I Dissent: The Federal Circuit’s ‘Great Dissenter,’ Her Influence on the Patent Dialogue, and Why It Matters

Judge Pauline Newman of the United States Court of Appeals for the Federal Circuit, October 2015 at the AIPLA annual meeting.

Judge Pauline Newman of the United States Court of Appeals for the Federal Circuit, October 2015 at the AIPLA annual meeting.

Historically, most dissents have not mattered. Those who are concerned with the rules of the road have looked to the majority opinions, which after all are “the law.” Moreover, with the explosion of patent litigation today, there is less time for consideration of dissents even for those interested.

However, this is not to say that dissents should not matter. Judging is an imperfect art. Courts are often under time constraints and must decide cases with little ability to consider the impact of their decisions fully. In some cases, the “correct” ruling might prove particularly elusive.

Even when an issue is fully canvassed and the dissenting judges’ battle for the majority vote is lost, the dissent creates a record of what can be a very important dialogue. That dialogue might lead yesterday’s dissent to become tomorrow’s law.

Over the years, we have come to recognize some of our judges as “great dissenters.” Holmes and Brandeis easily come to the mind. In patent law, there is another candidate for this title.

Judge Pauline Newman has been on the Court of Appeals for the Federal Circuit for over thirty years. For many of those years, she was one of the leaders on the court and in sync with other leaders such as Judge Giles Rich. This was in part aided by the fact that Judge Newman spent thirty years prior to becoming a judge as a patent attorney and played a role in the court’s early formation. She was part of the patent committee of the Domestic Policy Review, formed by President Carter, which reviewed the issue of patent adjudication.

Today, Judge Newman is the Federal Circuit’s most prolific dissenter, and her dissents are important. Former Chief Judge Paul Michel noted that “Judge Newman may hold the record for the most dissents.  But her dissents have great force and often persuade other colleagues over time.” Judge Kimberly Moore concurred, saying “[w]hat people may not realize is that many of her dissents have later gone on to become the law—either the en banc law from our court or spoken on high from the Supremes.” She noted that “Merck v. Integra comes to mind. It’s a case where she wrote a very strong dissent. The Supreme Court took it and not only changed the state of the law to reflect what she had written, but they cited her outright in the opinion.”

According to Judge Newman, “the formalized expression of contrary views is part of a jurisprudential culture, and may advance and clarify the law.” She explained that she dissents when she thinks the majority is wrong without regard to the composition of the panel. She sees her job as a judge as an obligation to reach the right decision and to speak out if that has not been achieved. She is uninterested in leaving a legacy: “My concern is to get things right in the present.”

The group of pioneers that steered the Federal Circuit judges through its formative years attempted to hardwire into its jurisprudence rules that addressed the arbitrary treatment of patents by regional courts of appeal. Those pioneers shared a largely uniform view on the value of patents and the role patent law should play in furthering innovation. Judge Newman’s dissents reveal the consistency and coherence of her judicial philosophy and a sincere commitment to the mission of the Federal Circuit to promote innovation. The same philosophy that adheres strictly to statutory intent also compels her dissents to alert stakeholders when her colleagues have departed from it over the years. As a new generation of judges continues to fill the last seats left by these pioneers, it becomes more important than ever to study the reasoning behind Judge Newman’s dissents, and if necessary, to reconsider the reasoning of the decisions in which those dissents have appeared.

Many of Judge Newman’s dissents concern validity issues, especially on issues of novelty and nonobviousness. Other dissents argue that district courts should be given more discretion than the majority sometimes allows, a view that the Supreme Court has vindicated. Judge Newman has also been concerned about the manner in which the Federal Circuit has, at times, restricted the doctrine of equivalents and expanded the defense of inequitable conduct to the detriment of patentees. In recent years, her dissents have reflected the evolving nature of the court’s docket, including the relationship between the Patent Trial and Appeal Board (PTAB), an administrative tribunal within the United States Patent and Trademark Office (USPTO), and the courts.

Judge Newman dissents most often in cases involving the chemical and biopharma industries. Graduating in 1947 as a double major in chemistry and philosophy, she went on to obtain an M.A. in pure science from Columbia University in 1948. Initially, she sought to be a physician, but changed her mind and enrolled at Yale where she obtained a Ph.D. in physical organic chemistry in 1952.

She corrects the majority on the science, because “[she] believed, as a lawyer in the private sector observing decisions in patent cases, that not all judges understood the ways of technologists, or investors, or the workings of the patent system.” She noted that “there appears to have been a failure of the ‘two cultures’ of law and science to understand each other.” As she stated “[t]oday we cannot afford this gap, for scientific and technologic issues, underlie large segments of modern jurisprudence, as well as of our economy.”

Beyond scientific knowledge, Judge Newman seeks to ensure that the court’s errors do not prejudice the commercialization of patented technology. She noted that “[i]n today’s technology-based commerce, rational economics requires that the patent provides a reliable basis for investment.”

Judge Newman’s dissents have enriched the patent dialogue at the Federal Circuit. A few have succeeded in gaining traction with the Supreme Court, with her colleagues, and with academics. Others are pitched to a key for a future court and a true measure of their influence lies in the hands of history. All have become part of its institutional memory, and they provide a roadmap of the issues where she saw room for course correction. As is fitting, the final words on her dissents are hers:

Our differences of opinion are, I believe, healthy, and necessary. They weigh against the risks of complacency and disaffection envisioned by opponents of the formation of the Federal Circuit . . . I do not profess objectivity in my assessment of the Federal Circuit. I believe that the fears of the opponents have not been realized; and my hopes as a proponent are being met. This alone cautions against complacency. Justice Holmes said that the inevitable comes to pass only through effort. We are committed to that effort.

The Author

Professor Daryl Lim

Professor Daryl Lim is the Director of the John Marshall Law School’s Center for Intellectual Property, Information and Privacy Law, which ranked among the countries best Intellectual Property law programs according to the 2017 U.S. News & World Report’s “Best Graduate Schools” listing. Professor Lim lectures courses on intellectual property and antitrust at John Marshall Law School. Professor Lim received his law degrees from Stanford Law School and the National University of Singapore, and a degree in economics and management from the University of London (London School of Economics). His work was cited to the Supreme Court by opposing parties in a 2015 patent case.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

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There are currently 11 Comments comments. Join the discussion.

  1. Bemused May 11, 2017 7:27 am

    Judge Newman is a treasure. I wish we had another five of her on the CAFC. Inevitably, she will retire and its very sad (frightening?) to contemplate a CAFC without that brilliant jurist on the bench.

  2. Night Writer May 11, 2017 8:00 am

    Newman is great. She is a good person too.

    Let’s compare: Newman v. Renya. Newman many years of patent experience and many years of scientific training. Renya no years of patent experience and no years of scientific training.

    Renya likely pledged to burn the patent system down for his appoint. And he behaves little better than a common criminal on the CAFC. He was selected by Google to burn it down.

    So, we have Newman a respected an honorable jurist vs. a common criminal that was selected by a company to burn the system down. There are other Google judges.

  3. EG May 11, 2017 9:22 am

    Judge Newman will forever remain to me The Grand Dame of the Federal Circuit. God Bless her for her willingness to rightly chastise her “colleagues” (as she calls them) in her dissents. Most significantly, she even got the en banc Federal Circuit (10-0) in Limelight to pretty much adopt her view that infringement under 271(a) could involve more than one actor.

  4. David May 11, 2017 9:29 am

    That’s nice that she dissents, but the CAFC is still woefully overpowered. That power is better diffused among the regional circuits.

  5. Anon May 11, 2017 10:23 am

    David,

    I here what you are saying and cannot agree.

    Even as errant as the CAFC has become with the habit of being firehosed by the Supreme Court, I cannot see how “change for change sake” with a reversion back to a system also shown to have failed is a viable answer.

    There is a reason why the CAFC was created and we changed from that which you – without more – want to return to.

    Until I can see reasoning for returning (other than the current system is a failure), the item being offered as what to return to does not cut it for me.

    I remain then, fixed on the notion that I have advocated that as a part of Congress acting under its proper Constitutional power to employ jurisdiction stripping of the Supreme Court (removing the non-original jurisdiction of patent appeals), and at the same time recreate an (untainted) new special patent Article III court (to preserve the actual judicial review holding of Marbury).

    It is not the idea of the CAFC that has run into problems, but rather the execution and the infection from above that has wrecked the CAFC.

  6. David May 11, 2017 10:48 am

    When a court stops calling balls and strikes fairly, it loses its consent to govern. In the case of the CAFC, the consolidation of power has elevated politics above jurisprudence. You don’t solve the problem by creating another powerful patent court. You solve it by diffusing the power among the circuits.

    Where diffused, 9th circuit judges might be less inclined to do something insane like “give free rein to the PTAB to construe claim terms in a way not briefed,” when they knows 4th circuit judges will likely do the opposite. Circuits splits lead to SCOTUS review, forcing the circuit judges to more closely adhere to the written law.

    The CAFC conversely doesn’t have to deal with the circuit split problem, and its untethered rulings reflect that.

  7. Night Writer May 11, 2017 11:52 am

    @6 David

    “the consolidation of power has elevated politics above jurisprudence”

    This is absolutely right. And all the evidence is that Google selected the judges for Obama. And I am sure there was a call to each of the future judges that went something like so do you agree we need to get those patents under control? Yes sir/madam, if I get appointed I pledge to get the patent system under control. And if they didn’t pledge, then no appointment. And that pledge wears on a person’s mind.

    We need to wipe it clean. Stoll is perhaps the worst. She was supposed to be a replacement for Rader and what we got was a person with a very low ethical and moral quality that undoubtedly agreed to burn the system down in exchange for her appointment.

    Get rid of the CAFC and those Google judges.

  8. Anon May 11, 2017 12:22 pm

    David,

    Sorry but your reply is not responsive. I asked you to provide some cogent reasoning as to returning to a situation that had itself proved to be a problem.

    Bemoaning the current situation, and then adding an unsubstantiated claim (which ignores the historical context and points that I provided), just does not move me.

    At all.

    Further, there is a problem in your “diffusion” position, Any time you have such diffusion (with no other changes), you have accomplished nothing because that diffusions does not and will not settle the law (you actually invite more forum shopping, by the way) and then you STILL need to bump the issues “upward” to a body that is not diffused and that will STILL have the power that forms the kernel of the problem as you have defined it. You seem to want to offer SCOTUS as some type of final “righteous” guardian when they have been one of the main problems all along. If you want to talk about untethered rulings reflecting that – start there.

    You simply have moved a lot of deck chairs, but the deck chairs are all still on the Titanic.

  9. Night Writer May 11, 2017 12:38 pm

    @8 Anon

    You did not address the fact that the CAFC enables companies like Google to target narrow issues whereas for the other circuits you really cannot do that.

  10. Anon May 11, 2017 1:49 pm

    Night Writer @ 8,

    My quest to remove the Supreme Court and its undue (patents are e v i l) influence on the Article III court set up by Congress to bring order to the fractured and jurisdiction shopping riddled state of affairs does not directly deal with undue influence from the likes of Google – that much is true.

    However, I was aiming for a working court system that is not too far removed from all of the court systems that this country has known.

    I would also add that the problem that you identify is bigger than merely the CAFC and thus would require a bigger solution – outside of what I have advanced.

    In order to pursue that line of improvement, I would advise Congress to explicitly overrule Citizen’s United and put into place proper controls of the juristic person known as corporations (including a deeper sense of what “being a citizen” entails – and requiring any corporation wanting to be a juristic person, or have the benefits of such, be required to also be responsive to what every other citizen of this country is responsive to (in the sense of patriotism, taxes, and the like).

    Lastly, I would take issue with your view that “other circuits you really cannot do that.”

    Such is not only not correct, it is also not necessary. All that you would need to do is capture a single local circuit. Anyone looking at the biases evident from one circuit to another will quickly realize that “diffusion” provides no actual protection (in addition to the problem remaining that to obtain any settled law, one would STILL have to bump the issues “upward” and into the very type of problem being sought to be corrected with “diffusion.”

    May I note explicitly that it is a rather powerful admission of defeat to have an argument that depends on the Supreme Court as your paragon of objectivity – especially in regards to patent law.

  11. Night Writer May 11, 2017 8:19 pm

    @10 Anon

    Good points. A “powerful admission of defeat” is certainly how I feel about patent law. I feel like this is trench warfare and each year we are moved back some miles and set up new trenches and optimistically talk of charging their trenches only to have to pull back the next year.

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