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September 22, 2008



Like you, I find Aristocrat "unremarkable". But there's been quite a bit of "huffing and puffing" about this decision on other blogs. I frankly feel the Federal Circuit has interpreted 35 USC 282 correctly here in ruling that an alleged "improvident grant" of unintentional abandonment is not a proper validity defense. At least this panel bothered to read and interprete each part of 35 USC 282 (as it should) to be consistent. In fact, SCOTUS could benefit from looking at how this panel interpreted the statute and stop relying on "SCOTUS patent common law." For example, the reference in KSR International to the improbability of patentability in a combination of old elements is one such awful and nauseating instance of SCOTUS spouting "SCOTUS patent common law" and ignoring the second part of 35 USC 103(a) that says that patentability shall not be negatived by the manner in which the invention was made. Admittedly, the Federal Circuit doesn't always do a good job in interpreting the patent statutes, but SCOTUS is just plain lousy in this regard.

Dear EG:

I agree that the Supreme Court seems to think it understands patent law the same way it appreciates pornography - "intuitively" and, ultimately, in a policy/goal-oriented way. This puts its philosophy in direct conflict with the Federal Circuit, which has tried to adopt predictable analytical rules to make patent law less arbitrary. Under the Supremes' preferred "totality of the circumstances" jurisprudence patent law has become less rather than more predictable.

It raises the interesting question of whether the Congressional intent of creating the Federal Circuit has any bearing on the scope of Supreme Court review. Certainly the Federal Circuit is an inferior appellate court, but does the CAFC's enabling statute entitle them to any deference within their sphere of expertise? The Supreme Court could undoubtedly be able to cast any opinion in a manner that would avoid Congressional limits on its plenary power over the Federal Circuit, but maybe some enterprising academic could look into it - after all, who knew similar musings could cause an uproar over APJ appointments to the BPAI?

Thanks for the comment

"It raises the interesting question of whether the Congressional intent of creating the Federal Circuit has any bearing on the scope of Supreme Court review."


I have had the same thought and have even it expressed it. It was certainly the Congressional intent in creating the Federal Circuit in 1982 that it be the primary court to articulate patent law jurisprudence. In fact, I've argued that the SCOTUS line of thinking in Anderson's Blackrock/Sakraida may have been undermined (and should be undermined given how they don't follow what's written in 35 USC 103) by the creation of the Federal Circuit.

What SCOTUS has done recently not only upsets that Congressional intent, but creates chaos in patent law jurisprudence. Of course, and in response to others who feel I'm saying SCOTUS can't review Federal Circuit cases on patent law, that's not the case. eBay may be a good example of where SCOTUS needed to step in because the issue of permanent injunctions transcends patent law (if only Justice Kennedy hadn't uttered that absolutely noxious concurring opinion that some of the district courts have unfortunately picked up on). But for SCOTUS to opine routinely, as it has recently, on matters (such as in KSR International and in Microsoft) strictly relating to the patent statutes is ill-advised in my opinion. And when SCOTUS does opine, we unfortunately get no clarity on what these patent statutes mean other than SCOTUS "gobbledygook" (sorry, I couldn't resist taking a jab at what Justice Scalia said about TSM).

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