Promoting the progress: three decades of patent jurisprudence in the Court of Appeals for the Federal Circuit.

Author:Andrews, Damon C.
Position:Evolving the Court of Appeals for the Federal Circuit and Its Patent Law Jurisprudence
 
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  1. INTRODUCTION II. PATENT TRENDS AT THE FEDERAL CIRCUIT: A DECADE-BY-DECADE REVIEW A. 1982-1991: Establishing Precedent B. 1992-2001: Technological (and Turbulent) Times C. 2002-2011: Appeals, Evaluation, and Executive Impact III. THE FEDERAL CIRCUIT: PATENT FRIEND OR PATENT FOE? A. Claim Construction B. Nonobviousness C. Patentable Subject Matter 1. Method Patents 2. Biological Arts IV. THE FEDERAL CIRCUIT AND THE SUPREME COURT: A RELATIONSHIP BUILT ON REVERSAL? A. The Supreme Court's Attention to the Federal Circuit B. Harsh Affirmations, Harsher Reversals V. CONCLUSION I. INTRODUCTION

    Congress significantly altered the landscape of Article III courts when three decades ago it established the Court of Appeals for the Federal Circuit pursuant to the Federal Courts Improvement Act of 1982.1 The Federal Circuit was born from a merger of the Court of Customs and Patent Appeals and the appellate jurisdiction of the Court of Claims, (2) and maintains exclusive jurisdiction over appeals related to governmental contracts, (3) veterans' benefits, (4) and international trade, (5) among other niche areas of federal law. (6) However, no single subject matter under its review has brought the Federal Circuit as much attention (or criticism (7)) as its exclusive jurisdiction over patent appeals. (8)

    Several scholars assert that Congress created the Federal Circuit as part of an "experiment" in the judicial specialization of patent law, (9) though it may be more apt to say that necessity--rather than experimentation--is the true mother of the court's invention. (10) Prior to the creation of the Federal Circuit, an appeal from a patent decision in a federal district court was heard in the district court's respective regional circuit court; (11) however, regional circuit courts varied widely in their interpretations of the Patent Act, (12) which led to objectionable forum shopping. (13) Additionally, Congress harbored concerns that the U.S. Patent and Trademark Office (PTO) was granting patents based on inventive standards that were unenforceable in the district and circuit courts across the country where the patents were later litigated. (14) To unify the patent laws, Congress created the Federal Circuit to route appeals to a single court. (15) Currently, patent cases arrive at the Federal Circuit by one of two primary avenues (16): an appeal from a federal district court (17) or an appeal from a decision of the Board of Patent Appeals and Interferences (BPAI),18 an administrative body of the PTO that decides questions of patentability and settles inventor priority disputes. (19)

    In the nearly thirty years since the Federal Circuit's first published decision, (20) the court has decided numerous cases that have produced a rich patent jurisprudence. This Article seeks to evaluate that jurisprudence from several perspectives. Part II summarizes the Federal Circuit's patent history in terms of the court's judges, the external factors that have shaped its patent jurisprudence, and the overall success of the court in light of Congress's intent. Part III then evaluates the Federal Circuit's general stance on whether to uphold the PTO's grant or denial of a patent, or a district court's decision to invalidate a patent, with respect to several specific patent law issues, including claim construction. Finally, Part IV analyzes the Federal Circuit's relationship with the U.S. Supreme Court and examines the attention that the Court has given to patent cases throughout the Federal Circuit's existence based on the number of certiorari petitions granted, as well as the Court's treatment of the Federal Circuit's opinions with respect to their outcomes and reasoning. In sum, this Article canvasses the Federal Circuit's patent decisions from several angles to paint a comprehensive picture of the court's patent jurisprudence during the first three decades of its existence.

  2. PATENT TRENDS AT THE FEDERAL CIRCUIT: A DECADE-BY-DECADE REVIEW

    More than 42,500 appeals have been filed with the Court of Appeals for the Federal Circuit since its founding in 1982,21 and of the cases in which the court issued written opinions, more than 4900 originated in the PTO and district courts. (22) Through its holdings in these opinions, the Federal Circuit has generated a robust patent jurisprudence. The following subparts offer a survey of the Federal Circuit's patent jurisprudence ebb and flow through the decades. These subparts focus on the judges sitting on the court, the technological developments that have challenged the court when applying patent law doctrines, and the external factors that have influenced the court.

    1. 1982-1991: Establishing Precedent

      The Federal Circuit is the youngest of the thirteen federal appellate courts. (23) However, even in its early years, the court had parameters for deciding cases. In South Corp. v. United States, (24) the Federal Circuit, sitting en banc, announced that holdings of the Court of Customs and Patent Appeals (CCPA) were to serve as binding precedent. (25) And not by any fluke or coincidence, five of the Federal Circuit's eleven inaugural judges were previously CCPA judges, including the first chief judge of the Federal Circuit, Howard Markey. (26) However, of the eleven appointments that comprised the court's early membership, only two judges had any experience related to patent litigation. (27) Fortunately, one of these judges was Giles Sutherland Rich, whom patent scholars widely consider to be the "father of modern American patent law." (28) Thus, the Federal Circuit's patent jurisprudence began its infancy with not only a half-century of patent case law upon which to rely, (29) but also with one of the two principal drafters of the Patent Act among its judgeship. (30)

      Many commentators lauded the Federal Circuit in its first decade for successfully advancing the goals that Congress had in mind when it formed the court. (31) In only its first three years, the Federal Circuit brought uniformity to patent law by resolving each of the thirteen conflicts that previously burdened the regional circuit courts. (32) Additionally, the Federal Circuit further developed its patent jurisprudence by establishing new patent law doctrine on issues not previously considered by the CCPA or regional circuit courts. (33) For example, in the case Kingsdown Medical Consultants, Ltd. v. Hollister, Inc., (34) the Federal Circuit explained that gross negligence on behalf of a patent applicant does not necessitate a finding of either inequitable conduct or an applicant's intent to deceive the PTO. (35) The court also decided precedential patent cases in the areas of reexamination, (36) double patenting, (37) enablement, (38) and priority of filing (39) during its first ten years. However, while the Federal Circuit may have brought uniformity to patent law as a whole in its early years, its judges were not necessarily unified in doing so. Indeed, in the Federal Circuit's first year of existence, the court's judges dissented more often in patent cases on appeal from the PTO than in any other year. (40)

    2. 1992-2001: Technological (and Turbulent) Times

      The Federal Circuit's second decade of patent jurisprudence was marked by major changes in the court's membership, (41) new and complex technologies, (42) and increased attention to its decisions. (43) For instance, by the Federal Circuit's twentieth anniversary, not one of its original eleven judges was still designated as "active" in handling caseloads. (44) Additionally, during two different periods, as few as eight judges comprised the court's membership. (45) Moreover, Judge Rich, the court's long-standing beacon for interpreting the Patent Act and the author of 581 patent opinions, died in 1999 at the age of ninety-five. (46) Nevertheless, the Federal Circuit added to its first decade of patent jurisprudence by issuing over 2400 opinions in cases on appeal from the PTO and district courts between 1992 and 2001, (47) thus continuing to shape the patent laws. (48)

      From a technological perspective, this same ten-year span saw a dramatic increase in the complexity of patents. (49) These scientific developments spurred new legal challenges for the Federal Circuit when interpreting claim language and applying the doctrine of equivalents. (50) Indeed, as the world entered the computer and information age, (51) so too did the Federal Circuit's patent jurisprudence, with the court issuing opinions in several cases related to computer software, online networks, and semiconductors during its second decade. (52)

      Jurisdictionally speaking, the Federal Circuit reached a limit during its second decade on what patent-related cases it could hear. For example, in Holmes Group, Inc. v. Vornado Air Circulation Systems, Inc., (53) the Supreme Court overruled a 2001 Federal Circuit decision and held that the Federal Circuit lacked appellate jurisdiction over a case in which only the respondent's answer alleged a counterclaim arising under the federal patent laws, but the petitioner's original complaint made no such allegation. (54) Consequently, the Supreme Court's Vornado decision more clearly defined the outer parameters of the Federal Circuit's patent jurisprudence by limiting the court's perceived ability to hear any patent-related cases, even if the relation was merely tangential. (55) This restriction contrasts with the Federal Circuit's first ten years of decisionmaking, during which time the court adopted an arguably liberal application of the "in whole or in part" language of 28 U.S.C. [section] 1295, (56) thus wielding broad jurisdictional powers over cases involving patents. (57)

    3. 2002-2011: Appeals, Evaluation, and Executive Impact

      The past ten years have been marked by a significant rise in the number of patent infringement cases appealed to the Federal Circuit from the district courts. For instance, as the Federal Circuit transitioned into its third decade, the number of...

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