Posts Tagged: "Judge Moore"

The basic argument in Myriad is whether DNA that is isolated from the chromosomes is statutory subject matter, or whether it is a product of nature. The stakes are high in the Myriad case, since the isolated DNA claimed by Myriad encodes mutated BRCA1 and BRCA2 proteins that can be used to detect breast cancer. Myriad has the only test offered in the United States because of its aggressive enforcement of its several patents. The numerous plaintiffs in the case speak to the core of the patent versus non-patent debate: whether patents actually “promote the progress of science and useful arts” as required in the U.S. Constitution. Myriad and other companies heavily reliant on biotechnology patents, would support the argument that strong patent enforcement allows companies which have invested millions or billions in assay or drug development for clinical use to recoup their investment and provide a return for investors. The plaintiffs would argue that such patents not only hinder the useful arts, but also endanger lives and/or drives up the cost of providing potentially life-saving testing and treatment.

That there was a majority (and a dissenting) opinion in the remand of Classen wasn’t surprising. But that there was yet a third “additional views” opinion would likely not have been predicted by anyone. And it is that “additional views” opinion, along with the majority and dissenting opinions, that will certainly generate a “firestorm” through the Federal Circuit, and which may eventually reach the Supreme Court. The judicial donnybrook on the question of what the standard is (or should be) for patent-eligibility under 35 U.S.C. §101 is about to begin in earnest.

After much anticipation, the United States Court of Appeals for the Federal Circuit earlier today issued a decision in Association for Molecular Pathology v. Myriad Genetics. The decision on first glance will seem to be a split decision, particularly by Federal Circuit standards. The majority opinion was written by Judge Lourie, Judge Moore wrote a concurring opinion and Judge Bryson concurred in part and dissented in part. Having said that, the outcome largely seems to be what was predicted by the patent community. On the major substantive issue — are isolated DNA molecules patent eligible subject matter — the Federal Circuit reversed the decision of the district court and ruled that isolated DNA molecules do constituted patent eligible subject matter. The Federal Circuit also ruled that methods relating to the screening for potential cancer therapeutics are, likewise, patent eligible subject matter. All three Judges also found the “comparing” and “analyzing” claims to be ineligible for patent protection because they were not transformative, and thus were merely abstract mental steps.

The ACLU lead plaintiffs have a real predicament relative to standing. It does not sound as if the Federal Circuit believed any single plaintiff could satisfy both prongs required to bring a Declaratory Judgment Action, and rather were trying to say we have some plaintiffs with first prong evidence and some with second prong evidence. Simply put, that dog doesn’t hunt, at least not under current law relative to standing. Thus, there seems a real chance that the entire case could be thrown out because no plaintiff has standing.

In this second installment of my interview with Don Dunner, the dean of CAFC appellate advocates, we talk about which judges on the Federal Circuit ask the most difficult questions, who he thinks are capable candidates for future federal circuit vacancies, why the Federal Circuit was created as a specialty court, continued hostility toward a purely specialty court and Congressman Issa’s attempt to create a pseudo-specialty trial court for patent issues. We also touch upon the familiar fun questions and learn that one of Dunner’s favorite movies is a well known courtroom comedy.

I wonder why we are discussing the definition of “use” under § 271(a) at all. It would seem that the Federal Circuit is potentially broadening the definition of “use” under § 271(a) in a manner that expands direct infringement to start to include those types of things that normally would have been infringement under the doctrine of equivalents. Of course, the Supreme Court in Festo together with the Federal Circuit in Honeywell International Inc. v. Hamilton Sundstrand Corporation have eviscerated the doctrine of equivalents to the point of its non-existence. Perhaps Centillion v. Qwest, NTP and other cases yet to come will breathe new life into the theory under the guise of a direct infringement “use” of a system under § 271(a).

While the Federal Circuit ruled that Microsoft did infringe and the patent claim in question (claim 19 of U.S. Patent No. 5,490,216) was valid, it was Microsoft who was the big winner here. The damages awarded by the jury to Uniloc were $388 million, which was set aside by the district court, a ruling that the Federal Circuit affirmed. The Federal Circuit also agreed there was no willful infringement. So while Uniloc has won at least something from Microsoft as a result of its infringement of a valid patent claim, it seems like it will be far less than the $388 million, particularly given the Federal Circuit threw out the 25 percent rule and said the entire market value rule was not applicable in this case.

Judge Kathleen O’Malley was confirmed by the United States Senate earlier today. O’Malley’s confirmation, along with the confirmation of 18 others in recent days, is the result of a deal between Senate Democrats and Republicans that ensured passage of 19 nominations in exchange for an agreement not to move forward with other controversial nominations, including the hotly challenged nomination of Goodwin Lui, who is Associate Dean and Professor of Law at University of California Berkeley School of Law.

On Tuesday, November 9, 2010, the United States Court of Appeals for the Federal Circuit heard oral arguments in TiVo, Inc. v. EchoStar Corp. The case pits TiVo versus Dish, and any ruling from the Federal Circuit will necessarily define the extent to which a district court judge can rely on contempt proceedings to enforce an injunction rather than simply order a full blown new trial. In process the en banc oral argument in this case at the Federal Circuit did not substantially differ from the oral argument held at the Supreme Court the day earlier in the Costco copyright case, where the Supreme Court was struggling with the meaning of the phrase “lawfully made under this Title.” There are two phrases that will be at the center of resolving the TiVo case. The first is “fair ground of doubt,” and the second is “merely colorably different.”

Allvoice sought a remand of the Holt application to the examiner for further prosecution or to issue an order requiring AVRS to show cause why judgment should not be entered against the Holt application. Without requiring AVRS to even file a response, the Federal Circuit, per Chief Judge Rader, explained that there was simply no justification for the issuance of a writ of mandamus because there was no showing that an ordinary appeal wouldn’t suffice after the PTO finally disposed of the interference proceeding. Of course, that doesn’t take into consideration the need for Allvoice to quite title to proceed with its infringement action against Microsoft. The plot thickens!

Nothing in the appealed issues in Pressure Products (claim construction, denial of motion for JMOL, leave to amend answer) even remotely hints at or suggests the basis for this five judge panel. In fact, Pressure Products has all the markings of a fairly ordinary, garden variety patent infringement case. So why not the standard three judge panel? Not a word of explanation.

On February 17, 2010, the United States Court of Appeals for the Federal Circuit issued an order in Hyatt v. Kappos vacating the previous decision issued by a 3 judge panel on August 11, 2009, when the case was then styled Hyatt v. Doll. Hyatt’s petition for rehearing was denied. After polling the judges of the Federal Circuit, however, rehearing en banc was granted on whether 35 USC 145 requires de novo review and the submission of new evidence.

In a decision that is simply painful to read, the United States Court of Appeals for the Federal Circuit yesterday decided in Autogenomics v. Oxford Gene Technology that a foreign patent owner cannot be made a defendant to a lawsuit seeking a declaratory judgment of invalidity, unenforceability and noninfringement.  According to the majority opinion, Oxford is a British biotechnology company…