The federal circuit in the shadow of the solicitor general

George Washington Law Review

Volumn 78, Issue 3, 2010, Pages 518-552

  Duffy, John F ^a  

^a GEORGE WASHINGTON UNIVERSITY   (United States)

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EID: 77953072833     PISSN: 00168076     EISSN: None     Source Type: Journal    
DOI: None     Document Type: Review

References (237)

1. See Federal Courts Improvement Act of 1982, Pub. L. No. 97-164, 96 Stat. 25.
2. Thus, Daniel Meador, one of the architects of the legislation creating the Federal Circuit, praised the limitations on the Federal Circuit's subject-matter jurisdiction as a way to breed expertise, reasoning that the limited jurisdiction "improves decision making because each judge can achieve a higher level of expertise on the subjects with which he is regularly dealing." Daniel J. Meador, Reducing Court Costs and Delay: An Appellate Court Dilemma and a Solution Through Subject Matter Organization, 16 U. MICH. J.L. REFORM 471, 482 (1983);
3. see also Rochelle Cooper Dreyfuss, The Federal Circuit- A Case Study in Specialized Courts, 64 N.Y.U. L. REV. 1, 7-8 (1989) [hereinafter Dreyfuss, The Federal Circuit] (noting that the proponents of the legislation creating the Federal Circuit had wanted to achieve "precision and accuracy" in patent law to a degree that had not been achieved through adjudication in the regional circuits);
4. id at 7 n.47 (quoting congressional testimony of Chief Judge Markey, who explained the benefits of expertise by hypothesizing "[i]f I am doing brain surgery every day, day in and day out, chances are very good that I will do your brain surgery much quicker, or a number of them, than someone who does brain surgery once every couple of years");
5. Rochelle Cooper Dreyfuss, In Search of Institutional Identity: The Federal Circuit Comes of Age, 23 BERKELEY TECH. L.J. 787, 788 (2008) (noting that at the time of the Federal Circuit's creation "[i]t was thought that if patent appeals were channeled to a single court, the federal docket would be more manageable and the quality of decisions in patent disputes would improve").
6. See Dreyfuss, The Federal Circuit, supra note 2, at 66.
7. See generally John M. Golden, The Supreme Court as "Prime Percolator": A Prescription for Appellate Review of Questions in Patent Law, 56 UCLA L. REV. 657 (2009);
8. Craig Allen Nard & John F. Duffy, Rethinking Patent Law's Uniformity Principle, 101 Nw. U. L. REV. 1619, 1623-25 (2007) (arguing that, rather than seeking to centralize patent appellate jurisdiction in a single court, Congress should have tried to achieve an optimal amount of centralization, which likely would require a small number of courts to hear patent appeals);
9. S. Jay Plager & Lynne E. Pettigrew, Rethinking Patent Law's Uniformity Principle: A Response to Nard and Duffy, 101 Nw. U. L. REV. 1735 (2007);
10. Arti K. Rai, Specialized Trial Courts: Concentrating Expertise on Fact, 17 BERKELEY TECH. L.J. 877 (2002) (arguing that much of the difficulty in resolving patent disputes is due not to complex law, but to the complex evidentiary and factual issues and that a specialized trial-level court may be a more effective solution than a centralized appellate court).
11. See Rex E. Lee, Lawyering for the Government: Politics, Polemics & Principle, 47 OHIO ST. L.J. 595, 597-99 (1986);
12. Wade H. McCree, Jr., The Solicitor General and His Client, 59 WASH. U. L.Q. 337, 338 (1981) (stating that the "Solicitor General... is responsible for conducting and supervising all aspects of government litigation in the Supreme Court of the United States").
13. See Thomas Brennan, Lee Epstein & Nancy Staudt, The Political Economy of Judging, 93 MINN. L. REV. 1503, 1510-11 (2009) (describing how the Justices have "such a high level of faith in the Solicitor General's ability to present informed and balanced legal arguments that they sometimes invite him to present views in cases in which the United States is not even involved");
14. Richard J. Lazarus, Advocacy Matters Before and Within the Supreme Court Transforming the Court by Transforming the Bar, 96 GEO. L.J. 1487, 1493-97 (2008) (noting that the Court has "almost always grant[ed] the Solicitor General permission to participate in oral argument as amicus curiae, yet rarely granted] similar permission to any other amicus");
15. Lee, supra note 5, at 596-97 (noting that the Solicitor General's Office is regularly involved, either as a party or as an amicus, in more than fifty percent of the Supreme Court's docket).
16. See McCree, supra note 5, at 339-41 (relating the Solicitor General's role in handling a wide range of substantive areas of the law, as well as making determinations as to which cases require additional appellate review);
17. Kristen A. Norman-Major, The Solicitor General: Executive Policy Agendas and the Court, 57 ALB. L. REV. 1081, 1083 (1994) (noting that the Solicitor General's responsibility to the Supreme Court includes serving as a filter to "screen out undeserving litigation");
18. Seth Waxman, Foreword: Does the Solicitor General Matter?, 53 STAN. L. REV. 1115, 1117-18 (2001) (relating the ability of the Solicitor General's Office to influence the development of the Supreme Court's jurisprudence).
19. John F. Duffy, The Festo Decision and the Return of the Supreme Court to the Bar of Patents, 2002 SUP. CT. REV. 273, 286-93 (2002).
20. Id. at 286-91 (noting that the Supreme Court "was the national appellate court for all patent cases" due to a desire to establish national uniformity in patent law).
21. See Figure 1 (showing Supreme Court patent cases per Term from 1810 to 2008).
22. Duffy, supra note 8, at 293.
23. See Figure 1; Duffy, supra note 8, at 294-96 (discussing reasons for the abrupt decrease in the number of patent cases heard by the Supreme Court in the latter half of the twentieth century).
24. See Duffy, supra note 8, at 294; Figure 2 (graph of Supreme Court patent cases per Term since 1950).
25. These cases were: Dennison Manufacturing Co. v. Panduit Corp., 475 U.S. 809 (1986) (per curiam);
26. Christianson v. Colt Industries Operating Corp., 486 U.S. 800 (1988);
27. Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (1989);
28. Eli Lilly & Co. v. Medtronic, Inc., 496 U.S. 661 (1990);
29. and Cardinal Chemical Co. v. Morton International Inc., 508 U.S. 83 (1993).
30. See Figure 8, infra p. 539 (providing a list of Supreme Court patent cases since the creation of the Federal Circuit).
31. See Dennison, 475 U.S. 809.
32. As described by the Supreme Court, the issue in the case was whether [§ 202 of the Drug Price and Patent Term Restoration Act of 1984, 35 U.S.C. § 271(e)(1) (1982 & Supp. V 1988)]
33. renders activities that would otherwise constitute patent infringement noninfringing if they are undertaken for the purpose of developing and submitting to the Food and Drug Administration (FDA) information necessary to obtain marketing approval for a medical device under § 515 of the Federal Food, Drug, and Cosmetic Act[, 21 U.S.C. I 360e (1982)].
34. Eli Lilly & Co., 496 U.S. at 663-64.
35. In Christianson, the Supreme Court resolved the question of whether the Federal Circuit had jurisdiction to hear the petitioner's antitrust claims against his former employer where the case involved patent law issues only "obliquely." Christianson, 486 U.S. at 806. As the antitrust claims in the case did not "aris[e] under" a federal patent statute, the Supreme Court held that the regional circuits, not the Federal Circuit, held jurisdiction over the case. Id. at 809, 819.
36. Bonito Boats, Inc. v. Thunder Craft Boats, Inc. dealt with whether the U.S. Constitution's Supremacy Clause required that federal patent laws preempt Florida state statutes prohibiting the use of direct-molding processes to duplicate unpatented boat hulls. 489 U.S. at 144, 167-68.
37. Finally, in Cardinal Chemical Co. v. Morton International Inc., the Supreme Court held that the Federal Circuit should ordinarily not vacate a district court's holding of patent invalidity even though the circuit court determines that the patent was not infringed in that particular case.
38. See 508 U.S. at 85. Rather, the court should normally review the district court's judgment of invalidity. While the Court's holding involved considerations of patent policy, it was ultimately directed to the proper appellate procedure to be followed by the Federal Circuit, not to an issue of substantive patent law.
39. See Gregory A. Castanias, Lawrence D. Rosenberg, Michael S. Fried & Todd R. Geremia, Survey of the Federal Circuit's Patent Law Decisions in 2006: A New Chapter in the Ongoing Dialogue with the Supreme Court, 56 AM. U. L. REV. 793, 802-07 (2007) (recognizing that, for the Supreme Court's interest in patent cases, "[t]he tide began to turn in 1995");
40. Hon. Timothy B. Dyk, Foreword- Does the Supreme Court Still Matter?, 57 AM. U. L. REV. 763, 764-65 (2008) (noting that the Court increased its pace in reviewing patent-related matters "a bit" during the second decade of the Federal Circuit's existence but asserting that the pace "substantially accelerated in the past five years and particularly in the last three").
41. American Airlines, Inc. v. Lockwood, 515 U.S. 1121 (1995) (No. 94-1660) (order granting certiorari).
42. See In re Lockwood, 50 F.3d 966, 980 (Fed. Or. 1995) (discussing whether the patentee has a right to a jury trial in a determination of patent validity).
43. American Airlines, Inc. v. Lockwood, 515 U.S. 1182 (1995) (No. 94-1660) (vacating Federal Circuit opinion and remanding the case for trial).
44. Duffy, supra note 8, at 297-99; Dyk, supra note 18, at 764-65;
45. see also 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).
46. The cases in the Supreme Court's 1995-1998 Terms included Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996);
47. Wamer-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997);
48. Pfaff v. Wells Electronics, Inc., 525 U.S. 55 (1998);
49. Dickinson v. Zurko, 527 U.S. 150 (1999);
50. Florida Prepaid Postsecondary Education Expense Board v. College Savings Bank, 527 U.S. 627 (1999).
51. See Warner-Jenkinson Co., 520 U.S. at 21.
52. See Markman, 517 U.S. at 372 ("The question here is whether the interpretation of a socalled patent claim, the portion of the patent document that defines the scope of the patentee's rights, is a matter of law reserved entirely for the court, or subject to a Seventh Amendment guarantee that a jury will determine the meaning of any disputed term of art about which expert testimony is offered.").
53. See Pfaff, 525 U.S. at 57 (noting that the question on appeal was "whether the commercial marketing of a newly invented product may mark the beginning of the 1-year period [triggering the 'on sale' bar under 1102(b)] even though the invention has not yet been reduced to practice").
54. See Dickinson, 527 U.S. at 153-54.
55. J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred Int'l, Inc., 534 U.S. 124 (2001);
56. Holmes Group, Inc. v. Vornado Air Circulation Sys., Inc., 535 U.S. 826 (2002);
57. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002);
58. Merck KGaA v. Integra Lifesciences I, Ltd., 545 U.S. 193 (2005);
59. III. Tool Works Inc. v. Indep. Ink, Inc., 547 U.S. 28 (2006);
60. Lab. Corp. of Am. Holdings v. Metabolite Lab., 548 U.S. 124 (2006);
61. eBay Inc. v. MercExchange, LLC, 547 U.S. 388 (2006);
62. Medlmmune v. Genentech, Inc., 549 U.S. 118 (2007);
63. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007);
64. Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007);
65. Quanta Computer, Inc. v. LG Electronics, Inc., 128 S. Ct. 2109 (2008).
66. Stephen Breyer, The Uneasy Case for Copyright-A Study of Copyright in Books, Photocopies, and Computer Programs, 84 HARV. L. REV. 281 (1970).
67. See generally id. (arguing that the revisions in the later-enacted Copyright Act of 1976 would provide for unnecessary overprotections in a number of substantive areas).
68. For example, prior to becoming a Justice of the Supreme Court, Breyer authored the following law review articles on federal economic regulation: The Problem of the Honest Monopolist, 44 ANTITRUST L.J. 194 (1975);
69. Afterword - Legacy of the New Deal- Problems and Possibilities in the Administrative State, 92 YALE L.J. 1614 (1983);
70. Reforming Regulation, 59 TUL. L. REV. 4 (1984);
71. Essay: Economists and Economic Regulation, 47 U. PITT. L. REV. 205 (1985);
72. Antitrust, Deregulation, and the Newly Liberated Marketplace, 75 CAL. L. REV. 1005 (1987).
73. He also wrote important books on regulatory reform: BREAKING THE VICIOUS CIRCLE: TOWARD EFFECTIVE RISK REGULATION (1993) and REGULATION AND ITS REFORM (1982).
74. For instance, Justice Breyer authored the majority opinion in the following intellectual property-focused cases: Dickinson, 527 U.S. at 152, and Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 160 (1995).
75. Additionally, he has authored a concurring opinion in MGM Studios Inc. v. Grokster, Ltd, 545 U.S. 913, 949 (2005),
76. and dissenting opinions in Laboratory Corp. of America Holdings, 548 U.S. at 125;
77. Eldred v. Ashcroft, 537 U.S. 186, 242 (2003);
78. JEM. Ag Supply, Inc., 534 U.S. at 147;
79. and College Savings Bank v. Florida Prepaid Post Secondary Education Expense Board, 527 U.S. 666, 693 (1999).
80. See Barr Labs. v. Burroughs Wellcome Co., 515 U.S. 1130 (1995) (No. 94-1527) (inviting CVSG).
81. Ultimately, the Court denied the petitioner's writ of certiorari. Barr Labs. v. Burroughs Wellcome Co., 516 U.S. 1070 (1996) (No. 94-1527).
82. See Figure 3 (showing the number of pre-certiorari CVSGs per Supreme Court Term in all case types).
83. See id.
84. See Figure 4 (showing the number of pre-certiorari CVSGs in patent cases per Term from 1990-2008). In its 1993 Term, the Court had issued a CVSG in a Federal Circuit case involving the Plant Variety Protection Act, 7 U.S.C. §§ 2321-2582 (2006), a statute that grants patent-like rights in plant varieties but that is administered by the Department of Agriculture.
85. See Asgrow Seed Co. v. Winterboer, 510 U.S. 806, 806 (1993) (No. 92-2038) (issuing CVSG order);
86. -511 U.S. 1029, 1029 (1994) (No. 92-2038) (granting certiorari); 513 U.S. 179, 193 (1995) (reversing the Federal Circuit).
87. See Golden, supra note 4, at 710 (stating that "the Court can call for the views of the solicitor general when it believes it needs help in gathering the information necessary to apply the relevant criteria");
88. David C. Thompson & Melanie F. Wachtell, An Empirical Analysis of Supreme Court Certiorari Petition Procedures: The Call for Response and the Call for the Views of the Solicitor General, 16 GEO. MASON L. REV. 237, 245 (2009) (noting that the "Court calls for the views of the Solicitor General most often in intellectual property cases, antitrust cases, ERISA cases, and other matters involving complex regulatory regimes").
89. See Clarisa Long, The PTO and the Market for Influence in Patent Law, 157 U. PA. L. REV. 1965, 1971-72 (2009) (noting the increased influence of the PTO in matters before the Supreme Court);
90. Arti K. Rai Growing Pains in the Administrative State: The Patent Office's Troubled Quest for Managerial Control, 157 U. PA. L. REV. 2051, 2053-55 (2009) (discussing the institutional capabilities of the PTO).
91. Barr Labs. v. Burroughs Wellcome Co., 515 U.S. 1130 (1995) (No. 94-1527) (inviting CVSG).
92. See Brief for the United States as Amicus Curiae at 34, Barr Labs., 515 U.S. 1130 (1995) (Nos. 94-1527 & 94-1531), available at http://ww.justice. gov/osg/briefs/1994/w941527w.txt.
93. Barr Labs. v. Burroughs Wellcome Co., 516 U.S. 1070 (1996) (No. 94-1527) (denying certiorari).
94. See Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1225-26 (Fed. Cir. 1994).
95. See Brief for the United States as Amicus Curiae, supra note 40, at 1.
96. Id at 16-17;
97. see also The Telephone Cases, 126 U.S. 1 (1888).
98. These cases were: Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996);
99. WarnerJenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997);
100. Pfaff v. Wells Electronics, Inc., 525 U.S. 55 (1998);
101. Dickinson v. Zurko, 527 U.S. 150 (1999);
102. and Florida Prepaid Postsecondary Education Expense Board v. College Savings Bank, 527 U.S. 627 (1999).
103. Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996).
104. The Solicitor General participated as amicus curiae in Warner-Jenkinson, 520 U.S. at 20,
105. and Pfaff, 525 U.S. at 56,
106. and as a party in Dickinson, 527 U.S. at 151,
107. and Florida Prepaid, 527 U.S. at 629.
108. FIa. Prepaid Postsecondary Educ. Expense Bd. v. Coll. Sav. Bank, 527 U.S. 627 (1999). Both the Federal Circuit and the Solicitor General agreed that Congress had abrogated the ability of states to claim a privilege of state sovereign immunity in patent infringement suits brought in federal court.
109. See Coll. Sav. Bank v. Fla. Prepaid Postsecondary Educ. Expense Bd., 148 F.3d 1343, 1355 (Fed. Cir. 1998);
110. Brief for Respondent at 9-12, Flo. Prepaid, 527 U.S. 627 (1999) (No. 98-531).
111. On appeal, the Supreme Court disagreed, holding that Congress's efforts were outside the authority granted under Article I. See Fla. Prepaid, 527 U.S. at 647-48.
112. Dickinson v. Zurko, 527 U.S. 150, 151 (1999).
113. Id. at 153-54, 165.
114. Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17 (1997).
115. Id. at 31-32, 40-41.
116. Pfaff v. Wells Elees., Inc., 525 U.S. 55 (1998).
117. Id. at 68 n.14.
118. Pfaff v. Wells Elees., Inc., 124 F.3d 1429, 1433 (Fed. Or. 1997) (holding that "in making the determination as to whether the invention was 'on sale,' 'all of the circumstances surrounding the sale or offer to sell, including the stage of development of the invention and the nature of the invention, must be considered and weighed against the policies underlying section 102(b).'" (citation omitted)).
119. See Brief for the United States as Amicus Curiae Supporting Respondent at 28, Pfaff, 525 U.S. 55 (No. 97-1130).
120. Pfaff, 525 U.S. at 65-66 n.11, 67-68.
121. J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred Int'l, Inc., 531 U.S. 807 (2000) (No. 99-1996) (inviting CVSG).
122. See CSU, L.L.C. v. Xerox Corp., 531 U.S. 922 (2000) (No. 00-62) (inviting CVSG), cert, denied, 531 U.S. 1143 (2001);
123. Atlantic Richfield Co. v. Union Oil., Co. of Cal., 531 U.S. 942 (2000) (No. 00-249) (inviting CVSG), cert, denied, 531 U.S. 1183 (2001).
124. See Figure 5 (listing all instances of Supreme Court CVSGs in patent-related matters through the end of the 2008 Term).
125. See Figures 6 and 7 (graphs showing Supreme Court patent cases per Term as a percentage of total Supreme Court cases from the 1810 through the 2008 Terms and from the 1950 through the 2008 Terms).
126. See Hon. Randall R. Rader, Introduction - Specialized Courts: The Legislative Response, 40 AM. U. L. REV. 1003, 1004-06 (1991) (summarizing the concerns of lawmakers over the creation of the Federal Circuit, and noting particularly that the new court would eliminate the ability of regional courts to opine on patent matters).
127. See H.W. PERRY, JR., DECIDING TO DECIDE: AGENDA SETTTNG IN THE UNITED STATES SUPREME COURT 246-52, 277-79 (1991) (noting that circuit splits are a strong factor in granting certiorari in all cases);
128. DORIS MARIE PROVTNE, CASE SELECTION IN THE UNITED STATES SUPREME COURT 37-40 (1980);
129. S. Sidney Ulmer, The Supreme Court's Certiorari Decisions: Conflict as a Predictive Variable, 78 AM. POL. SCI. REV. 901, 910 (1984) (relating the results of an empirical study indicating that the Supreme Court was "significantly responsive" to issues of legal conflict in the determination of whether to grant certiorari).
130. See Hon. S. Jay Plager, The United States Courts of Appeals, The Federal Circuit, and the Non-Regional Subject Matter Concept: Reflections on the Search for a Model, 39 AM. U. L. REV. 853, 855 (1990) (noting that one of the benefits of the Federal Circuit's creation was that it "reliev[ed] some of the pressure on the Supreme Court caused by the need to monitor intercircuit differences" and that "[b]y making one appellate court responsible for the development of the law in particular areas, Congress, in a single stroke, eliminated intercircuit conflicts and achieved uniformity").
131. The percentage of the Supreme Court's docket occupied by patent cases, averaged over a five-year period, was determined by dividing the average number of patent cases per Term by the average number of Supreme Court cases per Term. The number of patent cases in each Term was determined by the method described in Duffy, supra note 8, at 287-88 n.50. The number of Supreme Court cases per Term was obtained from three sources. For the Supreme Court Terms of 2002-2008, the source of the data was The Harvard Law Review, which annually publishes statistics on the Supreme Court's activity. See The Supreme Court, 2008 Term - The Statistics, 123 HARV. L. REV. 382, 393 (2009);
132. The Supreme Court, 2007 Term - The Statistics, 122 HARV. L. REV. 516, 527 (2008);
133. The Supreme Court, 2006 Term - The Statistics, 121 HARV. L. REV. 436, 447 (2007);
134. The Supreme Court, 2005 Term - The Statistics, 120 HARV. L. REV. 372, 382 (2006);
135. The Supreme Court, 2004 Term - The Statistics, 119 HARV. L. REV. 415, 428 (2005);
136. The Supreme Court, 2003 Term - The Statistics, 118 HARV. L. REV. 497, 507 (2004);
137. The Supreme Court, 2002 Term - The Statistics, 117 HARV. L. REV. 480, 489 (2003).
138. For the Supreme Court Terms of 1810-2001, the primary source was The Supreme Court Compendium. LEE EPSTEIN ET AL., THE SUPREME COURT COMPENDIUM: DATA, DECISIONS, AND DEVELOPMENTS 216-20 tbl.3-3 (3d ed. 2003).
139. However, in 1850, the Supreme Court held both a January Term and a December Term. Professor Epstein and her co-authors combine these terms into one and report a single figure. To determine the number of cases in each of the 1850 Terms, Lexis searches were performed in the Lexis Supreme Court file, with the search limited only by date (1/1/1850 to 11/30/1850, and 12/1/1850 to 11/30/1851). Those searches yielded 78 and 85 cases, respectively. Limiting the search results to cases that included some substantive ruling by the Court produced 77 and 79 opinions. Those results were consistent with those of Professor Epstein and her co-authors, who report 156 cases for the two 1850 Terms. Id. The number of cases per Supreme Court Term varies slightly depending upon the definition employed to define a case (and thus Professor Epstein's numbers sometimes differ from those reported in The Harvard Law Review). Those discrepancies are, however, typically less than 10% and would not greatly affect the general results reported in the graphs.
140. See supra notes 14-17 and accompanying text.
141. See Mark D. Janis, Patent Law in the Age of the Invisible Supreme Court, 2001 U. III. L. REV. 387, 408, 417-19 (arguing that the Court should limit its review of federal patent cases to ensure the proper "allocation of power among institutional actors").
142. See Dreyfuss, The Federal Circuit, supra note 2, at 6-7.
143. Donald S. Chisum, The Supreme Court and Patent Law: Does Shallow Reasoning Lead to Thin Law?, 3 MARQ. INTELL. PROP. L. REV. 1, 2 (1999) ("Since the creation of the Federal Circuit in 1982, we have all said that the Federal Circuit is the Supreme Court of patent law because they have virtuaUy exclusive appellate jurisdiction over patent matters. Consequently, there is no point in thinking about the Supreme Court.");
144. Janis, supra note 67, at 387;
145. Harold C. Petrowitz, Federal Court Reform: The Federal Courts Improvement Act of 1982 - And Beyond, 32 AM. U. L. REV. 543, 557 (1983) (asserting that "[i]t seems safe to predict that few of the new court's decisions will reach the Supreme Court because of the consistency that should result from decisions of the Federal Circuit").
146. U.S. CONST, art. III, §1, cl. 1 (emphasis added).
147. Id. § 2, cl. 2.
148. See Peter J. Smith, Textualism and Jurisdiction, 108 COLUM. L. REV. 1883, 1893-94 (2008) (summarizing the historical debate over the scope of the Exceptions Clause and the power of Congress to limit Supreme Court appellate jurisdiction).
149. See, e.g., Gerald Gunther, Congressional Power to Curtail Federal Court Jurisdiction: An Opinionated Guide to the Ongoing Debate, 36 STAN. L. REV. 895,901-910 (1984) (discussing the long-running academic debate on the Exceptions Clause and agreeing with the advocates of broad congressional power to limit Supreme Court appellate jurisdiction);
150. John Harrison, The Power of Congress to Limit the Jurisdiction of Federal Courts and the Text of Article III, 64 U. Cm. L. REV. 203 (1997) (discussing the more general constitutional debate on the scope of congressional power over federal jurisdiction and reading the Exceptions Clause as being, "in itself, limited only insofar as some limitations might be so large as no longer to constitute exceptions");
151. Henry M. Hart, Jr., The Power of Congress to Limit the Jurisdiction of Federal Courts: An Exercise in Dialectic, 66 HARV. L. REV. 1362,1365, 1364 (1953) (arguing that Congress could not rely on the Exceptions Clause to "destroy the essential role of the Supreme Court in the constitutional plan" and considering, as one example, the elimination of Supreme Court appellate jurisdiction over aU cases except patent cases(!));
152. Lawrence Gene Sager, The Supreme Court, 1980 Term - Foreword: Constitutional Limitations on Congress' Authority to Regulate the Jurisdiction of the Federal Courts, 95 HARV. L. REV. 17, 44 (1981) (arguing for a narrow interpretation of the Exceptions Clause because "[a]n 'exception' implies a minor deviation from a surviving norm; it is a nibble, not a bite");
153. Herbert Wechsler, The Courts and the Constitution, 65 COLUM. L. REV. 1001, 1005 (1965) (concluding that there is "no basis" for a narrow interpretation of the Exceptions Clause). Apart from the Exceptions Clause, vesting all federal appellate jurisdiction in a "Supreme Patent Court" would also raise a question whether the scheme would violate the Vesting Clause of Article III, which requires federal judicial power to be located in "one supreme Court, and in such inferior Courts as the Congress may from time to time ordain and establish." U.S. CONST, art. Ill, §1, cl. 1 (emphasis added).
154. As to American Airlines, Inc. v. Lockwood, 515 U.S. 1121 (1995) (No. 94-1660) (order granting certiorari), Judge Nies's dissenting opinion from the Federal Circuit ruling expressly argued that the majority opinion "creates the type of conflict with other circuits that warrants Supreme Court review." In re Lockwood, 50 F.3d 966, 987 (Fed. Cir. 1995) (Nies, J., dissenting).
155. Not surprisingly, one of American Airlines' main arguments in seeking certiorari was that the Federal Circuit's decision had "create[d] a conflict among the circuits." Petition for a Writ of Certiorari at 16-20, American Airlines, Inc., 515 U.S. 1182 (No. 94-1660) (arguing that, prior to the creation of the Federal Circuit, every circuit court to address the relevant issue had rejected the argument adopted by the Federal Circuit).
156. As to Pfaff v. Wells Electronics, Inc., 525 U.S. 55, 60 (1998), the Supreme Court justified its grant of certiorari by referring to a conflict between the Federal Circuit and the decisions of other circuits rendered prior to the creation of the Federal Circuit.
157. Fla. Prepaid Postsecondary Educ. Expense Bd. v. Coll. Sav. Bank, 527 U.S. 627, 630-31 n.l (1999);
158. see also Coll. Sav. Bank v. Fla. Prepaid Postsecondary Educ. Expense Bd., 148 F.3d 1343, 1351 (Fed. Cir. 1998) (explaining the divergence between the circuits).
159. Petition for Writ of Certiorari at 1, Dickinson v. Zurko, 527 U.S. 150 (1998) (No. 98-377).
160. See Lazarus, supra note 6, at 1493 ("The Court grants the Solicitor General's petitions for writ of certiorari at a rate of several orders of magnitude higher than anyone else's - about 70% of the time compared to less than 3-4% for others.").
161. These two cases were Markman v. Westview Instruments, Inc., 517 U.S. 370 (1995),
162. and Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997).
163. In Markman, the Federal Circuit split 8-1, with Judge Newman dissenting from the majority. Markman v. Westview Instruments, Inc., 52 F.3d 967, 999 (Fed. Cir. 1995) (Newman, J., dissenting).
164. In Warner-Jenkinson, three separate dissenting opinions were filed, encompassing the views of five different circuit judges. Hilton Davis Chem. Co. v. Warner-Jenkinson Co., Inc., 62 F.3d 1512, 1536 (Fed. Cir. 1995) (Plager, J., dissenting);
165. id. at 1545 (Lourie, J., dissenting);
166. id. at 1550 (Nies, J., dissenting).
167. See Thompson & Wachtell, supra note 37, at 279 ("Given the Solicitor General's unmatched experience with the Court and its standards for certiorari, and the quality of legal reasoning produced by the office, it is understandable that the Court would seek his opinion on close questions of certiorari.").
168. Thompson and Wachtell's study indicated that intellectual property matters formed the most common subject area of Supreme Court cases where CVSGs were issued, id. at 281, but their conclusion was based on the time period covered by their data, Supreme Court Terms 1992-2004. During that period, the Court issued CVSGs in eleven patent cases and four copyright cases. Prior to that period, the Court had never issued a CVSG in a patent case and had issued only four CVSGs in copyright cases.
169. eBay, Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006).
170. In the eBay decision, the Court sided with the petitioner when it vacated the Federal Circuit's judgment and held that the lower court's application of the test for injunctive relief was incorrect. Id. at 394. The Solicitor General's Office had filed a brief in support of the respondent in this matter.
171. See Brief for United States as Amicus Curiae Supporting Respondents, eBay, Inc., 547 U.S. 388 (No. 05-130).
172. The legal analysis in the Court's opinion begins: According to well-established principles of equity, a plaintiff seeking a permanent injunction must satisfy a four-factor test before a court may grant such relief. A plaintiff must demonstrate: (1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction.
173. See, e.g., Weinberger v. Romero-Barcelo, 456 U.S. 305, 311-13 (1982).
174. eBay, 547 U.S. at 391. Similarly, the Solicitor General's brief set forth the same four factors and relied on the same Supreme Court precedent: "[T]he four factors that traditionally govern equitable relief [are]: (1) the likelihood of irreparable injury; (2) the inadequacy of legal remedies; (3) the balance of hardship between the parties; and (4) and the public interest...." Brief for United States as Amicus Curiae Supporting Respondents, supra note 82, at 5
175. (citing Weinberger v. RomeroBarcelo, 456 U.S. 305, 312-13 (1982)).
176. The Solicitor General's brief then endorsed that fourfactor test: "The Patent Act's provision that injunctions shall issue 'in accordance with the principles of equity,' 35 U.S.C [§] 283, directs the district courts to issue injunctions in accordance with the familiar four-factor test set out in Weinberger v. Romero-Barcelo, 456 U.S. 305 (1982)."
177. Brief for United States as Amicus Curiae Supporting Respondents, supra note 82, at 9.
178. A comparison of the Solicitor General's brief and the Supreme Court's opinion shows the smaU difference between the two. After endorsing the "traditional four-factor test" for granting an injunction, the Solicitor General acknowledged that the Federal Circuit's opinion is flawed because it did not "expllcitly recitef ]" that test: The Federal Circuit, in this case as well as others, has not expllcitly recited the traditional four-factor test when reviewing a district court's grant or denial of permanent injunctive relief. . . . Nevertheless, the court of appeals' analysis would proceed in a more disciplined fashion if the court expressly applied the abuse-ofdiscretion standard with explicit reference to the traditional four-factor test, which provides the requisite framework for evaluating the distinct considerations that apply to patent claims. Brief for United States as Amicus Curiae Supporting Respondents, supra note 82, at 15 (footnotes omitted). The Supreme Court merely decided that the Federal Circuit had failed not only to recite but also to apply the correct test: In reversing the District Court, the Court of Appeals departed in the opposite direction [as compared to the District Court] from the four-factor test. The court articulated a "general rule," unique to patent disputes, "that a permanent injunction will issue once infringement and validity have been adjudged." ... Because we conclude that neither [the Federal Circuit nor the district court] correctly applied the traditional four-factor framework that governs the award of injunctive relief, we vacate the judgment of the Court of Appeals ....
179. eBay, 547 U.S. at 393-94 (citation omitted).
180. Figure 8. The count of thirteen cases here includes only cases in which the Court has rendered a decision. This measure excluded Laboratory Corp. of America Holdings v. Metabolite because the Court never rendered a decision on the merits but instead dismissed the certiorari petition there as improvidently granted. 548 U.S. 124 (2006) (No. 04-607). The Bilski case is also excluded here because it was not decided prior to the publication of this article.
181. See Bilski v. Doll, 129 S. Ct. 2735 (June 1, 2009) (No. 08-964) (order granting certiorari).
182. Figure 8.
183. Id.
184. By contrast, the Solicitor General's overall success rate as an amicus curiae during the Supreme Court Terms from 1980 to 1999 was approximately 72%. See EPSTEIN ET AL., supra note 65,675 tbl.7-16 (showing success rates of 72.8%, 78.2%, and 68.2%, respectively, over 239 cases during the Reagan Administration, 110 cases during the Bush Administration and 148 cases during the Clinton Administration). Similarly, the Solicitor General's success rate as an advocate for a federal agency during the period between the Court's 1948 and 2001 Terms is 69.4%. Id. at 678 tbl.7-18. If we assume the higher of these two success rates (72%), the odds of the Solicitor General compiling a perfect winning record is only 5.2% for 9 consecutive victories, and is only 2.7% for 11 victories.
185. Quanta Computer, Inc. v. LG Elees., Inc., 128 S. Ct. 2109 (2008).
186. Brief for the United States as Amicus Curiae Supporting Petitioners at 31, Quanta Computer, 128 S. Q. 2109 (2006) (No. 06-937).
187. Quanta Computer, 128 S. Ct. at 2122.
188. As previously mentioned, the Supreme Court in the eBay case also adopted the fourfactored tested endorsed by the Solicitor General. See supra note 84.
189. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002).
190. Festo, 535 U.S. at 740. The Festo Court held that amendments to patent claims give rise to a presumption of prosecution history estoppel barring the patentee from reliance on the doctrine of equivalents but that the presumption could be overcome by the patentee in certain circumstances. The Court then listed three potential circumstances in which the patentee could overcome the presumption, and two of those three were "cribbed from the Solicitor General's Brief."
191. Duffy, supra note 8, at 328-29.
192. Merck KGaA v. Integra Lifesciences I, Ltd., 545 U.S. 193 (2005).
193. Id at 208.
194. Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007). The issue in the case was whether, for purposes of 35 U.S.C. §271(f), copies of Microsoft's software could be considered "components" supplied from the United States where the specific copies of the software were produced overseas but the master copy of the software was created in this country. See id. at 441.
195. Id. at 448 (setting forth the position of the United States that "only a copy of software, not software in the abstract, can be a component" for purposes of § 271(f)); id. at 451-52 (concluding, in agreement with the government's position, that "a copy of Windows, not Windows in the abstract, qualifies as a 'component' under §271(f)"); id. at 454 (quoting and expressly endorsing the Solicitor General's argument that the ease of producing copies overseas does not alter the legal analysis of which components should be viewed as being supplied from the United States); id. at 455 (quoting and expressly endorsing the Solicitor General's arguments that the presumption against extraterritoriality supports a narrow reading of §271(f)); id. at 456 (quoting and expressly endorsing the Solicitor General's arguments to reject a broader reading of § 271(f)).
196. Id. at 458-59.
197. Brief for the United States as Amicus Curiae Supporting Petitioner at 37-38, Microsoft Corp., 550 U.S. 437 (2007) (No. 05-1056).
198. For example, the nonobviousness requirement of patent law was originally developed in judicial decisions and was not codified until the courts had issued a century of precedents on the subject. See John F. Duffy, Inventing Invention: A Case Study of Legal Innovation, 86 TEX. L. REV. 1, 41-43 (2007) (tracing the development of the obviousness doctrine).
199. Another good example is patent law's "inequitable conduct" doctrine, which the Federal Circuit has correctly recognized as "a judicially created doctrine." Digital Control Inc. v. Charles Mach. Works, 437 F.3d 1309,1315 (Fed. Cir. 2006).
200. A third example is the law governing patentable subject matter, which the courts frequently treat as an area "of federal common law." John F. Duffy, Rules and Standards on the Forefront of Patentability, 51 WM. & MARY L. REV. 609, 621 (2009).
201. For instance, the Securities and Exchange Commission has significant authority to promulgate rules if in the interest of the pubUc and protection of investors. See generally 15 U.S.C. § 78w (2006) (conferring on the Commission broad power to make "such rules and regulations as may be necessary or appropriate to implement" the statutory provisions that the Commission administers). Similarly, the Food and Drug Administration has wide "authority to promulgate regulations for the efficient enforcement" of federal statutes governing food and drug safety. See 21 U.S.C. §371(a) (2006).
202. Chevron U.S.A., Inc. v. Natural Res. Def. Council, Inc., 467 U.S. 837 (1984).
203. Nat'l Cable & Telecomms. Ass'n v. Brand X Internet Servs., 545 U.S. 967 (2005).
204. See Brand X Internet Servs., 545 U.S. at 982-83;
205. see also CHARLES H. KOCH, JR., WILLIAM S. JORDAN III & RICHARD W. MURPHY, ADMINISTRATIVE LAW: CASES AND MATERIALS 696-701 (5th ed. 2006)
206. (discussing whether Chevron abrogates the traditional ability of the judicial branch under Marbury v. Madison, 5 U.S. (1 Cranch) 137 (1803), to interpret and review the laws);
207. Cass R. Sunstein, Law and Administration After Chevron, 90 COLUM. L. REV. 2071, 2074-75 (1990) (remarking that the Chevron decision could be seen as "a kind of ... counterMarbury for the administrative state");
208. John F. Duffy, Administrative Common Law in Judicial Review, 77 TEX. L. REV. 113, 201-02 (1998) (arguing that the basis for the broad authority agen- cies possess under Chevron is not a "counter-Aiarfcury" principle but instead "just a corollary of the delegated lawmaking theory").
209. See, e.g., Merck & Co. v. Kessler, 80 F.3d 1543, 1549-50 (Fed. Cir. 1996) ("As we have previously held, the broadest of the PTO's rulemaking powers - 35 U.S.C. §6(a) - authorizes the Commissioner to promulgate regulations directed only to 'the conduct of proceedings in the [PTO]'; it does not grant the Commissioner the authority to issue substantive rules." (emphasis added) (citations omitted));
210. Animal Legal Def. Fund v. Quigg, 932 F.2d 920, 930 (Fed. Cir. 1991) ("A substantive declaration with regard to the Commissioner's interpretation of the patent statutes, whether it be section 101, 102, 103, 112 or other section, does not fall within the usual interpretation of [the PTO's limited rule making authority].").
211. See Kessler, 80 F.3d at 1550 (holding that, because it lacks a substantive rulemaking power, the PTO is not entitled to Chevron deference for its interpretations of substantive patent statutes).
212. The Federal Circuit recently addressed a corollary to this issue in Tafos v. Doll, and held that Chevron deference could be applied to the extent that the PTO's proposed rules were procedural in nature - a position that is consistent with the agency's limited rulemaking authority. Tafas v. Doll, 559 F.3d 1345, 1353-54 (Fed. Cir. 2009).
213. The Federal Circuit later granted en banc review in that case and vacated the panel decision. See Tafas v. Doll, 328 F. App'x 658 (Fed Cir. 2009) (en banc). Although that case would have provided an opportunity for the full Federal Circuit (and perhaps later, the Supreme Court) to examine the extent of the PTO's rulemaking power, the agency ultimately ended the litigation by rescinding its rules.
214. See Press Release, U.S. Patent & Trademark Office, USPTO Rescinds Controversial Patent Regulations Package Proposed by Previous Administration (Oct. 8,2009), available at http://uspto.gov/news/09-21.jsp. Thereafter the Federal Circuit vacated its order granting en banc rehearing and dismissed the appeal.
215. See Tafas v. Kappos, 586 F.3d 1369, 1371 (Fed. Cir. 2009).
216. Skidmore v. Swift & Co., 323 U.S. 134, 140 (1944).
217. Even in the cases catalogued in Figure 8, supra, where the Supreme Court agreed with the government's position on patent law, the Supreme Court did not expressly afford the government the lesser form of deference described in Skidmore. A Lexis search of all Supreme Court cases (using the search "skidmore and patent") yields no patent case in which the Court has ever cited the Skidmore case.
218. See supra notes 63-64 and accompanying text (discussing the importance of circuit splits in the Supreme Court's decisions to grant certiorari petitions).
219. For example, a Westlaw search of patent cases in the Sixth Circuit between the yean 1970 and 1980 yields only four decided cases that include any variant of "enable!" within 100 words of the statutory citation to section 112 of the Patent Act. (The search was: patent /100 enable! /100 "112" & co(sixth) & da(aft 1970 & bef 1980).) Since such a search should almost certainly identify any enablement cases, it seems reasonable to assume that the judges on that circuit heard only four cases on patent enablement in the entire decade.
220. See Patent Reform Act of 2007, H.R. 1908,110th Cong. §11 (2007) (as introduced) ("In addition to the authority conferred by other provisions of this title, the Director may promulgate such rules, regulations, and orders that the Director determines appropriate to carry out the provisions of this title or any other law applicable to the United States Patent and Trademark Office or that the Director determines necessary to govern the operation and organization of the Office.");
221. Letter from Gary Locke, Sec'y of Commerce, to Patrick J. Leahy, Chairman, S. Judiciary Comm., at 2 (Oct. 5, 2009) (on file with author) (endorsing the "granting of USPTO substantive rulemaking authority").
222. See, e.g., Motor Vehicle Mfrs. Ass'n v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 34-38 (1983) (tracing the changing treatment of a proposed safety regulation by Secretaries of Transportation in different presidential administrations).
223. See Chevron U.S.A., Inc. v. Natural Res. Def. Counril, Inc., 467 U.S. 837, 865-66 (1984) (holding that an agency's political responsiveness provides a reason for courts to grant the agency deference in interpreting ambiguous statutes);
224. see also FDA v. Brown & Williamson Tobacco Corp., 529 U.S. 120, 188-89 (2000) (Breyer, J., dissenting) (arguing that a new administration's policy is a permissible reason for changing agency regulations);
225. Motor Vehicle Mfrs., 463 U.S. at 59 (Rehnquist, J., concurring in part and dissenting in part) (noting that a "change in administration ... is a perfectly reasonable basis for an executive agency's reappraisal of the costs and benefits of its programs and regulations [and as] long as the agency remains within the bounds established by Congress, it is entitled to assess administrative records and evaluate priorities in light of the philosophy of the administration").
226. See Chevron, 467 U.S. at 865-66.
227. See, e.g., Kenneth W. Starr, Judicial Review in the Post-Chevron Era, 3 YALE J. ON REG. 283, 312 (1986) ("After Chevron, agencies may depart more easily from their predecessors' interpretations. By orchestrating a number of changes in statutory interpretations by different agencies, an incoming administration will be better able to recast the regulatory system in its own image.");
228. Matthew C. Stephenson, Legislative Allocation of Delegated Power: Uncertainty, Risk, and the Choice Between Agencies and Courts, 119 HARV. L. REV. 1035, 1047 (2006) (noting that while "courts are obliged in most circumstances to adhere to precedents established in earlier cases ... [t]his constraint... does not apply to administrative agencies, which can and do change their interpretations in response not only to new information but also to changes in the administration's political and regulatory priorities").
229. Chevron, 467 U.S. at 863-64 ("An initial agency interpretation is not instantly carved in stone. On the contrary, the agency ... must consider varying interpretations and the wisdom of its policy on a continuing basis.").
230. See, e.g., Abraham Bell & Gideon Parchomovsky, A Theory of Property, 90 CORNELL L. REV. 531, 552 (2005) ("The conclusion is that a property system with stable rights increases the value of assets to users (now owners) and decreases the costs of obtaining and defending those assets[.]... [G]enerally, the benefits provided by property systems increase with the stability of the property rights they create.");
231. Craig Allen Nard, Certainty, Fence Building, and the Useful Arts, 74 IND. L.J. 759, 785-95 (1999) (discussing the need for certainty in patent rights as an incentive for innovation and invention);
232. Todd J. Zywicki, The Rule of Law, Freedom, and Prosperity, 10 SUP. CT. ECON. REV. 1, 22 (2002) ("The documented effect of increasing rule of law values on economic growth is robust. Individuals are more willing to invest in economic growth where property rights are stable.").
233. See F. Scott Kieff, Coordination, Property and Intellectual Property: An Unconventional Approach to Anticompetitive Effects and Downstream Access, 56 EMORY L.J. 327, 386-87 (2006) (arguing that "if individuals perceive that property rights and contracts are not being enforced, they may have less faith in property rights and contracts being enforced in the future" and may therefore "shift investments towards other activities").
234. See generally Golden, supra note 4, at 709-16.
235. See id. at 700-05;
236. Duffy, supra note 8, at 342 (analyzing the relationship between the Federal Circuit and the Supreme Court and expressing the hope that "each institution will be mindful not only of its strengths, but of its weaknesses too," and that "[f]or the Supreme Court, this means recognizing the limitations of its expertise and refraining from trying to lead the development of the law");
237. Janis, supra note 67, at 408-09 (arguing that the Supreme Court should adopt a "managerial model" in determining when to grant certiorari to hear patent cases from the Federal Circuit, intervening only when necessary to correct a persistent conflict).