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January 26, 2009


Hal Wegner:

In a procedurally bold opinion in In re Comiskey, __ F.3d __ (Fed. Cir. 2009)(Dyk, J.), a panel has repudiated controlling precedent of the court and indeed 180 years of practice since the Patent Act of 1839 that had established a strict proscription against a judicial reviewing body of Patent Office decisions playing de novo "examiner". Instead, the reviewing court has had a limited statutory role that focused upon the rejection that had been made by the Office.

In a 2007 panel opinion, three members of the court in an unprecedented action "rejected" claims as lacking patent-eligibility under 35 USC § 101 where the issue was never raised below; instead, the sole basis for the rejection below had been on obviousness grounds under 35 USC § 103(a).

A Comiskey en banc rehearing failed to garner the necessary seven votes from the nine judges. Five voted for en banc review (Newman, Mayer, Rader, Bryson, Moore). Lourie thought the sua sponte 101 unwise, but water under the bridge, and so didn't think "we need to unwind the panel decision." The three on the original Comiskey panel, Chief Judge Michel, along with Dyk and Prost, voted against rehearing, content with what they had done.


One hundred eighty years ago the Patent Act of 1839 established the ground rules for judicial review of Patent Office denials of patentability. A strict standard was established that the reviewing court should only review the decision below and never on a de novo basis impose a new ground to deny patentability.

Of course, new grounds to deny patentability do come up from time to time, whether before the Examiner or during an appeal. But, in the latter situation the reviewing court can choose to remand proceedings for de novo Patent Office consideration as happens from time to time and as exemplified by In re Hays, 210 Fed. Appx. 995 (Fed. Cir. 2006)(Moore, J.)(quoting In re Gould, 673 F.2d 1385, 1387 (CCPA 1982)).

As explained by Judge Moore, the court's "task is to review a PTO decision, not to direct its examination. [35 USC §] 144 of the Patent Act states that our court 'shall review the decision ... on the record before the Patent and Trademark Office.' Our court is now apparently doing more than reviewing on the record; it is directing the examination, failing to review the decision the PTO has rendered and telling it what alternative possible ground of rejection should be evaluated. With all due respect, I do not believe we have a roving commission to manage the examination process."

The January 13, 2009, denial of en banc reconsideration of this procedural departure from a 180 year old statutory scheme represents a bold and unprecedented expansion of appellate jurisdiction.

The procedural handling of this case is a gross departure from more than a full century of practice dating back to a series of appellate tribunals stemming from mid-nineteenth century practice.

[T]he Federal Circuit should not play the role of Patent Examiner.

Wegner argues that Comiskey "has no precedential value unless and until it is adopted by the en banc court."

Posted by Patent Hawk at January 26, 2009 1:48 PM | Case Law


How does this ruling square with In re Wheeler (08-1215):?


The Board rejected the claims based solely on grounds of anticipation. The court noted that it cannot, after reversing the anticipation rejections, substitute other rejections that might be more appropriate because its appellate review is limited to the grounds relied on by the Board:

"Our appellate review is limited to the grounds relied on by the agency. See SEC v. Chenery Corp., 332 U.S. 194, 196 (1947) ("[A] reviewing court, in dealing with a determination or judgment which an administrative agency alone is authorized to make, must judge the propriety of such action solely by the grounds invoked by the agency. If those grounds are inadequate or improper, the court is powerless to affirm the administrative action by substituting what it considers to be a more adequate or proper basis.")."

Posted by: New Light at January 26, 2009 5:57 PM

What's really disturbing is the rationale that the Comiskey majority uses for itself when breaking the law. They claim they are being "efficient".

But hey, who ever said democracy was supposed to be "efficient"?

Isn't history filled with stories of tyrants who were "efficient"?

Posted by: step back at January 27, 2009 5:05 AM

Don't you think the CAFC in Comiskey had a hidden agenda?

After all the big bucks Comiskey spent to win on the record, Michel wanted to find a way to deny him his costs under the Equal Access to Justice Act. Because Comiskey ultimately received no benefit from his appeal he did not "prevail;" hence, no moola.

Go on home, Jack. It's Chinatown.

Posted by: Uber Skeptic at January 27, 2009 8:51 AM