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Ronald Reagan once quipped that the nine most terrifying words in the English language are: “I’m from the government and I’m here to help.” I thought it was somewhat humorous that Judge Newman, who was appointed by Reagan, heard a similar sentiment from the Solicitor’s Office when the Solicitor’s Office intervened in the Biogen v. Iancu appeal.

And while we understand that “[t]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation,” we also recognize that we cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.

Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358 (Fed. Cir. 2017).

The oral argument of the day comes from Biogen v. Iancu. This case was decided in December 2020; but, it was argued in December of 2019. It took the Federal Circuit over twelve months to decide the appeal by a Rule 36 judgment. How strange. If a case qualifies for Rule 36, why would the panel take so long to dispatch the appeal? Usually, Rule 36 judgments issue within a few weeks of oral argument, at the longest. This one took over a year from the date of oral argument.

I took a look on PACER and there were no clues as to why the decision took a long time. The panel was comprised of Judge Newman, Judge Moore, and Judge Chen. I have some theories on why it could have taken a long time. One, perhaps the court was pondering taking the case en banc sua sponte. Two, perhaps there was a majority and a dissent and no strong opinion on either side. So, after protracted deliberation, the panel opted for a Rule 36. Three, perhaps Covid got in the way somehow.

There were two issues that might have prompted a sua sponte en banc review. First, Judge Newman has been vocal about the Director interloping into appeals of IPR’s when one of the parties drops out. [Link] Such was the case in this oral argument, where Judge Newman again challenged the presence of the Director at the oral argument.

Second, the PTAB invalidated the claims at issue based on a five reference combination — in the unpredictable art of treating cancer, no less. Judge Moore once again expressed some concern about a rejection that involved so many references.

Perhaps the court was considering this case as a potential vehicle for overruling or putting some gloss on In re Gorman (authored by Judge Pauline Newman). For previous times when Judge Moore and others have expressed concern about combining a smorgasbord of references, see this previous post [Link]. At the end of the day, perhaps this outcome was best. If the court is going to address obviousness rejections based on an excessive number of references, it seems best to tee up that issue after Judge Moore has become Chief Judge. At that point she will have seniority to author the opinion.

At any rate, the oral argument was very well done and merits being the oral argument of the day. You can listen to the entire oral argument here:

You can read the Rule 36 judgment here: [Link].

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Update 5/13/21:

Query: Would the Federal Circuit be better served by appointing an amicus to defend the arguments of the party that drops out of an appeal of an IPR? It is somewhat confusing as to whether the Director is representing the Director’s position, the PTAB’s position, or the dropped-out party’s position when the Director intervenes in an appeal like this. Moreover, the government has previously argued that it can take a position opposite to what the PTAB decided and pick and choose which parts of the PTAB decision to defend at the CAFC. So, I think it can be confusing to the Federal Circuit judges who probably assume that the Director by default is defending all of the positions taken by the PTAB. Should the Federal Circuit adopt an operating procedure that requires the government to identify which portions of the PTAB decision (or arguments below of the dropped-out party) that the government does not endorse at the time of filing its brief? Seems unlikely to me that the government would feel comfortable endorsing all the positions that a dropped-out party took below.

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Update 4/15/23:

The recent scrutiny of Judge Newman’s fitness to continue as an active judge on the Federal Circuit might shed some light on this protracted Rule 36 Judgment. These orders released by the CAFC suggest that Judge Newman took extended periods of time to author opinions and some authorship responsibilities were re-assigned as a result: March 24, 2023 Order and April 13, 2023 Order.

The Supreme Court has requested that the Solicitor General of the United States file a brief expressing its views as to whether the Court should grant cert. in American Axle v. Neapco. I was curious when one should expect that brief to be filed. Back in Google v. Oracle, the Court requested such a brief on April 29th of 2019 and the SG filed its brief on September 29th of 2019. In American Axle, the Court requested the view of the SG on May 3, 2021. So, it looks like one could expect the SG’s brief in American Axle around the end of September.

The oral argument of the day is from MEDICINOVA, INC. v. GENZYME CORPORATION, No. 2020-1064 (Fed. Cir. Dec. 14, 2020). This was a Rule 36 Judgment. I thought the oral argument was interesting for its discussion of “derivative claim construction.” This not so common expression refers to construing a term not present in the claim itself, but rather, present in the construction of the claim term. One example of this is from the Advanced Fiber Technologies Trust v. J & L FIBER, 674 F.3d 1365 (Fed. Cir. 2012) case:

The disputed term at issue, “perforated,” appears not in the claims but rather in the district court’s construction of a disputed claim term. We note, as an initial matter, that “we do not ordinarily construe words that are not in claims.” Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1334 (Fed.Cir.2009); see also Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 339, 81 S.Ct. 599, 5 L.Ed.2d 592 (1961) (“[T]he claims made in the patent are the sole measure of the grant.”). However, in those cases in which the correct construction of a claim term necessitates a derivative construction of a non-claim term, a court may perform the derivative construction in order to elucidate the claim’s meaning.

Advanced Fiber Technologies Trust v. J & L FIBER, 674 F.3d 1365, 1374 (Fed. Cir. 2012).

You can listen to the oral argument here:

You can read the Rule 36 Judgment here: [Link].