EDITOR’S NOTE: What appears below are the prepared remarks for “The Honorable Howard T. Markey Distinguished Lecture on Intellectual Property Law,” given by Don Dunner at the John Marshall Law School on November 12, 2010. In light of the recent announcement that Chief Judge Rader will be stepping down as Chief Judge, Dunner granted us permission to publish this piece.
The title of my lecture today is “The Evolution of Patent Jurisprudence … from Giles Rich to Howard Markey to Randall Rader.” Why, you might ask, am I restricting myself to these three jurists if my subject is “The Evolution of Patent Jurisprudence”? Why not start at the beginning, for example, and talk of Article I, Section 8, Clause 8 of the Constitution, or the first patent act in 1790, or the beginning of the patent examination system in 1836, or the patent writings of Judge Learned Hand.
Those of you who are familiar with my career will know the answer: My 55 year career in patent law spans almost exactly the judicial tenures of Judges Rich, Markey and Rader. I have been specially blessed with my extensive interactions with all three judges, not to mention numerous oral arguments that I have been privileged to make before them. And so it seemed to me appropriate to spend my time today sharing my recollections and thoughts about these three giants of the patent profession.
Giles Sutherland Rich
Fifty-four years ago, a lawyer in the prime of his career was appointed by President Eisenhower to serve as a judge on the Court of Customs and Patent Appeals (CCPA). Within weeks if not days of that appointment, then Chief Judge of the CCPA, Noble Johnson, chose as his sixth and last law clerk a second year law student. Giles Sutherland Rich was the new judge; I was the new law clerk. Little did I realize at the time that the new judge on the block was about to embark on a judicial odyssey that would extend just short of the 21st century and that would propel him into the rarified atmosphere occupied only by true giants of the profession.
Judge Rich was the first patent attorney ever appointed to the CCPA or any other Federal appellate court. While I wasn’t his law clerk, I spent two years interfacing with him and his law clerk, and that was the beginning of a close and wonderful relationship I had with him for 43 years … until he died at the age of 95 in 1999 — the oldest sitting active judge in the history of the federal judicial system. Since that was essentially the beginning of my career in patent law (except for a year in the PTO), it is fitting that my lecture should start with a discussion of his contribution to the patent law.
As you all know, Judge Rich was one of the two principal drafters of the Patent Act of 1952. While that act was characterized as a codification of the patent laws, it was anything but.
One of its key provisions was § 103 dealing with obviousness. Before the 1952 Act, the courts were all over the lot in dealing with patentable subject matter, and were anything but helpful in their analyses on that subject: An invention was an invention when it involved an inventive contribution. § 103 was designed to change all that, by focusing on obviousness to a POSITA at time of the invention. And so Judge Rich, as a drafter of this critical new language and as a consummate teacher, set out to educate his colleagues on the CCPA bench and, indirectly, his fellow jurists in the circuit courts (since they were still in the front lines of resolving district court patent disputes) on what patent law was really about.
And so — through his opinions and the many speeches and articles he wrote on the subject, Judge Rich set out — slowly but surely — to reeducate the patent world on the true gospel according to St. Giles. While it took a long time, and with the assistance of other judges who later joined him on the bench — both at the CCPA and the Federal Circuit — he ultimately succeeded beyond his wildest dreams.
Over the course of his 43 year career as a judge, Judge Rich authored 892 opinions, many of them in the patent field. A complete listing of them appears in the Federal Circuit Bar Journal (Vol. 9, No. 1 — 1999). A smaller list of his key patent decisions appears in the Journal of the Federal Circuit Historical Society (Vol. 3, 2009).
Some of these opinions were landmarks known to all of you; some were important but known only to old fogies such as me; all, however, contributed in some meaningful measure to the patent law.
Who among you, for example, does not know of the Chakrabarty and Bergy opinions, which held in favor of the patentability of life forms and opened the door to a flourishing biotechnology industry?
And who among you does not know of his State Street Bank opinion, which opened the door to the explosion of business method patents, although that holding was recently severely circumscribed by the Supreme Court in Bilski?
And most of you — at least those of you who practice in the chemical arts — should know of his Papesch holding, which held that a compound and its properties were inseparable for the purpose of evaluating the obviousness of the compound?
Judge Rich, as you know, continued to contribute to the patent law through the formation of the Federal Circuit in 1982 and beyond. Until his terminal illness in 1999, he never once missed a session of the CCPA or the Federal Circuit, and was lucid and on top of his game to the very end of his life. He was, in the view of many, the greatest of all the great patent jurists.
But he is not alone in his contributions to the evolution of patent law, a list of which would not be complete without a discussion of Howard Markey, the former Chief Judge of both the CCPA and the Federal Circuit and a former Dean of this Law School, and for whom this Lecture Series is named.
Howard T. Markey
Thirty-eight years ago I first heard that Howard Markey was to be nominated as Chief Judge of the Court of Customs and Patent Appeals. My immediate reaction — and that of all the members of the bar to whom I spoke — was … “Howard who?!”
It didn’t take long for me to discover the dimensions of this unknown person.
For not long after I first heard his name, I had the privilege of representing what was then the APLA at Judge Markey’s investiture. As I recall, I was the third speaker and was somewhat surprised and a bit disappointed when Chief Justice Burger passed my name without calling on me to speak.
I could see Judge Rich prodding Judge Markey to urge him to tell the Chief Justice that I had been passed up, but Judge Markey, in his first display of good judgment, was not about to tell the Chief Justice that he had slipped.
But what he did do — in his second display of good judgment — was to call me shortly thereafter — during my vacation at Martha’s Vineyard — to express his regrets that I had not delivered the two minute speech that I had labored hours to prepare and to promise that he would read it and make certain it was included in the formal transcript of the proceeding. This demonstration of extreme sensitivity was repeated by Judge Markey many times over the years.
But Judge Markey’s sensitivity is only a small aspect of the multidimensional giant that he was. Using his prodigious talent for leadership, he did more for the administration of justice in the eighteen years he led the CCPA and then the Federal Circuit than most judges could have done in careers spanning twice that time. Who else could have taken a court — the CCPA — with a 3 year average delay from filing to decision and convert it almost overnight to one with a 7-8 month average delay?
It is his Federal Circuit leadership, of course, for which Judge Markey will be most remembered, and it is therefore to that that I’d like to turn my attention.
But first, a bit of background.
Long before Howard Markey came upon the scene, consideration was given to the formation of a specialized patent court, and as often as the topic came up, it was met with hostility — mostly from the general bar but in significant part from the patent bar. This hostility was best summed up by Judge Simon Rifkind, Co-Chairman of President Lyndon Johnson’s Commission on the Patent System, delivered to the House of Representatives on April 26, 1967:
In my view, when you are dealing with a matter that concerns the general welfare of the United States, it is not wise to create a small group of men who become, like the Egyptian Priests, the sole custodians of a body of knowledge and who sooner or later begin to talk a language that nobody else understands but which is common only to them and the practitioners that appear before them and who drift away from those general principles of equity and morality, which pervade the entire judicial system.
The concept behind the Federal Circuit, which evolved about ten years later, was designed to respond to Judge Rifkind’s fears: the creation of a court with exclusive appellate patent jurisdiction but that was not specialized because it would be assigned cases from diverse segments of the law. This new court was, however, not without its significant detractors and it fell upon Howard Markey, as its first Chief Judge, to guide the court through the difficult challenges of a new institution and to make certain that the concerns of the court’s detractors were not realized. While Chief Judge Markey was not alone in this efforts, his leadership proved to be up to the challenge.
As a new court, by way of example, the court needed precedent to guide it and the many new lower tribunals whose appeals went to the Federal Circuit. And so the court issued as its first opinion in South Corp. v. United States, 690 F.2d 1368 (Fed. Cir. 1982), in which the court adopted as precedent all the holdings of the CCPA and the Claims Court, the two courts that had merged to form the Federal Circuit.
To supplement these instant precedents and provide prompt guidance to the district courts from which the bulk of the patent appeals were to come, the court issued patent opinions which not only decided the conflicts at hand but which were supplemented with long tutorials on the patent issues that were involved.
And in order to satisfy his passion to establish his court as a truly national court in the mainsteam of the law, he reached out to judges from other courts, getting them involved in the highly successful judicial conferences that had begun with his Chief Judgeship of the CCPA and inviting many of them to sit with and hear and decide cases with him and his colleagues in the Federal Circuit.
And by way of reciprocation, in addition to the over 5000 cases on which he sat and the 800 or so opinions he wrote for the Federal Circuit, he sat with every other Federal Circuit Court, participating in an additional 1400 cases and writing 250 additional opinions in diverse fields of law.
During his eight year tenure as Chief Judge of the Federal Circuit, the bar had an opportunity to evaluate whether the concerns of Judge Rifkind and the opponents of the proposal to form a new Federal Circuit court had come to be realized. While the view was not universal, it is fair to say that the overwhelming majority of the bar felt the experiment to be a huge success, given the high caliber of judicial appointments to the court, its relative balance between what some might regard as pro and anti patent holdings, and its fulfilling to a great extent its goal of bringing uniformity and predictability to the patent law. And, needless to say, Judge Markey was a significant contributor to this achievement.
As most of you know, Judge Markey supplemented his sensitivity and unparalleled leadership capabilities with legendary energy and a strong intellect to match it. His opinions, which he generated by the ton both in his courts and in all the other judicial circuits, were invariably thoroughly well written and reasoned, and filled with the alliterations which were his trademark, as witnessed by his characterization of conduct, which he properly condemned as an abuse of the judicial process, as a “singularly sanctionable sojourn among the hallowed halls of justice,” as the “pestiferous pestilence that led to a rule 11 sanction,” and as a “disabling disease of deceit that the court must act to expunge.” Pac-Tec Inc. v. Amerace Corp., 903 F.2d 796 (Fed. Cir. 1990).
Randall R. Rader
Which leads me to the third participant in this evolution: Randall R. Rader, known to many as “Randy.”
Judge Rader assumed the Chief Judgeship of the Federal Circuit on June 1 of this year. While he has sat with the Federal Circuit since 1990, his full impact on the evolution of the patent law is yet to be realized. There are, however, some meaningful observations that can be made today.
I think all will agree that Chief Judge Markey put the Federal Circuit on the national map, making it a formidable force known to most all if not all jurists in the federal system. I fully expect, however, that Chief Judge Rader will take the court’s evolution one step further and make the Federal Circuit a truly international court, known the world over. Indeed, he has already taken giant strides in that direction, as noted by the following exemplary achievements since he was elevated to the Federal Circuit bench:
- Interaction with representatives of other countries, influencing the content of their patent laws and the establishment of specialized IP courts modeled in part on the Federal Circuit.
- Assisting in the organization of the India Project outreach of the George Washington University Law School to India, which has influenced India’s new IP laws over a 10 year period.
- Keynoting both the EPO judges conference and the EP Law Institute with a view toward setting up a European Federal Circuit.
An essential aspect of Chief Judge Rader’s success in the international arena is, of course, his absolute passion for teaching. His two classes at George Washington University Law School are as popular as can be. He has also taught regular IP courses in Tokyo, Munich and Taipei. He has assisted in establishing the Munich Intellectual Property Law Center in conjunction with the George Washington University Law School and the Max Planck Institute, which has educated 30 top students a year for the last 8 years. He has set up IP study centers at Peking University in Beijing and at Tongji University in Shanghai. And he is no less popular in spreading his enthusiasm for his court and the patent system to anyone on the face of the globe willing to listen to him, and has many takers.
Indeed, it is fair to say that Chief Judge Rader is everywhere. Some years ago, I delivered a lecture in Kiev, in the Ukraine, and who was sitting in the audience but Judge Rader. On a trip back from Europe, my wife and I were sitting in the United Lounge at Heathrow Airport in London and who plopped down beside us but Judge Rader, returning from one of his many jaunts around the world. In short, I know of no judge, and certainly no Federal Circuit judge, who has traveled more widely, has met and interacted with more of his foreign counterpart judges, and has done more to put the Federal Circuit on the international map than Chief Judge Rader.
But Chief Judge Rader’s accomplishments are not restricted to his world travels. In his 20 years on the Federal Circuit, he has authored countless opinions of note. His dissent in Bilski was a gem. He has made clear his views on the need for inequitable conduct law reform, no doubt contributing significantly to the recent en banc rehearing in Therasense. He has a passion for damages issues and has authored numerous important opinions on that subject. He has sat by designation in a number of district courts around the country, educating himself in the process on the nuances of patent jury trials, an exercise that cannot help but make him a better appellate judge.
In short, there is every prospect that Chief Judge Rader will continue the successful evolution of the patent law so ably carried out by his fellow giants in the law, Giles Sutherland Rich and Howard T. Markey. And we and the patent system will be their grateful beneficiaries.