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« Court Report | Main | Post-GSK: Where Do We Go from Here? - Readers Propose Changes »

January 07, 2008


Looks like Prof. Lemley may be representing the USPTO too:

"January 2, 2008 [216 Court Opinion or Order] ORDER for Pro hac vice of Mark Alan Lemley Filing fee $ 50, receipt number 100005674. Signed by Judge James C. Cacheris on 1/2/2008. (Attachments: # 1 Receipt)(rban, )"



Well, since the Office based their nwe rules, in part, on Lemley's unsubstantiated theories about why continuations are "bad," it isn't much of a surprise, is it?

This is probably a good thing for biotech, but it may herald bad news for everyone else. How is this conditioned sale any different that what one might get if, for example, the major car manufactures (who presumably have patents over various parts of an automobile) condition sale of the car on a purchasers promise not to resell the car to a third party? Or a promise that you won't repair the various patent components of the car anywhere else but the dealership?

On this point, I think very clearly the doctrine is just plain wrong, especially in the context of "sales" to consumers.

Dear mmm:

The reason for the long introduction before getting to the point (SCOTUS passing on the opportunity to overturn the CAFC) was to emphasize how the unique features of biotech inventions require traditional patent law concepts to adapt to this technology (which is better than trying to make the technology bend to the law). The reason for differential application of the repair/reconstruction doctrine to biotech inventions and automobiles is that automobiles don't self-replicate. There is nothing wrong with differential application of legal principles to technology, so long as there is a sound reason rooted in the purpose of patent law (exclusionary right for a limited time for inventions that satisfy the statutory requirements of patentability). After all, the written description requirement is applied very differently to recombinant DNA than it is to improved automotive components, as is the utility requirement (when was the last time a mechanical device that didn't purport to be a perpetual motion machine received a 101 rejection?).

For Monsanto, there is a need for customers to give them the benefit of the bargain and not try to free-ride on the technology. The seed could cost 10X as much, perhaps, to get to the same investment return, but then the rest of us wouldn't receive the benefit of the technology because fewer farmers could afford the seed in the first place. And, ultimately, if improved seed development doesn't return its investment, we won't have any. One thing you have to say for agribusiness, it does development more quickly than would occur in traditional breeding programs by individual farmers.

Thanks for the comment.


You bring up an excellent point of distinction between McFarling and the LQ case currently before SCOTUS. What is surprising (and I'm not alone on this) is why SCOTUS didn't take McFarling on the "patent exhaustion" issue and consider it together with the LQ case to make clear this distinction that you've pointed out. But then again, SCOTUS is notorious for not trying to render order out of the chaos. Even when SCOTUS takes related cases, they don't necessarily give clear direction. Witness the 2 Ten Commandments cases which SCOTUS came to different conclusions on arguably a similar facts, and leaving one district court judge to mutter and grumble in one of the "pledge" cases:

This court would be less than candid if it did not acknowledge that it is relieved that, by virtue of the disposition above, it need not attempt to apply the Supreme Court’s recently articulated distinction between those governmental activities which endorse religion, and are thus prohibited, and those which acknowledge the Nation’s asserted religious heritage, and thus
are permitted. As last terms cases, McCreary County v. ACLU, 125 S.Ct. 2722, 2005 WL 1498988 (2005) and Van Orden v. Perry, 125 S.Ct. 2854, 2005 WL 1500276 (2005) demonstrate, the distinction is
utterly standardless, and ultimate resolution depends of the shifting, subjective sensibilities of any five members of the High Court, leaving those of us who work in the vineyard without

In other words, we in the IP area are not alone in muttering and grumbling on why SCOTUS does (or doesn't) take action to give us working in the vineyard folk guidance.

Dear EG:

Sometimes I think the Court likes the phonic similarities between SCOTUS and "inscrutable." I think the decision in the LG case may favor the defendants, and that the Court isn't ready to tackle the biotech implications at the same time. They know that by doing it this way, someone will come back someday and say "Isn't McFarling inconsistent with LG," and then they can explain with Solomonic wisdom how they in fact are completely consistent (or overrule one or the other and explain it that way).

I've always thought that patent law has an advantage that it is, ultimately, grounded in scientific reality in the way that religious disputes are not. Which is why I tend to stay away from them, and am willing to let the Court figure them out.

And I guess that District Court judge won't be getting an invitation to the SCOTUS Christmas (sorry, Holiday) Party this year.

Thanks for the comment.


Thanks for the follow up comment. Actually, I enjoy dabbling with constitutional issues, like the establishment-free exercise clause (sorry, "separation of church and state" is a very dirty phrase in my book). The district court judge was ruling on the 9th Circuit pledge case (filed by Newdow, an atheist) as to the inclusion of "under God" and felt bound by prior 9th Circuit precedent to strike it down. But there's also a 4th Circuit case (filed by God-believing plaintiff, if you can imagine that) that says including "under God" in the pledge is perfectly constitutional, even citing SCOTUS majority, concurring and possibly even dissenting opinions that have repeatedly said (admittedly as dicta) that including phrases like "under God" in the pledge suffer no constitutional infirmity. It at least keeps my mind limber and hopefully allows me to avoid the unfortunate (and unfounded) stereotype that IP lawyers and patent attorneys in particular don't know (and don't care about) other areas of law.

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