Patent law and the two cultures.

Author:Lee, Peter

ARTICLE CONTENTS INTRODUCTION I. TECHNOLOGY AND COGNITIVE BURDENS IN THE PATENT SYSTEM A. Generalist Judges and Technological Anxiety B. Traditional Proposals To Ameliorate Cognitive Burdens II. THE PSYCHOLOGY OF TECHNOLOGICAL ENGAGEMENT: INFORMATION COSTS AND THE COGNITIVE MISER III. AN INFORMATION-COST THEORY OF FEDERAL CIRCUIT PATENT DOCTRINE: FORMALISM AND TECHNOLOGICAL ENGAGEMENT A. Claim Construction B. Prosecution History Estoppel C. Nonobviousness D. Remedies E. Summary IV. THE SUPREME COURT'S HOLISTIC TURN A. The Supreme Court's Return to Patent Law B. The Standard Interpretation: Constraining Patent Rights C. A New Interpretation: Holism and Contextual Engagement D. Festo: A Flexible Approach to Prosecution History Estoppel E. KSR: An Expansive Approach to Nonobviousness F. eBay: An Equitable Standard for Injunctive Relief G. Additional Evidence of the Supreme Court's Holistic Turn V. DOCTRINAL INFORMATION-COST EXTERNALITIES: IMPLICATIONS AND PRINCIPLES FOR MITIGATION A. Clearly Delineating and Structuring New Patent Doctrine B. Guiding Technological Inquiries Through Examples and Explanations C. Objections and Responses VI. THE TWO CULTURES REFASHIONED: THE FEDERAL CIRCUIT AND THE SUPREME COURT CONCLUSION "Patent litigation is like the neurosurgery of litigation: it is hard scientifically and it is hard legally." (1)


The Hon. James F. Holderman, Chief Judge of the Northern District of Illinois, sees a fair number of patent cases. As such, he is no stranger to advanced technologies, having presided over cases involving wireless portable communication devices, (2) anti-theft systems, (3) and wavelength division multiplexed optical communication systems. (4) Recently, he had this to say about patent disputes:

Patent litigation is different.... It is more complicated, more time-consuming and more mentally taxing because typically the patent being litigated is a successful advancement of some science or technology. So, the judge has to understand that background just to get to the factual basis of the problem and then deal with legal aspects. (5) These challenges form the subject of this Article.

As a general matter, lawyers and science don't mix. (6) This fact of legal life reflects a broader epistemological schism best captured in an influential 1959 lecture by C.P. Snow, entitled "The Two Cultures." (7) By involving "culture," Snow did not refer to ethnic, religious, or national groups. Rather, he sought to describe a deep intellectual divide between literary and scientific cultures. Reflecting on his background as an author and physicist, he warned of a dangerous "gulf of mutual incomprehension" between the liberal arts and sciences. (8) Although Snow's remarks arose within a particular social and historical context, (9) his thesis has become an enduring metaphor for the challenges of intellectual specialization, (10) and I invoke it here in this sense. Snow's dichotomy is, of course, a gross generalization. (11) But in its stark duality, the "Two Cultures" captures an anxiety readily apparent to many lawyers when confronting scientific complexity. (12) While Snow did not directly address patent law, his metaphor is highly salient to the patent system--a realm where law and science intersect. (13)

Drawing on the "Two Cultures," this Article explores challenges that arise when lay judges must engage, understand, and ultimately pass judgment on complex technologies. Much patent scholarship focuses on the important question of how to structure exclusive rights to maximize innovation. (14) However, this Article takes a different approach, building on a rich literature addressing the institutional dimensions of patent adjudication, which are critical to a well-functioning patent system. (15) It proceeds on the premise that no matter how elegantly policymakers craft patent law, if generalist judges lack the capacity to administer it, the patent system cannot fulfill its objectives. In so doing, this Article sheds new light on the ways in which doctrine can mediate (and complicate) the intersection of legal and scientific cultures. (16)

The Article proceeds in six parts. Part I argues that patented technologies impose significant cognitive burdens on lay actors--particularly district judges--in the patent system. (17) Many judges doubt their ability to comprehend the patented inventions before them. Patent commentators and empirical studies suggest that this anxiety is well founded. Policymakers and scholars have proposed a number of mechanisms to address the cognitive demands of patent adjudication, but none is entirely satisfactory.

Part II exploits an underutilized resource for understanding the difficulties of patent adjudication: the psychology of technological engagement. Surveying the psychological literature, this Part first confirms that complex technologies impose significant cognitive burdens on lay individuals. It goes on to examine variants of the "cognitive miser" model wherein individuals adopt heuristics and defer to expert opinion to reduce information costs associated with technological engagement.

Part III draws from these psychological findings to offer an information-cost theory of Federal Circuit patent doctrine. (18) Scholars have long recognized that Federal Circuit patent doctrine is highly formalistic. (19) This Part goes further to explore how formalism mediates technological engagement by generalist judges. Examining several areas of patent doctrine, I argue that formalism is an inherently "inquiry-truncating" methodology that reduces the degree to which lay judges must engage with technological subject matter. Thus, for example, the Federal Circuit's historically formalistic approach to nonobviousness helped delimit and streamline potentially expansive inquiries into patented inventions. In this sense, formalism allows judges to operate as cognitive misers.

Part IV then reveals an undertheorized, countervailing trend in recent Supreme Court patent decisions. Starting about a decade and a half ago, the Supreme Court has more aggressively asserted its appellate jurisdiction over the Federal Circuit, reversing several significant lines of precedent. Scholars have rightly highlighted the important substantive impact of these decisions, which tend to constrain patent rights. However, I argue that recent Supreme Court decisions also exhibit a significant and less noticed methodological shift. In short, the Court is systematically favoring "holistic" standards over formalistic rules in a variety of areas of patent doctrine. These information-demanding standards tend to enhance the degree to which district judges must grapple with technological context.

Part V examines the implications of the Supreme Court's holistic turn. It first observes that Supreme Court opinions impose high information-cost externalities on district judges. It then explores how the Court can do more to internalize some of those externalities. Drawing from foundational concepts in patent law itself, this Article proposes applying "enablement" principles to Supreme Court patent opinions. By considering and "internalizing" the difficulties of technological engagement, the Supreme Court can produce doctrine that is clearer, more bounded, and easier to apply.

Part VI concludes by examining the cultural differences of the Federal Circuit and the Supreme Court. Returning to the theme of the "Two Cultures," it argues that Federal Circuit formalism arises in significant part from that court's specialized authority over patent law and its day-to-day proximity to patent litigation. It further argues that Supreme Court holism stems from the Court's generalist outlook and its relative insulation from the complexities of technology and patent adjudication.

This Article seeks to make several contributions. It provides novel descriptive theories for longstanding Federal Circuit jurisprudence as well as the Supreme Court's recent forays into patent law. Applying an information-cost analysis, it offers prescriptions for drafting Supreme Court opinions that will improve the administration of patent law. In a broader sense, this Article argues for pluralizing the resources brought to bear on patent scholarship. While such scholarship has profited handsomely from law and economics and empirical studies, (20) this Article shows that academic inquiries into the psychology and sociology of science can illuminate many features of the legal architecture of innovation. (21) While the "objective" natures of science and patent doctrine seem to resist cultural analysis, this Article insists that cultural concerns pervade the realms of science, technology, and patent adjudication.

While this Article focuses on patent law, its analyses extend to the ever-growing intersection of law and science. (22) As Justice Breyer has noted, "[S]ociety is becoming more dependent for its well-being on scientifically complex technology, so, to an increasing degree, this technology underlies legal issues of importance to all of us." (23) The role of legal doctrine--and particularly, formalism--in managing cognitive burdens has ramifications for a host of legal fields, including biomedical ethics, toxic torts, environmental law, and scientific evidence. (24) This study in patent law thus provides a compartmentalized forum for exploring issues of relevance to the wider legal and technological communities.


    1. Generalist Judges and Technological Anxiety

      The intersection of law and science is fraught with anxiety. Judge William Schwarzer, speaking generally about scientific evidence, states:

      The context in which [science and technology issues] arise varies widely, but generally they share one characteristic: They challenge the ability of judges and juries to comprehend the issues--and the evidence--and to deal with them in informed and effective ways. As a result, they tend to complicate the litigation, increase...

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