Bob Matthews, in a comment to my recent post on the “printed publication” portion of section 102, offers some important observations on the role of patent policy in deciding patent cases, and on the way some Federal Circuit judges think about that role.

He highlights some comments Judge Lourie offered in a keynote speech at the May 3 Joint Patent Practice Seminar of the Connecticut, New York, New Jersey, and Philadelphia Intellectual Property Law Associations. (BNA’s Patent, Trademark & Copyright Journal provides the text of the speech at Vol. 72, p. 41 (May 12, 2006).)

First, two of Judge Lourie’s comments:

1. On the opinion expressed by some that the court is “pro-patent” : “Since I have been on the court, not once have we had a discussion as to what direction the law should take, whether we should be pro-patent or not. That is because we are not a policy-making legislature. We have just applied precedent as best we could determine it to the cases that have come before us.”

2. On “the question whether there is a gap between academia and the Federal Circuit, and what can be done about it” : “I find the idea of a gap between the court and academia to be a bit beside the point. We decide cases that come to us, based on the law, consisting of the statutes and governing precedent, and, when applicable, the Constitution. We are not a debating society having debates with outside groups on what the law should be. Debate is for others. We decide cases based on what the law is.”

I agree that the Federal Circuit is neither a legislature nor a debating society. So far as I know, no one is seriously suggesting it is either of these (or should become so). I can’t agree, however, that faithfully applying the Patent Act and prior precedent is a policy-free activity. More after the jump.

Let’s start with the common ground: The Patent Act and prior precedent (both from the Supreme Court and within the Federal Circuit and its predecessor courts) provide the governing law within which to decide every new appeal. A great deal of the text of the Patent Act dates from 1790 (the first Patent Act), 1836 (the creation of the modern patent system, including examination at the Patent Office), and 1870 (an important set of amendments). These provisions, recodified in the 1952 Act, use the open-textured, goal-oriented language of our older statutes (such as the Sherman Act, U.S. antitrust law’s main charter). The courts continue to rely on, and I continue to teach, Supreme Court patent law cases from throughout the 1800s and early 1900s; they are just as relevant today as they were before, and the common law method continues to adapt the policies they state to present-day circumstances.

The Patent Act’s broad language — invoking standards like “useful,” “in public use or on sale,” and “known or used” — demands elaboration in case after case. The courts have obliged. Their decisions are jam-packed (unabashedly, and quite rightly) with frank discussion of how best to accomplish the broadly stated policies Congress has enacted. That discussion is, I think, also policy-based, albeit in a more fine-grained, limited way (showing, e.g., the difference between the question “shall we have a novelty requirement?”, and the narrower question “given that we have the particular novelty requirement Congress stated in section 102, how should we interpret and apply the phrase ‘printed publication’?”). For example, in Maxwell v. J. Baker and Johnson & Johnston v. RE Service (the former of which Judge Lourie wrote for the court), the Federal Circuit adheres to a strong disclosure / dedication rule that precludes reliance on the doctrine of equivalents as to described-but-never-claimed subject matter. In both cases, the Federal Circuit justifies its approach, in part, by invoking the need to avoid subverting the patent examination process. I think the court made good decisions here, and for the (good) reason it stated. Now, it’s also true that the court relied heavily on two Supreme Court cases from the mid-1800s (Miller v. Brass, and Mahn v. Harwood), both of which state that described-but-not-claimed subject matter is dedicated to the public. But these 150-year-old cases could easily have been distinguished, had the court wanted to, on the ground that they involved efforts to broaden claims through reissue long after the original patent in the case had issued. Rather than distinguish them, the Federal Circuit concluded that these cases stated an applicable policy that remained valid, and an apt analogy, today. Of course, the entirety of the doctrine of equivalents is judge-made law, so it is not surprising that Maxwell and J&J rely openly and heavily on policy considerations.

The mystery, for me, is why some judges on the Federal Circuit (and other courts, too) seem so eager to deny that fine-grained policy judgments are necessary, and helpful, to what they do.

Judge Posner’s recent remarks about the nature of judicial decisionmaking may be of interest on this point:

Legal thinking in novel cases — cases not ruled by conventional legal sources, such as clear statutory texts or unchallenged precedents rationally indistinguishable from the case at hand — clearly is driven by policy (at best — at worst by prejudice, temper, ignorance, or whim). But this undoubted fact about our courts tends to be obscured in the judicial opinion itself by the judges’ desire to exaggerate the distance between “legal” and “policy” analysis, between adjudication and legislation, and thus between law and politics, so that legal decisions will be more acceptable to the laity (more “legitimate”) by seeming to be the product of specialized analysis by a profession set apart, rather than, as they so often are, a product of common sense grappling with economic, social, and political issues presented by cases.

Richard A. Posner, Reasoning by Analogy, 91 Cornell L. Rev. 761, 768 (2006). Perhaps Judge Posner’s candor about the role of policy in judicial decisionmaking is a by-product of his having kept one foot planted firmly in the academy (e.g., he remains a Senior Lecturer at the University of Chicago Law School).