PATENTOGRAPHY

New York University Law Review

Volumn 85, Issue 5, 2010, Pages 1444-1520

  Fromer, Jeanne C ^a  

^a Crowley Program in International Human Rights   (United States)

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EID: 79251605878     PISSN: 00287881     EISSN: None     Source Type: Journal    
DOI: None     Document Type: Review

References (411)

1. The Eastern District of Texas-No Longer the Venue of Choice?, METROPOLITAN CORP. COUNS., Feb. 2009, at 23, 23 [hereinafter Eastern District of Texas].
2. Julie Creswell, So Small a Town, So Many Patent Suits, N.Y. TIMES, Sept. 24, 2006, at B1.
3. See infra notes 263-67 and accompanying text.
4. 28 U.S.C. § 1295(a)(1) (2006). For cases in which a patent issue arises only in a counterclaim, the Federal Circuit does not have appellate jurisdiction; rather, the regional circuit court associated with the district court that heard the case takes the appeal. Holmes Group, Inc. v. Vornado Air Circulation Sys., Inc., 535 U.S. 826, 829-32 (2002).
5. Kimberly A. Moore, Judges, Juries, and Patent Cases-An Empirical Peek Inside the
6. Black Box, 99 MICH. L. REV. 365, 397 (2000).
7. Kevin M. Clermont & Theodore Eisenberg, Plaintiphobia in the Appellate Courts:Civil Rights Really Do Differ from Negotiable Instruments, 2002 U. ILL. L. REV. 947-952 tbl.1 (presenting statistics for all civil appeals from 1988 through 1997)
8. see also Ted M. Sichelman, Myths of (Un)Certainty at the Federal Circuit, 43 LOY. L.A. L. REV. (forthcoming 2010) (manuscript at 7), available at http://papers.ssrn.com/papers.cfm?abstract_id=1547392 (reviewing data onreversal rates).
9. Michael Saunders, Note, A Survey of Post-Phillips Claim Construction Cases, 22 BERKELEY TECH. L.J. 215-236 (2007).Claim construction is the act of interpreting the claims of a patent to determine what is protected Id. at 216.
10. See infra note 173 and accompanying text.
11. See infra notes 263-67 and accompanying text.
12. Kimberly A. Moore, Forum Shopping in Patent Cases: Does Geographic Choice Affect Innovation?, 79 N.C. L. REV. 889-934 (2001)
13. Rochelle Cooper Dreyfuss, In Search of Institutional Identity: The Federal Circuit Comes of Age, 23 BERKELEY TECH. L.J. 787-805 (2008).
14. See infra notes 215-17 and accompanying text.
15. See DAN L. BURK & MARK A. LEMLEY, THE PATENT CRISIS AND HOW THE COURTS CAN SOLVE IT (2009) [hereinafter BURK & LEMLEY, PATENT CRISIS] (arguing for "flexible,industry-focused patent system")
16. Dan L. Burk & Mark A. Lemley, Biotechnology's Uncertainty Principle, 54 CASE W. RES. L. REV. 691, 722-738 (2004) (proposing biotechnologyspecific patent rules to promote innovation)
17. Dan L. Burk & Mark A. Lemley, Policy Levers in Patent Law, 89 VA. L. REV. 1575 (2003) [hereinafter Burk & Lemley, PolicyLevers] (discussing how innovation proceeds differently in varying industries and how patent law ought to be fine-tuned for each);
18. Dan L. Burk & Mark A. Lemley, Is Patent Law Technology-Specific?, 17 BERKELEY TECH. L.J. 1155, 1158-1185 (2002) (suggesting that courts tend to apply patent law in varying ways to different industries).
19. For a discussion of the understudied role of district courts in this tailoring, see Jeanne C. Fromer, District Courts as Patent Laboratories, 1 U.C. IRVINE L. REV. (forthcoming 2010) (manuscript on file with the New York University Law Review).
20. A utility patent refers to a patent granted for one of the following types of inventions:
21. a process, a machine, a manufacture, or a composition of matter (such as a new chemical). BLACK'S LAW DICTIONARY 1236 (9th ed. 2009). Because I am focusing on the patent system generally and utility patents are the most common type of patent issued, restricting my empirical study to them will not affect the outcome in any meaningful way. See infra note 268.
22. See infra notes 227-235 and accompanying text.
23. U.S. CONST. art. I, § 8, cl. 8.
24. See Burk & Lemley, Policy Levers, supra note 12, at 1581-1582 (noting research and
25. development costs of innovation).
26. Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470-481 (1974).
27. 35 U.S.C. § 102 (2006).
28. Id. § 103(a).
29. Id. § 101.
30. For the traditional basis for these requirements and a psychological understanding of them, see Jeanne C. Fromer, A Psychology of Intellectual Property, 104 NW. U.
31. L. REV. (forthcoming 2010), available at http://papers.ssrn.com/papers.cfm?abstract_id=1575843.
32. 35 U.S.C. § 112.
33. See generally Jeanne C. Fromer, Patent Disclosure, 94 IOWA L. REV.539 (2009) (describing these requirements and arguing that they do not suffice for useful and clear disclosures).
34. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-1564 (Fed. Cir. 1991).
35. 35 U.S.C. § 112.
36. Monsanto Co. v. Syngenta Seeds, Inc., 503 F.3d 1352-1360 (Fed. Cir. 2007).
37. 35 U.S.C. § 112.
38. See Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955-963 (Fed. Cir. 2001) (discussing
39. two-pronged best mode test).
40. U.S. Patent & Trademark Office, The USPTO: Who We Are, http://www.uspto.gov/about/index.jsp (last modified July 31, 2010).
41. 35 U.S.C. § 131 ("The Director shall cause an examination to be made of the application and the alleged new invention; and if on such an examination it appears that the applicant is entitled to a patent under the law, the Director shall issue a patent therefore.").
42. Id. § 112.
43. Id. § 154(a)(2).
44. See infra notes 59-61 and accompanying text.
45. 28 U.S.C. § 1338(a) (2006) ("The [federal] district courts shall have original [and exclusive] jurisdiction of any civil action arising under any Act of Congress relating to patents").
46. 4D CHARLES ALAN WRIGHT, ARTHUR R. MILLER & EDWARD H. COOPER, FEDERAL PRACTICE AND PROCEDURE § 3801, at 2-6 (3d ed. 2007).
47. See Act of Mar. 3, 1897, ch. 395, 29 Stat. 695.
48. For a detailed history of patent venue and an argument that it ought to be narrower than general venue, see Neal A. Waldrop, The Patent Venue 28 U.S.C. 1400(b) Should Not Be Repealed, 4 APLA Q.J. 32 (1976).
49. Judiciary Act of Sept. 24, 1789, ch. 20, § 11, 1 Stat. 73, 79
50. see also Stonite Prods. Co. v. Melvin Lloyd Co., 315 U.S. 561, 563-65 (1942) (recounting pre-1897 history of venue rules for patent infringement proceedings).
51. See Act of Mar. 3, 1887, ch. 373, § 1, 24 Stat. 552, 552-53.
52. See In re Hohorst, 150 U.S. 653, 662 (1893).
53. In In re Keasbey & Mattison Co., 160 U.S. 221 (1895), the Court distinguished Hohorst in part because that case was a "suit for infringement of a patent right and was therefore not affected by general provisions regulating the jurisdiction of the courts of the United States, concurrent with that of the several States."
54. Id. at 230.
55. This distinction implies that the concurrent jurisdiction provisions of the 1887 statute did not regulate patent suits, although the Court did not say so outright. 40 Stonite, 315 U.S. at 564.
56. Id. at 564-565.
57. See HOUSE COMM. ON PATENTS, INFRINGEMENT OF LETTERS PATENT, H.R. REP. NO. 54-2905 (2d Sess. 1897) ("This bill seeks to remove the uncertainty which now arises as to [jurisdiction in patent suits] by reason of the conflicting decisions of the various circuit courts.").
58. See id. (stating that bill "further facilitates the bringing of suits in the place of businessof the parties interested").
59. Act of Mar. 3, 1897, ch. 395, 29 Stat. 695; see also John A. Laco, Note, Venue in Patent Infringement Actions: Johnson Gas Fouls the Air, 25 LOY. L.A. L. REV. 1107, 1107 (1992) (describing enactment of statute with the express intent that the special patent venue statute stand independent of the general federal venue statute").
60. 28 U.S.C. § 1400(b) (2006).
61. Fourco Glass Co. v. Transmirra Prods. Corp., 353 U.S. 222 (1957).
62. See VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574, 1583 (Fed. Cir. 1990) ("[U]nder amended § 1391(c) as we here apply it, venue in a patent infringement case includes any district where there would be personal jurisdiction over the corporate defendant at the time the action is commenced.").
63. 28 U.S.C. § 1391(c).
64. Thomas A. O'Rourke, The Modernization of the Patent Venue Statute, 14 GEO. MASON L. REV. 585 (1992).
65. A long-arm statute is a statute providing for jurisdiction over a nonresident defendant who has had contacts with the territory where the statute is in effect. BLACK'S LAW DICTIONARY 1027 (9th ed. 2009). Since the mid-twentieth century, states have enacted long-arm statutes that reach out permissively to confer personal jurisdiction on nonresident defendants, often as far as due process allows.
66. See 4 CHARLES ALAN WRIGHT & ARTHUR R. MILLER, FEDERAL PRACTICE AND PROCEDURE § 1068 (3d ed. 2002) (discussing development of state long-arm statutes).
67. 14 WRIGHT, MILLER & COOPER, supra note 33, § 3823, at 479-482.
68. This requirement had been read narrowly to require a fixed physical facility of the defendant's in the district. See, e.g., Dual Mfg. & Eng'g, Inc. v. Burris Indus., Inc., 531 F.2d 1382, 1386-88 (7thCir. 1976) (discussing cases interpreting fixed physical facility requirement).
69. The Federal Circuit has more recently read the requirement broadly to ask merely whether the corporate defendant does its business in that district through a permanent and continuous presence there and not. whether it has a fixed physical presence. In re Cordis Corp., 769 F.2d 733, 737 (Fed. Cir. 1985).
70. See, e.g., MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 120-121 (2007) (presenting declaratory judgment action in patent licensing context).
71. E.g., A.P.T., Inc. v. Quad Envtl. Techs. Corp., 698 F. Supp. 718-723 (N.D. Ill. 1998).
72. 28 U.S.C. 1391(b).
73. Id.1391(c).
74. See, e.g., Norkol/Fibercore, Inc. v. Gubb, 279 F. Supp. 2d 993-999 (E.D. Wis. 2003).
75. Inventorship concerns who should be listed as an inventor on a patent. There is a private right of action to challenge inventorship once a patent issues. Larson v. Correct Craft, Inc., 569 F.3d 1319, 1324-25 (Fed. Cir. 2009) (citing 35 U.S.C. § 256 (2006)).
76. 28 U.S.C. § 1391(d); see also Brunette Mach. Works, Ltd. v. Kockum Indus., Inc., 406 U.S. 706-714 (1972)
77. (noting codification in 28 U.S.C. § 1391(d) of judicial rule that the general venue laws do not control in a suit against an alien defendant, nor does the special patent venue law). When a foreign defendant is a patentee and has failed to designate properly on whom to serve process in the United States, the United States District Court for the District of Columbia shall have jurisdiction. 35 U.S.C. § 293. Because, in that case, jurisdiction is only proper in one court, it follows that venue lies only in that court.
78. See John R. Thomas, Claim Re-Construction: The Doctrine of Equivalents in the Post- Markman Era, 87 J. PAT. & TRADEMARK OFF. SOC'Y 781-798 (2005) (noting "common scenario" of "large corporate defendants being sued by individuals or small firms").
79. See Moore, supra note 10, at 925 ("[P]laintiffs have limitless venue options). Of course, venue might be transferred to another permissible venue if a court agrees that doing so is [f]or the convenience of parties and witnesses [or] in the interest of justice. 28 U.S.C. § 1404(a).
80. Federal Courts Improvement Act of 1982, Pub. L. No. 97-164, § 124, 96 Stat. 25, 36 (codified as amended at 28 U.S.C. § 1291); § 127, 96 Stat. at 37 (codified as amended at 28 U.S.C. § 1295).
81. See supra note 4 (describing exception).
82. See 28 U.S.C. § 1295(a)(2)-(3), (10).
83. Id. 1254.
84. E.g., Court of Appeals for the Federal Circuit: Hearings 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. 42-43 (1981) (statement of Hon. Howard T. Markey, C.J., U.S. Court of Customs and Patent Appeals) ("[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.").
85. See Parke-Davis & Co. v. H.K. Mulford Co., 189 F. 95, 115 (C.C.S.D.N.Y. 1911) (Hand, J.) ("I cannot stop without calling attention to the extraordinary condition of the [patent] law which makes it possible for a man without any knowledge of even the rudiments of chemistry to pass upon such questions as these."). Legal subjects may be complex because of either the difficulty of the underlying law or the technical nature of the facts.
86. Richard L. Revesz, Specialized Courts and the Administrative Lawmaking System, 138 U. PA. L. REV. 1111-1117 (1990).
87. Patent law is regarded as complex for both reasons.See id. at 1117-18 (quoting Judge Friendly's argument in favor of specialized patent trial court because of technical nature of facts in patent cases).
88. 35 U.S.C. § 112 para. 2 (2006) (The [patent] shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.).
89. Id. § 102 (describing patent law's requirement that invention be novel).
90. Id. § 112 para. 1 (The [patent] shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same).
91. Lawrence Baum, Specializing the Federal Courts: Neutral Reforms or Efforts To Shape Judicial Policy?, 74 JUDICATURE 217-223 (1991)
92. Harold H. Bruff, Specialized Courts in Administrative Law, 43 ADMIN. L. REV. 329-330 (1991)
93. Rochelle Cooper Dreyfuss, The Federal Circuit: A Case Study in Specialized Courts, 64 N.Y.U. L. REV. 1, 1-27 (1989)
94. There are two dimensions in which courts might be specialized: the degree to which certain types of cases tend to dominate a court's docket and the degree to which certain types of cases tend to be concentrated in just one court. Baum, supra, at 218. The Federal Circuit's specialization is of the latter type.
95. Dreyfuss, supra note 68, at 6-7; see also Baum, supra note 68, at 223 (discussing inconsistent legal rules in patent law); Bruff, supra note 68, at 331 (noting that Federal Circuit may reduce intercircuit conflicts).
96. Dreyfuss, supra note 68, at 7 n.41.
97. Id. at 7.
98. The Federal Circuit: A Case Study in Specialized Courts
99. The Federal Circuit: A Case Study in Specialized Courts
100. see also Ellen R. Jordan, Specialized Courts: A Choice?, 76 NW. U. L. REV. 745-765 (1981)
101. (Specialized courts appear to work best in areas where there is wide agreement
102. and consensus on the basic policies to be implemented, thus making uniformity and predictability uncontroversial and desirable goals.); Revesz, supra note 64, at 1116-20 (suggestingthat uniformity, coherence of statutory scheme, and more correct decisions are reasons to create specialized court).
103. See Dreyfuss, supra note 68, at 2 (noting that concentrating appeals in one court reduces incoherence in law, whereas adding new layers of appeal has potential to increase it). Lawrence Baum also suggests another impetus for the Federal Circuit's creation: Patent lawyers wanted to see an appeals court that was less hostile to strong patents than the regional circuit courts had been. Baum, supra note 68, at 223. A pro-patent Federal Circuit was likely, according to these lawyers, as it would be composed in part of judges of the Court of Customs and Patent Appeals, which had been favorable to patents. Id.
104. Bruff, supra note 68, at 334. Congress might want to step in to change or refine patent law in response to judicial decisions when it observes courts-either correctly or incorrectly-interpreting patent law in ways that do not advance innovation.
105. See, e.g., Dreyfuss, supra note 68, at 8-11 (observing that Federal Circuit consistently reached same result under similar factual circumstances in areas such as nonobviousness). Uniformity and quality are distinct concepts, in that there could be uniform but bad rules or there could be a number of desirable, but inconsistent, approaches.
106. See Craig Allen Nard & John F. Duffy, Rethinking Patent Law's Uniformity Principle, 101 NW. U. L. REV. 1619-1620 (2007)
107. (noting that, after initially welcoming uniformity provided by Federal Circuit, patent scholars began critically evaluating substance of its new rules). It should be noted that there are some areas, like the appropriate methodology for construing the meaning of a patent's claims, over which the Federal Circuit's judges disagree, leading to divergent approaches in important doctrinal areas.
108. Compare Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) (highlighting legal inquiries involved in claim construction), with id. at 1330-35 (Mayer, J., dissenting) (emphasizing factual nature of claim construction inquiry).
109. See generally R. Polk Wagner & Lee Petherbridge, Is the Federal Circuit Succeeding?: An Empirical Assessment of Judicial Performance, 152 U.PA. L. REV. 1105, 1125-1170 (2004) (reporting results of empirical study suggesting that Federal Circuit alternates between two approaches to claim construction: procedural and holistic).
110. Dreyfuss, supra note 68, at 14-17
111. see also Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1310 (Fed. Cir. 2009) (setting out standard for nonobviousness of patented invention).
112. 35 U.S.C. § 103 (2006).
113. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007) (reversing Federal Circuit's application of nonobviousness test); eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) (reversing Federal Circuit and applying standard test for granting permanent injunctive relief).
114. Adam Mossoff, Exclusion and Exclusive Use in Patent Law, 22 HARV. J.L. & TECH. 321, 322-323 (2009) (noting "the Court's recent string of reversals of the Federal Circuit").
115. E.g., KSR, 550 U.S. at 415 (characterizing Federal Circuit's approach as rigid and prevailing Supreme Court standard as expansive and flexible). 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) (arguing that Supreme Court should intervene in Federal Circuit jurisprudence to stimulate renewed consideration of old doctrines, not to serve as final arbiter of patent law).
116. See, e.g., Bruff, supra note 68, at 331; Dreyfuss, supra note 68, at 25.
117. See, e.g., Edward K. Cheng, The Myth of the Generalist Judge, 61 STAN. L. REV. 519, 552-553 (2008); Dreyfuss, supra note 68, at 3.
118. See MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 126-37 (2007) (declaratory judgment actions); eBay, 547 U.S. at 391-94 (injunctive relief).
119. See Dreyfuss, supra note 68, at 3 (noting concern about "ideological appointments").
120. The Myth of the Generalist Judge
121. Id. Critics also note the lack of prestige that can be associated with specialized courts, as the United States tends to value generalist judges, a preference which harms therespect such courts obtain and the qualifications of the people willing to join as judges.
122. Bruff, supra note 68, at 331. But cf. Cheng, supra note 82, at 533-40 (pointing out that many judges tend to specialize de facto on generalist courts of appeals).
123. See Dreyfuss, supra note 68, at 25-28 (discussing criticisms of Federal Circuit as propatentee court).
124. See id. at 28 (contending that Federal Circuit is not as biased toward patentees as critics argue). The doctrine of equivalents allows [a] patentee to claim those insubstantial alterations that were not captured in drafting the original patent claim but which could be created through trivial changes, Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 733 (2002), so long as they do not intrude on the prior art, Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1361 (Fed. Cir. 2007).
125. See Bruff, supra note 68, at 339 ("[T]he nature of a court's docket should expose the judges to both sides of pertinent controversies").
126. See, e.g., Dreyfuss, supra note 68, at 29 (arguing that "the [Federal Circuit] is a fairly balanced court" that is not very likely to fall captive to special interest groups).
127. See supra note 61 and accompanying text.
128. Cf. Bruff, supra note 68, at 341 (describing risk of capture in court for single industry or agency).
129. Dreyfuss, supra note 68, at 29-30.
130. Although it would seem to make the district courts stronger vis- a-vis the Federal Circuit, I do not explore herein the implications of the Federal Circuit's holding that, unlike the regional circuits, it has no supervisory power over district courts. In re Innotron Diagnostics, 800 F.2d 1077, 1082 (Fed. Cir. 1986).
131. One study shows that litigants demand a jury in seventy-eight percent of terminated patent cases between 1999 and 2000.
132. Kimberly A. Moore, Jury Demands: Who's Asking?,17 BERKELEY TECH. L.J. 847-855 (2002).
133. Dennison Mfg. Co. v. Panduit Corp., 475 U.S. 809 (1986) (per curiam) (citing FED. R.CIV. P. 52(a)).
134. E.g., i4i Ltd. P'ship v. Microsoft Corp., 589 F.3d 1246, 1265 (Fed. Cir. 2009).
135. E.g., Bayer Schering Pharma AG v. Barr Labs., Inc., 575 F.3d 1341, 1346 (Fed. Cir. 2009).
136. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1455-1456 (Fed. Cir. 1998).
137. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
138. In re Comiskey, 554 F.3d 967, 975 (Fed. Cir. 2009).
139. In re'318 Patent Infringement Litig., 583 F.3d 1317, 1323 (Fed. Cir. 2009).
140. Hilton Davis Chem. Co. v. Warner-Jenkinson Co., 62 F.3d 1512, 1520-1521 (Fed. Cir.1995) (en banc).
141. In re Fisher, 421 F.3d 1365, 1369 (Fed. Cir. 2005).
142. In re Skvorecz, 580 F.3d 1262, 1266 (Fed. Cir. 2009).
143. Martek Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363, 1369 (Fed. Cir. 2009).
144. N. Telecom Ltd. v. Samsung Elecs. Co., 215 F.3d 1281, 1286 (Fed. Cir. 2000).
145. See John R. Allison & Mark A. Lemley, The (Unnoticed) Demise of the Doctrine.
146. Equivalents, 59 STAN. L. REV. 955, 977-978 (2007) (showing that district courts tend to resolve question of patent infringement based on claim construction); see also infra notes 180-85 and accompanying text).
147. According to the Stanford Intellectual Property Litigation Clearinghouse, 2634 district court patent cases were filed in 2009. Lex Machina, http://www.lexmachina.com(last visited Sept. 21, 2010).
148. District Court Disposition Modes: Patent Cases-FY 2008, http://www.patstats.org/2008fy_Patent_Case_Disposition_Modes.doc (last visited Sept. 12, 2010).
149. A small per centage of cases also terminate in the district court through want of prosecution or the defendant's default. Id.
150. Id. (reporting 11.7% of cases as adjudicated).
151. Paul R. Michel, The Court of Appeals for the Federal Circuit Must Evolve To Meet the
152. Challenges Ahead, 48 AM. U. L. REV. 1177-1193 (1999).
153. See supra notes 96-97 and accompanying text.
154. See, e.g., Massey v. Del Labs., Inc., 118 F.3d 1568, 1572 (Fed. Cir. 1997) (nothing that regional circuit law is applied to procedural questions not unique to patent law).
155. See supra notes 69-75 and accompanying text (discussing reasons for Federal Circuit's creation).
156. See KIMBERLY A. MOORE, PAUL R. MICHEL & TIMOTHY R. HOLBROOK, ATENT LITIGATION AND STRATEGY 93-101 (3d ed. 2008); Moore, supra note 10, at 892.
157. Patentholders also have the choice of bringing an action for injunctive relief before the International Trade Commission (ITC) if they can allege patent infringement based on the importation of foreign goods. 19 U.S.C. § 1337 (2006). Why patentholders choose the ITC over the federal district courts is outside the scope of this Article, although there is an empirical literature on the topic. over.
158. See generally Colleen V. Chien, Patently Protectionist?:An Empirical Analysis of Patent Cases at the International Trade Commission, 50 WM. & MARY L. REV. 63 (2008) (showing, for example, that ITC plaintiffs are more likely to win than district court plaintiffs)
159. David L. Schwartz, Courting Specialization: An Empirica Study of Claim Construction Comparing Patent Litigation Before Federal District Courts and the International Trade Commission, 50 WM. & MARY L. REV. 1699 (2009) (finding that ITC judges do not outperform district court judges in claim construction, at least in regard to Federal Circuit reversal rates).
160. Moore, supra note 10, at 892, 896-897; see also supra Part I.A (describing venue rules
161. for patent litigation).
162. Moore, supra note 10, at 892.
163. See MOORE, MICHEL & HOLBROOK, supra note 116, at 93, 94 tbl.1 (listing as top ten districts Central District of California, Northern District of California, Northern District of Illinois, District of Delaware, Southern District of New York, District of New Jersey, District of Minnesota, District of Massachusetts, Eastern District of Pennsylvania, and Eastern District of Michigan). During this time, the top five districts had 36% of all patent litigation, but only 15.8% of all civil cases. Id. 120 Moore, supra note 10, at 903-07, 905 tbl.2 (showing that high rate of patents granted in district might explain prevalence of patent cases in California from 1995-1999 but not high rate of cases in Virginia or Delaware).
164. Id. at 907.
165. MOORE, MICHEL & HOLBROOK, supra note 116, at 100 & tbl.8.
166. Moore, supra note 10, at 899-900.
167. See generally Mark A. Lemley, Where To File Your Patent Case (unpublished manuscript), available at http://papers.ssrn.com/papers.cfm?abstract_id=1597919 (examining which of these factors are most salient to plaintiffs and presenting empirical data on different district courts' performances on these factors, thereby suggesting which district courts plaintiffs might prefer).
168. Moore, supra note 10, at 920-921, 921 fig.4.
169. Id. at 922-923.
170. Id. at 916-923 (presenting empirical results indicating substantive differences in patent litigation based on chosen venue) see also Kevin M. Clermont & Theodore
171. Moore, supra note 10, at 924.
172. See id. at 924-926.
173. See id. at 927-928.
174. See id. at 897-998 (noting infrequency of transfer motions).
175. Transfer can happen in three ways: The district court in which a case was filed may approve a transfer motion, 28 U.S.C. § 1404 (2006); another court, such as the judicial panel on multidistrict litigation, may do the same, id. § 1407; or an appellate court may issue a writ of mandamus, 16 CHARLES ALAN WRIGHT, ARTHUR R. MILLER & EDWARD H. COOPER, FEDERAL PRACTICE AND PROCEDURE § 3935.4 (2d ed. 1996). When district courts are truly plaintifffriendly, transfer motions are unlikely to be granted.
176. See supra notes 109-12 and accompanying text (noting that approximately 90% of district court cases are settled, and only about half of remainder are appealed to Federal Circuit).
177. Moore D, supra note 10, at 925.
178. Id. at 900 n.48.
179. Id. at 900-901.
180. See id. at 908.
181. See, e.g., Donald R. Dunner, A Retrospective of the Federal Circuit's First 25 Years, 17 FED. CIR. B.J. 127-130 (2007) (noting that Eastern District of Texas is perceived as propatentee)
182. Yan Leychkis, Of Fire Ants and Claim Construction: An Empirical Study of the Meteoric Rise of the Eastern District of Texas as a Preeminent Forum for Patent Litigation, 9 YALE J.L. & TECH. 193, 210-215 (2007) (arguing that juries in Eastern District of Texas are plaintiff friendly).
183. Xuan-Thao Nguyen, Justice Scalia's "Renegade Jurisdiction": Lessons for Patent Law Reform, 83 TUL. L. REV. 111, 136-143 (2008).
184. See infra note 246 and accompanying text (showing that, in disproportion to other districts, almost no declaratory judgment suits for patent noninfringement are filed in Eastern District of Texas, which suggests perception of pro-patentee bias).
185. Forum shopping also places district courts in competition with one another. So long as this competition fosters a race to the top, forum shopping might cause district courts to develop useful rules to attract litigation.
186. See, e.g., Moore, supra note 10, at 932-34 (arguing for specialized court, but noting that Congress is unlikely to act soon).
187. See id. at 924-25 (discussing inefficiencies and perceived injustice of forum shoppping).
188. Justice Scalia's "Renegade Jurisdiction": Lessons for Patent Law Reform
189. Id. at 932-933.
190. See supra notes 81-86 and accompanying text. There is an additional concern about the potential for a loss of prestige for judges serving on a specialized court. See supra note 86.
191. Moore, supra note 10, at 934.
192. See In re Nintendo Co., 589 F.3d 1194, 1201 (Fed. Cir. 2009) (granting writ); In re Hoffman-La Roche, Inc., 587 F.3d 1333, 1335 (Fed. Cir. 2009) (same); In re Genentech, Inc., 566 F.3d 1338, 1349 (Fed. Cir. 2009) (same); In re TS Tech USA Corp., 551 F.3d 1315, 1323 (Fed. Cir. 2008) (same). Because transfer is a nonpatent issue, the Federal Circuit applies regional circuit law when considering a request for transfer. Nintendo, 589 F.3d at 1197. Fifth Circuit case law thus enables the granting of a writ of mandamus, In re Volkswagen of Am., Inc., 545 F.3d 304 (5th Cir. 2008) (en banc), although many other circuits do not grant venue transfers as liberally.
193. See Benjamin P. Freedland & James D. Peterson, Motions To Transfer After In re Genentech:The Effect of Federal Circuit Writs of Mandamus on Western District Litigation, GODFREY & KAHN (Mar. 2010), http://www.gklaw.com/resources/documents/IPUpdate031810.pdf (suggesting that Seventh Circuit would not grant transfer as readily as Fifth Circuit).
194. Moore, supra note 10, at 934; see also Dreyfuss, supra note 10, at 805 (reviewing and adopting Moore's views).
195. Moore, supra note 10, at 934.
196. See Arti K. Rai, Specialized Trial Courts: Concentrating Expertise on Fact, 17 BERKELEY TECH. L.J. 877, 891-895 (2002) (discussing challenges and potential solutions for trial courts facing technical evidence).
197. See id. (describing dangers of factual errors).
198. See, e.g., Steve Seidenberg, Patent Rocket Docket: Patent Holders Choose the International Trade Commission for Fast, Powerful Results, 93 A.B.A. J., Jan. 2007, at 38, 38 (noting that unlike ITC judges, district court judges lack expertise in patent claim construction).
199. Craig Allen Nard, Legal Forms and the Common Law of Patents, 90 B.U. L. REV. 51-53 (2010).
200. See infra Part II.C.
201. See supra Part I.C.
202. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
203. Markman v. Westview Instruments, Inc., 517 U.S. 370-388 (1996) (internal quotation marks omitted).
204. Id. at 389-390.
205. Rai, supra note 149, at 878; accord Revesz, supra note 64, at 1117 (noting that nonspecialized courts may not make correct decisions due to technical complexity of facts in patent cases).
206. See HENRY J. FRIENDLY, FEDERAL JURISDICTION: A GENERAL VIEW 156-157 (1973)
207. ([T]he courts must also deal today with a great number of patents in the higher reaches of electronics, chemistry, biochemistry, pharmacology, optics, harmonics and nuclear physics, which are quite beyond the ability of the usual judge to understand without the expenditure of an inordinate amount of educational effort by counsel and of attempted selfeducation by the judge.).
208. See Bruff, supra note 68, at 334 (criticizing fact that "many complicated fact issues are decided in the generalized district courts")
209. David L. Schwartz, Practice Makes Perfect?: An Empirical Study of Claim Construction Reversal Rates in Patent Cases, 107 MICH. L. REV. 223, 260-261 (2008) ("The issues in a typical patent case may be so complex that legal minds without a background in science cannot appropriately resolve them.").
210. See Dreyfuss, supra note 68, at 74 ("[W]hen the law is clear but difficult to apply to complex factual situations, the place to specialize is at the trial.").
211. See Rai, supra note 149, at 890 (describing Judge Kozinski's critique of Daubert's requirement that judges make determinations as to what constitutes "good science").
212. See id. at 895 ("[J]uries are highly suspect as finders of scientific fact"). For an exploration of the jury's role in patent cases, see generally Fromer, supra note 12, at 7-8.
213. See Arti K. Rai, Engaging Facts and Policy: A Multi-institutional Approach to Patent
214. System Reform, 103 COLUM. L. REV. 1035, 1097-1098 (2003) (arguing that generalist courts that see few patent cases are "uncomfortable dealing with the intricacies of patent litigation").
215. See id. at 1097 ([G]eneralist trial judges also have significant limitations. The infrequent nature of patent litigation makes it unlikely that the typical district judge will see more than a few patent cases over the course of her tenure.).
216. See Jeff Becker, Comment, On Creating Specialized Patent District Courts: Why H.R. 34 Does Not Go Far Enough To Address Reversal Rates in District Courts, 61 SMU L. REV. 1607-1608 (2008) (discussing congressional bill aimed at "reduc[ing] the outrageous
217. number" of Federal Circuit reversals by "creating more expertise and experience among district court judges").
218. Some empirical work finds a 22% reversal rate for district courts' patent decisions. Moore, supra note 5, at 397. This number has been found to be significantly higher for certain patent issues, such as claim construction. See supra text accompanying notes 6-7.notes.
219. Schwartz, supra note 160, at 225-226.
220. It might be that the Federal Circuit does not have the same factfinding capabilities as a district court, which are fundamental to claim construction and other patent law issues. See infra notes 199-200; see also Schwartz, supra note 116, at 1732 (noting that administrative law judges have more factfinding experience than Federal Circuit). Alternatively, district courts may use different information and processes than the Federal Circuit to reach their conclusions.
221. Jeffrey A. Lefstin, Claim Construction, Appeal, and the Predictability of Interpretive Regimes, 61 U. MIAMI L. REV. 1033-1050 (2007).
222. Cf. Dreyfuss, supra note 10, at 805 (If patent litigation were concentrated in a limited number of district courts, each court could acquire a degree of expertise in patent matters without sacrificing its generalist perspective.).
223. Id. at 802-804.
224. Id. at 802-803; cf. Rai, supra note 164, at 1037 (criticizing Federal Circuit's "adoption of bright-line rules that are insensitive both to technological fact and to related issues of innovation policy").
225. Dreyfuss, supra note 10, at 803
226. accord Timothy R. Holbrook, Substantive Versus Process-Based Formalism in Claim Construction, 9 LEWIS & CLARK L. REV. 123-133 (2005) (noting also that Federal Circuit doctrine is "more suspect" to Supreme Court because of its focus on formulaic rules)
227. John R. Thomas, Formalism at the Federal Circuit, 52 AM. U. L. REV. 771 (2003) (casting "wary eye" on Federal Circuit's bright-line approach).
228. th Cong. § 1 (2007) (permitting judges in certain larger districts with many patent cases to option or out of patent cases, to secure specialized training related to patent law and technologies, and to hire technically proficient law clerks); FRIENDLY, supra note 159, at 156-61 (urging creation of specialized court populated with judges expert in various patented technologies).
229. Becker, supra note 166, at 1626-1627 (recommending specialized patent judges for those districts busiest with patent litigation)
230. Donna M. Gitter, Should the United States Designate Specialist Patent Trial Judges?, 10 COLUM. SCI. & TECH. L. REV. 169-173 (2009) (urging designation of specialized patent trial judges in district courts).
231. See, e.g., Thomas Chen, Note, Patent Claim Construction: An Appeal for Chevron Deference, 94 VA. L. REV. 1165, 1207-1208 (2008).
232. Id. at 1208.
233. See supra notes 81-86 and accompanying text.
234. Finally, diminished prestige potentially associated with a specialized court might mean that the court's judicial candidates may not be as credentialed as other courts' candidates.
235. See supra note 173. In fact, these schemes can work beneficially in tandem with this Article's proposal.
236. The same is true of potential loss of prestige.
237. Rai, supra note 149, at 879; cf. Chen, supra note 174, at 1167 (proposing that Chevron deference is the proper appellate standard of review for patent claim construction, given indeterminacy in claim language and inefficiency of de novo review).
238. See S. Jay Plager, Challenges for Intellectual Property Law in the Twenty-First Century: Indeterminacy and Other Problems, 2001 U. ILL. L. REV. 69-71 (noting importance of claim construction).
239. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 986 (Fed. Cir. 1995) (en banc).
240. Lauren Maida, Note, Patent Claim Construction: It's Not a Pure Matter of Law, So Why Isn't the Federal Circuit Giving the District Courts the Deference They Deserve?, 30 CARDOZO L. REV. 1773, 1795-1801 (2009) (arguing that district courts may be better suited for claim construction when factual inquiries are involved).
241. See Dreyfuss, supra note 10, at 802 (describing factfinding in patent cases).
242. The issue of de novo review of claim construction was a key point of contention in the denial of rehearing en banc in Amgen Inc. v. Hoechst Marion Roussel, Inc., 469 F.3d 1039 (Fed. Cir. 2006).
243. See id. at 1040 (Michel, J., dissenting) ("I have come to believe that reconsideration [of our rule of de novo review for claim construction] is appropriate and revision may be advisable.").
244. id. at 1044 (Rader, J., dissenting) ("I urge this court to accord deference to the factual components of the lower court's claim construction.");
245. id. at 1045 (Gajarsa, Linn, and Dyk, JJ., concurring) ("In an appropriate case we would be willing to reconsider limited aspects of [our approach to claim construction].");
246. id. at 1045-1046 (Moore, J., dissenting) ("I believe this court should have taken this case en banc to reconsider its position on deference to district court claim construction").
247. Following the Supreme Court's holding in Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), that claim construction is not a jury question because it is not analogous to any jury question at the United States's founding, the Federal Circuit leaped to the conclusion that the Markman rule requires that claim construction be a purely legal question.
248. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454-56 (Fed. Cir. 1998). That leap of logic was unwarranted, as something could be both a nonjury and factual question. See Cybor, 138 F.3d at 1473 (Rader, J., dissenting) (noting that Supreme Court's decision in Markman focused on jury element, not on whether question was legal or factual).
249. Rai, supra note 149, at 885-886.
250. See supra note 155 and accompanying text.
251. In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993).
252. Rai, supra note 149, at 885-887 (citing Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 762-65 (Fed. Cir. 1988), and N. Telecom, Inc. v. Datapoint Corp., 908 F.2d 931, 933 (Fed.Cir. 1990)).
253. Peter Zura, Looking for Fire Amidst the Smoke-Is the Federal Circuit Really Exceeding Its Appellate Authority in Patent Infringement Cases?, 12 U. BALT. INTELL.PROP. L.J. 1-22 (2003).
254. See, e.g., Dreyfuss, supra note 68, at 49-50 (arguing that clearly erroneous standard of review for factual determinations interferes with the [Federal Circuit's] ability to bring uniformity to patent law).
255. See id. at 47-48 (noting that Federal Circuit is at least as well prepared as trial court to establish facts in patent cases because trial judges are generalists while appellate judges have expertise in technical factual areas).
256. Looking for Fire Amidst the Smoke-Is the Federal Circuit Really Exceeding Its Appellate Authority in Patent Infringement Cases?
257. see also Rochelle Cooper Dreyfuss, The Federal Circuit: A Continuing Experiment in Specialization, 54 CASE W. RES. L. REV. 769, 797-798 (2004) (describing Federal Circuit's encroachment on factual questions);
258. Rai K, supra note 149, at 879 (empathizing with Federal Circuit's attempt to conduct more searching review).
259. Dreyfuss, supra note 68, at 73-74.
260. Id. at 74.
261. See supra text accompanying notes 149-169.
262. See Schwartz, supra note 160, at 264 (In contrast to the 'cold' appellate record, district court judges often hear live or video testimony, have better access to the evidence, and are in a better position to judge credibility issues.).
263. See Rai, supra note 149, at 879 ("[T]here are sound institutional reasons for the conventional division of labor that gives trial courts primary responsibility for questions of fact").
264. Moreover, while Federal Circuit judges might know patent law very well, they are not as expert in the technical facts at issue in patent cases. A minority of the Federal Circuit's active judges have technical backgrounds. Id. Even those who do cannot be expected to have any depth of understanding of scientific or technical areas beyond their training.
265. Id. at 884-885.
266. See id. ("Even though infringement is, under the Federal Circuit's own jurisprudence, a factual issue, the Federal Circuit is often reluctant to remand for a new trial on infringement.").
267. Dreyfuss, supra note 68, at 73-74.
268. Id. at 74.
269. See supra text accompanying notes 149-169.
270. See Schwartz, supra note 160, at 264 (In contrast to the 'cold' appellate record, district court judges often hear live or video testimony, have better access to the evidence, and are in a better
271. See Rai, supra note 149, at 879 ("[T]here are sound institutional reasons for the conventional division of labor that gives trial courts primary responsibility for questions of fact.").
272. Moreover, while Federal Circuit judges might know patent law very well, they are not as expert in the technical facts at issue in patent cases. A minority of the Federal Circuit's active judges have technical backgrounds. Id. Even those who do cannot be expected to have any depth of understanding of scientific or technical areas beyond their training.
273. Id. at 884-885.
274. See id. (Even though infringement is, under the Federal Circuit's own jurisprudence, a factual issue, the Federal Circuit is often reluctant to remand for a new trial on infringement.).
275. Dreyfuss, supra note 68, at 73-74.
276. Id. at 74.
277. See supra text accompanying notes 149-169.
278. See Schwartz, supra note 160, at 264 (In contrast to the cold' appellate record, district court judges often hear live or video testimony, have better access to the evidence, and are in a better position to judge credibility issues.).
279. See Rai, supra note 149, at 879 ("[T]here are sound institutional reasons for the conventional division of labor that gives trial courts primary responsibility for questions of fact.).
280. Moreover, while Federal Circuit judges might know patent law very well, they are not as expert in the technical facts at issue in patent cases. A minority of the Federal Circuit's active judges have technical backgrounds. Id. Even those who do cannot be expected to have any depth of understanding of scientific or technical areas beyond their training.
281. Id. at 884-885.
282. See id. (Even though infringement is, under the Federal Circuit's own jurisprudence, a factual issue, the Federal Circuit is often reluctant to remand for a new trial on infringement.).
283. Dreyfuss D, supra note 10, at 805
284. Moore, supra note 10, at 934.
285. Rai, supra note 164, at 1097-1101.
286. See generally 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) (discussing a model for specialized courts).
287. See infra notes 263-67 and accompanying text.
288. The Supreme Court recently ruled that for the purpose of diversity jurisdiction, the principal place of business of a corporation is its nerve center, that is, where a corporation's officers direct, control, and coordinate the corporation's activities. Hertz Corp. v.
289. Friend, 130 S. Ct. 1181, 1192 (2010). For individual defendants, constrained venue ought to be based on their residence.
290. See infra notes 254-55 and accompanying text.
291. This aspect is similar to the current general venue provision for foreign defendants. See supra note 56 and accompanying text. An alternative proposal is to require suit in the principal place of business of a domestic plaintiff. This would ensure that patent venue rules do not promote forum shopping for either foreign or domestic defendants.
292. Cf. Kimberly A. Moore, Xenophobia in American Courts, 97 NW. U. L. REV. 1497-1504 (2003) (demonstrating "a substantial disparity in domestic and foreign party success in jury trials" in patent cases).
293. Moreover, it would nudge these cases into beneficial technology clusters of patent litigation. See infra notes 249-50 and accompanying text (noting that plaintiffs and defendants are often competitors within same industry).
294. Rai, supra note 164, at 1037-1038.
295. BURK & LEMLEY, PATENT CRISIS, supra note 12, at 42-47
296. see also Nancy Olson, Comment, Does Practice Make Perfect?: An Examination of Congress's Proposed District Court Patent Pilot Program, 55 UCLA L. REV. 745-762 (2008) ([S]ubstantive specialization will be difficult to achieve in practice, as patent cases will rarely ever be exactly the same. While the underlying patent law is the same, the technologies vary widely.).
297. The Federal Circuit, as an appellate court, is in a different position because it must take a bird's-eye view with regard to questions of law that apply across technologies and industries.
298. Cf. Hee-Dong Yang & Youngjin Yoo, It's All About Attitude: Revisiting the Technology
299. Acceptance Model, 38 DECISION SUPPORT SYS. 19-20 (2004) (suggesting that greater exposure to, and thus knowledge of, technology encourages acceptance of that technology).
300. Cf. Press Release, LegalMetric, LegalMetric Finds Judges' Experience Does Not
301. Help in Patent Cases (Aug. 22, 2006), available at http://www.eworldwire.com/pdf/15326.pdf (highlighting study showing that Federal Circuit is less likely to reverse patent decisions by judges with experience in science or technology).
302. There could be horizontal benefits as well, in that district courts could more comfortably turn to one another's decisions for guidance, to the extent that those decisions will be applicable across industry clusters.
303. See generally THE ECONOMIC GEOGRAPHY OF INNOVATION (Karen R. Polenske ed., 2007) (tracing theme of how technology, innovation, and alternative means of transferring knowledge are changing spatial relationships among firms).
304. MICHAEL E. PORTER, THE COMPETITIVE ADVANTAGE OF NATIONS 148-159 (1998) (The phenomenon of industry clustering is so pervasive that it appears to be a central feature of advanced national economies.)
305. Michael E. Porter, Location, Competition, and Economic Development: Local Clusters in a Global Economy, 14 ECON. DEV. Q. 15 (2000) [hereinafter Porter, Economic Development] ("Clusters are a striking feature of virtually every national, regional, state, and even metropolitan economy, especially in more advanced nations.").
306. Economists are convinced that industries will continue to cluster geographically even as the Internet enables transactions from diverse physical locations.
307. Edward E. Leamer & Michael Storper, The Economic Geography of the Internet Age, 32 J. INT'L BUS. STUD. 641-643(2001).
308. Porter, Economic Development, supra note 215, at 21.
309. See id. at 21-25 (discussing collateral benefits that accrue from concentration of firms).
310. 28 U.S.C. § 134(b) (2006).
311. Id. § 1865(b)(1).
312. Potential jurors with too much familiarity with a technology or industry, of course, might be struck from the jury for being partial. Cf. Malone v. Vasquez, 138 F.3d 711, 720 & n.13 (8th Cir. 1998) (holding that prosecutor's experience [that] it was not a good idea to have jurors who were familiar with the area of a crime was sufficient, race-neutral reason for peremptory strike).
313. Cf. Cheng, supra note 82, at 547 (noting that judges on D.C. Circuit tend to specialize along subtle lines related to particular industries in which they have experience). Of course, a particular judge or juror might not be particularly knowledgeable about the relevant technology (say, a juror hailing from the wine region of Napa Valley in a software patent case in the Northern District of California), but the assumption that local jurors will have more expertise in that area's industries ought to hold on average.
314. Cf. Creswell, supra note 2, at 1 (depicting rise of patent bar in Marshall, Texas, to accommodate then-increasing number of patent filings in Eastern District of Texas).
315. See Becky Thorson, Intellectual Property Law, FED. LAW., Nov./Dec. 2009, at 4, 5 (citing local patent rules).
316. See supra notes 123, 137, and accompanying text (citing local rules as one consideration for plaintiffs in selecting forum). For a recent article arguing that local patent rules help facilitate bottom-up patent reform.
317. see Xuan-Thao Nguyen, Dynamic Federalism and Patent Law Reform, 85 IND. L.J. 449 (2010).
318. See O2 Micro Int'l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1366-67 (Fed. Cir. 2006) (Decisions enforcing local rules in patent cases will be affirmed unless clearly unreasonable, arbitrary, or fanciful; based on erroneous conclusions of law; clearly erroneous; or unsupported by any evidence
319. See Cluster Profiles Project, HARVARD BUSINESS SCHOOL INSTITUTE FOR STRATEGY AND COMPETITIVENESS, http://data.isc.hbs.edu/cp/index.jsp (last visited Sept. 12, 2010)(presenting data on various technology clusters, including life span of cluster).
320. Sidney A. Rosenzweig, Progress & Freedom Found., Patent Venue Reform: Congress akes Two Steps Back, PROGRESS ON POINT, Feb. 2009, at 1, 9-10, available at http://www.pff.org/issues-pubs/pops/2009/pop16.4patentvenue.pdf.
321. MOORE, MICHEL& HOLBROOK, supra note 116, at 94 tbl.1.
322. Michael Simons, David Lawrence & Marwan Elrakabawy, Patent Litigation Venue, TEX. LAWYER, Dec. 21, 2009, available at http://www.akingump.com/files/Publication/5863f425-9c2d-4a66-9562-633b12 55278d/Presentation/PublicationAttachment/f244d8df-355b-4f5f-8864-e96e37 780050/SimonsTexas Lawyer 2009.pdf.
323. Gina Carter, "Rocket Docket" Speeds Patent Infringement Suits, WIS. TECH. NEWS (Mar. 14, 2007), http://wistechnology.com/articles/3771.
324. Leychkis D, supra note 136, at 210.
325. Moore, supra note 10, at 915-16 & n.84 (highlighting Eastern District of Virginia's increased willingness to transfer out patent cases); see also supra note 146 and accompa nying text (noting that Federal Circuit has recently been ordering transfers from Eastern District of Texas more frequently).
326. On the other hand, some technological areas will die off over long periods of time or become less popular and be supplanted by others. As geographic industry or technology clusters evolve, so too will district court patent litigation clusters under my proposed venue rule. This flexibility is useful, as it avoids the solidification of certain districts as strictly patent litigation districts. Some proposals for specialized patent trial courts lack this salutary effect.
327. See supra Part II.C; cf. Rai, supra note 164, at 1041 (If greater fact-finding and policy application expertise were vested at the administrative and trial court levels, the role of appellate review within the patent system could substantially be reconceived.).
328. See Dreyfuss D, supra note 194, at 784 (noting that procedures interfering with district courts also drive uniformity).
329. See Rai, supra note 149, at 884-885 (describing this domino effect).
330. See Peter Lee, Patent Law and the Two Cultures, 120 YALE L.J. (forthcoming 2010)
331. (manuscript at 18) (describing formalistic practices of Federal Circuit), available at http://papers.ssrn.com/papers.cfm?abstract_id=1500050.
332. Even if my proposal does not encourage the Federal Circuit to recharacterize as factual a number of issues currently labeled as legal, the district courts would provide better decisions to the Federal Circuit for review, both in the sense of factual precision and legal insight. Alternatively, Congress might amend the patent laws to include more appropriate standards of review to require the Federal Circuit to recharacterize a number of issues as factual.note.
333. See Fromer, supra note 12, at 13 (noting importance of deference).
334. Nard & Duffy, supra note 76, at 1620-1621.
335. Cf. Amanda Frost, Overvaluing Uniformity, 94 VA. L. REV. 1567, 1570-1571 (2008) (questioning intrinsic value of uniformity in judicial interpretation of federal law);
336. Nard & Duffy, supra note 76, at 1630 (suggesting that more appellate voices in patent law would create competition for quality patent decisions).
337. Dreyfuss, supra note 10, at 805
338. see also Cheng D, supra note 82, at 552-554 (theorizing that de facto opinion specialization in courts of appeals escapes problem of tunnel vision because "judges continue to handle diversified dockets")
339. Dreyfuss, supra note 194, at 798-799 (suggesting designation of one district court per regional circuit to handle all patent litigation to develop expertise).
340. Dreyfuss, supra note 10, at 804
341. accord Rai D, supra note 149, at 880 ([G]iven that we already have a specialized appellate court for patents, creating a trial court that focused specifically on patents might unduly sacrifice breadth of vision on the altar of expertise.).
342. Harnessing patentography also avoids the potential problem of a loss of prestige for specialized courts, as courts with litigation clusters are not fully specialized but merely have more patent cases of the same type.
343. Cf. Cheng, supra note 82, at 554 (arguing that prestige concern does not affect de facto opinion specialization in courts of appeals).
344. Judicial Improvements Act of 1990, Pub. L. No. 101-650, § 311, 104 Stat. 5089, 5114 (codified as amended at 28 U.S.C. § 1391 (2006)); see supra text accompanying note 33 (describing defendants' convenience as major purpose of venue statutes).
345. By contrast, in 9.43% of cases, the plaintiff and defendant both have their principal place of business in the district of suit; in 15.77% of cases, the defendant but not the plain tiff has its principal place of business in the district of suit; and in 27.48% of cases, neither the plaintiff nor the defendant has its principal place of business in the district of suit. Moreover, in this sample, there is incomplete diversity: In 12.77% of cases, at least one plaintiff and one defendant have the same district as their principal place of business.
346. See PETER S. MENELL, LYNN H. PASAHOW, JAMES POOLEY & MATTHEW D. POWERS, PATENT CASE MANAGEMENT JUDICIAL GUIDE 2-45 tbl.2.7 (2009) (categorizing patent case types).
347. See generally Colleen V. Chien, Of Trolls, Davids, Goliaths, and Kings: Narratives and Evidence in the Litigation of High-Tech Patents, 87 N.C. L. REV. 1571 (2009) (presenting empirical study of high-technology patent lawsuits to reveal proportion of various patent litigation archetypes).
348. See MENELL, PASAHOW, POOLEY, & POWERS, supra note 247, at 2-45 tbl.2.7 (discussing common settlement issues for different patent case archetypes). For example, pharmaceutical companies are unlikely to settle unless they can maintain some form of exclusivity, id. at 2-47, while competitors in litigation over non-core technology are likely to settle early on in litigation,
349. id. at 2-45.
350. See James Bessen & Michael J. Meurer, Lessons for Patent Policy from Empirical
351. Research on Patent Litigation, 9 LEWIS & CLARK L. REV. 1-12 (2005) (We conjecture that the majority of patents held by large firms and a significant fraction of patents held by small firms are used within the industries that the firms occupy. If true, then exclusion and licensing of competitors is the dominant source of patent value.).
352. Moreover, even though the Federal Circuit should review cases under a more deferential standard, it might still detect and reverse biased decisions by triangulating between different district court decisions. Such triangulation would be particularly effective when an industry clusters in several different geographic areas because such clustering should lead to multiple semispecialized district courts. That said, on this metric, specialized trial courts might do better because they could be structured to see the full range of cases and not a possibly biased geographic sliver. Specialized courts, however, are prone to the perhaps more troubling bias of tunnel vision, especially as compounded by their appellate review by another specialized court.
353. Cheng, supra note 82, at 552.
354. See supra note 246 (noting specific percentage as 9.43%).
355. See Dreyfuss, supra note 68, at 71 (discussing well-heeled nature of litigants in relation to travel costs for argument at Federal Circuit in Washington, D.C.). That said, district court travel is typically more intensive, especially for fact-heavy trials, than the travel required for a brief oral argument before the Federal Circuit.
356. Microsoft Corporation, Fast Facts About Microsoft, http://www.microsoft.com/presspass/Inside_ms.mspx (last visited Sept. 12, 2010).
357. John C.P. Goldberg, The Constitutional Status of Tort Law: Due Process and the
358. Right to a Law for the Redress of Wrongs, 115 YALE L.J. 524-529 (2005) (positing that right to due process "should be judicially enforced by establishing meaningful but capacious limits on the ways in which, and the reasons for which, legislatures may undertake plaintiff-unfriendly tort reform").
359. See Sam Stake, In re Comiskey and E-Commerce Patentability, 90 J. PAT. & TRADEMARK OFF. SOC'Y 148-158 & n.34 (2008) (noting "the difficulty of distinguishing between fields of technology").
360. See 13 CHARLES ALAN WRIGHT, ARTHUR R. MILLER, EDWARD H. COOPER & RICHARD D. FREER, FEDERAL PRACTICE AND PROCEDURE § 3505 (3d ed. 2008) (citing 28 U.S.C. § 133(a) (2006)) (describing increase in number of federal district judgeships in 2002).
361. See id. (citing 28 U.S.C. § 631(a)).
362. To join an additional defendant, a plaintiff merely needs some factual basis common to all parties and an arguable common transaction or occurrence to support joinder
363. CHARLES ALAN WRIGHT, ARTHUR R. MILLER & MARY KAY KANE, FEDERAL PRACTICE AND PROCEDURE § 1653 (3d ed. 2001) (citing FED. R. CIV. P. 20).
364. See 28 U.S.C. § 1404(a) (For the convenience of parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or division where it might have been brought.).
365. See supra notes 215-17 and accompanying text.
366. In the more likely case that patent pirates still want to locate themselves in existing industry clusters, they might choose to situate themselves just outside of the cluster's associated district. For instance, given the intense industry cluster of pharmaceutical companies in the District of New Jersey, generic drug companies might want to set up in the nearby Eastern District of Pennsylvania. In this way, they could take advantage of geographic industry clustering but open themselves up for suit only outside the patent litigation cluster. In these instances, the Federal Circuit similarly ought to negate any resulting biases. Thus, the Federal Circuit would compare the arguments of generic drug companies in the Eastern District of Pennsylvania and nongeneric pharmaceutical companies in the District of New Jersey to suss out the relative contributions of each to innovation and then craft an appropriate legal rule that binds both districts.
367. Patent Reform Act of 2006, S. 3818, 109th Cong. § 8(a) (2006).
368. Todd J. Zywicki, Is Forum Shopping Corrupting America's Bankruptcy Courts?, 94 GEO. L.J. 1141-1157 (2006) (reviewing LYNN M. LOPUCKI, COURTING FAILURE: HOW COMPETITION FOR BIG CASES IS CORRUPTING THE BANKRUPTCY COURTS (2005)).
369. H.R. 2795, 109th Cong. § 9 (as offered by Rep. Smith as an amendment in the nature of a substitute, June 8, 2005), available at http://www.jonesday.com/files/upload/AmendedSmithBill.pdf (uploaded July 26, 2005);
370. see also Amendment in the Nature of a Substitute to H.R. 2795, the Patent Act of 2005: Hearing Before the Subcomm. on Courts, the Internet and Intellectual Prop. of the H. Comm. on the Judiciary, 109th Cong. 35 (2005) (testimony of Prof. John R. Thomas) (describing competing venue provisions, including provision cited above). The provision was added to a draft of the legislation after the amendment's introduction but before hearings on the bill. Id. at 9 (testimony of Philip S. Johnson) (noting continuing work on venue portion of bill). The bill ultimately died in committee.
371. Library of Congress, Bill Summary & Status-109th Congress (2005-2006)-H.R. 2795 (2005), http://thomas.loc.gov/cgi-bin/bdquery/z?d109:HR02795:@@@X.
372. Patents Depend on Quality Act of 2006, H.R. 5096, 109th Cong. § 7 (2006).
373. Establishing a Pilot Program in Certain District Courts, H.R. 34, 110th Cong. § 1(f) (2007). That same legislation also proposed a scheme to appoint patent-versed district court judges to patent cases.
374. See Gitter, supra note 173, at 173. Scholars also suggest other ways to improve the capability of district courts to handle patent cases, such as nominating judges or appointing magistrates with patent or technical expertise in patent-heavy district courts. See Edward V. Di Lello, Note, Fighting Fire with Firefighters: A Proposal for Expert Judges at the Trial Level, 93 COLUM. L. REV. 473 (1993) (supporting appointment of magistrates with technical expertise).
375. Using this set of cases will not preclude this proposal's relevance to the whole of patent law, given that the vast majority of patents are utility patents (as opposed to design patents).
376. Kristen Osenga, Entrance Ramps, Tolls, and Express Lanes-Proposals for Decreasing Traffic Congestion in the Patent Office, 33 FLA. ST. U. L. REV. 119-153 (2005).
377. The Stanford Intellectual Property Litigation Clearinghouse was designed to make IP litigation more transparent by offer[ing] the most comprehensive source of data available on more than 100,000 intellectual property cases.
378. Stanford IP Litigation Clearinghouse, STANFORD LAW SCHOOL, http://www.law.stanford.edu/program/centers/iplc/ (last visited Sept. 12, 2010). In cases in which there was no electronic filing of the relevant documents, I acquired this information instead through a copy of the most recent complaint from the court in which it was filed.
379. When the Clearinghouse does not contain information about a corporate party's principal place of business, I got that information instead from third-party company profile databases, such as Hoover's or Business Week, from the corporate party's own website, or from information in the patent at issue in the case if the party was the patentholder.
380. Because the cases are from 2005 and most of these supplementary sources of data were current as of 2009, it is possible in a very small number of cases that the company changed its principal place of business, rendering the recorded principal place of business incorrect for 2005. I use technology classifications rather than industry classifications.
381. Cf. John R. Allison, Mark A. Lemley & Joshua Walker, Extreme Value or Trolls on Top?: The Characteristics of the Most-Litigated Patents, 158 U. PA. L. REV. 1, 17 (2009) (noting that industry and technology can "diverge-a software invention may be used in any number of industries, some traditionally considered computer-related but others entirely divorced from it, such as automobiles or bioinformatics").
382. Nonetheless, there is typically a good deal of overlap between technologies and industries. Moreover, given that industries tend to cluster, if the technological classes demonstrate clustering in a district corresponding to the district's clustered industries, the technology-to-industry mapping will be fruitful for indicating cluster districts.
383. See supra notes 215-17 and accompanying text (describing clustering).
384. U.S. PATENT & TRADEMARK OFFICE, U.S. Classes by Number with Title, http://www.uspto.gov/web/patents/classification/selectnumwithtitle.htm (last modified July 27, 2010).
385. The PTO continuously revises its classifications. To keep the classes consistent, even though the relevant patents were filed and granted at different times, I used normalized class data for each patent from the National Bureau of Economic Research (NBER) Patent Data Project.
386. See Bronwyn H. Hall, Adam B. Jaffe & Manuel Trajtenberg, The NBER Patent Citations Data File: Lessons, Insights and Methodological Tools 12-13, 41-42 (Nat'l Bureau of Econ. Research, Working Paper No. 8498, 2001) (describing data)
387. Patent Data Project Description, https://sites.google.com/site/patentdataproject/Home/downloads/patn-data -description/classification_06.xls?attredirects=0 (last visited Sept. 12, 2010).
388. Jeanne C. Fromer, supra note 21, at 547 (2009). In previous empirical work, John Allison and Mark Lemley classified patents manually into fourteen categories because they found some suspect classifications under the PTO's system.
389. John R. Allison & Mark A. Lemley, The Growing Complexity of the United States Patent System, 82 B.U. L. REV. 77, 87-90 (2002).
390. Although I see problems in relying on the PTO's classification scheme to help the public find all patents relevant to an area, Fromer, supra note 21, at 585-587, I use it because it is more easily replicable than manual classification and it provides a rough count of the technology covered by the patent claims, even if the classification is occasionally mistaken.
391. The thirty-seven categories are: Agriculture, Food, Textiles; Agriculture, Husbandry, Food; Amusement Devices; Apparel & Textile; Coating Chemical; Communications; Computer Hardware & Software; Computer Peripherals; Drugs; Earth Working & Wells; Electrical Devices; Electronic Business Methods & Software; Electrical Lighting; Furniture, House Fixtures; Gas; Genetics; Heating; Information Storage; Materials Processing & Handling; Measuring & Testing; Metal Working; Miscellaneous-Chemical; Miscellaneous- Drugs & Medical; Miscellaneous-Electrical & Electronic; Miscellaneous- Mechanical; Miscellaneous-Others; Motors, Engines & Parts; Nuclear & X-Rays; Optics; Organic Compounds; Pipes & Joints; Power Systems; Receptacles; Resins; Semiconductor Devices; Surgery & Medical Instruments; and Transportation.
392. See Patent Data Project Description, supra note 272.
393. The six categories are Chemical, Computers & Communications, Drugs & Medical, Electrical & Electronic, Mechanical, and Others.
394. The Growing Complexity of the United States Patent System
395. By simulate, I mean only to suggest that I redistributed the cases hypothetically
396. under my proposed rule.
397. Although not reported, the results are similar for a venue rule requiring suit in the principal place of business of any of the parties.
398. See supra notes 1-2 and accompanying text.
399. On average, each judge in these districts would see a high number of computer and communications patent cases. In 2005, the 14 judges in the Northern District of California would have seen just over 7 cases each, the 27 judges in the Central District of California over 2 cases each, the 22 judges in the Northern District of Illinois almost 2 cases each, the 28 judges in the Southern District of New York over 1 case each, the 17 judges in the District of New Jersey almost 2 cases each, and the 7 judges in the Western District of Washington almost 3 cases each. See also 28 U.S.C. § 133(a) (2006) (allocating number of judges per district).
400. This number underestimates how many cases each judge would hear on average because it does not account for the fact that patent cases are more likely to be brought in certain divisions of a district, meaning the judges in patent-light divisions should probably not be counted in these averages.
401. Because this study is skeptical that the Federal Circuit is giving sufficient deference to district court decisions, I have not used Federal Circuit reversal rates to measure whether the Federal Circuit thinks district courts with natural clusters are outperforming district courts with artificial clusters.
402. Cf. LYNN M. LOPUCKI, COURTING FAILURE: HOW COMPETITION FOR BIG CASES IS CORRUPTING THE BANKRUPTCY COURTS 253 (2005) (criticizing harmful effects of widespread forum shopping in bankruptcy cases and suggesting permanently located specialized courts as solution).
403. George J. Koelzer, Should We Trust Judges with Admiralty Cases?, 34 J. MAR. L. & COM. 159, 159-160 (2003).