Consider the Courage of Judge Newman at the Federal Circuit

By Gene Quinn & Nancy Braman
July 16, 2019

“Judge Pauline Newman has been and continues to be the greatest ally to inventors with respect to [calling out] the ignorance of the CAFC, district courts, and at times even the Supreme Court.”

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

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.

[[Advertisement]]

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.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Gene Quinn

Nancy Braman is a freelance legal researcher for IPWatchdog. She is also a U.S. Registered Patent Agent and a 2L at the University of New Hampshire Franklin Pierce School of Law, where she serves as the Communications Director of the UNH Patent Law Forum. Her research background in Molecular and Microbiology brings her to the realm of patent law, and in her spare time, she also works as an Alaska commercial sockeye fisherman.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 10 Comments comments. Join the discussion.

  1. Pro Say July 16, 2019 2:16 pm

    How do I spell jurisprudence courage?

    Two words: Pauline Newman.

    Thank you Judge Newman.

    Thank you.

  2. Joachim Martillo July 17, 2019 6:31 am

    By means of her silence, Judge Newman did me a big service in RealVirt v. Matal which affirmed the DC dismissal for lack of standing in the 35 U.S. Code §?145 proceeding.

    Because the CAFC panel, in which Newman took part, affirmed without opinion under Fed. Cir. R. 36 I am able to proceed to quiet title to the ‘161 patent application in Commonwealth Appellate Court.

    It will probably take another few months, but soon I should be able to reply once again to the First Office Action, to which I was unable reply in 1993, and this time I will petition for revival of an unavoidably abandoned pre-GATT patent application.

    I myself have no interest in the ‘161 Application, but some crooked government officials operating out of the USPTO pulled a bait-and-switch con-scam in the context of SAWS on an erstwhile business partner, his brother, and my mother.

    I could probably live with the con-scam against the first two, but ripping off my mother has consequences. After a multiyear private investigation I have identified those responsible for the con-scam.

    For details of the ongoing Commonwealth Appellate action, see Quieting Title to a Patent Application: Appellate Proceeding

  3. Paul Cole July 17, 2019 6:51 am

    At the 2018 AIPLA Annual Meeting I had the privilege of meeting Judge Newman and of explaining to her that a Pauline Newman Preservation Society is being formed with the objective of enabling her to remain in full-time practice writing her insightful opinions at least until she reaches the age of John McCain’s mother (who attended his funeral at the age of 105). Her reply was that she was already a good part of the way there!

    More seriously, her outstanding abilities are the result both of a PhD level scientific background and also of many years experience as a patent attorney, she having served as director of the Patent, Trademark and Licensing Department of FMC Corp. for some 15 years. It is regrettable that her outstanding skill and knowledge, both technical and legal, does not receive greater respect from the other CAFC judges.

  4. Night Writer July 17, 2019 8:08 am

    The sad part of this is that Newman, although an excellent judge, is really just what the norm should be on the CAFC. Instead of competent scientists with 10+ years of patent practice being appointed to the CAFC, we’ve had a string of judges appointed that are not qualified to serve on the CAFC. One even said that he knew nothing about patent law or science in his confirmation hearing.

    The best thing that Trump could do is dissolve the CAFC and then reform it the next day and appoint only people like Newman. Make it a requirement that the person be at least qualified to take the patent bar examination and to be have practiced patent law for at least 10 years outside of government.

    The government attorneys tend to be abominations who adopt the thought processes of whichever government agency they come from. Typically either the PTO or DOJ.

  5. Ted July 17, 2019 10:18 am

    Inspiring read about an icon of our patent system. Hopefully the Court will end this infighting against the CFAC and let them utilize their expertise in the sciences so that everyone can get back to work and innovation.

  6. ghostndragon July 17, 2019 10:55 am

    Judge Newman is a gem in practice and in person. But she shouldn’t be so rare as she is. While I know she was a lawyer (among many other things) before she was a judge, she was also a Ph.D. scientist before she was a lawyer. Heck, we would do better as a nation if there were more scientists, especially well-educated scientists, than lawyers in a LOT of positions. Like in Congress. Sadly, most of the judges on the CAFC aren’t even qualified to be patent agents(maybe a 3rd of them?), let alone make judgements on patent law.

    For those of you with the fantasy that Trump has either the wherewithal or the desire to do anything that would place qualified people in positions of power, precedent would indicate otherwise. So…this is what we have, and the only way around it right now is something that looks a little less political than dissolution of a court or impeachment of Federal judges. New law. Let’s hope our congresscritters can figure that part out.

  7. Joachim Martillo July 17, 2019 7:18 pm

    The CAFC is the appellate court for a strange assortment of tribunals.

    Article I tribunals:
    United States Court of Federal Claims
    United States Court of Appeals for Veterans Claims
    United States Trademark Trial and Appeal Board
    United States Patent Trial and Appeal Board (formerly known as the United States Board of Patent Appeals and Interferences)
    Boards of contract appeals (for Government contract disputes pursuant to the Contract Disputes Act of 1978):
    Armed Services Board of Contract Appeals
    Civilian Board of Contract Appeals
    Postal Service Board of Contract Appeals
    United States Merit Systems Protection Board (federal employment and employment benefits)
    United States International Trade Commission
    Article III tribunals:
    United States Court of International Trade
    United States district courts relating to:
    Patents, including appeals arising from an action against the Commissioner of Patents and Trademarks under 35 U.S.C. § 145
    The Little Tucker Act, 28 U.S.C. § 1346
    Section 211 of the Economic Stabilization Act of 1970;
    Section 5 of the Emergency Petroleum Allocation Act of 1973;
    Section 523 of the Energy Policy and Conservation Act of 1975; and
    Section 506(c) of the Natural Gas Policy Act of 1978
    Congressional Office of Compliance

    Because of its exclusive jurisdiction in appeals related to patent law, probably judges appointed to the CAFC should have in-depth experience in patent law.

  8. Night Writer July 18, 2019 9:32 am

    @7 Joachim Martillo

    Patents make up the majority of their work.

  9. Anon July 18, 2019 2:26 pm

    A quick check of the listed CAFC opinions for this calendar year:

    446 total cases listed

    156 35% Patent Office
    125 28% District Court
    55 12% Court of Federal Claims
    41 9% Merit System Protection Board
    31 7% Court of Appeals Veterans Claims
    23 5% Court of International Trade
    7 2% International Trade Commission
    4 1% (Civilian) Board of Contract Appeals
    3 1% Office of Compliance Board of Directors
    1 0% Department of Veteran Affairs

    Or combining the district court cases with patent office cases (and could even go further and add in the international trade cases):

    281 63% Patent Office/District Court
    55 12% Court of Federal Claims
    41 9% Merit System Protection Board
    31 7% Court of Appeals Veterans Claims
    23 5% Court of International Trade
    7 2% International Trade Commission
    4 1% (Civilian) Board of Contract Appeals
    3 1% Office of Compliance Board of Directors
    1 0% Department of Veteran Affairs

  10. B July 19, 2019 11:09 pm

    Read Newman’s opinion in In re Bhagat, then tell me how wonderful she is.

Post a Comment

Respectfully add to the discussion.

Name *
Email *
Website