The Prior Art

Federal Circuit Hears Arguments in Myriad Case

Oral arguments were under way at the U.S. Court of Appeals for the Federal Circuit Monday morning in the closely watched Myriad Genetics appeal (Association for Molecular Pathology, et al. v. USPTO, et al.), with a panel of three Federal Circuit Judges (Lourie, Bryson, and Moore) weighing whether human genes qualify as patentable subject matter.

Ruling in a case brought by several doctors' groups, the ACLU, and the Public Patent Foundation, New York federal district court Judge Robert Sweet last year struck down Myriad's patents on two genes related to breast cancer, holding that they merely covered isolated DNA from the natural world and thus were not eligible for patent production under section 101 of the Patent Act.

In his 152-page opinion [ Download Myriad Opinion], Sweet wrote: "It is concluded that DNA's existence in an 'isolated' form alters neither this fundamental quality of DNA as it exists in the body nor the information it encodes. Therefore, the patents at issue directed to 'isolated DNA' containing sequences found in nature are unsustainable as a matter of law and are deemed unpatentable subject matter."

As The American Lawyer reported in February, acting Solicitor General Neal Kaytal was to argue for the appellees along with attorneys for the ACLU and the Public Patent Foundation, marking the first time that a Solicitor General has argued at the Federal Circuit.

In a case with implications for the entire biotechnology industry, Kaytal will attempt to explain why the government now thinks that genes should not be patentable, despite the fact that the USPTO has historically disagreed and has been issuing patents on isolated DNA for more than 30 years.

For a good background on the issues likely to be raised at oral argument, check out Joe Mullin's previous  coverage of the district court's ruling and Andrew Cohen's discussion of the case at The Altantic. For the even more ambitious, an audio recording of the argument will be made available on the Federal Circuit's website later today.

 

 

 

 

Citing Possible Bias, ACLU Asks Rader to Recuse Himself in Myriad Case

With the U.S. Court of Appeals for the Federal Circuit set to consider a landmark case over the validity of human gene patents, attorneys for the plaintiffs in the suit are asking the court's chief judge to recuse himself from the matter—before the panel that will hear it has even been selected.

In a motion filed quietly in late June, Christopher Hansen of the American Civil Liberties Union and Daniel Ravicher claim that remarks made by Federal Circuit Chief Judge Randall Rader at a biotechnology industry event show he may have a biased view of the case in question, Association of Molecular Pathology et. al. v. U.S. Patent and Trademark Office et. al, and should not be one of the three judges to decide the appeal.

Questioning Rader's objectivity is an unusual move that underscores just how high the stakes are in the case at issue, in which several doctors' groups have joined the ACLU and PubPat in seeking to invalidate patents on two genes related to breast cancer that are owned by Utah-based Myriad Genetics--and, more broadly, to challenge the legality of the thousands of genetic patents already in existence.

Chief Justice Roberts' recent comment on the Federal Circuit

IPLB.com published my article on the certiorari grant in the Bilski case on Monday. Since I was looking through oral arguments for hints about what justices might think about the state of the patent system, it makes sense to include this as well. It doesn't say anything about patents per se, but shows what Chief Justice Roberts might think of the top patent court.

Carlsbad Tech., Inc. v. HIF Bio, Inc. involved a patented invention, but the issue before the Supreme Court was not a patent issue; it involved federal vs. state jurisdiction. From the oral arguments held on February 24:

Mr. Rhodes: I can't suggest what the Court might finally decide other than to say that -- that, again, the circuit courts of appeal have uniformly applied this. They seem to be --

Chief Justice Roberts: Well, they don't have a choice, right? They can't say, I don't like the Supreme Court rule so I'm not going to apply it, other than the Federal Circuit.

(Laughter in the court.)

This rebuke seems to indicate that as Roberts sees it, the Federal Circuit has a habit of blowing off Supreme Court precedent. That little aside could have deeper meaning in light of the court's decision to take up Bilski.

This was initially reported on Hal Wegner's patent news list shortly after argument. Argument transcripts in the case can be viewed at oyez.org.

 

Notes from the Federal Circuit Bench & Bar

Ed Reines was out on the hotel deck looking like a proud father Friday afternoon as the guests mingled at the first-ever Federal Circuit Bar Association Bench & Bar Conference focused on Silicon Valley. We're in Monterey, about an hour away from the valley, and close enough to the fires in Big Sur that a faint smell of smoke hangs in the air.

On the star-heavy guest list were several district judges who handle lots of patent cases, chief patent lawyers from valley heavyweights like Apple, Google, and Cisco, and several Federal Circuit judges, including Chief Judge Paul Michel.

"A lot of conferences are pulp, but we strive to make this a conference for the sophisticated,” said Reines, a Weil, Gotshal patent litigator and current FCBA president. The conference represented a “coming of age of the IP bar nationally."

The Federal Circuit and the Patent Bar

Maybe lawyers were intimidated by the presence of so many judges, but the Thursday morning panels struck me as a bit quiescent, though there was a brief back-and-forth about software patents that I noted to my colleague at The Recorder.

But today, three Federal Circuit judges—Chief Judge Paul Michel, Judge Randall Rader and Judge Richard Linn—were provocative, engaging and at times funny as they spoke to an audience of more than 100 patent lawyers.

Sitting on the nation’s top patent court sounds a bit like reading a series of never-ending homework assignments that are… well, let’s say not always that fun. But in some ways, we learned, it’s a life of excess. Here are a few notes on what the appellate judges had to say that practitioners should find interesting.

Too Many Words

“We have so much to read,” said Chief Judge Paul Michel. Not that he’s complaining; every day at the Federal Circuit is “fun, interesting and worthwhile.” But oh, those appeal briefs… often, they’re “full of obscure, super-complicated arguments that aren’t necessary… I’m aghast at how totally unreadable 80 percent of it is. If you gave it to a high school English teacher they would just mark it up with a red pen.”

Judge Richard Linn agreed; the briefs are long. “Time and time again we get to the end of briefs and we see the word count and it’s 13,964.” (Briefs at the Federal Circuit have a limit of 14,000 words, so that old college trick of changing your spacing doesn't work.)

Too Many Arguments

“To win you only have to find one reversible error,” pointed out Judge Randall Rader. “If you have 10 reversible errors [in your brief], maybe you’re not that confident in one. You’re betraying some lack of confidence… you have to think of how your own actions betray the weakness of your positions.”

Too Much Claim Construction

Judges who resist construing massive numbers of claims should be reassured that the Federal Circuit seemed ready to support them if they impose limitations. (Northern California has new patent rules that urge the parties to agree on the 10 most important claims at issue in a case.)

"The idea that plain and simple English words routinely need restatement in [claim] construction” isn't accurate, said Chief Judge Michel. Often the claims construed don’t end up being that important in deciding the case. ("not case dispositive," as the lawyers say.)

Too Much Spin

“Overstatement and spin in my book are not the hallmark of good advocacy,” said Chief Judge Michel. When he reads a brief, he sometimes wonders, “Is this really what the expert witness said, or is this a spin version of what the expert witness said?”

He continued: “It’s the plague of our circumstance that most briefs are not really trustworthy. And they could be and they should be. I can't emphasize enough the importance of candor. We have to be fair and you have to be accurate... Fear is what’s poisoning the well. Fear that if I’m not super-aggressive, the client will go to a firm that is super-aggressive… But fear is something we all have to live with.”

He concluded that the patent bar should “resist the fear factor, and express yourself with complete candor and accuracy.”

Too Much... Wikipedia?

There was some discussion about the use of outside technical experts, sometimes used by trial courts in patent cases. Both Chief Judge Michel and Judge Linn said they don’t rely on such experts when deciding cases.

“In terms of going beyond the record, I just don’t do it,” said Chief Judge Michel. “I just don’t depend on anything beyond what lawyers say and what trial court has to say… I don’t go on the Internet to learn about the technology. I just read the briefs.”

“That’s reassuring,” said moderator Joseph Re, a partner at Knobbe Martens in Orange County. “When I was a law clerk there were no computers. It made it a lot easier to not go on the Internet.” [crowd laughs]

“Did you have hair then?” joked Judge Rader.

“This is what patent law does!” said Re, stroking his head.

“Well, I’m an English major,” said Judge Rader, running his hand through his own (movie-star-quality) hair.

“If you’re an English major,  don’t you get tempted by Wikipedia?” asked Re.

“Yes, I do,” said Judge Rader with a smile. 

Next up: Google patent counsel Michelle Lee on last year's explosion in litigation.