Is It Time for Myriad to Concede in AMP v. Myriad for the Good of the Biotechnology Industry?

Will I lose my dignity?
Will someone care?
Will I wake tomorrow
From this nightmare?

"Will I," Rent

By Kevin E. Noonan --

The Supreme Court's grant of certiorari over the question "Are human genes patentable" had raised for many the specter of an uninformed generalist court rendering a decision containing dicta that would negatively affect biotechnology.  This possibility is real, in view of the voices raised against patenting human genes based on moral, policy, or ideological grounds.  While strongly felt, these sentiments are based, in large part, on a misunderstanding or mischaracterization of either the facts or the law, specifically patent law.  These misstatements include arguments based on patent claims somehow exerting an ownership interest in individual's DNA, or that isolated human nucleic acid claims preempt future research (in the face of thousands of published scientific journal articles published since the BRCA gene patents were granted), or that isolated DNA patents inhibit future technologies like personalized medicine.

This is an argument that might have been relevant 30 years ago, but at least two facts mitigate against resolving this issue now.  The first is that the day of the DNA patent claim is rapidly coming to a close.  These types of patents were first filed directed to specific genes encoding biologically relevant proteins having therapeutic benefits.  These include erythropoietin, tissue plasminogen activator, interferon, blood clotting Factors VIII and IX, and others.  (Indeed, one of the most compelling types of evidence not considered by any court in the Myriad case is the testimony of the tens or hundreds of thousands of patients whose lives have been saved or bettered by biotechnology drugs protected, in part, by so-called "gene patents.")  Myriad's BRCA gene patent claims are in this form, one of the reasons why these claims are not infringed by genetic diagnostic methods used today.

The vast majority of gene patent applications, however, were filled as the result of the Human Genome Project.  These patents are limited in at least three ways.  First, the U.S. Patent and Trademark Office has established a policy that patents will be granted only if an applicant provided on the filing date specific, substantial, and credible utility for the protein encoded by the claimed DNA.  This provision prevents an applicant from obtaining patent exclusivity unless the applicant shows that she establishes utility, a requirement of the patent statute, of the encoded protein.  (This requirement is related to the policy enunciated in Brenner v. Manson, where claims to methods for making steroid molecules were invalidated based on failure to disclose a utility for the steroid molecules made using the methods.)  Second, certain researchers (notably, Sir John Shulston in England) made certain that the sequence results of the HGP were published in public databases as soon as possible; doing so placed the sequences in the prior art and precluded patentability for any application filed after the sequences were made public.  Finally, because almost all of these patents were filed at the turn of the century, and the term of these patents will expire no later than 20 years after application filing, the "problem" of gene patents will disappear no later than 2020 (and in many instances much earlier even if a patent can be obtained under the enhanced utility requirements).

Another reason why the ACLU's challenge is anachronistic (except for those meaning to make an ideological point) is that present and future technology, such as genetic diagnostic testing or personalized medicine, is not prevented or inhibited by claims to isolated DNA molecules encoding a specific human protein.  This is a consequence of the history of these type of claims for providing means for producing biologically relevant proteins like EPO and TPA.  The claims require that the DNA is isolated and that it encodes the full-length protein, as defined by specific amino acid sequence.  (For these reasons these claims are exceedingly narrow, and do not broadly preempt:  for example, such claims are not literally infringed if the encoded protein differs by a single amino acid, meaning that a difference of a single methylene group (the difference between a valine and an isoleucine residue) is enough to take a species outside the scope of the claim.)  Modern gene sequencing methods used for diagnostics neither isolate DNA nor produce a full-length DNA molecule encoding the protein.  Rather, sequencing is performed in such a way that fragments of the DNA are produced in a reaction mixture and sequenced without isolation; what is produced is the sequence, a characteristic of the DNA molecule that is not protected by the patent.  (This is why infringement of isolated DNA claims does not lie by using the sequence information to, inter alia, interrogate a DNA database.)  And the Myriad case has established that method claims directed to merely comparing an individual's gene sequence with a reference sequence and disclosing mutations identified as indicating a risk of disease, without more, are not patent eligible (under either Bilski v Kappos or Mayo v. Prometheus).

So there appears to be no sound policy reason for having the Supreme Court render a decision on the patent eligibility of human genes.  Sadly, there is seemingly no sound business reason for Myriad Genetics to have the Court decide this question either.  Myriad's counsel, Greg Castanias, argued in the first Federal Circuit oral argument that the plaintiffs did not have standing because there was no redressability to their claim.  Specifically, Mr. Castanias argued that even if the Court ruled in plaintiffs' favor, Myriad had other patent claims that would prevent Dr. Harry Ostrer and other plaintiffs from providing BRCA gene diagnostic tests.  In addition, while these patents were undoubtedly important when Myriad was establishing its diagnostics business they are less important now.  Fifteen years and thousands of genetic tests (apparently without any failures) later, the company's reputation, experience and extensive database is far more valuable than the claims at issue.

Under these circumstances, the question must be asked whether the prudent thing for Myriad to do is grant Dr. Ostrer a covenant not to sue on all the patents and claims involved in this litigation.  The result would be to render the issues before the Court moot; regardless of the perceived importance of the Question Presented, even the Supreme Court is limited by Article III of the Constitution and cannot render an advisory opinion on this issue.  Such an action by Myriad would not only prevent this case from being decided, it would preclude the Court from including in its opinion dicta on the patent eligibility of isolated DNA from other species (which may have importance in fields like agriculture or biofuels) or other "products of nature" that may provide the basis for biologic and other types of drugs.  In view of the seemingly complete lack of any practical reason for having the Supreme Court decide this issue, and the risks to the progress provided for a generation by the biotechnology industry, nothing other than a desire to be vindicated remains to support seeing this case through to its conclusion.  Frankly, in view of what is at stake, such vindication is simply not enough.

Comments

[Charlie Brown]

Thanks Kevin. You're not the first person I've seen who says Myriad should stop beating its head against the wall and drop this case, but this is most coherent explanation of why Myriad should drop it.

[EG]

Kevin,

I hear you about what might be the "prudent thing to do" in this case, i.e., Myriad grant Dr. Ostrer a covenant not to sue on all the patents and claims involved, That would be true if such disingenuous assertions made by ACLU, PubPat, and others would go away.

But these sorts of assertions aren't going away, especially if we continue to retreat in the face of them. Why? Because of the alarming anti-patent trend I see now which is reminiscent of the "bad old days" of the 60's and 70's where SCOTUS burdened us with Anderson's Black-Rock, Sakraida, Benson and Flook. At least back then Congress paid attention when they created the Federal Circuit to render order out of the chaos SCOTUS had created (and for almost two decades, SCOTUS pretty much got the "hint" and stayed out of enunciating patent law doctrine).

But after the AIA (the Abominable Inane Act), it's fairly obvious Congress isn't going to rectify the nonsense (and new chaoas) SCOTUS has created in the patent law world, patent-eligibility being just one example. Instead, we need to fight this trend "tooth and nail," and urge SCOTUS to see this nonsense for what is and stop creating patent law doctrine that is not only illogical, but is going to damage American small business' ability to innovate and compete not only domestically, but globally.

If SCOTUS won't see reason, then our only hope is for the Federal Circuit to "wear down" these SCOTUS decisions (by cabining them) as Markey's court did in the 80's and 90's. I'm convinced Rader understands this need and has the gumption to take Markey's place to make this happen. Yes, we may have to endure a "battle of attrition," but frankly the Federal Circuit can prevail in such a battle as SCOTUS can hardly take every petition for cert from the Federal Circuit involving a patent case.

[tom]

Thank you Kevin for this interesting paper. But what if Myriad granted the license as you suggest - and then made a motion to dismiss the case as you suggest - and the motion judge at scotus - says - motion denied? Don't you still need six votes to decide not the decide the cert issue under your scenario?

[Kevin E. Noonan]

Dear Tom:

The Court recently decided that a case was moot (Already v. Nike) and thus they would not render a decision on the merits. I assume that the Court would follow the Constitution and understand that the basis for the suit had evaporated, but I suppose things could work out as you suggest.

But then we wouldn't be in any different posture than we are now.

Thanks for the comment.

[Kevin E. Noonan]

Dear EG:

There is a very old story (that I won't repeat) about a man under sentence of death who tells his king that he can teach the king to do something incredible (like spin straw into gold) if the king spares him. When asked by his friend/brother/wife how he could promise to do something he couldn't do, he responds that he would deal with that problem later; for now he was spared.

I agree that we are living in a time when the pendulum has swung towards the "patents are bad" point of view, motivated in part by large companies (principally in the IT area) wanting limited and weaker patent protection for their own interests, aided and abetted by academics who realized that the thesis "everything's fine" is not the path to tenure, fame and fortune. These sentiments dovetail with the goals of ideological enemies of patenting, like the ACLE and PubPat.

We are not going to change this dynamic any time soon. So in my view the thing to do is wait it out - don't let the Supreme Court write another Funk Brothers, or American Fruit Growers, or any of the cases you mentioned by simply preventing cases involving biotechnology from getting to the Court. It may not be pretty but it may be effective.

But I am not espousing retreat or putting our heads in the sand. Rather, biotech and pharma companies need to get those stories to the public of the grandfather who survived a heart attack to see his granddaughter married because he was administered TPA, or the parent who can get out of bed to get her children to school because EPO gives her the strength kidney diseases has taken from her. Biotech, as you know, has been revolutionary in providing these drugs and others and that should be part of the conversation. Not to mention that it has been a uniquely American industry (for all those folks convinced to support the AIA because it was a "jobs" bill).

Prudence, not capitulation, is the goal.

Thanks for the comment.

[6]

"In addition, while these patents were undoubtedly important when Myriad was establishing its diagnostics business they are less important now. "

Oh bs, they could have limited themselves to actual inventions from the get go, made their business, and everyone would have been just fine and there would be no controversy.

Which, btw, is the case for nearly every claim that will ever be 101'd in the history of the world. Which is why current 101 doctine is just perfect. Did Morse get stopped from being a telecom tycoon when his overbroad claiming of all communication by electromotive force? No. Would Myriad be stopped from being a testing tycoon if their gene patent goes down? No. Did Prometheous all of a sudden go out of business because their attempted claiming of a fact, abstract idea, or corrolation, whichever way you want to look at it, go down the tubes? No.

The fact is that the overbroad claiming that the judicial exceptions prevent is there for a very good reason, and it doesn't stop anyone from building a business on the THINGS THEY ACTUALLY INVENTED.

EVER

[6]

"but frankly the Federal Circuit can prevail in such a battle as SCOTUS can hardly take every petition for cert from the Federal Circuit involving a patent case. "

They can GVR every single 101 case that is appealed to them, kind of like they already seem to be doing.

[Kevin E. Noonan]

Actually, 6, if I were the Court I would GVR with a direction that the Federal Circuit hear the matter en banc. Might as well get the benefit of the court's expertise.

And, I wonder where you get the information or experience to make the statements you make? Like many in government, you seem to think you understand things you have never done. As Eisenhower once said, farming is easy when your plow is a pencil and the field is 1,000 miles away.

Happy New Year, 6.

[Matt A.]

Thanks, Kevin, for this great essay. I've been telling my friends the same thing for a long time - that the controversy over so-called "gene patents" doesn't really matter. Even if there is a problem (which I don't think there is), it's going to be moot in a few years after all those patents expire.

[Moocow]

Kevin,
excellent overview. I always found it remarkable that the ACLU is trying to invalidate claims that wouldn't even be infringed by its clients. Do you remember Myriad's claim for a drug screening method? The ACLU people wanted to invalidate that too, even though nobody in their case at any time wanted to screen for drugs. Weird.

About your suggestion to Myriad, I think the recent Already v. Nike decision really increases the chances that giving Ostrer a covenant would successfully moot the case. Of course there would be a question as to what kind of covenant would be sufficient, but assuming it's properly worded, everybody would be happy. Ostrer wouldn't have to live with the crippling fear of litigation that has apparently haunted him for over a decade. And Myriad already has been vindicated, in the Federal Circuit by experienced judges who understand the case. Another aspect, at least for people who bothered to actually follow the case, is that Myriad has used the opportunity to "explain itself" in ways it has never before. For all the hysteria in public discourse I think that among reasonable, well-informed people there is now, much more than before, a belief that Myriad's poor reputation is, perhaps, largely undeserved. Mooting the case now wouldn't be like "giving up." More, as you say, an entirely rational business decision. The case is over and correctly decided - no need to waste more resources.

[6]

"The result would be to render the issues before the Court moot; regardless of the perceived importance of the Question Presented, even the Supreme Court is limited by Article III of the Constitution and cannot render an advisory opinion on this issue. "

Oh and also, if they did what you suggest the USSC might all of a sudden accept cert on the question of standing since it would all of a sudden become what the case would turn on.

[Kevin E. Noonan]

Dear 6: well, if they granted cert on standing then they could render a decision on standing.

[6]

"Actually, 6, if I were the Court I would GVR with a direction that the Federal Circuit hear the matter en banc. Might as well get the benefit of the court's expertise."

I actually am rather surprised that the CAFC did not go en banc on this one, I forget though if either party asked for it.

"And, I wonder where you get the information or experience to make the statements you make?"

From this big ol gigantic thing called written history, and from my own small experience.

That is, having seen, from an inside perspective, several companies now who are trying to build a business on some tech. I'm sure you'll have trouble believing this without evidence, but I have personally spurred quite a lot of disclosure simply by persuading the companies to patent their inventions. Indeed, at least one invention which, according to me, and later the company's attorneys speaking non-facetiously, may well be quite a ground breaking and important invention. I can tell immediately that some of them could claim some judicially exempt subject matter (especially that one that is perhaps ground breaking), but since they are reasonable companies and they're actually practicing the useful arts, they don't mind simply claiming their inventions instead of trying to make a huge unjustified land grab.

It may well be that some bio companies (or other companies for that matter) wish to delve solely into judicially exempt subject matter and try to build a business off of that. They can either a. be happy with patenting only their inventions that they were able to make from their discoveries in the patent inelgible subject matter, or else they can b. not build that business. Their choice, our country is already quite generous in our patent system, and if congress wishes to be even more generous they know where their pens are to make lawls.

"As Eisenhower once said, farming is easy when your plow is a pencil and the field is 1,000 miles away."

All too true, and I have a very keen appreciation of the sentiment behind the statement, as I am not quite as unexperienced as you seem to imagine. I may push a pen here during the week and during the day, but I'm always keen to get into the business side of things when I can and I do know people. But, in either event, where the proposed "business" is doing nothing but "relying on a government grant" for its existence, those people pushing the pencils all of a sudden become the key component to the whole shinanigan.

Desparaging those people pushing pencils too much might just lead them into not pushing pencils for you at all. And I don't believe that is what your side wants them to do, yours is the side that wants more of that easy pushing of pencils. "Important" pushes of pencils. Instead of more of the farming.

[Kristin Neuman]

Dear Kevin,

Thank you for your thoughtful piece. Just wanted to comment on your characterization of "modern gene sequencing methods" as being "performed in such a way that fragments of the DNA are produced in a reaction mixture and sequenced without isolation". Please note that certain next gen sequencing platforms, such as Ion Torrent, do "isolate" fragments of DNA in individual cells (see http://www.invitrogen.com/site/us/en/home/Products-and-Services/Applications/Sequencing/Semiconductor-Sequencing/Semiconductor-Sequencing-Technology/Ion-Torrent-Technology-How-Does-It-Work.html) and there are patents with claims to isolated DNA fragments (some of which are available for licensing at librassay.com).

Regards,

Kristin Neuman
Executive Director, Librassay

[Kevin E. Noonan]

Well, 6, I doubt you'll be pushing any pencils with me. And considering you "nom de blog" from about 6 years ago, I doubt you are as experienced as you think you are. Starting from a flawed premise you arrive at an incorrect conclusion. Not surprising, really.

[Kevin E. Noonan]

Dear Kristin:

Thank you for the information. While there may be some fragment claims granted by the USPTO, there are none at issue in this case. And I question whether any claim construed to encompass the fragments you discuss would be valid.

Thanks for the comment.

[EG]

"They can GVR every single 101 case that is appealed to them, kind of like they already seem to be doing."

6,

SCOTUS can't and they won't. In a "battle of attrition," the Federal Circuit would win because SCOTUS can't "micromanage" every ruling by the Federal Circuit in the area of patent law. That was proven during the 80's and 90's when Markey was the Chief Judge of the Federal Circuit where SCOTUS pretty much stayed out of patent law jurisprudence and let the Federal Circuit do its job, as Congress intended when it created this appellate court in 1982. I predict Rader will do the same, perhaps choosing which battles to fight, but definitely not conceding patent law jurisprudential authority to SCOTUS.

And like Kevin hinted, you're in "way over your head." Like I explained to you once before, "a man's got to know his limitations." You would be wise to heed this "Dirty Harry" advice when venturing into areas of law (like this one) that you understand so little about.

[Moocow]

Kristin and Kevin,
just want to reemphasize that diagnostic testing for BRCA mutations does not require one to make or use a full-length BRCA DNA. No matter which technique is used, including Ion Torrent(TM).

The ACLU understands that. That's why they've always avoided explaining which activities they believe to be prevented by these claims, or who is preventing them. Instead they use hazy language like "scientists cannot 'look' at these genes" or that 'the claims' prevent anyone from 'studying' them. Such fuzzy assertions don't establish the purported preemptive effect of these claims - just like they wouldn't establish infringement if asserted by the patentee. Imagine an infringement suit where the patentee's only basis is that the defendant "is looking at my invention." They would be laughed out of court.

[EG]

"They would be laughed out of court."

As the ACLU/PubPat should be in Myriad, Moocow. What you say is absolutely on point and what Professor Holman said in his amicus briefs: what, exactly, ACLU/PubPat is infringed by Myriad's claims?

[The DA]

"This provision prevents an applicant from obtaining patent exclusivity unless the applicant shows that she establishes utility, a requirement of the patent statute, of the encoded protein. (This requirement is related to the policy enunciated in Brenner v. Manson, where claims to methods for making steroid molecules were invalidated based on failure to disclose a utility for the steroid molecules made using the methods.)"

Devil's advocate here.

Kevin (or anyone else): is there a substantial utility for all or even most of the "myriad" isolated nucleic acid molecules encompassed by Myriad's broadest claims? I recognize that there is a substantial utility for some of the nucleic acids. I wonder about some of the longer ones.

[6]

"In a "battle of attrition," the Federal Circuit would win because SCOTUS can't "micromanage" every ruling by the Federal Circuit in the area of patent law. "

GVRing every 101 that the Federal circuit refuses to uphold is hardly "micromanaging". Indeed, I would think that a clerk somewhere could take care of it at the court's direction until the CAFC relents. But, in our judicial system I doubt that such extreme measures would be called for. I believe a phone call to Rader might sort things out.

[6]

"but definitely not conceding patent law jurisprudential authority to SCOTUS."

Ah, so they're an outlaw court just as I had noted several times before, and which the media has started to get wind of here lately. The congress has no authority to grant the CAFC any special jurisprudential authority that is not reviewable and controlled by SCOTUS over article three court matters without a constitutional amendment, and you know that bro. Whether congress "intends" to give jurisprudential control to the CAFC or not, they do not have authority to do so.

"And like Kevin hinted, you're in "way over your head.""

And I lulzed as I watched him squirm like no tomorrow over this case because he is plainly going down hard at the USSC, and he knows it. Indeed, he is even worried about the spill over damage from having the actual law imposed upon his art. But, newsflash, the PTO has already seen the writing on the wall, at least in so far as their brief writing in some of the cases indicates since Mayo. As soon as the outlaw CAFC falls in line, which it will, all will be right. Bio may have grown fat off of the largess of claims granted to judicially excepted subject matter, but it will not die suddenly because it is forced to actually patent eligible subject matter.

Not only is it unfortunate for Kev, it is unfortunate for me that the courts have begun to actually apply the law in these areas, because that gives me less incentive to become a lawlyer and sort them out myself. Yes, I have re-taken up the books to do this nonsensical LSAT, but I do so with much less vigor than when the law was so blatantly being abused a few years back.

[Kevin E. Noonan]

Dear DA:

Your question illustrates a common misconception, specifically that claims to nucleic acids are broad and expansive and thus many not have utility throughout their full scope.

On the contrary, these claims are very narrow. One example can illustrate the point. Myriad's claim to the BRCA 1 gene reads

1. An isolated DNA coding for a BRCA1 polypeptide, said polypeptide having the amino acid sequence set forth in SEQ ID NO:2.

While there are thousands of nucleic acids that can encode this sequence, they ALL encode that one amino acid sequence. Thus they all have the same utility. Contrast this to most chemical compound claims, which set forth a generic structure and various substituents (R1, R2, R3, etc.). While many of the species falling within the scope of such a claim may have related activities, some may not and there is no way to know, a priori, which is which.

One more example of the limited scope of nucleic acid claims. A single nucleotide substitution (AUU -> GUU) can change an isoleucine residue to a valine residue (or vice versa). The difference between these two amino acids is a single methylene group (-CH2-) in a protein encompassing thousands of atoms. Making, using or selling such a substituted nucleic acid does NOT literally infringe Myriad's claim.

Thanks for the comment

[Skeptical]

Which court is the outlaw court?

This link was posted on another blog, and indicates that there indeed may be an outlaw court running amuck:

http://www.law360.com/ip/articles/408846?nl_pk=ad40da3c-8c64-4229-8dbe-d6a2051d357c&utm_source=newsletter&utm_medium=email&utm_campaign=ip

[EG]

"The congress has no authority to grant the CAFC any special jurisprudential authority that is not reviewable and controlled by SCOTUS over article three court matters without a constitutional amendment, and you know that bro."

6,

You legal ignorance is greatly showing (once again). Congress CAN strip SCOTUS of appellate review (known as "jurisdiction stripping), and SCOTUS has even acknowledged in its own case law that Congress can do so (per Ex parte McCardle):

During Reconstruction, Congress withdrew jurisdiction from a case the U.S. Supreme Court was then in the process of adjudicating. In terminating the case Ex Parte McCardle, 74 US 506 (1869), the Justices acknowledged the authority of Congress to intervene.

We are not at liberty to inquire into the motives of the legislature. We can only examine into its power under the Constitution; and the power to make exceptions to the appellate jurisdiction of this court is given by express words.... It is quite clear, therefore, that this court cannot proceed to pronounce judgment in this case, for it has no longer jurisdiction of the appeal; and judicial duty is not less fitly performed by declining ungranted jurisdiction than in exercising firmly that which the Constitution and the laws confer

[6]

"You legal ignorance is greatly showing (once again). Congress CAN strip SCOTUS of appellate review (known as "jurisdiction stripping), and SCOTUS has even acknowledged in its own case law that Congress can do so (per Ex parte McCardle)"

You totally got me on that one EG. But, in either event, the bigger point remains, that congress has not removed the USSC from having final jurisdiction over patent cases, and I will add with your gracious pointing out of the constitutional section and a case about it, that if, as you seem to believe, they wanted to do so then they should have done so back when the created the CAFC.

[6]

Skeptical I read that article on what judge rader said, and I found it particularly lolable that a lower court would be lambasting its reviewer court for activism. Especially when it has, itself, been changing the lawl for the last 20 years as it sees fit. A better definition of judicial activism I can scare concieve. As has been correctly pointed out by many a poster, the USSC is merely returning the law to its natural state before the CAFC went all activist on the law, and then, bizarrely, accuses the USSC of being an activist court.

[6]

I should note that mine error was to confuse a legallol term "original jurisdiction" in Marbury with plain ol' "jurisdiction", or in this instance, appellate jurisdiction. Yet another example of legal tomfoolery by lawlyers, the very existence of which makes the ordinary person's spine crawl. The lawl in this country is so complex and nuanced that there may as well be no law for the common person as they do not have time to fiddle with it all unless they specifically make it there profession.

[Skeptical]

Regardless of the posture between the two courts, 6, Rader is absolutely correct iin everything that he discusses.

Whether or not the Supreme Court SHOULD be writing patent law is a whole 'nother kettle of fish. As to what you view as the CAFC going all activist, you should do a little more research into the mandate of its creation.

Understanding these things may change your mind, but of that, I am...

[6]

"you should do a little more research into the mandate of its creation."

I don't have to, I'm aware of what it was "mandated" to do. I'm also painfully aware that no matter what "mandate" it was given, the structure into which it was inserted did not support that mandate very well.

If the congress wanted the CAFC being the final arbiter of patent policy, then, as EG has so well pointed out for us, then they certainly could have. A "mandate" is not how washington gets things done, it is how it waffles.

[EG]

"If the congress wanted the CAFC being the final arbiter of patent policy, then, as EG has so well pointed out for us, then they certainly could have."

6,

What makes you think that Congress didn't mandate that the Federal Circuit be the primary arbiter of patent law jurisprudence back when Congress created it in 1982? I'm not saying that there's no right to appeal patent law cases from the Federal Circuit to SCOTUS (there certainly is), but why ignore what Congress obviously did in 1982 when they created the Federal Circuit?

In fact, up until the recent activist SCOTUS decided to exert patent law despotism (starting with KSR International in 2007_, SCOTUS, with few exceptions such as Festo, pretty much stayed out of patent law jurisprudence. Like you, the current SCOTUS' ignorance of basic patent law concepts is showing greatly (and embarrassingly). In particular, their failure to give more than "lip service" to what 35 USC 101 and 103 actually say and mean doesn't engender respect by me or much of the patent bar.

[Skeptical]

I would add that the respect for the highest Court is actually at its lowest point in modern history.

Unfortunately, I think Rader's criticism - as on point as it is - is just the tip of the iceberg.

Can the Court recognize this and protect itself - from itself? I am...

[Skeptical]

6 replies "the structure into which it was inserted did not support that mandate very well."

6, I hope you realize that your reply is a non-sequitur to the point under discussion. That point is NOT about structure, but rather about the CAFC "going all activist."

Quite frankly, your desciption is flawed and reflects an incorrect subjective view, rather than an objective view based on actual Congressional history.

Whether or not the structure does well in support does not change the focus of what that group was created for.

As to the ability of the highest Court to consistently give deference to a lower court (and to keep its fingers out of the patent pie), I am...

[6]

"What makes you think that Congress didn't mandate that the Federal Circuit be the primary arbiter of patent law jurisprudence back when Congress created it in 1982?"

Primary and final are in some instances two different things. In washington, people with the final say are the people with the primary (or "upon which all else is built") say.

If by "primary" you just mean "main", then fine, sure thing, they're the main stop in patent jurisprudence, but they're not the final stop, so whatever their general role is, it is not to attempt to shape the law away from that which the final stop (the ussc) makes it.

And just to be clear, I'm not ignoring the creation of the Federal Circuit. In fact, judge Newman came to the PTO just the other day and explained all about how the CAFC was really just an addendum to some financial legislation. A congressional afterthought practically, because there was no political will to make the court for years and years. But even if we ascribe the existence of the court some big hullabalo and "intent", there were a lot of circuit splits going on in 82 and before, and that was the major reason for creating the main stop in patent jurisprudence.

Indeed, the next time you think about the creation of your precious outlaw federal circuit, just lol, because its creation was not some big to do. Judge Newman puts it in its proper place, something hardly anyone cared about at the time, and something hardly anyone would care about today if they weren't an outlaw court like they're being.

"Like you, the current SCOTUS' ignorance of basic patent law concepts is showing greatly (and embarrassingly)."

Those "basic patent lawl concepts" are nonsense that your outlaw court implemented during the time the USSC was away. They had to lay the hammer down because of that abuse. They're not ignorant of the abusive "concepts" implemented by the CAFC, and neither am I, they layed the hammer down on it and said no, you t s, do it right.

[6]

"6, I hope you realize that your reply is a non-sequitur to the point under discussion. That point is NOT about structure, but rather about the CAFC "going all activist." "

Okay, let's presume that I've "missed the point", is your "point" that the CAFC is not being activist if they're changing age old patent lawl to suit their own subjective beliefs about what it ought be? And that this is so because of a supposed direction by the congress to do so? Because, again, we're presuming I'm missing the point. Perhaps you can be more clear on your point.

"Whether or not the structure does well in support does not change the focus of what that group was created for."

I never said that it did. I am saying that if that be congress's intent, then they have blatantly fed it up, and it is up to them to fix it. I see no indication that they even believe there to have been a f up, much less that they are planning on fixing such an f up. So, I'm telling you that the situation on the ground is in stark contrast to your rosy "congressional intent" picture, and that to sit around and bs about it on the interwebs is pointless because the congress is not going to impose its will more than it has.

[6]

Oh, and EG, would it make you happy if the judicial exceptions were made statutory? Just written out at the end of 101? Likewise would it make you happy if congress spelled out how functional language, as opposed to mpf language, was to be used in patent documents as an addendum to 112?

Would that really make you a happy man?

[Skeptical]

6,

I find it funny that you want me to be more clear about my point, but that your defense of your own being off-point is completely incomprehensible.

And yes - the point is very much that the CAFC CANNOT be deemed to be activist as you would use that term, because the activity you are decrying was explcitly the activity they were charted to undertake

- and make no mistake, whether or not such was on an addendum, or whether ot not such was "thought to be a big deal" is yet again more non sequiturs to what did happen and the purpose expressed by Congress. I was no there to hear Judge Newman speak, nor have I read any reports, but I would most definitely hesitate to trust your version of what she said.

In essence, you wander far into the weeds and then complain that you cannot see the road. Your view of "the situation on the ground" simply is based in error and your extreme subjective views.

[6]

"And yes - the point is very much that the CAFC CANNOT be deemed to be activist as you would use that term, because the activity you are decrying was explcitly the activity they were charted to undertake"

Outrageous argument. From the get go.

Rader: The USSC is totally being the activist court we were supposed to be!

6: lulz. Hello pot who is calling the kettle black.

Bottom line skeptical, you put way too much emphasis on "congressional intent" and not nearly enough emphasis on "what congress did and will be doing shortly". Actions bro, they speak louder than words.

"nor have I read any reports"

yeah I was surprised nobody seems to have written up her speech and posted it.

"but I would most definitely hesitate to trust your version of what she said."

Feel free to, but it will not diminish the lulz that she was giving me that day.

"In essence, you wander far into the weeds"

Looking at the situation on the ground is not "wandering into the weeds", it is "wandering into reality". Perhaps you could join me at some point in your life.

[EG]

"They're not ignorant of the abusive "concepts" implemented by the CAFC, and neither am I, they layed the hammer down on it and said no, you t s, do it right."

6,

Having to resort to profanity (even if coded) to supposedly prove your point now, are you? Well, when you do that, I know you've lost the argument. Over and out.

[Skeptical]

"Outrageous" - 6, this is meaningless from you.

As to "action versus words," it is more your argument about inaction, isn't it? - and the dismissal of actual words for anything as nebulous as what you put forth is what is "outrageous" from the start.

Or to provide some meaning, you again seek to have your "understanding" to be controlling on nothing more than "it" is what you like.

You do not address anything that is actually controlling, nor do you recognize the fact that there are things that are controlling. Your world of "it should be thus" is untethered to anything in this world, especially in the legal sense. That is why I posit that YOUR view of looking at the situation on the ground is quite in fact NOT reality. You are deep into the weeds, and do not even know that you are deep into the weeds. Perhaps even, I gave you too much credit in complaining that you cannot see the road. It's as if you don't know a road exists.

I think that you need to contemplate what it means when Rader says what he says - it is quite in fact not a matter of envy, that "the Supremes are doing WHAT we want to do." It is rather that the Supremes answer to basically no one, and that IF our founding fathers wanted patent law drafted by a disassociated elite, answerable to no one, the patent clause would have been located in Article III.

[6]

"Having to resort to profanity (even if coded) to supposedly prove your point now, are you? Well, when you do that, I know you've lost the argument. Over and out."

I'm not really sure that t s is profanity... but I do remember how you dislike the term. In either event, I should point out that there isn't even much of an argument here between you and me EG, there is only your willfull and self-interested obstinence in the face of the USSC wielding its lawful power to correct the abuses of the law carried out by the CAFC.

[6]

"it is more your argument about inaction, isn't it? "

It isn't really an "argument", so much as it is an observation.

"the dismissal of actual words "

OMG did I dismiss WORDS? NOOOOOOOOOO!!!!!! NOT WORDS!!!!!!!!!!!!!! How could I???!?!?!!?!?!!?!?!!?

But seriously, I'm not dismissing them, I'm simply putting them into the context in which we see them playing out around us. Sure, maybe some dead people "intended" for the CAFC to go all rogue activist outlaw on the patent law, although I have seen no real indication that was the case. Maybe they did. Even though all available evidence seems to suggest they simply wanted to correct circuit splits, and prevent quite so many happening in the first place, and most notably, pass the financial bill before them which was what everyone cared about. At least some old (mostly now dead) judges believed so, if for no other reason than to drag their little obscure corner of the law out of obscurity.

But even if it be so, that is not the situation we have before us, and if the congress continues to bless the CAFC's roguish outlaw ways, then they know how to do so formally. If however the SUPPOSED will of the long dead and gone congress is somewhat diminished today, too bad. It isn't like they're still in office and/or we could just ask them their true intent.

In any event, good day sir skeptical. I could go on and on about "things that are controlling" like USSC decisions, and how I accept them as controlling, but it doesn't seem that you much care about that particular control. Likewise I could go on and on about how the USSC is answerable to the congress, and how aware the congress is of this, but you don't seem to care about that either. So that's pretty much all I have to say, and I give you any final say you may wish to have.