Mr. Guttag has over 38 years of corporate and private intellectual property law experience on patent, trademark, copyright, trade secret and unfair competition matters, computer and Internet law, including patent application drafting, prosecution, and patentability studies; infringement and validity studies; international patent prosecution; patent and know-how licensing; consulting, confidentiality, clinical study and research agreements; trademark searches and opinions; trademark registration and prosecution; trademark freedom-to-use studies and trademark litigation and dispute resolution.
The Federal Circuit has been reversed so often by the Supreme Court it seems that at least some of the Judges on the Court have simply decided the take away message is the Supreme Court does not like patents. When faced with a decision about whether to find a patent valid or invalid they simply err on the side of finding the patent invalid, which seems safer and in keeping with what the Supreme Court would do… Such a level of subjectivity leads to chaos, and is driving innovation and innovators to Europe and China. Indeed, there are a growing number of software related innovations that cannot receive patents in the U.S., but which are patented in Europe and China. A decade ago we would have written the exact opposite.
The chaos created by this forum shopping was exacerbated by differing views of what in these rulings by SCOTUS was holding, and what was simply dicta. Together with the enactment of Bayh-Dole (which sought to alleviate the prior dismal record of commercialization of federally-sponsored research where the federal government retained the patent rights), Congress created the United States Court of Appeals for the Federal Circuit as the successor to the CCPA, as well as to supplant all other circuit courts as the arbiter of patent law jurisprudence, effective as of 1980. Creation of the Federal Circuit was also at least an implicit (and more likely, explicit) warning to SCOTUS to tread carefully on patent law jurisprudence and to let the Federal Circuit do the heavy lifting without significant interference or meddling from the highest court in the land. For almost two decades, SCOTUS seemed to heed that warning, rarely interfering with Federal Circuit precedent… But beginning with the eBay case in 2006, SCOTUS started an almost relentless series of rulings which meddle with, chastise, and overturn longstanding Federal Circuit precedent, often using the rubric that the Federal Circuit’s ruling/precedent was “too rigid,” or “too inflexible.”
What makes SCOTUS’s assertions in patent law jurisprudence that there are these “exceptions” or additional “requirements” particularly annoying to many of us in the patent bar is that patent law is essentially statutory. In other words, there should be no “federal common law of patents” that allows SCOTUS (or any other court for that matter) to make “exceptions” to or make additional “requirements” for what is already expressly written in the patent statutes. Indeed, in other areas of federal law, SCOTUS has made it abundantly clear that “federal common law” doesn’t exist. The most famous example is Erie v. Tompkins where SCOTUS overturned its prior view of a “federal common law” applicable in cases involving diversity jurisdiction. So we in the patent bar may rightly ask: why does SCOTUS believe it can create what is, in essence, a “federal common law of patents” to supplant or modify the existing patent statutes?
Unfortunately, Lourie’s opinion in Jazz Pharmaceuticals (equally mindless in my opinion) simply latches onto Prost’s words in Suffolk Technologies that a “printed publication need not be easily searchable after publication if it was sufficiently disseminated at the time of it publication” to reject Jazz Pharmaceuticals’ entirely valid point that there was no substantial evidence provided to PTAB on the “searchability or indexing” of these ACA materials in saying: “neither indexing nor searchability was required.” That might be true if these ACA materials had actually been disseminated (distributed) to the relevant audience. But “squint as I may,” I see nothing in the factual record described by Lourie in his opinion that says (at least clearly to me) that anyone in the relevant audience had actually received these ACA materials (or had at least had these ACA materials given/distributed to them) prior to the critical December 17, 2001 date.