Chief Judge Rader's Views on Patentable Subject Matter - Part I

By Tim Peterson --

The Federal Circuit will soon be addressing the issue of patentable subject matter as it relates to biotechnology patents in a trilogy of cases:  Prometheus Laboratories, Inc. v. Mayo Collaborative Services, Classen Immunotherapies, Inc. v. Biogen Idec, and Association for Molecular Pathology v. U.S. Patent and Trademark Office ("Myriad").  In the Myriad case, Plaintiffs/Appellees recently moved for recusal of Chief Judge Randall R. Rader (at right) before the panel has even been chosen (see "Appellees Move for Recusal of Chief Judge Rader in AMP v. USPTO Appeal").  Given the controversy that has ensued, this article first asks whether the Chief Judge would have any influence over these three cases in the event that he is not chosen for a panel, and then analyzes some of Chief Judge Rader's views on patentable subject matter from comments he made before the Supreme Court decided Bilski v. Kappos.  Of particular interest are the similarities and differences between the analysis in Chief Judge Rader's In re Bilski dissent and that of the Supreme Court's majority decision in Bilski v. Kappos.  A second article will delve deeper into the Chief Judge's comments on patentable subject matter.

Chief Judge Rader's (Lack of) Added Direct Influence As Chief Judge

Chief Judge Rader is a highly respected member of the Federal Circuit, but his recent promotion to chief judge gives no insight into any influence he has on the Court.  The succession of chief judge is solely determined by 28 U.S.C. § 45:  "The chief judge of the circuit shall be the circuit judge in regular active service who is senior in commission of those judges who – (A) are sixty-four years of age or under; (B) have served for one year or more as a circuit judge; and (C) have not served previously as chief judge."  A qualified judge, however, may chose not to be chief judge, and the chief judge can resign his role at any time.  Judges who have taken senior status are not in "active service" and are ineligible.  Judges Newman and Lourie are both active judges who each have more seniority than the Chief Judge ("senior in commission"), but both are ineligible because of their ages.  So, Judge Rader is chief judge simply because he is the longest serving, non-senior judge (status or citizen).

Any additional influence the chief judge has over case law as a result of his title is minor.  The chief judge's additional role is primarily administrative.  Chief Judge Rader spoke about his role in determining case law as follows:

In terms of the substance of the Court, the Chief Judge doesn't have a largely different role than any other Judge.  He can request an en banc poll just as any other Judge.  He perhaps receives a little more attention from his colleagues because his colleagues know that he is often asked to speak for the Court and makes an effort to properly reflect the Court's viewpoints on things.  But in terms of the substance of the Court's law, the Chief Judge acts as one of the other Judges.  He is first among many and I don't think he has a largely different responsibility in terms of defining the Court's law.

Gene Quinn, An on the Record Interview with CAFC Judge Randall Rader, IPWatchdog, ¶ 13 (April 12, 2010.

The chief judge normally "preside[s] at any session of court which he attends."  28 U.S.C. § 45.  But other active judges "preside according to the seniority of their commissions," id. So, Chief Judge Rader only presides out-of-turn before Judges Newman and Lourie.

Similarly, when cases are decided, Chief Judge Rader has a role comparable to another senior-in-commission judge.  The Chief Judge spoke of the process as follows:

When we come off of the bench we immediately sit down as a panel of 3 and convene our conference.  The junior most Judge always speaks first, and we do that for two reasons.  One is to ensure a kind of judicial independence.  The junior Judge cannot defer to the more experienced senior Judges, but must prepare his or her own independent opinion, which will be presented first in an oral fashion.  And there is another reason for it, and that is if the first Judge and the second Judge differ then the presiding Judge can kind of rock back in his or her chair and listen, let the two Judges represent the case and receive the benefits of that revisitation of the issues before making a decision that will decide the outcome of the case.

Quinn, supra.

The Chief Judge also has little additional influence into deciding panels for cases.  According to the Federal Circuit's Internal Operating Procedures, "[t]he chief judge provides to the clerk's office a list of judges that are available for an argument session.  The clerk's office runs a computer program that randomly generates three-judge panels for each month, subject to the judges' availability."  Internal Operating Procedures ("IOP") #3, downloaded August 5, 2010.

Related to Prometheus and Classen, "[a] remand from the Supreme Court is referred to the panel or to the en banc court that decided the matter.  . . .  (or if the original panel cannot be reconstituted, the remaining judges of that panel and one or two newly selected judges)." Id., IOP #15.  For Prometheus, Judge Lourie will be on the panel on remand (Chief Judge Michel and District Judge Ron Clark, sitting by designation, were also on the original panel); and for Classen, Judge Moore and Judge Newman will be on the panel (District Judge Joseph Farnan, sitting by designation, was also on the original panel).  The remaining judges on those panels will be chosen randomly.

Similarities in Analysis Between Chief Judge Rader's Dissent and the Supreme Court Majority

If Chief Judge Rader does not have additional influence over Prometheus, Claussen, and Myriad because of his role as chief judge, might he have influence because of his ideas about patentable subject matter?  The Chief Judge, in his In re Bilski dissent, was the only judge on the Federal Circuit to hold that Bilski's claims were unpatentable because they were directed toward an abstract idea.  The same was held by Justice Kennedy's majority opinion of Bilski v. Kappos.  Chief Judge Rader went on to ask other questions and draw other conclusions that the Supreme Court majority did not reiterate, which may or may not be predictive of future cases.

The Chief Judge's dissent was similar to Justice Kennedy's majority opinion in that both found that Bilski's claims were directed toward an abstract idea and followed a very similar path to reach that conclusion.  Justice Kennedy's majority opinion separated the arguments against patentability into three categories:  "(1) it is not tied to a machine and does not transform an article; (2) it involves a method of conducting business; and (3) it is merely an abstract idea."  Of the Federal Circuit's In re Bilski opinions, the majority created the Machine-or-Transformation test as the "sole test" for patentable subject matter (1).  Judge Dyk's concurrence also argued that business method patents should be categorically excluded from patentable subject matter (1 & 2).  Judge Mayer dissented, arguing that Bilski's claims were not patentable solely because business method claims are not patentable subject matter (2).  Judge Newman argued none-of-the-above -- that Bilski's claims were directed toward patentable subject matter but should likely be rejected on other grounds (§ 102 lack of novelty, § 103 obviousness, or § 112 written description/enablement).  Only Chief Judge Rader argued that the claim lacked patentable subject matter because it is "merely an abstract idea," which is what the Supreme Court ultimately held.

In arriving at the same conclusion, Chief Judge Rader and Justice Kennedy followed similar paths.  Both argued that patentable subject matter of § 101 is broad, emphasizing the word "any" in the statute.  Both cited Diehr for the idea that (1) the language of § 101 should be interpreted by its "common, ordinary and contemporary meaning," and (2) "courts 'should not read into the patent laws limitations and conditions which the legislature has not expressed.'"  Both also quoted Thomas Jefferson, that "ingenuity should receive liberal encouragement" as the purpose of patent law.  Both concluded that patentable subject matter should only be limited by three exceptions, "abstract ideas, laws of nature and natural phenomena."  Finally, both held that Bilski's claims were unpatentable subject matter because they were directed toward an abstract idea.

Differences Between Chief Judge Rader's Dissent and the Supreme Court Majority

Of course, the devil is in the details, and Justice Kennedy and Chief Judge Rader didn't necessarily agree on the definition of "abstract idea."  Justice Kennedy's opinion, as clarified by Justice Breyer's concurrence, held that "machine-or-transformation" was still an important test, and that the "useful, concrete and tangible result" test of State Street remained overturned.  Justice Kennedy also held, "[t]he Court, therefore, need not define further what constitutes a patentable 'process,' beyond pointing to the definition of that term provided in §100(b) and looking to the guideposts in Benson, Flook and Diehr."  Chief Judge Rader had a more narrow view of what is not patentable subject matter.  First he differentiates between "abstract ideas" and "laws of nature and natural phenomena."  Then he limits abstract claims to those so abstract that they could not be examined.  The Chief Judge is likely to revise some of these views in light of Bilski v. Kappos.  It remains to be seen whether his other ideas will have influence over the Federal Circuit in the upcoming cases.

Part II of this series will take a deeper look at the Chief Judge's comments on patentable subject matter.

Tim Peterson most recently worked in the pharmaceutical industry for Merck as a biologist and has a Masters degree in bacteriology from the University of Wisconsin at Madison.  Mr. Peterson is a third-year law student at the Chicago-Kent, School of Law and was a member of MBHB's 2010 class of summer associates.  He can be contacted at [email protected]

Comments

[6]

"The Chief Judge is likely to revise some of these views in light of Bilski v. Kappos. "

One would think so, but, as I'm sure you're about to discuss, his recent comments don't seem to reflect that.

[6]

Oh and Tim, of course Rader has some influence, he is after all Randall Rader.

He's the Chuck Norris of the patent world after all.

FACT: Rader wrote one sentence and business methods were then abstract ideas.

[6]

Wait wait wait, I have a better one.

FACT: Rader round house kicked product by process claims and they all became less valuable.

[Benjamen R. Meyer]

You forgot to compare with Stephen's minority opinion for In re Bilski as well. Kennedy's opinion was not far from it; just didn't go as far.

[Tim Peterson]

6 -
Of course Chief Judge Rader would have influence if he hears the case and writes an opinion. This article analyzed what happens "in the event that he is not chosen for a panel."
Thanks for the comment.
Tim

[Tim Peterson]

Benjamen -
If memory serves, Justice Stevens's concurrence in Bilski v. Kappos also overturned the machine-or-transformation test but instead advocated a categorical exclusion of business method patents. I didn't include it because this article was about Rader's views. Some areas of agreement are explored in the second part of the article which will be posted soon.
Thanks for the comment.
Tim.

[6]

"This article analyzed what happens "in the event that he is not chosen for a panel."
"

I'm aware Tim, I should have been more clear.

Oh and Tim, of course Rader has some influence if he is not chosen, he is after all Randall Rader.

He's the Chuck Norris of the patent world after all.

FACT: Rader once sneezed and a judge's opinion on 101 changed in a case in which Rader was not chosen.

Oh, and I posted the link over at PO, but did you guys hear about the DC decision in the case of troll vs hulu? MOT was applied even post USSC Bilski.