Over the summer I had the opportunity to interview Chief Judge Michel on the record, but our conversation took on a life of its own and many of the topics I had hoped to cover wound up having to be cut due to time considerations. Chief Judge Michel graciously agreed to a second interview, which took place on September 24, 2010. In part 1 of this interview sequel, we discussed fee diversion at the USPTO, he gave an insiders view of the Senate confirmation process, discussed the confirmation process of Robert Bork and a federal judiciary that seems almost ignored by Congress. In part 2, which appears below, Chief Judge Michel and I talk about the Federal Circuit, focusing on the good decisions during his tenure on the Court, as well as a few he thought the Court got wrong, including a nearly unanimous en banc decision. We discuss inequitable conduct, his thoughts regarding the Supreme Court should be meddling with patent law so much, and what he tried to do as Chief Judge to bring the Court together and build a collegial working environment.
Part 3 of this interview will appear on Wednesday, October 27, 2010. In that final installment Chief Judge Michel explains what Federal Circuit Judges are looking for in the briefs, in oral argument and the characteristics of an attorney who is likely to find success at the Federal Circuit. Stay tuned!
QUINN: Okay. Not to get too bogged, because I think we could talk about this sort of thing for a very long time. But moving on, now you’re on the Federal Circuit. I know when I think I really hit a home run in an article I write, it tends to not get read quite as much. Maybe because it’s a little inside baseball-ish, I don’t know. But I have a sense, I think, of when I really write something that’s quite good. So I was thinking that maybe you have that same sort of sense. And if you were going to pick a writing sample or two out of the opinions that you authored, which ones would you think are the ones that you would like to be remembered by?
MICHEL: Well, I’m a little skeptical of the whole notion of legacies and which opinions are the best. The cases come in one at a time. A judge is duty-bound to try to decide each one on the facts, on the law, after careful study, do it promptly, do it carefully, explain the reasons, be candid, confront the evidence and the arguments and the authorities that push the other way and explain why you came out the way you did. I try to do that on a case-by-case basis. Certainly, it is true that some decisions have a broader imprint as a precedential matter than others.
I think one of the better decisions that I wrote, because there was a lot of thinking behind it, was back in ’96 having to do with claim construction, in a case called Vitronics. And of course the Bilski case is a significant case on eligibility for patenting. And certainly the Lucent case was a significant development in controlling and rationalizing the law of damages. So there are some examples of cases that I’m particularly pleased about. But case law changes, which is the strength of the system. So I don’t expect any of these to be some sort of monument that will go unchanged for decades or something like that, and it shouldn’t. But for the setting in which those cases arose, I think they made a good contribution.
QUINN: Now, on the other side, is there is a decision or two maybe that in retrospect maybe, not at the time but as sort of laws evolved that maybe you would look back and say, you know, maybe I wish we had done that a little differently?
MICHEL: There are some. The one that jumps to my mind is the Cybor decision. Cybor was a near unanimous decision that said that every aspect of claim construction was purely a legal issue and therefore, not only for the trial judge, not the jury, but more importantly, to be reviewed with no deference at all by the appellate court. I think that was a terrible mistake. I voted for it. I regret the vote. I think it was exactly backwards. I think that the truth is that in most cases the claim construction analysis has important factual components to it. And that therefore, there should be some deference. You can argue about exactly how much, or how to frame it or what to call it, but the idea that the Federal Circuit should ignore what the trial judge did and start from scratch reading a patent and looking at the testimony, and looking at the prior art, or whatever the other sources might be, and coming up with its own construction I think is the height of foolishness and it’s caused endless problems in the system. I think we could have differential review of claim construction and still fix the constructions that really need to be fixed. But the reversal rate would go down, the efficiency would go up, the cost would be less for the parties. The final result would come in sooner. Everybody would be better off. So if I could change a vote and have a very different opinion I think Cybor would be at the top of my list.
QUINN: It’s hard to know how bad it would impact the litigation, but I do think that there’s a sense that sometimes if the Markman hearing is later in the game and you lose the Markman hearing, that you might as well hang on and try to take it to the Federal Circuit where you’re gonna get another bite at the apple.
MICHEL: I think there are more appeals than there might otherwise be. They go on longer. There’s more of a reversal rate than I think there ought to be. And I think it’s a great shame. Inequitable conduct is another area where I’m very upset with the development of case law. One of the cases where I wrote the opinion that I’m pleased with was called Star Scientific, to try to put some sharp limits on the abuse of inequitable conduct. But I think that some of the other cases by other panels are very inconsistent with Star Scientific and it’s created confusion and uncertainty and unpredictability, all three of which are very bad for patent law particularly, and the Federal Circuit needs to clean up its act on inequitable conduct. They have a good opportunity to do that in the Therasense case being argued November 9th. But I’m very proud of the Star Scientific case. On the other hand, I’m not so proud of the Praxair case. And I think I was even on that panel. So maybe that’s another case that I’m not so happy with, in hindsight. Because I agree with the critics who say that inequitable conduct is pleaded way too often, litigated way too often. It’s an important part of the law. I think it should remain in the law. I’m against trying to utterly eliminate it from infringement litigation. But I do think it’s been vastly overused and abused, and that needs to be curbed by the court of appeals. And I hope that they’re going to do it this fall.
QUINN: One of the concerns that I have is is when inequitable conduct reaches the Federal Circuit, it’s always in a litigation context. So I wonder if the judges at the Federal Circuit give enough consideration given the presentation of the issues to what the impact is going to be at the Patent Office. Because it seems to me that so much feet dragging has resulted at the Patent Office as a result of the, I’ll call it sporadic inequitable conduct jurisprudence. Because the Patent Office would prefer us, and I’ve had people from the Patent Office tell me this over the years, it would prefer us to give them the best stuff that we know about. And if we do that, and we get the wrong panel down the road when the patent is a lucrative asset, then that could result in inequitable conduct because you didn’t give enough. So what winds up happening is a lot of attorneys will just give everything. The Patent Office obviously can’t look at everything. They get bogged down. And then it becomes this process where the examiner might have some very simple questions and you just really don’t want to answer them because anything you do say can and will be used against you later.
MICHEL: Yes. Well, I think that some Federal Circuit cases were very poorly thought through and had very bad downstream results, including patent prosecutors feeling, rightly or not, that they need to dump dozens and dozens and dozens of prior art references on the examiner. I think that’s extremely unfortunate, very counterproductive, doesn’t help anybody. And I think it’s true that sometimes judges operate in too much of a vacuum and don’t understand what the real world consequences are going to be. And that’s particularly true when very few of our judges have experience in prosecuting patents. A few do, but a relatively small percentage. And I think that those that haven’t should be very cautious where they’re meddling with the patent prosecution process. And I think some of those inequitable conduct cases have had very bad consequences and ought to be altered and ought to be corrected promptly. On the other hand, I think sometimes lawyers overreact. I think the law is very clear that you don’t need to provide any prior art that’s merely cumulative of the prior art you are providing. So let’s say there are five references that are the closest to the claimed invention. If you provide those five, even though there are another 500 that are in the field, I think the law protects you against saying you wrongly withheld the other 500 because if it’s reasonably clear that you gave the closest prior art, then you should be protected by the principle that cumulative prior art is not material, does not need to be provided. So I have to assign some blame to Federal Circuit judges. But I also question whether it’s really true that the prosecutors are forced to drown the examiner in excess references. It’s a little bit like the lawyers who say, well, yes, I raised five arguments that were half decent, and five more that were frivolous, but I had to raise the five frivolous arguments because otherwise I’ll be sued for malpractice by the client. And I just think that’s baloney, and that’s an excuse for lack of judgment and discipline. And so I think there’s probably blame to go around. But we can fix this. We can make adjustments. You know, judges and practitioners working together with Patent Office officials can make very significant improvements in this problem, and fairly quickly if we put our minds to it.
QUINN: Do you think that maybe some of this, the inequitable conduct development of the law is the result of what in law school we might have said bad people making bad law? You know, like a really egregious situation and a court wanting to punish that situation and then maybe that statement or statements from that case having unintended downstream consequences?
MICHEL: Well, I think it’s true that compelling facts tend to drive results. But there’s no reason why they need to drive the breadth of the precedent. If the facts of a particular case are horrible, but unusual, then the precedent should be confined to a case that’s equally horrible. But I think sometimes judges get carried away and write way more broadly than they should. And that’s a constant danger in appellate decision making. I like the common law system. And I think appellate review has a lot to contribute. But appellate judges have to be extremely self-disciplined to not write too broadly. And some do better at it than others.
QUINN: It would seem to me that that is something that the Supreme Court doesn’t do terribly well. At least in our space. And it seems that it’s left up to the district courts, and then to the Federal Circuit to figure out what is really meant by these broad statements. And maybe I can get your thoughts, and my thought is is that they just don’t seem to know enough about the collective body of patent law to know that when they say A, that that’s going to have consequences for X, Y, and Z.
MICHEL: I have a lot of trouble reading, understanding and following recent Supreme Court cases, like eBay and KSR and Bilski. Not only are there many vague statements in there, but there are many statements that look inconsistent to me with other statements in the very same opinion. And I agree with you that some of the statements shockingly suggest that the authoring Justice didn’t really understand all the critical elements of patent law that are part of the picture there. I was in Munich recently, and I appeared with a German judge and a Japanese judge talking about the doctrine of equivalents. The Japanese judge talked about a Japanese Supreme Court case from 1998 that only got fixed by a lower court judge this year. And in the interim there was total chaos in Japan, he said, in application of the doctrine of equivalents. When the German judge talked he pointed out that although he’s on the German Supreme Court, they have specialization within their court, and he’s part of the Tenth Senate which does all the IP cases, and only IP cases. And the only higher court in Germany is the so-called Constitutional Court, and it’s not allowed to hear patent cases. And therefore, it can’t overrule or tinker with the law developed by the German Supreme Courts Patent Senate. And with those two judges saying that, an American lawyer later asked me if there was any dream decision that I wish, if I were back on the court I could write. And then he explained that, if you could do anything, you know, not constrained by statutes or anything else. And I told him, yes, if I had magical powers as a judge on the federal circuit, I would arrange to have Federal Circuit patent decisions not reviewable anywhere else.
QUINN: Yes, I think that that would be a good start. One of the decisions that just befuddled me, and still does to this day is in the area of doctrine of equivalence. Where it seems to me, and I believe this was in the last Festo case, where the court basically said that in order to be entitled to the Doctrine of Equivalents, you have to demonstrate that at the time that the application was submitted the claim could not be foreseen. So that to me would suggest that then your written description at the time that you filed the application was defective because if you couldn’t foresee the claim that you’re now seeking, then doesn’t that mean that there’s a problem with the specification? Or at least the specification doesn’t provide support for that claim and you’re trying to capture. And it seemed to me, now, that’s a mental exercise you could take to the nth extreme. But it was a causal, off-handed statement that didn’t take into consideration anything, I think about 112, first paragraph. And that really bothers me.
MICHEL: Yes, I think that in every case there’s strong interplay between the different sections. 101, 102, 103, 112, both parts, and sometimes you read statements in Supreme Court opinions that seem to suggest that the justices maybe don’t understand that interplay, and that’s just one example of the difficulty. Look, the Supreme Court only hears patent cases at the rate of about one every other year. Take Bilski on 101. Nine Supreme Court justices, eight of them had never seen a 101 issue before in their entire time on the Supreme Court. Only Justice Stevens had ever seen a 101 issue before. Well, that shows the problem right there. The Federal Circuit has every issue under the sun come up again and again and again, month after month, year after year. So it has intense exposure to all these different issues and the interplay among all these different sections, and the Supreme Court doesn’t. And, frankly, I think the Supreme Court has often been misled by lawyers. For example, in eBay the Supreme Court was told that we had an “automatic” injunction rule, which was never the case. It was just absolutely false. In the KSR they were told that we had a “rigid” rule that didn’t allow any judgment, which was never the case. So in addition to their inexperience and unfamiliarity with patent law, they’re subject to being manipulated and misinformed by overstated claims by some advocates and they aren’t maybe as well equipped as Federal Circuit judges might be to know that the claim is baloney, that it’s really not a sound claim.
QUINN: Now, when you were Chief Judge at the Federal Circuit, it seemed like there was a time, and maybe this is just because of how long I’ve been practicing or whatever, but the largest chunk of my patent practice was with you as the chief. And it seemed that over those years there was some disagreement, some strong disagreement at times. Judge Rader and Judge Newman frequently dissented scenes, and sometimes quite strongly. How did you handle disagreements among the judges on the court, and how did you try and bring people together, if at all, to try and reach consensus decisions in important cases?
MICHEL: I think that dissents have a place. But it’s easy to overdo and overuse dissents. And use them inappropriately. I tried to make it a practice myself to never dissent if I could avoid dissenting. And if I did dissent, to try to do it very quickly and very calmly. And not to engage in sort of mud-slinging fights with other judges in public on paper. And I still feel very strongly that that’s the better approach. I tried to work behind the scenes to foster the maximum possible amount of consensus as opinions were developed, whether it was in a panel or en banc. But it’s a limited role because the judges are all independent, which on the whole is a good thing, and they don’t have to take any instructions from the chief judge. But I did try to encourage people to compromise and to talk. I’m a great believer in balance. Patent law is full of conflicting goals. And so if you go overboard to achieve one goal, you’re going to hurt one of the other goals. Not always, but quite often. So my idea is to try to get the optimal balance. So if any decision, whether it’s pro-patent or anti-patent is very extreme, then I’m always a little suspicious. Wait a minute, maybe this isn’t really the best thing to do. And so I try to point that out to colleagues. But I think the court has always in the 22 years I was on it, had a large core of people who were in the middle and who were focused on a balanced approach. And relatively few who wanted a more extreme approach in either direction. There have been some, but they’ve been a minority, and although the case law may have vacillated slightly from one era to another, I think there’s a large degree of consistency. And that comes from the stable center of the court. The majority of the judges are in the center and trying to be balanced, trying to listen to one another and not to do anything too extreme or too sudden. I think that usually they succeed.
QUINN: Well, I know you must tolerate disagreement pretty well. Because I know some of the stuff that I’ve written in the past hasn’t always been quite so flattering about some of your decisions. And yet, you seem to like me, and you seem to enjoy chatting with me. So I have a handful of questions. One, do you enjoy a heated debate. Two, as a judge were you aware of what commentators were saying, and if so, did you care at all or consider it? And finally, is it easier to handle any criticism knowing that it’s coming from others who are really passionately engaged in the issues?
MICHEL: Well, I think criticism is good in general, and I think it’s good for judges. Judges have so little oversight, you know, every year the Supreme Court would take one or two of our cases out of 800 we adjudicated. So almost always we were the final result. And maybe even only a two to one vote. So I think criticism’s very healthy. I don’t so much like the word “heated” criticism. If criticism is well informed, then I think it’s very worth weighing. And if criticism is well motivated I think it’s very worth weighing. And I think judges benefit from criticism, whether it’s in a law review article, or in a blog, or in a panel at a CLE meeting, or in any other fashion. We all have a lot to learn. Nobody has all the answers. I think there’s an idea that’s followed by some, you know, judges know everything and they should just tell everybody else what to do. But I think that’s a very silly naive notion. Judges are students of the law as well as teachers of the law. So I think the criticism was good. I don’t expect commentators to agree with me all the time. How could they when the litigators don’t. One side loses, they think the decision is terrible. Sometimes even the winning side is not very happy with the decision. So why should commentators always be happy? I will say that I’m much more inclined to credit commentary from practitioners. I think there is a sort of a style that’s in vogue in the academy which I would consider very impractical, very theoretical, and not of much help. So even though they’re exceptions. There are certain professors who I think have a lot to say and should be heard, respectfully. But I think a great many of the tenured patent professors live in sort of a never-never land of their own intellectual creation. And when they comment adversely on our decisions, I don’t think it’s entitled to very much weight. So a lot of it depends on is the commentary well informed, and is it from people who really know what they’re talking about, or is it from a very distant, impractical perspective? If you can’t take criticism you can’t be a federal judge. So it’s part of the temperament thing. And you have to keep learning, you know, whatever one knows on Day One, if you don’t keep learning your ability as a judge is going to steadily decline. If you can learn really well, your ability as a judge should steadily increase. Part of the learning is read the briefs, read memos by other colleagues. But part of it is to follow some of the commentary and keep thinking hard about it. And I tried to do that. I didn’t read everything, there wasn’t time to even begin to read most law reviews. I looked at some blogs. I didn’t try to cover the waterfront on blogs any more than law reviews. But I tried to keep hearing what different practitioners were saying and try to learn from it. I think that’s an important role in the overall process for commentary to be provided by informed people. Judges ought to pay attention to that. I spent a lot of time going to CLE meetings and bar meetings and so forth because I learned a lot from practitioners, and also professors, and people in industry and other players in the system. And I tried to encourage other judges to do that. And most of them do quite a lot of that. And also speak themselves.
QUINN: Now, when you’re Chief Judge, I know that you’re the leader of a number of other folks that also have life tenure. And maybe calling it the “leader” is a misnomer in ways, but could you tell us a little bit about what it is like to be chief and what your job was?
MICHEL: Well, actually, the Chief has no power at all other than over certain things like requesting money, spending money, and managing space and central staff. But each judge’s chambers is a separate little principality. The judge hires his own secretary, his own law clerks, totally controls them. The Chief Judge has zero impact over anything they do or don’t do, by and large. And of course, the Chief Judge only has one vote on a panel like everybody else, one vote in an en banc court. So basically the chief judge can only provide leadership by example, by setting a tone, by promoting collegial discussions among the judges and to try to maximize the potential for developing considerable consensus.
QUINN: And how did you go about doing that?
MICHEL: Well, I did a number of things. We had a nice tradition of having lunch together at least once a week, on Wednesdays. So I tried to always be there if I could and to report to the judges on things that had come to my attention that they might not know of. At the end of each argument week the following Monday I would try to have an informal coffee and invite all the judges to just come in. There was no agenda, off the record. But often interesting ideas came up, and sometimes those matured into new rules or new procedures. We have an advisory council of 16 members, and I tried to solicit their views on many things, both formally and informally. And their input was very helpful. But we also got input from the Federal Circuit Bar Association, which is very active and robust and constantly growing. So there’s a lot of assumption out there that chief judges are like the CEO or something, and have real power over their colleagues. The truth is exactly the opposite. The chief judge has almost no power over any colleague. On anything. And so it requires very careful handling in order to develop more cooperation, more efficiency. I tried very hard to get judges to complete old cases quickly. But there are limits to how hard you can push people. And so I tried to modulate that. But I worked hard on trying to increase the speed of decisions and to develop consensus on things. A lot of things that were very unpopular in the beginning later became widely accepted. I pushed hard to have a mediation program. All of the judges were against it in the beginning. And now they all like it. So it was a very gradual process. So part of leading was just continuing to raise things, and to try to help educate the judges about why some new program in the court might be beneficial. And then there are a lot of things you can do just with the infrastructure. For example, the computer systems were vastly, vastly upgraded. They’re ten times as good now as they were a decade ago. And that was something the chief really could do. Because I had considerable control over the expenditure of money, the hiring of people, the strategy for upgrading computer systems. And a lot of it is just getting appropriate resources. I worked like crazy to get adequate budgets from Congress. I went up and personally met with the staff at length every year, as well as submitting formal written testimony and budget documents and backup papers and all that. I worked very hard not only to get overall budget that was adequate, but particularly to get a fourth law clerk for every one of our judges. All the other circuit judges have had a fourth law clerk for years and years, and we needed one, too. And the Congress agreed. So those were ways in which the Chief could really help the court a lot. But in terms of decisions, every judge is an independent, every judge is his own island, his own boss. And it’s very hard to, except in the most subtle, careful ways. And mostly just by moral suasion and communication, and cajoling. You can’t boss anybody around when you’re talking about judges. And I didn’t try.