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January 29, 2009



The chances of cert being granted in either of these 2 cases is slim and none. Both killed the application/patent involved. By my count, there have been only 4 instances where SCOTUs granted cert where the patentee/applicant prevailed in the last 50 years. And this SCOTUS is not in the frame of mind to give patentees/applicants any favors. Witness KSR International, MedImmune, eBay, Microsoft and Quanta.

I think Bilski will be granted Cert. especially it has been a while since Diamond v. Chakrabarty. Aventis may be out of luck. Bilksi is huge for biotech patenting especially when the personalized medicine is branching out.

Dear EG:

Although I can't disagree with your statistics, the bane of social science is determining when such statistical correlations are determinative. Here, there is the equally-important consideration (in my opinion) regarding whether the Supreme Court believes that the Federal Circuit has once again gone off the rails. The Aventis case, if cert were granted, would be one more occasion for the Court to realign the Federal Circuit with its idea of uniform standards in federal law, which was the point in the eBay and Medimmune cases.

As for Bilski, I think they will leave it alone if they think it accurately reflects their views on method claims - since the CAFC expressly made its decision on its appreciation of Supreme Court precedent. If the Court feels the CAFC got it wrong (which seems to be the default position over the past 10 years), then I think there is a chance they will decide to address it.

Finally, there are no true patent cases on their docket so it may be time.

Thanks for the comment.

Dear Fan:

Particularly in view of the 69-word affirmance in Classen, by a panel that included Judge Newman.

Thanks for the comment.


I would agree that there is a need for clarity as what is subject matter under 35 USC 101 may be patentable (Bilski), as well as what is the one (and only) objective standard for inequitable conduct (Aventis). But I frankly have no confidence that SCOTUS will render any order here. Look at the chaos that's been created with KSR International, eBay, and MedImmune. In fact, SCOTUS doesn't even understand how software works (witness the awful "architectual blueprint" analogy in Microsoft v. AT&T). I understand that the "machine or transformation" test of Bilski isn't the only test or necessarily the right test, and that, as even the Federal Circuit acknowledges in Digital, there may be 4 or 5 standards for inequitable conduct. I'm much more hopeful that the Federal Circuit will (eventually) render reasonable order out of the current chaos.

But I've got absolutely no confidence that SCOTUS which arrogantly manifests its ignorance of the technology (and the patent statutes) will do anything but create more collateral damage in our area of the law. Just remember what Scalia called TSM. I can also remember that SCOTUS had some not so polite words for the barn cleaning system in Sakraida. I wish I felt differently about SCOTUS, but I don't, given the current cast of Justices.

Dear EG:

I cannot disagree, but the Aventis brief does a good job of reminding the Supremes about their own decisions, and might appeal to their tendency to want all the circuits to apply the law consistently. Similarly, Bilski is SO obsequious to what the CAFC majority seems to think is the Supreme Court's instructions on what's patentable, they might be tempted to "set them straight."

Now, how they do that (which is your point) might make strong men a little weak-kneed, but I'm not sure (in words I hope don't come back to bite me) exactly how they could make things worse. The Bilski decision is spreading like a stain to mar not only method claims but manufactures and compositions of matter (as cited in the petition), and the standard that is applied to inequitable conduct is a complete crapshoot. Unlike in KSR, where the Supremes just missed totally undoing 25 years of jurisprudential development by the Federal Circuit, here I don't think there is anything they could do or say that wouldn't make things better.

Thanks for the comment.


I hear you. My problem with Bilski in particular is that "bad facts" are making even "worse law." The Bilski test, certainly as applied now by the BPAI, is nonsensical. I'm just very queasy about letting SCOTUS getting their fingers on this patentable subject matter issue, and mucking it up worse than it is (by turning 35 USC 101 into a statute that is relevant only to 19th century technology, not 21st century technology).

Aventis raises a very good point about the inconsistent and multiple standards for determining inequitable conduct. My problem is that the facts in Adventis are messy enough that SCOTUS might come out with a standard for inequitable conduct that none of us want to live with.

Again, I rather see us try a change the course of the Federal Circuit (they've done so in the past) on these issues; trying to change course with SCOTUS is like trying to turn the Titanic (the metaphor to "disaster" is intended).


A post script to my prior comment. There are days when I want to go back to 80's when Markey was the Chief Judge of the Federal Circuit, and SCOTUS stayed away from the patent area. At least we had a consistent and rational body of patent law to deal with.

Many of us would like to see the Supreme Court address inequitable conduct after 64-year silence.

Nevertheless, I question whether this is the correct case for two reasons. First, the Court could only review one prong of the test (i.e., the intent prong), as an earlier CAFC decision had already found that Dr. Uzan's misstatements were material to patentability. Second, Aventis did not appear to have questioned the legal standard for inequitable conduct in its appellate briefing, creating doubt as to whether the Court could do anything other than review the district court's fact-finding.

Recently, though, I've become more accepting of the inequitable conduct doctrine. Judge Posner's decision in the Barco case in NDIL convinced me that inequitable conduct is not such a bad thing.

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