In Re Comiskey: Fed. Cir. Narrowly Denies Rehearing En Banc

Rehearing en banc was denied today in the closely watched case dealing with patentable subject matter under 35 USC Section 101, In re Comiskey. The petition for rehearing en banc failed by two votes, (failing to achieve a majority of seven judges) as only Newman, Mayer, Rader, Bryson, Moore, JJ., voted to rehear the case en banc. Hal Wegner, gave a great summary of the decision today:

"The nub of the controversy is the "affirmance" of the PTO’s denial of claims based upon a new ground of rejection, patent-eligibility under 35 USC § 101, as opposed to the PTO’s affirmance of the Examiner on the basis of obviousness under 35 USC § 103.

As explained in an important dissent from denial of rehearing en banc, "[t]his case goes to the fundamental role of the appellate court – to review the decision appealed. In this case, the court declined to address the only ground for rejecting the patent claims decided below and appealed by the parties (§ 103). Instead, the court reached out to decide a new ground of rejection (§ 101), raised sua sponte by the court. The court evaluated both the process and machine claims under its chosen ground, § 101, concluding that the process claims were not directed to patentable subject matter, but that the machine claims, in light of our well established precedent were directed to patentable subject matter." Comiskey, __ F.3d at __ (Moore, J., dissenting from the denial of the petition for reh’g en banc, joined by Newman, Rader, JJ.)

Defending the panel’s action, the author of the panel opinion issued a separate opinion, Comiskey, __ F.3d at __ (Dyk, J., joined by Michel, C.J., Prost, J., concurring in the denial of rehearing en banc). Judge Lourie also issued a concurring opinion, while Judge Newman issued a dissenting opinion.

Open and Troubling Questions Raised by the Dissent: It is difficult to understand how a brand new ground to deny a patent can sua sponte be raised by the court which has nothing whatsoever to do with the proceedings below. Indeed, it is difficult to challenge the logic of Circuit Judge Moore in her opinion. Does the majority’s action now mean that a party can come up with a brand new basis to challenge patent validity in the context of a patent interference? If a party cannot, how can the court sua sponte do so?"