Personally I think there are plenty of cases that the Federal Circuit gets wrong and should be taken by the Supreme Court to get things correct. But that is now what the Supreme Court does. They are looking for meaty issues, not just to get some esoteric point of patent law correct. In fact, it is my observation that the more esoteric and the more incorrect the Federal Circuit the less likely the Supreme Court will get involved. But that is just my view from the sidelines.
Waxman, steeped in the rules, procedures and art of Supreme Court advocacy drills down deeper.
WAXMAN: Well, I think it’s a combination of several different things. When you’re talking about patent decisions of the Federal Circuit, for purposes of answering this question it’s useful to distinguish between rulings about litigation procedure in patent cases and rulings about the meaning of substantive patent law. With respect to the former, it’s easy to see why the Supreme Court’s interest would be piqued if a petitioner says, as it did for example in Medimmune, “there’s a general rule that applies across all the regional circuits with respect to standing in declaratory judgment actions. But the Federal Circuit applies a different rule in patent cases.” That is just the kind of disuniformity the Supreme Court is looking for. It’s proverbial “split in the circuits” that the Court feels it needs to address — where a particular law or set of procedures is being interpreted or applied differently in one part of the country than another.
The paradigmatic role of the Supreme Court is to harmonize the application of federal law across the country. So when different circuits are at loggerheads about what a particular law means, or how a particular doctrine is applied, only the Supreme Court can resolve it. Several of the cases the Supreme Court has taken from the Federal Circuit in recent years have involved procedures sanction by the Federl Circuit that ddidn’t strike the Supreme Court as warranted a patent-exceptional. The declaratory judgment standard was one obvious example.
Another was the eBay case, involving the standrds for injunctive relief was another. The other packet of cases are cases that annunciate substantive patent principles. The test for obviousness. The standard of review when one is challenging patent validity based on art that the examiner never had, arguably never had before him or her. Subject matter eligibility for new life forms, or software, or things like that. And there I think the Court is taking cases where it genuinely is skeptical about whether the Federal Circuit has decided the issue correctly. And you can say that the Federal Circuit is sort of unique in this regard because by and large the Supreme Court doesn’t view its role, surprisingly, as one of error correction. It’s not grounds for certiorari on the grounds that the 4th circuit, the 8th circuit, or the 9th circuit just decided it’s wrong. They are looking principally for cases in which the Supreme Court is the only court that can resolve a lack of uniformity across the country.
With respect to substantive patent law, obviously that never applies because the Federal Circuit has exclusive jurisdiction so that there’s rarely an instance, maybe Coronado vs. Holmes might be some sort of example to the contrary, but there rarely is a split in the Circuits over the standard for determining obviousness with respect to a patent because no other court of appeals is ever going to answer that question. And therefore it’s appropriate for the Supreme Court of the United States to assure itself that in fact the Federal Circuit, which has specialized jurisdiction, is in fact answering significant questions of patent doctrine in a way that the majority of the Supreme Court thinks is correct. And that certainly characterizes a number of patent cases that the Supreme Court has taken in recent years.
The other thing I think that’s at play here, and maybe it’s the principal reason is a point that I made earlier which is our economy depends utterly on intellectual property. That is in fostering innovation and inventiveness in the manner in which the framers of the Constitution understood needed to be fostered. That is within appropriately countered system of protections for discoveries and inventions and novel expression. But that doesn’t smother innovation by competitors and by others. And because our economy is so utterly tied to intellectual property the Supreme Court correctly understands that this is a substantive area in which it is very, very important for the correct balance to be struck.
And I think the final reason for the increase in the cases is maybe the same reason that I’m attracted to doing cases like this, which is they are just darn interesting as an intellectual matter. You get to learn about a technology that you don’t know as much about as you need to to decide a case. And you get to learn and scrutinize and question the contours of substantive legal doctrine that you’re not otherwise familiar with. I don’t know how comforting that is the Patent Bar.
QUINN: That’s what I was just going to say. And I would agree with what you say, but to hear you articulate it just makes me want to sigh and say that’s exactly why I’m scared when the Supreme Court takes a case, because I understand when you look at this globally, why should patents be different? And the argument that I always hear is is well, copyrights are an exclusive right and you’re doing it different from copyright law. But for better or for worse since practically the beginning of intellectual property law in the United States, copyrights have been different than patents. They’re calling them an exclusive right is almost comical because there are so many ways that you can use a copyright that directly infringes, that copies the entirety of what you’re doing that is okay. And it’s not exclusive. Fair use swallows these rights whole in a lot of cases. And there is no concept of fair use in patent matters. But how do you lay the foundation to explain that, no, these things are different? When you can’t get an injunction as a matter of right after you’ve won, then what good is the patent because the patent is supposed to be practically an injunction when the Patent Office gives it to you. It says, don’t do this stuff and if you do you’re going to get punished.
WAXMAN: You’re certainly preaching to the choir on this issue.
QUINN: I know I am.
WAXMAN: But I think you’ve identified something that’s actually quite important. Which is in an era in which the Supreme Court is increasingly interested in the contours of patent law and practice. And in which therefore most of the judges on the Federal Circuit are trying very hard to decide cases and write their opinions so that they are accessible by the Supreme Court of the United States and are written in a manner that’s sensitive to the reality that they are subject to review by not just a higher court by a court of generalists. It’s extremely important for advocates before the Federal Circuit in anything other than the run of the mill claim construction dispute to advocate the case in a way that is sensitive to the way that whatever issues that are going to be decided may look to the Supreme Court, may look to Congress, may look to generalists generally. And I think many of the Federal Circuit judges welcome help in this regard, welcome advocacy that’s sensitive to this new reality. And which in the end may be all to the good. That is having a clubby isolated bar and bench that understands all these things and the advocacy is pitched to specialists and the specialists write opinions that are intelligible to and useful for the cognoscenti is fine if you fell in that cone. But if you’re not, it’s not that helpful and in a system in which the final review in the judiciary or in the legislator is made by generalists it’s really important that cases be— even in a specialized area, be briefed and argued in a way that’s accessible to and intelligible by generalists. And it may be another reason why it seems particularly edifying to me to be a resolute generalist as to all areas of the law. And makes it less intimidating to argue patent cases before a specialized court.
TO BE CONTINUED…