Subtitle: “Who’s Your Amicus, Baby?” On July 19th, various Blogs reported that the ACLU (Plaintiffs’ attorney in the appeal of the district court’s ruling in the case sensibly abbreviated by Hal Wegner as AMP v PTO) filed a motion in the Federal Circuit seeking to recuse Chief Judge Rader on the basis of allegedly pro-DNA comments he made at a symposium at the International BIO Conference in May. The session was chaired by Jennifer Gordon of Baker Botts, who authored BIO’s amicus brief filed in AMP v. PTO at the district court level. I have read this well-reasoned “law and policy” brief, and it provided an outline for Judge Sweet’s opinion that rejected pretty much every word of it.
More recently, the Federal Circuit Bar Association has raised the visibility of this motion by filing an amicus brief authored by Edward Reines and Amber Rovner of Weil, Gotshal in support of neither party but espousing the standard for recusal based on a judge’s statements at a conference:
“If the Judge’s comments can reasonably be understood as general expressions regarding the law, recusal is not warranted, even if the views expressed are also relevant to particular pending or impending case. Correspondingly, recusal should be considered, based on such comments, only if the objectively reasonable interpretation is that those comments constituted the expression of the judge’s specific views regarding the proper disposition of a particular identifiable pending or impending case, and reflect bias or predisposition (i.e., an unwillingness to consider the case with an open mind.)”
All clear? Let’s try this, from page 9: “Simply put, participation in an organization’s event does not imply adoption of every position taken by the organization as an amicus or otherwise. [Unfortunate cite department]: See generally In re Charges of Judicial Misconduct, 404 F.3d at 694….case-specific conferences are the exception, not the rule, however, and in the absence of such unusual circumstances [judge approved funding for conference which included a ‘Hollywood-style pre-screening of the plaintiffs’ case] a judges attendance at a conference or educational retreat should not lead to disqualification.”
Well, I never saw anything at a BIO conference so flamboyant that could be called “Hollywood-style” but neither was the judge attending a CLE course at a scholarly retreat. This may not be over by a long shot, particularly since the issue on appeal can be summarized in one short sentence (see below).
One Fed. Cir. Judge that the ACLU is not going to try to disqualify is Judge Dyk. In Intervet, Inc. v. Merial Ltd., Appeal No. 2009-1568 (Fed. Cir. 2010), the Judge wrote a concurrence-in-part and a dissent-in-part, to emphasize that the issue of whether or not certain of the claims that had been construed by the court had implicitly condoned that “isolated DNA claims” embraced patentable subject matter. The Judge wrote:
“The question is whether the isolated DNA molecule [apart from its uses] is patentable subject matter. Neither the Supreme Court nor this court has directly decided [this question]. Although we have upheld the validity of several gene patents…none of our cases directly addresses [this question]….I think such patents do in fact raise serious questions of patentable subject matter….allowing the patentability of naturally occurring substances [would] preempt the use by others of substances that should be freely available to the public.”
Please wait one minute, Judge Dyk, the form in which the public uses their DNA (in their chromosomes) remains “freely available to the public.” No one has seriously argued that a patent on an isolated DNA sequence that is part of the human genome would permit the patentee to go up to a passer-by and demand a royalty because he/she is using the gene in an infringing manner. In an analogy that could have been drawn by the ACLU attorneys, who have likened isolating DNA from the genome to picking gold nuggets out of a stream: “The mere fact that such a DNA molecule does not occur in isolated form in nature does not, by itself, answer the question [Who said it did?]. It would be difficult to argue for instance, that one could patent the leaves of a plant merely because the leaves do not occur in nature in their isolated form.” Here is a Judge who has never heard of, or read the lyrics of, “Autumn Leaves.” I sure hope he finds time to read the BIO amicus brief before he “reflect[s] bias or predisposition” – again.
On September 1st, the Office of Patent Legal Administration (I didn’t know there was one) issued 17 pages in the Fed. Reg. (Vol. 75, 53643) updating its obviousness guidelines. (A copy of the guidelines is found at the end of this post.) The Update is mostly a meaty analysis of 22 post-KSR Fed. Cir. decisions, 12 of which are in the pharma/biotech area and nine of which deal with the principles of “structural obviousness.” The Guidelines state that apart from using the TSM test as a rationale “to support an obviousness determination,” the 2007 KSR Guidelines identified six other rationales that can also be used: (1) Combining prior art elements according to known methods to yield predictable results; (2) simple substitution of one known element for another to obtain predictable results; (3) use of a known technique to improve similar devices, methods, or products in the same way; (4) applying a known technique to a known device, method or product ready for improvement to yield predictable results; (5) “obvious to try”; and (6) known work in one field of endeavor may prompt variation of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to POSA.
