Story Telling

By Kevin E. Noonan --

Patent law (and, consequently, patent lawyers) can be viewed as having at least a slightly tighter tether on concrete, factual reality than other areas of the law, at least to the extent that making patent-related legal arguments are more fact-specific.  This can cause some interesting contrasts when addressing arguments to a court; this was seen dramatically during the Myriad litigation, where some lawyers interpreted the claims to BRCA genes to encompass total genomic DNA, and of course to the infamous "magic microscope" argument (although choosing lithium as an example of a patent-ineligible product of nature was clever, insofar as the bonds in elemental lithium have a significant covalent character).

These realities impact storytelling in patent law, because telling a compelling story is a hallmark of good lawyering, whether in a patent application (to the Patent Office and investors) or in litigation (to a district court, the Federal Circuit, or the PTAB; by the time a case gets to the Supreme Court it is rare that the facts are as important or likely to be properly understood).  But another thing Myriad taught patent lawyers is the flexibility of argument and how facts can be interpreted almost any way an advocate wants; as a former partner used to say, "your strengths are also your weaknesses" in homage to the pliability of fact-based argument.

An illustration of this principle, in an area far removed from legal argument (and indeed, being scientific argument might be thought to be devoid of the malleability of argumentation that arises in the law) was the interpretation of analogous biological features, as set forth by William Buckland, in The Bridgewater Treatises,  Volume 6 (1836), with regard to Ichthyosaurus, a marine dinosaur, fossils of which had been discovered by several proto-paleontologists.  The fossil was (and is) remarkable as appearing to be a combination of several parts recognized in other animals: "paddles similar to those of a whale, a crocodile-like head, vertebrae like those of a fish, and a sternum like that of the enigmatic creature from Australia, the platypus" (see B. Switek, Written in Stone, Bellevue Library Press, Kindle Edition, p. 56).

Buckland interpreted the animal thusly in finding it an example of God's handiwork:

The introduction to these animals, of such aberrations from the type of their respective orders to accommodate deviations from the usual habits of these orders, exhibits a union of compensative contrivances, so similar in their relations, so identical in their objects, and so perfect in the adaptation of each subordinate part, to the harmony and perfection of the whole; that we cannot but recognise throughout them all, the workings of one and the same eternal principle of Wisdom and Intelligence, presiding from first to last over the total fabric of Creation.

Of course, this interpretation was prior to Darwin's publication of the Origin of Species by Means of Natural Selection which, despite providing a mechanism by which evolution could occur, and the Herculean efforts of Thomas Henry Huxley to defend, was not immediately adopted.  But Darwin's insight provided an alternative explanation (the modern one) to observations of the fossil anomaly, that of convergent evolution or homology, wherein, for example, the forelimbs of whale, bat, and human are derived from one another and illustrate "descent with modification," a mechanism that does not explain the forelimb of a crab (an example of an analogous rather than homologous structure).  It is facile to mock Buckland's argument today, but better perhaps to recognize that his explanation was one dependent on his presumptions and lacking the theoretical structure Darwin (and his philosophical descendants) have provided to us.

These considerations are relevant, in a way, to the philosophical debates surrounding patent law today.  These include patent eligibility, the role of patent exclusivity on drug prices, and the extent to which innovation should be protected by robust patents.  These questions abound in the public discourse and in government, wherein a particular party's positions are frequently determined by a desired outcome rather than having a sound epistemological basis (see "FTC to the Rescue Regarding High Drug Prices and Patents").  But they have been nonetheless persuasive to policymakers and the public (see "A Solution in Search of a Problem"; "More Ill-conceived Remedies from Congress Regarding Prescription Drug Costs"; and "Even More Ill-Conceived Remedies from Congress Regarding Prescription Drug Cost"); it may be easy to remember tense Thanksgiving dinner discussions amongst patent lawyers' family members about why it was right for any to try to patent a person's genes (see "In Support of Gene Patents").  Similar arguments are arising today regarding, for example, university technology transfer (see "Pigs Fly, Hell Has Frozen Over, and the New York Times Supports Small Inventor and University Patenting"), or high insulin prices, or biologic drug pricing in the hundreds of thousand dollars annually (see "Cancer Drug Prices Continue to Rise").

There are arguments, of course, and explanations for apparent anomalies in the effects of patent law on society (see, e.g., "The Effect of Patents and Drug Price Regulation on New Drug Diffusion Globally").  But these tend to fail the "cocktail party" test (wherein making these arguments rapidly causes people to eschew remaining in them for very long).  The answer is not (solely) "educating the public" (with all the risks of condescension that arise from such efforts).  Perhaps it is how the argument is made, evidence of which has begun to become evident in television commercials by pharmaceutical and biotechnology companies discussing the value new drugs bring.  Testimonials, from the beneficiaries of these drugs, can also be useful.  But there is also a need for economic research and arguments about the macroscopic effects of these advances, not regarding only their immediate costs but societal benefits with regard to economic productivity and reductions in ultimate healthcare costs, in addition to the less quantifiable aspects on the children and loved ones of those whose lives have been saved or extended by these medical advances (see, e.g., "Addressing Increased Drug Costs -- A Proposal").

There is no magic bullet or overarching argument that can save the day.  But changing or at least challenging the current memes that threaten to kill the golden goose of innovation is a necessary place to start if short-term pursuit of immediate benefits (see "The ACLU, Working for the Man") that disregards the long-term consequences of poorly thought out changes to how innovation is promoted and protected is to be accomplished.  It is critical that we do so and it needs to be done now.

Comments

[Atari Man]

It's been said before: until the loved one of someone on the Supreme Court dies from a disease that demonstrably could have been cured or detected earlier, had the court's Myriad/Alice/Mayo jurisprudence not killed the invention's patentability and thus made development of a commercial product unfeasible, we won't see a change in that jurisprudence. Studies of broader societal implications won't hurt, but it's the things that strike close to home that seem to move people the most. And even then, the movement isn't always in the right direction (recall one of the studies imposed upon the PTO by the AIA, which was added to the legislation as personal favor to Debbie Wasserman-Schultz).

[Paul Cole]

Interesting commentary.

It is an interesting question, to which I have been unable to find an answer in the case law or legal writing, what is the precedential value of a decision in which the rule of law put forward is based on a group of essential material facts, one of which is false. A good example is Judge Reyna's opinion in Ariosa which concluded that the claimed process began and ended with a natural product. In fact, the process began with paternal DNA in the maternal blood, and ended with DNA sequences synthesized using probes to define the region to be copied and enzymes and nucleotides to perform the synthesis. Not only was the resulting material NOT a natural product but a synthetic product made in the laboratory by the hand of man, but on the face of Judge Reyna's own decision was in an abundance 1,000 to 1,000,000 time that occurring in nature. Irrespective of the deference due to judicial findings, this is factual and scientific bilge on a level comparable to saying that the earth is flat. Yet the decision is marked as precedential and has been followed in subsequent Federal Circuit cases.

Two points follow:
* It is absolutely clear that it is essential to enforceability to have a complete record of the essential technical facts in the specification such that they should be comprehensible to a non-scientifically trained judge.
* It is also essential that the factual position should be clearly set out at first instance in the evidence, and that the facts should be clearly and plainly explained to the judge.

If a case gets to the Supreme Court with the facts not properly understood, and all the chatter is about the law with disregard to the underlying facts, that is a disgrace, and an indictment of the US legal system both from a domestic and an international perspective. If you look at the CIPA brief to SCOTUS in the Athena case, you will see that it argues that the newly identified categorical exclusion of diagnostic methods clearly and unequivocally places the US in breach of its obligations under the TRIPS agreement.

But who cares that the US is in breach of an agreement that the US itself initiated? We're litigators and arguing the law is far more fun than mastering the technical facts.

[skeptical]

One item to keep in mind is that what I would label as the Pro-Innovation story is NOT the only story seeking to be told.

Not only must we tell OUR story well, we also need to be active in deflating the other competing narratives.

This may well involve some 'less than polite' exchanges, as competing narratives OFTEN are not constraining themselves to being on the up and up when it comes to treatment of facts, history, or even law.

[skeptical]

I am going to have to disagree with Paul Cole’s suggestion of “absolutely clear that it is essential to enforceability to have a complete record of the essential technical facts in the specification” as this opens the door to death by patent profanity and obfuscates the difference between a specification being a legal document and one being an engineering guidebook.

Further (and his own Amicus testified to this), his second bullet point about providing a clear exposition to the judicial members WILL MAKE NO DIFFERENCE if those judicial members already have their Ends in mind (which is self-evidently true).

[Jorge Contreras]

Kevin -- story telling is endemic to the common law. And when the facts are juicy, so much the better. I wrote about the different stories that emerged in AMP v. Myriad a few years ago (see link below). There were several, and interestingly the stories told/repeated by the different judges who wrote opinions (Sweet, Lourie, More, Bryson, Thomas) were pretty determinative of their holdings. Story is Law.

Jorge L. Contreras, Narratives of Gene Patenting, 43(4) FLA. ST. U. L. REV. 1133-1199 (2016),
https://papers.ssrn.com/sol3/papers.cfm?abstract_id=2485681

[Paul Cole]

@ Skeptical

I have seen too many cases with incompletely written up chemical examples, missing details of critical materials, and similar problems on mechanical inventions. You can find similar instances in some of the section 101 cases. Part of our job is to act as external referees and make sure as far as we can that the specifications that we file are complete and accurate.

If you have not experienced these problems, you have not done much patent prosecution recently. I can testify that the problems created are painful and difficult to overcome.

[skeptical]

Mr. Cole, respectfully you confuse and conflate different problems with the different sections of patent law.

I do wish that you would take the lessons that I have provided to you, and integrate them to identify just who is the real culprit in the quagmire of US subject matter eligibility (hint: it is not the applicants, no matter how less than perfect any particular application may be).

No one is saying that poor applications should get a free pass to be granted. At the same time, poor applications simply are NO excuse for legislating from the bench and conflating the different sections of law.

I really do “get” that you want to advocate for ‘scriveners’ to do their best job possible. But your advocacy misses the mark and you become part of the problem when your wanting better of ‘scriviners’ provides excuses for the mangling of law by the judicial branch.

As I stated, patents are legal documents and are NOT engineering documents. Sufficient technical basis? Definitely. But that sufficiency is measured by LEGAL standards — not engineering standards.

[Paul Cole]

@ Skeptical

In Athena I wrote amicus briefs for CIPA both in the Federal Circuit en banc application and in the petition for certiorari. The important claim was claim 9, and our brief identified no less than three novel chemical entities disclosed in the patent, namely iodinated MuSK, a double complex autoantibody/iodinated MusK formed in solution and a precipitated triple complex autoantibody/iodinated MuSK/sheep IgG. Even an attentive moron could understand that each of these three compounds, made in the laboratory by the hand of man, qualifies as a composition of matter, being assembled from two and then three discrete ingredients. We also explained that the precipitated end product qualified as a manufacture under the leading Hartranft case because it had a new name, a new chemical form and a new utility, being convenient for radioactive counting. Thirdly, we argued that viewing the process as a whole it qualified as an eligible process because of its chemically transformative nature. It was therefore relevant to THREE of the FOUR eligible categories under section 101, as explained in our briefs with relevant to the leading authorities for each category. To make it easier for technically illiterate judicial clerks we included a diagram distinguishing clearly what were products of nature and what was made by the hand of man, with arrows pointing to the chemical species that were new.

It is extremely depressing that the panel majority in the en banc application barely dirtied their hands with the material scientific facts and the legal implications of those facts, taking a very broad brush view of what was claimed and failing to distinguish between generically known techniques and novel species within that genus. Judges More, O'Malley, Wallach and Stoll got it right in their dissent, as did Judge Newman, but unfortunately they remained in a minority. The Supremes did not bother with the issue, nor did it bother them that the categorical exclusion of diagnostic methods now apparently being applied at the CAFC level places the US clearly in breach of its obligations under the TRIPS treaty to grant patents in "all fields of technology".

In my opinion the CAFC judges are greatly culpable for the present mess. If the majority had displayed the same attention to detail in relation to the material facts as they did in their verbose analysis of prior case law they would never have reached the decision that they did. Nevertheless we do have a duty not to help this kind of nonsense by saying that techniques are conventional when they are in fact novel.

True, poor applications simply are NO excuse for legislating from the bench. But we should not help the judges along this primrose path by less than the optimum drafting on behalf of applicants and over-generalized and in the outcome misleading statements in the specifications we file. If many of the CAFC judges are poor at their jobs, as demonstrated here, the greater the onus on us to minimize such events in future by stepping up our drafting. We CAN'T change the judges in the Federal Circuit. But we CAN ensure that the specifications that we file are of the utmost quality and persuasive power.

[skeptical]

"the greater the onus on us to minimize such events in future by stepping up our drafting"

Again (as I have noted in the past), your call for better drafting is good advise -- on its own.

It does NOT make good advice for advocacy in treating the actual MALalignment by the Court (and its underlying courts) vis a vis patent eligibility case law.

YOUR OWN amicus briefs are a testament to this.

Ask yourself, how well were your briefs received?