JUDGING PATENTS.

• Author: Kumar, Sapna

TABLE OF CONTENTS INTRODUCTION 874 I. EVALUATING JUDICIAL SPECIALIZATION 878 A. Specialization in the Judiciary 879 1. Types of Specialization 879 2. Benefits and Risks of Specialization 881 B. The Role of Generalist District Courts in Patent Litigation 884 II. TECHNICAL EXPERTISE OF U.S. JUDGES 888 A. Party-Hired Experts 888 B. Law Clerks 892 C. Court-Appointed Experts and Advisors 893 1. Technical Advisors 894 2. Neutral Testifying Experts Under Federal Rule of Evidence 706 899 3. Special Masters 900 III. EUROPE'S TECHNICALLY QUALIFIED JUDGES 902 A. European Courts Utilizing Technically Qualified Judges 903 1. The German Federal Patent Court 903 2. The Swiss Federal Patent Court 906 3. The Unified Patent Court 909 B. Benefits and Drawbacks of Technically Trained Judges in Patent Litigation 912 IV. INTEGRATING TECHNICAL SPECIALIZATION INTO THE U.S. JUDICIAL SYSTEM 916 A. Technically Trained Magistrate Judges 918 B. Technically Trained Staff 922 C. Restructuring the District Court System for Patent LITIGATION 923 CONCLUSION 927 INTRODUCTION

Patent infringement disputes are among the most challenging cases brought in federal district court. Judges admittedly disagree regarding whether the underlying legal principles are especially difficult, (1) or whether the law poses challenges to judges because they infrequently encounter patent cases and are unfamiliar with the relevant case law. (2) But there is general agreement that patent cases force judges to grapple with unfamiliar technology, (3) leading at least one judge to dub patent cases "the neurosurgery of litigation." (4) District judges generally lack scientific backgrounds and are ill-equipped to understand the technical issues that arise in these cases. (5) This makes it challenging for them to accurately construe claims and to properly tailor general patent law doctrines to specific technology. (6)

Judicial expertise and specialization are multidimensional, encompassing legal and technical knowledge. (7) Under the current system, some judges possess legal expertise with regard to patent law, given that 61 percent of new patent cases are filed in just five district courts. (8) At the appellate level, the U.S. Court of Appeals for the Federal Circuit is legally specialized, with patent cases accounting for 63 percent of its docket and roughly 80 percent of its time. (9)

Technical expertise among judges, however, is minimal. At the Federal Circuit, only five of the twelve current judges have science-related degrees, (10) and case assignments are not made based on those backgrounds. (11) Although it is unclear how many district judges have technical training, they are expected to be generalists and are not appointed for any specialized knowledge. (12) Some evidence suggests that the Federal Circuit values fact-finding from technically trained judges, but this approach currently exists only with the administrative judges of the Patent Trial and Appeal Board (PTAB). (13)

To decide patent cases, judges must compensate for their lack of expertise. Many Federal Circuit judges and some district judges hire law clerks with science or engineering degrees to provide assistance, (14) and rarely, a judge will employ a neutral expert to assist with a complex case. (15) But far more frequently, party-hired experts explain the relevant technology to judges through tutorials and briefs, leaving judges with the responsibility of sifting through divergent accounts. (16)

By contrast, several European countries utilize technically trained judges for some or all patent cases. (17) In Germany, for patent invalidation proceedings and patent office appeals, panels include both legally qualified judges (LQJs) and technically qualified judges (TQJs), with the TQJs hearing cases only in their area of technical expertise. (18) Switzerland relies primarily on part-time TQJs, who also work as patent attorneys and are assigned to panels (and paid) on a case-by-case basis. (19) And if ratified, the proposed Unified Patent Court (UPC) would extend the use of TQJs to most of continental Europe. (20)

In the current body of scholarship, much of what has been written regarding judicial specialization in patent law has focused on legal expertise. Several scholars, including this one, have argued that generalized courts are beneficial and have warned about the dangers of overspecialization in appellate patent law, (21) while others maintain that such concerns may be overblown. (22) A few scholars have called for a single specialized patent trial court. (23) But little attention has been paid to the merits of increasing technical specialization in existing district courts. (24)

This Article compares the technical expertise of U.S. judges with those of Germany, Switzerland, and the proposed UPC. It furthermore makes several proposals for increasing technical competence in the U.S. district courts. Part I considers the advantages and disadvantages of specialized courts and analyzes the role that district courts play in deciding patent cases. Part II then discusses the use of technical expertise in the U.S. patent system and examines how district judges educate themselves about technical issues that arise during litigation. Part III looks at Germany, Switzerland, and the proposed UPC's use of TQJs and examines the advantages and disadvantages of utilizing them.

Part IV then proposes methods of integrating greater technical expertise into district courts, given the structure of the U.S. federal court system. It proposes a trial in which Congress provides funds to district courts with large patent dockets to hire magistrate judges with technical backgrounds. It alternatively proposes that Congress fund a trial to enable courts to hire specialized staff to assist district judges. Finally, Part IV recommends that Congress consider streamlining all patent litigation into a group of urban district courts to facilitate the integration of technical expertise into the judiciary.

1. EVALUATING JUDICIAL SPECIALIZATION

   Although specialized courts existed as early as 1792, (25) the U.S. federal judiciary remains largely a generalist system. (26) This is in contrast to countries that rely heavily on specialized courts or specialized chambers of general courts. (27) Section A provides a brief overview of the different types of judicial specialization and discusses their advantages and disadvantages. Section B then considers district courts' role in patent litigation and what kind of specialization might aid judges.

   1. Specialization in the Judiciary

      1. Types of Specialization

         Although judicial specialization and expertise are often thought of as monolithic, this is not correct. Judges may become experts in a particular area of legal doctrine, such as tax. (28) They may become experts in cases relating to certain classes of technology, (29) such as judges in the District of New Jersey who hear a high concentration of pharmaceutical cases. (30) They may also have specialized knowledge in policy or in dealing with particular groups of people, such as children or drug offenders. (31) Courts themselves may be specialized independently of the judges, such as by having rules of procedure tailored to a particular type of litigation. (32) For example, the Eastern District of Texas developed procedural rules requiring the early disclosure of infringement and invalidity contentions, which made the forum popular with patent holders. (33)

         Some experiments with specialization have occurred in the United States. For example, the Court of International Trade is an Article III court with trade-related expertise; it has exclusive jurisdiction over all antidumping and countervailing duties disputes, along with some other international trade-related cases. (34) It is structured more like an independent agency than a court, in that no more than five of its nine judges can be from the same political party. (35) Specialized judges also hear bankruptcy cases, but these judges were denied Article III status to avoid "dilut[ing] the significance, and prestige, of district judgeships." (36)

         With regard to patent law, Congress has looked at ways to increase legal expertise. In 2011, Congress implemented a ten-year Patent Pilot Program, which involved fourteen participating courts. (3)' Judges serving on participating courts have the option to decline to hear patent cases, which are then reassigned to "designated" judges who have opted into hearing more patent cases. (38) Although the trial is still ongoing, initial reports have been mixed: designated judges decided cases faster compared to nondesignated ones, but the appeals rate and reversal rate in the Federal Circuit have apparently stayed the same. (39)

         Congress has made some effort to increase technical expertise in patent cases. Under the Leahy-Smith America Invents Act (AIA), it created the Patent Trial and Appeal Board (PTAB) to facilitate validity challenges. (40) The Board's Administrative Patent Judges are required to "be persons of competent legal knowledge and scientific ability." (41) However, although an effort is made to ensure that each three-judge panel has at least one judge in the relevant technical field, (42) this is not always the case. (43) With regard to increasing technical expertise in the courts, Congress has not passed any legislation. Although the House bill for the Patent Pilot Program called for funding to train judges and employ law clerks with technical backgrounds, these provisions were cut prior to passage. (44)

      2. Benefits and Risks of Specialization

         Judicial specialization provides several advantages. As judges accumulate experience from deciding cases in a single subject area, they become more efficient and potentially increase the quality and accuracy of their decision-making. (45) Because they gain a better understanding of the applicable legal doctrines, their opinions may become more uniform and predictable than their generalist...