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March 09, 2009



I side with Judge Newman that the Federal Circuit was specifically created to be the primary arbiter of patent law jurisprudence. For other judges on the Federal Circuit bench to say that isn't their role is to wrongly abdicate the mandate that was handed down by Congress when the Federal Circuit was created in 1982 (I was already a member of the CCPA then, so I was there when this all transpired).

But the reason other Federal Circuit judges (other than Newman) may understandably be hesistant now to take up this mandate is because SCOTUS has unfortunately (and in my opinion wrongly) usurped that mandate. By previously making this suggesion, I've been criticized as saying that there should be no appeal of patent cases to SCOTUS. That's not what I said or meant at all. Instead, SCOTUS should be far more hesitant than it has recently in taking on cases in the patent area and thus undermining the clear mandate of Congress that the Federal Circuit be the primary arbiter of patent law jurisprudence.

Let me say that the Federal Circuit doesn't always get it right on the patent law jurisprudence. The current "machine or transformation" test of Bilski (as applied in Ferguson) is a glaring mistake by the Federal Circuit that cannot be reconciled with prior case law precedent, be it Federal Circuit or SCOTUS. But contrary to what others seem to gleefully think, SCOTUS has created far more chaos and uncertainty by repeatedly reversing the Federal Circuit in KSR, eBay, MedImmune, etc., and leaving a complete patent jurisprudential vacuum in its place (SCOTUS, far more so than the Federal Circuit, is notorious for fumbling its responsibility, as our highest court, to articulate clear jurisprudential guidance to the lower courts). That vacuum doesn't help anyone, not matter what your view is on a given issue.

I'm also going to suggest something else that Congress intended when it created the Federal Circuit in 1982 which I'm sure will cause some to howl in disbelief. And that is that the Federal Circuit, at least in the area of patent law, was free to write on a "clean slate" if it chose, including viewing prior SCOTUS precedent on patent law as being advisory, but not binding. Certainly that was the late Chief Judge Markey's view, and frankly patent law jurisprudence flourished during the 1980's and into the 1990's with a fairly consistent pattern of objectively usable patent case law to apply to both the PTO and patent trials. And even more significant, SCOTUS was conspicuous by its absence from opining on patent law jurisprudence during this time.

By contrast, what we have today is the worst of all worlds in patent law jurisprudence with SCOTUS intermeddling in an area of law it is arrogantly ignorant (and disdainful) of, with a Federal Circuit so "shell-shocked" and hesitant that it's almost dysfunctional in the role Congress intended for it back in 1982. (The Federal Circuit has also suffered from having a series of fairly weak Chief Judges since Markey stepped down.) Which brings me back to Judge Newman's clarion cry to take up of the mandate of the Federal Circuit to be the primary arbiter for patent law jurisprudence. If only SCOTUS would only resume it's former "quietness" of the 80's and 90's in the patent law area, the Federal Circuit might have a chance to snatch "order" out of this "chaos."

"It is stunning, in a way, that Judges Gajarsa and Mayer question the Court's role in considering patent policy in making their decisions. "

They don't question the court's role in considering patent policy in making their decisions. They question the court's role in solely basing, or even substantially basing their decisions on patent policy instead of what is the blatantly set forth (common) law.

Dear 6:

Welcome back. I have a problem with your comment, which is that patent law is not common law, but rather is a creature of statute. Solely. Congress exercises its powers under Article I of the Constitution by passing laws, and there is no common law component for patents on that basis (unlike trademark which has a common law component).

Judge Newman's quotation from Justice Holmes is the comparator here - judges try to effectuate the will of Congress, within constitutional boundaries, and in doing so must consider the implications of their decisions on policy, in this case patent policy. That's because legislation can be as hard to decipher as a patent claim, due in part to the inefficiencies of language, but also because legislation is frequently a compromise between competing positions, and understanding that is an important part of determining what the law means.

In other words, all this doesn't occur in a vacuum. My piece was intended to ask the question, has 10 years of reversals by the Supreme Court made some members of the Federal Circuit question its role? I think is better for the court to say what it thinks the law is, and if the Supreme Court disagrees so be it - but not to abdicate a role that Congress clearly intended when they instituted the court.

Thanks for the comment.

EG, Kevin, I couldn't concur more with your statements. While it remains unfortunate that there is no better system for appellate patent review than having the Federal Circuit be the "Supreme Court" in this realm, the plain fact is that there IS in fact no better system. The Supreme Court's complete ineptitude in patent law was ably demonstrated in KSR, which, to me, is enough evidence for Congress that some form of legislation should (and hopefully could, despite SCOTUS' self-announced mandate of judicial review) be enacted to remove appellate patent review explicitly from the Court's subject matter jurisdiction. The stakes for commerce are too high otherwise, and I believe as Kevin likely would that this would be a wake-up call to the Federal Circuit that its powers in the patent arena are formidable indeed.


Thanks for your comments and support. The only "mandate of judicial review" that SCOTUS can reasonably and logically support (in my opinion) based on case law precedent is of "constitutional questions" (based on Marbury v. Madison and McCullough v. Maryland). SCOTUS also has original constitutionally based jurisdiction (in equity) of disputes between the states (e.g., what are the correct position of the borders between states). Other than that, Congress has the authority (in my opinion) to deny appeals, and especially petitions for certiorari, to SCOTUS of ANY federally-based statute that does not implicate a constitutional question.

One wonders how far SCOTUS might push the Patent and Copright Clause in Article I for such "implicit" review. For example, you see language in Graham v. John Deere that suggests there is somehow a "constitutional standard" for patentability of inventions which Congress dare not go below. Frankly, that argument in Graham (which is utter dicta) "won't hold soap" as my patent attorney dad would say.

Dear Patrick and EG:

As frustrating as the recent Supreme Court jurisprudence has been, I think any argument that the Court cannot be the final arbiter over patent law is unsupportable. I think that the Court has made it very clear that any patent statute that does not "promote the progress" as the Court determines it is ultra vires of the Congressional powers articulated in Article I and that the Court has the power and responsibility to overrule Congress on these grounds. Just look at Justice Thomas's concurrence in the Wyeth case for an example of this thinking.

I think the problem is that the Supreme Court has become less insulated from the political pressures on government at all levels, and has not resisted the clarion call that the patent system is "broken" by folks who have an economic interest in a weakened patent system. (Bush v. Gore says all that needs to be said about the political influences and inclinations of the Court.) The system works best when the Supreme Court leaves the Federal Circuit alone to work out the details, and then steps in on significant constitutional issues - the right to a jury determination vel non of what patent claims mean, for example, or the scope of the doctrine of equivalents.

Keep in mind as well that the Court was advised by the Solicitor General in the last administration that it should hear patent cases much more frequently than in the past, and that the Court rightly looks to the Solicitor's views on things like patent law that are totally creatures of federal law. (Ironically, the one time the Solicitor told them not to grant certiorari was in the Labcorp case.)

So unless the members of the Court lose interest in patent law, or decide to exercise judicial restraint, perhaps the best thing the rest of us can do is write, write, write so that petitioners or respondents will have some fodder for Supreme Court clerks to consider the next time there is a patent law question before the Court.

Thanks for the comments.


We may have to "agree to disagree" on this one. Nothing in Article III says that Congress can't restrict the "judicial power" (including not providing for any other courts besides the Supreme Court), or restricting which cases of federal statutory law (unrelated to constitutional questions) can be reviewed by SCOTUS. Of course, SCOTUS can (and has) done whatever it wanted to, including dismissing "mandatory" appeals on many grounds including lack of ripeness. That SCOTUS might do so in the case of Congress restricting appeals from the Federal Circuit is always possible, but in my opinion, the basis for doing so based anything explicit in the constitution (including Article III) or based on Marbury v Madison/McCullough v Maryland precedent is pretty feeble. But SCOTUS has also said in Graham (on equally feeble grounds) that there is a "constitutional standard" for patentability, so anything is possible.

If you sense from these comments my skeptism about SCOTUS being consistent or logical in how its decision-making, you would be correct (and I'm not alone among attorneys who feel that way) My poster child for the absurd from SCOTUS is Kelo v City of New London which is one of the worst decisions ever from SCOTUS, completely turning "eminent domain" and the concept of "public use" on its head, and trampling first the first time in memory one our rights guaranteed by the Bill of Rights.

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