From a pratical prespective, there are questions on just how far the Bruckelmyer decision goes. The court appears to rely heavily on the fact that the text of the sepcification of the foreign application contained a reference to the specific allegedly invalidating subject matter, and therefore, it could be presumed that one of skill seeing the issued foreign patent would be motivated to obtain and review the entire file history and thereby find the canceled drawings that showed the anticipatory subject matter. In fn. 3 the court warned that it was not “express[ing] an opinion regarding the unusual situation where the prior art reference at issue is contained in a foreign file wrapper, but otherwise bears little relation to the subject matter of the issued and published patent.” Denying printed publication status to subject matter bearing little relation to the issued patent seems consistent with your policy analysis since if the subject matter bears little resembleance to the issued patent, then the costs of searching for that subject matter likely exceed the costs of just searching the information in the issued patent.

While these policy thoughts are interesting and helpful to understanding the legal doctrines, Judge Lourie, in some recent remarks to a bar association (and printed in this week’s patent BNA weekly newsletter/journal), noted that the CAFC is not a policy-driven court. Rather, in his view, the court is duty bound to apply the statutes and precedents that exist as best it can to the situtation it faces without regard to whether the precedents and statutes achieve the best policy goals. He made these remarks in response to suggestions by the court’s critics that the CAFC should have a closer relationship with acedemia. Accordingly, while policy concerns can sometimes impact how a specific statute or precedent should be interpreted, they may not carry the day for a litigant at the Federal Circuit in the face of contrary precedent. Indeed, long ago the Sup. Ct. instructed in the context of section 102 that Congress, and not policy, sets the boundaries on prior art status since “the patent or publication can only have the effect as evidence [of prior art] that is given to the same by the act of Congress.” Bates v. Coe, 98 U.S. 31, 33-34 (1878). Not all members of the CAFC may agree with Judge Lourie. Several years ago, another member of the court in public comments to the bar noted that litigants often failed to address policy arguments in their briefs to the court, and that such arguments should be made. The FTC in its famous 2003 report “To Promote Innovation” noted the CAFC’s apparent lack of interest in addressing policy issues for patent cases, and suggested that the court should rethink its position. See Ch. 6 of the 2003 rpt at pp 7-9.

Given this flux, the policy discussions like the one you applied to the Bruckelmyer should continue. In time they’ll find a proper home; although it may not be in the body of a CAFC opinion. But nonetheless, these discussions should help people more fully understand the issues. I for one enjoy reading the policy discussions, as they force me to think of the patent law beyond the application of a series of judicial precedent and extension of those preceents.