Judge Michel Speaks on the Future of the Federal Circuit

Chief Judge Michel, CAFC (ret.)

This is the third and final installment of my recent interview with former Federal Circuit Chief Judge Paul Michel. In this installment of the interview we discuss the future of the Federal Circuit now that Judge Rader is a private citizen. We discuss the type of candidate that should be appointed to replace him, and the always concerning panel dependency.

To begin reading from the beginning of the interview please see Judge Michel Says Alice ‘will create total chaos.’

QUINN: So now we still have one topic still to discuss. Perhaps, if you have the time, we could talk about the Federal Circuit. I don’t want to get into any of the touchy subjects, which some people are diving into. I’m more interesting in talking about moving forward, you know, Judge Rader is now a private citizen and he was clearly one of the champions of the patent system and a believer in the power and the importance of patents. And now he’s not on the Court any more. I wonder what that’s going to mean moving forward. I wonder— and then I can’t help but wonder about panel dependency, which is a problem that a lot of people talk about. And particularly in light of the fact that the Supreme Court has remanded Ultramercial to the Federal Circuit. And Judge Rader was on that panel. So you already have people talking about whether that outcome in what could be a very important case will become panel dependent.

MICHEL: Right. Well, first of all I think Judge Rader will continue to play a very constructive role as a vocal spokesman now in the private citizen realm. And in fact being a private citizen he can be much more frank and candid than he was able to be as a sitting judge. So his voice may get even more interesting and even louder as a part of the overall debate. His replacement will be very important. So just as people are focused on is Phil Johnson going to become the new patent director, will he get nominated, can he get confirmed, how will he do? All those interesting very important questions, people should also be asking who will replace Judge Rader? Who will get nominated, can that person get confirmed, can they get confirmed as fast as they need to get confirmed so the Court is at full strength?

It seems to me obvious that the replacement for Rader needs to be a patent star and not a non-patent person. I was a non-patent person. There are lots on the court. I’m not against that. I think having diversity on the Court is good in terms of their pre-appointment backgrounds. But the next appointment ought to be a super star patent lawyer with very broad experience. Somebody who’s done litigation, who’s done corporate work, who’s done prosecution, who’s got a real scientific engineering background, who’s got a registration number as we say in the field. And I certainly hope the Administration will make a nomination fast of just such a person. I think that’s very important. Now on panel dependency I think it is a problem on the Court. I think that it’s related to the problem that the Court doesn’t necessarily speak with one voice. Which is unfortunate.

I have to compliment the Supreme Court for being unanimous on so many of the recent patent cases. I would like to see the Federal Circuit be unanimous, or at least near unanimous much more often than it is especially in en banc cases. But even in panel cases because dissonance and cacophony doesn’t help anybody. So I’m hoping and expecting that newly installed Chief Judge Sharon Prost will in various ways be able to encourage colleagues to come together and speak more clearly, more coherently, more consistently, with more of a unified voice. Again, at the panel level and en banc I think she has the personality for that. She’s very widely respected and liked by all of the active and senior judges as well as the patent community in general. Of course not everybody’s going to agree with opinion she’s ever written, and every judge fails that test. But I think she is widely respected and I think she has just the right personality for the court to be in a phase of getting consolidated, getting calmed down, getting over some of the internal fights, becoming more collegial, becoming more respectful of one another, working together as a team, trying to help the profession, the larger patent system by speaking carefully and clearly and with a lot of unity.

So if my prediction is right panel dependency will go down. If the appointment is good panel dependency will go down. And as the six new judges mature panel dependency should go down. And carefulness and competence and deep insight should go up. Because whatever their background was before they went on the court, they’ve learned every single more day more patent law, more patent reality, more patent procedure, more about patent prosecution, more about technology so they get better and better and better. They have a wonderful advantage that they do patent law every day. The Supreme Court does two days a year or something like that. So the exposure, the emersion of Federal Circuit judges is probably a thousand times greater than Supreme Court justices get a chance to have. So I am very hopeful that the six new judges will get better and better and better than they already may be and that the new chief will help that process along.

I feel pretty confident about the Federal Circuit becoming an even better tribunal. I’m aghast at the suggestions that are made in some blogs that the Federal Circuit be abolished. The idea that you need more so-called percolation by having different appellate courts take different views on patent laws is completely crazy in my opinion. There’s plenty of percolation just within the Federal Circuit and the Supreme Court doesn’t seem to have the slightly problem identifying cases where they feel that corrections are needed. Look, I don’t think the Federal Circuit’s perfect. I’m glad there is a Supreme Court. And whether I agree with Alice or don’t agree with Alice or love KSR or didn’t love KSR is really beside the point. Every power center needs some supervision over them. In the case of the Congress it’s the voters. In the case of the court it’s the Supreme Court, or a higher court in the hierarchy. And I think that’s all well and good. So the Federal Circuit isn’t perfect but I think it’s a very good court. I think it’s been a huge improvement over the chaos of before 1982 and the various regional circuits. And so I hope we don’t over correct by getting rid of the Federal Circuit.


QUINN: I couldn’t imagine that. We have all these different regional circuits with different ideas of what is patent eligible and what is novel and non-obvious and in today’s day and age where we have really a global economy not even a national economy. Even when we just had a national economy a generation or two ago it was very difficult when patent law was left to the regional circuits. But now we’re well beyond that.

MICHEL: Look, in a broader scheme of how courts can be made to function optimally in modern society, modern society is highly specialized. That’s just the reality of it. Now we in this country for 250 years have had a tradition of generalist judges and I think for the most part it’s a pretty good tradition. But it needs to have important exceptions because in some areas you need more specialized adjudication. You need a specialized or somewhat specialized adjudicators and patent law’s a perfect example. There are other areas, too.

QUINN: But that’s why a lot of folks think that maybe the Supreme Court shouldn’t even be involved.

MICHEL: Well, you know in Germany just to make a comparison, the Supreme Court equivalent, the Constitutional Court of Germany has no jurisdiction over patent cases. So there’s a specialized appellate court in Karlsruhe when its patent specialists rule on a patent related matter that’s the end. It doesn’t go to the Constitutional Court precisely because they are generalist judges focusing on the constitution as for the most part our Supreme Court does. It has other duties, too, to interpret federal statutes and so forth, but it’s mainly a constitutional court, I would say. So there are systems where the specialist judges have the last word. And that’s largely true in Japan as a practical matter. It’s largely true in England as a practical matter but not as a formal structural matter.

QUINN: Well, isn’t it true that in the U.S. it was as a practical matter for a very long time?

MICHEL: Well, I think the Supreme Court needs to be very careful and discriminating in the cases in which it takes certain. And I think some of its choices have not really been very wise. Part of this probably is because the choices are so heavily influenced by the law clerks and the law clerks seldom know much of anything about patent law or patent realities. So that makes it maybe rather difficult to make a good selection. So my only, if I were at the Supreme Court, which of course I’m not, I would try to make sure that the selections are very carefully done and very careful winnowing is done of potential patent cases to take. And I also think having taken so many, what are they—five, six patent cases in the last few months? Maybe it’s time for a breather. Maybe there should be a time out for a couple years for the most part and not grant a lot of certs or maybe any certs and let the Federal Circuit deal with working out the details of these new innovations engineered by the Supreme Court. And then at some later date if there is a need the Supreme Court can get back in the act. It always has the potential. But I think now is time for working out the details, consolidate things, map out the territory so all the players and lower adjudicators know what to do. Right now we’ve got massive uncertainty. So I think it’s time for a slow down at the Supreme Court.

QUINN: I would agree with that. And I’d like to ask one last question and I probably should have asked it back earlier, but it just popped into my head again. Did it at all surprise you when the patent office came out with their initial interpretation on Alice the Office basically said that, yes, the framework has changed and now Mayo applies, but substantively what we’ve been doing doesn’t change the substantive reality. Substantively the MPEP is really still on point with respect to the way the analysis should be driven.

MICHEL: Well, I think that the true answers to these complicated challenging questions can’t be found just reading the text of Supreme Court cases. It takes that and lots of other input. So if I were the czar in charge of the patent office I wouldn’t issue guidelines on my own. I would conduct roundtables, I would bring in all the players in the system, all the different experts, all the different technologies. I would get a lot of input. Then I would put out a draft for comment and I would make all sorts of changes and I’d put out another draft.

QUINN: I think that’s what they’re doing. They’ve actually—

MICHEL: Well, they should have backtracked a little bit.

QUINN: Right.

MICHEL: But these instant guidelines I think are a terrible mistake. Partly because there’s not enough input and partly because the Supreme Court guidance is not clear enough. So I thought it was a very unfortunate that with Myriad and now with Alice they rushed into guidelines that look to me not well enough considered. Not all wrong. Not crazy. But not as good as what we need.

QUINN: Yeah. I guess you could understand that, but you’ve got all these examiners and you want to give them something right after the Supreme Court decides a case. But it does seem to me like the patent office did backtrack a little bit because now they want comments based on their initial guidance. I’ll tell you, their initial guidance surprised me. I was happy to read it but I don’t see any way you can read Alice and say nothing has really changed, which was the way the PTO initial guidance came across. I just don’t see how you could say that. And it also surprised me because the White House has been more involved in patents. President Obama himself has uttered the word “patent” probably more than all other presidents combined. I just didn’t think this White House was going to view that case in that way.

MICHEL: Well, I have no idea what hand the White House had in the guidelines, if any. I certainly think it’s very important for the Administration to have whatever broad policy views, any administration including this one, that it thinks are important priorities for the country at that sort of broad level. At the more specific level I think it’s very important for the patent office as a specialized agency much like the Federal Circuit is a somewhat specialized court to have a certain amount of autonomy, to be left along to work out these very tough issues with input from the larger community and all the internal expertise they can bring to bear on things. And just as Congress shouldn’t try to micromanage patent litigation, no White House should try to micromanage the patent office policy either. So I think on very broad policy matters, fine. On the specifics it should be left to the professionals.

QUINN: Well, that’s probably a great place to end. I really appreciate you taking the time, Your Honor. It’s always a pleasure to talk to you.

MICHEL: Happy to do it, Gene.



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Join the Discussion

4 comments so far.

  • [Avatar for JTS]
    September 26, 2014 07:03 pm


    Please pass on your thanks to Judge Michel, for taking the time for talking with you, and for speaking sensibly on behalf of all us decision-makers who rely on a passably-predictable patent system.

  • [Avatar for Anon]
    August 11, 2014 10:30 am


    I think “percolation” is over rated – we already have that with the “per panel” make-up, “luck” of the draw.

  • [Avatar for James Lampert]
    James Lampert
    August 11, 2014 09:11 am

    Regardless of your view of the Federal Circuit, abolishing it seems to be a political impossibility.
    But should we consider having a Western Federal Circuit and an Eastern Federal Circuit? That would be in complete accord with the PTO’s decision geographically to diversify, and could create a health discussion, and heaven forbid sometimes disagreement, between the two. “Percolation” between two Federal Circuits could not help being better than trying to deal with the “first panel” rule..

  • [Avatar for Good Court?]
    Good Court?
    August 10, 2014 05:47 pm

    “And I think that’s all well and good. So the Federal Circuit isn’t perfect but I think it’s a very good court. ”

    I thought he just now got through telling us that the court vetted millions of patents that are actually invalid? Seems like a pretty large accident for a “good court”.

    I actually agree with him for the most part the court is a “good court” but they have a lot to account for at this point. It is not the supreme court that is to blame for the million patents being invalid. Rather it is the court that gave people hope to have those patents in the first place and the patent office that followed that court.