US Federal Circuit May Offer Patent, Tech Policy Guidance For High Court

WASHINGTON, DC – The United States Federal Circuit Court of Appeals should act more like a teacher to the Supreme Court and do a better job explaining its policy reasoning when it makes decisions on innovation-related cases, a top patent law academic said late Tuesday. If the Federal Circuit was clearer in how it landed at certain conclusions in patent disputes it might result in the Supreme Court opting to get involved in fewer patent cases, said Rochelle Dreyfuss, a professor at New York University School of Law.

The Supreme Court and Federal Circuit could both learn a great deal from the other and play important roles in the legal system but it is the Federal Circuit that should be making mid-range policy decisions, said Dreyfuss during an event put on by American University Washington College of Law’s Program on Information Justice and Intellectual Property.

Dreyfuss’ remarks came at a time when the Supreme Court is weighing in on more patent cases – the upcoming case of Bilski v. Kappos has received significant attention by industry (IPW, US Policy, 31 July 2009) – and patent legislation is still pending before Congress.

There also have been discussions about whether the US Patent and Trademark Office should have new rule-making authority in the next patent bill. Joshua Sarnoff, an intellectual property law professor at American University’s Washington College of Law, said, “the USPTO could become more involved in providing such policy guidance, but given their historic lack of authority to issue substantive rules they don’t yet have the infrastructure in place to do so effectively.”

Sarnoff also noted that “government agencies change their political appointees more frequently than courts change their composition, and there is a fear of rapid changes to policy in areas of technology contemplating long investment timeframes.”

The question of whether courts should at all be involved in making policy is a complex one. Makan Delrahim of Brownstein Hyatt Farber Schreck said afterward, “I would disagree that the courts should make any technology policy, recognising fully that their decisions will affect technologies. It should just be that Congress makes the policy calls through statutes and whatever the courts may think the policy should be is irrelevant. Their opinions and decisions should be based on the statute itself, as Congress dictates.”

But Sarnoff said “it is not a question of whether either court should be involved in making policy decisions because both already do so. Current law is not sufficiently clear on what the policies are, and Congress is unlikely in the future to specify the applicable policies in detail or to write prescriptive rules that avoid the need to interpret broad language and to supply policies to implement it.”

Intellectual property expert John Witherspoon said he gets “a little nervous when I hear suggestions for courts to base decisions on policy considerations – beyond of course the consideration of policies lying behind a given statute. It strikes me that that can easily become a licence for judges to shape the law the way they’d like it to be, rather than applying what the existing law is.”

On the other end, former USPTO Solicitor of Patents and Trademarks Nancy Linck said that Dreyfuss’ recommendation that “the Federal Circuit provide more policy rationale for their decisions to assist district court judges in following its precedent … is an excellent one.”

Linck added that “I agree with her that, if the Federal Circuit explained the policy considerations underlying its decisions, the number of reversals of district court cases might be reduced, and the Supreme Court might grant certiorari less frequently.”

Another patent lawyer attending the event said the role of the Federal Circuit is “to take a position that is consistent with the statute and also consistent with sound policy. If there is tension between what the Federal Circuit is doing and what the Supreme Court has done in the distant past, the Federal Circuit should acknowledge that tension and explain the policy reasons underlying its choice. As [Dreyfuss] said, the goal should be to substitute dialogue for hierarchy.”

The United States Court of Appeals for the Federal Circuit has only existed since 1982. It was formed by the merger of the US Court of Customs and Patent Appeals and the appellate division of the US Court of Claims. The Federal Circuit has jurisdiction over patents, trademarks and international trade areas.

The Federal Circuit was set up as an experiment in specialisation, and there were concerns about risks of court capture by special interests, neglect of non-patent incentives to innovation such as intellectual curiosity, prizes or competition, as well as possible jurisdictional isolation of cases.

Dreyfuss said the experiment has been a “raging success,” with jurisdiction beyond patents, no capture, and eliminating “forum-shopping” of cases while establishing uniformity and predictability (possibly at the expense of flexibility). She said the increase in the more generalist Supreme Court reviews of the more technical Federal Circuit decisions could be a coming of age for the experiment.

She also said that the Federal Circuit’s history “reveals a strong interest in strengthening patent value and stemming what was perceived as a flight to trade secrecy.” But now, she noted, there are issues of too many patents and of lower quality. This is where the Supreme Court has moved in (taking more patent cases while taking less cases overall), helping the patent system to evolve and fitting it into the economy as a whole.