Generalist judging in patent law
As I discussed in my review of Justice Breyer’s dissent from the Court’s dismissal of LabCorp, Justice Breyer praises the role generalist judges can play in maintaining a sound body of patent law:
In either event, a decision from this generalist Court could contribute to the important ongoing debate, among both specialists and generalists, as to whether the patent system, as currently administered and enforced, adequately reflects the “careful balance� that “the federal patent laws … embod[y].� Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 146 (1989).
I’ve added a new poll today, questioning the premise of Justice Breyer’s praise for generalist judging in patent law. Does it help? Hurt? Make no difference, in the end? Share your thought by casting vote! (Or by leaving a comment …)
I’m all for generalist judging in patent law, but that is essentially what you are getting (by and large) from the Federal Circuit. Many of the judges were not patent attorneys by trade, so they bring a “generalist” approach to patent law cases. Of course, they are also quite experienced in patent law cases, given their docket.
What we are getting from the Supreme Court, however, is generalist judging without an underlying understanding of patent law. Having the opportunity to see the Festo oral argument, it was clear the Justices (whatever their legal brilliance in other areas is) were not on top of the issues in Festo. One Supreme Court clerk I talked to who worked on Festo essentially admitted the Court only understood the bare outlines of the issues in that case.
I’m all for generalist judging, but I’m skeptical the Supreme Court will be able to get the obviousness question right, given a) its recent track record and b) its last entry in the obviousness area, Sakraida.
Comment by DMM — July 3, 2006 @ 12:46 pm
DMM,
As you say, a number of Federal Circuit judges arrived at the court with no patent law experience. The court’s steady diet of patent cases, as you state, quickly drags everyone up the learning curve. Compared to district court judges and Supreme Court justices, Federal Circuit judges are highly specialized in patent law.
I part company, however, with the idea that the Supreme Court proceeds “without an underlying understanding of patent law.” Patent law is still, well, law. The Court looks to the parties to educate it about the core issues and questions in a case. Patent law isn’t much harder, if at all, than complex tax or ERISA or telecommunications law, is it? (Perhaps it’s a form of vanity for us to think, “My area is just too complex for the Supreme Court to get”?) And, because its docket is 100% hand-picked, it doesn’t act if six or more justices conclude that the Court’s involvement won’t be helpful.
Helpful how? My sense is that the Court helps the Federal Circuit see the forest, as well as the individual trees. The “forest” is the rest of general federal law. Three examples: In Dickinson v. Zurko, the Supreme Court concluded that the Federal Circuit should follow the Administrative Procedure Act when reviewing Patent & Trademark Office output, because the PTO is an administrative agency. (The shocker there was that the Federal Circuit had reached the opposite conclusion.) In Holmes Group v. Vornado Air, the Supreme Court concluded that “arising under” jurisdiction in patent cases means the same thing it means everywhere else, i.e., the federal courts follow the well-pleaded complaint rule (and thus counterclaims don’t provide a jurisdictional hook). Most recently, in eBay v. MercExchange, the Court concluded that the permanent injunction jurisprudence for patents is the same as it is throughout federal law, i.e., a matter of district court discretion applying the familiar four-factor test. The eBay result follows from the Court’s decision to interpret the word “may” in the patent injunction statute the way “may” is interpreted in federal statutes generally.
As for Festo, I think the Court did a masterful job returning to first principles within the patent system. It cogently explained how the Federal Circuit’s absolute bar rule was fundamentally at odds with the rationale of the Doctrine of Equivalents itself. The Court’s new presumption framework strikes me as focused, flexible, and fair. And the Federal Circuit, with the benefit of Festo (and Warner-Jenkinson), is working out the finer details. If that’s what comes of the Supreme Court understanding only “the bare outlines of the issues in th[e] case,” so be it.
This is a long reply to your great comment. Let me wrap it up this way: Patent law, to me, is both about patents and about law. The Supreme Court’s generalism makes a healthy contribution to the necessary work of keeping patent law anchored in general federal regulatory and commercial law. The fact that the Court is not steeped in patent law to the same degree, or in the same way, as the Federal Circuit is exactly what enables the Court to see patent law stray from general law and nudge it back, or to revisit patent law’s first principles and thereby show a way forward out of a vexing doctrinal thicket.
Joe
Comment by Joe — July 4, 2006 @ 7:56 am
Joe,
Thanks for your thoughtful response. A few comments:
As I stated in my last post, I’m not sure I agree with Justice Breyer that there is a lack of generalist judging in patent law. Furthermore, many of the litigants these days are generalists as well—something that I think has greatly benefited patent law.
With regard to my comment about the Supreme Court and patent law, perhaps I should have said more precisely that I don’t think that the Supreme Court has a firm grasp on the nuances of difficult issues in this area. And I think it is unrealistic to expect the Court to have such competency. They simply don’t do enough patent law cases. Issues like DOE and obviousness are difficult ones, and I don’t think that briefing alone (as good as it might be) can ever fully educate the Court on certain issues. Similarly, I don’t feel like Federal Circuit judges have the same comfort with certain tax cases and Court of International Trade cases that they do with, say, claim construction cases. (As for your comment that other areas of law are just as difficult as patent law issues, if not more so, I agree; I just don’t have any insight as to the Supreme Court’s relatively competency in these areas.)
I certainly don’t mean to say that the Court is not on top of cases like Zurko or Vornado, which are really admin law and civil procedure cases, respectively. These are the types of cases clearly within the Court’s “comfort zone.� The same goes for the eBay case.
With cases like Festo and KSR, however, I think these are a bit more difficult to come to grips with conceptually. Accordingly, I think the Court was right to issue a fairly modest opinion in Festo, and let the Federal Circuit sort it out from there. With KSR, however, I see great potential for mischief, even if the holding is fairly limited. But that is a topic for a different post…
DMM
Comment by DMM — July 6, 2006 @ 11:09 am
DMM,
I think we’re largely in agreement here, including on the point that there is “great potential for mischief” in the KSR case. One need only read a few of Justice Douglas’s opinions in patent cases to appreciate what a catastrophe a careless patent law opinion can be.
There is, of course, a fairly modest course open to the Court in KSR: It can hold, as the SG’s amicus brief urging cert recommends, that showing proof of a suggestion to combine is one way, but not at all the only way, to show that an invention would have been obvious to an ordinary artisan at the critical time.
Joe
Comment by Joe — July 6, 2006 @ 3:17 pm