Patent Law

Rogue

By Gary Odom and Jordan Kuhn

Hal Wegner:

In a procedurally bold opinion in In re Comiskey, __ F.3d __ (Fed. Cir. 2009)(Dyk, J.), a panel has repudiated controlling precedent of the court and indeed 180 years of practice since the Patent Act of 1839 that had established a strict proscription against a judicial reviewing body of Patent Office decisions playing de novo "examiner". Instead, the reviewing court has had a limited statutory role that focused upon the rejection that had been made by the Office.

In a 2007 panel opinion, three members of the court in an unprecedented action "rejected" claims as lacking patent-eligibility under 35 USC § 101 where the issue was never raised below; instead, the sole basis for the rejection below had been on obviousness grounds under 35 USC § 103(a).

A Comiskey en banc rehearing failed to garner the necessary seven votes from the nine judges. Five voted for en banc review (Newman, Mayer, Rader, Bryson, Moore). Lourie thought the sua sponte 101 unwise, but water under the bridge, and so didn't think "we need to unwind the panel decision." The three on the original Comiskey panel, Chief Judge Michel, along with Dyk and Prost, voted against rehearing, content with what they had done.

Wegner:

One hundred eighty years ago the Patent Act of 1839 established the ground rules for judicial review of Patent Office denials of patentability. A strict standard was established that the reviewing court should only review the decision below and never on a de novo basis impose a new ground to deny patentability.

Of course, new grounds to deny patentability do come up from time to time, whether before the Examiner or during an appeal. But, in the latter situation the reviewing court can choose to remand proceedings for de novo Patent Office consideration as happens from time to time and as exemplified by In re Hays, 210 Fed. Appx. 995 (Fed. Cir. 2006)(Moore, J.)(quoting In re Gould, 673 F.2d 1385, 1387 (CCPA 1982)).

As explained by Judge Moore, the court's "task is to review a PTO decision, not to direct its examination. [35 USC §] 144 of the Patent Act states that our court 'shall review the decision ... on the record before the Patent and Trademark Office.' Our court is now apparently doing more than reviewing on the record; it is directing the examination, failing to review the decision the PTO has rendered and telling it what alternative possible ground of rejection should be evaluated. With all due respect, I do not believe we have a roving commission to manage the examination process."

The January 13, 2009, denial of en banc reconsideration of this procedural departure from a 180 year old statutory scheme represents a bold and unprecedented expansion of appellate jurisdiction.

The procedural handling of this case is a gross departure from more than a full century of practice dating back to a series of appellate tribunals stemming from mid-nineteenth century practice.

[T]he Federal Circuit should not play the role of Patent Examiner.

Wegner argues that Comiskey "has no precedential value unless and until it is adopted by the en banc court."

Full post as published by The Patent Prospector on January 26, 2009 (boomark / email).