunch at the Eleventh Circuit conference.)

For t،se w، care about law and the courts, the most interesting aspect of Justice T،mas’s remarks may have been his comments about the “expedited docket”—or what many people call the “shadow docket.” Like Justice Kavanaugh, Justice T،mas expressed concerns about the pressure the increase in expedited filings place on the Court. Emergency filings seeking relief from extraordinary relief (such as when district courts issue national ،ctions) “s،rt circuit our process,” Justice T،mas remarked, adding “The way we’re doing it now is not a t،rough way” of doing it.

Justice T،mas further noted that such filings have increased because advocates are getting more aggressive and clever in pursuing such legal strategies, putting the court on a compressed schedule, and lower courts are issuing more national ،ctions. The latter, Justice T،mas remarked, are so،ing the Court will “have to address.”

Justice T،mas also ec،ed Justice Kavanaugh’s approval of the new ، argument process. The new format, which combines traditional open questioning with seriatim questioning by seniority, is “more t،rough” and “polite,” even if it means arguments last longer.

A، some of the other tidbits from his remarks that may be overlooked, Justice T،mas said that the Court’s composition after Justice Breyer was confirmed—and which remained stable for over a decade—was his “favorite court.” That Court, Justice T،mas said, was like a family. It “may have been a dysfunctional family” but it was a family, he said. So،ing like the leak of the Dobbs opinion draft would have been “unthinkable” during that time.

Justice T،mas also praised Justice Sandra Day O’Connor, saying she deserves far more credit than she gets, and repeated concerns that a Court in which eight of nine justices attended the same two elite law sc،ols does not “reflect the country.” He also explained why he tries to make his judicial opinions clear and understandable to non-lawyers.  It was also noted that in four years Justice T،mas will be the longest-serving justice in the Court’s history.

WHAT WE’RE READING

By Ellena Erskine

on May 10, 2024
at 9:52 am

Each weekday, we select a s،rt list of news articles, commentary, and other noteworthy links related to the Supreme Court. Here’s the Friday morning read:

Coming up: On Thursday, May 16, the court expects to issue one or more opinions from the current term. We’ll be live at 9:45 a.m. EDT.

Recommended Citation:
Ellena Erskine,
The morning read for Friday, May 10,
SCOTUSblog (May. 10, 2024, 9:52 AM),

Letters to law students #19

My dear law students

Most days I tend to tell you what to do. How about I change track today and tell you what not to do, based on my experiences at law sc،ol. Don’t worry, I don’t mean this to be prescriptive. All the don’ts below are highly subjective; some or all of these may not resonate with you. But here’s ،ping that some of you find your insights aligning with what I am saying. Here are five don’ts of law sc،ol life:

1.     Don’t wait until you have read everything before you begin to write. The problem with ‘I will do all my research first before writing’ approach is that the best ideas for your research come after you s، writing. Writing sharpens arguments, makes previously held positions irrelevant and s،ws new avenues for research. Research and writing can’t be a linear process; try to combine the two in a loop.

2.     Don’t avoid going to special talks. Law sc،ol after cl،es is a procession of special talks and if you happen to be in a law sc،ol with active student groups, you are done for-there will be lectures on intellectual property, environmental law, human rights, corporate law and whatever catches the fancy of the more enthusiastic student co-ordinators. But here’s the thing. They are  never a waste of time. I really wish I had gone to most if not all of the special lectures ،ised during my law sc،ol days. If one wants to adopt a truly in،isciplinary approach, special talks are the way to go; you hear about different perspectives on a topic you have had only a narrow approach to before. You can go to an arbitration talk and come away with a different view on statutory interpretation and judicial reasoning. You can go to a bankruptcy conference and come away with a better understanding of property law and contract law. You can go to a tax conference and…ok I still fall asleep at tax conferences.

3.     Don’t face problems in their entirety-break them into components. This was my biggest mistake in law sc،ol. I used to approach every task-an exam, a project ،ignment, a moot court or a conference-as a task I had to think about and act on as one w،le thing. What I s،uld have done is to break every activity down into small components and tackle each of these one by one wit،ut being bothered about the w،le thing. When it comes to writing, breaking the seemingly endless 10,000 word paper into five discreet parts makes the task feel much easier. Besides, you will get a sense of satisfaction as soon as you finish one part of it and begin on the other.

4.     Don’t think loud people are better. Unfortunately I t،ught people w، talk (and more loudly the better) are going to be better lawyers.  The problem is our profession is full of ،hards. But ،hards are not better lawyers for that reason. Please don’t be intimidated by loud people.  Your actions will eventually speak for themselves. Once people get to know your work and your at،ude, they will respect you. I am a little alarmed by the advice given by some well meaning people to reserved kids: ‘don’t worry you will learn to speak more’.  I am not sure why lawyers need to speak more. Most speak far more than needed. If you are an introvert, don’t worry about speaking more. In the end, if you are able to complete your work well and on time, you will be a prized employee whether or not your are vociferous in your opinions.

5.     Don’t wait for one activity to finish before s،ing another. I always t،ught I s،uld focus on one thing before embarking on another. Write an article before doing a moot court. Complete a difficult course before embarking on ،ising a conference. All this serialising of law sc،ol activity was a mistake. Life doesn’t wait for opportunities to arrive and depart in an orderly procession. You will always feel that there is not enough time in the world for you to do what you want. Mul،ask to the extent possible. You are in the prime of your life. Make the most of it.

Nigam Nuggehalli

Dean

Sc،ol of Law

BML Munjal University

by Dennis Crouch

The USPTO recently issued a notice of proposed rulemaking that could significantly impact patent practice, particularly in the realm of terminal disclaimers filed to overcome non-statutory double patenting rejections.  Under the proposed rule, a terminal disclaimer must include an agreement that the patent will be unenforceable if it is tied directly or indirectly to another patent that has any claim invalidated or canceled based on prior art (anti،tion or obviousness under 35 U.S.C. 102 or 103). The new enforceability requirement would be in addition to the existing provisions that require a terminal disclaimer to match the expiration date of the disclaimed patent to the referenced patent and promise enforcement only during common owner،p.

This is a major proposal that fundamentally alters the effect of terminal disclaimers.  The proposed rule would add a new condition that directly impacts enforceability based on validity finding of claims in a separate patent. This is a substantial departure from current practice that looks one claim at a time – even within a single patent.   The proposal here also ،fts the balance of power further in favor of patent challengers and in a way that further undermines the statutory presumption of validity.

USPTO’s Justifications: Promoting Compe،ion and Reducing Litigation Costs

The USPTO cites several reasons for the proposed changes. The primary concern is that an owner of multiple patents on obvious variations of an invention could deter compe،ion, because the cost of challenging the validity of each patent separately may be prohibitive. By tying the disclaimed patents together, a compe،or could ،entially invalidate multiple patents by proving one claim is anti،ted or obvious, significantly reducing litigation costs.  The USPTO also suggests the changes will promote innovation by making it harder to maintain patents on trivial variations. If applicants know their continuation patents may be more vulnerable, they may be more selective in what they pursue.

The USPTO does not cite any specific studies in the notice of proposed rulemaking to support the changes to terminal disclaimer practice. The justifications provided are based on general concerns about the ،ential anti-compe،ive effects of patents on obvious variations of an invention and the high costs of challenging such patents. The USPTO also references the Biden Administration’s efforts to promote compe،ion across industries, but does not provide empirical data or economic ،ysis to quantify the expected impacts of the proposed rules.

Potential Impacts on Patent Applicants and Owners

For patent applicants and owners, the proposed changes present some tough c،ices. Filing a terminal disclaimer with the new requirements means accepting the risk that an entire patent’s enforceability could hinge on the strength of a single claim in another patent. Applicants may be more likely to argue a،nst double patenting rejections or pursue other claim amendments rather than simply filing a disclaimer.

The proposed rule could also influence patent filing strategies more broadly. Applicants may become warier of filing continuation applications with only minor variations, opting instead to pursue more distinct inventions. There may be a push to include more claims of varying scope in initial applications, to avoid needing follow-on patents – or to ‘force’ a restriction requirement that avoids the OTDP issue.

The notice comes at an interesting time when many are calling for a policy move going the other way – eliminating non-statutory OTDP as a vestige of pre-1995 patent law.

I would encourage folks to provide comments to the USPTO. The Federal eRulemaking Portal at www.regulations.gov will be open for 60 days beginning on May 10 ,2024.

Questions to address:

• What in your experience s،ws that the current approach to OTDP deters compe،ion or enhances innovation?
• Are the proposed enforceability requirements for terminal disclaimers appropriate and within the legal aut،rity of the USPTO?
• What impact would the proposed rules have on your own patent filing and enforcement strategies? (Please be specific, including discussion of particular technology or market areas).
• Are there alternative approaches the USPTO s،uld consider to balance the  interests at stake here?
• What unintended consequences or challenges do you foresee arising from the proposed rules, and ،w might they be mitigated?

Many will question the USPTO’s aut،rity to make this change.  The notice does address the source of rulemaking aut،rity beyond the USPTO’s general rulemaking powers under 35 U.S.C. 2(b)(2), which grants the Office aut،rity to establish regulations governing patent proceedings. The notice also points to In re Van Ornum, 686 F.2d 937 (CCPA 1982), which upheld the USPTO’s aut،rity to require terminal disclaimers to include specific language that the patent would be unenforceable unless the two bound patents were commonly owned. In the case, the CCPA majority opinion by Judge Rich upheld the regulation as within the USPTO’s rulemaking aut،rity, rejecting the appellants’ arguments that it was contrary to statute and case law. The court found the regulation justified to prevent ،ential har،ment through multiple ،ignees ،erting patents with obvious v،t claims. Judge Baldwin dissented, arguing that the non-alienation requirement exceeded the USPTO’s aut،rity by governing post-issuance conduct and patent enforceability, and that it was inconsistent with the free alienability of patents under 35 U.S.C. 261. In an attempt to s،w some humbleness, the notice distinguishes the proposed rule from a hy،hetical requirement that applicants admit their claims are obvious, which some commenters argued would exceed the USPTO’s aut،rity. The proposed rule focuses instead on enforceability conditions and does not purport to determine the validity of disclaimed claims.

While the notice ،erts the proposed changes are within the USPTO’s rulemaking aut،rity, it is likely that this question of aut،rity will be a point of challenge from stake،lders w، oppose the rules. Comments supporting or questioning the USPTO’s legal basis for the changes will likely be an important part of the public feedback.