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?"

AIPLA Submits Amicus Brief in Bilski Case, Arguing for Broad Patentable Subject Matter

Here is a Link to the AIPLA Brief in the Bilski case. My post on this case is found here.

This is from the AIPLA post on the case:

AIPLA on April 7, 2008, filed an amicus brief with the en banc Federal Circuit, arguing that it is improper to apply the subject matter categories at 35 U.S.C. §101 narrowly to require that a process claim must be implemented by an apparatus in order to be patent-eligible under Section 101. In re Bilski, en banc Fed. Cir., No. 2007-1130.
According to the brief, Section 101 broadly encompasses anything under the sun made by man, and is limited only by the judicially-developed exclusions for laws of nature, physical phenomena, and abstract ideas. The brief maintains that this formulation provides a flexible rubric that promotes disclosure and adapts to yet unforeseen technologies, while retaining the safeguard against overbreadth in the traditional patentability requirements of novelty, non-obviousness, and sufficient disclosure to the public.

Business Method Patents To Be Reviewed En Banc

The Federal Circuit decided to review the patentability of business methods en banc in the case In re Bilski. The en banc order presents the following 5 questions:

1. Whether claim 1 of the 08/833,892 patent application claims patent-eligible subject matter under 35 U.S.C. § 101?

2. What standard should govern in determining whether a process is patent-eligible subject matter under section 101?

3. Whether the claimed subject matter is not patent-eligible because it constitutes an abstract idea or mental process; when does a claim that contains both mental and physical steps create patent-eligible subject matter?

4. Whether a method or process must result in a physical transformation of an article or be tied to a machine to be patent-eligible subject matter under section 101?

5. Whether it is appropriate to reconsider State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), and AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352 (Fed. Cir. 1999), in this case and, if so, whether those cases should be overruled in any respect?

For more coverage of this developing story, see Dennis Crouch's Patently-O post here, and Peter Zura's 271 blog post here.

I've also posted on the topic of patentable subject matter here, and was counsel of record for the Federal Circuit Bar Association in that group's amicus brief to the U.S. Supreme Court in Labcorp v. Metabolite Labs. We argued for the petition for certiorari to be dismissed as improvidently granted, and that is what eventually happened in that case. (See this link for some good coverage of the Labcorp case from UW Law School's CASRIP ("Center for Advanced Study and Research on Intellectual Property") Newletter.)

I think this decision by the Federal Circuit, i.e. to take up the issue of patentable subject matter en banc, could potentially eliminate (or delay), any grant of certiorari by the Supreme Court on this topic. Some speculate that the Supreme Court will grant certiorari in In re Nuijten, another section 101 case where the CAFC--over the dissents of Judges Linn, Newman, and Rader--declined to consider patentable subject matter en banc. The CAFC's timing here may fortuitously avoid the Supreme Court stepping in to re-write the law of patentable subject matter in connection with In re Nuijten. Based on the comments of Justices Breyer and Stevens at the February 2007 oral argument in the ATT v. Microsoft case, at least these Justices seem ready and willing to take a hard new look at the scope of patentable subject matter under section 101. The questions raised by the CAFC's order in In re Bilski could have easily come from Justices Stevens or Breyer, so it will be interesting to see how this issue develops and whether the CAFC can assuage concerns voiced by Justices Breyer and Stevens.