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Judge Pauline Newman - The Great Patent Defender of the CAFC

Updated: Aug 17, 2023

Judge Pauline Newman of the Court of Appeals for the Federal Circuit (CAFC) has long been considered by those of us in the Patent Bar to be one of the few jurists that thoroughly understand the importance of the patent process. As part of this understanding, Judge Newman frequently issues dissenting opinions that show where the CAFC majority has failed to uphold the principles of the patent laws. A recent CAFC dissenting opinion illustrates how Judge Newman's perspective differs from that of her colleagues. The case is Realtime Data LLC, dba IXO v. Fortinet, Inc. et al., CAFC 2021-2251 (August 2, 2023), which was appealed from the District of Delaware. The issue before the Court was whether the claims of the Realtime patent were directed to patent-eligible subject matter under 35 U.S.C. 101.


At the lower court level, the District Court held that the Realtime claims were directed to "manipulating information using compression," which is a patent-ineligible abstract idea. The district court came to this conclusion by applying the CAFC's Alice/Mayo test, which is a two-prong test that first asks if a patent claim is directed to an abstract idea and if it is, if that abstract idea has a practical application. At the appellate level, the CAFC also applied the two-prong test and held that at the first prong, the claims call for "unparticularized analysis of data and achievement of general goals" making the claims abstract and at the second prong, the CAFC agreed with the District Court that the claims "simply apply an abstract idea on generic computers with generic techniques." Importantly, at both the lower and appellate levels, the Courts criticized Realtime's failure to provide computer code showing enhanced compression.


In her dissent, Judge Newman rightly criticized the CAFC's majority opinion noting that this case is an enablement case under 35 USC 112 and not a patent-eligibility case under Section 101. Indeed, if a more complete disclosure was what the lower and upper Courts wanted to see, then the controlling law is in fact enablement, which requires that a patent disclosure enables one of skill in the art to make and use the claimed invention. In taking this position, Judge Newman took aim at the CAFC's 101 jurisprudence noting that it is "an unnecessary and confusing creation of the courts" that "was never intended to bar categories of invention in this way" and that the Realtime case is yet "another example that conforms with our flawed precedent." Bravo to Judge Newman for standing up against the majority and being the only member of the CAFC to understand that through judicial constructs, the simple language of Section 101 (reproduced below) has morphed into an incomprehensible "morass" (as Judge Newman says in the dissent) of gobbledygook.


35 USC 101: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent thereof, subject to the conditions and requirements of this title.


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