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September 12, 2018


It's axiomatic that if Judge Dyk is in the majority and Judge Newman dissents, Judge Newman is correct and Judge Dyk is hopelessly wrong. Especially when the patent at issue is a pharma patent.

In view of the present make-up of the CAFC, I am doubtful that rehearing en banc will be granted. And I'm sure that SCOTUS won't take this case up.

Fortunately, this decision won't matter, because (a) we don’t need new medicines or new treatment protocols, (b) new drugs just make it to the market on their own, without any investment by anyone, and (c) moronic decisions from the Federal Circuit have no effect whatsover on drug development.

Fortunately, the same reason the majority found it easy to affirm is the reason this case should be of limited import: it is bounded by its facts and very specific and unique facts at that. It is the antithesis of Section 101 cases, where a broad, general, inchoate principle can be (mis)applied by courts to a patentee’s detriment.

Thank heaven for small blessings.

Thanks for the comment

Judge Newman was appointed by Reagan, Dyk by Clinton, Taranto by Obama. Here, two liberals outvote a conservative. Elections have consequences; in this case further irrational erosion of the patent system.

It is hard to see how a blocking patent could preclude a "failures of others" unobviousness argument absent evidence that the blocking patent had stopped such research by others before they really tried? Would an en banc rehearing motion limited to just that legal issue work? But yes, this case is so facts-intensive that it seem doubtful the Sup. Ct. would ever take it.

On first read - and truthfully even before I am able to complete the first read, a phrase is being used that appears to (continue) a serious misperception about patent law:

"if only to ensure that the constitutional mandate that Congress only grant patents that will "promote the progress of... the useful arts" be satisfied."

The Constitutional mandate uses "promote" in more than merely any type of linear (or non-linear) "technical" advance.

Far too many people only see "promote" as if "progress" were some lock-step type of thing in which every step is -- and must be -- a step forward.

That is simply NOT how the reality of innovation is. OFTEN (and especially often in cases of disruptive innovation), the first several steps are actually STEPS BACKWARD when compared to the "state of the art." OFTEN though, with these steps backward, the disruptive innovation provides a much stronger slope of improvement.

This is critical to be mindful of when it comes to patents.

"It's axiomatic that if Judge Dyk is in the majority and Judge Newman dissents, Judge Newman is correct and Judge Dyk is hopelessly wrong."



That is a Link to the EPO issued patent, 1732548, currently still under opposition. The Decision of the Opposition Division to maintain the patent in amended form sets out from page 22 to page 27 the non-obviousness reasoning. What's wrong with it, i wonder.

Max: thanks very much for this. I think the key statements are in Section 4.5.21 of the Opposition Division’s reasons for their decision, where they acknowledge the inventors’ recognition that the consistency of the response, not its intensity, was the important factor. (In the Federal Circuit’s Decision this is called a “re-evaluation” of the clinical data.)

I think the OD got it right but the court in the US lost the forest for the trees.

Thanks for your comment.

Am I the only one who thinks it important to distinguish what is not obvious commercially from what is not obvious within science and the useful arts? I see that as an important distinction with the fact matrix here. Another example would be obviousness in the context of a simple modification to the shape of a moulded plastic article. For an established manufacturer, the cost of re-tooling might be prohibitive. But for a new entrant, with the task of designing the tooling from scratch, the mod might be slam dunk obvious, from a technical point of view. Is the PHOSITA the established manufacturer, the new entrant, neither or both?

I exaggerate for effect. Teasing apart commercial and technical obviousness is almost always far more nuanced than that. That's why we have to be so much on our guard about it. Especially when "commercial success" is invoked.

Kevin, as to the EPO file, you might not enjoy quite so much the 7 page observations on the poster prior art, recently filed by an anonymous 3rd party represented by UK patent attorney Dr Richard Cooke. The EPO Board of Appeal will certainly find them helpful to its lengthy deliberations on the case.

MaxDrei states:

Am I the only one who thinks it important to distinguish what is not obvious commercially from what is not obvious within science and the useful arts?

On what basis of PHOSITA (a distinct legal term) would you use for your "importance to distinguish?"

I do not see why you want to separate considerations that both apply. Clearly, as is, both are folded in. How would you want it any differently?

Would love to know your views on the recent Indivior vs DRL CAFC court order, where once I again I fear the majority of made a grave error.


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