Archive for the ‘Federal Court’ Category

Rader Steps Down – Prost Steps Up

Friday, May 23rd, 2014

Judge Randall Rader will step down as Chief Judge of the Fed. Cir. on May 30th, and Judge Sharon Prost will replace him. Judge Rader will remain active as a “Circuit Court Judge.”

As Chief Judge, Rader bought sheer intelligence and coherence to a number of difficult decisions. Although I have criticized his Bilski dissent – which bought the cult of the abstract idea to prominence, he also was among  the last of the defenders of a limited role for the written description requirement – a  legal battle eventually lost (See his concurrence in Novozyme v. DuPont Nutrition this year).

I guess I would have hoped for a Chief Justice with some scientific background – Judge Prost is an expert on Labor Relations, but I certainly wish her well as she prepares to lead the court into uncharted waters, with the Supreme Court poised to be the Neptune to her Ulysses.

Stories I Missed In 2013

Thursday, January 16th, 2014

Some IP Stories Do Not Have Much “It” Factor.  Just like there used to be, and I guess still are, “It Girls” in showbiz and fashion, there are “It Issues” in IP law. I know these decisions/controversies are very important to the parties involved, but I just couldn’t get enthusiastic about these stories. However, since you may wish to investigate them further, I thought I would send out a short list.

1.  The legality of Michelle Lee’s appointment as Acting Deputy Director of the PTO (or whatever her title will turn out to be). More interesting would be the story of why Terry Rea was not offered the position (if she even wanted it).

2.  What “and/or” means in a patent claim. Although the PTO usually does not object to its use, it is probably better to write something like “at least one of A or B”, or “A or B or a combination thereof”.

3.  In case you have not noticed, prosecution history estoppel can limit the scope of a design patent. ‘Nuff said.

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Bosch, Ultramercial, Commil, Fresenius: All-Star Break

Tuesday, July 23rd, 2013

A guest post from Ron Schutz of Robins, Kaplan, Miller & Ciresi

The Federal Circuit goes into the symbolic half-way point of summer leading the league with a series of homerun opinions. To keep the games back gap on updates from widening, consider the following take on a Midsummer Classic.

Bosch v. Pylon In Bosch, the Federal Circuit considered en banc two questions regarding the extent of its appellate jurisdiction under 28 U.S.C. § 1292(c)(2). That statute authorizes an interlocutory appeal from a judgment in a patent infringement judgment action that is “final except for an accounting.” Sua sponte, the court asked whether § 1292(c)(2) confers jurisdiction for an appeal of patent infringement liability before a trial on damages has occurred and whether that jurisdiction exists when willfulness issues remain undecided.

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Supreme Court Remands In Myriad Appeal

Monday, March 26th, 2012

Today, as predicted by many commentators, the Supreme Court set aside the ruling by the Fed. Cir. that claims to isolated DNA sequences that are the BRCA 1 or 2 gene, or fragments thereof, are patentable subject matter. The Supreme Court ordered the Fed. Cir. to reconsider its 2-1 panel decision in view of its recent opinion in Prometheus that assays to optimizing drug efficacy based on measuring metabolite levels were no more than attempts to patent natural phenomena.

It is not entirely clear what guidance the Prometheus opinion provides for the appealed DNA claims in the Myriad decision. After all, the claims closest to the invalidated Prometheus claims were the claims to a method of locating mutations in a subject’s BRCA DNA by comparing it to a benchmark, or wild-type BRCA sequence. In the Supreme Court’s opinion, Justice Breyer contrasted the claims at issue with claims to a new compound:

 “Unlike, say, a typical patent on a new drug or a new way of using an existing drug, the [Promethus claims] do not confine their reach to particular applications of those  [natural laws].”

To invalidate claims to isolated DNA sequences, the Fed. Cir. and the Supreme Court would have to specifically interpret Chakrabarty to require that, to be “new” under section 101, a compound must exhibit a utility not possessed by the compound pre-isolation, even if the compound pre-isolation is structurally different than the compound post-isolation.  If the Fed. Cir. were simply to rely on In re Bergy, as I and others have suggested in previous posts on Myriad, it is difficult to imagine the Fed. Cir. reversing itself on this issue.

Even if gold in a streambed is not different from gold in a Krugerrand, isolated DNA in a “test tube”  is different from a DNA sequence that is one part of chromosomal DNA. However, the Supreme Court just added a “something more” requirement to a claim to optimizing a drug regimen, and the Court may be poised to put a “something more” requirement on a structurally novel chemical compound. I just hope that if the judges or justices go down this path, and hold that isolated DNA is a “natural product,”  they give us some hint of how to meet the “something more” requirement, going forward. They might also consider what “going forward” means.