On August 20, 2012, Judge Pauline Newman spoke to the Chemistry and the Law Division of the American Chemical Society (ACS) in Philadelphia, Pennsylvania. As the Federal Circuit has now been in existence for 30 years, Judge Newman took the opportunity to reflect on the early days of the Federal Circuit and how it initially addressed four main issues:

• disregarding other circuit precedent except for the CCPA;

• confirming that patents are presumed valid and address the burden of proof in litigation (clear and convincing evidence to invalidate a patent);

• delineating between issues of law and fact in patent cases; and

• correcting certain legal theories, including inequitable conduct, injunctive relief, assignor estoppel, and the availability of damages awards beyond a reasonable royalty.

Judge Newman then discussed several current topics in patent litigation. She focused on the recent decisions related to patent protection for pieces of DNA and diagnostic tests. She noted that if the patent community does not believe that these items fit within patent protection, then perhaps they should be afforded another type of protection, similar to what has occurred with the Orphan Drug Act or with mask works protection.

In conclusion, she reflected that the patent cases that she is seeing more recently are closer calls and harder to decide, but she continues to enjoy problem solving and the new challenges raised in patent litigation.

As a member of the Executive Committee of the ACS Chemistry and the Law Division, it was a pleasure to meet Judge Newman and gain insight into her long involvement with the Federal Circuit as well as with the scientific community.

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