Legislation to Enhance Patent Case Expertise Among District Judges Awaits President's Signature

By Donald Zuhn --

On Tuesday, the House of Representatives sent H.R. 628, which would establish a pilot program in certain U.S. district courts to encourage enhancement of expertise in patent cases among district judges, to the President for his signature.  The House had agreed to a Senate amendment to the bill on December 17, four days after the amended bill had been passed by the Senate.  The bill, which was introduced in January 2009 by Rep. Darrell Issa (R-CA), would permit the chief judge in certain district courts to designate district judges within the district who have made a request pursuant to the legislation to hear cases having one or more patent or plant variety protection issues to hear such cases.  If the President signs the bill, the Director of the Administrative Office of the U.S. Courts will have six months within which to designate not less than six district courts in at least three different judicial circuits where the pilot program will be carried out.  The designated district courts will be selected from amongst the fifteen district courts handling the largest number of patent or plant variety protection cases, and which have (or certify to the Director that they will) adopt local rules for such cases.  In addition, the bill specifies that three of the candidate districts will have at least ten district judges, at least three of which have made a request to hear cases having one or more patent or plant variety protection issues, and three of the candidate districts will have less than ten district judges, at least two of which have made the request.  The pilot program would run for ten years after the designation of participating district courts.

In assessing the success of the pilot program, Congress will examine patent and plant variety protection cases heard by designated and non-designated judges and compare the rate of reversal by the Federal Circuit on the issues of claim construction and substantive patent law, as well as the period of time between the filing date of such cases and entry of summary judgment.

In addition to introducing H.R. 628, Rep. Issa also introduced a false patent marking bill (H.R. 4954) back in March (see "False Patent Marking Bill Introduced in the House").

Comments

[6]

I will lol if their rates for reversal on matters of lawl are higher than the normal judges.

[Kevin E. Noonan]

Actually, 6, Professor Schwartz from Kent Law School has a series of papers showing that there is no correlation between judicial experience with patent litigation and reversal rate for claim construction. I think this means not that the judges do not benefit from experience but that claim construction is the ultimate case-by-case case - each claim is different, so construction of claim 1 in case A doesn't help much with construction of claim 2 in case B. Indeed, a district court judge sitting on a CAFC panel excoriated his brethren a few years ago on this very point - that the "canons of construction" promulgated by the court are not much help to district court judges.

It will be interesting to see the effect that Judge O'Malley will have now that she is on the court - particularly in view of Chief Judge Rader's antipathy to how the court reviews claim construction.

Thanks for the comment, and Happy New Year.

[6]

Oh I wouldn't doubt that the rates will be the same, but it will truly be something worthy of laughs if the rate is higher.

I agree with you on the case by case thing, but I do believe that claim construction is somewhat of an art in and of itself, and you can only get better with experience. And I don't know if I agree with the DC judge's excoriation of his buds. I find the canons to be rather helpful and I see no reason why a DC judge would not also. Now, perhaps it would be better if they were a little more in depth and a little less cryptically worded, but the judiciary always shys away from providing such a thing. In the end of course every claim construction boils down to a judgement call, and it just so happens that through a technicality it is one which they are afforded no difference. I don't think the USSC ever had this question before them, whether or not claim construction should be reviewed De novo, but it would be nice for them to step in and put some level of difference in.

And yeah it will be interesting to see the effect of the new judge. As I understand it there are 2 more spots open, we should get those filled as well. They have a backlog up there don't they? Another 3 man panel (including the new girl and the 2 open spots) should help ease that.

By the by, did you happen to see the WOW Glider case in one of the District courts of Appeals where they declined to adopt the Fed Circ's principle in their DMCA interpretation in the case with the garage door opener manufacturer?

You might not know anything about those cases, but the later was on PO and I found the note in the WOW Glider case very interesting. Now we have a circuit split on the issue. Basically the Fed says that any action accused of happening under this specific section of the DMCA anti-circumvention provisions must be related to a copyright issue in order for it to even begin to have the provision be applicable to it. If the issue is, for instance, not related to a copyright infringement then the provision does not apply. However, the District Court of Appeals (I believe the 6th circ?) stated that they would interpret the provision literally and let it apply to any action unrelated to a copyright infringement that happens to circumvent anti-circumvention tech.

This split just goes to show even more than other cases that the Fed Circ. is quite a reasonable court (and maybe the best) when it comes to matters outside the realm of patents. The judges themselves are great judges, but they hold the patent law too close to their bossom.

If you want links to the cases and the decisions and all let me know I can post them.