Judge Rader Chides Supreme Court’s IP Decisions

Judge RaderLaw360 (subscription) is reporting a speech by Federal Circuit Chief Judge Randall Rader where he called out the Supreme Court’s recent patent decisions for judicial activism.  In the speech at the New York State Bar Association’s annual meeting, Judge Rader argued that the Supreme Court’s decisions have ignored or only partially applied the patent statute.  The Court instead relied on interpreting its own precedent.

Judge Rader specifically called out the Court’s decisions in Mayo v. Prometheus and eBay v. MercExchange.  In Mayo, the Court held that the claims to a method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder were not patentable because they were directed to natural laws and routine, conventional activity.

Judge Rader noted that the patent statute says nothing about laws of nature.  Instead, the Patent Act states that patents are permitted for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”  The Patent Act also states that inventions that are not novel or are obvious are not patentable.  Laws of nature can clearly not be patented because they are not novel and have not been invented.  The Supreme Court instead ignored the statute and instead interpreted its own judicially-created exception to patentable subject matter.

In eBay, the Supreme Court held that an injunction should not automatically issue in a patent case upon a finding of infringement.  Instead, courts must go through a four part test to determine whether the injunction is appropriate.  Judge Rader noted that the patent statute states that upon a finding of infringement, courts “may grant injunctions.”  The statute does not refer to the four part test.  He argued that injunctions should issue in most cases of infringement, unless there is good reason, such as where the public interest is affected or where health would be endangered.

Judge Rader also argued that other groups are also seeking to interpret patent law in a way that is not reflected or intended by the statute.  For example, a number of groups seek restrictions on infringement actions brought by so-called patent trolls, entities that do not practice the patented invention.  Courts should not decide cases based on the status of the parties, but rather based on the law.  Courts should not permit parties to extend the scope of patents beyond the actual contribution of the invention to the field.

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2 Responses to “Judge Rader Chides Supreme Court’s IP Decisions”

  1. Phil Marcus Says:

    Judge Rader is square on in all his points.

    I doubt any of the justices, despite their general wisdom, knows much about science or technology. They are not, AFIK, any of them qualified by education to sit for the patent bar exam. They should not be messing where they know not the consequences. Sorcerer’s apprentices.

  2. Bret C. Silva Says:

    While I respect Chief Judge Rader for all he has done within our industry, and while I frequently agree with his judicial decisions, I have to respectfully dissent here. I do think I was making sense, and I don’t think searching for just results some of the time is the type of discriminatory system that we want or need. Either we need to tolerate a certain amount of injustice and gravitate toward bright-line rules on issues of importance to both patentees and defendants, or we need to get every issue of every case correct by engaging in a case-by-case approach. Either approach is intellectually honest and with their merits. We just need to pick a lane. An erratic approach to patent procedure and patent policy is a bad idea.

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