July 15, 2019

     In denying the petition for rehearing en banc the majority of the Federal Circuit abdicated its responsibility to define the limits of the Supreme Court’s Mayo decision.  Judge Dyk on the 25th birthday of the Federal Circuit noted that:

Frequently, the Supreme Court in patent cases articulates a general principle and leaves it to our court to both administer the rule and apply it to the individual case.[1]

As noted by Judge Dyk, the Supreme Court is a policy-oriented court which requires:

In other words, the Supreme Court requires a different approach than has characterized patent litigation historically, and litigants can only ignore this at their own peril. The problem, in general, is that the academy goes too far in urging a reshaping of the patent law to respond to perceived policy, while the bar does not go far enough. This leaves the Supreme Court and the lower federal courts with little assistance in sorting out the relevant policy concerns.[2]

Judge Dyk hit the proverbial nail on the head, the bar, which includes the Federal Circuit, does not go far enough in attempting to understand the policy laid down by the Supreme Court. The majority on the Federal Circuit refuses to look at the policy the Supreme Court set forth in Mayo and instead focuses on the result. The Supreme Court policy was in Mayo was simple, a patent claim cannot expropriate prior art public knowledge. Unfortunately Judge Dyk, like the majority of his colleagues, failed to perform his job of laying out how the Mayo policy should be applied to cases with very different fact patterns. Athena is a case that called for such action.

If the Supreme Court takes up Athena it should also use it to advise the Federal Circuit as to its function of further developing policy first expressed by the Supreme Court.

[1] Dyk Timothy B. “Does the Supreme Court Still Matter?” American University Law Review 57, no.4 (April 2008): 763- 773 at 772, citing to Dyk Timothy B. “Does the Supreme Court Still Matter?” American University Law Review 57, no.4 (April 2008): 763- 773; citing eBay Inc. v. MercExchange, L.L.C., 126 S. Ct. 1837, 1841 (2006); Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 742 (2002); Warner- Jenkinson, 520 U.S. at 40.

[2] Ibid.