Does practice make perfect? An examination of congress's proposed district court patent pilot program

UCLA Law Review

Volumn 55, Issue 3, 2008, Pages 745-782

  Olson, Nancy ^a  

^a UNIVERSITY OF CALIFORNIA   (United States)

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EID: 41849094807     PISSN: 00415650     EISSN: None     Source Type: Journal    
DOI: None     Document Type: Review

References (192)

1. Improving Federal Court Adjudication of Patent Cases: Hearing Before the Subcomm. on Courts, the Internet, and Intellectual Property of the H. Comm. on the Judiciary, 109th Cong. 1 (2005) [hereinafter Patent Hearing] (statement of Rep. Lamar Smith, Chairman, H. Subcomm. on Courts, the Internet, and Intellectual Property), available at http://judiciary.house.gov/ media/pdfs/printers/109th/23816.pdf (quoting a 1992 Advisory Commission on Patent Law Reform Report to the U.S. Secretary of Commerce).
2. Id. Patent cases currently make up about 1 percent of all cases filed, yet they represent about 10 percent of all complex cases.
3. Id. Complex cases are defined as those that require twenty or more days of trial.
4. Id.
5. Id. at 2 (statement of Rep. Howard Berman, Member, H. Subcomm. on Courts, the Internet, and Intellectual Property).
6. See, e.g., James F. Holderman, Judicial Patent Specialization: A View From the Trial Bench, 2002 U. ILL. J.L. TECH. & POL'Y 425;
7. John B. Pegram, Should There Be a U.S. Trial Court With a Specialization in Patent Litigation?, 82 J. PAT. & TRADEMARK OFF. SOC'Y 765 (2000);
8. Arti K. Rai, Specialized Trial Courts: Concentrating Expertise on Fact, 17 BERKELEY TECH. L.J. 877 (2002);
9. Gregory J. Wallace, Toward Certainty and Uniformity in Patent Infringement Cases After Festo and Markman: A Proposal for a Specialized Patent Trial Court With a Rule of Greater Deference, 77 S. CAL. L. REV. 1383 (2004).
10. Pegram, supra note 4, at 767-68.
11. ADMIN. OFFICE OF THE U.S. COURTS, U.S. DISTRICT COURT-JUDICIAL CASELOAD PROFILE (2006) [hereinafter AOC CASELOAD PROFILE], http://www.uscourts.gov/cgi-bin/cmsd2006.pl (select "ALL DISTRICT COURTS" from drop-down menu, then click the "Generate" button).
12. Pegram, supra note 4, at 770-71. The court was established under the Federal Court Improvements Act by merging the existing Court of Customs and Patent Appeals and the appellate division of the Court of Claims. Id. at 770. In addition to encompassing all patent appeals, the court hears matters on international trade, government claims, and taxes.
13. Id. at 770-71.
14. No new judgeships were required and the court stayed in the same building. Id. at 771.
15. Id. at 770.
16. Marcia Coyle, Critics Target Federal Circuit: Reversals Cast Patent Court in Harsh Light, NAT'L L.J., Oct. 16, 2006, at 1, 20 (discussing remarks made by Chief Judge Michel of the U.S. Court of Appeals for the Federal Circuit (CAFC)).
17. Id. (quoting remarks of Chief Judge Michel to the Federal Circuit Bar Association during the summer of 2006).
18. Id.
19. It is worth noting that of the twelve judges on the CAFC, only five of them have technical backgrounds (including Kimberly Moore, who was appointed last fall by George W. Bush to fill the twelfth seat on the CAFC). Eight of them (including Moore) have "patent experience." See Kimberly A. Moore, Are District Court Judges Equipped to Resolve Patent Cases?, 15 HARV. J.L. & TECH. 1, 18 nn.71-72, 26 n.97 (2001). The CAFC judges do, however, have significantly more experience with issues concerning claim construction than even the top district judges (as measured by the number of claim construction issues heard).
20. Id. at 20-22, 23 tbl.3 (figures as of April 2001 ). For further discussion on the data regarding the most experienced district court judges, see discussion infra Part III.C.
21. Prior art is the universe of sources including other patents or publications from anywhere in the world and things known, used or invented in the United States, which are used to analyze whether the subject matter claimed in a patent or patent application meets the statutory requirements required for a valid patent. 1 DONALD S. CHISUM, CHISUM ON PATENTS, G1-18 (2007).
22. 5A CHISUM, supra note 13, § 18.01.
23. According to one patent scholar, the CAFC stepped in and provided certainty. See Coyle, supra note 9, at 20 ('"Patents became stronger [and] a presumption of validity was more recognized.'" (quoting patent scholar Lee Petherbridge)).
24. See also The Claim Construction Project, http://www.claimconstruction. com, a production of the Federal Circuit Assessment Project, for empirical studies conducted by scholars on the CAFCs success and other related analysis.
25. Paul M. Janicke, On the Causes of Unpredictability of Federal Circuit Decisions in Patent Cases, 3 NW. J. TECH. & INTELL. PROP. 93, 93 (2005). This inconsistency is frequently attributed to CAFC interpanel philosophical differences regarding how to approach claim construction.
26. Id.
27. See infra text accompanying note 62 for another example of CAFC inconsistency.
28. See Moore, supra note 12, at 25-26 (showing a high reversal rate).
29. Pegram, supra note 4, at 774.
30. Id.
31. Id. at 775. Costs can also be kept down by using patent agents to handle the case instead of an expensive barrister that one would have to hire to go before the Patents Court.
32. See id.
33. Id.
34. Id. at 776-77.
35. Id.
36. Why You Should Choose Germany for Patent Litigation, MANAGING INTELL. PROP., July 1, 2005, at S43, available at http://www.westlaw.com.
37. Reinhardt Schuster, Germany: German Patent Disputes Newly Spiced, LEGAL WK. GLOBAL, Sept. 16, 2004,
38. reprinted in MONDAQ BUS. BRIEHNG, Dec. 2, 2004, http://www.mondaq.com/article.asp?articleid=29507&email_access=on (requires free registration).
39. The term "rocket docket" originally referred to the Eastern District of Virginia. See infra note 63 and accompanying text (explaining the practices that led to the origination of this term);
40. see also infra notes 64-65 and accompanying text (discussing newer "rocket dockets").
41. Erik Larson, Special IP Trial Courts a Bad Idea, Lawyers Say, IP LAW360, Feb. 1, 2006, http://www.iplaw360.com/secure/ViewArticle.aspx?id=5183 (subscription required). Besides the United Kingdom and Japan, Singapore, South Korea, Thailand, and Turkey have also set up completely specialized intellectual property (IP) trial courts.
42. Id.
43. Avern Cohn, Presentation at the Proceedings of the 2000 High Technology Summit Conference: A Federal Court Perspective on Extraterritorial Enforcement of Intellectual Property (2000), in RETHINKING INTERNATIONAL INTELLECTUAL PROPERTY 31, 32 (6 CASRIP Publ'n Series 2001), available at http://www.law.washington.edu/Casrip/Symposium/Number6/Cohn. pdf.
44. These benefits and costs are further analyzed in Part III in the context of the judicial specialization sought by the proposed patent pilot program. For a discussion of the arguments for and against setting up a specialized court, see The American Bar Association Central and East European Law Initiative (CEELI), Concept Paper on Specialized Courts (June 25, 1996), http://www.abanet.org/ceeli/publications/conceptpapers/speccourts/spc1c.html.
45. For a look back on whether the U.S. Congress has actually managed any reform of the patent system in the past, as well as a look forward at some possible neutral reform principles, see Donald S. Chisum, Reforming Patent Law Reform, 4 J. MARSHALL REV. INTELL. PROP. L 336 (2005).
46. The patent pilot program was originally introduced in 2006. SEE H.R. 5418, 109th Cong. (2006). It passed unanimously in the Judiciary Committee and passed in the U.S. House of Representatives in September 2006.
47. See id. A companion bill, S. 3923, was introduced in the last Congress by Senators Feinstein and Hatch. S. 3923, 109th Cong. (2006). The U.S. Senate bill did not restrict the program to districts with at least ten judgeships, and it did not require participation from at least three judges per court.
48. See id. The Senate bill languished at the end of the session. The bill was revived in the 110th Congress on January 4, 2007, and it was passed by a voice vote in the House on February 12, 2007.
49. See H.R. 34, 110th Cong. (2007). The approved bill was received by the Senate on February 13, 2007, and was referred to the Senate Committee on the Judiciary.
50. See 153 CONG. REC. S1901 (daily ed. Feb. 13, 2007). Senator Leahy, who is allegedly not fond of the bill, and Senator Feinstein, a supporter of the bill, are reportedly working on a companion bill.
51. See C. Erik Hawes, Fulbright & Jaworski, Remarks at Loyola Law School Symposium: Special IP Focus Series: Specialized Patent Courts (Apr. 27, 2007) (attended by this author).
52. See infra Part III.A for a detailed discussion of the current restrictions for getting in the program. According to lawyers following the matter, passage in the Senate is expected to be delayed, and changes are likely to be made to the text of the bill.
53. See Hawes, supra. There is currently a grassroots lawyers' movement in Texas out of concern for the possible exclusion of all Texas districts (the Northern District and Southern District reportedly would have been eligible had the bill passed during 2006; the Eastern District is cut out under the House version based on size).
54. See id.
55. 5A CHISUM, supra note 13, § 18.02.
56. 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff'g 111 F. Supp. 1535 (E.D. Pa. 1991).
57. 5A CHISUM, supra note 13, § 18.02. For a good discussion of what implications this has for CAFC review,
58. see Stuart Minor Benjamin & Arti K. Rai, Who's Afraid of the APA? What the Patent System Can Learn From Administrative Law, 95 GEO. L.J. 269, 301 (2007) (discussing how the CAFC turns facts into law in order to avoid deferential review altogether). For a perspective on what de novo review has done to claim construction affirmances, see Moore, supra note 12, at 29-30 (discussing the impact of the Cybor case and arguing that district court judges do not hear enough patent cases to develop expertise with the law).
59. See Benjamin & Rai, supra note 34, at 300-01 (mentioning the "no deference" approach).
60. 517 U.S. 370 (1996).
61. Id. at 372.
62. Id. at 384-85.
63. Id. at 379-91.
64. Id. at 388.
65. Id. at 390.
66. Kimberly A. Moore, Markman Eight Years Later: Is Claim Construction More Predictable?, 9 LEWIS & CLARK L. REV. 231, 245-46 (2005).
67. Markman I listed four sources for the judge to consult in making her determination: (1) the written description accompanying the patent claims, which is the most relevant source; (2) the documentation of the history of the patent as it went through the application; (3) standard English dictionaries; and finally, if all else fails, (4) expert testimony from experts "skilled in the art" that is at issue in the particular case. 5A CHISUM, supra note 13, § 18.03.
68. Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1361 (Fed. Cir. 2004). Rather than employing the familiar "reasonable person" standard, the judge must put herself in the shoes of an inventor who, at the time of the invention, is skilled in the particular art pertaining to the case. Id. This art could be anything from chemical engineering to gene splicing and everything in between.
69. See generally Moore, supra note 42 (discussing how Moore's empirical study reveals that Markman has created confusion, not guidance, in claim construction cases). Moore concluded that the confusion is getting worse, as evidenced by a rising reversal rate by the CAFC in recent years.
70. Id. Moore also discussed the various ways in which commentators have calculated the reversal rate by the CAFC and explained why these other methods are faulty in one way or another. Id. Although arguments may be raised as to why one of the other methods should be favored over Moore's, her approach is accepted for the purposes of this Comment because the congressional sponsors of the pilot program seem to have adopted her figures.
71. See 153 CONG. REC. H1430, 1431 (daily ed. Feb. 12, 2007) (statement of Rep. Berman). Although various studies have calculated the reversal rate by the CAFC to be between 25 and 50 percent, Moore, supra note 42, at 234, it is not necessary to debate whether Moore's numbers are too low, because 34.5 percent clearly has been enough to get Congress to respond to the growing criticism surrounding the excessive claim construction reversal rate,
72. see Patent Hearing, supra note 1, at 4 (statement of Rep. Darrell Issa, Member, H. Subcomm. on Courts, Internet, and Intellectual Property) (stating that the reversal rate is at least 35 percent).
73. See Patent Hearing, supra note 1, at 4 (statement of Rep. Darrell Issa) (discussing the likelihood that the reversal rate will not get any better unless Congress takes action).
74. Id.
75. For a complete history of H.R. 34, 110th Cong. (2007), including prior incarnations, see supra note 31.
76. 153 CONG. REC. H1430, 1431 (daily ed. Feb. 12, 2007) (statement of Rep. Berman).
77. See H.R. 34 (listing the conditions).
78. Id. §(a)(1)(B), (a)(1)(D)(3).
79. 153 CONG. REC. H1430, 1431 (statement of Rep. Berman). However, parties still have freedom over whether they file in a court that is participating in the program or a court that is not.
80. See HR 34 § (f) (discussing authorization of training and clerkships); H.R. REP. No. 109-673, at 6-7 (2006), available at http://judiciary.house.gov/media/pdfs/109-673.pdf (an estimate and comparison prepared by the Director of the Congressional Budget Office is attached with respect to H.R. 5418).
81. H.R. 34 § (e)(1)(A)-(B).
82. id. §(e)(1)(C)(i)-(ii).
83. Id. §(e)(1)(D)-(E).
84. 153 CONG. REC. H1430, 1431 (statement of Rep. Berman).
85. See VAE Nortrak N. Am., Inc. v. Progress Rail Serv. Corp., 459 F. Supp. 2d 1142, 1142 (N.D. Ala. 2006) (Acker, J.) (lamenting about not having the pilot program passed sooner because had it been enacted, not only would his court have chosen not to participate, but he also would have expressly requested that the case be reassigned to an opt-in judge in one of the pilot courts).
86. See supra p. 756 tbl.1 (steps 1a-1d).
87. Although the courts will be selected based on the volume in the "prior calendar year," the most current data from the Administrative Office of the U.S. Courts (AOC) available as of the writing of this Comment are for the twelve-month period ending September 30, 2006. ADMIN. OFFICE OF THE U.S. COURTS, 2006 JUDICIAL BUSINESS OF THE UNITED STATES COURTS 83 tbl.S-23 (2006), http://uscourts.gov/judbus2006/tables/s23.pdf ("Civil Cases, Filed, Terminated, and Pending, by Nature of Suit and District"). For illustrative purposes, this data will be used to identify the current top fifteen courts. However, it should be noted that this exact data set would not be used even if the program were enacted during 2007, because the bill calls for using data from the prior calendar year. For example, if the bill is enacted on November 1, 2007, the data that will be used span from January 1, 2006, to December 31, 2006.
88. According to statistics obtained from AOC CASELOAD PROFILE, supra note 6 (select the desired district from drop-down menu, then click the "Generate" button).
89. The District of Colorado is currently only a few cases away from being the fifteenth court by volume, possibly displacing the Southern District of California by the time this program is enacted. See ADMIN. OFFICE OF THE U.S. COURTS, supra note 60, at 83 tbl.S-23.
90. See T.S. Ellis III, Presentation at the Proceedings of the 1999 Summit Conference on Intellectual Property: Quicker and Less Expensive Enforcement of Patents: United States Courts (1999), in STREAMLINING INTERNATIONAL INTELLECTUAL PROPERTY 11, 12-14 (5 CASRIP Publ'n Series 2000), available at http://www.law.washington.edu/ casrip/symposium/Number5/pub5atcl2.pdf. Judge Ellis explained the three main ingredients to a rocket docket: a fixed and immutable trial date that is set early on in the case; a discipline accepted as part of the local legal culture among both judges (quickly handling cases) and litigants (understanding dates cannot be moved so they will not even ask); and having a master docket.
91. Id. at 12-13. A master docket is one in which judges do not have individual dockets.
92. Id. at 13. Cases can be reassigned for trial if a particular judge is out of town or another trial goes longer; everyone who is available will be assigned duties as they arise.
93. Id. The Eastern District of Virginia is the only district in the country that utilizes this system, and though all judges participate, it is completely optional for the judges.
94. Id. All cases go from birth to death in six to eight months regardless of the nature or complexity of the case.
95. Id. at 14. Unlike most other cases before the court, patent cases have the same judge preside over the whole case.
96. Id. at 17-18. This rocket docket has been in place since the 1950s, largely as a result of the efforts of Judge Bryan, who is now a senior district judge on the court.
97. Id. at 13-14.
98. See Gina Carter, "Rocket Docket" Speeds Patent Infringement Suits, WIS. TECH. NETWORK, Mar. 14, 2007, http://wistechnology.com/printarticle.php?id=3771.
99. These judges include Judge T.S. Ellis III, Eastern District of Virginia; Judge T. John Ward, Eastern District of Texas; and Judges John Shabaz and Barbara Crabb, Western District of Wisconsin. See Ellis, supra note 63, at 15-20;
100. Tresa Baldas, IP Hotbed - For Now, NAT'L L.J., Dec. 20-27, 2004, at 26, 26, available at http://www.law.com/jsp/law/ LawArticleFriendly.jsp?id=1103549728998;
101. Carter, supra note 64.
102. For the twelve-month period ending September 30, 2006, filed patent cases made up 0.0087 percent of the total docket and 1.1 percent of the civil docket. For total patent cases filed, see ADMIN. OFFICE OF THE U.S. COURTS, supra note 60. For total cases filed (civil and criminal),
103. see ADMIN. OFFICE OF THE U.S. COURTS, 2006 JUDICIAL FACTS AND FIGURES, at tbl.6.1 (2006), http://www.uscourts.gov/judicialfactsfigures/2006/Table601.pdf ("Total Civil & Criminal Cases Filed, Terminated, Pending (Includes Transfers)"). For total civil cases filed,
104. see id. at tbl.4.1, http://www.uscourts.gov/judicialfactsfigures/ 2006/Table401.pdf ("U.S. District Courts. Civil Cases Filed, Terminated, Pending").
105. Legislation Update: Bills Focus on Security, Cameras and Patents, THIRD BRANCH, Apr. 2007, at 4, 4, available at http://www.uscourts.gov/ttb/2007-04/legislation/index.html. Note that the Judicial Conference has not formally taken a position on the current legislation proposing the patent pilot program.
106. See supra Subpart I.B.
107. See supra note 12 and accompanying text (discussing how CAFC judges do not all have technical or patent backgrounds).
108. But see Moore, supra note 12, at 16-25 (discussing claim construction by the CAFC). Moore gave an example of two different cases on the exact same technology in which the panel in the later case did not follow the construction of the panel in the earlier case.
109. Id. She did, however, present empirical data through 2001 indicating that the panels of the CAFC have very little disagreement among themselves - about 3 percent.
110. Id. Frequency in handling claim scope analysis seems to result in higher levels of accuracy in reviewing lower court decisions. Id.
111. See Ellis, supra note 63, at 13-14.
112. Id. at 13.
113. According to a veteran patent attorney, this situation could be similar to when a single juror asserts he knows something about the technology at hand and subsequently ends up influencing the entire verdict. Robert W. Dickerson, Jones Day, Remarks at Loyola Law School Symposium: Special IP Focus Series: Specialized Patent Courts (Apr. 27, 2007) (attended by this author).
114. A relevant analogy can be found in Pennsylvania, where the government has signaled a policy change to litigants: It plans to develop a commercial court to compete with the Court of Chancery in Delaware. Jennifer Widner, Are Specialized Courts the Right Approach to Effective Adjudication of Commercial Disputes in Developing Areas? (Feb. 2000) (unpublished manuscript), http://www.worldbank.org/wdr/2001/wkshppapers/berlin/widner.pdf. Unless Pennsylvania makes the playing field more attractive to litigants, and in turn those litigants voluntarily begin to file more cases in the Pennsylvania court, the new commercial court will not have the chance to gain specialization in this area.
115. According to Rep. Darrell Issa, the bill "is supported by software, hardware, tech and electronics companies, pharmaceutical companies, biotech companies, district court judges, the American Intellectual Property Law Association, and the Intellectual Property Owners Association among others." 153 CONG. REC. H1430, 1433 (daily ed. Feb. 12, 2007) (statement of Rep. Issa).
116. In recent testimony before Congress, Moore discussed the phenomenon of this consolidation and how recent shifts in patent filings revealed that "forum shopping is alive and well" at the district courts level. Patent Hearing, supra note 1, at 6 (statement of Kimberly A. Moore).
117. Moore plans to articulate this information and accompanying statistics in greater detail in an upcoming paper called "Patent Lemmings." Id.
118. Carter, supra note 64.
119. Id. The corresponding nationwide figures are 35 percent and 61 percent, respectively.
120. Id.
121. See supra note 63.
122. Timothy S. Ellis III, Remarks at the Seventh National Advanced Forum on Litigation Patent Disputes (Feb. 5, 2001), cited in Dana D. McDaniel, Patent Litigation on the Rocket Docket After Markman v. Westview Instruments, Inc., VA. LAW., Apr. 2002, at 20, available at http://www.vsb.org/publications/valawyer/apr02/mcdaniel.pdf.
123. Id.
124. Dabney J. Carr, IV & Robert A. Angle, Traps for the Unwary: Litigating Intellectual Property Cases in the Rocket Docket, MEALEY'S LITIG. REP.: INTELL. PROP., Apr. 7, 2003, at 1, available at http://www. troutmansanders.com/mc/art-carr03.pdf.
125. Id.
126. Susan Decker, Texas District Is Heaven for Patent Holders Under Siege, SEATTLE TIMES, May 1, 2006, at C3, available at http://seattletimes.nwsource.com/html/businesstechnology/ 2002963706_btpatentheaven01.html?syndication=rss.
127. Id.;
128. see also Baldas, supra note 65, at 26.
129. Judge Ward recently had to shift some of the patent workload to two other judges; he now handles 60 percent, a second judge takes 35 percent, and a third judge 5 percent. Baldas, supra note 65, at 26.
130. Lawyers say that Ward's strongest trait may be that he actually likes patent cases; one attorney claimed that he started using the court when the Eastern District of Virginia began taking too long. Id. Some fear the Eastern District of Texas is becoming similarly bogged down, but lawyers seem to be saying that it is only a matter of time before they start searching for the next "hot new venues." Id.
131. This would be similar to what England has experienced with its two patent courts as well as what Europe in general has experienced with countries such as Germany and the Netherlands touting their benefits to attract patent litigants. See supra Part I.B. Recently, a pair of decisions in Europe effectively ended the availability of cross-border enforcement as a remedy for infringement. A plaintiff now must choose which country to file in first. This has made the initial decision of where to file increasingly more important.
132. See Beth Z. Shaw, Court Rules Against Cross-Border Enforcement of "European" Patent Rights, LEGAL OPINION LETTER, Oct. 6, 2006, at 1, http://www.wlf.org/upload/100606shaw.pdf. While U.S. litigants are not dealing with selecting a court among cross-border options, sophisticated patent litigants are clearly used to looking at subtleties when determining where they have the best chance at success.
133. See supra Part III.B. 1.
134. Widner, supra note 73, at 4 n.7.
135. Id.
136. See Mark A. Lemley, Ten Things to Do About Patent Holdup of Standards (and One Not To), 48 B.C. L. REV. 149, 166 (2007). Although courts do not calculate damages by completely taking into account contributions people other than the patent owner have made to a product, they may start to do so. The Patent Reform Act of 2005, H.R. 2795, 109th Cong. (2005), takes steps in this direction by requiring a patent owner to demonstrate that "the royalty is attributable to the patentee's inventive contribution, as distinguished from all the other aspects of the product being sold."
137. Id. § 6(1)(B).
138. See supra Part II.B.
139. According to one veteran patent attorney, when he asked a senior judge and a newly appointed judge in the Central District of California, neither had even heard of the program. Dickerson, supra note 72.
140. The American Bar Association (ABA) argued that a national appellate court would lose the benefit of divergent viewpoints among the regional circuits. See Pauline Newman, Foreword: The Federal Circuit in Perspective, 54 AM. U. L. REV. 821, 823 (2005), available at http://www.wcl.american.edu/journal/lawrev/54/newman.pdf.
141. See Coyle, supra note 9, at 21 (reporting Chief Judge Michel's rejection of suggestions that the CAFC is insular).
142. This intracircuit diversity of ideas and views is also blamed for the interpanel unpredictability and philosophical differences of the CAFC See Janicke, supra note 16, at 93.
143. Even after a retreat from the original Patent Reform Act of 2005, in which provisions relating to injunctive relief, continuation practice, and second-window postgrant opposition procedures were eliminated and the damage apportionment provision was attenuated, the biotechnology and pharmaceutical industries still strongly opposed the bill. See Christopher M. Holman, Biotechnology's Prescription for Patent Reform, 5 J. MARSHALL REV. INTELL. PROP. L. 318, 322 (2006).
144. See Press Release, ACT Online, Issa/Schiff Patent Bill Should Help Patent Courts Get It Right the First Time (May 19, 2006), available at http://www.actonline.org/press-releases/060513issapatentbill.html (providing analysis that the bill will reduce costs for small firms and stimulate investment in innovation);
145. Letter from Cal. Healthcare Inst. to Rep. Darrell Issa (June 5, 2006), available at http://www.chi.org/uploadedFiles/News/News_Items/ hr%205418%20-%20patent%20pilot%20project%20-%20letrer.pdf (strongly supporting the program);
146. supra note 74 (citing wide support of the pilot program).
147. But see Larson, supra note 27. Detractors say that specialty IP courts would break the balance of having one set of laws and one set of standards for all cases.
148. Id. Patent lawyers are skeptical of this type of proposal because they do not like to be considered outside of the mainstream.
149. Id. A small group of judges hearing all patent cases would be '"a pretty inbred system, which would make it difficult to get new ideas... injected into the system.'"
150. Id. (quoting Steven J. Goldstein, chairman of the Intellectual Property Department at Frost Brown Todd LLC). The delay in patent cases can mean that attorneys are doing their jobs the best way possible; emphasis should be placed on patent attorneys as teachers to the judges and juries.
151. Id.
152. See supra p. 759 tbl.2. The top fifteen district courts in the United States handled approximately 62 percent of all patent cases filed for the period ending September 30, 2006.
153. See id.
154. The CAFC issues three types of rulings on all patent cases. Precedential opinions are citable as precedent and represent only a fraction of the decisions appealed from the trial courts. Nonprecedential opinions, until recently, were not citable as precedent. When issuing this type of opinion, the court basically affirms that the case does not add significantly to the body of law. FED. CLR. R. 47.6 (b) ("Opinion and Order of the Court; Nonprecedential Opinion or Order"). This practice recently changed with the implementation of Rule 32.1(a) of the Federal Rules of Appellate Procedure, which states that parties cannot be prohibited or restricted from citing nonprecedential dispositions issued after January 1, 2007.
155. See FED. R. APP. P. 32.1(a). This change is likely to lead to an increase in the third type of rulings, the Rule 36 summary affirmance.
156. See Letter from Chief Judge Haldane Robert Mayer to Peter G. McCabe, Sec'y, Comm. on Rules of Practice and Procedure, Proposed Changes to the Federal Rules of Appellate Procedure (Jan. 6, 2004), available at http://www.secretjustice.org/pdf_files/Comments/03-AP-086.pdf.
157. FED. CIR. R. 36 ("Entry of Judgment-Judgment of Affirmance Without Opinion"). There are no summary reversals. According to Chief Judge Michel of the CAFC, Rule 36 summary affirmances are used most frequently for pro se cases that are brought as a matter of "wishful thinking." Proceedings of the Sixteenth Annual Judicial Conference of the United States Court of Appeals for the Federal Circuit, 193 F.R.D. 263, 300 (1999) (remarks of Chief Judge Michel). Controversy does exist, however, regarding whether this is truly the only circumstance in which Rule 36 affirmances are being used.
158. See Harold C Wegner, The Non-Precedential Claim Construction Black Hole 12-14 (Aug. 14, 2006) (unpublished manuscript), http://www.patenthawk.com/ blog_docs/060814_BlackHoleClaimConstruction_Wegner.pdf.
159. For a good explanation of how this exclusion can affect data on claim construction reversal rates, see Moore, supra note 42, at 234-36. In Moore's study, the reversal rate was shown to be 40.8 percent when Rule 36 summary affirmances were excluded (they accounted for 15.5 percent of claim construction terms).
160. Id. at 236. When the affirmances were included, the reversal rate dropped to 34.5 percent.
161. Id.
162. Id. at 237. Because the CAFC has recently been reversing more claim construction issues, there have been fewer Rule 36 summary affirmances. But
163. see Wegner, supra note 98, at 8-9, for an explanation of why this pattern is likely to change.
164. When selecting CAFC cases to review, the following search terms were entered using the Federal Circuit - U.S. Court of Appeals Cases database on LexisNexis (File Name = CAFC): patent and claim! /s interp! or constru! and date(geq (1/1/2002) and leq (12/31/2006)). After generating a list of 693 cases, the cases involving appeals regarding claim construction (almost always among other appealed substantive patent issues) were isolated. Next, the outcome and relevant prior history data, including district judge and court, were recorded. This analysis generated a universe of 248 district court judges. In order to get the number of patent cases heard by each judge, the following search terms were entered using the Federal Court Cases-Combined database in LexisNexis (File Name = COURTS): OPINIONBY (FIRST w/2 LAST) and patent and claim! /s interp! or constru! and date(geq (1/1/2002) and leq (12/31/2006)). The terms "FIRST" and "LAST" were replaced with each individual judge's first and last name. The search results were reviewed for only the patent opinions and orders that involved claim construction.
165. According to Harold Wegner, former director of the Intellectual Property Law Program and Professor of Law, George Washington University Law School and Partner, Foley & Lardner LLP, roughly one third of all district court dispositions has an electronically available option. Wegner, supra note 98, at 24.
166. This does not take into account individual claims per case but only the total number of patent cases. Therefore, a judge who heard only one patent case but construed ten claims would be compared in the same category as another judge who heard only one patent case and construed five claims. The reason for this categorization is that the pilot program does not seek to distinguish certain types of patent cases and assign them to certain courts based on the appearance of difficulty or average number of claims (for example, if technology X patents are known to require the most claim construction, then only pilot courts 1 and 2 will hear them). Rather, the pilot program seeks to improve patent adjudication overall. This study is not meant to be exhaustive of the myriad ways this data could be expanded on and further analyzed. The current limitations were dictated by time and cost constraints. Additionally, it should be noted that individual judicial practices (such as more frequent publication), combined with individual case specifics (the possibility of settlement) and variations in online availability, will impact the consistency of the data recorded under the category of number of patent cases.
167. If a district court judge was never appealed during the relevant timeframe or if a district court judge was appealed but the appeal was summarily affirmed or was not made available electronically, such a judge would not be captured by this study.
168. Tables 3A, 3B, and 3C, accounting for the top fifteen judges, cover the period from January 1, 2002, through December 31, 2006. Table 3D, presented later in this Part, tracks the same time period.
169. The numbers for percentage of cases appealed regarding claim construction do not capture soft data such as a judge's reputation. For example, if a judge has never presided over a trial resulting in a defense verdict (or, likewise, the judge has never handed down a defense verdict during a bench trial), this sort of reputation may push defendants to settle more often. This behavior would result in fewer cases appealed under consideration in the overall data. For certain judges, the percentage of cases appealed will not be solely reflective of their actual talent at performing claim construction, but perhaps reflective of other forces not captured by the data.
170. At a recent ABA-sponsored conference, Judge Linn of the CAFC weighed in on this suggestion: "There is a big difference, when a case comes to us on appeal from a court that has experience in these matters, and a case that comes to us when a judge has little or no experience. I don't fault the judge, [but] I think that the system has to be adjusted somehow. I don't know quite what the answer is, but I think that it's a very important area."
171. Neil E. Graham, Panel Discusses Role of Supreme Court, Economics, in the Development of Patent Law, 71 PATENT TRADEMARK & COPYRIGHT J., Nov. 4, 2005, http://ipcenter.bna.com/pic2/ip.nsf/id/ BNAP-6HSKJ?OpenDocument (quoting Judge Linn's remarks at the October 27 seminar sponsored by the American Intellectual Property Law Association in Washington, D.C.).
172. A study conducted by LegalMetric attempted to test whether experience helped affirmance rates. The study showed that judges with at least one hundred patent cases have an affirmance rate on appeal that is identical to the affirmance rate for all judges in patent cases, which is 60 percent (sample size: > 1400 appeals). Press Release, LegalMetric LLC, LegalMetric Finds Judges' Experience Does Not Help in Patent Cases (Aug. 22, 2006), available at http://www.eworldwire.com/pressreleases/15326. Experience did not point to predictability. However, it should be noted that this study appears to have looked at overall patent case outcomes, not claim construction issues specifically. The exact definition of "patent case" was not provided. The study did show slightly higher affirmance rates for judges with a B.S. or M.S. degree, and even higher rates for judges graduating from an Ivy League school.
173. See id.
174. See Moore, supra note 42, at 233 (explaining the study on which Congress based its figures);
175. see also text accompanying note 42.
176. See Medlmmune, Inc. v. Genentech, Inc., No. 05-608, slip op. at 7-9 (U.S. Jan. 9, 2007) (rejecting the CAFCs interpretation of jurisdictional requirements under the Declaratory Judgment Act and holding that jurisdiction can be found where the controversy is "definite and concrete" in patent cases as in all other cases); eBay Inc. v. MercExchange, L.L.C., No. 05-130, slip op. at 2-4 (U.S. May 15, 2006) (declining to replace traditional equitable principles with a rule that allows for automatic injunctions in patent cases). These decisions may indicate that the Court would like to stay away from special treatment for patent cases while Congress seems to be pushing for it.
177. Patent Hearing, supra note 1, at 27 (statement of Chris J. Katopis, Counsel, Drinker, Biddle & Reath, LLP). Katopis posited that maybe the cases are "too close to call" and that appeals are necessary to justify the inventive rights awarded.
178. Id.;
179. see also id. at 211 (letter from the Honorable T.S. Ellis III to the Honorable Lamar Smith in the appendix of material submitted for the hearing record) (offering a suggestion for narrowing the CAFC's scope of review from de novo to a more deferential standard).
180. See Coyle, supra note 9, at 20. From 1990 to 2001, certiorari was granted eight times, eight cases were heard, and the CAFC was upheld half of the time.
181. Id. In contrast, from 2002 to present, certiorari was granted nine times, seven cases were heard, and the CAFC was not upheld on a single case.
182. Id. Disquiet with the CAFC and patent reform on the radar screen are likely to cause the Supreme Court to keep an eye on the CAFC
183. See id. (reporting the views of patent scholar Timothy R. Holbrook).
184. Patent Hearing, supra note 1, at 57 (testimony of the Honorable T.S. Ellis III, United States District Judge, Eastern District of Virginia). Judge Ellis stated that Markman reversal rates were down in the twenties by 1998, and it is only recently that they have crept up again.
185. Id. at 50.
186. Judge Ellis thinks that the CAFC is still getting organized about the rules of claim construction and how to resolve disputes over using dictionaries (note that this comment was made before the decision in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), in which the CAFC moved away from extrinsic evidence offered by dictionaries to a more specification-focused inquiry in claim construction).
187. Patent Hearing, supra note 1, at 51. Judge Ellis posited that the reason for the high reversal rate is the expansive claim language and the changing definitions.
188. Id. at 57. The U.S. Patent and Trademark Office (PTO) should require clearer language and lexicography from applicants. It is important to remember the reversal rate for all areas of law is around 35 percent. Judge Ward from the Eastern District of Texas, who is also skeptical of the pilot program, recently stated, '"I really think there are a lot of skills trial judges have that are very helpful in the overall disposition of a case that really doesn't involve any patent expertise, such as how to manage a docket.'"
189. Graham, supra note 107 (quoting Judge Ward).
190. See Moore, supra note 42, at 247 (arguing that the fault for high reversal rates lies with the CAFC because they are not providing sufficient guidance and clear canons of claim construction).
191. But see Moore, supra note 12, at 29 (citing KIMBERLY PACE MOORE ET AL., PATENT LITIGATION & STRATEGY 206-13 (W. Group, Am. Casebook Series 1999) (identifying and discussing nine canons of claim construction) ). In her earlier article, Moore stated that since Markman, the CAFC has in fact created many "canons of claim construction," which should serve as tools for claim interpretation for the district judge.
192. Id.