Fellow panelist and AIPLA executive director Q Todd Dickinson asked Prost some tough questions that have been raised by many patent lawyers since the Federal Circuit’s deeply divided en banc opinion in CLS v Alice in May last year.
Noting the “very strong dissent” in the en banc decision, which spanned 135 pages, Dickinson remarked: “Some people thought it was personal.”
Prost said it was not: “If you look at the opinions, the alliances have been different in each case.”
At AIPLA's Annual Meeting in October last year, Federal Circuit Chief Judge Rader described the Bilski and CLS v Alice rulings as “the greatest failure in my judicial career.”
Oral arguments in the appeal, Alice v CLS, will be heard by the Supreme Court on March 31. The case concerns the question of when, if ever, computer implementation makes an otherwise abstract idea eligible for patent protection.
Prost wrote the dissent in the Federal Circuit’s original 2-1 split panel decision on CLS v Alice. That decision, issued in July 2012, upheld Alice’s patent claims for a computerised escrow system.
“I take credit for starting all of this,” she joked.
She also argued that disagreements between judges can lead to better opinions.
“I think both the majority and the dissent benefit from that,” said Prost. “I think the issues start to get clearer and the arguments get crisper.”
“One of the things that Judge Pauline Newman said to me is that the thing she’s regretted is not dissenting. She’s never regretted dissenting.”
She said that considering a well-written dissent can occasionally cause judges to change their position.
“It doesn’t happen often, but there are times when once the opinion is in circulation the majority opinion flips.”
Prost also expressed doubt that the Supreme Court will agree with the Federal Circuit’s interpretation of the law in Nautilus v. Biosig Instruments. Oral arguments in the case are scheduled for April 28. The Supreme Court will consider whether the Federal Circuit’s acceptance of ambiguous patents with multiple interpretations – provided the ambiguity is not “insoluble” by a court – are consistent with the statutory requirement of particular and distinct claims.
"You are not there to rehash your arguments, you are there to respond to us"
“My prediction is that I don’t think they are going to embrace the standard of insolubly ambiguous, but beyond that I don’t know,” she said.
Dickinson also raised the Supreme Court’s willingness to overturn several key decisions from the Federal Circuit in recent years. “Do you think the Supreme Court doesn’t respect the Federal Circuit and they think ‘they don’t know what they are doing’?” he asked.
“It’s really hard to tell,” said Prost. “I think one of the disappointments for me with what the Supreme Court does is that in our case at least, there are not a lot of additional views.”
The apparent disagreement between Federal Circuit and Supreme Court judges on how to interpret patent law has resulted in some district court judges “throwing up their arms” in frustration, said panelist Blair Jacobs.
“We really can’t read how the Supreme Court is going to come out on an issue,” said Jacobs, a partner of McDermott Will & Emery. “I have district court judges telling me, ‘I can’t tell whether it’s a factual or a legal issue.’”
Advice for advocates
In response to questions from Dickinson and the audience, Prost also offered some advice to litigators appearing before the Court.
Number one on her list of pet peeves was advocates criticising district court judges.
“It is never the judge’s fault; it is always your fault,” said Judge Prost. “Even if it is a judge from Tennessee who has never had a patent case before, it is still up to the lawyers to do their job right and make sure the District Court is on the right track. Obviously there are a range of judges we see because we are a national court. It makes a difference, but the issues are hard. These judges are very experienced and they have got more experienced in patent law during the 12 years I have been on the bench.
“It is shocking to me when a lawyer will get up in front of us and say: ‘Well, this judge really hates patent cases and that explains why he got it all wrong because he gave us really short shrift.’ Are you kidding me? One, we would never accept that but, two, do you realise you are seeking a remand back to the same judge?”
Judge Prost had more advice other than not badmouthing District Court judges. She said that advocates must keep in mind a good understanding of the process to make good court arguments.
“We decide a case on the briefs more or less,” she said, “but around the edges in our chambers we say it is much more likely you are going to lose a case in oral arguments than to win it. But if you understand the process you are going to be a better advocate. You are not there to rehash your arguments, and you are certainly not there to raise new arguments that weren’t in your briefs. You are there to respond to us.
“The best advocates and most experienced advocates would just die if we didn’t ask any questions. They embrace the questions because it is their chance. Most experienced advocates have enough respect for the bench to know it is not a matter of hiding the ball. Avoiding the question is not an alternative. We are at least as smart as you are. We know it has been avoided, even if we don’t press it.”
Judge Prost said the Federal Circuit judges have heard stories of advocates going out into the hallway after arguments and boasting because they had avoided a hard question.
“Those moments are not lost on us,” she said. “Some of the more aggressive judges will force an answer. Others are like me where if they don’t answer the question you know what the answer is and it is the worst possible answer it could be for the advocate.”
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