Federal Circuit Fables

Federal Circuit FablesThese two orders offer some pithy reminders of things to watch out for if you appeal to the Federal Circuit. I took a page from Aesop to give you the morals from the missteps in these cases.

What a Difference a Word Makes

In re Gerald M. Benson, No. 2011-1311 (Fed. Cir. Nov. 28, 2011) (Chief Judge Rader, Circuit Judges Dyk and O’Malley) (nonprecedential order)

In our fast-paced world of microblogging, instant messaging, and text messages, it’s easy to make little mistakes like misspelling or leaving out a word. But people usually know what you mean, so no big deal, right? Well, it can be problematic when the dropped word is in a Board of Patent Appeals and Interferences (BPAI) decision.

Apparently, the BPAI left out the word “not” in the last sentence of the claim construction section of its decision in this case. Oops. Since the applicants’ Federal Circuit briefs relied on the wrong version, the court sent the case back to the BPAI so that it could fix the decisions.

The moral of this order: Proofread before you print.

Secrets, Secrets Are No Fun

In re Biosearch Technologies, Inc., No. 2011-m995 (Fed. Cir. Nov. 23, 2011) (Judge Dyk) (nonprecedential orders)

It’s no secret that there’s a lot of confidential information disclosed to the court and the other parties in patent litigation. Parties involved in patent cases may be competitors, and they don’t want to give their secrets to the other side. Protective orders and confidentiality markings take care of a lot of these concerns. But when you file briefs in court, make sure the secrets you want to keep are actually secrets. The Federal Circuit takes this seriously—earlier this year, the court sanctioned a party for over-designating confidential information in its brief.

Here, when the parties marked several pages of their briefs and nearly 20 pages of the appendix confidential, the Federal Circuit thought they were a little too guarded. The court ordered them to submit modified versions of the briefs using more discretion with their confidentiality designations. If the parties didn’t comply within 7 days, the court would “make publicly available a document reflecting that confidential material and may use such material in its public disposition.” In other words, the court threatened to spill their secrets.

The moral of this order: Don’t be sloppy with confidentiality markings when dealing with a court. Secrets can hurt someone, possibly the party who wants to keep the secret if they don’t carefully designate the secret stuff that really needs to be protected.

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