Consider the Courage of Judge Newman at the Federal Circuit

Judge Pauline Newman of the United States Court of Appeals for the Federal Circuit, October 2015 at the AIPLA annual meeting.

With more dissents than any other Federal Circuit Judge in history,  Judge Pauline Newman is driven by a need to safeguard our national system of innovation.

Judge Newman has argued throughout the years that the Federal Circuit was created to rebuild and renew the patent system to encourage and incentivize industry, which is precisely the purpose both the Carter and Reagan Administrations had in mind when advocating for the creation of the Federal Circuit, which ultimately took form in 1982.

Judge Newman has no qualms about speaking out in dissents when the objective of the Federal Circuit to bring certainty to U.S. patent laws is being hindered, in her view, by the majority, regardless of the complexities or dollar-values at stake in the case. In fact, in one interview she declared, “I have not hesitated to comment when I think that a panel isn’t going in quite [the] appropriate direction. Others have felt that perhaps I haven’t gone in quite the appropriate direction . . . . [A]ll in all it seems to me that it’s quite healthy to present a certain amount of turmoil to practitioners in the short run. But in the long-run I think the law is better for it.” George C. Beighley, Jr., “The Court of Appeals for the Federal Circuit: Has It Fulfilled Congressional Expectations?,” 21 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. 671, 675–76 (2011). Clearly, she is interested in getting the law right for the greater good as she sees it, regardless of the impact her dissent may have on relationships or status quo.

Getting it Right

Not surprisingly, Judge Newman’s dissents are highly regarded and often eventually make their way into black-letter patent law, which is precisely why dissents are written. For example, in Diamond v. Chakrabarty, the Supreme Court laid out three exceptions to Section 101’s patent-eligibility principles: “laws of nature, physical phenomena, and abstract ideas.” 447 U.S. 303, 309 (1980). In interpreting this holding, her concurrence in In re Ferguson challenged the notion that the Machine-or-Transformation test was the only way to measure patent eligibility under Section 101.

“[T]he court disposes of the Ferguson method on the ground that it is an ‘abstract idea,’ although it is definite and concrete and limited, and not at all abstract. The court resolves this dilemma by defining ‘abstract idea’ as anything that does not meet the Bilski machine-or-transformation test. However, the Ferguson marketing method is not an abstraction, even in Bilski terms. The Ferguson method ‘does not pre-empt all uses of a fundamental principle in any field but is limited to a particular use, a specific application. Therefore, it is not drawn to the principle in the abstract’.”

558 F.3d 1359, 1367 (Fed. Cir. 2009) (Newman, J., concurring).

Shortly afterward, in 2010, the Supreme Court rendered the Bilski decision, which aligned with Judge Newman’s In re Ferguson concurrence. When discussing the Patent Act, the Supreme Court stated that it “is unaware of any ‘ordinary, contemporary, common meaning,’ of the definitional terms “process, art or method” that would require these terms to be tied to a machine or to transform an article.” Bilski v. Kappos, 561 U.S. 593, 603 (2010). The Court went on to validate Judge Newman’s view, concluding that the Federal Circuit incorrectly determined that the Supreme Court had endorsed the Machine-or-Transformation test as the exclusive test.

As with Judge Giles Sutherland Rich years ago, the Supreme Court has always seemed to have a high opinion of Judge Newman, which is rather uncharacteristic of the way the Supreme Court has been so dismissive of the Federal Circuit in recent times.

Even well into her nineties, Judge Newman has not stopped in her attempt to show her colleagues the light, arguing in Ariosa Diagnostics, Inc. v. Sequenom, Inc., for a Section 101 patent eligibility standard that would allow for discovery of or new applications of natural phenomena to be patentable where the discovery or new use “is novel and unforeseen, and is of profound public benefit.” 809 F.3d 1282, 1294 (Fed. Cir. 2015) (Newman, J., dissenting). She noted that allowing this would not “preempt further study of this science, nor the development of additional applications. Patenting does, however, facilitate the public benefit of provision of this method through medical diagnostic commerce, rather than remaining a laboratory curiosity.” Her dissent, which encourages patents for inventions that provide substantial public benefit, builds even further upon the Mayo decision, which states that “[i]f a law of nature is not patentable, then neither is a process reciting a law of nature, unless that process has additional features that provide practical assurance that the process is more than a drafting effort designed to monopolize the law of nature itself.” Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 77 (2012). Indeed, Judge Newman’s dissent in Ariosa would be a way forward for the Federal Circuit and would be in keeping with the admonition from the Supreme Court that 101 not be used to swallow all of patent law.

More recently, Judge Newman dissented in the rehearing request in Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC. At issue in the case was a medical diagnostic with substantial public benefit, and one that all 12 of the Federal Circuit judges agreed should be patent eligible. Unfortunately, seven of the judges felt compelled by Mayo to find the claims patent ineligible. Judge Newman dissented, correctly explaining that the Supreme Court “did not hold that methods of diagnosis are subject to unique patent-eligibility rules.” She would go on to state what all honest practitioners know: The Federal Circuit has “mistakenly enlarged the [Supreme] Court’s holding, in substance and in application.”

The Science Behind Bad Decisions

Besides her record number of dissents and their law-making trend, why should we pay attention to her input as a scientist in the realm of patent law? Simply put, Judge Newman rightly believes that there is a misunderstanding between legal scholars and scientists at the most fundamental level. She has stated that “[t]oday we cannot afford this gap, for scientific and technologic issues underlie large segments of modern jurisprudence, as well as of our economy.” Pauline Newman, The Federal Circuit: Judicial Stability or Judicial Activism?, 42 AM. U. L. REV. 683, 686 (1993). For instance, in Kao Corp. v. Unilever U.S., Inc., she wrote that “the panel majority has misunderstood the chemistry, in holding that neutralization of 14.5% of the maleic acid groups means that the totality is a salt and not an acid. This flawed science led to an incorrect conclusion of law . . . . [o]f course a reaction between an acid and a base produces a salt. But a reaction between 14.5% of the acid and matching amount of base produces 14.5% salt, leaving 85.5% unreacted acid. From my colleagues’ inaccurate science, and the conclusion drawn therefrom, I must, respectfully, dissent.” 441 F.3d 963, 976 (Fed. Cir. 2006) (Newman, J., concurring in part, dissenting in part).

Judge Newman could teach the Supreme Court a thing or two, no doubt, about basic scientific principles. It is difficult to believe that the Supreme Court, the final arbiter of patent law in America, has ruled that a pH of 6 and a pH of 5 are equivalent. See Warner Jenkinson. That is scientifically incorrect. So, too, is the statement that manganese and magnesium are equivalents. See Graver Tank.

Not Enough Newman

Judge Pauline Newman has been and continues to be the greatest ally to inventors with respect to the ignorance of the CAFC, district courts, and at times even the Supreme Court. She echoes the voices of inventors in all industries and is ultimately one of the greatest champions of patent law. Her dissents are prolific for a reason, so hopefully this great nation continues to listen and learn.

When one contemplates whether it is time to abolish the Federal Circuit, that question is asked because too few of the judges have the courage of Judge Newman. Certainly, there are several others, but as the vote in Athena Diagnostics shows, not enough. And if all of the judges can know what the right decision is, and they all know the Supreme Court has admonished them not to expansively read Mayo and Alice, what are they doing?

Judge Newman and the Athena Diagnostics dissenters are too few in number.