In this final installment of my interview with Chief Judge Paul Michel we discuss Bilski v. Kappos and what he thought of the Supreme Court’s decision. Judge Michel talks about how only one of the Justices who decided Bilski ever decided a patentable subject matter decision, leaving the impression that the Supreme Court should probably just leave well enough alone. He tells us that he “think[s] the Federal Circuit can help minimize harm” that may otherwise be caused by the Supreme Court’s decision in Bilski v. Kappos, but is unsure whether the Federal Circuit can all “the harm that may lie inherent in the approach of the Supreme Court in that opinion…” Chief Judge Michel also discusses how he feels that the patent system is now favoring extremely large companies over independent inventors, start-ups and small businesses. Plus, the fun stuff!
You will also read in this segment a brief list of the subjects I had prepared questions for that I simply couldn’t get to. My discussion with Chief Judge Michel was quite organic, leading from one thing to the next. This was no doubt facilitated by the fact that as a private citizen now he can have an opinion and he was more than willing to share his thoughts and opinions for the record. You will read that Chief Judge Michel agreed to a follow-up interview where I can delve into the confirmation process to become a Judge, the Robert Bork confirmation process and what that has meant over the years, what it is like to be on the Federal Circuit and to become Chief Judge and more. This follow-up interview is already scheduled to take place in early Fall 2010, so be on the lookout for more with Chief Judge Michel this Fall.
QUINN: Not to cut this discussion short, but there’s one more substantive thing I’d at least like to address because we’ve been going for a while and I really appreciate your time. And I’d like to get into the fun stuff, maybe you’ll give us a little glimpse of who you really are under the robe, so to speak. I think if I were to sit here and ask you questions and didn’t mention Bilski, I would be appropriately criticized. And I’d like to just mention it, ask you, have you had a chance to read the case?
MICHEL: Oh, yes.
QUINN: And without any leading questions at all, and just giving you wherever you want to go with this, what are your thoughts?
MICHEL: Well, I think that predictability is very important. Business actors need to have lawyers who can make sound predictions so that they can make business decisions, technology decisions and move ahead in their work; whether they’re inventors or makers or are a combination of inventor and manufacturer. The lawyers who advise them need predictability. The 6000 patent examiners need predictability. The 650 federal trial judges need predictability. Fifteen judges on the Federal Circuit need predictability and clarity. I think it’s extremely important. This isn’t philosophy. This isn’t like a First Amendment case, this is commercial, this is economic, this is a fast-moving environment. So to me the Section 101 issues primarily turn on this; are we making the law clearer, more consistent, more predictable, more practical or less. It looks to me like the Supreme Court’s Bilski opinion makes 101 eligibility less predictable than it was before. So I would say that’s not progress, that’s regress. So I’m disappointed that the decision didn’t provide clear guidance.
QUINN: But does that really surprise you? I mean, that seems that over the last–
MICHEL: No, it didn’t surprise me because it’s too hard of a problem for the Supreme Court. There was only one justice that I can identify who’s ever ruled on a 101 issue before in his entire career. And that was Justice Stevens who was on his way out, of course. So this isn’t something they grapple with every year, or even but once in a lifetime. And it’s a very hard problem. So I’m not surprised that they punted in colloquial terms on what the additional tests factors should be. But it still isn’t helpful in my opinion to suggest that well, abstractness is the watchword, is the new litmus test because abstractness is so indefinite, so subjective, so impossible to be consistently applied by 6000 examiners, 650 trial judges, 15 or 20,000 counselors, and several thousand litigators in infringement cases. So if you don’t have a clear standard it seems to me you’re going backwards and not forwards. Whatever the exact standard is, it has to be clear, I think. So I think the Bilski opinion will not help.
QUINN: Over the last three years it seems to me, you know, now with Bilski and then KSR, you’ve taken 101 and 103, just tremendously fundamental concepts and the Supreme Court has basically said they want, and this is my take, a case-by-case approach without having any bright line or guidelines or any tests that would be announced, can’t be the only test. It makes it, to me, like you said, very unpredictable. And the thing that I deal with, because when I represent people it’s usually independent inventors or small businesses, there already seems to be in the system this lack of equal protection, just based on funding. Because you get a rejection and you can’t go up to the Board of Appeals you got to give up the application. Where a rich company can go up to the Board of Appeals and they get the patent overcome the same exact rejection you were facing. There’s no fairness. And it strikes me that a case-by-case approach where there are 6000 examiners who are not lawyers can’t know what to do, it perpetuates a lack of fairness.
MICHEL: I think that everybody other than a very big wealthy company is being harmed in the current circumstances. Because whether you’re talking about cases inside the patent office or cases inside the courthouse, it’s way too expensive, it’s way too slow, and the result bites much harder on independent inventors, universities, research companies, small start-up companies and new technologies than it does on very mature, big, rich companies. So it’s very harmful.
QUINN: Do we need another 1952 moment?
MICHEL: I don’t think so. I don’t think there’s anything wrong with the Patent Act. I think the big problem is the lack of resources in the institutions that need to implement the Act. I’m not saying that every provision is perfect, but I don’t see any fundamental defect in the Act itself.
QUINN: I didn’t mean to suggest that. My idea of an appropriate ‘52 moment would be is to say, okay, let’s start with the ’52 act, which seemed I thought to layout a comprehensive view that was appropriate. And look at the cases particularly from the Supreme Court level since then and see which ones we as Congress or society think we ought to keep and put into the statute. And what should be jettison. And the same they jettison flash of creative genius, which in some respects we’re almost now back to.
MICHEL: Yeah, yeah. Well, in 1946, as you know, the Supreme Court decided the Halliburton case, and the Congress thought the decision was wrong and harmful. And so they enacted means plus function claiming statutorily, in effect overruling the Supreme Court decision. So Congress always has the ability to alter the law selectively, and particularly to overcome perceived bad effects of recent Supreme Court decisions. I think in the case of KSR, although again it did make predictability harder, and it made the standards much less clear and much more subjective and difficult to administer, but I think that lower courts fixed the problem so that the long term harm that might have come from the Supreme Court’s KSR opinion didn’t really materialize.
QUINN: And the guidelines have helped.
MICHEL: Yes. Now whether that will be true in the case of Bilski or not, I’m not so sure. I do think the Federal Circuit can help minimize harm, but whether it can altogether overcome the harm that may lie inherent in the approach of the Supreme Court in that opinion, that remains to be seen. I hope so. Lower courts tend to ameliorate overreach by the Supreme Court in many areas of the law, and that’s part of the system when it’s operating in a healthy way, and I hope that’ll happen. But I think it’s very important to have reasonable predictability. I haven’t agreed that the choice between some kind of rigid arbitrary, so-called bright line rule on the one hand and a totally subjective mushy standard on the other hand. We’re not stupid people, come on. We can design standards that are in the middle. We don’t have to take one extreme or the other. So when people say, oh, well, the Supreme Court had to do what it did because the Federal Circuit had a test that was too rigid or too bright line, well, we didn’t have our test, we just slavishly used the test from Diehr which is the Supreme Court’s test. So when the Supreme Court says, well, it’s not the only test, well, we didn’t say it was the only test. We just said it’s the only test so far announced by the Supreme Court. And we said right in the opinion it probably needs to change some day in some way that can’t now be foreseen, and it probably will be, maybe by the federal circuit, maybe by the Supreme Court. When we get there, we’ll get there, we’ll fix it. Meanwhile, this is the standard that’s been in the law for decades and it ought to be applied. And the State Street non standard is not to be applied any more ‘cause that’s too loose. So we’re trying to get in the middle in some sort of a balanced approach. I thought the Solicitor General had it right that Bilski was the wrong case for the Supreme Court to take, that it was too soon for the Supreme Court to intervene in this area because they need a cluster of cases before it’s really ripe for their level of review. And I think that their opinion doesn’t help because at least to me to make the notion–it’s not even a test, but the notion of “abstractness” the magic determinant is impossible to administer in a way that’s consistent, in a way that’s rational. No one will know what it is. No one will know, and whether it’s too abstract or abstract, but not quite too abstract, so it’s eligible. No one will know where that line is because it is a completely indefinite, indeterminate place. So I don’t think the Supreme Court helped at all.
QUINN: Yeah. Well, I really appreciate you taking the time. There are so many questions I had about your confirmation process, and about your interactions on the court and so forth. Maybe, hopefully, we can do this again sometime. We can go into those.
QUINN: But it’s sort of become a bit of a tradition, I guess, you know, starting tradition, me trying to emulate James Lipton of Inside the Actor’s Studio with some kind of quirky questions to get a glimpse of who you are. And if you’re willing, I’d like to ask you a few of those questions. And the first one on the list is, what is your favorite hobby or pastime?
MICHEL: Well, it’ll probably sound a little strange. I enjoy walking in the woods. So if I have a free hour, what I like to do is go for a walk, preferably in the woods, sometimes in the city, sometimes to a destination. But just hiking through the woods, it’s very calming and mind clearing for me. And it gets you back to nature and away from words. Lawyers live by words, and it’s a nice change from that. So it’s not very dramatic, not very sexy, but it’s very pleasing to me, it’s very restorative.
QUINN: Okay. Favorite sport?
QUINN: Favorite movie?
MICHEL: To Kill a Mockingbird.
QUINN: Favorite author?
MICHEL: Joseph Ellis, and all the other great popular historians who write about the founding of this country so skillfully. And the facts in their books I’m trying to read.
QUINN: Well, I think I know the answer to the next questions since we’re sitting in the Franklin Room here at the University Club. But who would you most like to meet, Benjamin Franklin, Thomas Edison, or the Wright Brothers? Or you can go off the board with another famous American inventor?
MICHEL: No, I’d like to meet Franklin, because Franklin did everything. He did science, he did politics and he did community organizing. He did insurance. He did fire department creation. He discovered all the basics in electricity. He was a diplomat. I mean, he was just the most astoundingly talented guy. And in addition to his scientific breakthrough observations and analysis, he became a leader of science. He got America taken seriously as a scientific, inventive, technological society and he was a totally self-made man. Washington and Jefferson were born with plantations and slaves and wealth and Madison, and many of the other leaders. And they were great, and it doesn’t take anything away from them. But Franklin was the first real American because he didn’t come from inherited wealth or privilege, he made it up as he went along. He educated himself and everything he achieved was because of effort and intelligence and creativity and maybe a little bit of luck. So to me Franklin was the first real American.
QUINN: He would have been my choice, by the way. Coolest invention of all time?
MICHEL: I think maybe the computer chip.
QUINN: Okay. Who is the best fictional inventor, Emmet Brown Back to the Future, Q from James Bond, Tony Stark from Iron Man, or the professor from Gilligan’s Island? And again, you can go off the board if you have another.
MICHEL: I have to chose the James Bond guy ‘cause I don’t even know who the others are. I’ve been so busy for the last several decades that I hardly ever see television or see a movie, or hardly even get to read a book unless it’s about law with a minor exception of some Early American history, which I’ve been able to read. But I look at movie listings, I’ve never heard of most of the actors. I don’t know who they are. I feel like somebody coming from another planet.
MICHEL: Maybe in retirement I’ll get to go to movies again and read some more books. And then I’ll know who some of these people are.
QUINN: Your favorite Sci-Fi visionary, Jules Verne, Gene Roddenberry, George Lucas, or H. G. Wells?
MICHEL: Jules Verne. I guess I’m old.
QUINN: And why? Because I would pick Jules Verne, too.
MICHEL: Because to me one of the big and best tests of something’s inherent value is this: how long does it last. Lots of things last for a year or a month or two years and then they fade right away. But Jules Verne’s writing has lasted and lasted and lasted, like Shakespeare; it’s the same thing. So that’s part of the reason for my fascination with Franklin, with Shakespeare, with Jules Verne, is that they’ve lasted so well.
QUINN: Now I’m a big Star Trek fan myself. And I think eventually maybe Gene Roddenberry could rival Jules Verne just because now it’s hard to pick up the science papers any more and not learn about people who are researching trying to bring Star Trek type technology to life. So maybe down the road he’ll be on that same kind of level. Which leads me to the next questions Star Trek or Star Wars?
MICHEL: (Laughter) I really can’t answer your question. I don’t know enough about either one.
QUINN: Okay, all right, fair enough. In my last interview I interviewed Nick Godici, former PTO director.
MICHEL: I know him well.
QUINN: And I started a little something new with him. I asked him to come up with a fun random question for whoever would be next, and I did not tell him who was gonna be next. And his question, and I’m going to paraphrase it here is, if you had the opportunity to take a Mulligan on something you had done in your life and call a do-over, what would it be and why?
MICHEL: Yeah, well, I actually would like to turn that upside-down. I’ve bungled some things in my life, and I’ve done some things that I’m not so proud of. But I actually think for most people the threat is not the bumbles that all of us inevitably commit here or there. The biggest problem is the missed opportunity. The thing one should have done that one didn’t have enough guts to do because it involved some risk or some uncertainty. So what I would tell a young person is this when you see an opportunity that looks attractive to you, take it. Whatever the risks are, take it because it will end up being productive for you and productive for the larger society and the risks will turn out to be manageable.
QUINN: Is there a certain risk that you didn’t take that today looking back you might think you should have?
MICHEL: No. There really isn’t. Because I had the benefit of deciding very early on that I wasn’t going to worry too much about making money. And as a result I got a kind of freedom and power out of that. So when the Watergate came up, I said yes because I wasn’t worried about the big salary I was going to give up leaving the big law firm, I wasn’t in the big law firm to begin with. So I don’t have a lot of regrets. But I think most people feel that they a couple of times they had a great opportunity to grab a great new golden ring, and they didn’t do it. For example, I have an uncle now long deceased, who was one of the main IP lawyers for IBM all through the 40s and 50s and 60s, and also for Westinghouse and other companies like that. And also anti-trust. Anti-trust and patent law were his two big things. And he was with Cravath in New York, and he was very successful and he was very widely respected, and he was a wonderful role model, and really the main reason I became a lawyer. But he had an opportunity at some point in his career, which was entirely at Cravath from the early 30s until he retired in the 70s, to go to work helping to run the University of Chicago. And likely because President Levy became Attorney General Levy he would have ended up in the high command in the Justice Department as well. And he didn’t take that opportunity. And I think he regretted it. So it’s not so much that I, I don’t know what you would say, chickened out, but I’ve heard so many stories from this uncle, his name is George Turner, and from many other people about some great adventures that were offered to them that they just couldn’t quite justify taking, and then missed it. But I pretty much took every risky chance there was.
QUINN: That’s what it seems like. And it’s all worked out very well for you.
MICHEL: It has, I’ve been very lucky because a lot of that is luck.
QUINN: The last question I have for you is without knowing who is next, what fun or random question would you have me ask that person?
MICHEL: Well, here’s my question. How do we incentivize talented lawyers to go where they can do the most good as opposed to only where they can make the most money? We need talented lawyers to go into government, some to stay, some to rotate in and out. We need talented lawyers to go into university work, corporate work, foundation work, think tank work. But it seems to me that the overwhelming majority of younger lawyers have bought what I think is kind of a phony formula, which is you should go where the big bucks are. And I think that’s exactly backwards. It’s backwards for the individual; it’s backwards for the overall society. There should be more people doing what you’re doing and fewer people at some huge law firm making a million dollars a year, but not really contributing to the welfare of the community, or their own self respect, their own satisfaction. I mean, I haven’t made money, but I don’t have any regrets. I’ve enjoyed every day of being a lawyer. It’s been a terrific adventure, it’s an ongoing adventure. So I think the big thing that is somehow for a lawyer, but it maybe applies to other professions, too. Maybe it’s the same thing is for doctors or accountants, or who knows. How do we avoid just being lemmings that follow the lure of the biggest bucks? I’ll go wherever the biggest bucks are. How do you get people to think differently from that, if they’re lawyers? Younger or older, but especially younger lawyers, but I think this is the biggest question in the legal profession now: how to get people to do what’s better for them and better for society, even if it doesn’t maximize salary?
QUINN: Okay, well, I will definitely ask it. And after we end the recording I’ll tell you who I think is next.
MICHEL: Okay. It might be totally inapplicable.
QUINN: No, no, no, that’s going to be a very enlightening answer. Well, thank you very much for taking your time.
MICHEL: You’re very welcome.
QUINN: I appreciate it.
MICHEL: Great questions. Lots of fun.
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About the Author
Gene Quinn is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.