In re Bergstrom – A Lost Precedent That Should Be “Found”

Since I do a lot of commentary, I read a lot of commentary, and have been struck by how the PTO s. 101 Guidelines on “Laws of Nature” have been criticized as if they are free from the constraints of precedent. The PTO’s long-established practice of issuing patents on products of nature that have been purified until they are, in fact, new compounds, has been largely analyzed as if it is sui generis – as if the Office had been doing us a favor for all these years, and has finally seen the error of its ways, thanks to Myriad.

Some of the fault must be laid, however gently, at the feet of Judge Lourie. In both of the Fed. Cir.’s Myriad opinions, he wrote in footnotes (11 and 7 respectively) that In re Bergy, 596 F.2d 952: “is no longer binding law” since it was vacated by the Supreme Court. I, and some other commentators, have criticized this statement as contradictory to the language in Chakrabarty to the effect that the petition for cert. was granted for the combined appeals in Bergy and Chakrabarty, but then Bergy was remanded for dismissal as moot. In fact, I looked at the actual Supreme Court order, 444 U.S. 1028, and it states that the judgment was vacated as well. My bad.

So where I take issue with Judge Lourie is his statement in both footnotes: “Other cases cited by the parties and amici were not decided based on patent eligibility. In In re Bergstrom, the court held that pure prostaglandin compounds PGE(2) and PGE(3), were improperly rejected as lacking novelty. 427 F.2d 1394, 1394[sic](CCPA 1970); see Bergy, 596 F.2d at 961.” This is from Myriad II. In Myriad I, he simply wrote that Bergy recognized Bergstrom was a case decided under s. 102.

It is not all so straightforward. In Bergy, the court wrote: “In In re Bergstrom we in effect treated the rejection as if it had been made under s. 102, observing in the process that ‘The word ‘new’ in s. 101 is to be construed in accordance with the provisions of s. 102.”’ 427 F.2d 1401. While the quote defining “new” is correct, the CCPA explicitly held both that the pure prostaglandins were “new” in view of the prior art and that the pure compounds were also new as required by s. 101:

“Tested by the conventional evidentiary criteria or ‘conditions for patentability’ relevant to the present factual situation which Congress has expressed in the various provisions of [s.102], appellants are undoubtedly correct, for the  Patent Office has not been able to cite—or supply evidence under—any of those statutory provisions to establish that the claimed subject matter lacks ‘novelty.’”

However, the CCPA did not stop there, stating:

“The question remains whether there is some other, perhaps extra-statutory criteria standing apart from s. 102 for determining whether given subject matter is ‘new’ in the sense Congress has utilized the term in s. 101 or, to put it another way, whether the Bergstrom publication can be used as evidence to support a rejection under s.101 in a manner different and apart from what would have been its normal use to support a rejection under s. 102, had it in fact described the claimed subject matter. The board and the solicitor seem to have taken an affirmative view on those matters… The fundamental error in the board’s position, as we see it, is the analysis and answer given to the sole issue it accurately posed – ‘whether the claimed pure materials are novel as compared with the less pure materials of the reference.’ It seems to us that the answer to that question is self-evident: by definition, pure materials necessarily differ from less pure or impure materials and, if the latter are the only ones existing and available as a standard of reference… perforce the ‘pure’ materials are new with respect to them.”

In both Bergy and Bergstom, the court was emphatic in urging that s. 101 be a very coarse filter for inventions and discoveries. In Bergstrom, the court wrote:

“The existence of a compound as an ingredient of another substance does not negative novelty in a claim to the pure compound, although it may, of course, render the claim unpatentable for lack of invention [now obviousness c. 103].” In Bergy, the court used even stronger language: “[W]hen one has only compliance with s. 101 to consider, the sole question, aside from utility, is whether the invention falls into a named category, not whether it is patentable.” Bergy 596 US at 962. Now look at the broad definition of composition of matter in Chakrabarty, 447 US at 308.

While the question presented in Chakrabarty was framed narrowly – whether the microorganism in question was within the statutory categories of invention enumerated in s. 101– when the Court vacated Bergy, it vacated both the holding that pure cultures of microorganisms are not natural products and that living microorganisms are patentable subject matter, it only resolved the latter question in its holding. Myriad no more than held that “genes and the information they encode are not patent eligible under s. 101 simply because they have been isolated from the surrounding genetic material.” The Patent Office should leave bad enough alone.

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