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Volumn 101, Issue 4, 2007, Pages 1619-1675

Rethinking patent law's uniformity principle

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EID: 37749046184     PISSN: 00293571     EISSN: None     Source Type: Journal    
DOI: None     Document Type: Review
Times cited : (81)

References (383)
  • 1
    • 37749052770 scopus 로고    scopus 로고
    • Michael E. Solimine, Rethinking Exclusive Federal Jurisdiction, 52 U. PITT. L. REV. 383, 406 (1991);
    • Michael E. Solimine, Rethinking Exclusive Federal Jurisdiction, 52 U. PITT. L. REV. 383, 406 (1991);
  • 2
    • 37749014068 scopus 로고    scopus 로고
    • see also John F. Duffy, Harmony and Diversity in Global Patent Law, 17 BERKELEY TECH. L.J. 685, 686 (2002) (Uniformity of law has an undeniable intellectual appeal.). Indeed, as early as 1816,Justice Story wrote of the importance, even necessity of uniformity of decisions throughout the whole United States, Martin v. Hunter's Lessee, 14 U.S. (1 Wheat.) 304, 347-48 (1816).
    • see also John F. Duffy, Harmony and Diversity in Global Patent Law, 17 BERKELEY TECH. L.J. 685, 686 (2002) ("Uniformity of law has an undeniable intellectual appeal."). Indeed, as early as 1816,Justice Story wrote of the "importance, even necessity of uniformity of decisions throughout the whole United States," Martin v. Hunter's Lessee, 14 U.S. (1 Wheat.) 304, 347-48 (1816).
  • 3
    • 0346437741 scopus 로고    scopus 로고
    • See John F. Duffy, The Festo Decision and the Return of the Supreme Court to the Bar of Patents, 2002 SUP. CT. REV. 273.287 ([P]olicy in favor of national uniformity in patent law has... ancient roots in the country's law.).
    • See John F. Duffy, The Festo Decision and the Return of the Supreme Court to the Bar of Patents, 2002 SUP. CT. REV. 273.287 ("[P]olicy in favor of national uniformity in patent law has... ancient roots in the country's law.").
  • 4
    • 37749054050 scopus 로고    scopus 로고
    • See S. REP. NO. 97-275, at 5 (1981) (The creation of the Court of Appeals for the Federal Circuit will produce desirable uniformity in this area of . . . [patent] law.);
    • See S. REP. NO. 97-275, at 5 (1981) ("The creation of the Court of Appeals for the Federal Circuit will produce desirable uniformity in this area of . . . [patent] law.");
  • 5
    • 37749030692 scopus 로고    scopus 로고
    • H.R. REP. NO. 97-312, at 20-21 (1981) (discussing the existing problems of disuniformity and noting that some circuit courts are regarded as 'pro-patent' and others 'anti-patent,' and much time and money is expended in 'shopping' for a favorable venue).
    • H.R. REP. NO. 97-312, at 20-21 (1981) (discussing the existing problems of disuniformity and noting that "some circuit courts are regarded as 'pro-patent' and others 'anti-patent,' and much time and money is expended in 'shopping' for a favorable venue").
  • 6
    • 37749034844 scopus 로고    scopus 로고
    • Disuniformity was perceived to be so great that Congress at the time believed that the validity of a patent is too dependent upon geography (i.e., the accident of judicial venue) to make effective business planning possible. H.R. REP. NO. 97-312, at 22. At least one recent commentator has questioned whether the problems associated with disuniformity were really so great.
    • Disuniformity was perceived to be so great that Congress at the time believed that "the validity of a patent is too dependent upon geography (i.e., the accident of judicial venue) to make effective business planning possible." H.R. REP. NO. 97-312, at 22. At least one recent commentator has questioned whether the problems associated with disuniformity were really so great.
  • 7
    • 37749010607 scopus 로고    scopus 로고
    • See Cecil D. Quillen, Jr, innovation and the U.S. Patent System, 1 VA. L. & BUS. REV. 207, 228 2006, arguing that forum shopping and outcome variability were not notable problems in the 1970s
    • See Cecil D. Quillen, Jr., innovation and the U.S. Patent System, 1 VA. L. & BUS. REV. 207, 228 (2006) (arguing that forum shopping and outcome variability were not notable problems in the 1970s).
  • 8
    • 37749042421 scopus 로고    scopus 로고
    • WILLIAM M. LANDES & RICHARD A. POSNER, THE ECONOMIC STRUCTURE OF INTELLECTUAL PROPERTY LAW 7 (2003).
    • WILLIAM M. LANDES & RICHARD A. POSNER, THE ECONOMIC STRUCTURE OF INTELLECTUAL PROPERTY LAW 7 (2003).
  • 9
    • 37749049486 scopus 로고    scopus 로고
    • See, e.g., Rochelle Cooper Dreyfuss, The Federal Circuit: A Case Study in Specialized Courts, 64 N.Y.U. L. REV. 1, 74 (1989) (concluding that [o]n the whole, the [Federal Circuit] experiment has worked well for patent law, which is now more uniform, easier to apply, and more responsive to national interests).
    • See, e.g., Rochelle Cooper Dreyfuss, The Federal Circuit: A Case Study in Specialized Courts, 64 N.Y.U. L. REV. 1, 74 (1989) (concluding that "[o]n the whole, the [Federal Circuit] experiment has worked well for patent law, which is now more uniform, easier to apply, and more responsive to national interests").
  • 10
    • 37749000867 scopus 로고    scopus 로고
    • See Rochelle Cooper Dreyfuss, The Federal Circuit: A Continuing Experiment in Specialization, 54 CASE W. RES. L. REV. 769, 770 (2004) (Practitioners appear to be in general agreement that centralizing patent appeals in a single court is a vast improvement over regional adjudication.).
    • See Rochelle Cooper Dreyfuss, The Federal Circuit: A Continuing Experiment in Specialization, 54 CASE W. RES. L. REV. 769, 770 (2004) ("Practitioners appear to be in general agreement that centralizing patent appeals in a single court is a vast improvement over regional adjudication.").
  • 11
    • 0345547423 scopus 로고    scopus 로고
    • Policy Levers in
    • See, e.g, Patent Law, 89 VA. L. REV. 1575, 1578 2003, asserting that in the software and biotechnology industries, the Federal Circuit fails to realize that the policies in its case law are precisely backwards
    • See, e.g., Dan L. Burk & Mark A. Lemley, Policy Levers in Patent Law, 89 VA. L. REV. 1575, 1578 (2003) (asserting that in the software and biotechnology industries, the Federal Circuit fails to realize that the policies in its case law are "precisely backwards");
    • Burk, D.L.1    Lemley, M.A.2
  • 12
    • 37749045343 scopus 로고    scopus 로고
    • Dreyfuss, supra note 6, at 782 (observing that issues concerning the breadth of patent rights are being heavily investigated by legal and economic theorists, yet the court does not cite the literature these scholars have generated).
    • Dreyfuss, supra note 6, at 782 (observing that issues concerning the breadth of patent rights "are being heavily investigated by legal and economic theorists, yet the court does not cite the literature these scholars have generated").
  • 13
    • 69849103111 scopus 로고    scopus 로고
    • Formalism at the Federal Circuit, 52
    • John R. Thomas, Formalism at the Federal Circuit, 52 AM. U. L. REV. 771, 773 (2003).
    • (2003) AM. U. L. REV , vol.771 , pp. 773
    • Thomas, J.R.1
  • 14
    • 37748999663 scopus 로고    scopus 로고
    • Brief for the United States as Amicus Curiae Supporting Petitioner at 10, 16, KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727 (2007) (No. 04-1350).
    • Brief for the United States as Amicus Curiae Supporting Petitioner at 10, 16, KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727 (2007) (No. 04-1350).
  • 15
    • 44449144774 scopus 로고    scopus 로고
    • Patent Law, the Federal Circuit, and the Supreme Court: A Quiet Revolution, 11 SUP. CT
    • Glynn S. Lunney, Jr., Patent Law, the Federal Circuit, and the Supreme Court: A Quiet Revolution, 11 SUP. CT. ECON. REV. 1, 76 (2004);
    • (2004) ECON. REV , vol.1 , pp. 76
    • Lunney Jr., G.S.1
  • 16
    • 28744451071 scopus 로고    scopus 로고
    • see also Gideon Parchomovsky & R. Polk Wagner, Patent Portfolios, 154 U. PA. L. REV. 1, 40-41 (2005) (discussing key areas of expanding uncertainty in Federal Circuit doctrine, including areas such as claim construction methodology, the doctrine of equivalents, and the written description requirement).
    • see also Gideon Parchomovsky & R. Polk Wagner, Patent Portfolios, 154 U. PA. L. REV. 1, 40-41 (2005) (discussing "key areas of expanding uncertainty" in Federal Circuit doctrine, including areas such as claim construction methodology, the doctrine of equivalents, and the written description requirement).
  • 17
    • 37749032618 scopus 로고    scopus 로고
    • Christian A. Chu, Empirical Analysis of the Federal Circuit's Claim Construction Trends, 16 BERKELEY TECH. L.J. 1075, 1100(2001).
    • Christian A. Chu, Empirical Analysis of the Federal Circuit's Claim Construction Trends, 16 BERKELEY TECH. L.J. 1075, 1100(2001).
  • 18
    • 37749018697 scopus 로고    scopus 로고
    • Dreyfuss, supra note 6, at 772-86
    • Dreyfuss, supra note 6, at 772-86.
  • 19
    • 37749016140 scopus 로고    scopus 로고
    • Kimberly A. Moore, Markman Eight Years Later: Is Claim Construction More Predictable?, 9 LEWIS & CLARK L. REV. 231, 246-47 (2005) (With judicial claim construction now nearing its adolescence ..., there should be more predictability. The reversal rate ought to be going down, not up.).
    • Kimberly A. Moore, Markman Eight Years Later: Is Claim Construction More Predictable?, 9 LEWIS & CLARK L. REV. 231, 246-47 (2005) ("With judicial claim construction now nearing its adolescence ..., there should be more predictability. The reversal rate ought to be going down, not up.").
  • 20
    • 37749030994 scopus 로고    scopus 로고
    • The issue of centralization as a means of achieving uniformity most recently has been raised in the context of immigration law. See Comprehensive Immigration Reform Act of 2006, S. 2611, 109th Cong. § 707(b)1, introduced Apr. 7, 2006, calling for the consolidation of immigration appeals into an existing circuit court, such as the United States Court of Appeals for the Federal Circuit, This particular provision has been subjected to a great deal of criticism
    • The issue of centralization as a means of achieving uniformity most recently has been raised in the context of immigration law. See Comprehensive Immigration Reform Act of 2006, S. 2611, 109th Cong. § 707(b)(1) (introduced Apr. 7, 2006) (calling for the consolidation of immigration "appeals into an existing circuit court, such as the United States Court of Appeals for the Federal Circuit"). This particular provision has been subjected to a great deal of criticism.
  • 21
    • 37749047577 scopus 로고    scopus 로고
    • See, e.g., Letter from law school deans and legal scholars to Arlen Specter, Chairman, Comm. of the Judiciary (Mar. 14, 2006), available at http://www.law.yale.edu/documents/pdf/LettertoSenSpecter(1).pdf.
    • See, e.g., Letter from law school deans and legal scholars to Arlen Specter, Chairman, Comm. of the Judiciary (Mar. 14, 2006), available at http://www.law.yale.edu/documents/pdf/LettertoSenSpecter(1).pdf.
  • 22
    • 37749027580 scopus 로고    scopus 로고
    • See 28 U.S.C. § 1295(a)1, 2000, We refer to the Federal Circuit jurisdiction over patent appeals as exclusive because, as a practical matter, that accurately describes the reality. We recognize that, in some very rare circumstances, it remains possible to have other federal circuits review patent cases
    • See 28 U.S.C. § 1295(a)(1) (2000). We refer to the Federal Circuit jurisdiction over patent appeals as "exclusive" because, as a practical matter, that accurately describes the reality. We recognize that, in some very rare circumstances, it remains possible to have other federal circuits review patent cases.
  • 23
    • 37749019744 scopus 로고    scopus 로고
    • Hon. Paul R. Michel, Keynote Presentation, Berkeley Center for Law & Technology Conference on Patent System Reform, Mar. 1, 2002 (transcribed by Gerald T. Peters, posted to Internet Patent News Service, patnews@patenting-art.com Greg Aharonian ed, Aug. 1, 2002, on file with Nw. U. L. REV
    • Hon. Paul R. Michel, Keynote Presentation, Berkeley Center for Law & Technology Conference on Patent System Reform, Mar. 1, 2002 (transcribed by Gerald T. Peters), posted to Internet Patent News Service, patnews@patenting-art.com (Greg Aharonian ed., Aug. 1, 2002) (on file with Nw. U. L. REV.).
  • 24
    • 37749028762 scopus 로고    scopus 로고
    • Randall R. Rader, The United States Court of Appeals for the Federal Circuit: The Promise and Perils of a Court of Limited Jurisdiction, 5 MARQ. INTELL. PROP. L. REV. 1, 4 (2001).
    • Randall R. Rader, The United States Court of Appeals for the Federal Circuit: The Promise and Perils of a Court of Limited Jurisdiction, 5 MARQ. INTELL. PROP. L. REV. 1, 4 (2001).
  • 25
    • 37749041693 scopus 로고    scopus 로고
    • notes 101-03
    • See infra notes 101-03.
    • See infra
  • 26
    • 37749049485 scopus 로고    scopus 로고
    • The Federal Circuit has, however, been notably unresponsive to the views of district judges in the one area, claim construction, in which district judges have been most critical of current circuit doctrine. See infra note 99.
    • The Federal Circuit has, however, been notably unresponsive to the views of district judges in the one area, claim construction, in which district judges have been most critical of current circuit doctrine. See infra note 99.
  • 27
    • 37749048921 scopus 로고    scopus 로고
    • While we are sympathetic to arguments calling for reform at the district court level, and agree that there needs to be reform at the PTO level, these institutional proposals do not fully address patent law at the appellate level, where policymaking is most pronounced. For notable examples of district court reform proposals, see H.R. 5418, 109th Cong, 2006, proposing to have greater centralization of patent cases at the district court level and to allow district court judges the option to hear more patent cases;
    • While we are sympathetic to arguments calling for reform at the district court level, and agree that there needs to be reform at the PTO level, these institutional proposals do not fully address patent law at the appellate level, where policymaking is most pronounced. For notable examples of district court reform proposals, see H.R. 5418, 109th Cong. (2006) (proposing to have greater centralization of patent cases at the district court level and to allow district court judges the option to hear more patent cases);
  • 28
    • 36949026671 scopus 로고    scopus 로고
    • Forum Shopping in
    • Patent Cases: Does Geographic Choice Affect Innovation, 79 N.C. L. REV. 889 2001, recommending the creation of specialized patent trial courts and other reforms to reduce current problems with forum shopping for favorable trial courts
    • Kimberly A. Moore, Forum Shopping in Patent Cases: Does Geographic Choice Affect Innovation?, 79 N.C. L. REV. 889 (2001) (recommending the creation of specialized patent trial courts and other reforms to reduce current problems with forum shopping for favorable trial courts);
    • Moore, K.A.1
  • 29
    • 0038034789 scopus 로고    scopus 로고
    • Arti K. Rai, Engaging Facts and Policy: A Multi-Institutional Approach to Patent System Reform, 103 COLUM. L. REV. 1035 2003, proposing mechanisms to create greater patent expertise in trial courts and thereby to permit the Federal Circuit to grant more deference to trial court judgments
    • Arti K. Rai, Engaging Facts and Policy: A Multi-Institutional Approach to Patent System Reform, 103 COLUM. L. REV. 1035 (2003) (proposing mechanisms to create greater patent expertise in trial courts and thereby to permit the Federal Circuit to grant more deference to trial court judgments).
  • 30
    • 37749030691 scopus 로고    scopus 로고
    • Raaj Sah and Joseph Stiglitz have defined polyarchy as a system in which there are several (and possibly competing) decision makers who can undertake projects (or ideas) independently of one another. Raaj Kumar Sah & Joseph E. Stiglitz, The Architecture of Economic Systems: Hierarchies and Polyarchies, 76 AM. ECON. REV. 716, 716 (1986). They compare a polyarchy design model to a hierarchy design model, which has only a few individuals (or only one individual) [that] undertake projects while others provide support in decision making.
    • Raaj Sah and Joseph Stiglitz have defined polyarchy "as a system in which there are several (and possibly competing) decision makers who can undertake projects (or ideas) independently of one another." Raaj Kumar Sah & Joseph E. Stiglitz, The Architecture of Economic Systems: Hierarchies and Polyarchies, 76 AM. ECON. REV. 716, 716 (1986). They compare a polyarchy design model to a hierarchy design model, which has "only a few individuals (or only one individual) [that] undertake projects while others provide support in decision making."
  • 31
    • 37749004244 scopus 로고    scopus 로고
    • Id
    • Id.
  • 32
    • 33749854026 scopus 로고
    • The Uses of Jurisdictional Redundancy: Interest, Ideology, and Innovation, 22
    • Robert M. Cover, The Uses of Jurisdictional Redundancy: Interest, Ideology, and Innovation, 22 WM. & MARY L. REV. 639 (1981).
    • (1981) WM. & MARY L. REV , vol.639
    • Cover, R.M.1
  • 33
    • 37749040252 scopus 로고    scopus 로고
    • The benefits of diversity were voiced by some members of the patent bar during hearings on the creation of the Federal Circuit. For example, James Geriak, in his testimony before the House subcommittee on the judiciary, stated, u]niformity, without more, i.e, without regard to whether the uniformity produces beneficial or detrimental results, is quite plainly not a desirable objective. The diversity fostered in so many different ways by our federal systems has proven itself to be extraordinarily useful and beneficial. Court of Appeals for the Federal Circuit: Hearing on H.R. 2405 Before the Subcomm. on Courts, Civil Liberties and the Admin. of Justice of the H. Comm. on the Judiciary, 97th Cong. 85 1981, testimony of James W. Geriak, hereinafter Hearings
    • The benefits of diversity were voiced by some members of the patent bar during hearings on the creation of the Federal Circuit. For example, James Geriak, in his testimony before the House subcommittee on the judiciary, stated, "[u]niformity, without more, i.e., without regard to whether the uniformity produces beneficial or detrimental results, is quite plainly not a desirable objective. The diversity fostered in so many different ways by our federal systems has proven itself to be extraordinarily useful and beneficial." Court of Appeals for the Federal Circuit: Hearing on H.R. 2405 Before the Subcomm. on Courts, Civil Liberties and the Admin. of Justice of the H. Comm. on the Judiciary, 97th Cong. 85 (1981) (testimony of James W. Geriak) [hereinafter Hearings].
  • 34
    • 37749002352 scopus 로고    scopus 로고
    • Over the five-year period from May 2002 to May 2007, the Court issued opinions in nine patent cases (with one case not decided on the merits, and in those cases, some members of the Supreme Court expressed a desire for a more generalist approach to patent law. See, e.g, Lab. Corp. of Am. v. Metabolite Labs, Inc, 126 S. Ct. 2921, 2929 (2006, Breyer, J, dissenting from decision to dismiss a case as improvidently granted, A] decision from this generalist Court could contribute to the important ongoing debate, among both specialists and generalists, as to whether the patent system, as currently administered and enforced, adequately reflects the 'careful balance' that 'the federal patent laws, embod[y, quoting Bonito Boats, Inc. v. Thunder Craft Boats, Inc, 489 U.S. 141, 146 (1989), Holmes Group, Inc. v. Vornado Air Circulation Sys, Inc, 535 U.S. 826, 839 2002, Stevens, J, concurring, 0]ccasional decisions by courts with broader jurisdiction
    • Over the five-year period from May 2002 to May 2007, the Court issued opinions in nine patent cases (with one case not decided on the merits), and in those cases, some members of the Supreme Court expressed a desire for a more generalist approach to patent law. See, e.g., Lab. Corp. of Am. v. Metabolite Labs., Inc., 126 S. Ct. 2921, 2929 (2006) (Breyer, J., dissenting from decision to dismiss a case as improvidently granted) ("[A] decision from this generalist Court could contribute to the important ongoing debate, among both specialists and generalists, as to whether the patent system, as currently administered and enforced, adequately reflects the 'careful balance' that 'the federal patent laws.. , embod[y]."' (quoting Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 146 (1989))); Holmes Group, Inc. v. Vornado Air Circulation Sys., Inc., 535 U.S. 826, 839 (2002) (Stevens, J., concurring) ("[0]ccasional decisions by courts with broader jurisdiction will provide an antidote to the risk that the specialized court may develop an institutional bias.").
  • 35
    • 37749002768 scopus 로고    scopus 로고
    • See also Duffy, supra note 2, at 297-99 (noting the increased level of Supreme Court interest in patent cases from 1995 to 2002);
    • See also Duffy, supra note 2, at 297-99 (noting the increased level of Supreme Court interest in patent cases from 1995 to 2002);
  • 36
    • 37749044204 scopus 로고    scopus 로고
    • ROBERT P. MERGES & JOHN F. DUFFY, PATENT LAW AND POLICY 1050-51 (4th ed. 2007) (noting the Supreme Court's continuing interest in patent cases and listing the nine cases decided 2002-2007).
    • ROBERT P. MERGES & JOHN F. DUFFY, PATENT LAW AND POLICY 1050-51 (4th ed. 2007) (noting the Supreme Court's continuing interest in patent cases and listing the nine cases decided 2002-2007).
  • 37
    • 37749045830 scopus 로고    scopus 로고
    • The Eleventh Circuit was created just prior to the creation of the Federal Circuit, so as a practical matter the pre-Federal Circuit period had a total of twelve circuits hearing patent cases. Nevertheless, we count the number of pre-Federal Circuit appellate courts with patent jurisdiction as thirteen because (1) that number is theoretically correct, and (2) it is the number that would exist if the Federal Circuit were not created.
    • The Eleventh Circuit was created just prior to the creation of the Federal Circuit, so as a practical matter the pre-Federal Circuit period had a total of twelve circuits hearing patent cases. Nevertheless, we count the number of pre-Federal Circuit appellate courts with patent jurisdiction as thirteen because (1) that number is theoretically correct, and (2) it is the number that would exist if the Federal Circuit were not created.
  • 38
    • 37749001963 scopus 로고    scopus 로고
    • S. REP. NO. 97-275, at 1(1981).
    • S. REP. NO. 97-275, at 1(1981).
  • 39
    • 37749001459 scopus 로고    scopus 로고
    • We are referring to cases based on district court jurisdiction under 28 U.S.C. § 1338a, 2000, The district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents, plant variety protection, copyrights and trademarks. Such jurisdiction shall be exclusive of the courts of the states in patent, plant variety protection and copyright cases, Although our selection of two circuits is somewhat arbitrary, we do think it is important to begin the expansion slowly in order to see how the circuit courts and patent players respond
    • We are referring to cases based on district court jurisdiction under 28 U.S.C. § 1338(a) (2000) ("The district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents, plant variety protection, copyrights and trademarks. Such jurisdiction shall be exclusive of the courts of the states in patent, plant variety protection and copyright cases."), Although our selection of two circuits is somewhat arbitrary, we do think it is important to begin the expansion slowly in order to see how the circuit courts and patent players respond.
  • 40
    • 37749012107 scopus 로고    scopus 로고
    • Currently, the Federal Circuit has exclusive appellate jurisdiction for appeals arising from the PTO. See 28 U.S.C. § 1295(a)4, 2000
    • Currently, the Federal Circuit has exclusive appellate jurisdiction for appeals arising from the PTO. See 28 U.S.C. § 1295(a)(4) (2000).
  • 41
    • 37749027822 scopus 로고    scopus 로고
    • See infra Part II.D, discussing the D.C. Circuit's administrative docket.
    • See infra Part II.D, discussing the D.C. Circuit's administrative docket.
  • 42
    • 37749027235 scopus 로고    scopus 로고
    • Interestingly, the creation of the Federal Circuit in 1982 was not, to say the least, uniformly endorsed. An American Bar Association (ABA) Report and Recommendation disapproving of the creation of the Federal Circuit was adopted by the ABA House of Delegates in 1980. Hearings, supra note 22, at 760 (testimony of Benjamin L. Zelenko).
    • Interestingly, the creation of the Federal Circuit in 1982 was not, to say the least, uniformly endorsed. An American Bar Association (ABA) Report and Recommendation disapproving of the creation of the Federal Circuit was adopted by the ABA House of Delegates in 1980. Hearings, supra note 22, at 760 (testimony of Benjamin L. Zelenko).
  • 43
    • 37749048920 scopus 로고    scopus 로고
    • at 69 (testimony of James W. Geriak) (stating it would be a very, very substantial error for the subcommittee to conclude that all patent lawyers are agreed upon the desirability of the
    • See also
    • See also id. at 69 (testimony of James W. Geriak) (stating it "would be a very, very substantial error for the subcommittee to conclude that all patent lawyers are agreed upon the desirability of the . . . Federal Circuit legislation");
    • Federal Circuit legislation)
  • 44
    • 44449087816 scopus 로고    scopus 로고
    • The Political Economy of Patent Policy Reform in the
    • United States 20-25 Dynamics of Insts. & Mkts. in Eur, Working Paper No. 26, Dec. 2006, discussing opposition to creation of Federal Circuit, manuscript on file with authors
    • F.M. Scherer, The Political Economy of Patent Policy Reform in the United States 20-25 (Dynamics of Insts. & Mkts. in Eur., Working Paper No. 26, Dec. 2006) (discussing opposition to creation of Federal Circuit) (manuscript on file with authors).
    • Scherer, F.M.1
  • 45
    • 37749039816 scopus 로고    scopus 로고
    • See infra Part II.A-B.
    • See infra Part II.A-B.
  • 46
    • 37749044588 scopus 로고    scopus 로고
    • See, e.g., Bruce Ackerman, The New Separation of Powers, 113 HARV. L. REV. 633 (2000) (arguing that a consolidated, European-style parliamentary system is superior to the American-style system of separated powers provided that the parliamentary system is constrained by other governmental institutions that enjoy some degree of independence and separation from parliamentary power).
    • See, e.g., Bruce Ackerman, The New Separation of Powers, 113 HARV. L. REV. 633 (2000) (arguing that a consolidated, European-style parliamentary system is superior to the American-style system of separated powers provided that the parliamentary system is constrained by other governmental institutions that enjoy some degree of independence and separation from parliamentary power).
  • 47
    • 37749039130 scopus 로고    scopus 로고
    • See RICHARD A. POSNER, THE FEDERAL COURTS: CRISIS AND REFORM 172-81 (1985) (discussing the optimal division of judicial workload between the federal and state courts);
    • See RICHARD A. POSNER, THE FEDERAL COURTS: CRISIS AND REFORM 172-81 (1985) (discussing the optimal division of judicial workload between the federal and state courts);
  • 48
    • 0037646167 scopus 로고    scopus 로고
    • Gordon Tullock, Federalism: Problems of Scale, 6 PUB. CHOICE 19, 19 (1969) (discussing the optimal scale of production for [a] governmental service).
    • Gordon Tullock, Federalism: Problems of Scale, 6 PUB. CHOICE 19, 19 (1969) (discussing the "optimal scale of production for [a] governmental service").
  • 49
    • 37749032617 scopus 로고    scopus 로고
    • See, e.g., George A. Bermann, Taking Subsidiarity Seriously: Federalism in the European Community and the United States, 94 COLUM. L. REV. 332 (1994) (discussing the European Union's attempt to respect decentralized authority despite its overall mission of maintaining centralized control of the common market).
    • See, e.g., George A. Bermann, Taking Subsidiarity Seriously: Federalism in the European Community and the United States, 94 COLUM. L. REV. 332 (1994) (discussing the European Union's attempt to respect decentralized authority despite its overall mission of maintaining centralized control of the common market).
  • 50
    • 37749030993 scopus 로고    scopus 로고
    • See, e.g., Malcolm B. Coate, Efficiencies in Merger Analysis: An Institutionalist View, 13 SUP. CT. ECON. REV. 189 (2005) (applying transaction-cost economics to the study of optimal merger enforcement);
    • See, e.g., Malcolm B. Coate, Efficiencies in Merger Analysis: An Institutionalist View, 13 SUP. CT. ECON. REV. 189 (2005) (applying transaction-cost economics to the study of optimal merger enforcement);
  • 51
    • 33947654442 scopus 로고    scopus 로고
    • Michael L. Katz & Howard A. Shelanski, Merges and Innovation, 74 ANTITRUST L. J. 1 (2007) (analyzing the relationship between merger policy and innovation).
    • Michael L. Katz & Howard A. Shelanski, Merges and Innovation, 74 ANTITRUST L. J. 1 (2007) (analyzing the relationship between merger policy and innovation).
  • 52
    • 84979188687 scopus 로고    scopus 로고
    • The classic work is, of course, Ronald H. Coase, The Nature of the Firm, 4 ECONOMICA 386 (1937).
    • The classic work is, of course, Ronald H. Coase, The Nature of the Firm, 4 ECONOMICA 386 (1937).
  • 53
    • 37749052498 scopus 로고    scopus 로고
    • Even within firms, excessive centralization of decisionmaking may be suboptimal. See, e.g., JOHN ROBERTS, THE MODERN FIRM: ORGANIZATIONAL DESIGN FOR PERFORMANCE AND GROWTH 55-57 (2004) (noting that, under certain circumstances, a firm may find it optimal to vacillate between centralized and decentralized decisionmaking so as to foster norms of centralization at some middling level of strength).
    • Even within firms, excessive centralization of decisionmaking may be suboptimal. See, e.g., JOHN ROBERTS, THE MODERN FIRM: ORGANIZATIONAL DESIGN FOR PERFORMANCE AND GROWTH 55-57 (2004) (noting that, under certain circumstances, a firm may find it optimal to vacillate between centralized and decentralized decisionmaking so as to foster norms of centralization "at some middling level of strength").
  • 54
    • 37749000402 scopus 로고    scopus 로고
    • Contributions to this literature include: Edmund W. Kitch, The Nature and Function of the Patent System, 20 J. L. & ECON, 265, 265-66, 278 1977, providing efficiency justification for coordinating innovation
    • Contributions to this literature include: Edmund W. Kitch, The Nature and Function of the Patent System, 20 J. L. & ECON, 265, 265-66, 278 (1977) (providing efficiency justification for coordinating innovation);
  • 55
    • 2942520956 scopus 로고    scopus 로고
    • John F. Duffy, Rethinking the Prospect Theory of Patents, 71 U. CHI. L. REV. 439 (2004) (providing additional rationale for coordinating innovation);
    • John F. Duffy, Rethinking the Prospect Theory of Patents, 71 U. CHI. L. REV. 439 (2004) (providing additional rationale for coordinating innovation);
  • 56
    • 34547759046 scopus 로고    scopus 로고
    • On the Complex Economics of
    • Patent Scope, 90 COLUM. L. REV. 839, 872 1990, arguing that while [i]n principle coordinated development of innovations could be better than decentralized development, in practice it generally is not
    • Robert P. Merges & Richard R. Nelson, On the Complex Economics of Patent Scope, 90 COLUM. L. REV. 839, 872 (1990) (arguing that while "[i]n principle" coordinated development of innovations could be better than decentralized development, "in practice it generally is not").
    • Merges, R.P.1    Nelson, R.R.2
  • 57
    • 84954985316 scopus 로고    scopus 로고
    • See, note 34, at, some instances, innovation may be greater when concentration is greater
    • See Katz & Shelanski, supra note 34, at 2 ("In some instances, innovation may be greater when concentration is greater.").
    • supra , pp. 2
    • Katz1    Shelanski2
  • 58
    • 2142639536 scopus 로고    scopus 로고
    • See, e.g., R. Polk Wagner & Lee Petherbridge, Is the Federal Circuit Succeeding? An Empirical Assessment of Judicial Performance, 152 U. PA. L. REV. 1105, 1112 (2004) (finding that claim construction at the Federal Circuit is panel dependent). The charge of panel dependency remains a controversial one.
    • See, e.g., R. Polk Wagner & Lee Petherbridge, Is the Federal Circuit Succeeding? An Empirical Assessment of Judicial Performance, 152 U. PA. L. REV. 1105, 1112 (2004) (finding "that claim construction at the Federal Circuit is panel dependent"). The charge of panel dependency remains a controversial one.
  • 59
    • 34547786000 scopus 로고    scopus 로고
    • Are District Court Judges Equipped to Resolve
    • See, e.g, Patent Cases, 12 FED. CIR. B.J. 1, 21 2003, reporting an empirical survey that demonstrates a surprisingly high degree of conformance among voting patterns of the Federal Circuit judges in these claim construction appeals
    • See, e.g., Kimberly A. Moore, Are District Court Judges Equipped to Resolve Patent Cases?, 12 FED. CIR. B.J. 1, 21 (2003) (reporting an empirical survey that demonstrates a surprisingly "high degree of conformance among voting patterns of the Federal Circuit judges in these claim construction appeals");
    • Moore, K.A.1
  • 60
    • 37749044440 scopus 로고    scopus 로고
    • Chu, supra note 11, at 1079 (examining the panel-dependency hypothesis andshowing, through empirical study, that the identity of the Federal Circuit judge who authors the majority decision does not appear to influence the outcome of the appeal);
    • Chu, supra note 11, at 1079 (examining the "panel-dependency hypothesis" andshowing, through empirical study, that "the identity of the Federal Circuit judge who authors the majority decision does not appear to influence the outcome of the appeal");
  • 61
    • 37749015056 scopus 로고    scopus 로고
    • How Federal Circuit Judges Vote in
    • Patent Validity Cases, 27 FLA. ST. U. L. REV. 745, 766 2000, finding patent validity outcomes depended on the facts of the case, and not on the composition of the panel
    • John R. Allison & Mark A. Lemlcy. How Federal Circuit Judges Vote in Patent Validity Cases, 27 FLA. ST. U. L. REV. 745, 766 (2000) (finding patent validity outcomes "depended on the facts of the case, and not on the composition of the panel").
    • Allison, J.R.1    Lemlcy, M.A.2
  • 62
    • 84937335221 scopus 로고    scopus 로고
    • Indeed, all courts of appeals are panel dependent to some extent, and it is unclear if the panel dependency at the Federal Circuit is worse that other circuits. See Issac Unah, The Incidence and Structure of Conflict on the U.S. Court of Appeals for the Federal Circuit, 23 LAW & POL'Y 69 (2001) (finding internal Federal Circuit conflict comparable to other regional circuit courts in matters of international trade and customs);
    • Indeed, all courts of appeals are panel dependent to some extent, and it is unclear if the panel dependency at the Federal Circuit is worse that other circuits. See Issac Unah, The Incidence and Structure of Conflict on the U.S. Court of Appeals for the Federal Circuit, 23 LAW & POL'Y 69 (2001) (finding internal Federal Circuit conflict comparable to other regional circuit courts in matters of international trade and customs);
  • 63
    • 37749015282 scopus 로고    scopus 로고
    • Gregory M. Stein, Regulatory Takings and Ripeness in the Federal Courts, 48 VAND. L. REV. 1, 77(1995) (asserting that Ninth Circuit law is extremely panel-dependent on a particular issue concerning regulatory takings);
    • Gregory M. Stein, Regulatory Takings and Ripeness in the Federal Courts, 48 VAND. L. REV. 1, 77(1995) (asserting that Ninth Circuit law is "extremely panel-dependent" on a particular issue concerning regulatory takings);
  • 64
    • 37749024409 scopus 로고    scopus 로고
    • see also Paul R. Michel, The Court of Appeals for the Federal Circuit Must Evolve to Meet the Challenges Ahead. 48 AM. U. L. REV. 1177, 1191 1999, stating, I believe that the complaint regarding panel dependency may be symptomatic of broader ills, such as, indeterminacy' or 'unpredictability' and that [i]n the areas of public contract, trade, or takings law, similar assertions can be made, Moreover, as Rochelle Dreyfuss has noted, some level of inconsistency in outcomes should be tolerated because the court does not have the benefit of different approaches to patent law generated by other circuit courts; therefore, i]f the Federal Circuit is to obtain these advantages in the specialty portion of its docket, then the debate would largely be among the panels of the court, rather than with the regional circuits
    • see also Paul R. Michel, The Court of Appeals for the Federal Circuit Must Evolve to Meet the Challenges Ahead. 48 AM. U. L. REV. 1177, 1191 (1999) (stating, "I believe that the complaint regarding panel dependency may be symptomatic of broader ills, such as, 'indeterminacy' or 'unpredictability'" and that "[i]n the areas of public contract, trade, or takings law, similar assertions can be made"), Moreover, as Rochelle Dreyfuss has noted, "some level of inconsistency in outcomes should be tolerated" because the court does not have the benefit of different approaches to patent law generated by other circuit courts; therefore, "[i]f the Federal Circuit is to obtain these advantages in the specialty portion of its docket, then the debate would largely be among the panels of the court, rather than with the regional circuits."
  • 65
    • 37749015615 scopus 로고    scopus 로고
    • Dreyfuss, supra note 6, at 775. One could plausibly Infer from Dreyfuss's observation that a multi-circuit model would lead to less internal inconsistency at the Federal Circuit. This inference is in need of empirical support, but we are comfortable suggesting that it is unlikely that a multi-circuit model will exacerbate internal inconsistency.
    • Dreyfuss, supra note 6, at 775. One could plausibly Infer from Dreyfuss's observation that a multi-circuit model would lead to less internal inconsistency at the Federal Circuit. This inference is in need of empirical support, but we are comfortable suggesting that it is unlikely that a multi-circuit model will exacerbate internal inconsistency.
  • 66
    • 37749038007 scopus 로고    scopus 로고
    • For example, if a single court handled all matters related to airline regulation, major airlines would be able to concentrate their efforts in lobbying for appointees who would favor their interests and, significantly, other interest groups may not be sufficiently interested in the matter to lobby one way or the other. Yet if airline matters arc adjudicated by a court with general jurisdiction, then many interest groups would care and lobby on appointment issues, The competing factions would tend to dilute the power of any single interest to dominate
    • For example, if a single court handled all matters related to airline regulation, major airlines would be able to concentrate their efforts in lobbying for appointees who would favor their interests and, significantly, other interest groups may not be sufficiently interested in the matter to lobby one way or the other. Yet if airline matters arc adjudicated by a court with general jurisdiction, then many interest groups would care and lobby on appointment issues, The competing factions would tend to dilute the power of any single interest to dominate.
  • 67
    • 37749014279 scopus 로고    scopus 로고
    • See, e.g, Lawrence Baum, Judicial Specialization, Litigant Influence, and Substantive Policy: The Court of Customs and Patent Appeals, 11 LAW & SOC'Y REV. 823 1977, arguing that court specialization enhances the likelihood of litigant interest groups affecting substantive policy
    • See, e.g., Lawrence Baum, Judicial Specialization, Litigant Influence, and Substantive Policy: The Court of Customs and Patent Appeals, 11 LAW & SOC'Y REV. 823 (1977) (arguing that court specialization enhances the likelihood of litigant interest groups affecting substantive policy);
  • 68
    • 1842664246 scopus 로고    scopus 로고
    • William M. Landes & Richard A. Posner, An Empirical Analysis of the Patent Court, 71 U. CHI. L. REV. 111, 111-12 (2003) (hypothesizing that a specialized patent court is more likely than a generalist court to take astrong stance on its subject matter because interest groups that had a stake in patent policy would be bound to play a larger role in the appointment of the judges of such a court than they would in the case of the generalist federal courts; and reporting empirical evidence to support the view that the Federal Circuit is pro-patent in comparison to the regional circuits it displaced);
    • William M. Landes & Richard A. Posner, An Empirical Analysis of the Patent Court, 71 U. CHI. L. REV. 111, 111-12 (2003) (hypothesizing that a specialized patent court is more likely than a generalist court to take astrong stance on its subject matter because "interest groups that had a stake in patent policy would be bound to play a larger role in the appointment of the judges of such a court than they would in the case of the generalist federal courts"; and reporting empirical evidence to support the view that the Federal Circuit is "pro-patent" in comparison to the regional circuits it displaced);
  • 69
    • 37749045068 scopus 로고    scopus 로고
    • Richard A. Posner, Speech at American Enterprise Institute (Nov. 19, 2002),
    • Richard A. Posner, Speech at American Enterprise Institute (Nov. 19, 2002),
  • 70
    • 37749042815 scopus 로고    scopus 로고
    • reported in Declan McCullagh, Left Gets Nod from Right on Copyright Law, CNET NEWS, Nov. 20, 2002, http://news.com.com/2100- 1023-966595.html (A specialized court tends to see itself as a booster of its speciality.). By contrast, Rochelle Dreyfuss has argued that bias at the Federal Circuit seems unlikely because a majority of the court's judges are not former patent attorneys; the court has a diverse docket; and parties that appear before the court are often well-financed, enjoy the advantages of repeat play, and (because the patent bar is not split along plaintiff/defendant lines) have access to the same representation.
    • reported in Declan McCullagh, Left Gets Nod from Right on Copyright Law, CNET NEWS, Nov. 20, 2002, http://news.com.com/2100- 1023-966595.html ("A specialized court tends to see itself as a booster of its speciality."). By contrast, Rochelle Dreyfuss has argued that bias at the Federal Circuit "seems unlikely" because a majority of the court's judges are not former patent attorneys; the court has a diverse docket; and parties that appear before the court "are often well-financed, enjoy the advantages of repeat play, and (because the patent bar is not split along plaintiff/defendant lines) have access to the same representation."
  • 71
    • 37749001154 scopus 로고    scopus 로고
    • Rochelle Dreyfuss, Pathological Patenting: The PTO as Cause or Cure, 104 MICH. L. REV. 1559, 1569 (2006). Moreover, Dreyfuss notes that [b]ecause knowledge is cumulative, even those who invest in invention do not, in the long run, benefit from laws too protective of patent rights.
    • Rochelle Dreyfuss, Pathological Patenting: The PTO as Cause or Cure, 104 MICH. L. REV. 1559, 1569 (2006). Moreover, Dreyfuss notes that "[b]ecause knowledge is cumulative, even those who invest in invention do not, in the long run, benefit from laws too protective of patent rights."
  • 72
    • 37749045067 scopus 로고    scopus 로고
    • Id. Additionally, in John Allison and Mark Lemley's empirical work on Federal Circuit voting patterns in validity cases, they conclude that while judges with prior patent experience wrote 62.9% of the patent validity opinions, there is no significant difference in the voting patterns of judges with and without patent experience.
    • Id. Additionally, in John Allison and Mark Lemley's empirical work on Federal Circuit voting patterns in validity cases, they conclude that while judges with prior patent experience wrote 62.9% of the patent validity opinions, there is no "significant difference in the voting patterns of judges with and without patent experience."
  • 73
    • 37749017170 scopus 로고    scopus 로고
    • Allison & Lemley, supra note 38, at 753-54;
    • Allison & Lemley, supra note 38, at 753-54;
  • 74
    • 37749015055 scopus 로고    scopus 로고
    • see also Dreyfuss, supra note 5, at 29-30 (arguing that, with respect to its patent jurisprudence, the Federal Circuit may not be in danger of becoming captive to special interest groups because the court is a 'balanced' specialized court[] that hear[s] cases among evenly matched litigants);
    • see also Dreyfuss, supra note 5, at 29-30 (arguing that, with respect to its patent jurisprudence, the Federal Circuit may not be "in danger of becoming captive to special interest groups" because the court is a "'balanced' specialized court[] that hear[s] cases among evenly matched litigants");
  • 75
    • 37749049482 scopus 로고    scopus 로고
    • Rai, supra note 20, at 1102-15 discussing issues of bias relating to Federal Circuit
    • Rai, supra note 20, at 1102-15 (discussing issues of bias relating to Federal Circuit).
  • 76
    • 37749048494 scopus 로고    scopus 로고
    • See Holmes Group, Inc. v. Vornado Air Circulation Sys., Inc., 539 U.S. 826, 839 (2002) (Stevens, J., concurring) ([O]ccasional decisions by courts with broader jurisdiction will provide an antidote to the risk that the specialized court may develop an institutional bias.).
    • See Holmes Group, Inc. v. Vornado Air Circulation Sys., Inc., 539 U.S. 826, 839 (2002) (Stevens, J., concurring) ("[O]ccasional decisions by courts with broader jurisdiction will provide an antidote to the risk that the specialized court may develop an institutional bias.").
  • 77
    • 37749017663 scopus 로고    scopus 로고
    • See Richard A. Posner, What Do Judges and Justices Maximize? (The Same Thing Everybody Else Does), 3 SUP. CT. ECON. REV. 1 (1993) (suggesting that, among other things, judges seek to maximize judicial reputation and prestige);
    • See Richard A. Posner, What Do Judges and Justices Maximize? (The Same Thing Everybody Else Does), 3 SUP. CT. ECON. REV. 1 (1993) (suggesting that, among other things, judges seek to maximize judicial reputation and prestige);
  • 78
    • 0034557820 scopus 로고    scopus 로고
    • Frederick Schauer, Incentives, Reputation, and the Inglorious Determinants of Judicial Behavior, 68 U. CIN. L. REV. 615 (2000) (arguing that judges are concerned with non-ideological factors such as reputation).
    • Frederick Schauer, Incentives, Reputation, and the Inglorious Determinants of Judicial Behavior, 68 U. CIN. L. REV. 615 (2000) (arguing that judges are concerned with non-ideological factors such as reputation).
  • 79
    • 37749049409 scopus 로고    scopus 로고
    • See J.D. Heydon, Limits to the Powers of Ultimate Appellate Courts, 122 L.Q. REV. 399, 403-05 (2006) (discussing advantages of stare decisis);
    • See J.D. Heydon, Limits to the Powers of Ultimate Appellate Courts, 122 L.Q. REV. 399, 403-05 (2006) (discussing "advantages" of stare decisis);
  • 80
    • 37749045429 scopus 로고    scopus 로고
    • Jonathan R. Macey, The Internal and External Costs and Benefits of Stare Decisis, 65 CHI.-KENT L. REV. 93 (1989) (same).
    • Jonathan R. Macey, The Internal and External Costs and Benefits of Stare Decisis, 65 CHI.-KENT L. REV. 93 (1989) (same).
  • 81
    • 37749011299 scopus 로고    scopus 로고
    • See H.R. REP. NO. 97-312, at 20-21 (1981) (justifying the creation of a single court of appeals on the grounds that some circuit courts are regarded as 'pro-patent' and others 'anti-patent,' and much time and money is expended in 'shopping' for a favorable venue);
    • See H.R. REP. NO. 97-312, at 20-21 (1981) (justifying the creation of a single court of appeals on the grounds that "some circuit courts are regarded as 'pro-patent' and others 'anti-patent,' and much time and money is expended in 'shopping' for a favorable venue");
  • 82
    • 37749050934 scopus 로고    scopus 로고
    • see also LANDES & POSNER, supra note 4, at 334 providing some evidence to support the view that forum shopping could have been a problem in patent cases prior to the creation of the Federal Circuit
    • see also LANDES & POSNER, supra note 4, at 334 (providing some evidence to support the view that forum shopping could have been a problem in patent cases prior to the creation of the Federal Circuit).
  • 83
    • 37749033270 scopus 로고    scopus 로고
    • See infra Part III.A.
    • See infra Part III.A.
  • 85
    • 37749035129 scopus 로고    scopus 로고
    • Id
    • Id.
  • 86
    • 33747488116 scopus 로고    scopus 로고
    • See Andrew P. Morriss & Susan E. Dudley, Defining What to Regulate: Silica and the Problem of Regulatory Categorization, 58 ADMIN. L. REV. 269, 281 (2006) (Hayek's central point was that decentralized markets focus dispersed information-information that no one individual . . . can obtain-and convey it efficiently to market participants.);
    • See Andrew P. Morriss & Susan E. Dudley, Defining What to Regulate: Silica and the Problem of Regulatory Categorization, 58 ADMIN. L. REV. 269, 281 (2006) ("Hayek's central point was that decentralized markets focus dispersed information-information that no one individual . . . can obtain-and convey it efficiently to market participants.");
  • 87
    • 1342268470 scopus 로고    scopus 로고
    • Maxwell L. Stearns, Appellate Courts Inside and Out, 101 MICH. L. REV. 1764, 1777 (2002) (One major benefit of generating information as to value in this decentralized and uncoordinated manner is that countless subjective valuation measures-reflected in the individual transactions - produce an objective valuation that can be tested in the marketplace.).
    • Maxwell L. Stearns, Appellate Courts Inside and Out, 101 MICH. L. REV. 1764, 1777 (2002) ("One major benefit of generating information as to value in this decentralized and uncoordinated manner is that countless subjective valuation measures-reflected in the individual transactions - produce an objective valuation that can be tested in the marketplace.").
  • 88
    • 37749001960 scopus 로고    scopus 로고
    • Randy Barnett writes of the first-order knowledge problem that the distribution of jurisdiction over physical resources should mirror as closely as possible the distribution of access to knowledge in society. Randy E. Barnett, The Sound of Silence: Default Rules and Contractual Consent, 78 VA. L. REV. 821, 841 42 1992, Barnett continues: If a centralized institution charged with allocating jurisdictions knew what it needed to know to make such allocations, a decentralized jurisdictional strategy would be unnecessary. The most we can hope for is to determine the general characteristics of those who are in the best position to have knowledge of potential resource uses, regardless of whether they in fact always have the best knowledge. In sum, we rely on these general characteristics to establish a presumption of competence in favor of individuals and groups who have access to the personal and local knowledge pertaining to their own situa
    • Randy Barnett writes of the "first-order" knowledge problem that "the distribution of jurisdiction over physical resources should mirror as closely as possible the distribution of access to knowledge in society." Randy E. Barnett, The Sound of Silence: Default Rules and Contractual Consent, 78 VA. L. REV. 821, 841 42 (1992). Barnett continues: If a centralized institution charged with allocating jurisdictions knew what it needed to know to make such allocations, a decentralized jurisdictional strategy would be unnecessary. The most we can hope for is to determine the general characteristics of those who are in the best position to have knowledge of potential resource uses, regardless of whether they in fact always have the best knowledge. In sum, we rely on these general characteristics to establish a presumption of competence in favor of individuals and groups who have access to the personal and local knowledge pertaining to their own situation.
  • 89
    • 37749038583 scopus 로고    scopus 로고
    • Id. at 842-43
    • Id. at 842-43.
  • 90
    • 37749041178 scopus 로고    scopus 로고
    • This type of attorney reticence is particularly acute in Federal Circuit practice. See Dreyfuss, supra note 40, at 1570 (noting a repeat-player disadvantage whereby lawyers appearing before the Federal Circuit arc reluctant to reargue issues lest they subject themselves and their clients to the court's criticism);
    • This type of attorney reticence is particularly acute in Federal Circuit practice. See Dreyfuss, supra note 40, at 1570 (noting a "repeat-player disadvantage" whereby lawyers appearing before the Federal Circuit arc reluctant to reargue issues lest they subject themselves and their clients to the court's criticism);
  • 91
    • 37749049224 scopus 로고    scopus 로고
    • Rai, supra note 20, at 1075 (noting that because patent attorneys represent both patent holders and alleged infringers, it is unlikely that attorneys will make sweeping legal and policy arguments that emphasize the problems caused by strong, or numerous, patents).
    • Rai, supra note 20, at 1075 (noting that because patent attorneys represent both patent holders and alleged infringers, it is "unlikely" that attorneys will make "sweeping legal and policy arguments that emphasize the problems caused by strong, or numerous, patents").
  • 92
    • 0345775523 scopus 로고    scopus 로고
    • See generally Oona A. Hathaway, Path Dependence in the Law: The Course and Pattern of Legal Change in a Common Law System, 86 IOWA L. REV. 601, 628 (2001) (Litigants are unlikely to make arguments that stray from existing law . . . because they know that doing so would significantly decrease their likelihood of success. . . .);
    • See generally Oona A. Hathaway, Path Dependence in the Law: The Course and Pattern of Legal Change in a Common Law System, 86 IOWA L. REV. 601, 628 (2001) ("Litigants are unlikely to make arguments that stray from existing law . . . because they know that doing so would significantly decrease their likelihood of success. . . .");
  • 93
    • 37749052497 scopus 로고    scopus 로고
    • Frederick Schauer, Legal Development and the Problem of Systemic Transition, 13 J. CONTEMP. LEGAL ISSUES 261, 273 (2003) (discussing how official training of lawyers lends itself to a path-dependent legal system).
    • Frederick Schauer, Legal Development and the Problem of Systemic Transition, 13 J. CONTEMP. LEGAL ISSUES 261, 273 (2003) (discussing how "official" training of lawyers lends itself to a path-dependent legal system).
  • 94
    • 37749014597 scopus 로고    scopus 로고
    • This advantage holds true without regard to whether judicial activism or restraint is the proper method of judging, and without regard to whether the appellate issue involves a common-law, judicially created doctrine (e.g, the doctrine of equivalents, a pure question of law (e.g, the meaning of solely for uses reasonably related to the development and submission of information, or the interpretation of a doctrine or term that is intensely fact-dependent e.g, constructing a person having ordinary skill in the art
    • This advantage holds true without regard to whether judicial "activism" or "restraint" is the proper method of judging, and without regard to whether the appellate issue involves a common-law, judicially created doctrine (e.g., the doctrine of equivalents); a pure question of law (e.g., the meaning of "solely for uses reasonably related to the development and submission of information"); or the interpretation of a doctrine or term that is intensely fact-dependent (e.g., constructing a person having ordinary skill in the art).
  • 95
    • 37749029039 scopus 로고    scopus 로고
    • As the late Chief Judge Howard Markey noted, t]he necessary rarity of Supreme Court review and the absence of peer-court decisions effectively give the [Federal Circuit] the last word in those areas [under its jurisdiction, Unah, supra note 38, at 74-75 2001, quoting Chief Judge Markey, citation omitted, The literature on human fallibility is instructive here. Courts are comprised of individual judges, and judges, like all individuals, are fallible. This notion of fallibility is particularly pronounced in a centralized setting where there are relatively fewer judges to absorb and internalize the relevant data for any given case, technology, and policy framework. As Raaj Sah has noted, because of scarcity of both time and effort, an individual can typically extract only a part of the decision-relevant information from the limited raw data available
    • As the late Chief Judge Howard Markey noted, '"[t]he necessary rarity of Supreme Court review and the absence of peer-court decisions effectively give the [Federal Circuit] the last word in those areas [under its jurisdiction].'" Unah, supra note 38, at 74-75 (2001) (quoting Chief Judge Markey) (citation omitted). The literature on human fallibility is instructive here. Courts are comprised of individual judges, and judges, like all individuals, are fallible. This notion of fallibility is particularly pronounced in a centralized setting where there are relatively fewer judges to absorb and internalize the relevant data for any given case, technology, and policy framework. As Raaj Sah has noted, because of scarcity of both time and effort, "an individual can typically extract only a part of the decision-relevant information from the limited raw data available."
  • 96
    • 37749033702 scopus 로고    scopus 로고
    • Raaj K. Sah, Fallibility in Human Organizations and Political Systems, 5 J. ECON. PERSP. 67, 82 (1991). But individual fallibility is closely related to organizational design in that an organization's architecture affects, to name a few, the nature of the errors made, who sees what data, what evaluative tools are employed, and who communicates with whom.
    • Raaj K. Sah, Fallibility in Human Organizations and Political Systems, 5 J. ECON. PERSP. 67, 82 (1991). But individual fallibility is closely related to organizational design in that an organization's architecture affects, to name a few, the nature of the errors made, who sees what data, what evaluative tools are employed, and who communicates with whom.
  • 97
    • 37749041697 scopus 로고    scopus 로고
    • See Sah & Stiglitz, supra note 21, at 716 (noting the relevance of the organizational arrangement of individuals to the nature of individual error);
    • See Sah & Stiglitz, supra note 21, at 716 (noting the relevance of the organizational arrangement of individuals to the nature of individual error);
  • 98
    • 37749042418 scopus 로고    scopus 로고
    • see also Sah, supra, at 86 ([T]he nature of the fallibility of an organization, or of any aggregate entity, depends not only on the nature of the fallibility of the individuals who constitute the organization but also on the organization's architecture.).
    • see also Sah, supra, at 86 ("[T]he nature of the fallibility of an organization, or of any aggregate entity, depends not only on the nature of the fallibility of the individuals who constitute the organization but also on the organization's architecture.").
  • 99
    • 37749040560 scopus 로고    scopus 로고
    • See Sah & Stiglitz, supra note 21, at 719
    • See Sah & Stiglitz, supra note 21, at 719.
  • 100
    • 37749038006 scopus 로고    scopus 로고
    • See Sah, supra note 51, at 80 (It seems reasonable to conjecture that the presence of unfamiliarity may induce individual decision-making units to exhibit very high probabilities of rejection of very good projects, and, as a result, a highly hierarchical choice of innovation-oriented projects may hinder innovation.).
    • See Sah, supra note 51, at 80 ("It seems reasonable to conjecture that the presence of unfamiliarity may induce individual decision-making units to exhibit very high probabilities of rejection of very good projects, and, as a result, a highly hierarchical choice of innovation-oriented projects may hinder innovation.").
  • 101
    • 32244435314 scopus 로고    scopus 로고
    • See Oren Bar-Gill & Gideon Parchomovsky, A Marketplace for Ideas?, 84 TEX. L. REV. 395, 406-07 (2005) (pointing to similar observations [as] evidence of the efficiency of decentralized innovation).
    • See Oren Bar-Gill & Gideon Parchomovsky, A Marketplace for Ideas?, 84 TEX. L. REV. 395, 406-07 (2005) (pointing to similar "observations [as] evidence of the efficiency of decentralized innovation").
  • 102
    • 37749024850 scopus 로고    scopus 로고
    • See New State Ice Co. v. Liebmann, 285 U.S. 262, 311 (1932) (Brandeis, J., dissenting) (It is one of the happy incidents of the federal system that a single courageous State may, if its citizens choose, serve as a laboratory; and try novel social and economic experiments without risk to the rest of the country.).
    • See New State Ice Co. v. Liebmann, 285 U.S. 262, 311 (1932) (Brandeis, J., dissenting) ("It is one of the happy incidents of the federal system that a single courageous State may, if its citizens choose, serve as a laboratory; and try novel social and economic experiments without risk to the rest of the country.").
  • 103
    • 37749010524 scopus 로고    scopus 로고
    • See, e.g., THOMAS W. MALONE, THE FUTURE OF WORK: HOW THE NEW ORDER OF BUSINESS WILL SHAPE YOUR ORGANIZATION, YOUR MANAGEMENT STYLE, AND YOUR LIFE 114 (2004) (stating that decentralization encourages motivation and creativity and allows for many minds to work simultaneously on the same problem);
    • See, e.g., THOMAS W. MALONE, THE FUTURE OF WORK: HOW THE NEW ORDER OF BUSINESS WILL SHAPE YOUR ORGANIZATION, YOUR MANAGEMENT STYLE, AND YOUR LIFE 114 (2004) (stating that decentralization "encourages motivation and creativity" and "allows for many minds to work simultaneously on the same problem");
  • 104
    • 37749038582 scopus 로고    scopus 로고
    • DAVID OSBORNE & TED GAEBLER, REINVENTING GOVERNMENT: HOW THE ENTREPRENEURIAL SPIRIT IS TRANSFORMING THE PUBLIC SECTOR 252 (1992).
    • DAVID OSBORNE & TED GAEBLER, REINVENTING GOVERNMENT: HOW THE ENTREPRENEURIAL SPIRIT IS TRANSFORMING THE PUBLIC SECTOR 252 (1992).
  • 105
    • 84873503926 scopus 로고    scopus 로고
    • See note 56, at, Decentralization] accommodates flexibility and individualization
    • See MALONE, supra note 56, at 114 ("[Decentralization] accommodates flexibility and individualization.") .
    • supra , pp. 114
    • MALONE1
  • 106
    • 37749011298 scopus 로고    scopus 로고
    • Dan L. Burk & Mark A. Lemley, Is Patent Law Technology- Specific?. 17 BERKELEY TECH. L.J. 1155 (2002).
    • Dan L. Burk & Mark A. Lemley, Is Patent Law Technology- Specific?. 17 BERKELEY TECH. L.J. 1155 (2002).
  • 107
    • 37749034643 scopus 로고    scopus 로고
    • De jure technological distinctions are prohibited by the TRIPS Agreement, which provides that patent rights shall be enjoyable without discrimination as to . . . the field of technology. Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), art. 27(1), Apr. 15, 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex IC, Legal Instruments-Results of the Uruguay Round, 33 I.L.M. 81, 93-94 (1994).
    • De jure technological distinctions are prohibited by the TRIPS Agreement, which provides that patent rights shall be "enjoyable without discrimination as to . . . the field of technology." Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), art. 27(1), Apr. 15, 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex IC, Legal Instruments-Results of the Uruguay Round, 33 I.L.M. 81, 93-94 (1994).
  • 108
    • 37749040558 scopus 로고    scopus 로고
    • Coase, supra note 35
    • Coase, supra note 35.
  • 109
    • 84917106186 scopus 로고    scopus 로고
    • Ronald H. Coase, The Nature of the Firm: Origin, 4 J. L. ECON. & ORG. 3, 8 (1988).
    • Ronald H. Coase, The Nature of the Firm: Origin, 4 J. L. ECON. & ORG. 3, 8 (1988).
  • 110
    • 37749002750 scopus 로고    scopus 로고
    • Id
    • Id.
  • 111
    • 37749035628 scopus 로고    scopus 로고
    • Id
    • Id.
  • 112
    • 37749027559 scopus 로고    scopus 로고
    • Coase, supra note 35, at 404
    • Coase, supra note 35, at 404.
  • 113
    • 37749011185 scopus 로고    scopus 로고
    • See, e.g., No Child Left Behind Act of 2001, Pub. L. No. 107-110, 115 Stat. 1425 (2002) (increasing national supervision and control over state and local education).
    • See, e.g., No Child Left Behind Act of 2001, Pub. L. No. 107-110, 115 Stat. 1425 (2002) (increasing national supervision and control over state and local education).
  • 114
    • 37749041159 scopus 로고    scopus 로고
    • See, e.g, Antiterrorism and Effective Death Penalty Act of 1996 (AEDPA, Pub. L. No. 104-32, § 104, 110 Stat. 1214, 1218 (amending 28 U.S.C. § 2254(d)(1) to forbid federal court habeas corpus review of state court decisions except in limited circumstances
    • See, e.g., Antiterrorism and Effective Death Penalty Act of 1996 (AEDPA), Pub. L. No. 104-32, § 104, 110 Stat. 1214, 1218 (amending 28 U.S.C. § 2254(d)(1) to forbid federal court habeas corpus review of state court decisions except in limited circumstances).
  • 115
    • 0036816320 scopus 로고    scopus 로고
    • See Susan Klein, Independent-Norm Federalism in Criminal Law, 90 CAL. L. REV. 1541, 1557-58 (2002) (noting that the ninety-four U.S. Attorney's Offices throughout the country provide a form of decentralization federalism within the Department of Justice because the U.S. Attorneys often have practical independence from central control and strong political ties to their home states).
    • See Susan Klein, Independent-Norm Federalism in Criminal Law, 90 CAL. L. REV. 1541, 1557-58 (2002) (noting that the ninety-four U.S. Attorney's Offices throughout the country provide a form of "decentralization federalism" within the Department of Justice because the U.S. Attorneys often have practical independence from central control and strong political ties to their home states).
  • 116
    • 0345547422 scopus 로고    scopus 로고
    • The most famous current example is the commercial jet aircraft market, in which just two firms (Boeing and Airbus) dominate the entire world market and yet engage in fierce competition. See, e.g., Thomas A. Piraino, Jr., A New Approach to the Antitrust Analysis of Mergers, 83 B.U. L. REV. 785, 821-22 (2003) (discussing the intense competition between Boeing and Airbus and noting that consumers probably benefit from the high degree of concentration in that particular industry).
    • The most famous current example is the commercial jet aircraft market, in which just two firms (Boeing and Airbus) dominate the entire world market and yet engage in fierce competition. See, e.g., Thomas A. Piraino, Jr., A New Approach to the Antitrust Analysis of Mergers, 83 B.U. L. REV. 785, 821-22 (2003) (discussing the intense competition between Boeing and Airbus and noting that consumers probably benefit from the high degree of concentration in that particular industry).
  • 117
    • 37749011283 scopus 로고    scopus 로고
    • Perhaps the most notable example is in the area of claim interpretation, particularly the de novo standard of review adopted by the Federal Circuit. See infra note 99.
    • Perhaps the most notable example is in the area of claim interpretation, particularly the de novo standard of review adopted by the Federal Circuit. See infra note 99.
  • 118
    • 37749035376 scopus 로고    scopus 로고
    • See Duffy, supra note 2, at 279;
    • See Duffy, supra note 2, at 279;
  • 119
    • 37749007149 scopus 로고    scopus 로고
    • see also supra note 23
    • see also supra note 23.
  • 120
    • 37749019727 scopus 로고    scopus 로고
    • 520 U.S. 17, 39 n.8 (1997). And with respect to the proper linguistic framework for the doctrine of equivalents, the Court stated that it expected the Federal Circuit [to] refine the formulation of the test for equivalence in the orderly course of case-by-case determinations, and we leave such refinement to that court's sound judgment in this area of its special expertise.
    • 520 U.S. 17, 39 n.8 (1997). And with respect to the proper linguistic framework for the doctrine of equivalents, the Court stated that it expected "the Federal Circuit [to] refine the formulation of the test for equivalence in the orderly course of case-by-case determinations, and we leave such refinement to that court's sound judgment in this area of its special expertise."
  • 121
    • 37749039561 scopus 로고    scopus 로고
    • Id. at 40
    • Id. at 40.
  • 122
    • 37748998948 scopus 로고    scopus 로고
    • 126 S. Ct. 1837, 1841 (2006) (Wc hold only that the decision whether to grant or deny injunctive relief rests within the equitable discretion of the district courts, and that such discretion must be exercised consistent with traditional principles of equity, in patent disputes no less than in other cases governed by such standards.).
    • 126 S. Ct. 1837, 1841 (2006) ("Wc hold only that the decision whether to grant or deny injunctive relief rests within the equitable discretion of the district courts, and that such discretion must be exercised consistent with traditional principles of equity, in patent disputes no less than in other cases governed by such standards.").
  • 123
    • 37749040847 scopus 로고    scopus 로고
    • See Duffy, supra note 2. at 341-42 (arguing that the Supreme Court can complement the Federal Circuit by serv[ing] to reconcile the Federal Circuit's power with the roles of the other institutional actors in the patent system and to provide more historical perspective for the ongoing development of the law).
    • See Duffy, supra note 2. at 341-42 (arguing that the Supreme Court can complement the Federal Circuit by "serv[ing] to reconcile the Federal Circuit's power with the roles of the other institutional actors in the patent system and to provide more historical perspective for the ongoing development of the law").
  • 124
    • 37749037122 scopus 로고    scopus 로고
    • See Utility Examination Guidelines, 66 Fed. Reg. 1092 Jan. 5, 2001, setting forth the PTO's views on the Patent Act's requirement in 35 U.S.C. §101 that all patented inventions be useful
    • See Utility Examination Guidelines, 66 Fed. Reg. 1092 (Jan. 5, 2001) (setting forth the PTO's views on the Patent Act's requirement in 35 U.S.C. §101 that all patented inventions be "useful").
  • 125
    • 37749045817 scopus 로고    scopus 로고
    • See Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility, 1300 Off. Gaz. Pat. Office 142 Nov. 22, 2005, available at http://www.uspto.gov/web/offices/com/sol/og/2005/ week47/patgupa.htm
    • See Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility, 1300 Off. Gaz. Pat. Office 142 (Nov. 22, 2005), available at http://www.uspto.gov/web/offices/com/sol/og/2005/ week47/patgupa.htm.
  • 126
    • 37749017146 scopus 로고    scopus 로고
    • Chevron U.S.A., Inc. v. Natural Res. Def. Council, Inc., 467 U.S. 837 (1984) (requiring courts to defer to reasonable agency interpretations of ambiguous statutes that the agency administers).
    • Chevron U.S.A., Inc. v. Natural Res. Def. Council, Inc., 467 U.S. 837 (1984) (requiring courts to defer to reasonable agency interpretations of ambiguous statutes that the agency administers).
  • 127
    • 37749001442 scopus 로고    scopus 로고
    • See Merck v. Kessler, 80 F.3d 1543, 1549-50 (Fed. Cir. 1996) (holding that the PTO is not entitled to Chevron deference in its interpretations of the Patent Act because Congress did not delegate rulemaking power to the agency). In more recent case law, the Supreme Court confirmed that administrative agencies are not entitled to Chevron-style deference if, as with the PTO, the agency lacks a substantive rulemaking power and is not authorized to undertake formal administrative adjudications.
    • See Merck v. Kessler, 80 F.3d 1543, 1549-50 (Fed. Cir. 1996) (holding that the PTO is not entitled to Chevron deference in its interpretations of the Patent Act because Congress did not delegate rulemaking power to the agency). In more recent case law, the Supreme Court confirmed that administrative agencies are not entitled to Chevron-style deference if, as with the PTO, the agency lacks a substantive rulemaking power and is not authorized to undertake formal administrative adjudications.
  • 128
    • 37749038563 scopus 로고    scopus 로고
    • See United States v. Mead Corp, 533 U.S. 218 2001, Patent reform legislation sponsored by Senators Orrin Hatch and Patrick Leahy would grant the PTO substantive rulemaking authority
    • See United States v. Mead Corp., 533 U.S. 218 (2001). Patent reform legislation sponsored by Senators Orrin Hatch and Patrick Leahy would grant the PTO substantive rulemaking authority.
  • 129
    • 37749037991 scopus 로고    scopus 로고
    • See Patent Reform Act of 2006, S. 3818, 109th Cong, introduced Aug. 3, 2006
    • See Patent Reform Act of 2006, S. 3818, 109th Cong. (introduced Aug. 3, 2006).
  • 131
    • 37749002978 scopus 로고    scopus 로고
    • Since the creation of the Federal Circuit, the PTO has never sought certiorari to review a Federal Circuit decision on a patent law issue. In the one instance where the agency did seek certiorari to review a Federal Circuit decision, see Dickinson v. Zurko, 527 U.S. 150 (1999), the case involved the application of the Administrative Procedure Act. By contrast, in the twenty-year period prior to the creation of the Federal Circuit, the PTO sought certiorari in more than a half-dozen cases.
    • Since the creation of the Federal Circuit, the PTO has never sought certiorari to review a Federal Circuit decision on a patent law issue. In the one instance where the agency did seek certiorari to review a Federal Circuit decision, see Dickinson v. Zurko, 527 U.S. 150 (1999), the case involved the application of the Administrative Procedure Act. By contrast, in the twenty-year period prior to the creation of the Federal Circuit, the PTO sought certiorari in more than a half-dozen cases.
  • 132
    • 37749039794 scopus 로고    scopus 로고
    • See Martin J. Adelman, The New World of Patents Created by the Court of Appeals for the Federal Circuit, 20 U. MICH. J.L. REFORM 979, 983 (1987) ([T]he Federal Circuit... is an experiment on the much publicized and often belittled idea of specialty courts.);
    • See Martin J. Adelman, The New World of Patents Created by the Court of Appeals for the Federal Circuit, 20 U. MICH. J.L. REFORM 979, 983 (1987) ("[T]he Federal Circuit... is an experiment on the much publicized and often belittled idea of specialty courts.");
  • 133
    • 37749013419 scopus 로고    scopus 로고
    • Dreyfuss, supra note 5, at 3 describing the Federal Circuit as a sustained experiment in specialization
    • Dreyfuss, supra note 5, at 3 (describing the Federal Circuit as a "sustained experiment in specialization").
  • 134
    • 37749021672 scopus 로고    scopus 로고
    • In 1982, patent cases comprised about 1% of the docket in the courts of appeals. Charles W. Adams, The Court of Appeals for the Federal Circuit: More Than a National Patent Court, 49 MO. L. REV. 43, 62 (1984, Thus, if all patent appeals from the thirteen existing circuits were centralized in an existing, averaged-size circuit, that circuit would see its patent docket multiplied by a factor of thirteen. Still, as a percentage of its total cases, patent cases would comprise only about 13% of that circuit's docket actually slightly less than 13% because the circuit would have a larger number of total cases, The vast bulk of the court's jurisdiction would remain unchanged. Historically, the first significant proposal to create a central patent court, suggested by the ABA in 1900, would have staffed the court with circuit judges temporarily on leave from their regional courts
    • In 1982, patent cases comprised about 1% of the docket in the courts of appeals. Charles W. Adams, The Court of Appeals for the Federal Circuit: More Than a National Patent Court, 49 MO. L. REV. 43, 62 (1984). Thus, if all patent appeals from the thirteen existing circuits were centralized in an existing, averaged-size circuit, that circuit would see its patent docket multiplied by a factor of thirteen. Still, as a percentage of its total cases, patent cases would comprise only about 13% of that circuit's docket (actually slightly less than 13% because the circuit would have a larger number of total cases). The vast bulk of the court's jurisdiction would remain unchanged. Historically, the first significant proposal to create a central patent court, suggested by the ABA in 1900, would have staffed the court with circuit judges temporarily on leave from their regional courts.
  • 135
    • 84976112528 scopus 로고    scopus 로고
    • See note 2, at, That proposal attempted to concentrate patent jurisdiction without having specialization
    • See Duffy, supra note 2, at 292. That proposal attempted to concentrate patent jurisdiction without having specialization.
    • supra , pp. 292
    • Duffy1
  • 136
    • 84874306577 scopus 로고    scopus 로고
    • § 1295 2000
    • 28 U.S.C. § 1295 (2000);
    • 28 U.S.C
  • 137
    • 37749042116 scopus 로고    scopus 로고
    • see also Adams, supra note 81, at 61 noting that supporters of the FCIA argued that undue specialization was avoided because the combination of many heads of jurisdiction made the Federal Circuit less specialized than its predecessors
    • see also Adams, supra note 81, at 61 (noting that "supporters of the FCIA argued that undue specialization was avoided" because the combination of many heads of jurisdiction made the Federal Circuit "less specialized than its predecessors").
  • 138
    • 37749053739 scopus 로고    scopus 로고
    • See Adams, supra note 81, at 48-50;
    • See Adams, supra note 81, at 48-50;
  • 139
    • 37749010583 scopus 로고    scopus 로고
    • see also COMM'N ON REVISION OF THE FED. COURT APPELLATE SYS., STRUCTURE AND INTERNAL PROCEDURES: RECOMMENDATIONS FOR CHANGE, 67 F.R.D. 195 (1975) [hereinafter HRUSKA COMMISSION REPORT].
    • see also COMM'N ON REVISION OF THE FED. COURT APPELLATE SYS., STRUCTURE AND INTERNAL PROCEDURES: RECOMMENDATIONS FOR CHANGE, 67 F.R.D. 195 (1975) [hereinafter HRUSKA COMMISSION REPORT].
  • 140
    • 37749030675 scopus 로고    scopus 로고
    • See HRUSKA COMMISSION REPORT, supra note 83, at 234 (concluding that specialized courts would not be a desirable solution either to the problems of the national law or, as noted elsewhere, to the problems of regional court caseloads).
    • See HRUSKA COMMISSION REPORT, supra note 83, at 234 (concluding that "specialized courts would not be a desirable solution either to the problems of the national law or, as noted elsewhere, to the problems of regional court caseloads").
  • 141
    • 0442326358 scopus 로고    scopus 로고
    • See also Paul M. Janicke, To Be or Not to Be: The Long Gestation of the U.S. Court of Appeals for the Federal Circuit (1887-1982), 69 ANTITRUST L.J. 645, 652 (2001) (stating that the Hruska Commission specifically distinguished its proposal from those that urged 'specialized' courts and that the Commission adopted the thinking of... Judge Simon Rifkind's 1951 article, which argued against specialized courts in general and against a specialized patent appeals court in particular (citations omitted)).
    • See also Paul M. Janicke, To Be or Not to Be: The Long Gestation of the U.S. Court of Appeals for the Federal Circuit (1887-1982), 69 ANTITRUST L.J. 645, 652 (2001) (stating that the Hruska Commission "specifically distinguished its proposal from those that urged 'specialized' courts" and that the Commission "adopted the thinking of... Judge Simon Rifkind's 1951 article, which argued against specialized courts in general and against a specialized patent appeals court in particular" (citations omitted)).
  • 142
    • 0041150979 scopus 로고
    • Origin of the Federal Circuit: A Personal Account, 41
    • Daniel J. Meador, Origin of the Federal Circuit: A Personal Account, 41 AM. U. L. REV. 581, 587-88 (1992);
    • (1992) AM. U. L. REV , vol.581 , pp. 587-588
    • Meador, D.J.1
  • 143
    • 37749008612 scopus 로고    scopus 로고
    • see also Janicke, supra note 84, at 653-55 noting that patent practitioners had been the most vocal group in seeking greater national uniformity and that the focus on judicial reform in patent law came in response to the opposition to the Hruska Commission proposal
    • see also Janicke, supra note 84, at 653-55 (noting that patent practitioners had been the most vocal group in seeking greater national uniformity and that the focus on judicial reform in patent law came in response to the opposition to the Hruska Commission proposal).
  • 144
    • 37749015683 scopus 로고    scopus 로고
    • Meador, supra note 85, at 588
    • Meador, supra note 85, at 588.
  • 145
    • 37749052478 scopus 로고    scopus 로고
    • See id. at 593 (noting that supporters of the proposed new court tried to pull the sting from the anticipated charge of specialization by emphasizing the long and varied list of legal issues that would come before the new court);
    • See id. at 593 (noting that supporters of the proposed new court tried "to pull the sting from the anticipated charge of specialization" by emphasizing "the long and varied list of legal issues that would come before the new court");
  • 147
    • 37749000384 scopus 로고    scopus 로고
    • Id. at 596
    • Id. at 596.
  • 148
    • 37749004871 scopus 로고    scopus 로고
    • See Rai, supra note 20, at 1037 (arguing that the Federal Circuit adopt[s] bright-line rules that are insensitive both to technological fact and to related issues of innovation policy).
    • See Rai, supra note 20, at 1037 (arguing that the Federal Circuit "adopt[s] bright-line rules that are insensitive both to technological fact and to related issues of innovation policy").
  • 149
    • 37749050117 scopus 로고    scopus 로고
    • See supra Part I.A.2.
    • See supra Part I.A.2.
  • 150
    • 0742306521 scopus 로고    scopus 로고
    • Sophie Harnay & Alain Marciano, Judicial Conformity Versus Dissidence: An Economic Analysis of Judicial Precedent, 23 INT'L REV. L. & ECON. 405, 418 (2004) (noting that insularity can lead to information asymmetries, which can make it difficult to single out between the different forms of doctrinal stability likely to occur in the judicial market). Although district courts on occasion reveal theirpreferences, they are understandably locked into precedent lest they be reversed on appeal by the Federal Circuit.
    • Sophie Harnay & Alain Marciano, Judicial Conformity Versus Dissidence: An Economic Analysis of Judicial Precedent, 23 INT'L REV. L. & ECON. 405, 418 (2004) (noting that insularity can lead to information asymmetries, which can make it difficult "to single out between the different forms of doctrinal stability likely to occur in the judicial market"). Although district courts on occasion reveal theirpreferences, they are understandably locked into precedent lest they be reversed on appeal by the Federal Circuit.
  • 151
    • 37749006468 scopus 로고    scopus 로고
    • See Burk & Lemley, supra note 7, at 1578 (arguing that Federal Circuit policy in biotechnology and software is precisely backwards);
    • See Burk & Lemley, supra note 7, at 1578 (arguing that Federal Circuit policy in biotechnology and software is "precisely backwards");
  • 152
    • 37749048049 scopus 로고    scopus 로고
    • Lunney, supra note 10, at 79 (criticizing the Federal Circuit's trend toward a uniform, 'one size fits all' system of patent protection).
    • Lunney, supra note 10, at 79 (criticizing the Federal Circuit's trend toward a "uniform, 'one size fits all' system of patent protection").
  • 153
    • 37749045818 scopus 로고    scopus 로고
    • Empirical work suggests that even within the Federal Circuit, the dialogue among the judges is impoverished. See Dreyfuss, supra note 6, at 776 (The paucity of internal citations ... gives reason to surmise that the judges are not, in fact, engaged in deliberate experiments with differing approaches.).
    • Empirical work suggests that even within the Federal Circuit, the dialogue among the judges is impoverished. See Dreyfuss, supra note 6, at 776 ("The paucity of internal citations ... gives reason to surmise that the judges are not, in fact, engaged in deliberate experiments with differing approaches.").
  • 154
    • 37749047873 scopus 로고    scopus 로고
    • See generally Hathaway, supra note 49, at 606 (noting that the common law exhibits path dependence because the doctrine of stare decisis creates an explicitly path-dependant process in which [l]ater decisions rely on, and are constrained by, earlier decisions);
    • See generally Hathaway, supra note 49, at 606 (noting that the common law exhibits "path dependence" because the doctrine of stare decisis "creates an explicitly path-dependant process" in which "[l]ater decisions rely on, and are constrained by, earlier decisions");
  • 155
    • 37748999299 scopus 로고    scopus 로고
    • Schauer, supra note 49, at 273 discussing how official training of lawyers lends itself to a path-dependent legal system
    • Schauer, supra note 49, at 273 (discussing how "official" training of lawyers lends itself to a path-dependent legal system).
  • 156
    • 37749008202 scopus 로고    scopus 로고
    • Maxwell L. Stearns, Standing Back from the Forest: Justiciability and Social Choice, 83 CAL. L. REV. 1309, 1359 (1995) ([S]tare decisis ensures that the order in which legal questions are presented for decision will have an arbitrary, and largely unintended, effect upon the substantive evolution of legal doctrine . . . .).
    • Maxwell L. Stearns, Standing Back from the Forest: Justiciability and Social Choice, 83 CAL. L. REV. 1309, 1359 (1995) ("[S]tare decisis ensures that the order in which legal questions are presented for decision will have an arbitrary, and largely unintended, effect upon the substantive evolution of legal doctrine . . . .").
  • 157
    • 37749022463 scopus 로고    scopus 로고
    • See Stearns, supra note 95, at 1352 noting that intra- but not inter-circuit stare decisis helps to ensure multiple paths from which the Supreme Court can choose the best legal outcomes and analyses
    • See Stearns, supra note 95, at 1352 (noting that "intra- but not inter-circuit stare decisis" helps to ensure multiple paths "from which the Supreme Court can choose the best legal outcomes and analyses").
  • 158
    • 37749014659 scopus 로고    scopus 로고
    • Univ. of Rochester v. G.D. Searle & Co., Inc., 375 F.3d 1303, 1305 (Fed. Cir. 2004) (Newman, J., dissenting from denial of rehearing en banc).
    • Univ. of Rochester v. G.D. Searle & Co., Inc., 375 F.3d 1303, 1305 (Fed. Cir. 2004) (Newman, J., dissenting from denial of rehearing en banc).
  • 159
    • 37749037787 scopus 로고    scopus 로고
    • As Professor Macey has noted, stare decisis is designed to have judges avoid . .. rethink[ing] the merits of particular legal doctrine in every case. Macey, supra note 43, at 102. While it is true, as Macey argues, that stare decisis generally can promote efficient decisionmaking, he was not addressing the special circumstances of the Federal Circuit, where the ordinary process of intercircuit percolation is not available to check path dependency.
    • As Professor Macey has noted, stare decisis is designed to have judges "avoid . .. rethink[ing] the merits of particular legal doctrine" in every case. Macey, supra note 43, at 102. While it is true, as Macey argues, that stare decisis generally can promote efficient decisionmaking, he was not addressing the special circumstances of the Federal Circuit, where the ordinary process of intercircuit percolation is not available to check path dependency.
  • 160
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    • The most prominent issue in this regard relates to the Federal Circuit's standard of review for claim interpretation. See Kathleen M. O'Malley, Patti Saris & Ronald H. Whyte, A Panel Discussion: Claim Construction from the Perspective of the District Judge, 54 CASE W. RES. L. REV. 671, 673 (2004) (O'Malley, J., stating that [w]ithin the realm of patent law, the [Federal Circuit] has had, in [district court judges'] view, its biggest impact in the claim construction area);
    • The most prominent issue in this regard relates to the Federal Circuit's standard of review for claim interpretation. See Kathleen M. O'Malley, Patti Saris & Ronald H. Whyte, A Panel Discussion: Claim Construction from the Perspective of the District Judge, 54 CASE W. RES. L. REV. 671, 673 (2004) (O'Malley, J., stating that "[w]ithin the realm of patent law, the [Federal Circuit] has had, in [district court judges'] view, its biggest impact in the claim construction area");
  • 161
    • 37749000853 scopus 로고    scopus 로고
    • id. at 679 (Saris, J., stating that there should be more deference given to the interpretation of the trial judge who had the opportunity to see, hear, and look at evidence.). The court has adopted a de novo standard when reviewing district court claim constructions, which has led to a relatively high reversal rate.
    • id. at 679 (Saris, J., stating that "there should be more deference given to the interpretation of the trial judge who had the opportunity to see, hear, and look at evidence."). The court has adopted a de novo standard when reviewing district court claim constructions, which has led to a relatively high reversal rate.
  • 162
    • 34547786000 scopus 로고    scopus 로고
    • Are District Court Judges Equipped to Resolve
    • See also, Patent Cases, 15 HARV. J.L. & TECH. 1, 11 2001, finding that the Federal Circuit reversed 33% of district court claims constructions
    • See also Kimberly A. Moore, Are District Court Judges Equipped to Resolve Patent Cases?, 15 HARV. J.L. & TECH. 1, 11 (2001) (finding that the Federal Circuit reversed 33% of district court claims constructions).
    • Moore, K.A.1
  • 163
    • 0000566853 scopus 로고    scopus 로고
    • Indeed, patent law is not a one-size-fits-all regime, and as the quotation below implies, one must adopt a nuanced approach to understanding the costs and benefits of patent law: In some areas, patent rights certainly are economically and socially productive in generating invention, spreading technological knowledge, inducing innovation and commercialization, and providing some degree of order in the development of broad technological prospects. However, in many areas of technology this is not the case. In a number of these, strong broad patent rights entail major economic costs while generating insufficient additional social benefits. And in some strong broad patents are simply counterproductive. One needs to be discriminating and cautious on this front. Robert Mazzoleni & Richard R. Nelson, The Benefits and Costs of Strong Patent Protection: A Contribution to the Current Debate, 27 RES. POL'Y 273, 281 1998
    • Indeed, patent law is not a one-size-fits-all regime, and as the quotation below implies, one must adopt a nuanced approach to understanding the costs and benefits of patent law: In some areas, patent rights certainly are economically and socially productive in generating invention, spreading technological knowledge, inducing innovation and commercialization, and providing some degree of order in the development of broad technological prospects. However, in many areas of technology this is not the case. In a number of these, strong broad patent rights entail major economic costs while generating insufficient additional social benefits. And in some strong broad patents are simply counterproductive. One needs to be discriminating and cautious on this front. Robert Mazzoleni & Richard R. Nelson, The Benefits and Costs of Strong Patent Protection: A Contribution to the Current Debate, 27 RES. POL'Y 273, 281 (1998).
  • 164
    • 37749006921 scopus 로고    scopus 로고
    • Recent empirical work has shown that some industries (e.g, drugs and medical equipment) rely on the patent system more than others, which may rely primarily on trade secrecy (e.g, petroleum) or lead time into the market (e.g, software, And some industries seek patent protection with an eye towards commercialization and generating revenue, while others obtain patents to block competitors from obtaining patent protection or to enhance their bargaining position during cross-licensing negotiations, particularly when a complex technology (i.e, a product or process that comprises several patented components) is involved. See, e.g, Wesley M. Cohen et al, Protecting Their Intellectual Assets: Appropriability Conditions and Why U.S. Manufacturing Firms Patent (or Not) 24 Nat'l Bureau of Econ. Research, Working Paper No. 7552, 2000, finding that some industries rely on the patent system to varying degrees, while others rely mostly on trade secrets, lead time, a
    • Recent empirical work has shown that some industries (e.g., drugs and medical equipment) rely on the patent system more than others, which may rely primarily on trade secrecy (e.g., petroleum) or lead time into the market (e.g., software). And some industries seek patent protection with an eye towards commercialization and generating revenue, while others obtain patents to block competitors from obtaining patent protection or to enhance their bargaining position during cross-licensing negotiations, particularly when a "complex" technology (i.e., a product or process that comprises several patented components) is involved. See, e.g., Wesley M. Cohen et al., Protecting Their Intellectual Assets: Appropriability Conditions and Why U.S. Manufacturing Firms Patent (or Not) 24 (Nat'l Bureau of Econ. Research, Working Paper No. 7552, 2000) (finding that some industries rely on the patent system to varying degrees, while others rely mostly on trade secrets, lead time, and complementary technologies);
  • 165
    • 37749027806 scopus 로고    scopus 로고
    • LANDES & POSNER, supra note 4, at 312 Many highly progressive, research-intensive industries, notably including the computer software industry, do not rely heavily on patents as a method of preventing free riding on inventive activity
    • LANDES & POSNER, supra note 4, at 312 ("Many highly progressive, research-intensive industries, notably including the computer software industry, do not rely heavily on patents as a method of preventing free riding on inventive activity.").
  • 166
    • 37749011709 scopus 로고    scopus 로고
    • Much of the scholarship that forms the empirical current has examined the relationship between patent law and the innovation practices of firms in various industries, including research and development decisionmaking and the extent to which divergent industries rely on the patent system or other appropriability mechanisms. See Cohen et al., supra note 100, at 24.
    • Much of the scholarship that forms the empirical current has examined the relationship between patent law and the innovation practices of firms in various industries, including research and development decisionmaking and the extent to which divergent industries rely on the patent system or other appropriability mechanisms. See Cohen et al., supra note 100, at 24.
  • 167
    • 0346607100 scopus 로고    scopus 로고
    • For scholarship regarding the role of juries in patent cases, see, for example, Kimberly A. Moore, Judges, Juries, and Patent Cases: An Empirical Peek Inside the Black Box, 99 MICH. L. REV. 365 (2000) (illustrating patent holders' success rates in jury and bench trials);
    • For scholarship regarding the role of juries in patent cases, see, for example, Kimberly A. Moore, Judges, Juries, and Patent Cases: An Empirical Peek Inside the Black Box, 99 MICH. L. REV. 365 (2000) (illustrating patent holders' success rates in jury and bench trials);
  • 168
    • 37749049960 scopus 로고    scopus 로고
    • for Federal Circuit voting patterns, see, for example, Allison & Lemley, supra note 38 (chronicling patent validity decisions);
    • for Federal Circuit voting patterns, see, for example, Allison & Lemley, supra note 38 (chronicling patent validity decisions);
  • 169
    • 0036486793 scopus 로고    scopus 로고
    • The Growing Complexity of the
    • for patent filing, see, for example, Patent System, 82 B.U. L. REV. 77 2002
    • for patent filing, see, for example, John R. Allison & Mark A. Lemley, The Growing Complexity of the Patent System, 82 B.U. L. REV. 77 (2002);
    • Allison, J.R.1    Lemley, M.A.2
  • 170
    • 4043104125 scopus 로고    scopus 로고
    • for litigation trends, see, for example, Jean O. Lanjouw & Mark Schankerman, Protecting Intellectual Properly Rights: Are Small Firms Handicapped?, 47 J.L. & ECON. 45 (2004) (studying patent litigation and settlements and concluding firms with small patent portfolios are at higher litigation risk),
    • for litigation trends, see, for example, Jean O. Lanjouw & Mark Schankerman, Protecting Intellectual Properly Rights: Are Small Firms Handicapped?, 47 J.L. & ECON. 45 (2004) (studying patent litigation and settlements and concluding firms with small patent portfolios are at higher litigation risk),
  • 171
    • 37749041465 scopus 로고    scopus 로고
    • and Josh Lerner, Patenting in the Shadow of Competitors, 38 J.L. & ECON. 463 (1995) (analyzing patenting patterns of firms with differing litigation costs);
    • and Josh Lerner, Patenting in the Shadow of Competitors, 38 J.L. & ECON. 463 (1995) (analyzing patenting patterns of firms with differing litigation costs);
  • 172
    • 37749051135 scopus 로고    scopus 로고
    • and for patent law's effect on innovation in specific technologies, see, for example, John P. Walsh, Ashish Arora & Wesley Cohen, Effects of Research Tool Patents and Licensing on Biomedical Innovation, in PATENTS IN THE KNOWLEDGE-BASED ECONOMY 285 (Wesley M. Cohen & Stephen A. Merrill eds., 2003),
    • and for patent law's effect on innovation in specific technologies, see, for example, John P. Walsh, Ashish Arora & Wesley Cohen, Effects of Research Tool Patents and Licensing on Biomedical Innovation, in PATENTS IN THE KNOWLEDGE-BASED ECONOMY 285 (Wesley M. Cohen & Stephen A. Merrill eds., 2003),
  • 173
    • 0042526807 scopus 로고    scopus 로고
    • Patent Scope and Innovation in the Software Industry, 89
    • and Julie E. Cohen & Mark A. Lemley, Patent Scope and Innovation in the Software Industry, 89 CAL. L. REV. 1 (2001).
    • (2001) CAL. L. REV , vol.1
    • Cohen, J.E.1    Lemley, M.A.2
  • 174
    • 37749008614 scopus 로고    scopus 로고
    • A good deal of the social science work is law and economics oriented, focusing on the important normative issues of proprietary claim scope and patentability standards in the context of innovation policy. See. e.g., Merges & Nelson, supra note 36 (concluding that law should favor a competitive environment for improvements rather than one dominated by the pioneer firm);
    • A good deal of the social science work is law and economics oriented, focusing on the important normative issues of proprietary claim scope and patentability standards in the context of innovation policy. See. e.g., Merges & Nelson, supra note 36 (concluding that law should favor a competitive environment for improvements rather than one dominated by the pioneer firm);
  • 175
    • 37749048634 scopus 로고    scopus 로고
    • Suzanne Scotchmer, Standing on the Shoulders of Giants: Cumulative Research and the Patent Law, 5 J. ECON. PERSP. 29 1991, investigating the use of patent protection and cooperative agreements to protect incentives for cumulative research
    • Suzanne Scotchmer, Standing on the Shoulders of Giants: Cumulative Research and the Patent Law, 5 J. ECON. PERSP. 29 (1991) (investigating the "use of patent protection and cooperative agreements to protect incentives for cumulative research");
  • 176
    • 0002846277 scopus 로고    scopus 로고
    • Arti Kaur Rai, Regulating Scientific Research: Intellectual Property Rights and the Norms of Science, 94 NW, U. L. REV. 77 (1999). For scholarship regarding patent law's relationship to R&D,
    • Arti Kaur Rai, Regulating Scientific Research: Intellectual Property Rights and the Norms of Science, 94 NW, U. L. REV. 77 (1999). For scholarship regarding patent law's relationship to R&D,
  • 177
    • 37749049962 scopus 로고    scopus 로고
    • see, for example, Ashish Arora, Marco Ceccagnoli & Wesley M. Cohen, R&D and the Patent Premium Nat'l Bureau of Econ. Research, Working Paper No. 9431, 2003
    • see, for example, Ashish Arora, Marco Ceccagnoli & Wesley M. Cohen, R&D and the Patent Premium (Nat'l Bureau of Econ. Research, Working Paper No. 9431, 2003).
  • 178
    • 4344608180 scopus 로고    scopus 로고
    • For a nice overview of the empirical literature, see, Univ. of Cal, Berkeley, Competition Pol'y Ctr, Working Paper No. E03-331
    • For a nice overview of the empirical literature, see Bronwyn H. Hall, Business Method Patents, Innovation, and Policy (Univ. of Cal., Berkeley, Competition Pol'y Ctr., Working Paper No. E03-331, 2003).
    • (2003) Business Method Patents, Innovation, and Policy
    • Hall, B.H.1
  • 179
    • 37749031506 scopus 로고    scopus 로고
    • See Craig Allen Nard, Toward a Cautious Approach to Obeisance: The Role of Scholarship in Federal Circuit Patent Law Jurisprudence, 39 HOUS. L. REV. 667, 676-83 2002, setting forth empirical research demonstrating that, in their intellectual property cases, the other circuits cite scholarship roughly four times more frequently than does the Federal Circuit in its patent cases
    • See Craig Allen Nard, Toward a Cautious Approach to Obeisance: The Role of Scholarship in Federal Circuit Patent Law Jurisprudence, 39 HOUS. L. REV. 667, 676-83 (2002) (setting forth empirical research demonstrating that, in their intellectual property cases, the other circuits cite scholarship roughly four times more frequently than does the Federal Circuit in its patent cases).
  • 180
    • 37749038291 scopus 로고    scopus 로고
    • Indeed, this reluctance is reflected in case law and in public comments by some members of the court. For example, the court in In re Fisher, 421 F.3d 1365, 1378 Fed. Cir. 2005, stated that it would not consider amicus arguments as to the practical implications of the court's legal doctrine because [t]hey are public policy considerations which are more appropriately directed to Congress as the legislative branch of government, rather than this court as a judicial body responsible simply for interpreting and applying statutory law. In a speech delivered to practitioners, Judge Alan Lourie remarked that the gap between the court and academia [is] a bit beside the point, and that the court is not a debating society having debates with outside groups on what the law should be. Rather, cases are decided based on what the law is
    • Indeed, this reluctance is reflected in case law and in public comments by some members of the court. For example, the court in In re Fisher, 421 F.3d 1365, 1378 (Fed. Cir. 2005), stated that it would not consider amicus arguments as to the "practical implications" of the court's legal doctrine because "[t]hey are public policy considerations which are more appropriately directed to Congress as the legislative branch of government, rather than this court as a judicial body responsible simply for interpreting and applying statutory law." In a speech delivered to practitioners, Judge Alan Lourie remarked that the "gap between the court and academia [is] a bit beside the point," and that the court is "not a debating society having debates with outside groups on what the law should be." Rather, cases are decided "based on what the law is."
  • 181
    • 37749037123 scopus 로고    scopus 로고
    • Hon. Alan Lourie, Keynote Address at the Joint Patent Practice Seminar of the Connecticut, New York, New Jersey, and Philadelphia Intellectual Property Law Association (May 3, 2006), in 72 PAT., TRADEMARK & COPYRIGHT J. (BNA) 41, 41 (May 12, 2006). Similarly, Chief Judge Michel has remarked that any criticism of the court for not citing law review articles is interesting because [w]e have an extensive body of case law, and that and Supreme Court precedent is what we would mainly be citing.
    • Hon. Alan Lourie, Keynote Address at the Joint Patent Practice Seminar of the Connecticut, New York, New Jersey, and Philadelphia Intellectual Property Law Association (May 3, 2006), in 72 PAT., TRADEMARK & COPYRIGHT J. (BNA) 41, 41 (May 12, 2006). Similarly, Chief Judge Michel has remarked that any criticism of the court for not citing law review articles is "interesting" because "[w]e have an extensive body of case law, and that and Supreme Court precedent is what we would mainly be citing."
  • 182
    • 37749028082 scopus 로고    scopus 로고
    • Marcia Coyle, Critics Target Federal Circuit, NAT'L L.J., Oct. 16, 2006 (quoting Chief Judge Paul R. Michel).
    • Marcia Coyle, Critics Target Federal Circuit, NAT'L L.J., Oct. 16, 2006 (quoting Chief Judge Paul R. Michel).
  • 183
    • 37749030530 scopus 로고    scopus 로고
    • Chief Judge Michel of the Federal Circuit captured these problems in a speech at the University of California, Berkeley School of Law: We would probably be the least expert, and the least informed, and the least able to even reason from input-if we had it.... We just keep replicating the old results based on the old precedents, whether they have kept pace with changes in business, changes in technology, or changes of a different sort, . . . [W]e just get the Federal Circuit talking to itself, with the brief writer just being the echo of what we wrote in all those prior cases ... and when we write some more cases, and the cycle just goes on and on and on. And it certainly lacks the benefit of being tightly wired to the evolving reality. Michel, supra note 16.
    • Chief Judge Michel of the Federal Circuit captured these problems in a speech at the University of California, Berkeley School of Law: We would probably be the least expert, and the least informed, and the least able to even reason from input-if we had it.... We just keep replicating the old results based on the old precedents, whether they have kept pace with changes in business, changes in technology, or changes of a different sort, . . . [W]e just get the Federal Circuit talking to itself, with the brief writer just being the echo of what we wrote in all those prior cases ... and when we write some more cases, and the cycle just goes on and on and on. And it certainly lacks the benefit of being tightly wired to the evolving reality. Michel, supra note 16.
  • 184
    • 37749016394 scopus 로고    scopus 로고
    • See also Burk & Lemley, supra note 7, at 1578 ([I]t is possible to read [Federal Circuit] cases as merely following legal precedents from different industries to their logical conclusions.).
    • See also Burk & Lemley, supra note 7, at 1578 ("[I]t is possible to read [Federal Circuit] cases as merely following legal precedents from different industries to their logical conclusions.").
  • 185
    • 37749049204 scopus 로고    scopus 로고
    • See also Hathaway, supra note 49, at 605 (noting that the path-dependence theory of the law causes courts' early resolutions of legal issues [to] becom[e] locked-in and resistant to chance,... lead[ing] to inefficiency when legal rules fail to respond to changing underlying conditions).
    • See also Hathaway, supra note 49, at 605 (noting that the path-dependence theory of the law causes "courts' early resolutions of legal issues [to] becom[e] locked-in and resistant to chance,... lead[ing] to inefficiency when legal rules fail to respond to changing underlying conditions").
  • 186
    • 37749046944 scopus 로고    scopus 로고
    • See generally PAUL D. CARRINGTON, DANIEL J. MEADOR & MAURICE ROSENBERG, JUSTICE ON APPEAL 168 (1976) ([A] serious disadvantage [to specialized courts is] the danger that judges so narrowly specialized will become so confined in their perspectives that they will lose sight of the basic values at stake in their decisions and develop strong tendencies toward arcane and intricate legal development which can be followed and understood only by their own bar.).
    • See generally PAUL D. CARRINGTON, DANIEL J. MEADOR & MAURICE ROSENBERG, JUSTICE ON APPEAL 168 (1976) ("[A] serious disadvantage [to specialized courts is] the danger that judges so narrowly specialized will become so confined in their perspectives that they will lose sight of the basic values at stake in their decisions and develop strong tendencies toward arcane and intricate legal development which can be followed and understood only by their own bar.").
  • 187
    • 37749020046 scopus 로고    scopus 로고
    • See Stearns, supra note 48, at 1764 ([T]he vast bulk of relevant precedents governing most federal court litigation comes not from the Supreme Court, but rather from the United States Courts of Appeals.). Indeed, one of the recommendations made by The National Academies' study on patent reform was that in order for the Federal Circuit judges to keep themselves well informed about relevant legal and economic scholarship, the court should ensure its exposure to a wide variety of expert opinions by encouraging the submission of amicus briefs and by exchanges with other courts.
    • See Stearns, supra note 48, at 1764 ("[T]he vast bulk of relevant precedents governing most federal court litigation comes not from the Supreme Court, but rather from the United States Courts of Appeals."). Indeed, one of the recommendations made by The National Academies' study on patent reform was that in order for the Federal Circuit judges to keep themselves well informed about relevant legal and economic scholarship, the court "should ensure its exposure to a wide variety of expert opinions by encouraging the submission of amicus briefs and by exchanges with other courts."
  • 188
    • 37749039796 scopus 로고    scopus 로고
    • COMM. ON INTELLECTUAL PROP. RIGHTS IN THE KNOWLEDGE-BASED ECON., THE NAT'L ACADS., A PATENT SYSTEM FOR THE 21ST CENTURY 6, 81 (Stephen A. Merrill, Richard C. Levin & Mark B. Myers eds., 2004).
    • COMM. ON INTELLECTUAL PROP. RIGHTS IN THE KNOWLEDGE-BASED ECON., THE NAT'L ACADS., A PATENT SYSTEM FOR THE 21ST CENTURY 6, 81 (Stephen A. Merrill, Richard C. Levin & Mark B. Myers eds., 2004).
  • 189
    • 34548274732 scopus 로고    scopus 로고
    • The Economics of
    • See, Patent Protection: Policy Implications from the Literature (AEI-Brookings Joint Ctr. for Regulatory Studies, Oct. 30, 2003) available at http://papers. ssrn.com/sol3/papers. cfm?abstract_id=467489 emphasizing that basic policy questions have not been answered
    • See Robert W. Hahn, The Economics of Patent Protection: Policy Implications from the Literature (AEI-Brookings Joint Ctr. for Regulatory Studies, Oct. 30, 2003) available at http://papers. ssrn.com/sol3/papers. cfm?abstract_id=467489 (emphasizing that basic policy questions have not been answered).
    • Hahn, R.W.1
  • 190
    • 37749026139 scopus 로고    scopus 로고
    • Indeed, our understanding of patent law's relationship to economic welfare remains incomplete. See, e.g., LANDES & POSNER, supra note 4, at 310 (Although there are powerful economic reasons in favor of creating property rights in inventions, there are also considerable social costs and whether the benefits exceed the costs is impossible to answer with confidence on the basis of present knowledge.);
    • Indeed, our understanding of patent law's relationship to economic welfare remains incomplete. See, e.g., LANDES & POSNER, supra note 4, at 310 ("Although there are powerful economic reasons in favor of creating property rights in inventions, there are also considerable social costs and whether the benefits exceed the costs is impossible to answer with confidence on the basis of present knowledge.");
  • 191
    • 37749025174 scopus 로고    scopus 로고
    • Richard Brunell. Appropriability in Antitrust: How Much is Enough?, 69 ANTITRUST L.J. 1,4 (2001) ([I]f the vast economics literature on intellectual property conveys one message, it is that the relationship between intellectual property protection and economic welfare is unclear.);
    • Richard Brunell. Appropriability in Antitrust: How Much is Enough?, 69 ANTITRUST L.J. 1,4 (2001) ("[I]f the vast economics literature on intellectual property conveys one message, it is that the relationship between intellectual property protection and economic welfare is unclear.");
  • 192
    • 37749009140 scopus 로고    scopus 로고
    • Adam Jaffe, The U.S. Patent System in Transition: Policy Innovation and the Innovation Process ii (Nat'l Bureau of Econ. Research, Working Paper No. 7280. 1999) ([D]espite the significance of policy changes and the wide availability of detailed data relating to patenting, robust conclusions regarding the empirical consequences for technological innovation of changes in patent policy are few.).
    • Adam Jaffe, The U.S. Patent System in Transition: Policy Innovation and the Innovation Process ii (Nat'l Bureau of Econ. Research, Working Paper No. 7280. 1999) ("[D]espite the significance of policy changes and the wide availability of detailed data relating to patenting, robust conclusions regarding the empirical consequences for technological innovation of changes in patent policy are few.").
  • 193
    • 37749010079 scopus 로고    scopus 로고
    • Some may correctly argue that Holmes Group v. Vornado Circulation Systems, 535 U.S. 826 (2002), which opened the door to greater circuit court involvement even if only occasionally (jurisdiction is available only where patent issues are raised solely by counterclaims), has forced the Federal Circuit to be less parochial.
    • Some may correctly argue that Holmes Group v. Vornado Circulation Systems, 535 U.S. 826 (2002), which opened the door to greater circuit court involvement even if only occasionally (jurisdiction is available only where patent issues are raised solely by counterclaims), has forced the Federal Circuit to be less parochial.
  • 194
    • 37749048050 scopus 로고    scopus 로고
    • See, e.g., Unitherm Food Sys., Inc. v. Swift Eckrich, Inc., 375 F.3d 1341, 1363-64 (Fed. Cir. 2004) (discussing the need for economic evidence, in addition to technological evidence, of substitutability in defining market definition).
    • See, e.g., Unitherm Food Sys., Inc. v. Swift Eckrich, Inc., 375 F.3d 1341, 1363-64 (Fed. Cir. 2004) (discussing the need for economic evidence, in addition to technological evidence, of substitutability in defining market definition).
  • 195
    • 37749011285 scopus 로고    scopus 로고
    • Even Illinois Tool Works, Inc. v. lndep. Ink, Inc., 396 F.3d 1342 (Fed. Cir. 2005), vacated and remanded, 547 U.S. 28 (2006), can be viewed as a desire by the Federal Circuit to modernize patent law. (We are grateful to Janice Mueller for this point.) Yet we do not believe that Holmes Group has led to any really significant involvement by other circuits in the development of patent common law. Our research indicates that in the first five years after Holmes Group, there have been only two regional circuit opinions on patent law issues presented by counterclaim.
    • Even Illinois Tool Works, Inc. v. lndep. Ink, Inc., 396 F.3d 1342 (Fed. Cir. 2005), vacated and remanded, 547 U.S. 28 (2006), can be viewed as a desire by the Federal Circuit to "modernize" patent law. (We are grateful to Janice Mueller for this point.) Yet we do not believe that Holmes Group has led to any really significant involvement by other circuits in the development of patent common law. Our research indicates that in the first five years after Holmes Group, there have been only two regional circuit opinions on patent law issues presented by counterclaim.
  • 196
    • 37749042118 scopus 로고    scopus 로고
    • See Telecom Technical Servs. v. Rolm Co., 388 F.3d 820 (11th Cir. 2004); Schinzing v. Mid-States Stainless, Inc., 415 F.3d 807 (8th Cir. 2005). Moreover, in one of those cases (Schinzing), the Eighth Circuit held that it would adopt the Federal Circuit's precedent on substantive issues of patent law, 415 F.3d at 811, so that the circuit could not provide any check on the Federal Circuit.
    • See Telecom Technical Servs. v. Rolm Co., 388 F.3d 820 (11th Cir. 2004); Schinzing v. Mid-States Stainless, Inc., 415 F.3d 807 (8th Cir. 2005). Moreover, in one of those cases (Schinzing), the Eighth Circuit held that it would "adopt the Federal Circuit's precedent on substantive issues of patent law," 415 F.3d at 811, so that the circuit could not provide any check on the Federal Circuit.
  • 197
    • 37749004487 scopus 로고
    • Thoughts on Judicial Restraint, 66
    • John Paul Stevens, Thoughts on Judicial Restraint, 66 JUDICATURE 177,183(1982).
    • (1982) JUDICATURE , vol.177 , pp. 183
    • Paul Stevens, J.1
  • 198
    • 37749014051 scopus 로고    scopus 로고
    • We are not discounting a role for Congress, but are mindful of the public choice aspects of congressional action, which warn against the potential for rent-seeking that usually accompanies the desire for industry-specific legislation. See Daniel A. Farber & Philip P. Frickey, The Jurisprudence of Public Choice, 65 TEX. L. REV. 873 (1987);
    • We are not discounting a role for Congress, but are mindful of the public choice aspects of congressional action, which warn against the potential for rent-seeking that usually accompanies the desire for industry-specific legislation. See Daniel A. Farber & Philip P. Frickey, The Jurisprudence of Public Choice, 65 TEX. L. REV. 873 (1987);
  • 199
    • 37749001084 scopus 로고    scopus 로고
    • Jonathan R. Macey, Promoting Public-Regarding Legislation Through Statutory Interpretation: An Application to Constitutional Theory, 86 COLUM. L. REV. 223 1986, We do not want the Patent Code to resemble the Copyright Code. Moreover, it is extremely difficult for legislators to capture in a piece of legislation the evolving nature of technology
    • Jonathan R. Macey, Promoting Public-Regarding Legislation Through Statutory Interpretation: An Application to Constitutional Theory, 86 COLUM. L. REV. 223 (1986). We do not want the Patent Code to resemble the Copyright Code. Moreover, it is extremely difficult for legislators to capture in a piece of legislation the evolving nature of technology.
  • 200
    • 37749035630 scopus 로고    scopus 로고
    • Parties in modern patent litigation tend to be corporate stakeholders with a substantial and ongoing interest in precedent. Moreover, these stakeholders may be a patentee-plaintiff today and an alleged infringer tomorrow. As such, one would assume a trend towards efficiency in the development of patent law. See Paul Rubin, Why is the Common Law Efficient? 6 J. LEGAL STUD. 51, 55 1977, E]fficiency occurs because of an evolutionary process, not because of any particular wisdom on the part of judges
    • Parties in modern patent litigation tend to be corporate stakeholders with a substantial and ongoing interest in precedent. Moreover, these stakeholders may be a patentee-plaintiff today and an alleged infringer tomorrow. As such, one would assume a trend towards efficiency in the development of patent law. See Paul Rubin, Why is the Common Law Efficient? 6 J. LEGAL STUD. 51, 55 (1977) ("[E]fficiency occurs because of an evolutionary process, not because of any particular wisdom on the part of judges.").
  • 201
    • 37749053878 scopus 로고    scopus 로고
    • See generally Paul Rubin, Common Law and Statute Law, XI J. LEG. STUD. 205 (1982). But the Federal Circuit's development of patent law has been anything but efficient, and this is in part due to the court's exclusive subject matter jurisdiction. As Rochelle Dreyfuss points out, a singular appellate court gives rise to a repeat-player disadvantage because lawyers worry that rearguing issues previously decided injures their capacity to represent their clients effectively, and thus it is difficult for experienced lawyers to help the court engage in the kind of reevaluation needed to make good law.
    • See generally Paul Rubin, Common Law and Statute Law, XI J. LEG. STUD. 205 (1982). But the Federal Circuit's development of patent law has been anything but efficient, and this is in part due to the court's exclusive subject matter jurisdiction. As Rochelle Dreyfuss points out, a singular appellate court gives rise to a "repeat-player disadvantage" because "lawyers worry that rearguing issues previously decided injures their capacity to represent their clients effectively," and thus it is difficult for "experienced lawyers to help the court engage in the kind of reevaluation needed to make good law."
  • 202
    • 37749044856 scopus 로고    scopus 로고
    • Dreyfuss, supra note 40, at 1570;
    • Dreyfuss, supra note 40, at 1570;
  • 203
    • 37749035380 scopus 로고    scopus 로고
    • Rai, supra note 20, at 1075 (noting that it is unlikely that attorneys will challenge Federal Circuit precedent because they represent both alleged infringers and patentees). Our point is that the institutional framework in which the judge operates is important in terms of efficiency.
    • Rai, supra note 20, at 1075 (noting that it is unlikely that attorneys will challenge Federal Circuit precedent because they represent both alleged infringers and patentees). Our point is that the institutional framework in which the judge operates is important in terms of efficiency.
  • 204
    • 33644678626 scopus 로고    scopus 로고
    • See Todd J. Zywicki, The Rise and Fall of Efficiency in the Common Law: A Supply-Side Analysis, 97 NW. U. L. REV. 1551, 1620 (2003) (Absent competition among court systems, there is little reason to believe that the common law will evolve toward efficiency.).
    • See Todd J. Zywicki, The Rise and Fall of Efficiency in the Common Law: A Supply-Side Analysis, 97 NW. U. L. REV. 1551, 1620 (2003) ("Absent competition among court systems, there is little reason to believe that the common law will evolve toward efficiency.").
  • 205
    • 37749011187 scopus 로고    scopus 로고
    • See POSNER, supra note 32, at 163 (The proposition that federal law ought to be the same everywhere in the country is not persuasive. If uniformity is desirable (as it is), so are diversity and competition.). Similarly, Samuel Estreicher and John Sexton write: From the absence of a rule of intercircuit stare decisis ... we derive a basic premise that disuniformity, at least in the short run, may be tolerable and perhaps beneficial. It may be that such disuniformity was an unintended byproduct of a geographically dispersed, decentralized judicial structure, but it is a feature that has endured, we submit, because the system's commitment to uniformity is qualified by a policy in favor of intercircuit experimentation.
    • See POSNER, supra note 32, at 163 ("The proposition that federal law ought to be the same everywhere in the country is not persuasive. If uniformity is desirable (as it is), so are diversity and competition."). Similarly, Samuel Estreicher and John Sexton write: From the absence of a rule of intercircuit stare decisis ... we derive a basic premise that disuniformity, at least in the short run, may be tolerable and perhaps beneficial. It may be that such disuniformity was an unintended byproduct of a geographically dispersed, decentralized judicial structure, but it is a feature that has endured, we submit, because the system's commitment to uniformity is qualified by a policy in favor of intercircuit experimentation.
  • 206
    • 37749044423 scopus 로고    scopus 로고
    • SAMUEL ESTREICHER & JOHN SEXTON, REDEFINING THE SUPREME COURT'S ROLE: A THEORY OF MANAGING THE FEDERAL JUDICIAL PROCESS 48 (1986).
    • SAMUEL ESTREICHER & JOHN SEXTON, REDEFINING THE SUPREME COURT'S ROLE: A THEORY OF MANAGING THE FEDERAL JUDICIAL PROCESS 48 (1986).
  • 207
    • 37749045689 scopus 로고    scopus 로고
    • Several areas of the law have reportedly benefited from experimentation. See, e.g., Mark C. Weber, Complex Litigation and the State Courts: Constitutional and Practical Advantages of the State Forum Over the Federal Forum in Mass Tort Cases, 21 HASTINGS CONST. L.Q. 215, 229 (1994) (Tort law is a field in which the experimentation has been particularly fruitful.).
    • Several areas of the law have reportedly benefited from experimentation. See, e.g., Mark C. Weber, Complex Litigation and the State Courts: Constitutional and Practical Advantages of the State Forum Over the Federal Forum in Mass Tort Cases, 21 HASTINGS CONST. L.Q. 215, 229 (1994) ("Tort law is a field in which the experimentation has been particularly fruitful.").
  • 208
    • 37749020048 scopus 로고    scopus 로고
    • See Cover, supra note 22, at 673 ([P]roliferation of norm-generating centers ... makes it more likely that at least one such center will attempt any given, plausible innovation.);
    • See Cover, supra note 22, at 673 ("[P]roliferation of norm-generating centers ... makes it more likely that at least one such center will attempt any given, plausible innovation.");
  • 209
    • 37749033257 scopus 로고    scopus 로고
    • Alicia JuarreroRoqué, Fail-Safe Versus Safe-Fail: Suggestions Toward An Evolutionary Model of Justice, 69 TEX. L. REV. 1745, 1768-69 (1991) (discussing the benefits of judicial redundancy in facilitating legal innovation);
    • Alicia JuarreroRoqué, Fail-Safe Versus Safe-Fail: Suggestions Toward An Evolutionary Model of Justice, 69 TEX. L. REV. 1745, 1768-69 (1991) (discussing the benefits of judicial redundancy in facilitating legal innovation);
  • 210
    • 37749023725 scopus 로고    scopus 로고
    • see also Duffy, supra note 1, at 686 ([Uniformity] makes the law unresponsive to local variations, eliminates interjurisdictional competition[,] and decreases the possibilities for legal experimentation.) ;
    • see also Duffy, supra note 1, at 686 ("[Uniformity] makes the law unresponsive to local variations, eliminates interjurisdictional competition[,] and decreases the possibilities for legal experimentation.") ;
  • 211
    • 11844288951 scopus 로고    scopus 로고
    • Robert B. Ahdieh, Between Dialogue and Decree: International Review of National Courts, 79 N.Y.U. L. REV. 2029, 2066-67 (Given the fact that they are engaged in a common enterprise, judges may find the decisions of fellow judges to be a particularly attractive source of new ideas,);
    • Robert B. Ahdieh, Between Dialogue and Decree: International Review of National Courts, 79 N.Y.U. L. REV. 2029, 2066-67 ("Given the fact that they are engaged in a common enterprise, judges may find the decisions of fellow judges to be a particularly attractive source of new ideas,");
  • 212
    • 26444491028 scopus 로고    scopus 로고
    • David A. Super, Are Rights Efficient? Challenging the Managerial Critique of Individual Rights. 93 CAL. L. REV. 1051, 1067 (2005) (Different decision makers, bringing differing ideologies and confronting adversaries of differing skills and dispositions, are likely to produce a variety of results.).
    • David A. Super, Are Rights Efficient? Challenging the Managerial Critique of Individual Rights. 93 CAL. L. REV. 1051, 1067 (2005) ("Different decision makers, bringing differing ideologies and confronting adversaries of differing skills and dispositions, are likely to produce a variety of results.").
  • 213
    • 37749030249 scopus 로고    scopus 로고
    • Of course, building on Brandeis's famous metaphor in New State Ice Co. v. Liebmann, 285 U.S. 262, 311 1932, much of the federalism scholarship refers to states as social laboratories, positioned to experiment with different approaches to common problems, which can be generative
    • Of course, building on Brandeis's famous metaphor in New State Ice Co. v. Liebmann, 285 U.S. 262, 311 (1932), much of the federalism scholarship refers to states as "social laboratories," positioned to experiment with different approaches to common problems, which can be generative.
  • 215
    • 37749001939 scopus 로고    scopus 로고
    • Erwin Chemerinsky, Federalism Not as Limits, But as Empowerment, 45 U. KAN. L. REV. 1219, 1234 (1997);
    • Erwin Chemerinsky, Federalism Not as Limits, But as Empowerment, 45 U. KAN. L. REV. 1219, 1234 (1997);
  • 216
    • 0042877947 scopus 로고    scopus 로고
    • Valuing Federalism, 82
    • Barry Friedman, Valuing Federalism, 82 MINN. L. REV. 317, 399 (1997);
    • (1997) MINN. L. REV , vol.317 , pp. 399
    • Friedman, B.1
  • 217
    • 37749015685 scopus 로고
    • Federalism: Evaluating the Founders' Design, 54
    • Michael W. McConnell, Federalism: Evaluating the Founders' Design, 54 U. CHI, L. REV. 1484, 1498 (1987).
    • (1987) U. CHI, L. REV , vol.1484 , pp. 1498
    • McConnell, M.W.1
  • 218
    • 37749048637 scopus 로고    scopus 로고
    • See Cohen et al., supra note 100, at 24 (We find that the key appropriability mechanism in most industries are secrecy, lead time[,] and complementary capabilities. . . .);
    • See Cohen et al., supra note 100, at 24 ("We find that the key appropriability mechanism in most industries are secrecy, lead time[,] and complementary capabilities. . . .");
  • 219
    • 37749054340 scopus 로고    scopus 로고
    • LANDES & POSNER, supra note 4, at 312 Many highly progressive, research-intensive industries, notably including the computer software industry, do not rely heavily on patents as a method of preventing free riding on inventive activity
    • LANDES & POSNER, supra note 4, at 312 ("Many highly progressive, research-intensive industries, notably including the computer software industry, do not rely heavily on patents as a method of preventing free riding on inventive activity.");
  • 220
    • 37749012670 scopus 로고    scopus 로고
    • Burk & Lemley, supra note 7. at 1577 (Industries vary in the speed and cost of research and development (R&D), in the ease with which inventions can be imitated by others, in the need for cumulative or interoperative innovation rather than stand-alone development, and in the extent to which patents cover entire products or merely components of products.);
    • Burk & Lemley, supra note 7. at 1577 ("Industries vary in the speed and cost of research and development (R&D), in the ease with which inventions can be imitated by others, in the need for cumulative or interoperative innovation rather than stand-alone development, and in the extent to which patents cover entire products or merely components of products.");
  • 221
    • 85011184089 scopus 로고    scopus 로고
    • Clarisa Long, The Dissonance of Scientific and Legal Norms. 13 SOC. EPISTEMOLOGY 165, 166 (1999) (The ability to appropriate the market value of a scientific invention is not the only factor motivating the producers of scientific information. To the extent that the law ignores this fact, it will create dissonance within the scientific community.).
    • Clarisa Long, The Dissonance of Scientific and Legal Norms. 13 SOC. EPISTEMOLOGY 165, 166 (1999) ("The ability to appropriate the market value of a scientific invention is not the only factor motivating the producers of scientific information. To the extent that the law ignores this fact, it will create dissonance within the scientific community.").
  • 222
    • 33645814048 scopus 로고    scopus 로고
    • See Tim Wu, Intellectual Property, Innovation, and Decentralized Decisions, 92 VA. L. REV. 123, 130-31 (2006) (In a period of great change or uncertainty, the most fruitful line of inquiry may be difficult to ascertain, making the ability of polyarchies to turn up innovative ideas particularly useful.);
    • See Tim Wu, Intellectual Property, Innovation, and Decentralized Decisions, 92 VA. L. REV. 123, 130-31 (2006) ("In a period of great change or uncertainty, the most fruitful line of inquiry may be difficult to ascertain, making the ability of polyarchies to turn up innovative ideas particularly useful.");
  • 223
    • 37748998950 scopus 로고    scopus 로고
    • Todd J. Zywicki, Is Forum Shopping Corrupting America's Bankruptcy Courts?, 94 GEO. LJ. 1141, 1147 (2006) (The value of competition is thus in its process, where constant innovation and experimentation with new methods of doing things winnows out poor ideas and allows good ideas to emerge. If properly constructed, such a process permits an inference that the most efficient solution to the problem will emerge. Competition is thus valuable in situations where the correct or best answer is not known in advance, but rather is discovered through the selection process.).
    • Todd J. Zywicki, Is Forum Shopping Corrupting America's Bankruptcy Courts?, 94 GEO. LJ. 1141, 1147 (2006) ("The value of competition is thus in its process, where constant innovation and experimentation with new methods of doing things winnows out poor ideas and allows good ideas to emerge. If properly constructed, such a process permits an inference that the most efficient solution to the problem will emerge. Competition is thus valuable in situations where the correct or best answer is not known in advance, but rather is discovered through the selection process.").
  • 224
    • 37749037587 scopus 로고    scopus 로고
    • See Duffy, supra note 1, at 692 (It would be both ironic and unfortunate if a legal system that... is designed to foster experimentation in technical areas, were modified to preclude substantial experimentation and further development of its own norms.).
    • See Duffy, supra note 1, at 692 ("It would be both ironic and unfortunate if a legal system that... is designed to foster experimentation in technical areas, were modified to preclude substantial experimentation and further development of its own norms.").
  • 225
    • 37749022464 scopus 로고    scopus 로고
    • See G. ALAN TARR, UNDERSTANDING STATE CONSTITUTIONS 175 (1998) (When two sets of interpreters reach the same outcome . . . , this increases confidence that the result is rooted in law rather than in will.);
    • See G. ALAN TARR, UNDERSTANDING STATE CONSTITUTIONS 175 (1998) ("When two sets of interpreters reach the same outcome . . . , this increases confidence that the result is rooted in law rather than in will.");
  • 226
    • 37749029378 scopus 로고    scopus 로고
    • note 112, at, D]ecisions of other courts may enhance the confidence of any given court in its pursuit of innovative doctrinal choices
    • Ahdieh, supra note 112, at 2067 ("[D]ecisions of other courts may enhance the confidence of any given court in its pursuit of innovative doctrinal choices.");
    • supra , pp. 2067
    • Ahdieh1
  • 227
    • 37749018191 scopus 로고    scopus 로고
    • Kathleen Patchel, The New Habeas, 42 HASTINGS L.J. 939, 1026 (1991) ([A] structure that allows the interaction of different versions of the truth as a means of developing the concepts that will be deemed 'true' seems more acceptable than a system in which only one voice is ever heard.);
    • Kathleen Patchel, The New Habeas, 42 HASTINGS L.J. 939, 1026 (1991) ("[A] structure that allows the interaction of different versions of the truth as a means of developing the concepts that will be deemed 'true' seems more acceptable than a system in which only one voice is ever heard.");
  • 228
    • 37749035645 scopus 로고    scopus 로고
    • Zywicki, supra note 110, at 1578 (stating that in a system based on flexible precedent, [t]he convergence of several independently acting judges on similar conclusions attested to the wisdom and consensus support for the rule, rather than the authority of the rule). Robert Cover referred to this aspect of redundancy as confirmatory.
    • Zywicki, supra note 110, at 1578 (stating that in a system based on flexible precedent, "[t]he convergence of several independently acting judges on similar conclusions attested to the wisdom and consensus support for the rule, rather than the authority of the rule"). Robert Cover referred to this aspect of redundancy as "confirmatory."
  • 229
    • 37749005074 scopus 로고    scopus 로고
    • Cover, supra note 22, at 674-75;
    • Cover, supra note 22, at 674-75;
  • 230
    • 37749021095 scopus 로고    scopus 로고
    • see also POSNER, supra note 32, at 163 ([A] difficult [legal] question is more likely to be answered correctly if it is allowed to engage the attention of different sets of judges deciding factually different cases than if it is answered finally by the first panel to consider it.).
    • see also POSNER, supra note 32, at 163 ("[A] difficult [legal] question is more likely to be answered correctly if it is allowed to engage the attention of different sets of judges deciding factually different cases than if it is answered finally by the first panel to consider it.").
  • 231
    • 37749055434 scopus 로고    scopus 로고
    • Duffy, supra note 1, at 690
    • Duffy, supra note 1, at 690.
  • 232
    • 37749014053 scopus 로고    scopus 로고
    • Cover, supra note 22, at 673;
    • Cover, supra note 22, at 673;
  • 233
    • 0000363869 scopus 로고    scopus 로고
    • see also Raaj K. Sah & Joseph E. Stiglitz, The Quality of Managers in Centralized Versus Decentralized Organizations, 106 Q. J. ECON. 289 (1991). Sah and Stiglitz write: Our main result is that there is greater variability (over time) in the steady-state quality of managers in a centralized economy. This is because highly capable decision-makers have greater beneficial effects on the managerial choices in a more centralized economy. By the same token, highly incapable managers placed in the same positions have greater deleterious effects. The overall effect of a greater centralization, therefore, is to induce a greater variability in the economy's managerial quality.
    • see also Raaj K. Sah & Joseph E. Stiglitz, The Quality of Managers in Centralized Versus Decentralized Organizations, 106 Q. J. ECON. 289 (1991). Sah and Stiglitz write: Our main result is that there is greater variability (over time) in the steady-state quality of managers in a centralized economy. This is because highly capable decision-makers have greater beneficial effects on the managerial choices in a more centralized economy. By the same token, highly incapable managers placed in the same positions have greater deleterious effects. The overall effect of a greater centralization, therefore, is to induce a greater variability in the economy's managerial quality.
  • 234
  • 235
    • 37749019742 scopus 로고    scopus 로고
    • See, e.g., Butler v. McKellar, 494 U.S. 407, 430 n.12 (1990) (Brennan, J., dissenting) (arguing that the majority decision threatens to retard the heretofore robust process by which constitutional principles evolve through repeated interpretation and application by both state and federal courts);
    • See, e.g., Butler v. McKellar, 494 U.S. 407, 430 n.12 (1990) (Brennan, J., dissenting) (arguing that the majority decision "threatens to retard the heretofore robust process by which constitutional principles evolve through repeated interpretation and application by both state and federal courts");
  • 236
    • 37749002349 scopus 로고    scopus 로고
    • ESTREICHER & SEXTON, supra note 111, at 47 (emphasizing the benefits of percolation in the lower courts to the process of creating sound, nationally binding law);
    • ESTREICHER & SEXTON, supra note 111, at 47 (emphasizing "the benefits of percolation in the lower courts to the process of creating sound, nationally binding law");
  • 238
    • 37749019301 scopus 로고    scopus 로고
    • But see Paul M. Bator, What is Wrong with the Supreme Court?, 51 U. PITT. L. REV. 673, 689-91 (1990) (expressing skepticism of the benefits of percolation).
    • But see Paul M. Bator, What is Wrong with the Supreme Court?, 51 U. PITT. L. REV. 673, 689-91 (1990) (expressing skepticism of the benefits of percolation).
  • 240
    • 37749003593 scopus 로고    scopus 로고
    • See also Holmes Group, Inc. v. Vomado Air Circulation Sys., Inc., 535 U.S. 826, 839 (2002) (Stevens, J., concurring) (An occasional conflict
    • See also Holmes Group, Inc. v. Vomado Air Circulation Sys., Inc., 535 U.S. 826, 839 (2002) (Stevens, J., concurring) ("An occasional conflict in decisions may be useful in identifying questions that merit this Court's attention.");
  • 241
    • 37749038580 scopus 로고    scopus 로고
    • SOLIMINE & WALKER, supra note 119, at 57;
    • SOLIMINE & WALKER, supra note 119, at 57;
  • 243
    • 84974054568 scopus 로고    scopus 로고
    • Sidney S. Ulmer. The Supreme Court's Certiorari Decisions: Conflict as a Predictive Variable, 78 AM. POL. SCI. REV. 901, 904-10 (1984) (demonstrating that the presence of conflicting decisions increases the likelihood of the Supreme Court granting certiorari). This sentiment was expressed by Justice Stevens in Thoughts on Judicial Restraint: [E]xperience with conflicting interpretations of federal rules [of law] may help to illuminate an issue before it is finally resolved and thus may play a constructive role in the lawmaking process. The doctrine of judicial restraint teaches us that patience in the judicial resolution of conflicts may sometimes produce the most desirable results.
    • Sidney S. Ulmer. The Supreme Court's Certiorari Decisions: Conflict as a Predictive Variable, 78 AM. POL. SCI. REV. 901, 904-10 (1984) (demonstrating that the presence of conflicting decisions increases the likelihood of the Supreme Court granting certiorari). This sentiment was expressed by Justice Stevens in Thoughts on Judicial Restraint: [E]xperience with conflicting interpretations of federal rules [of law] may help to illuminate an issue before it is finally resolved and thus may play a constructive role in the lawmaking process. The doctrine of judicial restraint teaches us that patience in the judicial resolution of conflicts may sometimes produce the most desirable results.
  • 244
    • 37749024849 scopus 로고    scopus 로고
    • Stevens, supra note 108, at 183
    • Stevens, supra note 108, at 183.
  • 245
    • 37749001094 scopus 로고    scopus 로고
    • See Supreme Court's Interest in Patent Cases Part of Normal Cycle, 72 PAT, TRADEMARK & COPYRIGHT J, BNA) 75, 83 May 26, 2006, reporting comments of Seth P. Waxman, former Solicitor General of the United States
    • See Supreme Court's Interest in Patent Cases Part of Normal Cycle, 72 PAT., TRADEMARK & COPYRIGHT J. (BNA) 75, 83 (May 26, 2006) (reporting comments of Seth P. Waxman, former Solicitor General of the United States).
  • 246
    • 37749001787 scopus 로고    scopus 로고
    • This may be a result of the Court not taking the best cases to address doctrinal irregularities or policy conflicts, arguably because the signaling function from a single court is not as crisp vis-à-vis several circuit courts. The more cases the Court entertains-cases that have been properly teed up-the more likely it is to develop greater familiarity with the intricacies of patent policy
    • This may be a result of the Court not taking the "best" cases to address doctrinal irregularities or policy conflicts, arguably because the signaling function from a single court is not as crisp vis-à-vis several circuit courts. The more cases the Court entertains-cases that have been properly "teed up"-the more likely it is to develop greater familiarity with the intricacies of patent policy.
  • 247
    • 37749030551 scopus 로고    scopus 로고
    • See supra note 23
    • See supra note 23.
  • 248
    • 37749028390 scopus 로고    scopus 로고
    • See Dreyfuss. supra note 6, at 775 ([The Federal Circuit's patent docket is] extremely complex, which makes it likely that a large number of decisionmaking opportunities are needed to fully express the court's views.).
    • See Dreyfuss. supra note 6, at 775 ("[The Federal Circuit's patent docket is] extremely complex, which makes it likely that a large number of decisionmaking opportunities are needed to fully express the court's views.").
  • 249
    • 37749015053 scopus 로고    scopus 로고
    • See also Moore, supra note 20, at 933 noting the complexity of patent cases
    • See also Moore, supra note 20, at 933 (noting the complexity of patent cases).
  • 250
    • 37749003758 scopus 로고    scopus 로고
    • As Scott Idleman writes, it has traditionally been held that candor is an ideal toward which judges should almost always aspire and that any exceptions to this rule are few and far between. Scott C. Idleman, A Prudential Theory of Judicial Candor, 73 TEX. L. REV. 1307, 1309 (1995);
    • As Scott Idleman writes, it has traditionally been held that "candor is an ideal toward which judges should almost always aspire and that any exceptions to this rule are few and far between." Scott C. Idleman, A Prudential Theory of Judicial Candor, 73 TEX. L. REV. 1307, 1309 (1995);
  • 251
    • 37749045065 scopus 로고    scopus 로고
    • see also GUIDO CALABRESI, A COMMON LAW FOR THE AGE OF STATUTES 178-81 (1982) (discussing the benefits of judicial candor);
    • see also GUIDO CALABRESI, A COMMON LAW FOR THE AGE OF STATUTES 178-81 (1982) (discussing the benefits of judicial candor);
  • 252
    • 0346045944 scopus 로고    scopus 로고
    • Susan Estrich, The Justice of Candor, 74 TEX. L. REV. 1227, 1228 (1996) (It is precisely because of its underlying political nature that the task of judging ... demands both rigor and candor.);
    • Susan Estrich, The Justice of Candor, 74 TEX. L. REV. 1227, 1228 (1996) ("It is precisely because of its underlying political nature that the task of judging ... demands both rigor and candor.");
  • 253
    • 37749021690 scopus 로고    scopus 로고
    • David L. Shapiro, In Defense of Judicial Candor, 100 HARV. L. REV. 731 (1987) (discussing the importance of judicial candor);
    • David L. Shapiro, In Defense of Judicial Candor, 100 HARV. L. REV. 731 (1987) (discussing the importance of judicial candor);
  • 254
    • 37749044436 scopus 로고    scopus 로고
    • Nicholas S. Zeppos, Judicial Candor and Statutory Interpretation, 78 GEO. L.J. 353, 401-02 (1989) (discussing values associated with judicial candor).
    • Nicholas S. Zeppos, Judicial Candor and Statutory Interpretation, 78 GEO. L.J. 353, 401-02 (1989) (discussing values associated with judicial candor).
  • 255
    • 37749021008 scopus 로고    scopus 로고
    • See Shapiro, supra note 125, at 737 ([L]ack of candor seldom goes undetected for long, and its detection only serves to increase the level of cynicism about the nature of judging and of judges.).
    • See Shapiro, supra note 125, at 737 ("[L]ack of candor seldom goes undetected for long, and its detection only serves to increase the level of cynicism about the nature of judging and of judges.").
  • 256
    • 37749001457 scopus 로고    scopus 로고
    • THE FEDERALIST NO. 78, at 99 (Alexander Hamilton) (M. Walter Dunne ed., 1901).
    • THE FEDERALIST NO. 78, at 99 (Alexander Hamilton) (M. Walter Dunne ed., 1901).
  • 257
    • 37749046190 scopus 로고    scopus 로고
    • Shapiro, supra note 125, at 737;
    • Shapiro, supra note 125, at 737;
  • 258
    • 37749035646 scopus 로고    scopus 로고
    • see also Estrich, supra note 125, at 1228 (If the cases are in conflict, acknowledge it, and be clear about the principle that guides you in one direction or another. It is precisely because of its underlying political nature that the task of judging, of interpreting the Constitution in particular, demands both rigor and candor.);
    • see also Estrich, supra note 125, at 1228 ("If the cases are in conflict, acknowledge it, and be clear about the principle that guides you in one direction or another. It is precisely because of its underlying political nature that the task of judging, of interpreting the Constitution in particular, demands both rigor and candor.");
  • 259
    • 37749035393 scopus 로고    scopus 로고
    • Robert A. Leflar, Honest Judicial Opinions, 74 NW. U. L. REV. 721, 723, 740-41 (1979) (discussing the importance of honesty in judicial opinions).
    • Robert A. Leflar, Honest Judicial Opinions, 74 NW. U. L. REV. 721, 723, 740-41 (1979) (discussing the importance of honesty in judicial opinions).
  • 260
    • 37749048490 scopus 로고    scopus 로고
    • A famous example is found in Allen Engineering Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1356-57 (Fed. Cir. 2002), where the Federal Circuit panel upbraided counsel for even presenting an argument that synergism was required to demonstrate nonobviousness. Even though the counsel's argument was based directly on the Supreme Court's then most recent precedent on obviousness,
    • A famous example is found in Allen Engineering Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1356-57 (Fed. Cir. 2002), where the Federal Circuit panel upbraided counsel for even presenting an argument that synergism was required to demonstrate nonobviousness. Even though the counsel's argument was based directly on the Supreme Court's then most recent precedent on obviousness,
  • 261
    • 37749042417 scopus 로고    scopus 로고
    • see Sakraida v. Ag Pro, Inc., 425 U.S. 273 (1976), the Federal Circuit panel described the argument as mere obfuscation, deflection and mischaracterization and stated that counsel was seeking to cloud rather than clarify the central legal issues and to draw the court's attention to peripheral matters.
    • see Sakraida v. Ag Pro, Inc., 425 U.S. 273 (1976), the Federal Circuit panel described the argument as mere "obfuscation, deflection and mischaracterization" and stated that counsel was seeking "to cloud rather than clarify the central legal issues and to draw the court's attention to peripheral matters."
  • 262
    • 37749048656 scopus 로고    scopus 로고
    • Bartell, 299 F.3d at 1356. Such harsh criticism of counsel came during a period when the Federal Circuit was scrupulously refusing to cite or to distinguish the Supreme Court's most recent precedents concerning nonobviousness.
    • Bartell, 299 F.3d at 1356. Such harsh criticism of counsel came during a period when the Federal Circuit was scrupulously refusing to cite or to distinguish the Supreme Court's most recent precedents concerning nonobviousness.
  • 263
    • 37749039574 scopus 로고    scopus 로고
    • See Brief for Petitioner at 29-32, KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727 (2007) (No. 05-1350) (setting forth citation study and academic commentary demonstrating that the Federal Circuit was ignoring the Supreme Court's Sakraida precedent).
    • See Brief for Petitioner at 29-32, KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727 (2007) (No. 05-1350) (setting forth citation study and academic commentary demonstrating that the Federal Circuit was ignoring the Supreme Court's Sakraida precedent).
  • 264
    • 37749016691 scopus 로고    scopus 로고
    • Others may include remedies, utility, and statutory subject matter. Our point, however, is that all of patent law would benefit from a decentralized judicial structure
    • Others may include remedies, utility, and statutory subject matter. Our point, however, is that all of patent law would benefit from a decentralized judicial structure.
  • 265
    • 37749041694 scopus 로고    scopus 로고
    • 517 U.S. 370 1996
    • 517 U.S. 370 (1996).
  • 266
    • 37749004503 scopus 로고    scopus 로고
    • See The Claim Construction Project, last visited May 13
    • See The Claim Construction Project, http://www.claimconstruction. com (last visited May 13, 2007).
    • (2007)
  • 267
    • 37749028101 scopus 로고    scopus 로고
    • Wagner defines the approaches slightly differently. He sees the holistic approach as a far lessstructured analysis, utilizing the array of possible interpretive information in a flexible, case-specific fashion. The Claim Construction Project: Methodology, http://www.claimconstruction.com/methodology. html (last visited May 13, 2007). Under his view, the procedural approach is characterized by adherence to a relatively strict rules-based hierarchy of interpretive sources, with a particular emphasis on the ordinary meaning of disputed patent claim language. Id.
    • Wagner defines the approaches slightly differently. He sees the holistic approach as a "far lessstructured analysis, utilizing the array of possible interpretive information in a flexible, case-specific fashion." The Claim Construction Project: Methodology, http://www.claimconstruction.com/methodology. html (last visited May 13, 2007). Under his view, the procedural approach "is characterized by adherence to a relatively strict rules-based hierarchy of interpretive sources, with a particular emphasis on the ordinary meaning of disputed patent claim language." Id.
  • 268
    • 37749036286 scopus 로고    scopus 로고
    • See also Craig Allen Nard, A Theory of Claim Interpretation, 14 HARV. J.L. & TECH. 1, 4 2000, identifying two schools of interpretation as pragmatic textualism and hypertextualism, The extent to which the patent specification is used seems to be a major indicator of the difference in the approaches. While the two approaches may seem roughly analogous to different approaches observed in statutory interpretation, there are significant differences between patent claims and a statute. For example, some jurists object to using legislative reports and other sources of legislative intent in the interpretation of a statute because those sources have not passed through the same process as, and are not part of, the statutory text. By contrast, patent claims are part of 'a fully integrated written instrument, consisting principally of a specification that concludes with the claims. Phillips v. AWH Corp, 415 F
    • See also Craig Allen Nard, A Theory of Claim Interpretation, 14 HARV. J.L. & TECH. 1, 4 (2000) (identifying two schools of interpretation as "pragmatic textualism" and "hypertextualism"). The extent to which the patent specification is used seems to be a major indicator of the difference in the approaches. While the two approaches may seem roughly analogous to different approaches observed in statutory interpretation, there are significant differences between patent claims and a statute. For example, some jurists object to using legislative reports and other sources of legislative "intent" in the interpretation of a statute because those sources have not passed through the same process as, and are not part of, the statutory text. By contrast, patent claims are "part of 'a fully integrated written instrument,' consisting principally of a specification that concludes with the claims." Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (internal citations omitted). Thus, the use of a patent's specification in interpreting its claims is not subject to the same formal objection raised when legislative materials are used in interpreting a statute.
  • 269
    • 37749044435 scopus 로고    scopus 로고
    • In Phillips, the Federal Circuit sitting en banc had every opportunity to establish clear rules for claim construction but offered little by way of guidance or anything new. 415 F.3d at 1315. The en banc court seemed unable to extricate itself from its precedent, the state of which prompted the court to sit en banc.
    • In Phillips, the Federal Circuit sitting en banc had every opportunity to establish clear rules for claim construction but offered little by way of guidance or anything new. 415 F.3d at 1315. The en banc court seemed unable to extricate itself from its precedent, the state of which prompted the court to sit en banc.
  • 270
    • 37749010602 scopus 로고    scopus 로고
    • See Cybor Corp. v. FAS Techs. Inc., 138 F.3d. 1448 (Fed. Cir. 1998) (en banc).
    • See Cybor Corp. v. FAS Techs. Inc., 138 F.3d. 1448 (Fed. Cir. 1998) (en banc).
  • 271
    • 37749030973 scopus 로고    scopus 로고
    • This line of reasoning can be found in Judge Newman's dissent in Phillips: While this court may persist in the delusion that claim construction is a purely legal determination, unaffected by underlying facts, it is plainly not the case. Claim construction is, or should be, made in context: a claim should be interpreted both from the perspective of one of ordinary skill in the art and in view of the state of the art at the time of invention, We simply must follow the example of every other appellate court, which, regarding the vast majority of factual questions, reviews the trial court for clear error, Therefore, not only is it more efficient for the trial court to construct the record, the trial court is better, that is, more accurate, by way of both position and practice, at finding facts than appellate judges. 415 F.3d at 1332-34 Newman, J, dissenting
    • This line of reasoning can be found in Judge Newman's dissent in Phillips: While this court may persist in the delusion that claim construction is a purely legal determination, unaffected by underlying facts, it is plainly not the case. Claim construction is, or should be, made in context: a claim should be interpreted both from the perspective of one of ordinary skill in the art and in view of the state of the art at the time of invention .... We simply must follow the example of every other appellate court, which, regarding the vast majority of factual questions, reviews the trial court for clear error .... Therefore, not only is it more efficient for the trial court to construct the record, the trial court is better, that is, more accurate, by way of both position and practice, at finding facts than appellate judges. 415 F.3d at 1332-34 (Newman, J., dissenting).
  • 272
    • 37749034837 scopus 로고    scopus 로고
    • Judge Patti Saris of the U.S. District Court in Massachusetts views de novo review as a key legal development following Markman. She expressed her concerns in terms of institutional competence: According to the literature, over fifty percent of all Markman hearings now involve the taking of evidence. Even in those cases where I do not hear evidence, I see terrific demonstratives. Because I am a visual learner, I understand evidence presented to me better when I receive a tutorial by live or video testimony, rather than by a cold affidavit. This is important because a de novo standard of review by definition is a fresh look by three people on an appellate level who did not have an opportunity to attend the hearing, My perspective, is that there should be more deference given to the interpretation of the trial judge who had the opportunity to see, hear, and look at evidence
    • Judge Patti Saris of the U.S. District Court in Massachusetts views de novo review as a "key legal development" following Markman. She expressed her concerns in terms of institutional competence: According to the literature, over fifty percent of all Markman hearings now involve the taking of evidence. Even in those cases where I do not hear evidence, I see terrific demonstratives. Because I am a visual learner, I understand evidence presented to me better when I receive a tutorial by live or video testimony, rather than by a cold affidavit. This is important because a de novo standard of review by definition is a fresh look by three people on an appellate level who did not have an opportunity to attend the hearing .... My perspective ... is that there should be more deference given to the interpretation of the trial judge who had the opportunity to see, hear, and look at evidence.
  • 273
    • 37749048657 scopus 로고    scopus 로고
    • O'Malley, Saris & Whyte, supra note 99, at 679 (Saris, J.).
    • O'Malley, Saris & Whyte, supra note 99, at 679 (Saris, J.).
  • 274
    • 37749004242 scopus 로고    scopus 로고
    • And Judge Marsha J. Pechman of the U.S. District Court for the Western District of Washington stated that given the high reversal rate on claim construction, you might as well throw darts. Federal District Courts Need Experts That are Good 'Teachers, ' Judges Tell Bar, 70 PAT., TRADEMARK & COPYRIGHT J. (BNA) 517, 537 (Sept. 14, 2005).
    • And Judge Marsha J. Pechman of the U.S. District Court for the Western District of Washington stated that given the high reversal rate on claim construction, "you might as well throw darts." Federal District Courts Need Experts That are Good 'Teachers, ' Judges Tell Bar, 70 PAT., TRADEMARK & COPYRIGHT J. (BNA) 517, 537 (Sept. 14, 2005).
  • 275
    • 37749005471 scopus 로고    scopus 로고
    • See also William F. Lee & Anita K. Krug, Still Adjusting to Markman: A Prescription for the Timing of Claim Construction Hearings, 13 HARV. J.L. & TECH. 55, 67 (1999) (Although, according to the Federal Circuit and the Supreme Court, Markman should have ushered in greater uniformity, predictability, and certainty in patent litigation, many believe that the holding has had the opposite effect. This is largely because Federal Circuit review of claim interpretation is de novo.);
    • See also William F. Lee & Anita K. Krug, Still Adjusting to Markman: A Prescription for the Timing of Claim Construction Hearings, 13 HARV. J.L. & TECH. 55, 67 (1999) ("Although, according to the Federal Circuit and the Supreme Court, Markman should have ushered in greater uniformity, predictability, and certainty in patent litigation, many believe that the holding has had the opposite effect. This is largely because Federal Circuit review of claim interpretation is de novo.");
  • 276
    • 37749032151 scopus 로고    scopus 로고
    • Nard, supra note 133, at 65-68 arguing that district courts have superior institutional competence in construing claims and therefore should be afforded deference in appellate review
    • Nard, supra note 133, at 65-68 (arguing that district courts have superior institutional competence in construing claims and therefore should be afforded deference in appellate review).
  • 277
    • 37749047176 scopus 로고    scopus 로고
    • See 35 U.S.C. § 103 2000
    • See 35 U.S.C. § 103 (2000).
  • 278
    • 37749027575 scopus 로고    scopus 로고
    • ROBERT PATRICK MERGES & JOHN FITZGERALD DUFFY, PATENT LAW AND POLICY: CASES AND MATERIALS 644 (3d ed. 2002).
    • ROBERT PATRICK MERGES & JOHN FITZGERALD DUFFY, PATENT LAW AND POLICY: CASES AND MATERIALS 644 (3d ed. 2002).
  • 279
    • 37749054993 scopus 로고    scopus 로고
    • § 103a
    • 35 U.S.C. § 103(a).
    • 35 U.S.C
  • 280
    • 37749036030 scopus 로고    scopus 로고
    • 383 U.S. 1 1966
    • 383 U.S. 1 (1966).
  • 281
    • 37749012104 scopus 로고
    • U.S
    • Hotchkiss v. Greenwood, 52 U.S. 248 (1852).
    • (1852) Greenwood , vol.52 , pp. 248
    • Hotchkiss1
  • 282
    • 37749050507 scopus 로고    scopus 로고
    • 383 U.S. at 17
    • 383 U.S. at 17.
  • 283
    • 37749011724 scopus 로고    scopus 로고
    • Sakraida v. Ag Pro, Inc., 425 U.S. 274, 281 (1976) (quoting Great Atl. & Pac Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152 (1950)).
    • Sakraida v. Ag Pro, Inc., 425 U.S. 274, 281 (1976) (quoting Great Atl. & Pac Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152 (1950)).
  • 284
    • 37749024701 scopus 로고    scopus 로고
    • See also Anderson's-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 60-61 (1969).
    • See also Anderson's-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 60-61 (1969).
  • 285
    • 37749034110 scopus 로고    scopus 로고
    • Anderson 's-Black Rock, 396 U.S. at 60;
    • Anderson 's-Black Rock, 396 U.S. at 60;
  • 286
    • 37749031513 scopus 로고    scopus 로고
    • Sakraida, 425 U.S. at 282.
    • Sakraida, 425 U.S. at 282.
  • 287
    • 37749051731 scopus 로고    scopus 로고
    • Sakraida, 425 U.S. at 282.
    • Sakraida, 425 U.S. at 282.
  • 288
    • 37749020065 scopus 로고    scopus 로고
    • Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1540 (Fed. Cir. 1983);
    • Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1540 (Fed. Cir. 1983);
  • 289
    • 37749013027 scopus 로고    scopus 로고
    • Medtronic, Inc. v. Cardiac Pacemakers, Inc., 721 F.2d 1563, 1566 (Fed. Cir. 1983).
    • Medtronic, Inc. v. Cardiac Pacemakers, Inc., 721 F.2d 1563, 1566 (Fed. Cir. 1983).
  • 290
    • 37749036303 scopus 로고    scopus 로고
    • See, e.g., In re Dembiczak, 175 F.3d 994, 999 (Fed. Cir. 1999).
    • See, e.g., In re Dembiczak, 175 F.3d 994, 999 (Fed. Cir. 1999).
  • 291
    • 37749014593 scopus 로고    scopus 로고
    • See, e.g., MARTIN J. ADELMAN ET AL., CASES AND MATERIALS ON PATENT LAW 345 (2d ed. 2003) (In its early decisions, the Federal Circuit essentially repudiated the holdings of [the Supreme Court decisions] Anderson 's-Black Rock and Sakraida.);
    • See, e.g., MARTIN J. ADELMAN ET AL., CASES AND MATERIALS ON PATENT LAW 345 (2d ed. 2003) ("In its early decisions, the Federal Circuit essentially repudiated the holdings of [the Supreme Court decisions] Anderson 's-Black Rock and Sakraida.");
  • 292
    • 0442326358 scopus 로고    scopus 로고
    • Paul M. Janicke, The Federal Circuit and An-titrust: To Be or Not to Be: The Long Gestation of the U.S. Court of Appeals for the Federal Circuit (1887-1982), 69 ANTITRUST L.J. 645, 661-62 (2002) ([T]he Federal Circuit has expressly dismantled many of the mechanisms the Supreme Court relied upon when deciding obviousness questions.);
    • Paul M. Janicke, The Federal Circuit and An-titrust: To Be or Not to Be: The Long Gestation of the U.S. Court of Appeals for the Federal Circuit (1887-1982), 69 ANTITRUST L.J. 645, 661-62 (2002) ("[T]he Federal Circuit has expressly dismantled many of the mechanisms the Supreme Court relied upon when deciding obviousness questions.");
  • 293
    • 37749039127 scopus 로고    scopus 로고
    • A. Samuel Oddi, Beyond Obviousness: Invention Protection in the Twentieth Century, 38 AM. U. L. REV. 1097, 1123 (1989) (noting that the Federal Circuit essentially has ignored Supreme Court precedent on obviousness).
    • A. Samuel Oddi, Beyond Obviousness: Invention Protection in the Twentieth Century, 38 AM. U. L. REV. 1097, 1123 (1989) (noting that the Federal Circuit "essentially has ignored" Supreme Court precedent on obviousness).
  • 294
    • 37749018121 scopus 로고    scopus 로고
    • The Federal Circuit itself eventually acknowledged the conflict between its decisions and prior circuit case law. See Allen Engineering Corp. v. Bartell Indus, Inc, 299 F.3d 1336, 1356-57 Fed. Cir. 2002
    • The Federal Circuit itself eventually acknowledged the conflict between its decisions and prior circuit case law. See Allen Engineering Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1356-57 (Fed. Cir. 2002).
  • 295
    • 37749014594 scopus 로고    scopus 로고
    • Certiorari was granted on June 26, 2006, nearly twenty-four years after the creation of the Federal Circuit. See KSR Int'l Co. v. Teleflex, Inc., 126 S. Ct. 2965 (2006). The question presented in KSR was:Whether the Federal Circuit has erred in holding that a claimed invention cannot be held obvious, and thus unpatentable under 35 U.S.C. § 103(a), in the absence of some proven 'teaching, suggestion, or motivation that would have led a person of ordinary skill in the art to combine the relevant prior art teachings in the manner claimed.
    • Certiorari was granted on June 26, 2006, nearly twenty-four years after the creation of the Federal Circuit. See KSR Int'l Co. v. Teleflex, Inc., 126 S. Ct. 2965 (2006). The question presented in KSR was:Whether the Federal Circuit has erred in holding that a claimed invention cannot be held "obvious," and thus unpatentable under 35 U.S.C. § 103(a), in the absence of some proven '"teaching, suggestion, or motivation" that would have led a person of ordinary skill in the art to combine the relevant prior art teachings in the manner claimed.
  • 296
    • 37749010088 scopus 로고    scopus 로고
    • Petition for Writ of Certiorari at i, KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727 (2007) (No. 04-1350), 2005 WL 835463.
    • Petition for Writ of Certiorari at i, KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727 (2007) (No. 04-1350), 2005 WL 835463.
  • 297
    • 37749013651 scopus 로고    scopus 로고
    • KSR, 127 S. Ct. at 1739.
    • KSR, 127 S. Ct. at 1739.
  • 298
    • 37749038972 scopus 로고    scopus 로고
    • Teleflex, Inc. v. KSR Int'l Co., 119 F. App'x. 282, 289 (Fed. Cir. 2005) (holding that KSR had failed to make out a prima facie case of obviousness).
    • Teleflex, Inc. v. KSR Int'l Co., 119 F. App'x. 282, 289 (Fed. Cir. 2005) (holding that KSR had "failed to make out a prima facie case of obviousness").
  • 299
    • 37749025190 scopus 로고    scopus 로고
    • KSR, 127 S. Ct. at 1746.
    • KSR, 127 S. Ct. at 1746.
  • 300
    • 37749034838 scopus 로고    scopus 로고
    • Id. at 1731
    • Id. at 1731.
  • 301
    • 37749048063 scopus 로고    scopus 로고
    • Id. (referring to United States v. Adams, 383 U.S. 39, 40 (1966)).
    • Id. (referring to United States v. Adams, 383 U.S. 39, 40 (1966)).
  • 302
    • 37749016693 scopus 로고    scopus 로고
    • Id. at 1731
    • Id. at 1731.
  • 303
    • 37749010089 scopus 로고    scopus 로고
    • See In re Sernaker, 702 F.2d 989, 995-96 (Fed. Cir. 1983) ([P]rior art references in combination do not make an invention obvious unless something in the prior art references would suggest the advantage to be derived from combining their teachings.);
    • See In re Sernaker, 702 F.2d 989, 995-96 (Fed. Cir. 1983) ("[P]rior art references in combination do not make an invention obvious unless something in the prior art references would suggest the advantage to be derived from combining their teachings.");
  • 304
    • 37749000399 scopus 로고    scopus 로고
    • W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1551 (Fed. Cir. 1983) (In concluding that obviousness was established by the teachings in various pairs of references, the district court lost sight of the principle that there must have been something present in those teachings to suggest to one skilled in the art that the claimed invention before the court would have been obvious.);
    • W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1551 (Fed. Cir. 1983) ("In concluding that obviousness was established by the teachings in various pairs of references, the district court lost sight of the principle that there must have been something present in those teachings to suggest to one skilled in the art that the claimed invention before the court would have been obvious.");
  • 305
    • 37749010521 scopus 로고    scopus 로고
    • ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577 (Fed. Cir. 1984) (holding that teachings of [prior art] references can be combined only if there is some suggestion or incentive to do so);
    • ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577 (Fed. Cir. 1984) (holding that "teachings of [prior art] references can be combined only if there is some suggestion or incentive to do so");
  • 306
    • 37749025802 scopus 로고    scopus 로고
    • Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 297 (Fed. Cir. 1985) (reversing a district court's conclusion of obviousness because the court did not make findings to show that the prior art included any factual teachings, suggestions or incentives . . . that showed the propriety of [patented] combination).
    • Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 297 (Fed. Cir. 1985) (reversing a district court's conclusion of obviousness because the court did not make findings to show that the prior art included "any factual teachings, suggestions or incentives . . . that showed the propriety of [patented] combination").
  • 307
    • 37749010604 scopus 로고    scopus 로고
    • See supra page 1640.
    • See supra page 1640.
  • 308
    • 37749022482 scopus 로고    scopus 로고
    • See, e.g., In re Kahn, 441 F.3d 977, 986, 988 (Fed. Cir. 2006) (attempting to reconcile the teaching-suggestion-motivation test with Supreme Court precedent and emphasizing that the 'motivationsuggestion-teaching' test asks not merely what the references disclose, but whether a person of ordinary skill in the art, possessed with the understandings and knowledge reflected in the prior art, and motivated by the general problem facing the inventor, would have been led to make the combination recited in the claims);
    • See, e.g., In re Kahn, 441 F.3d 977, 986, 988 (Fed. Cir. 2006) (attempting to reconcile the teaching-suggestion-motivation test with Supreme Court precedent and emphasizing that "the 'motivationsuggestion-teaching' test asks not merely what the references disclose, but whether a person of ordinary skill in the art, possessed with the understandings and knowledge reflected in the prior art, and motivated by the general problem facing the inventor, would have been led to make the combination recited in the claims");
  • 309
    • 37749041695 scopus 로고    scopus 로고
    • DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006) (providing a detailed historical analysis of the Federal Circuit's obviousness jurisprudence, particularly the teaching-suggestion-motivation test, and a discussion of Supreme Court precedent);
    • DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006) (providing a detailed historical analysis of the Federal Circuit's obviousness jurisprudence, particularly the teaching-suggestion-motivation test, and a discussion of Supreme Court precedent);
  • 310
    • 37749053213 scopus 로고    scopus 로고
    • Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1307-08 (Fed. Cir. 2006) (downplaying the motivation requirement);
    • Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1307-08 (Fed. Cir. 2006) (downplaying the motivation requirement);
  • 311
    • 37749023140 scopus 로고    scopus 로고
    • Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1291 (Fed. Cir. 2006) (We do not have a rigid test that requires an actual teaching to combine before concluding that one of ordinary skill in the art would know to combine references,).
    • Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1291 (Fed. Cir. 2006) ("We do not have a rigid test that requires an actual teaching to combine before concluding that one of ordinary skill in the art would know to combine references,").
  • 312
    • 37749007387 scopus 로고    scopus 로고
    • For example, in Alza, the Federal Circuit emphasized that it was being guided by the wisdom of the Supreme Court in striving for 'a practical test of patentability.' 464 F.3d at 1291 (quoting the Supreme Court's decision in Graham v. John Deere Co., 383 U.S. 1 (1966));
    • For example, in Alza, the Federal Circuit emphasized that it was being "guided by the wisdom of the Supreme Court in striving for 'a practical test of patentability.'" 464 F.3d at 1291 (quoting the Supreme Court's decision in Graham v. John Deere Co., 383 U.S. 1 (1966));
  • 313
    • 37749014949 scopus 로고    scopus 로고
    • see also Kahn, 441 F.3d at 985 (quoting the same passage from Graham).
    • see also Kahn, 441 F.3d at 985 (quoting the same passage from Graham).
  • 314
    • 37749016979 scopus 로고    scopus 로고
    • That passage from Graham-emphasizing the practicality of the Supreme Court's nonobviousness jurisprudence-had been emphasized both in KSR's Petition for Certiorari and in the Solicitor General's amicus brief supporting KSR in KSR, 127 S. Ct. 1727.
    • That passage from Graham-emphasizing the practicality of the Supreme Court's nonobviousness jurisprudence-had been emphasized both in KSR's Petition for Certiorari and in the Solicitor General's amicus brief supporting KSR in KSR, 127 S. Ct. 1727.
  • 315
    • 37749005804 scopus 로고    scopus 로고
    • See Petition for Writ of Certiorari, supra note 151, at 2, 12, 25;
    • See Petition for Writ of Certiorari, supra note 151, at 2, 12, 25;
  • 316
    • 37749055435 scopus 로고    scopus 로고
    • Brief for the United States as Amicus Curiae Supporting Petitioner, at supra note 9, at 12. Yet prior to the Supreme Court's request for the Solicitor General's views on the KSR petition for certiorari, the Federal Circuit had never previously quoted that particular passage. Thus, the Federal Circuit's decisions show that the court was aware of and trying to answer the criticisms being leveled at the doctrine by the government and petitioner in KSR
    • Brief for the United States as Amicus Curiae Supporting Petitioner, at supra note 9, at 12. Yet prior to the Supreme Court's request for the Solicitor General's views on the KSR petition for certiorari, the Federal Circuit had never previously quoted that particular passage. Thus, the Federal Circuit's decisions show that the court was aware of and trying to answer the criticisms being leveled at the doctrine by the government and petitioner in KSR.
  • 317
    • 37749016981 scopus 로고    scopus 로고
    • Transcript of Oral Argument at 53, KSR, 127 S. Ct. 1727 (No. 04-1350);
    • Transcript of Oral Argument at 53, KSR, 127 S. Ct. 1727 (No. 04-1350);
  • 318
    • 37748999313 scopus 로고    scopus 로고
    • see also id. (setting forth Justice Breyer's comment suggesting that, in its recent case law, the Federal Circuit so quickly modified itself after it had decades to elaborate a standard of obviousness).
    • see also id. (setting forth Justice Breyer's comment suggesting that, in its recent case law, the Federal Circuit "so quickly modified itself after it had decades to elaborate a standard of obviousness).
  • 319
    • 37749034641 scopus 로고    scopus 로고
    • KSR, 127 S. Ct. at 1743.
    • KSR, 127 S. Ct. at 1743.
  • 320
    • 84963456897 scopus 로고    scopus 로고
    • notes 70-73 and accompanying text
    • See supra notes 70-73 and accompanying text.
    • See supra
  • 321
    • 37749024295 scopus 로고    scopus 로고
    • KSR, 127 S. Ct. at 1731.
    • KSR, 127 S. Ct. at 1731.
  • 322
    • 37749001788 scopus 로고    scopus 로고
    • As originally conceived, the written description requirement, prior to the development of patent claims in the nineteenth century, served a public notice function and required inventors to articulate the boundaries of their inventions. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1560-61 Fed. Cir. 1991
    • As originally conceived, the written description requirement, prior to the development of patent claims in the nineteenth century, served a public notice function and required inventors to articulate the boundaries of their inventions. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1560-61 (Fed. Cir. 1991).
  • 323
    • 37749008833 scopus 로고    scopus 로고
    • In re Wertheim, 541 F.2d 257, 262 (C.C.P.A. 1976). The filing date is deemed constructive reduction practice, and therefore, proof of date of invention. The date of invention is particularly important in a first-to-invent regime because priority is awarded to the first person to invent. Moreover, proving date of invention is oftentimes important for antedating prior art references.
    • In re Wertheim, 541 F.2d 257, 262 (C.C.P.A. 1976). The filing date is deemed constructive reduction practice, and therefore, proof of date of invention. The date of invention is particularly important in a first-to-invent regime because priority is awarded to the first person to invent. Moreover, proving date of invention is oftentimes important for antedating prior art references.
  • 324
    • 37749043586 scopus 로고    scopus 로고
    • See Fiers v. Revel, 984 F.2d 1164 (Fed. Cir. 1993).
    • See Fiers v. Revel, 984 F.2d 1164 (Fed. Cir. 1993).
  • 325
    • 37749053753 scopus 로고    scopus 로고
    • 119F.3d 1559 Fed. Cir. 1997
    • 119F.3d 1559 (Fed. Cir. 1997).
  • 326
    • 37748998821 scopus 로고    scopus 로고
    • at
    • Id. at 1568-69.
  • 327
    • 37749053212 scopus 로고    scopus 로고
    • See, e.g., Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 979-80 (Fed. Cir. 2002) (Rader, J., dissenting from denial to rehear en banc) (asserting that Lilly is inconsistent with precedent because for the first time, this court purported to apply [written description] as a general disclosure doctrine in place of enablement, rather than as a priority doctrine);
    • See, e.g., Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 979-80 (Fed. Cir. 2002) (Rader, J., dissenting from denial to rehear en banc) (asserting that Lilly is inconsistent with precedent because "for the first time, this court purported to apply [written description] as a general disclosure doctrine in place of enablement, rather than as a priority doctrine");
  • 328
    • 37749032153 scopus 로고    scopus 로고
    • LizardTech v. Earth Res. Mapping, Inc., 433 F.3d 1373, 1376 (Fed. Cir. 2006) (Rader, J., dissenting from denial to hear en banc);
    • LizardTech v. Earth Res. Mapping, Inc., 433 F.3d 1373, 1376 (Fed. Cir. 2006) (Rader, J., dissenting from denial to hear en banc);
  • 329
    • 37749018122 scopus 로고    scopus 로고
    • super enablement' requirement
    • as transforming the written description requirement into a
    • Burk & Lemley, supra note 7, at 1653 (referring to Lilly as transforming the written description requirement into a '"super enablement' requirement");
    • Burk1    Lemley2
  • 330
    • 37749041696 scopus 로고    scopus 로고
    • Janice M. Mueller, The Evolving Application of the Written Description Requirement to Biotechnologie al Inventions, 13 BERKELEY TECH. L.J. 615 1998, There is also the question of whether a written description requirement is a relic of a bygone era when claims did not exist. Some have argued that the requirement would not be needed at all if only the enablement requirement of 35 U.S.C. §112 were properly enforced
    • Janice M. Mueller, The Evolving Application of the Written Description Requirement to Biotechnologie al Inventions, 13 BERKELEY TECH. L.J. 615 (1998). There is also the question of whether a written description requirement is a relic of a bygone era when claims did not exist. Some have argued that the requirement would not be needed at all if only the enablement requirement of 35 U.S.C. §112 were properly enforced.
  • 331
    • 37749020683 scopus 로고    scopus 로고
    • See Mark D. Janis, On Courts Herding Cats: Contending With the Written Description Requirement (And Other Unruly Patent Disclosure Doctrines, 2 WASH. U. J.L. & POL'Y 55, 60-61 2000
    • See Mark D. Janis, On Courts Herding Cats: Contending With the "Written Description" Requirement (And Other Unruly Patent Disclosure Doctrines), 2 WASH. U. J.L. & POL'Y 55, 60-61 (2000).
  • 332
    • 37749055436 scopus 로고    scopus 로고
    • Edmund Burke is reported to have said, don't talk to me of reform, things are bad enough as they are. See, e.g., Frank H. Easterbrook, Cyberspace Versus Property Law?, 4 TEX. REV. L. & POL. 103, 104 (1999).
    • Edmund Burke is reported to have said, "don't talk to me of reform, things are bad enough as they are." See, e.g., Frank H. Easterbrook, Cyberspace Versus Property Law?, 4 TEX. REV. L. & POL. 103, 104 (1999).
  • 333
    • 37749039812 scopus 로고    scopus 로고
    • See Moore, supra note 20, at 903 (identifying the top ten district courts with the largest number of patent cases). The Third Circuit has two district courts in the top ten, the other being the District of New Jersey.
    • See Moore, supra note 20, at 903 (identifying the top ten district courts with the largest number of patent cases). The Third Circuit has two district courts in the top ten, the other being the District of New Jersey.
  • 334
    • 37749031276 scopus 로고    scopus 로고
    • See 28 U.S.C. § 1295(a)(4)A, 2000
    • See 28 U.S.C. § 1295(a)(4)(A) (2000).
  • 335
    • 37749034839 scopus 로고    scopus 로고
    • This lack of attention can be explained in part by the fact that the Federal Circuit is a recent addition to the circuit court family and that the PTO was created one hundred years before the administrative state took hold, thus evolving outside the context of the New Deal and Progressive eras' publicinterest rationale. Moreover, patent law historically has resided in the background of the American legal landscape, and it was not until the 1980s that patent law assumed a higher profile
    • This lack of attention can be explained in part by the fact that the Federal Circuit is a recent addition to the circuit court family and that the PTO was created one hundred years before the administrative state took hold, thus evolving outside the context of the New Deal and Progressive eras' publicinterest rationale. Moreover, patent law historically has resided in the background of the American legal landscape, and it was not until the 1980s that patent law assumed a higher profile.
  • 336
    • 37749050130 scopus 로고    scopus 로고
    • See Dickinson v. Zurko, 527 U.S. 150 (1999) (reversing the Federal Circuit's decision holding that the general standard for administrative findings of fact was inapplicable in reviewing the PTO's decisions in patent cases);
    • See Dickinson v. Zurko, 527 U.S. 150 (1999) (reversing the Federal Circuit's decision holding that the general standard for administrative findings of fact was inapplicable in reviewing the PTO's decisions in patent cases);
  • 337
    • 37749046591 scopus 로고    scopus 로고
    • Digital Control, Inc. v. Charles Mach. Works, 437 F.3d 1309, 1316 (Fed. Cir. 2006) (holding that the judicial standard governing what information must be disclosed by a patent applicant to the PTO was not supplanted by the PTO's attempt, through administrative rulemaking, to define a more narrow standard).
    • Digital Control, Inc. v. Charles Mach. Works, 437 F.3d 1309, 1316 (Fed. Cir. 2006) (holding that the judicial standard governing what information must be disclosed by a patent applicant to the PTO was not "supplanted" by the PTO's attempt, through administrative rulemaking, to define a more narrow standard).
  • 338
    • 37749007388 scopus 로고    scopus 로고
    • In fact, it was not until the late 1990s that the issue of APA applicability was given significant attention, due in large part to the PTO's repeated pleas for greater deference. See In re Zurko, 142 F.3d 1447, 1449 (Fed. Cir. 1999, en banc, The Commissioner has campaigned aggressively for this court to review factual findings underlying the board's patentability determinations using the more deferential substantial evidence standard found in section 10(c) of the Administrative Procedure Act (APA) and codified in relevant part at 5 U.S.C. § 706 1994, but we have not done so
    • In fact, it was not until the late 1990s that the issue of APA applicability was given significant attention, due in large part to the PTO's repeated pleas for greater deference. See In re Zurko, 142 F.3d 1447, 1449 (Fed. Cir. 1999) (en banc) ("The Commissioner has campaigned aggressively for this court to review factual findings underlying the board's patentability determinations using the more deferential substantial evidence standard found in section 10(c) of the Administrative Procedure Act (APA) and codified in relevant part at 5 U.S.C. § 706 (1994), but we have not done so.");
  • 339
    • 37749033976 scopus 로고    scopus 로고
    • In re Kemps, 97 F.3d 1427, 1431 n.4 (Fed. Cir. 1996) (Although the PTO has suggested the APA standard of review in a footnote in prior cases, this appears to be the first case in which the PTO has presumptuously assumed this standard for briefing and argument.). Eventually, the Federal Circuit, sitting en banc, unanimously held that the APA does not apply to the PTO.
    • In re Kemps, 97 F.3d 1427, 1431 n.4 (Fed. Cir. 1996) ("Although the PTO has suggested the APA standard of review in a footnote in prior cases, this appears to be the first case in which the PTO has presumptuously assumed this standard for briefing and argument."). Eventually, the Federal Circuit, sitting en banc, unanimously held that the APA does not apply to the PTO.
  • 340
    • 37749048658 scopus 로고    scopus 로고
    • 142 F.3d at 1447 (holding factual findings of the PTO are to be reviewed under clearly erroneous standard)
    • See, apply, but did not articulate which APA standard-substantial evidence or arbitrary and capricious-governed
    • See Zurko, 142 F.3d at 1447 (holding factual findings of the PTO are to be reviewed under clearly erroneous standard). The Supreme Court reversed the Federal Circuit and held that the APA does apply, but did not articulate which APA standard-substantial evidence or arbitrary and capricious-governed.
    • The Supreme Court reversed the Federal Circuit and held that the APA does
    • Zurko1
  • 341
    • 37749011297 scopus 로고    scopus 로고
    • See Zurko, 527 U.S. 150 (1999).
    • See Zurko, 527 U.S. 150 (1999).
  • 342
    • 37749019743 scopus 로고    scopus 로고
    • see In re
    • The Federal Circuit subsequently applied the substantial evidence standard of review, Cir., rather than the arbitrary and capricious standard, which has traditionally been applied by courts to factual findings of agencies with informal rulemaking authority
    • The Federal Circuit subsequently applied the substantial evidence standard of review, see In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000), rather than the arbitrary and capricious standard, which has traditionally been applied by courts to factual findings of agencies with informal rulemaking authority.
    • (2000) Gartside, 203 F.3d 1305, 1316 (Fed
  • 343
    • 37749039575 scopus 로고    scopus 로고
    • S ee KENNETH CULP DAVIS & RICHARD J. PIERCE, JR., 2 ADMINISTRATIVE LAW TREATISE § 11.4, at 200 (1994) (APA §706 requires courts to apply the substantial evidence test only to findings adopted through use of formal adjudication or formal rulemaking. It requires courts to apply the arbitrary and capricious test when an agency acts through informal adjudication or informal rulemaking.).
    • S ee KENNETH CULP DAVIS & RICHARD J. PIERCE, JR., 2 ADMINISTRATIVE LAW TREATISE § 11.4, at 200 (1994) ("APA §706 requires courts to apply the substantial evidence test only to findings adopted through use of formal adjudication or formal rulemaking. It requires courts to apply the arbitrary and capricious test when an agency acts through informal adjudication or informal rulemaking.").
  • 344
    • 33745218912 scopus 로고    scopus 로고
    • The D.C. Circuit's docket is well-represented with agency decisions. See John R. Roberts, Jr., What Makes the D.C. Circuit Different: A Historical View, 92 VA. L. REV. 375, 389 (2006) (Whatever combination of letters you can put together, it is likely that jurisdiction to review that agency's decision is vested in the D.C, Circuit. Even when the jurisdiction is concurrent . . . lawyers frequently prefer to litigate in the D.C. Circuit because there is a far more extensive body of administrative law developed there than in other circuits.).
    • The D.C. Circuit's docket is well-represented with agency decisions. See John R. Roberts, Jr., What Makes the D.C. Circuit Different: A Historical View, 92 VA. L. REV. 375, 389 (2006) ("Whatever combination of letters you can put together, it is likely that jurisdiction to review that agency's decision is vested in the D.C, Circuit. Even when the jurisdiction is concurrent . . . lawyers frequently prefer to litigate in the D.C. Circuit because there is a far more extensive body of administrative law developed there than in other circuits.").
  • 345
    • 37749043587 scopus 로고    scopus 로고
    • See H.R. REP. NO. 97-312, at 20-22 (1981) (Patent litigation long has been identified as a problem area, characterized by undue forum-shopping and unsettling inconsistency in adjudications.).
    • See H.R. REP. NO. 97-312, at 20-22 (1981) ("Patent litigation long has been identified as a problem area, characterized by undue forum-shopping and unsettling inconsistency in adjudications.").
  • 346
    • 37749000400 scopus 로고    scopus 로고
    • See Hearings, supra note 22, at 709 (testimony of James W. Geriak) (stating that claims of forum shopping are seriously exaggerated);
    • See Hearings, supra note 22, at 709 (testimony of James W. Geriak) (stating that claims of forum shopping are "seriously exaggerated");
  • 347
    • 37749016982 scopus 로고
    • note 3, at, asserting that forum shopping and outcome variability were not problematic during the
    • Quillen, supra note 3, at 228 (asserting that forum shopping and outcome variability were not problematic during the 1970s).
    • (1970) supra , pp. 228
    • Quillen1
  • 348
    • 37749029745 scopus 로고    scopus 로고
    • See Richard A. Posner, Do We Have Too Many Intellectual Property Rights?, 9 MARQ. INTELL. PROP. L. REV. 173, 184 (2005) ([Fear of falling behind Japan and Europe] was almost certainly wrong, but it was widespread and one consequence was the creation in the early 1980s of a new court-the U.S. Court of Appeals for the Federal Circuit). Moreover, technological and economic circumstances today are starkly different than they were in the 1970s, and sluggish innovation was arguably more a result of stagflation, global economic conditions, or other reasons not directly related to patent law.
    • See Richard A. Posner, Do We Have Too Many Intellectual Property Rights?, 9 MARQ. INTELL. PROP. L. REV. 173, 184 (2005) ("[Fear of falling behind Japan and Europe] was almost certainly wrong, but it was widespread and one consequence was the creation in the early 1980s of a new court-the U.S. Court of Appeals for the Federal Circuit"). Moreover, technological and economic circumstances today are starkly different than they were in the 1970s, and sluggish innovation was arguably more a result of stagflation, global economic conditions, or other reasons not directly related to patent law.
  • 349
    • 37749047506 scopus 로고
    • See note 29, at, discussing R&D and innovation trends in the United States during the
    • See Scherer, supra note 29, at 11-13 (discussing R&D and innovation trends in the United States during the 1970s).
    • (1970) supra , pp. 11-13
    • Scherer1
  • 350
    • 37749024702 scopus 로고    scopus 로고
    • The pace and quality of innovation are influenced by several factors. As William A. Wulf, President of the National Academy of Engineering, has stated, innovation requires a multi-component 'environment that provides an educated workforce, encourages entrepreneurial activity, and protects intellectual property. COMM. ON PROSPERING IN THE GLOBAL ECON. OF THE 21ST CENTURY, THE NAT'L ACADS, RISING ABOVE THE GATHERING STORM: ENERGIZING AND EMPLOYING AMERICA FOR A BRIGHTER FUTURE 182 (2007, quoting William A. Wulf, Review and Renewal of the Environment for Innovation 2005, unpublished paper, This report was published after some scholars and public officials expressed concern about whether the United States can maintain its lead in innovation and technological development, According to the report: [T]he scientific
    • The pace and quality of innovation are influenced by several factors. As William A. Wulf, President of the National Academy of Engineering, has stated, innovation requires a "multi-component 'environment that provides an educated workforce, encourages entrepreneurial activity, and protects intellectual property." COMM. ON PROSPERING IN THE GLOBAL ECON. OF THE 21ST CENTURY, THE NAT'L ACADS., RISING ABOVE THE GATHERING STORM: ENERGIZING AND EMPLOYING AMERICA FOR A BRIGHTER FUTURE 182 (2007) (quoting William A. Wulf, Review and Renewal of the Environment for Innovation (2005) (unpublished paper)). This report was published after some scholars and public officials expressed concern about whether the United States can maintain its lead in innovation and technological development, According to the report: [T]he scientific and technical building blocks critical to our economic leadership are eroding at a time when many other nations are gathering strength . . . . Although many people assume that the United States will always be a world leader in science and technology, this may not continue to be the case inasmuch as great minds and ideas exist throughout the world. We fear the abruptness with which a lead in science and technology can be lost - and the difficulty of recovering a lead once lost, if indeed it can be regained at all.
  • 352
    • 37749023312 scopus 로고    scopus 로고
    • See Arora, Ceccagnoli & Cohen, supra note 101, Abstract (Although patent protection is found to provide a positive premium on average in only a few industries, our results also imply that it stimulates R&D across almost all manufacturing industries, with the magnitude of that effect varying substantially.).
    • See Arora, Ceccagnoli & Cohen, supra note 101, Abstract ("Although patent protection is found to provide a positive premium on average in only a few industries, our results also imply that it stimulates R&D across almost all manufacturing industries, with the magnitude of that effect varying substantially.").
  • 353
    • 37749005075 scopus 로고    scopus 로고
    • Robert Cover has noted, f]orum shoppers and those who oppose them, become the carriers that pollinate one system of courts with the information about another system's experience. Cover, supra note 22, at 678
    • Robert Cover has noted, "[f]orum shoppers and those who oppose them . . . become the carriers that pollinate one system of courts with the information about another system's experience." Cover, supra note 22, at 678.
  • 354
    • 37749051732 scopus 로고    scopus 로고
    • See also Zywicki, supra note 110, at 1621 (emphasizing the benefits of forumshopping such as forum shopping's role in engendering experimentation and laws conducive to economic efficiency and coordination). This view fits comfortably with the polycentric, competitive model of only three circuit courts.
    • See also Zywicki, supra note 110, at 1621 (emphasizing the "benefits of forumshopping" such as forum shopping's role in engendering "experimentation" and "laws conducive to economic efficiency and coordination"). This view fits comfortably with the polycentric, competitive model of only three circuit courts.
  • 355
    • 37749044439 scopus 로고    scopus 로고
    • See Moore, supra note 20, at 892 ([C]hoice of forum continues to play a critical role in the outcome of patent litigation.).
    • See Moore, supra note 20, at 892 ("[C]hoice of forum continues to play a critical role in the outcome of patent litigation.").
  • 356
    • 37749036305 scopus 로고    scopus 로고
    • This proposal does not address the forum shopping that currently occurs at the district court level. Moore has suggested a change in patent law's venue statutes as a means of combating district court forum shopping. See id. at 934-37
    • This proposal does not address the forum shopping that currently occurs at the district court level. Moore has suggested a change in patent law's venue statutes as a means of combating district court forum shopping. See id. at 934-37.
  • 357
    • 37748998966 scopus 로고    scopus 로고
    • Even if the parties knew that the plaintiff would prefer to file in one circuit, that would not provide certainty because in many instances the defendant could bring a declaratory judgment action, which could be filed in the defendant's choice of circuit
    • Even if the parties knew that the plaintiff would prefer to file in one circuit, that would not provide certainty because in many instances the defendant could bring a declaratory judgment action, which could be filed in the defendant's choice of circuit.
  • 358
    • 37749023142 scopus 로고    scopus 로고
    • See supra note 38
    • See supra note 38.
  • 359
    • 84874306577 scopus 로고    scopus 로고
    • § 2112(a)(3, 2000) provides that where any agency receives two or more petitions for review of an order, it shall notify the judicial panel on multidistrict litigation, which in turn shall, by means of random selection, designate one court of appeals, from among the courts of appeals in which petitions for review have been filed, and shall issue an order consolidating the petitions for review in that court of appeals
    • 28 U.S.C. § 2112(a)(3) (2000) provides that where any agency "receives two or more petitions for review of an order," it shall "notify the judicial panel on multidistrict litigation," which in turn "shall, by means of random selection, designate one court of appeals, from among the courts of appeals in which petitions for review have been filed . . . and shall issue an order consolidating the petitions for review in that court of appeals."
    • 28 U.S.C
  • 360
    • 37749028550 scopus 로고    scopus 로고
    • Under the doctrine of nonmutual collateral estoppel, a party may be estopped from relitigating an issue that has previously been decided against the party if the party had a full and fair opportunity to litigate the issues in the prior proceeding. See Blonder-Tongue Labs., Inc. v. Univ. of Ill. Found., 402 U.S. 313 (1971). Because Patentee was a party to the prior proceeding but the accused infringer was not, estoppel could apply only against Patentee on issues decided against it.
    • Under the doctrine of nonmutual collateral estoppel, a party may be estopped from relitigating an issue that has previously been decided against the party if the party had a full and fair opportunity to litigate the issues in the prior proceeding. See Blonder-Tongue Labs., Inc. v. Univ. of Ill. Found., 402 U.S. 313 (1971). Because Patentee was a party to the prior proceeding but the accused infringer was not, estoppel could apply only against Patentee on issues decided against it.
  • 361
    • 37749033978 scopus 로고    scopus 로고
    • See Abbott Labs. v. Dey, L.P., 110 F. Supp. 2d 667 (N.D. Ill. 2000) (applying issue preclusion against plaintiff-patentee);
    • See Abbott Labs. v. Dey, L.P., 110 F. Supp. 2d 667 (N.D. Ill. 2000) (applying issue preclusion against plaintiff-patentee);
  • 362
    • 37749052263 scopus 로고    scopus 로고
    • TM Patents, L.P., v. IBM Corp., 72 F. Supp. 2d 370 (S.D.N.Y, 1999) (same). But some district courts have refused to apply issue preclusion against plaintiff-patentees based on finality concerns.
    • TM Patents, L.P., v. IBM Corp., 72 F. Supp. 2d 370 (S.D.N.Y, 1999) (same). But some district courts have refused to apply issue preclusion against plaintiff-patentees based on finality concerns.
  • 363
    • 37749041698 scopus 로고    scopus 로고
    • See, e.g., Kollmorgen Corp. v. Yaskawa Elec Corp., 147 F. Supp. 2d 464, 468 (W.D. Va. 2002) (As more than forty percent of all Markman Orders are reversed by the Federal Circuit, logic dictates that for these claim constructions to have a preclusive effect, the litigants must first have an opportunity to seek Federal Circuit review.);
    • See, e.g., Kollmorgen Corp. v. Yaskawa Elec Corp., 147 F. Supp. 2d 464, 468 (W.D. Va. 2002) ("As more than forty percent of all Markman Orders are reversed by the Federal Circuit, logic dictates that for these claim constructions to have a preclusive effect, the litigants must first have an opportunity to seek Federal Circuit review.");
  • 364
    • 37749008836 scopus 로고    scopus 로고
    • Graco Children's Prods., Inc. v. Regalo Int'l, LLC, 77 F. Supp. 2d 660, 664 (E.D. Pa. 1999) (issue preclusion did not apply to patentee because the court's interpretation of the patent was not essential to the judgment in the previous case).
    • Graco Children's Prods., Inc. v. Regalo Int'l, LLC, 77 F. Supp. 2d 660, 664 (E.D. Pa. 1999) (issue preclusion did not apply to patentee because the court's interpretation of the patent was not essential to the judgment in the previous case).
  • 365
    • 37749021096 scopus 로고    scopus 로고
    • See also Nard, supra note 133, at 78-80 arguing for application of issue preclusion
    • See also Nard, supra note 133, at 78-80 (arguing for application of issue preclusion).
  • 366
    • 37749027099 scopus 로고    scopus 로고
    • If the appeal is heard by the same circuit court that heard the initial litigation against Defendant 1, the circuit court may apply stare decisis as a basis for adopting the prior claim construction. While stare decisis may foster uniformity, it is not without problems. Most notably, it denies Defendant 2 of his day in court, a fundamental tenet of issue preclusion. See Texas Instruments, Inc. v. Linear Tech, Corp, 182 F. Supp. 2d 580, 589-90 E.D. Tex. 2002, rejecting applicability of stare decisis in the context of claim construction, We are not aware of any Federal Circuit decision that has employed the doctrine of stare decisis to claim interpretation, despite the Supreme Court's acknowledgement of the doctrine's applicability
    • If the appeal is heard by the same circuit court that heard the initial litigation against Defendant 1, the circuit court may apply stare decisis as a basis for adopting the prior claim construction. While stare decisis may foster uniformity, it is not without problems. Most notably, it denies Defendant 2 of his day in court, a fundamental tenet of issue preclusion. See Texas Instruments, Inc. v. Linear Tech, Corp., 182 F. Supp. 2d 580, 589-90 (E.D. Tex. 2002) (rejecting applicability of stare decisis in the context of claim construction). We are not aware of any Federal Circuit decision that has employed the doctrine of stare decisis to claim interpretation, despite the Supreme Court's acknowledgement of the doctrine's applicability.
  • 367
    • 37749006671 scopus 로고    scopus 로고
    • See Markman v. Westview Instruments, Inc.: [W]hereas issue preclusion could not be asserted against new and independent infringement defendants even within a given jurisdiction, treating interpretive issues as purely legal will promote . . . intrajurisdictional certainty through the application of stare decisis on those questions not yet subject to interjurisdictional uniformity under the authority of the single appeals court. 517 U.S. 370, 391 (1996).
    • See Markman v. Westview Instruments, Inc.: [W]hereas issue preclusion could not be asserted against new and independent infringement defendants even within a given jurisdiction, treating interpretive issues as purely legal will promote . . . intrajurisdictional certainty through the application of stare decisis on those questions not yet subject to interjurisdictional uniformity under the authority of the single appeals court. 517 U.S. 370, 391 (1996).
  • 368
    • 37749015054 scopus 로고    scopus 로고
    • See also Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1479 (Fed. Cir. 1998) (Newman, J., dissenting) (The promise of uniformity and finality, flowing from decisions of national effect, is a failed promise if we are not bound by stare decisis in our own claim interpretation.).
    • See also Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1479 (Fed. Cir. 1998) (Newman, J., dissenting) ("The promise of uniformity and finality, flowing from decisions of national effect, is a failed promise if we are not bound by stare decisis in our own claim interpretation.").
  • 369
    • 37749001956 scopus 로고    scopus 로고
    • Indeed, it is not uncommon for circuits to look to each other for guidance in matters of statutory construction, common-law approaches, and in numerous other situations
    • Indeed, it is not uncommon for circuits to look to each other for guidance in matters of statutory construction, common-law approaches, and in numerous other situations.
  • 370
    • 0043246455 scopus 로고    scopus 로고
    • Antitrust Limits to
    • See, Patent Settlements, 34 RAND J. ECON. 391, 395 2003, stating that all real patents are less strong than the idealized patent grant usually imagined in economic theory and what a real patent provides is not a right to exclude but rather the more limited 'right to try to exclude' by suing for patent infringement in court
    • See Carl Shapiro, Antitrust Limits to Patent Settlements, 34 RAND J. ECON. 391, 395 (2003) (stating that "all real patents are less strong than the idealized patent grant usually imagined in economic theory" and what a "real patent" provides is not a right to exclude "but rather the more limited 'right to try to exclude'" by suing for patent infringement in court).
    • Shapiro, C.1
  • 371
    • 0042361801 scopus 로고    scopus 로고
    • See also Ian Ayres & Paul Klempcrer, Limiting Patentees' Market Power Without Reducing Innovation Incentives, 97 MICH. L. REV. 985 (1999) (viewing patents as probabilistic);
    • See also Ian Ayres & Paul Klempcrer, Limiting Patentees' Market Power Without Reducing Innovation Incentives, 97 MICH. L. REV. 985 (1999) (viewing patents as probabilistic);
  • 372
    • 22144437353 scopus 로고    scopus 로고
    • Mark A. Lemley & Carl Shapiro, Probabilistic Patents, 19 J. ECON. PERSP. 75 (2005) (same).
    • Mark A. Lemley & Carl Shapiro, Probabilistic Patents, 19 J. ECON. PERSP. 75 (2005) (same).
  • 373
    • 37749009372 scopus 로고    scopus 로고
    • Nonetheless, a duopolistic patent, one with a dual claim construction, can still be a powerful tool. Even a narrow scope resulting from the initial action will have some leveraging authority because while issue preclusion may be available to a subsequent alleged infringer, there always remains a degree of uncertainty in litigation. See Competition and Intellectual Property Law and Policy in the Knowledge-Based Economy: Hearings Before the Fed. Trade Comm 'n & Dep't of Justice, Antitrust Div. 107-12 (July 11, 2002, available at http://www.ftc.gov/opp/intellect/020711trans.pdf (statement of Judge T.S. Ellis, III, U.S. District Court for the Eastern District of Virginia, discussing the pernicious effect of the high costs of patent litigation and how these costs deter potential competitors of patentees from entering the market and challenging the validity of patents);
    • Nonetheless, a duopolistic patent - one with a dual claim construction - can still be a powerful tool. Even a narrow scope resulting from the initial action will have some leveraging authority because while issue preclusion may be available to a subsequent alleged infringer, there always remains a degree of uncertainty in litigation. See Competition and Intellectual Property Law and Policy in the Knowledge-Based Economy: Hearings Before the Fed. Trade Comm 'n & Dep't of Justice, Antitrust Div. 107-12 (July 11, 2002), available at http://www.ftc.gov/opp/intellect/020711trans.pdf (statement of Judge T.S. Ellis, III, U.S. District Court for the Eastern District of Virginia) (discussing the "pernicious effect" of the high costs of patent litigation and how these costs deter potential competitors of patentees from entering the market and challenging the validity of patents);
  • 374
    • 37749022783 scopus 로고    scopus 로고
    • see also Joshua D. Sarnoff, Abolishing the Doctrine of Equivalents and
    • see also Joshua D. Sarnoff, Abolishing the Doctrine of Equivalents and Claiming the Future After Festo, 19 BERKELEY TECH. L.J. 1157, 1200-01 (2004) ("Even when patents do not convey market power, patentees may exploit uncertainty regarding the scope of patents to deter competition by posing the threat of high-cost infringement litigation. A very large percentage of patents asserted in litigation are found to be invalid. Patentees thus routinely and improperly deter (or impose costly litigation on) their competitors. Litigation risks are increased (and competition is even more strongly deterred) by the threat of punitive treble damage awards and attorneys fees.").
  • 375
    • 37749037803 scopus 로고    scopus 로고
    • See generally John F. Duffy, On Improving the Legal Process of Claim Interpretation: Administrative Alternatives, 2 WASH. U.J.L. & POL'Y 109 (2000) (setting forth in detail the judicial authority for applying primary jurisdiction to claim construction and the implications of such a development).
    • See generally John F. Duffy, On Improving the Legal Process of Claim Interpretation: Administrative Alternatives, 2 WASH. U.J.L. & POL'Y 109 (2000) (setting forth in detail the judicial authority for applying primary jurisdiction to claim construction and the implications of such a development).
  • 376
    • 37749016407 scopus 로고    scopus 로고
    • Thus, circuit courts vested with new patent jurisdiction should not follow the approach adopted by the Eighth Circuit in Schinzing v. Mid-States Stainless, Inc., 415 F.3d 807 (8th Cir. 2005).
    • Thus, circuit courts vested with new patent jurisdiction should not follow the approach adopted by the Eighth Circuit in Schinzing v. Mid-States Stainless, Inc., 415 F.3d 807 (8th Cir. 2005).
  • 377
    • 37749010091 scopus 로고    scopus 로고
    • After the Supreme Court's decision in Holmes Group, Inc. v. Vornado Air Circulation Sys., Inc., 535 U.S. 826 (2002), restored appellate jurisdiction to the regional circuits where patent issues are presented solely by counterclaim, Schinzing held that the Eighth Circuit would adopt the Federal Circuit's precedent on substantive issues of patent law, 415 F.3d at 811, and thus prevented the Eighth Circuit from providing any peer dialogue with the Federal Circuit on matters of patent law and policy.
    • After the Supreme Court's decision in Holmes Group, Inc. v. Vornado Air Circulation Sys., Inc., 535 U.S. 826 (2002), restored appellate jurisdiction to the regional circuits where patent issues are presented solely by counterclaim, Schinzing held that the Eighth Circuit would "adopt the Federal Circuit's precedent on substantive issues of patent law," 415 F.3d at 811, and thus prevented the Eighth Circuit from providing any peer dialogue with the Federal Circuit on matters of patent law and policy.
  • 378
    • 37749034840 scopus 로고    scopus 로고
    • Rules of circuit precedent and stare decisis are judge-made rules subject to adjustment in the traditional common-law process. In instances where a new circuit court has been created by dividing an older circuit, the new court has typically adopted as circuit precedent the decisions of the old circuit as of the date of the split. See, e.g, Bonner v. City of Pritchard, 661 F.2d 1206, 1207 11th Cir. 1981, en banc, adopting as binding circuit law, in the first decision of the Eleventh Circuit, all Fifth Circuit decisions rendered prior to October 1, 1981, the date the new circuit court was created, In the past, such judge-made rules have been qualified and adjusted to smooth the transition of jurisdiction
    • Rules of circuit precedent and stare decisis are judge-made rules subject to adjustment in the traditional common-law process. In instances where a new circuit court has been created by dividing an older circuit, the new court has typically adopted as circuit precedent the decisions of the old circuit as of the date of the split. See, e.g., Bonner v. City of Pritchard, 661 F.2d 1206, 1207 (11th Cir. 1981) (en banc) (adopting as binding circuit law, in the first decision of the Eleventh Circuit, all Fifth Circuit decisions rendered prior to October 1, 1981, the date the new circuit court was created). In the past, such judge-made rules have been qualified and adjusted to smooth the transition of jurisdiction.
  • 379
    • 37749048064 scopus 로고    scopus 로고
    • See, e.g., AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1535-36 n.13 (11th Cir. 1986) (holding that a Fifth Circuit decision rendered twenty-three days after the creation of the Eleventh Circuit should nonetheless be afforded great weight because it is based entirely on Fifth Circuit precedents coming before the creation of, and thus binding on, the Eleventh Circuit). Our suggested transitional rule is a reasonable one that could be adopted through the common-law process, though it would probably be best if the authorizing statute itself addressed the issue.
    • See, e.g., AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1535-36 n.13 (11th Cir. 1986) (holding that a Fifth Circuit decision rendered twenty-three days after the creation of the Eleventh Circuit should nonetheless be afforded "great weight" because it is based entirely on Fifth Circuit precedents coming before the creation of, and thus binding on, the Eleventh Circuit). Our suggested transitional rule is a reasonable one that could be adopted through the common-law process, though it would probably be best if the authorizing statute itself addressed the issue.
  • 380
    • 37749040557 scopus 로고
    • See note 1, at, T]he United States has maintained a uniform, national patent system since
    • See Duffy, supra note 1, at 691 ("[T]he United States has maintained a uniform, national patent system since 1790.").
    • (1790) supra , pp. 691
    • Duffy1
  • 381
    • 37749046592 scopus 로고    scopus 로고
    • B. ZORINA KHAN, THE DEMOCRATIZATION OF INVENTION: PATENTS AND COPYRIGHTS IN AMERICAN ECONOMIC DEVELOPMENT, 1790-1920, at 69-70 (2005).
    • B. ZORINA KHAN, THE DEMOCRATIZATION OF INVENTION: PATENTS AND COPYRIGHTS IN AMERICAN ECONOMIC DEVELOPMENT, 1790-1920, at 69-70 (2005).
  • 382
    • 33749597338 scopus 로고    scopus 로고
    • Having a federalized, uniform patent system is something we take for granted today as a necessary feature in the national, indeed global, marketplace for innovations. For a discussion of the importance of national uniformity and patent law in the eighteenth century, see Craig Allen Nard & Andrew P. Morriss, Constitutionalizing Patents: From Venice to Philadelphia, 2 REV. L. & ECON. 223 (2006).
    • Having a federalized, uniform patent system is something we take for granted today as a necessary feature in the national, indeed global, marketplace for innovations. For a discussion of the importance of national uniformity and patent law in the eighteenth century, see Craig Allen Nard & Andrew P. Morriss, Constitutionalizing Patents: From Venice to Philadelphia, 2 REV. L. & ECON. 223 (2006).
  • 383
    • 37749002765 scopus 로고    scopus 로고
    • See also Duffy, supra note 1, at 691 (Accepting the value of diversity does not lead to the conclusion that each of the fifty states should administer its own patent system.).
    • See also Duffy, supra note 1, at 691 ("Accepting the value of diversity does not lead to the conclusion that each of the fifty states should administer its own patent system.").


* 이 정보는 Elsevier사의 SCOPUS DB에서 KISTI가 분석하여 추출한 것입니다.