PharmaStem Appeals Stem Cell Patent: Asks for Greater Deference to Patent Examiners

PharmaStem Therapeutics Inc. v. ViaCell Inc. (on petition for certiorari, January 2008)

In 2007, the CAFC found two of PharmaStem’s stem cell cryopreservation patents to be invalid as obvious. [Patently-O][Decision] Now, PharmaStem has petitioned the Supreme Court for a writ of Certiorari and and opportunity to challenge the legal basis of the ruling.

The CAFC found the patents invalid based on prior art that had already been examined by the PTO. In addition to the standard examination, the patents had also been reexamined twice and the PTO confirmed the validity of the claims.

Now, PharmaStem asks for some greater level of deference to “PTO determinations that patent claims are valid over particular prior art.” Is there ever any issue preclusion?; and Does the presumption of validity strengthen after successful reexamination?

Notes:

• PharmaStem failed to discuss the CAFC’s finding that the Examiner’s reasons for allowance contained an important factual misstatement.
• The Brief makes issue of the fact that Judge Newman (who dissented from the appellate decision) has a PhD and worked as a research scientist while Judges Bryson and Prost are not scientists.  “If this breakthrough in using cord blood was not ‘inventive,’ it is difficult to imagine many biotechnological or pharmaceutical achievements that would be patentable. Most discoveries made by biotechnology and pharmaceutical companies are rooted in diligent application of the scientific method. As a former scientist, Judge Newman appreciated this in a way that her colleagues could not.”  Perhaps Judge Newman’s dissents should be given greater deference as well.
• Photo: Judges Bryson, Newman, and Prost intermingled with Nayar and Bunch in 2004.
• Reexamination Request

 

 

Comments

[SF]

"Perhaps Judge Newman’s dissents should be given greater deference as well."

Go ahead, Mooney. This begs for a comment.

[M. Slonecker]

While it did not carry the day, Justice Ginsburg, in a dissenting opinion, gave "deference" to Judge Newman's views in the matter of JOHN R. SAND & GRAVEL COMPANY, PETITIONER v. UNITED STATES.

Of some interest is the fact that there the Supreme Court upheld the CAFC, a seemingly unusual occurrence as of late.

[Patently_Deterred]

I say we let the CAFC examine applications, or at least review every allowance. You know, like a third pair of eyes.

[Malcolm Mooney]

"PharmaStem failed to discuss the CAFC’s finding that the Examiner’s reasons for allowance contained an important factual misstatement"

LOL!!!!

"Perhaps Judge Newman’s dissents should be given greater deference as well."

ROTFLMFAO!!!!!!

[Sofa King Tiresome]

I'm sorry Mooney, or Leopold Bloom, or Lazarus Long, or Dennis, or whoever you are, but "LOL!!!" and "ROTFLMAO!!!" are just so, well, "AOL" or "1980s." Its the kind of chat room notation that might be used by, say, teenagers or Barry Manilow fans.

What's your point?

[Steve M.]

ummmm...could everyone just please leave the honorable Mr. Manilow alone?

[Bill Blonigan]

If anyone has them already, will you please post links to ViaCell's and PharmaStem's briefs, or e-mail them to my firstname.lastname@gmail.com? (I otherwise have to wait until Lexis or Westlaw rep day at work.)

[HelpfulInfoHere]

The Westlaw doc id is 2008 WL 87991

[Mr. Hindsight]

The basic problem with this court is that it's staffed by judges who are political hacks and not qualified attorneys and it terrifies me that Judge Newman, who is one of the few who knows what she's doing, is getting closer to retirement age. Because the court does not decide the hot potato issues like executive power or abortion, etc, it ends up being the repository of every senator owed a poltical favor who has someone who wants to be a judge but would be laughed out of any other court. If you have any doubt about this, take a couple of minutes and compare the cv's of these judges with those of any other circuit court. Judge Moore is just the latest example. Judge Prost for example is a labor lawyer. I'd at least have the decency, as a patent lawyer, not to interject myself on the NLRB. Poor Judge Rich must be turning in his grave.

[um.]

Mr. Hindsight,

don't forget that the Federal Circuit is also the appellate court for govt contracts, veteran appeals, and MSPB (labor relations between govt agencies and their employees). I suspect a labor lawyer is useful for those types of cases.

[Leopold Bloom]

"I'm sorry Mooney, or Leopold Bloom, or Lazarus Long, or Dennis, or whoever you are, but "LOL!!!" and "ROTFLMAO!!!" are just so, well, "AOL" or "1980s." Its the kind of chat room notation that might be used by, say, teenagers or Barry Manilow fans."

Or Examiner#6k.

And I don't use chat language (usually).

TTFN,
Leo

[fyinfo]

Completely inaccurate. As any former clerk can tell you, Judge Bryson is one of the best judges on the court. According to a quick Google search, before his appointment he only:
- clerked for Judge Friendly and Justice Marshall
- argued over 30 cases in the Supreme Court and hundreds of court of appeals cases
- was the Deputy Solicitor General of the United States and acting Solicitor General of the United States

If you read Howard Bashman's 20 Questions interview of him, you will also find that he is an avid and accomplished astronomer.

I would gladly have him decide my appeal any day, no matter which side I was on.

[Andria]

PharmaStem also put forward secondary considerations in support of non-obviousness, but the CAFC was not receptive, stating that "there was no indication that the praise for the inventors’ work was based on any inventive contribution they made, as opposed to their proof, through laboratory work, that fetal blood contains large numbers of stem cells.