About the Authors

  • The Authors and Contributors of "Patent Docs" are patent attorneys and agents, many of whom hold doctorates in a diverse array of disciplines.
Juristat_165
Juristat #8 Overall Rank

E-mail Newsletter

  • Enter your e-mail address below to receive the "Patent Docs" e-mail newsletter.

Enter your email address:

Delivered by FeedBurner

Contact the Docs

Docs on Twitter


Disclaimer

  • "Patent Docs" does not contain any legal advice whatsoever. This weblog is for informational purposes only, and its publication does not create an attorney-client relationship. In addition, nothing on "Patent Docs" constitutes a solicitation for business. This weblog is intended primarily for other attorneys. Moreover, "Patent Docs" is the personal weblog of the Authors; it is not edited by the Authors' employers or clients and, as such, no part of this weblog may be so attributed. All posts on "Patent Docs" should be double-checked for their accuracy and current applicability.

Pharma-50-transparent_216px_red

« Natural Alternatives International, Inc. v. Iancu (Fed. Cir. 2018) | Main | PTAB Adopts Litigation Standards for Claim Construction in AIA Proceedings »

October 10, 2018

Comments

Crappy decision. As with Ariosa, they should have just "distinguished" Myriad/Mayo out of the picture, instead of continuing to woodenly apply scotus decisions that they know are both incorrect and stupid. Linn's concurrence in Ariosa did nothing to get scotus to change its ways, and the present concurrence won't do anything either, not for en banc rehearing, not for cert. As you note, Kevin, it means continuing to move in the direction of non-disclosure - or just not investing in diagnostic methods in the first place. Which is hardly a way to "promote the progress" of science.

Hey Kevin,

Hopefully, O'Malley's concurrence will be a "wake-up call" to the Federal Circuit to rein in both Myriad and Mayo. The technological and scientific ignorance expressed in both of these SCOTUS' decisions is appalling, on par with believing the Sun revolves around the Earth.

To the notion of:

At the Federal Circuit, in contrast, two judges can effectively produce a precedential decision binding on all future panels, unless and until the decision is reconsidered en banc.

Is it NOT surprising that in the wake of the Supreme Court's rewriting of patent law vis a vis 35 USC 101, that there has been a rampant (and oft times violent) ping pong of panel decisions that absolutely conflict one with another? And do so with none of these conflicts provoking an en banc clarification?

Same day, same court: Federal Circuit releases opinion (Data Engine v. Google) holding the tab function of computer spreadsheets patent-eligible.

A tabbed spreadsheet is patent-eligible, but a lab test for rapid detection of antibiotic-resistant tuberculosis is not?

This is madness.

Because they don’t know how, Skeptical, and know that they might get second-guessed by the Supreme Court

"Judge O'Malley reminds her colleagues and us that the BRCA1 decision did not rule on the patent eligibility of PCR primer claims and does not compel the result the Court announced here."

Er, not quite. Judge O'Malley wrote a *concurrence* instead of a *dissent* because she believed that the outcome in this case *is* compelled by the holding of In re BRCA1 (she says as much, in so many words, on the first page of her dissent, slip op. at 1, "I agree with the majority that our decision in In re BRCA1... compels the conclusion that the primer and method
claims... are not eligible for patent protection"). Judge O'Malley's concurrence reminds us that the BRCA1 panel made a ruling that reached issues beyond what they really *needed* to decide to resolve *that* case, and as a result of the BRCA1 panel's overbroad decision, the outcome *here* was compelled to go a way that it ought not have and might not otherwise have gone. This is an excellent argument for en banc reconsideration of In re BRCA1, and I am keeping my fingers crossed for Judge O'Malley's gambit to succeed.

"As with Ariosa, they should have just 'distinguished' Myriad/Mayo out of the picture, instead of continuing to woodenly apply scotus decisions that they know are both incorrect and stupid."

Naturally, I agree that it would have been better if this panel had "distinguished" BRCA1 (and Mayo, and Myriad) into insignificant obsolescence. When the panel has Hughes, Reyna, and O'Malley, however, judge O'Malley did the best here that she could to play the hand that she was dealt. There was no way that she was going to win Hughes over to the idea of swamping Mayo or BRCA1. Once it became clear that Reyna was going to side with Hughes, she was simply outvoted. The best she could do (and I am still hopeful that her best might prove sufficient here) is to write a winsome and sympathetic concurrence to make it politically palatable (that is, with regard to the internal politics of the CAFC) to take the case en banc and back away from the ledge, without forcing the members of this panel or the BRCA1 panel to lose face. I admire her work here.

Greg: I am curious about the order of your statement on the majority. In view of Judge Reyna's authorship in Ariosa v. Sequenom, I would think that the issue was that Judge O'Malley could not convince Judge Hughes to her point of view.

On your other point, if the issue was abuse of discretion, what is the basis for the Federal Circuit to have held, as a matter of law, that the Myriad claims were invalid? I know that this is what they did, but I read Judge O'Malley's concurrence as questioning the legal validity of that decision.

One way that a block of SCotUS justices can win over a wavering colleague to their side so as to form a majority is to agree to let the wavering justice write the opinion. In other words, the fact that a given jurist writes the opinion is actually evidence that this jurist was less committed to a given outcome than the rest of the members of the majority coalition.

I *assume* (but welcome correction from others if I am wrong about this) that the same dynamic plays out in the circuit courts of appeals. In other words, I infer from the fact that Reyna wrote the opinion that he was the swing vote on this panel, just as one could usually infer as much from the fact of Justice Kennedy authoring a SCotUS opinion.

"she says as much, in so many words, on the first page of her dissent..."

Er, I meant her *concurrence*. Mea culpa.

Pure conjecture:

the fact that a given jurist writes the opinion is actually evidence that this jurist was less committed to a given outcome than the rest of the members of the majority coalition

What grounds is this conjecture based upon?

You may be right, Greg, but in speaking to Judge Reyna I have gotten the impression that he is a true believer (as may be Judge Hughes)

Dr Noonan,

Respectfully, your comment of:

"Because they don’t know how, Skeptical, and know that they might get second-guessed by the Supreme Court"

brings no solace.

The mere idea that "they don't know how" brings to my mind a severe dereliction of duties, given their mandate at their foundation.

The notion of "they might get second guessed" only supports the rather painful proposition that follows the psychological thought experiment of simians being trained in a cage (being doused with a fire hose for reaching for a bunch of bananas hanging in the center of a cage, exchanging a simian, repeat the dousing, exchange another simian, repeat the dousing, and at some point, one need not douse anymore, as any new simian will be pummeled by the other simians -- even to the point of enough replacements, that no original doused simians need be present.

The shorter version of course of the simian though experiment is that the CAFC is being bullied by the Supreme Court - and AGAIN, this brings about the notion that the CAFC is in dereliction of their duties based on WHY that body was formulated.

What that body NEEDS is a jurist strong enough in their knowledge of Congress's intent to PUSH BACK against the ever-encroaching dicta of the Supreme Court (as Judge Rich did, and which brought a brief reprieve in the form of Chakrabarty and Diehr.

It is about time that the judges went back to law school.

An opinion is precedential on the rule of law derivable from the fact pattern before the Court. It is NOT precedential as to fact, and if the underlying findings of fact are wrong it is of no precedential value whatsoever.

On its face, the Ariosa decision is quantifiably wrong by a factor of 1,000 to 1,000,000 the amplified DNA being a synthetic product created in the laboratory from individual nucleotides and being in vastly greater abundance than anything that occurs in nature. It is not "merely isolated" as in the BRCA1 case. The only proper place for the Ariosa decision is in the waste paper basket, where the present case should also arguably go.

"[I]n speaking to Judge Reyna I have gotten the impression that he is a true believer (as may be Judge Hughes)"

That is my impression as well, although my impression is that Judge Hughes is *even more* of an Alice true believer than is Judge Reyna. Still and all, I would not wish to press my tea-leaf reading any farther than I already have. My posts above are mostly surmise, not real knowledge, so anyone who finds them implausible is well justified in their skepticism.

Perhaps the new makeup of the Supreme Court will provide the very much needed change in direction on eligibility and get us back on the right track. Certainly, the Federal Circuit cannot easily do so and has been slapped down so many times by the Supremes, it's understandable that they are reluctant to try again. However, even if the new Court looks more favorably on patents, the "pendulum swing" the Supreme Court has imposed on patent law over the past 50 or more years can only be addressed through legislation. It's time to make that happen.

"Perhaps the new makeup of the Supreme Court will provide the very much needed change in direction on eligibility and get us back on the right track. Certainly, the Federal Circuit cannot easily do so and has been slapped down so many times by the Supremes, it's understandable that they are reluctant to try again."

SCOTUS' meddling in the patent law and giving insufficient deference to the Federal Circuit is certainly a huge problem. But unlike the Federal Circuit governed by the strong leadership of Chief Judges such as Rader, Michel, and especially Markey, that would "push back" on these overgeneralized (and frankly incorrect) SCOTUS rulings, the current one (Prost) who is, in my opinion, an extremely weak Chief Judge, and usually does not "push back" is now part of the problem. In fact, Prost appears (with the limited exception of the remand in Akamai where the en banc panel ruled 10-0 in favor of Prost's opinion which essentially thumbed the Federal Circuit's collective nose at SCOTUS) to pretty much adopt without questioning SCOTUS patent law precedent, especially in the problematic patent-eligibility area. Not having a Chief Judge who is willing to "buck" such overgeneralized (and too frequently incorrect) rulings by SCOTUS hurts us and our clients by creating the current chaos and unpredictability, especially as evidenced by the differences in panel-to-panel rulings.

Verify your Comment

Previewing your Comment

This is only a preview. Your comment has not yet been posted.

Working...
Your comment could not be posted. Error type:
Your comment has been saved. Comments are moderated and will not appear until approved by the author. Post another comment

The letters and numbers you entered did not match the image. Please try again.

As a final step before posting your comment, enter the letters and numbers you see in the image below. This prevents automated programs from posting comments.

Having trouble reading this image? View an alternate.

Working...

Post a comment

Comments are moderated, and will not appear until the author has approved them.

Your Information

(Name is required. Email address will not be displayed with the comment.)

October 2018

Sun Mon Tue Wed Thu Fri Sat
  1 2 3 4 5 6
7 8 9 10 11 12 13
14 15 16 17 18 19 20
21 22 23 24 25 26 27
28 29 30 31