Supreme Court Patent Cases: Malpractice, Obviousness, and Venue

by Dennis Crouch

The Supreme Court will begin granting and denying petitions in early October.  Meanwhile, several new petitions are now on file.  Last week I wrote about the TC Heartland case as a mechanism for limiting venue. Without any good reason, the Federal Circuit overruled a 1957 Supreme Court case that had strictly limited patent venue as spelled out in the patent venue statute 1400(b).  See VE Holdings (explaining its overruling of Fourco Glass). A result of VE Holdings is the expansive venue availability that facilitated the rise of E.D. Texas as the most popular patent venue. TC Heartland simply asks the Supreme Court reassert its Fourco holding – something that could almost be done with a one-line opinion: “REVERSED. See Fourco Glass Co. v. Transmirra Products Corp., 353 U.S. 222 (1957).”  The best arguments for the Federal Circuit’s approach are (1) the reasoning of Fourco itself is a bit dodgy; and (2) VE Holdings is well settled doctrine (decided 26 years ago) and Congress has revised the statutory provisions several times without amending.  As a side note, several members of Congress have suggested they will act legislatively if SCOTUS fails to act.

Two new petitions (Grunenthal v. Teva and Purdue v. Epic) stem from the same Federal Circuit OxyContin case and focus on anticipation and obviousness respectively.  Grunenthal v. Teva questions how ‘inherently’ operates for anticipation purposes.   Purdue suggests that – despite the final sentence of Section 103, that the actual circumstances of the invention should be available to help prove non-obviousness (but still not be available to prove obviousness).   Another new petition includes the BPCIA case Apotex v. Amgen that serves as a complement to the pending Sandoz case questioning the requirements and benefits of providing notice of commercial marketing.

Finally – Encyclopedia Britannica v. Dickstein Shapiro is a patent prosecution malpractice action.  The lower court held the lawyers harmless since Alice would have invalidated the patents even if drafted to perfection. The petition asks whether Alice Corp can excuse patent prosecutors from alleged prosecution errors made well prior to that decision.

1. Petitions Granted:

  • Briefing: SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, No. 15-927 (laches in patent cases)
  • Briefing: Samsung Electronics Co. v. Apple Inc., No 15-777 (design patent damages calculation)
  • BriefingLife Technologies Corporation, et al. v. Promega Corporation, No. 14-1538 (Whether the Federal Circuit erred in holding that supplying a single, commodity component of a multi-component invention from the United States is an infringing act under 35 U.S.C. § 271(f)(1), exposing the manufacturer to liability for all worldwide sales.)

2. Petitions awaiting invited Views of SG: 

  • Exhaustion: Impression Products, Inc. v. Lexmark International, Inc., No. 15-1189 (unreasonable restraints on downstream uses)
  • BPCIA – Notice of Commercial Marketing: Sandoz Inc. v. Amgen Inc., et al., No. 15-1039 (Does the notice requirement of the BPCIA create an effective six-month exclusivity post-FDA approval?) (cross-petition asks for recourse on failure to dance)
  • Antitrust Reverse Payments: GlaxoSmithKline, et al. v. King Drug Company of Florence, Inc., et al., No. 15-1055 (antitrust reverse payment – appeal from the 3rd Cir.)

3. Petitions for Writ of Certiorari Pending:

  • Venue in Patent CasesTC Heartland LLC v. Kraft Food Brands Group LLC, No 16-341 (Does the general and broad definition of “residence” found in 28 U.S.C. 1391(c) apply to the patent venue statute 1400(b))
  • BPCIA – Notice of Commercial Marketing: Apotex Inc., et al. v. Amgen Inc., et al., No. 16-332 (effectively extending exclusivity to 12 1/2 years; complement to the Sandoz petition)
  • Anticipation: Grunenthal GmbH v. Teva Pharmaceuticals USA, Inc., et al., No. 16-296 (OxyContin patent – when is an element ‘inherently’ disclosed by the prior art for anticipation purposes)
  • Obviousness: Purdue Pharma L.P. v. Epic Pharma, LLC, 16-289 (whether the circumstances of invention can help prove non-obviousness) (The Purdue and Grunenthal cases stem from the same Federal Circuit decision but involve separate patents owned by the respective petitioners)
  • Obviousness: MacDermid Printing Solutions, LLC v. E.I. DuPont de Nemours & Company, No. 15-1499 (is proof of a “reasonable expectation of success” necessary to combine references in an obviousness case against a claimed combination invention)
  • Patent Attorney Malpractice: Encyclopaedia Britannica v. Dickstein Shapiro, No. 16-305 (Does the fact that the search-system is no longer patentable under Alice Corp excuse patent prosecutors from alleged prosecution errors made well prior to that decision – the patent).
  • LachesMedinol Ltd. v. Cordis Corporation, et al., No. 15-998 (follow-on to SCA); Endotach LLC v. Cook Medical LLC, No. 16-127 (SCA Redux); Romag Fasteners, Inc. v. Fossil, Inc., et al, No. 16-202 (SCA Redux plus TM issue)
  • Safe Harbor: Amphastar Pharmaceuticals, Inc., et al. v. Momenta Pharmaceuticals, Inc., et al., No. 15-1402 (scope of 271(e) safe harbor)
  • Post Grant Admin: MCM v. HP, No 15-1330 (separation of powers and right to jury trial).
  • Post Grant AdminCooper v. Lee, No. 15-955 (whether IPRs violate Separation of Powers; two amici now filed in support); same question presented by Cooper in Cooper v. Square, No. 16-76.
  • Post Grant AdminTrading Technologies International, Inc. v. Lee, No. 15-1516 (mandamus challenging CBM initiation)
  • Post Grant AdminGEA Process Engineering, Inc. v. Steuben Foods, Inc., No. 15-1075 (Flip-side of Cuozzo: Can there be no appeal when the PTAB exceeds its authority by terminating an instituted IPR proceeding?)
  • Post Grant Admin: Merck & Cie, et al. v. Gnosis S.p.A., et al., No. 16-125 (standard of appellate review of PTAB fact-finding in IPR proceedings)
  • Post Grant Admin: Automated Creel Systems, Inc. v. Shaw Industries Group, Inc., et al., No. 16-108 (Achates redux – review of statute-of-limitations for filing IPR requests)
  • Post Grant Admin: Pactiv LLC v. Lee, No. 16-205 (Does the “substantial new question of patentability” identified in a reexamination order limit the scope of the ex parte reexamination)
  • Design Patents: Systems, Inc. v. Nordock, Inc., No. 15-978 (design patent damage calculations – similar issues as Samsung v. Apple)
  • Appellate Review: Commil USA, LLC v. Cisco Systems, Inc., No. 15-1446 (appellate disregard of factual evidence)
  • Eligibility: Jericho Systems Corporation v. Axiomatics, Inc., et al., No. 15-1502 (Eligibility of Patent No. 8,560,836 under Section 101 – Abstract Idea)[Jericho]
  • Eligibility: Genetic Technologies Limited v. Merial L.L.C., et al., No. 16-188 (Sequenom redux; also question whether ineligibility is a proper subject of a motion to dismiss on the pleadings)
  • Eligibility: Essociate, Inc. v. Clickbooth.com, LLC, et al., No. 16-195 (please clarify the meaning of ‘abstract idea’ and ‘inventive process’)
  • Post Grant AdminJames L. Driessen, et ux. v. Sony Music Entertainment, et al., No. 15-1518 (Claim construction in IPRs – pro se case)
  • Interference: Edward Tobinick v. Kjell Olmarker, et al., No. 15-1544 (question of procedure in interference case involving allegations of fraud)
  • Arbitration: Neev v. Alcon Lensx, Inc., No. 16-48 (limits on arbitrator autonomy in patent cases)
  • ITC Jurisdiction: DBN Holding, Inc. v. International Trade Commission, No. 16-63 (Does the USITC have jurisdiction over articles imported in order to infringe, but that do not themselves practice the invention at import).
  • Claim Construction: CSP Technologies, Inc. v. Sud-Chemie AG, No. 16-238 (unduly narrow claim construction)
  • Claim Construction: Google, Inc. v. Alfonso Cioffi, No. 16-200 (holding prosecution history against the patentee)
  • Jurisdiction: GeoTag, Inc. v. Google Inc., No. 16-268 (Whether a compulsory counterclaim can satisfy the case or controversy requirement under Article III of the Constitution if there was no case or controversy at the time the complaint was filed?)

4. Petitions for Writ of Certiorari Denied or Dismissed:

  • None so far this term.

5. Prior versions of this report:

60 thoughts on “Supreme Court Patent Cases: Malpractice, Obviousness, and Venue

    1. Mindless and empty ad hominem from 6.

      But replying to an inane examiner (accurately) who is tr011ing is edited out…

      Rules? What rules?

      (what an “ecosystem”)

    2. If you want to talk about “guarding the profession,” do something about law school and how the mill processes people to BE in the profession.

      Stick a bunch of Type A people weened (mostly) on “soft” undergrads like poly sci into a “step on each other” ranking system and reward those who “step on each other” (and who parrot back the academia’s mindset) the best.

      Um sure – and 6 wants to play the “meds/psy cho” ad hominem card here…

      1. While I do agree with you about the absurdity of the system in those respects you brought up re the stepping on each other etc I’m not sure that is really on topic. In this tiny thread we’re talking mostly about people with pre-existing conditions. Though I’m sure some people do develop those traits/disorders in uni.

  1. Dennis, I am disappointed by your overt bias shown in your opinion of the TC Heartland case. Why don’t you compare the CAFC’s opinion to the actual statutory language at issue? Isn’t that what you’d expect your students to do?

    1. I am disappointed by your overt bias shown in your opinion of the TC Heartland case.

      Oh noes! Someone on the Internets expressed an opinion about a Supreme Court case!

      1. You kind of missed the boat here Malcolm.

        It was less “expressed an opinion” and more “lack of objectivity with a comparison to the actual law.”

        Oh wait – you think that rule of law should not apply when your feelings are involved…

        What a putz.

        1. You kind of missed the boat

          Don’t forget to polish Peter’s boots when you’re finished with his hood ornament, “anon.” You’re a very serious person!

          And totally not biased. Nope. You’re s00per d00per objective! Sure you are.

            1. Look at MM’s comments above at 7.1.1.1. Tell me how that belongs on a law blog, or even any blog meant for people older than fifth graders. I’m surprised MM’s not making po op or bu tt jokes.

    2. Thanks Peter –

      I agree with you that a fresh-look at the statute would lead most of us to the conclusion that the Federal Circuit reached in VE Holding. I also have no problem with the Federal Circuit’s decision in TC Heartland – since the panel was bound by prior precedent. The problem, though is that the Supreme Court already ruled on the issue in Fourco and the Federal Circuit basically disregarded that precedent.

      1. Dennis, didn’t the CAFC address the Fourco issue at length in VE Holding, so that further elaboration was unnecessary in TC Heartland? And didn’t SCOTUS deny certiorari of VE Holding on the Fourco issue? If yes to both questions, why wasn’t CAFC justified in concluding that Fourco did not control, especially in light of the broadening of § 1391(c)?

        1. As is often the situation: The Court’s denial of cert does not bear controlling authority (but is persuasive) – it can go both ways. Scalia was often fond of that idea.

          Much like the other aspects of these cases.
          When Congress contemplates but fails to act to change the law –
          (1) it can support a court’s decision to not overrule prior statutory interpretation (statutory stare decisis); or
          (2) it can be seen as legislative history that the court got it wrong and they interpreted the statute incorrectly (so let’s fix it).

          I think Dennis is more interested in this last issue:
          When does Congress overrule Supreme Court interpretation of statutory language?
          How clear does it have to be?
          What do we look for besides wholesale change in substance?

          I think the first two are useless; while the latter issue is much more interesting and more convincing of an argument if the statute supports the argument.

          1. Slaffles, I’m unsure what argument you’re supporting.

            Practically speaking, it just seems to me that SCOTUS could have corrected the CAFC back when VE Holding was appealed in 1991, but it chose not to even though VE Holding conflicted directly with Fourco. So the CAFC has relied on that denial of cert and twenty-five years of precedent to get to where we are today.

            Moreover, the legislative history suggests that Congress agrees with VE Holding, does it not?

            See In re TC Heartland LLC, 821 F.3d 1338, 1343 (Fed. Cir. 2016) (“In fact, before and after [the 2011] amendments, in the context of considering amending the patent venue statute, Congressional reports have repeatedly recognized that VE Holding is the prevailing law. See H.R.Rep. No. 110–314, at 39–40 (2007); S.Rep. No. 110–259, at 25 (2008); H.R.Rep. No. 114–235, at 34 (2015) (stating that “Congress must correct” our holding in VE Holding by amending § 1400); cf. Venue Equity and Non–Uniformity Elimination Act of 2016, S. 2733, 114th Cong. § 2(a) (2016)”); id. at n.2 (“In fact, the 2007 House Report indicates that the House Judiciary Committee “believes that simply returning to the 1948 venue framework [i.e., that described in Fourco ] would be too strict for modern patterns of technology development and global commerce.” H.R.Rep. No. 110–314, at 40 (2007).”).

            This legislative history suggests that it supports stare decisis and not fixing what isn’t broken, right?

            But it wouldn’t surprise me if SCOTUS were to upend twenty-five years of precedent despite its silent approval of VE Holding and because of its utter dislike for the CAFC and the patent system. Chaos keeps them in business.

            1. Chaos keeps them in business.

              I’m pretty sure the Supreme Court will manage to keep busy with or without “chaos”.

              it wouldn’t surprise me if SCOTUS were to upend twenty-five years of precedent despite its silent approval of VE Holding and because of its utter dislike for the CAFC and the patent system.

              Or because after seeing what has happened over the past 25 years, they realize they should have reversed VE Holdings instead of denying cert.

              The idea that the Supreme Court is “anti-patent”, by the way, is just about the silliest idea floating around out there. Don’t embarxss yourself by repeating it.

              1. There seems to be some tension between the Supreme Court’s old Fourco/Stonite decisions saying there are special venue rules unique to patent cases that are different from other cases and its more recent trend (e.g., eBay) against special rules for patent cases.

                The specific amendments Congress adopted over the years in the general venue statutes might be enough to support the position that VE Holdings (“for purposes of venue under this Chapter) and TC Heartland (“for all venue purposes”) correctly follow the Supreme Court’s trend of treating patent cases more like any other case, so long as the specific provisions of 1400(b) are still satisfied.

                In other words, given the recent trends in the Supreme Court’s patent decisions, is there a reason “reside” should mean something different in 1400(b) than it does in for non-patent cases? Is the only reason that the Supreme Court said so in Fourco, where the general venue statutes were differently worded?

                I would think Justice Thomas at least would just look to the plain wording of the statutes to hold that TC Heartland is correct given the breadth of the language Congress used in 1391.

                1. There seems to be some tension between the Supreme Court’s old Fourco/Stonite decisions saying there are special venue rules unique to patent cases that are different from other cases and its more recent trend (e.g., eBay) against special rules for patent cases.

                  The specific amendments Congress adopted over the years in the general venue statutes might be enough to support the position that VE Holdings (“for purposes of venue under this Chapter) and TC Heartland (“for all venue purposes”) correctly follow the Supreme Court’s trend of treating patent cases more like any other case, so long as the specific provisions of 1400(b) are still satisfied.

                  In other words, given the recent trends in the Supreme Court’s patent decisions, is there a reason “reside” should mean something different in 1400(b) than it does in for non-patent cases? Is the only reason that the Supreme Court said so in Fourco, where the general venue statutes were differently worded?

                  I would think Justice Thomas at least would just look to the plain wording of the statutes to hold that TC Heartland is correct given the breadth of the language Congress used in 1391.

                2. There seems to be some tension between the Supreme Court’s old Fourco/Stonite decisions saying there are special venue rules unique to patent cases that are different from other cases and its more recent trend (e.g., eBay) against special rules for patent cases.

                  The specific amendments Congress adopted over the years in the general venue statutes might be enough to support the position that VE Holdings (“for purposes of venue under this Chapter“) and TC Heartland (“for all venue purposes”) correctly follow the Supreme Court’s trend of treating patent cases more like any other case, so long as the specific provisions of 1400(b) are still satisfied.

                  In other words, given the recent trends in the Supreme Court’s patent decisions, is there a reason “reside” should mean something different in 1400(b) than it does in for non-patent cases? Is the only reason that the Supreme Court said so in Fourco, where the general venue statutes were differently worded?

                  I would think Justice Thomas at least would just look to the plain wording of the statutes to hold that TC Heartland is correct given the breadth of the language Congress used in 1391.

                1. Agreed, Pilgrim. (I felt like John Wayne saying that.) Another reason why TC Heartland was correct. What makes patent cases more special than any other form of federal civil litigation? Opponents will have a difficult time convincing SCOTUS otherwise.

                  I’d like to write an amicus brief supporting Kraft Food Brands Group, but I need a client and most bar associations I belong to are dominated by defense-oriented firms that want to see TC Heartland overturned, which is ironic because many of them argued that SCA Hygiene should be affirmed “to support the CAFC.” Fascinating.

  2. Reason #239 that IPRs are never going away: because, in 2016 (!!) the USPTO can’t write an appeal proof rejection of junk as unbelievably junky as this “display this information” claim filed by Apple. Try to believe it:

    A method, comprising:

    at a portable electronic device with a touch screen display:

    displaying, on the touch screen display of the portable electronic device, a first list of information about online video items [WOW! Video items!] in a plurality of lists of information about online video items;

    displaying, on the touch screen display of the portable electronic device, a
    plurality of icons corresponding to at least some of the plurality of lists of information about online video items;

    in response to detecting a moving finger gesture on the first list of information about online video items, scrolling the first list of information about
    online video items on the touch screen display of the portable electronic device;

    in response to detecting a tap gesture on a first portion of a row in the first list of information about online video items, wherein the row contains information about a particular online video item;

    initiating a request for the particular online video item from a remote computer, receiving the particular online video item, and playing the particular online video item;

    in response to detecting a finger gesture on a second portion of the row
    in the first list of information about online video items, wherein the second portion of the row is different from the first portion of the row, displaying, on the touch screen display of the portable electronic device, additional information
    about the particular online video item; and

    in response to detecting a finger gesture on a respective icon in the plurality of icons, displaying, on the touch screen display of the portable electronic device, a corresponding list of information about online video items.

    No new technology. Just a collection of words about what kind of ineligible information will be displayed in response to prior art actions.

    The US patent system is a j0ke.

      1. What exactly is an “appeal proof rejection”…?

        For a claim as ridiculous as this one, it’s a rejection that a ten year old could crank out in about five minutes.

        1. …so who are you whining against?

          And why do you think this “Ends justifies the Means” type of comment should be accepted when it comes to the law?

          1. why do you think this “Ends justifies the Means” type of comment should be accepted when it comes to the law?

            Thanks for the Monday morning laughs.

            Wow.

            But you’re totally not defending this junk claim! That’s important for everyone to know. You’re a super serious person.

            1. As explained previously Malcolm, there is a very real difference between “defending” ANY claim and exploring how worthlesss your “attack” is under the rule of law.

              Try to comprehend this simple point.

              1. A method, comprising talking on a telephone about a dog taking a d00dy on a lawn, comprising

                in response to a question about whose lawn, providing an answer in the form of a whisper; and

                in response to a question about the shape of the doody, providing an answer in the form of an exclamation.

                From the point of view of promoting progress in the useful arts, what’s the difference between Apple’s junk and the junk above? Tell everyone, “anon.” You’re a super serious person! You’re all about “techn0logy” and “the law”. Let’s hear your deep thoughts.

                Or just admit that you’re nothing but a shill for the lowest form of rent-seeking parasites that ever walked the earth.

                1. I am explicitly NOT defending any claims Malcolm.

                  At the same time, your “methods” of whining are simply crass and ARE what I am panning.

                  What part of the simple and direct language in my post at 6.1.1.1.1.1 did you have trouble with?

                1. For some reason, you find the idea of having the rule of law play an important part of discussion on a law blog….?

                  I “get” that you just want to focus on your “feelings,” but you need more than that here.

                2. you need more than that here

                  ROTFLMAO

                  Are you sure? I’m pretty sure all that’s required is the ability to screech “rule of law!” and “separation of powers” every time someone posts an absurdly junky claim.

                3. real legal argument.

                  Because “anon” knows the difference! He’s s00per d00per serious. We all have to pay attention to him.

                  Keep separatin’ those p0wers, Billy. We’d be lost without ya.

                  LOL

                4. What is the point in your reply?

                  Aside from the poker tell that you have nothing to say (the “so serious”), you have said,

                  Well,

                  Nothing.

  3. It’s been entertaining watching the SCOTUSblog turn itself inside out trying not to be “partisan” about the Republican game playing with Scalia’s replacement. How long will they continue to post “editorials” wondering (super sincerely!) whether the failure to appoint a new Justice is a problem?

    Almost as funny as the editorials about whether the “direction” that the Court is going to take. News flash, SCOTUSblog: dinosaurs die. Watch out or you’re next.

  4. My concern about the “malpractice” case:

    IF you can escape malpractice because the law changed and your “malpractice” is now harmless,

    THEN what if the law changes such that your prior, competent work now becomes malpractice viewed in the light of the changed law?

    If you escape liability in the first case, do you become liable in the second case? It seems that just about every prosecutor would commit malpractice under that standard.

    1. IF you can escape malpractice because the law changed and your “malpractice” is now harmless,

      THEN what if the law changes such that your prior, competent work now becomes malpractice viewed in the light of the changed law?

      This case was decided under D.C. law, and I am not at all familiar with D.C. law, so I would be reluctant to opine on the point. If you find the idea worrisome, however, you could write to your Congress member and ask them to clarify the law on that point by federal statute. Congress has the last word about what is the law in D.C.

    2. Yeah, it seems a little “we protect the profession” as it is a one-way street. But, that is because, I think, they focused on the “harmless” aspect.

      It also follows logically from the issue. Malpractice requires attorney cause damages – if the negligent act (poor drafting) is not a cause of damages then it cannot be a prima facie case of malpractice, no?

      Therefore, if no matter what the attorney did the claim would be worthless, then there is no cause of any damages.

      On the other hand, if an attorney acts and causes damage, and looking at his action at the time of the lawsuit to the time of his action and his inability to foresee the change in law was still negligent, then, sure, let’s hold him liable for malpractice.

      I note that I think the standard of care argument for foreseeing changing laws is a tough argument. But, sure, possible.

  5. Encyclopaedia Britannica sounds like it’s really a state law issue, doesn’t it? It’s about whether the patent’s later invalidity under Alice means that there was no negligence as required under DC law. Seems like that case isn’t cert-worthy.

      1. I suppose so. But it seems like there’s two issues in the case, really:

        1) Was there malpractice (negligence) on the part of the attorneys – the case within a case
        2) Is that malpractice harmless because the patent ultimately would have been held invalid on a different ground.

        There are subsidiary patent law issues, but it seems to me that this is a causation/damages issue rather than really being the underlying patent issue. And it’s a relatively fact-specific one at that.

        1. As per my comment below though, the two issues are intertwined and are not separable.

          It’s like being a “little bit pregnant.” The “case within a case” has some rather large consequences.

      1. Right. The patent issues are intertwined with the state law issues of negligence that are part of a malpractice suit, but the ultimate issue about the 101 issue is a causation one. Causation is a matter of state law. It might turn on a question of federal law, but I don’t see how the Supreme Court could state as a matter of federal law that the fact that a patent would be found due to section 101 does or does not defeat a patent malpractice claim.

        1. See comment 1.

          The case within a case impacts a purely Federal item, which, in turn, decides the issue at hand in the state case.

          See also temprand’s counter point at comment 4.

          1. The case within a case impacts a purely Federal item, which, in turn, decides the issue at hand in the state case.

            One could say the same about Gunn v. Minton, and yet we all know how that turned out.

  6. Dennis writes:

    “Purdue suggests that – despite the final sentence of Section 103, that the actual circumstances of the invention should be available to help prove non-obviousness (but still not be available to prove obviousness). ”

    Would somebody like to enlighten me, how taking into account the actual circumstances in which the Invention was made can be compatible with objective determination of what claimed subject matter is obvious (or non-obvious), when using as the dispassionate and disinterested test meter that legal fiction the PHOSITA.

    I mean, on 103 we want objective determinations, don’t we, rather than “Obvious because I say so” from the judge or “Not obvious, because I the Inventor say so” from the patent owner.

    1. Max –

      The sentence in question is:

      “Patentability shall not be negated by the manner in which the invention was made.”

      So, the fact that the invention came to the inventor in a flash cannot be used as evidence that the invention was obvious.

      On the other hand, evidence that it took a team of 20, 7 years and 4 billion Euros to arrive at the claimed invention might go to show that the invention was not obvious.

      1. Given the “direction” of the actual words used by Congress, the choice of the word “despite” In the blip about the Purdue case is not the correct word to use.

  7. I find the “malpractice” issue interesting, but for a different reason.

    In the discussion of the statutory law that is patent law, the propriety of the Court to do as they have done is often debated as to the difference between “interpreting” the existing law (in which case, the Court is not “writing” law, or legislating from the bench) and actually changing the law (in which case the Court IS writing law, be it implicitly, explicitly, or some combination thereof).

    The position offered as to escaping malpractice runs into the separation of powers problem.

    Because IF the Court IS changing the law, then they are acting ultra vires and in violation of the separation of powers.

    As I have noted previously, the distinction between statutory law and common law is a critical distinction to know, understand, and maintain.

    There are clear examples (and express limitations) of one Branch sharing its authority with another Branch.

    The “jurisprudence” of post-1952 35 USC 101 is expressly NOT one of those examples.

    1. Another anon trope that is essentially empty of meaning.

      Legislatures and judiciaries “write” law always and everywhere.

      In areas of law that are highly technical and low-volume, it’s inevitable that judges will have leeway to fit statues to observed reality. When lawmakers then observe the common law moving in directions counter to their desired policy, they step in and modify statutes. It’s the natural give and take of democratic self-government, especially a practical requirement since the merger of law and equity in the USA rightly empowers judges to seek justice and help guide lawmakers toward that end.

      Judges “writing law” is supportive and healthy for separation of powers, despite the test presented to the pedantic impulses of some observers to understand how that operates.

      It takes some cloistering to think Congress wants no input from the CAFC or the USSC when it comes to how best craft the patent laws, of all things….

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