Judge Lourie withholds criticism of Supreme Court, explains no judge likes to be reversed

Judge Alan Lourie of the United States Court of Appeals for the Federal Circuit.

The annual meeting of the American Intellectual Property Lawyers Association opened earlier this morning with an opening plenary session that included remarks from Michelle Lee, Director of the United States Patent and Trademark Office, and the presentation of the AIPLA Excellence Award, which this year was presented to Judge Richard Lynn of the United States Court of Appeals for the Federal Circuit.

The luncheon speaker was Judge Alan Lourie of the United States Court of Appeals for the Federal Circuit. Outgoing AIPLA President Sharon Israel, who will conclude her term of service tomorrow, introduced Judge Lourie, who she clerked for years ago after graduating from law school. Prior to introducing Judge Lourie, Israel noted that there were nine (9) Federal Circuit Judges in attendance. Later Judge Lourie would joke that the turnout was probably to make sure that his remarks did not veer off course.

The topic of Judge Laurie’s speech was, generally speaking, about his time on the Federal Circuit and the changes he has witnessed over the years. Laurie would explain that many mark the passage of time based upon the service of the Chief Judge. Laurie has served on the court during the tenure of seven (7) different Chief Judges, all of who strived to make the court a collegial body. Lourie, however, explained that he viewed the history of the court as being divided into two distinct segments. The Federal Circuit that existed with Judge Giles Sutherland Rich, and the Federal Circuit that has evolved since the death of Judge Rich.

Judge Lourie’s speech became particularly interesting toward the end when he began speaking about the Supreme Court.

“For many years, as you all know, the Supreme Court wasn’t much interested in patent cases,” Judge Lourie explained. “But they did take cases from outside the Patent [area].” He would go on to explain that earlier in his tenure the Supreme Court reversed the Federal Circuit in an Indian case and a government employee relations case, both cases where he authored the panel majority opinion. “That was a new experience. No judge likes to be reversed,” Lourie said.

“As this group knows, I had further opportunity to see Supreme Court reversals in patent cases,” Lourie explained. “That has led to a lot of uncertainty in the law when they decided cases related to patent eligibility… the myriad case involving breast cancer patents. I wrote the majority opinion in that case which the Supreme Court unanimously reversed.” Judge Lourie would go on to say that the week following the reversal he received the outstanding public service award from the New York Intellectual Property Law Association. With the audience laughing loudly he wondered whether the Association regretted the decision. Being unanimously reversed by the Supreme Court in Myriad is and will remain a badge of honor in my opinion. Judge Lourie gets patent eligibility, and he gets the science.

“In any event, that decision and its subsequent case of Prometheus v. Mayo, which I also wrote, which was similarly reversed on, fueled the recent revolution and uncertainty in the law of patent eligibility, which began with Bilski.”

Judge Lourie would go on to talk about “the German word schadenfreude, which means taking pleasure in the misfortune of others.” Lourie would rhetorically ask whether he should take pleasure in the criticism of the Supreme Court. Taking the high road he said that he would not take any pleasure in the criticism, instead taking the blame for himself, saying that perhaps he didn’t write those opinions as persuasively as he could.

“In light of the Supreme Court’s continuing interest in our cases commentators have said the Supreme Court has disciplined our court or that it has cutback of patent rights. I will leave those critiques to others, at least for now,” Lourie explained, suggesting that at some point he would be prepared to say more. Still, Lourie explained, “the Supreme Court is at the top of the judicial heap, and we have got to follow it’s precedence as best we can.”

I have no doubt that Judge Lourie disagrees with the path the Supreme Court has charted on patent eligibility. I also have no doubt that Judges do not like to be reversed. But there is a difference between following precedent and channeling the Supreme Court, as the Federal Circuit seems to be doing. It is clear that the Supreme Court does not like patents, and only a slim exaggeration to say that the only valid patent is one that the Supreme Court hasn’t considered. Increasingly, the Federal Circuit seems to be starting with the presumption that the patents claims they consider in certain technology areas are not patentable. In my opinion that is both unhelpful and inappropriate.

The Supreme Court is simply not technically sophisticated enough to handle patent issues, and the Supreme Court’s precedent is all over the place. They contradict their own previous rulings without overruling previous decisions. They paint with the broadest of brushes, make ridiculous and incorrect statements of law about poorly written claims on disclosures that are thin at best. The overbroad statements of the Supreme Court should not be blindly followed and applied to cases dealing with innovations of a wholly different character.

To hear Judge Lourie say that no Judge likes to be reversed and the Supreme Court precedent must be followed certainly rings true; that is what we have been witnessing in the area of patent eligibility. But at what point will the Federal Circuit stand up and say the obvious – that much of the broadest overstatements by the Supreme Court are dicta that deserve no deference. When will the Federal Circuit stand up and acknowledge that the sweeping commentary of the Supreme Court, which often deals with issues not before the Court (i.e., patent trolls) must necessarily be limited to the peculiar facts before the Court? When will the Federal Circuit recognize that the Supreme Court is ignoring the Statute?

I have been critical of Judge Lourie in particular over the past few years. As his jurisprudence has evolved it has become clear he is very concerned about not getting reversed by the Supreme Court. But someone needs to stand up and explain that the emperor is not wearing any clothes. District Court and Appellate Judges all took an oath to follow the law, and when the Supreme Court jets in to address a case here or there they are at best giving a 20,000 foot perspective, not some nuanced guidance that will or should apply with metronome like bureaucratic precision to all cases without regard to the underlying facts and technology.

Regardless of what the Supreme Court writes about discoveries not being patent eligible, the law says the contrary. When I was starting my career as a litigator District Court judges in particular seemed to understand exactly what to do when the Supreme Court make a grossly exaggerated statement like that. Clearly, 35 U.S.C. 101 says that discoveries are patent eligible, so when the Supreme Court says that discoveries are not patent eligible it is either dicta that deserves no precedential weight or they are rather inartfully describing something else, but those words cannot mean what Justice Thomas wrote because it directly contravenes the clear and explicit terms of the statute.

There are always ways for Judges to distinguish cases, limiting them to their particular facts, but the Federal Circuit seems unwilling. Judge Lourie no doubt has forgot more patent law than the Supreme Court will ever know. Hopefully at some point he will not abstain from telling us what he really thinks about the Supreme Court’s patent eligibility cases. It would be wonderful for him to do that in a written opinion that might force the Supreme Court to come to terms with the damage they have caused.