About the Authors

  • The Authors and Contributors of "Patent Docs" are patent attorneys and agents, many of whom hold doctorates in a diverse array of disciplines.
2018 Juristant Badge - MBHB_165
Juristat #4 Overall Rank

E-mail Newsletter

  • Enter your e-mail address below to receive the "Patent Docs" e-mail newsletter.

Contact the Docs


  • "Patent Docs" does not contain any legal advice whatsoever. This weblog is for informational purposes only, and its publication does not create an attorney-client relationship. In addition, nothing on "Patent Docs" constitutes a solicitation for business. This weblog is intended primarily for other attorneys. Moreover, "Patent Docs" is the personal weblog of the Authors; it is not edited by the Authors' employers or clients and, as such, no part of this weblog may be so attributed. All posts on "Patent Docs" should be double-checked for their accuracy and current applicability.
Juristat #8 Overall Rank


« Amerigen Pharmaceuticals Ltd. v. UCB Pharma GmbH (Fed. Cir. 2019) | Main | Ex parte Milder (PTAB 2018) »

January 22, 2019


Best write-up across the blogosphere.

And Justice Thomas writes another, terrible patent law opinion.

...and let's not get too excited by the affirmance.

The affirmance is in a matter detrimental to patentees.

All this does is confirm that the simian training is proceeding along the lines of the psychological thought experiment.

"[T]he Court was uncharacteristically cautious in its language..."

Hm, I cannot agree that there is anything "uncharacteristic" in this. Remember Justice Thomas' straining in Myriad to emphasize how (allegedly) narrow was the holding in each case (Myriad: "We merely hold that genes and the information they encode are not patent eligible under § 101 simply because they have been isolated from the surrounding genetic material"). The emphasis on the narrowness of the holding did not stop the CAFC from implementing the holding (as the SCotUS really intended) to broadly reach all sorts of other issues (cloned animals in Roslin, cffDNA in Ariosa, PCR primers in Roche, etc). The SCotUS in general and Justice Thomas in particular like to pretend coyly to narrowness, with a wink and smile at the lower courts to tip them that they are supposed to press farther.

Hey Kevin,

Yeah, getting SCOTUS to affirm the Federal Circuit other than when it disfavors the patentee is like discovering a unicorn. Ignoring the amicus brief of a co-sponsor of the AIA is also par for the course. The amicus brief by Congressman Lamar Smith, co-sponsor of the AIA, makes clear why the holding/reasoning by SCOTUS in Helsinn is contrary to the legislative intent of what “new” AIA 102 means.

As suggested, this isn’t the first time that SCOTUS has ignored what sponsors of the very patent statute have said it means. In Eli Lilly v. Medtronic, the co-sponsors of Hatch-Waxman pointed out that “patented invention” meant only drug patents, not patents on all subject matter, including medical devices, subject to FDA regulation. But Scalia, notoriously deaf to any aspect of legislative intent, ignored them as well to hold that “patented invention” meant any subject matter regulated by the FDA. Admittedly, Congress could do a better job drafting such legislation, and the true legislative intent can be a tricky thing to divine, but SCOTUS might do better to listen more closely when it’s the sponsor of the very act that says what it means.

Dear Greg: I don't mind an attempt by the Court, however ill-informed or poorly done, to be narrow or parsimonious; after all, much of the Bilski opinion was focused on the Court not wanting to make a rule for today's technology that somehow harmed innovation in future.'

What I meant was using "may" as Justice Thomas did; he could have said "under these circumstances, where the existence of a contract is public, we see no need for the details of the contract to be disclosed in order for the on-sale bar to be raised." After all, Justice Kagan gave just such a warning at the end of the Bowman v Monsanto opinion:

"We recognize that such inventions are becoming ever more prevalent, complex, and diverse. In another case, the article's self-replication might occur outside the purchaser's control. Or it might be a necessary but incidental step in using the item for another purpose. . . . We need not address here whether or how the doctrine of patent exhaustion would apply in such circumstances."

So they can do it; funny that they decided not to do so in this case.

Thanks for the comment

Thanks Kevin. "Supreme Court affirms Federal Circuit decision!" certainly describes a rarer event than does "Supreme Court Screws Up Decision in Patent Case", which would have been an equally accurate title for this write-up.

Ron Katznelson pointed out in a different forum that there are two good things about this decision: first, it means that the existing exceptions to the on-sale bar, carved out in the case law, still apply; and second, no further proof is needed to show Congress that it eviscerated the grace period when it enacted the AIA.

The term “disclosure” in AIA 102(b)(1) is not defined in the AIA. One could argue that “disclosure” is broad enough to include a “private” disclosure (such as a secret sale) and, so, as long as the item being secretly sold “originated” with the inventor, then the one year grace period of AIA 102(b)(1) applies to such a secret sale.


Which forum is that that Ron has shared his insights?

It was on Carl Oppedahl's EFS listserv ([email protected]).

Thanks AM


To your point about the evisceration, it should be noted that Ron's view centers about the NEW WORDS that Congress used in resetting just what is protected under the one year safety zone.

However, I have to disagree with Ron's thinking.

Not that I disagree DIRECTLY with what Ron offers, mind you, as he attempts to offer a straight forward view based on the actual words of Congress.

Where I disagree is that Ron's straight forward view presumes that the Court will likewise take a straight forward view.

If anything, this decision in Helsinn shows that the Court will NOT take such a straight forward view. They will treat patent law -- and most any aspect of patent law -- as a wax nose to twist to whatever (p-olicy) view that they want to have.

In doing so, they simply will not be constrained by ANY straight-forward views.

So my disagreement is not with Ron PER SE. It is that Ron attempts to project rationality where the evidence does not support the application of rationality.

The comments to this entry are closed.

June 2024

Sun Mon Tue Wed Thu Fri Sat
2 3 4 5 6 7 8
9 10 11 12 13 14 15
16 17 18 19 20 21 22
23 24 25 26 27 28 29