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April 22, 2015


Awesome post..

I do believe Patent law needs political immunity.

However judicial immunity might question the basic structure of judicial system per se.

Also, I wonder, how much of "invention as a whole approach" of Diamond v. Diehr (1981) makes sense in today's world of claim analysis, specifically for Pharmaceutical cases..

One of the problems is judicial cringe at the Federal Circuit level.

That is exemplified in the recent toxic opinion in University of Utah (Myriad III):

"The primers before us are not distinguishable from the isolated DNA found patent-ineligible in Myriad and are not similar to the cDNA found to be patent-eligible. Primers necessarily contain the identical sequence of the BRCA sequence directly opposite to the strand to which they are designed to bind. They are structurally identical to the ends of DNA strands found in nature.

Contrary to Myriad’s argument, it makes no difference that the identified gene sequences are synthetically replicated. As the Supreme Court made clear, neither naturally occurring compositions of matter, nor synthetically created compositions that are structurally identical to the naturally occurring compositions, are patent eligible."

It is strongly arguable that this chain of reasoning, if offered by a law student in answer to a problem in legal analysis, would gain no more than a failing grade. It confuses symptomatic generalisation of the outcome in Myriad with analysis for and identification of the underlying rule of law which is what is binding in later cases.

In particular, the reason why genomic BRCA1 was held ineligible in Myriad was that the only reason supporting eligibility was isolation, and there was no second supporting reason e.g. new utility. The rule of law that lead to that outcome was that stated in Hartranft, which has been applied in a number of Supreme Court opinions.

The patentability of cDNA as a composition of matter arose because it is a synthetic molecule, as explained by Justice Thomas. It is therefore NOT a natural product. The rules which differentiate synthetic and natural products are NOT the same as the rules by which the patent-eligibility of a natural product e.g. adrenalin are decided. On that basis, structural differences linked to cDNA an artificial molecule have no more relevance to the rules governing natural product eligibility than the actions of a footballer on the playing field have to the rules of golf.

There is a reference to short sequences under this heading in Myriad. Justice Thomas said:

"cDNA retains the naturally occurring exons of DNA, but it is distinct from the DNA from which it was derived. As a result, cDNA is not a “product of nature” and is patent eligible under §101, except insofar as very short series of DNA may have no intervening introns to remove when creating cDNA. In that situation, a short strand of cDNA may be indistinguishable from natural DNA."

When viewed in context all that Justice Thomas is saying is that a short segment not involving an intervening intron might not qualify as a composition of matter. In that case it falls to consider whether the short segment demonstrates new utility and qualifies under Hartranft.

The rejection of new function and utility in Myriad III is extraordinarily harsh and questionable. Primers bind to a nucleotide chain in conventional manner, but they also serve as sites for initiation of PCR, which is not a function carried out by any naturally occurring sequence.

Decisions of this kind are, in my submission, subject to an inadequate level of legal analysis and scrutiny. In their more extreme forms, they are subject to inadequate protest from industry and the profession because they are simply WRONG.

"If the past decade has shown the patent community nothing else, it is that innovation cannot be held hostage to political or doctrinaire whims of any branch of government."


How very true. When it comes to patent law jurisprudence and heeding the express provisions of the patent statutes as enacted by Congress, Our Judicial Mount Olympus has acted as "rogue branch" of that "government."

It seems like what happens is that there are all these actors out there like the justices that will grab power whenever offered the chance. The justices are happy to write patent law when there appears to be support to the proposition that the system is not working.

To my mind, Alice is contrary to the 1952 Patent Act and the SCOTUS says that the 1952 Patent Act "merely" codified their case law, but that isn't what Rich said and clearly there was more to the 1952 Patent Act (e.g., in the manner invented.)

I think that Paul Cole is (as usual) exactly right about the "judicial cringe" at the CAFC. They have been smacked down so many times now that they are just preemptively giving in to the stupidest aspects of supreme court patent jurisprudence so that they can be spared the humiliation of having those inanities imposed upon them in certiorari and reversal.

This is why I was a bit surprised to see Dr. Noonan's post develop as it did. Based on his opening paragraphs, I thought that he was going to proposed something really bold. Instead, his suggestions strike me as very modest proposals indeed. I agree with all of the proposed statutory amendments, but it seems to me that what we really need (based on the long historical trend of Congress fixing the supreme court's mistakes and the SCotUS simply reimposing these same mistakes in new guises) is to take jurisdiction over Title 35 away from the SCotUS entirely.

Back when the CCPA was first created, there was no right of certiorari from the CCPA, and therefore the CCPA's decisions were unreviewable. I think that Congress would do well to amend Title 35 to remove patent decisions from the scope of appellate review by the SCotUS (except, perhaps, for matters that do not relate to patent law, such as FRCP or FRE matters).

Excellent post. Thanks Kevin. Len

"Back when the CCPA was first created, there was no right of certiorari from the CCPA, and therefore the CCPA's decisions were unreviewable."

From Wikipedia:

The CCPA began as the United States Court of Customs Appeals, created by the Payne-Aldrich Tariff Act of August 5, 1909, and it started its work the following year, on April 22, 1910. Five judges for the new court were appointed by President Taft: Robert Morris Montgomery, William H. Hunt, James Francis Smith, Orion M. Barber and Marion De Vries. The jurisdiction was originally appeals from decisions of the Board of General Appraisers, and no further appellate review was permitted. This changed in 1914, when writ of certiorari by the United States Supreme Court was allowed.

I agree that what was true of appellate review of CCPA decisions originally should be instituted now with respect to the Federal Circuit: no review allowed by Our Judicial Mount Olympus.

Elephant, meet room. All the dancing really swings around software patents that are a) functional at the point of novelty b) assembled, rather than "discovered" or "invented" c) written expressions of instructions, which mean a kind of literature, which can never be fairly or consistently judged on a structural basis of novelty/obviousness. Patents were meant for things; not for ideas. Much of the mischief hence is to try and accommodate a perversion.

martin snyder,

While respecting Dr. Noonan's desire to not let the comment section here turn into snipe-fest like certain other blogs, your comment at 01:45 has every appearance of being not only NOT informed, but severely MIS-informed.

Each of the "points" that you wish to make has been rebuked soundly in law, fact, and policy many times over on several different forums.

Your unwillingness to listen and learn and desire only to post again the philosophical position of that which you want to believe in makes me think that any attempt to converse with you and point out your errors here is a lost cause.

So with this in mind, I will "borrow" a response from another blog when a poster insists on "having an opinion" while also insisting on not being informed:

As to having opinions – I am also most definitely not saying that you cannot have them But if you want to have an informed opinion, then yes, something more is required. If you are unwilling to change your opinion after being informed, then your opinion is more clutter and unhelpful than it is helpful. You always have the choice of being helpful or unhelpful – you do not have the choice of ignoring being informed and then merely claiming that your opinion is helpful when it is not.

As to making sense to you, well, that takes a certain willingness on your part to realize that in fact, naked opinions that remain steadfast based on pure belief systems and that are not willing to advance when being informed – that is, willing to recognize what “making sense” means and entails – are opinions that while perfectly able to “be had” are not the types of opinions that are worthwhile to “be had.”

Excellent analysis, and very thought-proving. I hope this and other discussions prompted by the somewhat acrimonious relationship developing between the two main "Patent Courts" of our country spurs a broad-based dialog about what is going on in our troubled "patent waters."

My hope is this ends up shining an almost blinding light on what I believe to be the real culprit behind this ever-increasing mess that is our Patent Law—Congress! Our federal Congress has become almost ineffective, especially in the realm of patents. I believe this is due to the almost overwheling economic influence that is brought to bear on its members by a few extremely well-funded "special interest" groups, especially the "Big Pharma" lobby, which I submit directly or indirectly controls almost everything Congress does in the patent arena.

Think about it. Every patent law initiative of significance that comes before Congress is presented as a pre-staged, planned out campaign of glitzy PR mumbo-jumbo, where everything is planned ahead of time to dazzle Congress and the media as to how this "patent reform" legislation is going to make everything better for everybody. It is interesting how the planning identifies all potential "downsides," which are carefully, subtly and effectively "demonized," "minimalized," and/or "marginalized" by advance publicity put out by the pushers and their willing accomplices in the media.

Who has the money and the "connections" to do this?

We saw this in the recent, cleverly labeled "America Invents Act," all packaged up with a big yellow bow and brought before Congress under the phony guise of urgently-needed "patent reform." I mean, who can be against "reform"? The Senate vote was something like 98-0, and I understand a post-legislative review revealed that only a couple of members even professed to have read the legislation, and that none could now "correctly" recall even one of the main elements of the legislation.

How in the world is it better for the "grass roots" meaningful technology generators in our country to have the right to a technological patent determined by a "race to the USPTO," as opposed to a "race to the Laboratory"? What ridiculous nonsense! All things considered, the "race to the laboratory" method has worked exceedingly well over the last 200+ years, and has been a huge factor in America's unparalleled dominance in cranking out "world-changing" technologies that were developed to a significant degree of confident operability before the first patent application was filed in the USPTO!

Why change it? Since when did America change to be like everyone else in the world? I always thought it worked the other way around!

This whole thing about how Congress goes about its "tweaking" of the Patent Act is a farce! If anything needs "reform," it is how our Congress works (or, rather, doesn't work)! When are we going to wake up?

As to the Supreme Court-Federal Circuit thing, most in the Patent Bar figured out early on that the Federal Circuit was being used by members of Congress as a place to "place" secon-tier, judicial "misfits" in order to repay some sort of political favors. The Supreme Court is probably now just waking up to this, as it begins to see the troubling fractionation of our Patent Law by the issuance of far too many wildly inconsistent "panel" decisions from the CAFC, many produced by well-meaning, second-tier judges with little or no background of the vast and hyper-specialized jurisprudence of Patent Law, and who have no business trying to decide such questions.

No doubt the "Supremes" feel compelled to verbalize their broader and deeper awareness of the fact that the Federal Circuit, as currently constituted by our ineffectual Congress, just isn't working.

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