Judge Randal Rader of the Court of Appeals of the US Federal Circuit Resigns as Chief Judge

May 27, 2014

 The following is largely cribbed from the IPKAT.

Chief Judge Randall R Rader of the US Court of Appeals for the Federal Circuit (CAFC) has resigned from his role as the head of the CAFC.  

On Friday, Chief Judge Rader wrote a letter to his 18 CAFC colleagues in which he stated:

“I have come to realize that I have engaged in conduct that crossed lines established for the purpose of maintaining a judicial process whose integrity must remain beyond question.  It is important to emphasize that I did not and would never compromise my impartiality in judging any case before me.  But avoiding even the appearance of partiality is a vital interest of our courts, and I compromised that interest by transgressing limits on judges’ interactions with attorneys who appear before the court.  I was inexcusably careless, and I sincerely apologize.”

This emphatic language was as a result of an email that, according to the Wall Street Journal, he had sent to Edward Reines at Weil, Gotshal & Manges LLP.  In this email Chief Judge Rader had reported a conversation that he had with another member of the court who had “praised the attorney’s performance” and also included the judge’s own praise.  Chief Judge Rader had also encouraged the recipient to show the email to others.  In retrospect, the judge recognized that the email constituted a beach of the ethical obligation not to lend the prestige of the judicial office to advance the private interests of others. 

Chief Judge Rader

In his letter the judge also referred to having to recuse himself from previous cases.  A few weeks ago, Chief Judge Rader recused himself from two cases in which Edward Reines was appearing– one for Microsoft and another for Medtronic.  The case concerning Microsoft brought by DataTern Inc was judged in favour of Microsoft and SAP.  Judge Rader wrote a dissenting opinion.  A month later, the CAFC reissued its decision, excluding Rader’s dissent and noting he had been recused from the case.  Whether these events are the main cause of his resignation can only be speculation. 

Chief Judge Rader has been on the court for almost 24 years, having been appointed by President George H. W. Bush way back in 1990.  He became Chief Judge in 2010.  His resignation will become effective on 30 May 2014, after which he will remain on the court as a circuit judge. Sharon Prost, who is part of the 18-judge court, will replace him as Chief Judge.   With a background in labour law, Judge Prost was appointed by Dubya in 2001.


Apart from finding his singing abilities short of his enthusiasm, I have only the best to day about Judge Rader. His decisions are well thought out and well written, and he is a charming fellow.

I’ve noted at IP events in Israel where Marshal Phelps had spoken on a case where Rader had an interest, he was quick to leave the room.

Coming from the UK, I expect a person in authority to resign for misappropriate behaviour that might tarnish the office. Unfortunately, this happens less rarely in Israel, where ministers and others hand on to power until they lose in court. The Israeli courts are also seen as politically aligned and less than impartial. In the past, a head of the Jewish Agency, Simcha Dinitz,was found to have used a Jewish Agency credit card for private purchases. The defense that he’d made a genuine mistake was accepted. Things have got better though. A former president is in prison and a former prime minister has been sentenced for corruption. Corruption always exists and the question is how a society deals with it. Rader’s behaviour is honorable. It is a great shame.

Hillel House Hosting BDS Event – trademark implications

February 23, 2014

Hillel's sandwichHillel

Last Friday’s Jerusalem Post had an article concerning a Hillel House hosting a speaker calling for boycotting Israeli goods and divesting, due to the plight of the Palestinians.

Essentially, Swarthmore College’s Hillel House passed a policy stating that they would allow and sponsor any and all organizations and people be they “Zionist, anti-Zionist, post-Zionist, or non-Zionist”. See here. They now intend inviting a speaker who is calling on BDS – boycotting, Divesting and calling on sanctions against Israel because of the Palestinian Issue.

Hillel International has called on Swarthmore College’s Hillel House not to host the event under the auspices of Hillel.

Obviously the issue raises questions of freedom of speech, Antisemitism, anti-Zionism and racism.  It occurred to me that there are also trademark issues involved. A quick look at the USPTO trademark register shows that B’nai B’rith DBA B’nai B’rith International CORPORATION D.C. 2020 K Street, N.W. 7th Floor Washington D.C. 20006 has a trademark for Hillel. See here. (There is also a delightful trademark registration for Hillel’s Angels, for an Association of Motorcyclists, primarily of the Jewish faith that was filed by Wyckoff/Franklin Lakes Synagogue of NEW JERSEY, which has unfortunately, been allowed to lapse).

If Swarthmore College’s Hillel House is affiliated to B’nai B’rith International, presumably the umbrella organization can define what type of events and speakers are kosher.

Hillel International’s policy states:

Hillel will not partner with, house, or host organizations, groups, or speakers that as a matter of policy or practice: 
• Deny the right of Israel to exist as a Jewish and democratic state with secure and recognized borders; 
• Delegitimize, demonize, or apply a double standard to Israel;
• Support boycott of, divestment from, or sanctions against the State of Israel; or 
• Exhibit a pattern of disruptive behavior toward campus events or guest speakers or foster an atmosphere of incivility.

Presumably Hillel International can force Swarthmore College’s Hillel House to abide by the policy or not to use the name Hillel.

Compared to friends at City University, South Bank Poly (University of Greenwich) and elsewhere, I was fortunate to do my undergraduate studies at Imperial College, then a relatively non-political campus. We did have some trouble with the Just Peace in The Middle East Society, the Socialist Workers, and others, but mostly things were calm. In my first year, I ran for the post of religious affairs officer of the Student Union, and, in addition to the Jewish Society, garnered support from the Christian, Moslems and atheist (Huxley) societies, although lost to a candidate supported by the political societies, the largest of which, ConSoc, was the Conservative Society.

Students tend to be political animals, generally irresponsible and immature. I certainly got up to a couple of stunts that with the benefit of hindsight, would consider irresponsible.

I see Swarthmore Hillel’s position as fairly reprehensible.   Since Israel is anyway engaging with the Palestinian leadership, the timing of this is also unfortunate. A Hillel House should try to cater to the Jewish student mainstream. It should be inclusive. I think food should be Kosher. There should be a mehitza for prayers, but it should be minimalist. Let everyone be made welcome. I don’t think that a Hillel House should invite a disciple of Meir Kahanne or a Far Left speaker. I do think that a calm and reasoned debate on settlement and security, democracy and Palestinian self-determination is valuable, but note that it doesn’t happen in Israel, so why should it happen in the US? In general, I think that there are more than enough non-Jewish organizations that are vehemently anti-Israel, without Jewish student organizations joining the bandwagon. 

If any students of Swarthmore College (or any Jewish students studying anywhere) are interested in seeing a West Bank settlement and talking to the residents, I’d be happy to host them.

Super Dooper Patent Prosecution Highway

January 5, 2014

test pilot

Israel and 17 other examining authorities have now set up a Global Patent Prosecution Highway.

The 17 offices involved in the GPPH pilot are IP Australia (IP Australia), Canadian Intellectual Property Office (CIPO), Danish Patent and Trademark Office (DKPTO), Hungarian intellectual property office (HIPO), Icelandic Patent Office (ELS), Israel Patent Office (ILPO), Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO), National Board of Patents and Registration of Finland (NBPR), Nordic Patent Institute (NPI), Norwegian Industrial Property Office (NIPO), Portuguese Institute of Industrial Property (INPI), Russian Federal Service for Intellectual Property (ROSPATENT), Spanish Patent and Trademark Office (SPTO), Swedish patent and registration office (PRV), United Kingdom Intellectual Property Office (IPO), and United States Patent and Trademark Office (USPTO). 

An application first examined in one, may, if at least one claim is found to be novel and inventive, be used to accelerate Examination in other pilot jurisdictions.


I suspect that with just about everything being fast-tracked, the system will probably break down. One wonders if a pile up on the Worldwide Superhighway could result in everything grinding to a halt. Still, there are no human test pilots, so no harm done.

The PCT, was, of course, supposed to achieve this. If, instead of ignoring PCT search reports, the various national phase jurisdictions would consider their findings, I suspect that backlogs could have been dealt with years ago.

USPTO offering reduced price searches for PCT applications filed by small and micro-entities

December 22, 2013


As of 1 January 2013, the USPTO will be offering reduced price searches for PCT applications filed by small and micro-entities. The cost of the International Search Report will be  $2080 for regular entities, $1040 for small entities and $520 for micro-entities.

The current fee charged by the Israel Patent Office for International Search Reports is NIS 3500 which is currently slightly less than the US fee for small entities, but the dollar is sliding against the Shekel and the Israel patent office traditional updates its fees on 1st January and on 1st June so the fee for regular entities is cheaper in Israel, for small entities is the same in both jurisdictions and for micro-entities is cheaper in the United States. It is not unlikely that the Israel Patent Office and other patent offices will also offer a ISR fees on a sliding scale.

Note: the choice of examination authority can effect using the patent processing highway (PPH) and also the cost of national phase entry in both Israel and the US, so it is advised to consult with a competent patent attorney before first filing a provisional or regular application in the US or a regular filing in Israel,  and which route to take for the PCT, or indeed, whether to use the PCT system at all.




USPTO Enters the 21st Century

September 2, 2013


Having criticized the Israel Patent Office for not updating their web-based services and given the USPTO as an example where one can make on line payments that are registered in the system without requiring printing out and submitting on flexible, cellulose based media, it has come to my attention that the USPTO now even allows patent downloads a PDFs!

Until now, one could print individual pages as TIFF files if one has a TIFF reader. Most people don’t. Patent Attorneys who sometimes do, having followed USPTO instructions for downloading a free TIFF reader, often still run into problems. Clients typically download patents as text from the USPTO and the ask me where they can obtain the figures from. Apart from paid services like Delphion, I usually go to Espacenet, but in many regards the USPTO website is more user-friendly.

BTW – I read up this exciting development on Lotempio.




Given Imaging Loses in Prosecution, on Appeal to Board of Appeals, and then Again at United States Court of Appeals Federal Circuit

July 22, 2013

bitter pill

Given Imaging is an Israeli technology company that has developed a camera on pill. Essentially, the patient swallows the camera which images the digestive tract as it passes through, prior to being excreted.

Given Imaging filed a patent application number 10/097,096.  The pending claims of which, Nos. 57, 59, 61, 63-67 and 71 were rejected as obvious in light of the combination of WO 00/22975 to Meron (an earlier PCT application filed by Given Imaging) in view of Masaru Hitata et al. Study of New Prognosis Factors of Esophageal Variceal Rupture By Use of Image Processing with a Video Endoscope.

Essentially, the Meron publication teaches  a capsule that moves through the gastrointestinal tract in order to map the tract. Although the capsule could include a blood determining sensor, it is not specifically disclose this. Hirata does, however teach a study of factors of aesophageal variceal rupture by use of imaging with a video endoscope, teaching red colour tone and red colour signs as indicative of bleeding.  The Examiner considered it obvious to combine the two teachings.

The Applicant, represented by Pearl Cohen-Zedek Latzer (PCZL) appealed the obviousness ruling to the Board of Appeals which affirmed the Examiner’s findings. Undeterred, Pearl Cohen Zedek Latzer (PCZL) appealed to the United States Court of Appeals Federal Circuit. PCZL, represented by Guy Yonai, argued that the Appeal Board did not appreciate that a comparison was made between different redness shades and claimed that the Board relied on new grounds for opposition and should therefore, have reopened prosecution.

After acknowledging that they had jurisdiction to hear the appeal, the CAFC repeated that the obviousness determination is a legal determination, citing KSR vs. Teleflex, Proctor & Gamble vs. Teva, Graham vs. John Deere. The Court ruled that where the Board relies upon a new ground of rejection not relied upon by the Examiner, the applicant is indeed entitled to reopen prosecution or to request a rehearing. However, in this case, the Applicant was mischaracterizing the examiner’s grounds of rejection, and neither points to specific facts found by the board but not found by the Examiner, nor illustrates how any such facts formed the basis of the Board’s rejection. In fact, the Examiner relied on Hirata’s disclosure of both the red color sign and the red color tone, not just stating its use of the color sign classification.

The FCAC ruled that whereas the boards’ explanation may go into more detail than the examiner’s, that does not amount to new ground of rejection. See In re Jung 637 F,3d 1356, 1365 (Fed. Cir. 2011).

In Conclusion: Because the Board did not err in rejecting the pending claims as obvious over Meron in View of Hirata and did not rely on new grounds for rejection, the Board is affirmed.

In re Adler, Appeal No. 12-1610 (Fed. Cir. 2013)


I understand that swallowing a pill camera is not pleasant, but compares favorably with fiber-endoscopy. As the examiner, the board of appeals and the Court of Appeal Federal Circuit all found the claimed invention obvious, and it is, after all, merely a combination of two prior art citations, we think that it is indeed obvious.

The first appeals board is the patents appeals board or PTAB, a body of administrative judges specializing in patents and patent prosecution. In 99% of cases, their findings are final. In more than a third of the cases brought before PTAB, there is reversal in part of the Examiner’s finding. In this case however, they essentially accepted the Examiner’s version and even added some of their own interpretation as to why the Examiner was right in the rejection. What PCZL failed to recognize was that the PTAB was sending a message to Given Imaging saying “not just that we think the Examiner was right, but he was being easy on you and moreover, we think that based on the two references cited, the invention is obvious because of these ADDITIONAL reasons.” PCZL mistook “additional” for “different” which the CAFC denied on appeal while scolding PCZL (pages 8-10) for doing a bad job on appeal. Of course, PCZL could now try taking the case to the US Supreme Court, but it is unlikely that they will agree to hear the case.

I find it difficult to understand PCZL’s strategy here. The essential argument is whether redness in the gut that is comparable to redness caused by bleeding is an indication of bleeding. I find it difficult to rationalize why that shouldn’t be so.

Patently-O wrote up the case here: Federal Circuit Deciding USPTO Procedure: New Grounds for Rejection

The original decision is here: 12-1610.opinion.7-15-2013.1

Another lawsuit filed by PCZL on behalf of an Israeli Company may be found here 

Finnegan, begin again!

July 3, 2013

Finnegan 2   Finnegan   finnegan 3

For those of you who missed the Finnegan play on 3rd July 2013, by attending the AIPA general meeting or other prior commitments, there is a second showing on 4th July 2013 at 6:30 PM in Bet Hel HaAvir, Herzliyah, after a buffet supper from 5:30 onwards. The refreshments were quality, kosher vegetarian, and I think acceptable to Moslems, Jews, vegetarians, etc.

There was also wine and beer available. 

I enjoyed the play and so did most of the audience, including patent attorneys, IP managers, lawyers and academics.

I won’t go into further details here until after Thursday’s performance, so as not to spoil any surprises.


Here are the details of the play:


Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, a US firm of patent attorneys are presenting a Courtroom drama, titled “You are the Jury” 4 Jul 2013 at Beit Heyl Ha’Avir Auditorium
15 Jabotinsky Street, Herzliyah, Israel.

The play stars well known Israel actors, Ishai Golan  (the Slut “הנותנת”),Daniella Wircer (“the Bubble”‎ הבועה) , Zohar Strauss (Eyes Wide Open)  and Rona Lipaz Michael (Lemon Tree עץ לימון), on stage with Finnegan litigators in a courtroom drama packed with humor, fun, and music. While it will certainly be entertaining, it contains serious and important lessons about the U.S. legal system and how to develop stronger patents for your company. The play, which is being billed as a Story of Love, Lust & Patent Infringement, starts at 6:30, and is preceded by a buffet supper at 6:30.

Cost – NIS 100 contribution to Ezer Mizion charity. 

Hal Novick With Crackers!

December 25, 2012

crackerhal novickSimon and Hal with cracker 2Simon Kay of Pioneer IP Consulting Ltd, a leading Israel Boutique IP Firm sponsored a seminar to Israel Businessmen on Changes to US Patent Law under the American Invents Act, and on US trademark law.  The seminar, held on December 24, 2012 in a conference room at Celltick, one of Simon’s clients, was presented by Harold Novick, a US patent attorney that I’ve known for some years.

Hal is a highly experienced practitioner with 40 years experience in private practice, and is also an erudite lecturer. I met him last week at Almog which is near Jericho and about 250 m below sea level which was a fitting place to meet Hal who was a submariner in an earlier life!

Hal Novick is a familiar feature at international IP conventions such as INTA and AIPPI, where with his beard and flat cap, he looks, well kind of Jewish in a profession where Jewish practitioners are hardly rare. There aren’t many countries where an IP seminar on Xmas Eve would be a complete sell-out with all chairs taken, but this is Israel, where Christmas is a regular working day, and is hardly noticed. Hal peppered his presentation with traditional Xmas crackers that he used as an example of a product that could be patented and maybe protected by trade dress.

Personally, I didn’t find anything distinguishable in the get-up of the crackers which were standard size and shape, and made of brown wrapping paper with red ribbon trim and decorated with Xmas trees. However, I would hesitate to argue with Hal on whether there was an element that could be registered as a trademark since Hal showed a real-life example of a clip that was protected by a utility patent (indicating that it’s design was functional), which, once the patent protection ran out, Hal managed to obtain a trademark registration for by collecting statements from people who swore that the product was indicative of the origin, and was thus registerable as a trademark. What is clear is that Hal thinks out of the box and is a persuasive advocate on behalf of his clients.

Formerly of the Nath Law Group and Hershkovitz and Associates, Hal has now teamed up with a pair of Korean born US licensed Patent Attorneys and launched his own firm Novick, Kim & Lee. This is not Hal’s only connection with Korea, since Hal is a past adjunct professor of IP law at Handong International Law School, an American style law school in Korea.

After the program, Simon Kay invited all participants at the seminar to a Kosher Italian restaurant nearby to celebrate Hal’s 70th birthday.

I’d like to thank Simon and Hal for a very enjoyable and informative evening.

Seminar – Recent Changes in US and Israel Patent Law

September 3, 2012

There have been some substantive changes to both the Israel and US patent law and practice recently.

In the US, there is now a procedure for oppositions. Israel applications now publish before allowance and third parties can submit prior art to the Israel patent office. 

On Monday 10th September, between 4 PM and 6 PM we are holding a cosy seminar in our Rosh haAyin offices where Greg Rosenblatt of Wiggin & Dana will present on the changes in the US Law and I will discuss the changes in Israel Law.

There is no charge, but our conference room is not very big, so pre-registration is essential. Drop me an email mfactor@ipfactor.co.il if you are interested in participating.

A tea of honey cake, wine and other seasonal refreshments will be served.

Book Review: The Essentials of Patent Claim Drafting

January 8, 2012

The Essentials of Patent Claim Drafting by Morgan D. Rosenberg is a straightforward practical guide to drafting claims, aimed at the beginner. To the extent that one can learn to draft claims from a book, this is not a bad tutorial.

As with many such works however, it is strongly biased to mechanical type drafting. Software and physics are covered to some extent, but the focus is heavily on the predictable arts. The claim style is a little long-winded and pedantic for my taste. The focus is on USPTO requirements, but nevertheless, in my opinion, a chapter dedicated to the differences in US approach, from say, that of the EPO, would be a valuable addition.

The thrust is on drafting claims for obtaining patents. System, Method, product-by-process, Jepson, Markush and Beauregard  claim styles are discussed and illustrated, as are means+function, which are discouraged. Free Beer claims are not mentioned unfortunately. Nor are other claim styles disallowed in the US such as omnibus claims.  Since ultimately a patent might be litigated, there should perhaps be some discussion on claim construing in Marksman hearings and the need to make sure that terms cannot be misinterpreted.  Nevertheless, a useful guide for beginners.

  • Paperback: 224 pages
  • Publisher: Oxford University Press, USA (November 17, 2011)
  • Language: English
  • ISBN-10: 0199856354
  • ISBN-13: 978-0199856350
  • $125


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