Patent Court Specialization

• Author: Sapna Kumar
• Position: Law Foundation Professor of Law and Co-Director of the Institute for Intellectual Property and Information Law, University of Houston Law Center
• Pages: 2511-2534

E8_KUMAR (DO NOT DELETE) 7/25/2019 5:10 PM

2511

Patent Court Specialization

Sapna Kumar*

ABSTRACT: A central issue in administrative law is how to balance power

between executive-branch agencies and the courts that review their decisions,

both to preserve separation of powers and ensure good decisionmaking. In

patent law, however, such a balance does not exist. When Congress created

the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) in 1982,

it intended for the court to be a generalist institution that heard appeals from

a variety of agencies. But since that time, the Federal Circuit has become a

specialized court, with patent-related matters now comprising the

overwhelming majority of its docket. Over the years, this specialization has led

to various problems, including disregard for the Patent and Trademark

Office’s (“PTO’s”) autonomy, political activism, and judicial legislating.

The Federal Circuit has consolidated power to the point that no other branch

of government serves as an effective check, raising separation-of-powers

concerns. Consequently, it is important that Congress act to restore a balance

of power in patent law. This could be accomplished by granting the PTO

greater rulemaking authority to limit the Federal Circuit’s ability to engage in

judicial legislation, to facilitate public participation, and to generally serve

as a counterbalance to the powerful court.

I. INTRODUCTION ........................................................................... 2512

II.THE INCREASING SPECIALIZATION OF THE FEDERAL CIRCUIT .... 2514

A.A FRAMEWORK FOR SPECIALIZATION ...................................... 2514

B.THE EVOLUTION OF SPECIALIZATION IN THE FEDERAL

CIRCUIT ............................................................................... 2516

1.The Creation of the Federal Circuit .......................... 2516

2.Growing Specialization ............................................... 2517

III.BAD BEHAVIOR FROM SPECIALIZATION ....................................... 2519

*

Law Foundation Professor of Law and Co-Director of the Institute for Intellectual

Property and Information Law, University of Houston Law Center. Professor Kumar would like

to thank Rebecca Eisenburg, Paul Gugliuzza, Dmitry Karshtedt, Jonathan Masur, Adam Mossoff,

Arti Rai, Jason Rantanan, Melissa Wasserman, and the participants of the Iowa Law Review’s

Administering Patent Law Symposium for their helpful comments and suggestions. This research

was supported, in part, by a Fulbright-Schuman grant.

E8_KUMAR (DO NOT DELETE) 7/25/2019 5:10 PM

2512 IOWA LAW REVIEW [Vol. 104:2511

A.DISREGARD FOR AGENCY AUTONOMY ..................................... 2520

B.POLITICAL ACTIVISM FROM THE BENCH ................................. 2522

C.INSTITUTIONAL DESIGN AND JUDICIAL DECISIONMAKING ......... 2524

D.JUDICIAL LEGISLATING .......................................................... 2526

IV.SPECIALIZATION AND PATENT LAW’S BALANCE OF POWER ......... 2528

A.SEPARATION-OF-POWERS CONCERNS ....................................... 2528

B.SHIFTING THE BALANCE OF POWER ........................................ 2531

V.CONCLUSION .............................................................................. 2533

I. INTRODUCTION

Created during a time of hostility to patents, the U.S. Court of Appeals

for the Federal Circuit (“Federal Circuit”) was designed to unify patent law

and promote innovation.1 Members of Congress recognized the dangers of

subject-matter specialization and attempted to structure the new court to

ensure that it would be generalist in nature.2 Initially, it appeared that

Congress was successful. The bulk of the early Federal Circuit’s docket came

from a broad range of subject areas, including torts and commercial law.3

The Federal Circuit, however, did not remain generalist for long. The

steady rise of patent litigation in the 1990s caused the court to shift to semi-

specialized by the mid-2000s. At this time, the Federal Circuit still possessed

an extensive non-patent jurisdiction,4 and was comparable in nature to the

U.S. Court of Appeals for the District of Columbia (“D.C. Circuit”).5

The Federal Circuit’s semi-specialized status came to an abrupt end with

the passage of the Leahy–Smith America Invents Act (“AIA”) in 2011. Inter

partes review (“IPR”) under the AIA proved to be unexpectedly popular, with

various parties rushing to challenge patent validity in the newly created Patent

1. See H.R. REP. NO. 96-1307, at 2–3 (1980), reprinted in 1980 U.S.C.C.A.N. 6460, 6461–62

(discussing President Carter’s call for increasing innovation and discussing how the Federal

Circuit would end “the current legal confusion” caused by conflicting interpretations of patent

law from regional circuits).

2. See infra Section III.B.

3. Daniel J. Meador, A Challenge to Judicial Architecture: Modifying the Regional Design of the

U.S. Courts of Appeals, 56 U. CHI. L. REV. 603, 613–14 (1989) (discussing the jurisdiction of the

Federal Circuit in the late 1980s).

4. See John M. Golden, The Supreme Court as “Prime Percolator”: A Prescription for Appellate

Review of Questions in Patent Law, 56 UCLA L. REV. 657, 665–66 (2009) (discussing the Federal

Circuit’s non-patent jurisdiction).

5. See John M. Golden, The Federal Circuit and the D.C. Circuit: Comparative Trials of Two Semi-

Specialized Courts, 78 GEO. WASH. L. REV. 553, 554–55 (2010) (comparing the Federal Circuit’s

specialization with that of the D.C. Circuit and describing both as semi-specialized).