The intensifying national interest in patent litigation.

AuthorO'Malley, Kathleen M.
Position2014 Annual Helen Wilson Nies Lecture in Intellectual Property

INTRODUCTION I. THE EVOLUTION OF THE FEDERAL CIRCUIT A. An Overview B. The Increasing Volume of Patent Appeals C. The Changing Character of Patent Litigation D. A Change in Who Is Litigating Patent Cases E. The Tension Between the Burdens of Patent Litigation and the Need for a Strong Patent System II. ALL BRANCHES OF GOVERNMENT ARE RESPONDING A. Our Court's Efforts to Address These Changes B. The Supreme Court Has Become Involved in Patent Appeals C. The Executive and Legislative Branches Take Notice CONCLUSION INTRODUCTION

I am privileged to be asked to give a lecture named in honor of Judge Helen Nies. She was the first woman to serve on the Federal Circuit and the only woman, as of the date of this lecture, to serve as its chief judge. Although I did not have the opportunity to meet her before she passed away in 1996, all four women currently on the court are well aware that Judge Nies blazed a trail for us. At her investiture to the Court of Customs and Patent Appeals--one of the predecessor courts to the Federal Circuit--Judge Nies said that she hoped her service on the court would inspire other women to consider undertaking the same challenge. No doubt she would be pleased to see one-third of the seats on the current court filled by women--and to see how many talented young women are now entering the intellectual property (IP) field.

In preparing to come here today, I thought I should learn something more about Helen Nies than her statistical firsts on the court. I wanted to get a sense of the person whose name you all invoke every year at this time. So I read the transcripts of her investiture to the court in 1980, her investiture as chief judge in 1990, her portrait ceremony in 1993, and her memorial service only three years later.

While I learned, of course, about her impressive background and education, and generally about her years of service on the court, I also captured a glimpse of the person who was Judge Nies. In reading what others said about Judge Nies, and attending to her own words, I was amazed to see how much Judge Nies and I had in common:

* We both grew up and went to college and law school in the Midwest.

* We both were economics majors as undergraduates.

* We both waited tables while in school, to help put ourselves through.

* We both were devoted daughters.

* We both had children while practicing law and threw ourselves into raising them with a zeal that our children sometimes found annoying.

* We both love physical activity and staring at the water.

* We both love singing--though she, unlike me, could actually do it well and was apparently not afraid to do it in public.

* We both cherish our nonlawyer girlfriends who help give balance to our lives.

* We both love to entertain and host parties, especially if champagne is involved.

* We were both in private practice and government service before taking the bench.

* Neither one of us was a patent specialist when appointed to the Federal Circuit; she was a trademark specialist, and I was a district judge (and thus, by necessity, a generalist).

* We both do our best legal writing at the kitchen table.

* We both have strong bonds with our law clerks and judicial assistants, and have a deep appreciation for all that they do for us.

* And, most importantly, we both love being judges, love the law, and work extraordinarily hard not just to do the work of the court, but also to try to do it well.

I hope that Judge Nies is looking down and rooting on her kindred spirit. And I hope my years on the court will someday be remembered as fondly as hers.


    1. An Overview

      For my Nies Lecture topic today, I am going to focus on the United States Court of Appeals for the Federal Circuit's shift from a relatively little-known court to one whose work in the IP field has become the focus of all three branches of government, an increasing number of increasingly vocal academics in the field, reporters, and--yes--even bloggers. It is not the judges on the court who are garnering or deserving of all this attention. I believe it is a change in patent litigation that has begun to shine light on the court.

      There has been a change in the volume of patent litigation, in the nature of the parties engaging in it, in the law firms representing those parties, in the impact of patent litigation on the individuals and other entities involved in it, and in the importance of patents to the economy as a whole. All of these changes have caused many to take notice of the work of the Federal Circuit--some of that notice welcome, some less so.

      Let me touch on each of these changes briefly and then discuss the attention the Federal Circuit and patent litigation generally are receiving from all three branches of government. I will leave it to the academics to do an empirical study on the changes in their own ranks and in their attitudes toward IP litigation. on that score, I will just note that I have seen an increase in the number of amicus filings from academics, as well as a greater variety of academic institutions represented in those filings. And, I will leave the reporters and bloggers alone, in the hope (however vain) that they might return the favor.

    2. The Increasing Volume of Patent Appeals

      The Federal Circuit was formed in 1982, (1) the year I graduated from law school. As a consequence of this timing, I did not learn about the Federal Circuit in my civil procedure class, and Case Western, like most law schools then, did not have a class on patent law, where discussion of its potential creation might have arisen.

      While clerking on the United States Court of Appeals for the Sixth Circuit, I also had no occasion to come across or care about what the Federal Circuit was doing or saying. It was not until I started practicing law at Jones Day in Cleveland, and was assigned to work on a number of patent cases, that I learned about this unusual circuit--the only one based on subject matter rather than geography. I soon realized that I was among a rarefied few in the legal profession who knew about the Federal Circuit or the scope of its jurisdiction.

      In its first year--despite the court's nationwide jurisdiction over patent actions arising in all district courts--the Federal Circuit entertained appeals from district court judgments in only 175 cases. (2) This low number is reflective of the fact that, in each of the three years prior to 1982, there were far fewer than 1,000 patent cases filed in district courts nationwide. The patent cases that were reviewed on appeal accounted for only a small percentage--less than a quarter--of the Federal Circuit's overall docket.

      By the time Judge Nies passed away in 1996, the number of patent appeals had risen to more than 350, and the number of patent actions filed in district courts had risen to about 1,800. During that year, patent appeals challenging U.S. Patent and Trademark Office (PTO) decisions numbered eighty-nine. Despite this increase, patent cases still only constituted...

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