America-Israel Patent Law: Justices Take Note: The First Step ...

Judges are people, including the ones called ?justices?.? This fact wasn?t lost on the rabbis of Mishnaic and Talmudic period when they laid the groundwork for Jewish law as we know it today.? An interesting way in which this awareness is reflected is in rules about what happens if a judge makes a mistake: in some circumstances, the judge may be liable for damage he causes to a litigant with his ruling (see Tosafot on Gittin 53a).? And there?s a tractate, Horayot, the first part of which deals with the repercussions of the Sanhedrin (the highest court in Jewish law) making a mistake in law and a majority of the public erroneously relying on that mistake; the discussion in that tractate is predicated on the assumption that the Sanhedrin will not only eventually realize its error, but that it will admit to that error.

While the American legal system in principle recognizes that judges, even at the highest courts, can err (which is why it allows for motions for reconsideration, for relief from judgment and the like), on the whole it is less sympathetic to the concept of judicial error, and places more of a premium on procedure.? The notions of stare decisis and precedent mean that within an appellate court, once a panel has ruled on a legal question of first impression, subsequent panels are bound by that ruling, unless the panel is overruled by the or the Supreme Court ? see the CAFC?s decision in Allergan v Alcon, 324 F.3d 1322 (2003) for a case in which the judges were bound to follow the earlier panel ruling (in Warner-Lambert v Apotex, 316 F.3d 1348 (2003)), despite the latter panel?s disagreement with the rule of law announced in the earlier decision.? If an individual judge or a panel of a court wants to overturn a legal rule that it established in an earlier case, it has to resort to slight-of-hand, i.e. it must ?distinguish? the case before it from the earlier, precedential case(s).? And while an en banc appellate court, or the Supreme Court, is not beholden to its own earlier decisions, rarely do those courts toss out their own earlier decisions in toto.

Which brings me to something of a breath of fresh air: a case of a judge who changed his mind and had the guts to follow through on that change when the time came.? The judge is Chief Judge Rader of the CAFC, and the issue is whether or not in making an obviousness-type double-patenting rejection, it is permissible to rely on the teaching of the cited patent rather than just the claims.?

The doctrine of obviousness-type double patenting (OTDP) arose in the USA at a time when patents were granted for 17 years from their date of issue, rather than 20 years from their earliest filing date.? This gave rise to concern that a party might effectively extend the lifetime of his patent by obtaining allowance of one set of claims, then filing a continuation with a slightly different set of claims directed to obvious variations of what was claimed in the allowed claims. ?To avoid such situations, the courts only allowed the issuance of the later claims if the applicant filed a statement, called a terminal disclaimer, that ensured that the later patent would expire at the same time as the earlier patent, thus obviating concerns about an unwarranted time-wise extension of patent protection.?

Given that rationale, it should come as no surprise that the settled rule used to be that to make a determination of OTDP, the claims of the pending application or later-issued patent are compared to the claims of the earlier-issued patent.? If the latter are obvious in view of the former, i.e. if they are not patentably distinct, then there?s an OTDP issue. ?That rule changed in 2003, when Judge Rader penned a decision, Geneva Pharmaceuticals v GlaxoSmithKline (349 F.3d 1373), in which a CAFC panel held that later claims on the use of compound were not patentably distinct from the claims of an earlier patent that claimed the compound per se but merely disclosed, without claiming, the use of the compound.? Although not always followed ? it represented a departure from precedent ? the Geneva decision has nevertheless spawned several offspring in the intervening years; for a discussion of these and the Geneva panel?s error in deciding as it did, you can read this article by Charles Gholz and J. Randy Hibshman.?

Being the author of the Geneva decision, you?d think Judge Rader would toe the line and continue to hold to the erroneous logic of that decision in subsequent cases. ?Interestingly, though, that?s not the case: Judge Rader joined a dissent written by Judge Newman in a 5-4 decision denying rehearing en banc in one of the Geneva offshoots, Sun Pharmaceuticals v Eli Lilly (625?F.3d?719?(2010)), in which Judge Newman argued (forcefully, as is her wont in dissents) that the Geneva decision doesn?t comport with the logic behind OTDP jurisprudence.

Earlier this year Judge Rader was in Israel, and courtesy of Professor Miriam Bitton and Bar-Ilan University, I was fortunate enough to be included in small group of people invited to dinner with him.? I took the opportunity to ask him about the apparent discrepancy in his views in the Geneva and Sun cases.? He confirmed that his views had changed since he wrote the Geneva decision.? Ask we say in Hebrew, yeasher kokhacha for being willing to publicly reverse himself.

If kudos are due to Judge Rader, a Bronx cheer is due by comparison for Justice Breyer and his colleagues at the U.S. Supreme Court for their handling of the Prometheus v Mayo case a few months ago.? As many blogs (e.g. Patentdocs, IPWatchdog and Pharmapatentsblog, as well as Greg Aharonian?s newsletter) have already set forth the numerous faults with this decision, I won?t reiterate them here.? Suffice it to say, however, that the SCOTUS would have done well to admit that its Benson/Flook line of cases concerning patent eligibility are garbage and to toss them out, rather than continuing to propagate bad law regarding patent eligibility.

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