Retired Federal Circuit Judge Seeks Patent Law ClarificationApril 1, 2022

With her retirement from the Court of Appeals for the Federal Circuit on March 11, 2022, Judge Kathleen O’Malley feels the need to express her sentiments on several patent law issues that need attention from the Supreme Court or from Congress.  She served on this Court (which has exclusive jurisdiction for patent appeals from U.S. district courts) since her appointment in 2010.

The first big problem that has plagued patent owners and patent lawyers for several years is patent eligibility under Section 101 of the Patent Act.  Ever since the Supreme Court’s 2014 decision in Alice Corp v. CLS Bank International, 573, U.S. 208, there have been debates, litigation, and patents declared invalid as being directed to non-patentable subject matter, and specifically to abstract ideas.  Judges across the country, and at the Federal Circuit (the sole appellate court for patent litigation) have interpreted the Supreme Court’s Alice ruling in various, inconsistent ways.  Despite repeated petitions to the Supreme Court to clarify “abstract” inventions,  the Supreme Court has declined these opportunities.  The Federal Circuit’s 12 judges have begged the Supreme Court for further guidance, to no avail.  (See Athena Diagnostics v. Mayo Collaborative Services, LLC, 915 F.3d 743 (Fed. Cir. 2019);  See also my blog post, Jan. 14, 2020, “Supreme Court Passes on 101 Patent Eligibility.”)  Judge O’Malley characterizes the refusal by the Supreme Court to reconsider this issue as “absurd.”

Another matter recently raised by Judge  O’Malley is patent injunctions.  The patent laws expressly permit  a patent owner to exclude others  from making, using, selling, or offering for sale, their patented invention throughout the United States.  35. U.S.C. § 154(a)(1).  However, injunctions for prevailing patent owners who prove infringement have been hard to come by since the Supreme Court 2006 decision in eBay v. MercExchange L.L.C, 547 U.S. 388, which provided that injunctions are not automatic after a finding of infringement.  Prior to eBay, patent owners who proved infringement were routinely granted injunctions against further infringement.  O’Malley opined that the inability of patent owner to get an injunction has “gotten out of hand.”  O’Malley further stated that she believes that the eBay decision “has been warped and taken far beyond” what she thinks the Supreme Court intended.

Judge O’Malley also criticized the proposal from the World Trade Organization regarding COVID 19 vaccine patents.  This proposal effectively would allow some countries to use patented technology for free so that those countries can make and use the vaccine.  According to O’Malley, this is “a really bad idea.”  She explained that these vaccines were not invented quickly, but rather were built from over a decade of research and development.  Without patent protection, the vaccine companies would not have had the incentive to do the work, and then share their technology during the pandemic.

Judge O’Malley would like to see Congress grant the Federal Circuit broader responsibility for other intellectual property matters, beyond patents, such as jurisdiction for copyright and trade secret appeals.  In her mind, the Court should not merely be a glorified patent examiner which reviews patent claims.

Kirk Hartung is a member of the Mechanical Patent Practice Group at McKee, Voorhees & Sease, PLC. For additional information please visit or contact Kirk directly via email at

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