Amicus Briefs in Support of Sequenom's Petition for Rehearing En Banc: 23 Law Professors

By Donald Zuhn --

Earlier this summer, in Ariosa Diagnostics, Inc. v. Sequenom, Inc., the Federal Circuit affirmed a decision by the District Court for the Northern District of California granting summary judgment of invalidity of the asserted claims of U.S. Patent No. 6,258,540 (see "Ariosa Diagnostics, Inc. v. Sequenom, Inc. (Fed. Cir. 2015)").  On August 13, Sequenom filed a petition for rehearing en banc, arguing that the panel's decision in June was inconsistent with the Supreme Court's decisions in Diamond v. Diehr, 450 U.S. 175 (1981), Mayo v. Prometheus Laboratories, 132 S. Ct. 1289 (2012), and Association for Molecular Pathology v. Myriad Genetics, 133 S. Ct. 2107 (2013), and that the panel's decision poses a threat to patent protection in multiple fields of invention.  Last week, twelve amicus curiae briefs were filed in support of Sequenom's petition for rehearing en banc.  Over the next few weeks, Patent Docs will examine these amicus briefs.  Today, we review the brief filed by twenty-three law professors*, which was submitted by Patent Docs author Kevin Noonan.

The brief begins by noting that while the amici -- twenty-three law professors who teach and write on patent law and policy -- "may differ amongst themselves on other aspects of modern patent law and policy, they are united in their professional opinion that this court should grant rehearing en banc because the panel decision's application of § 101 undermines the function of the patent system to promote and to legally secure twenty-first-century innovation."  The brief then proceeds to "offer two further insights as to how the panel decision undermines the essential function of the patent system in promoting new innovation."  In particular, amici argue that the Ariosa panel decision undermines "exactly the type of twenty-first-century innovation the patent system is designed to promote," and that the panel decision "would call into question nineteenth-century patented innovation the Supreme Court deemed valid."

With respect to the brief's first insight, the amici contend that the Ariosa panel decision "contravenes the Bilski Court's injunction that § 101 tests should not impede the progress of future innovation," noting that "[a]s the Bilski Court recognized, the patent system exists to promote new inventions on the frontier of human technological knowledge like genetic testing methods, which by necessity require massive R&D expenditures that can only be recouped via the protections offered by property rights in this innovation."  According to the amici, "[t]he panel decision contravenes this insight by the Supreme Court because it threatens to preclude many genetic and other diagnostic tests from the ambit of patent protection," and "disincentivizes making the massive R&D investments required to create this new innovation in the twenty-first century."

Turning to the professors' second insight, the brief cites Mayo Collaborative Services v. Prometheus Laboratories, Inc., where "the Supreme Court recognized that 'too broad an interpretation of this exclusionary principle [regarding laws of nature, natural phenomena and abstract ideas] could eviscerate patent law,'" since "'all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.'"  The amici argue that "not only does the panel decision threaten an entire field of twenty-first-century inventive activity, it would also cast serious doubt about classic nineteenth-century patented innovation either validly issued under the patent laws or sustained by the Supreme Court," and present three examples in support of their argument.

The first, U.S. Reissue Patent No. 117, issued June 13, 1848, was involved in O'Reilly v. Morse, 56 U.S. 62 (1853).  Although the Supreme Court affirmed the validity of the first seven claims in that case, the brief contends that "the Ariosa panel's application of the Mayo test, if applied to Claim 1 of Morse's patent in the same way the panel applied it to Sequenom's patent, leads to the conclusion that Morse's Claim 1 is arguably unpatentable subject matter," which amici argue "directly contradicts the Supreme Court's analysis and decision in Morse that Claim 1 is valid."

The second, U.S. Patent No. 174,465, issued Mar. 7, 1876, was involved in Dolbear v. American Bell Telephone Co., 126 U.S. 1 (1888).  The brief contends that "applying the Ariosa panel's analysis to Claim 5 in Bell's patent leads to the same conclusion reached for Claim 1 of Morse's patent," adding that "contrary to the Supreme Court's own analysis and decision in 1888, the Ariosa panel's analysis leads to the logical conclusion that Bell's famous Claim 5 is unpatentable subject matter."

For the third and final example, the brief goes all the way back to the first patent ever issued: U.S. Patent No. X00001 (at left), granted July 31, 1790 to Samuel Hopkins.  Arguing that this patent, which is directed to a method of making potash (mined and manufactured salts that contain potassium in water-soluble form), would be invalid under the panel's application of the Mayo two-step test, amici state that "[t]his is significant because Hopkins' patent was signed by Thomas Jefferson as Secretary of State and as a member of the committee created under the 1790 Patent Act who reviewed Hopkins' application," adding that "Jefferson was both a drafter of some of the early patent laws and has long been known for his views that patents should be severely restricted in their issuance to inventors."  Amici argue that "when a contemporary court reaches a decision that calls into question a patent validly issued under the 1790 Patent Act and signed by Jefferson himself, it is cause to question whether this court has applied the law correctly."  The brief concludes by declaring that the panel decision "casts doubt on classic patented innovation validly issued or upheld by the Supreme Court, which "suggests that the Ariosa panel has misapplied § 101 jurisprudence and that the error is significant enough to warrant en banc consideration."

• The twenty-three law professors comprising the amici curiae on the brief are:  Dan L. Burk (University of California, Irvine School of Law), Bernard Chao (University of Denver Sturm College of Law), Ralph D. Clifford (University of Massachusetts School of Law), Christopher A. Cotropia (University of Richmond School of Law), Gregory Dolin (University of Baltimore School of Law), Richard A. Epstein (New York University School of Law), Christopher Frerking (University of New Hampshire School of Law), Yaniv Heled (Georgia State University College of Law), Timothy Holbrook (Emory University School of Law), Christopher M. Holman (UMKC School of Law), Gus Hurwitz (Nebraska College of Law), Mark D. Janis (Indiana University Bloomington Maurer School of Law), Adam Mossoff (George Mason University School of Law), Sean M. O’Connor (University of Washington School of Law), Kristen Osenga (University of Richmond School of Law), Lee Petherbridge (Loyola Law School), Michael Risch (Villanova University School of Law), Mark F. Schultz (Southern Illinois University School of Law), Sean B. Seymore (Vanderbilt University Law School), Ted Sichelman (University of San Diego School of Law), Brenda M. Simon (Thomas Jefferson School of Law), Shine Tu (West Virginia University College of Law), and Saurabh Vishnubhakat (Texas A&M University School of Law).

Comments

[EG]

Hey Don,

In my opinion and others, O'Reilly v. Morse is miscited as a patent-eligibility case (35 USC 101). It is really more a case about "enablement" (35 USC 112, first paragraph).

I'm also proud to say that the professors from my law school (Chris Cotropia and Kristen Osenga) signed onto this brief, as well as Adam Mossoff and Michael Risch who I respect greatly. These 23 "real" IP law professors haven't drunk the Kool-Aid that many others who masquerade as IP law professors have.

[Shelly Palmer]

Great job Adam Mossoff! Congratulations.

[Modern Practioner]

Is it just me, or is there a giant hole in this brief? Claims are patent eligible according to the statute in effect when they issue. It IS reasonable to look at 19th century US patent law and patents and compare to today's law and patents, looking for insight. But it is NOT reasonable to say it's a problem if a 19th century issued claim would not issue under today's statutes and case law. The statutes and case law (not to mention patent practice generally) are different. Just look at the actual claims in the cited cases (e.g. '465 https://www.google.com/patents/US174465 claim 5: "The method of, and apparatus for, transmitting vocal or other sounds telegraphically, as herein described, by causing electrical undulations, similar in form to the vibrations of the air accompanying the said vocal or other sound, substantially as set forth [in the specification];" and patent 117 https://www.google.com/patents/USRE117 is even more problematic). Those 19th century claims would never survive 112 today, and of course, judicial exceptions, 101 and related case law have evolved hugely since the 19th century.

[Modern Practitioner]

Re USRE117 to Morse, the amici write "Claim 1 recited a method of operating an electro-magnetic telegraph that could be invalid under the panel’s application of Mayo" (p. 11, 1st para.).

It's very hard to say what amended limitations modern 112 analysis would require in the 1848 claim 1 that would alter a modern 101 analysis.

In the issued 19th century claim, language such as "making use," "as set forth in the foregoing description," "as means of...," "which may be used to..." and "for the purpose of telegraphic communication..." all would run into modern 112 issues, and the resulting amendments would likely impact the Mayo analysis, likely improving the chances of 101-eligibility.

It simply makes no sense to attempt a modern 101 analysis of the issued claim, as the amici do on pp. 6-7, without also considering the effects of modern 112 practice.

Ultimately, since the invention appears to be directed to embodiments of a functional, physical telegraph resulting in mechanical printing or recording, then the application of a natural phenomenon or an abstract idea with properly claimed tangible results, should be able to satisfy even a modern 101 analysis. It doesn't matter if printing and recording were then conventional, if and as long as the combination of a never before similarly applied judicial exception (JE) results in a new application, including some conventional but outside the JE features. That's all given claim language drafted in a modern sense.

Also, it is a complete red herring to point to the "abstract idea" of "'communication at any distances'" (amici, p. 6, 2nd para.) as an unsolvable claim to a JE. First, that JE, as issued, is recited as intended use anyway, "FOR THE PURPOSE of telegraphic communication at any distances," so clearly that is either non-limiting or would require amendment. Second, the likely more relevant recitation of the claim is "as means of operating or giving motion to machinery which may be used to imprint..." Even that language would need to be amended into modern practice, but likely therein is the Diehr-like tangible hook to apply the JE and satisfy 101.

23 law professors have put their heads together to come up with an incomplete, biased, strawman analysis, which is out of touch with practical, modern examination and, by extension, modern litigation.

[Paul Cole]

The 23 Professors have raised some interesting points and, far more importantly, have demonstrated widespread concern about and disapproval of the Ariosa Panel Opinion in the knowledgeable academic community. For those reasons their brief deserves attention and makes a significant contribution.

[Skeptical]

Is it just me, or does "Modern Practitioner" sound not so modern, and with the quick resorting to denigration, more like the one who disdains (yet fully embraces himself) sockpuppets....?

It is interesting though, that the attempt to sound different starts off with more careful thinking.

Sadly, and more than with just a bit of irony, the ENDS are still the same, and the MEANS to those ends cannot but help dipping into the empty ad hominem.

Sure, the possiblity does exist that MP is not MM, but of that actuality, I am...

[Kevin E. Noonan]

Dear Modern:

Your points seem valid on first blush, but lose most of their persuasive force upon further consideration. The reason for that stems exactly from the Supreme Court’s language in the Mayo/Myriad/Alice decisions (and, of course, from the conceit that the Court’s jurisprudence is consistent through time on the question of patent eligibility).

First, the issue is eligibility not patentability, and the Court itself (in Justice Breyer’s Mayo decision) eschewed considerations of novelty, obviousness and the requirements of Section 112 in reaching its conclusions. Indeed, the Court’s language focused on the categorical distinctions between what is eligible and what is not, and did so without regard to the rest of the statute. So whatever the standard for patentability through time, the Court clearly believes that its standards for eligibility are the same today as they were hundreds of years ago.

Second, how something is claimed is also an irrelevancy, as Justice Breyer himself stated in Mayo when he cautioned against the artful draftsman and the art of claiming in such a way that the patent ineligible might become eligible because of how the claims were worded. Indeed, it is a strength of the brief that the type of analysis is precisely the analysis the Court employed in invalidating claims in its recent decisions, and if that is not what the Court intended it should be given the opportunity to say so.

But it these questions are important ones to discuss, because they are so readily misunderstood or misstated by the members of the patent community (lawyers, judges, and others) who argue to their own prejudices or benefits and not with an eye to what will satisfy the constitutional mandate to promote progress.

Thanks for the comment

[Skeptical]

You provide some fine points in response, Dr. Noonan,

But which also leads to some rather serious considerations that the Court is just not acting within its own authority.

Considering that even the Supreme Court is a court of limited jurisdiction.

Considering that THAT particular court is not allowed to engage in advisory opinions.

Considering that the words that the Court has used in its "scrivining" are words that merely evoke the POSSIBILITY of some future, conjectural, blocking: "may" and block [future] promotion of progress.

Considering that one of the strongest forms of innovation is necessity; that the power of patents TO block is one of the engines of inventing around that block.

Considering all these things, and then considering the philosophical aims (and the specific items targeted to be removed from patent eligibility),

and then considering the seemingly contradictory nature of the separation of - and at the same time, the conflation of - patent eligibility and patentability,

and then considering that the current state of Supreme Court jurisprudence (with all respect to Paul Cole, but no one, and especially the courts, are reading that jurisprudence in anywhere near the limited and closed form that such people advance),

how can anyone not acknowledge that the Court simply has made a muddle of the law, so much so as to invoke OTHER constitutional safeguards (beyond the most obvious safeguard of separation of powers), such other constitutional safeguards as the Void for Vagueness doctrine?

So EVEN IF the Court were to "reach" a constitutional question of the law not reaching the constitutional mandate, the Court does not have authority to change that law on its own accord. Does the Court have authority to rewrite the law at all, let alone rewrite and make it retroactive?

Its poorly played attempts evince that what it is doing is NOT interpretation. One only has to read the entire Court decisions to see the philosophical positions ebbing and flowing to see that the Court's own views (and not the views of Congress) are in play. "Interpretation" would not focus on the Court's own views as it does.

Upon what authority then does the Court reach into the future, conjectural "MAY block," and lay forth its writings of an advisory nature, and base its changes of law on its own values?

Upon what authority then does the Court ignore multiple constitutional safeguards?

Even the emperor should wear clothes.

[Paul Cole]

@ Skeptical

There is an excellent book READING LAW: THE INTERPRETATION OF LEGAL TEXTS by Antonin Scalia and Bryan Gardner which makes many points supportive of your position.

Frankly the level of legal analysis of Mayo and Myriad in many quarters in the US would be awarded a failing grade in any self-respecting law school. There is far too much emphasis on headline outcomes and far to little on the hard task of "briefing" the Court's opinions to find what rules of law have really been applied. It shows as much disrespect to the Justices of the Supreme Court to over-extend their holdings as it does to disregard them, and finding the correct interpretation requires hard work and attention to detail which has been sadly lacking.

If anyone can tell me the true rule of law in Mayo, I will be delighted to buy them a drink at the AIPLA Annual Meeting. As I have written elsewhere, there is no workable rule of law that can be derived from that decision, and attempts to do so have resulted in undue and unworkable breadth where the lower courts should have striven for workability. The rule in Myriad is very modest, but nobody seems to have noticed.

If the only way forward is Congressional amendment, as Skeptical advocates, then responsibility for that unfortunate situation can be traced to much poor lawyering.

[EG]

"Frankly the level of legal analysis of Mayo and Myriad in many quarters in the US would be awarded a failing grade in any self-respecting law school."

Paul,

Actually, the level of legal analysis by the Royal Nine in Mayo and Myriad would likely be awarded a "failing grade" by any competent IP law professor (i.e., not those masquerading as such).