Guest post from Tim Bianchi.
The Federal Circuit decided an appeal in an ex parte prosecution for Google last week, which may be of interest to patent prosecutors (In re Google Technology Holdings LLC, Appeal No. 2019-1828, November 13, 2020)).
Google was prosecuting one of its gazillion patent applications and received a final rejection. It appealed the final rejection to the PTAB, but Google didn’t like the Board’s decision, so it appealed that decision to the Fed. Cir. The Federal Circuit decided that Google forfeited its right to certain arguments because they weren’t raised in ex parte prosecution.
The recent decision in C. R. Bard, Inc. v. Angiodynamics Inc., Appeal nos. 2019-1756 and 2019-1934 (Fed. Cir., November 10, 2020) is an example of a bad doctrine, patent eligibility, gone rogue. The panel’s ultimate decision that the claimed invention was not patent ineligible as an abstract idea should have required one paragraph of this opinion, not four pages (!). This opinion conflates the printed matter doctrine with the Mayo/Alice test in a manner that invokes a legal chimera comprising more shock value than logic. Here is claim 1 of Bard’s U.S. Pat. No. 8,475,417:
In “Mystery Dance”, Elvis Costello moans that he’s “tried and I’ve tried, and I’m still mystified” about the “Mystery Dance”, which probably has something to do about romance, but could easily describe the state of the relationship between appeals from the district courts to the Fed. Cir. and appeals to the Fed. Cir. from PTAB decisions. I let Immunex v. Sanofi, Appeal no. 2019-1749, 2019-1777 (Fed. Cir., October 13, 2020) sit on my desk for the last month because it looked to be a simple claim construction decision. Well, it is that, but quite a lot more.
By now, other commentators have posted on this Fed. Cir. decision (Appeal no. 2019 -1133, Sept. 28, 2020)—and found it to be a routine reversal of a district court’s relying on “source limitations” to find claims to a recombinant IFN-B polypeptide not anticipated by prior art disclosing the native polypeptide. The main claim in question [shortened here for readability] of U. S. Patent No.7,588,755 follows: