" The Federal Circuit as an Institution: What Ought We to Expect? ," 43 Loy. L.A. L. Rev. 827 (2010) Abstract Congress created the U.S. Court of Appeals for the Federal Circuit to alleviate the overcrowded dockets of the regional circuits and to send all patent appeals to one court. The court has achieved many of the goals for which it was created, but it may not be responding effectively to some fields' patent issues. Further, in the last decade the Supreme Court has reversed a very high percentage of the Federal Circuit's patent decisions. In their articles, Professors Cotropia and Wagner dispute some of the criticism that the Federal Circuit has attracted. Cotropia refutes the critics with empirical evidence of the rates of dissents and en banc decisions in the Federal Circuit. Wagner discusses the problems caused by the conflicting roles of the Federal Circuit (decider of cases versus manager of patent law adjudication). This Article posits that patent law must be reinterpreted given the massive changes technology has undergone in the last twenty-eight years. Although either Congress or the Supreme Court could take on a larger role with respect to patent law, this Article argues that the Federal Circuit should take on that role as it is best equipped to handle it. Reprinted by permission of the publisher.

"The Federal Circuit as an Institution: What Ought We to Expect?," 43 *Loy. L.A. L. Rev.* 827 (2010)

									Abstract

Congress created the U.S. Court of Appeals for the Federal Circuit to alleviate the overcrowded dockets of the regional circuits and to send all patent appeals to one court. The court has achieved many of the goals for which it was created, but it may not be responding effectively to some fields' patent issues. Further, in the last decade the Supreme Court has reversed a very high percentage of the Federal Circuit's patent decisions. In their articles, Professors Cotropia and Wagner dispute some of the criticism that the Federal Circuit has attracted. Cotropia refutes the critics with empirical evidence of the rates of dissents and en banc decisions in the Federal Circuit. Wagner discusses the problems caused by the conflicting roles of the Federal Circuit (decider of cases versus manager of patent law adjudication). This Article posits that patent law must be reinterpreted given the massive changes technology has undergone in the last twenty-eight years. Although either Congress or the Supreme Court could take on a larger role with respect to patent law, this Article argues that the Federal Circuit should take on that role as it is best equipped to handle it. Reprinted by permission of the publisher.

Rochelle C. Dreyfuss, The Federal Circuit as an Institution: What Ought We to Expect?, 43 Loy. L.A. L. Rev. 827 (2010)

As both Professors Cotropia and Wagner note in their provocative articles, the Court of Appeals for the Federal Circuit was established to solve two problems in appellate litigation. First, the dockets of the regional circuits were overcrowded with cases, leading to extensive delays in the administration of justice. Second, patent law was in disarray: the different approaches taken by the appellate courts had led to rampant forum shopping and to fears that inventors would choose to keep their work secret rather than risk the vagaries of patent enforcement litigation.' Killing two birds with one stone, Congress created the Federal Circuit Court of Appeals and channeled to the new tribunal patent appeals from the district courts and from the U.S. Court of Customs and Patent Appeals (which had previously reviewed decisions in the U.S. Patent and Trademark Office (USPTO)). The benefits of creating the Federal Circuit were clear. Removing technologically complex cases from the dockets of the regional circuits would free considerable amounts of time for other work. 2 Moreover, the alleged "notorious differences" between the law applied by the USPTO and the law applied by the courts,' along with the diversity of views among the regional circuits, would be obliterated as a single court began to write law applicable throughout the nation. Forum shopping would disappear, and expert adjudication would produce doctrine resonant with the changing needs of the knowledge economy. With greater uniformity and predictability in the law, patents would become the premier vehicle for appropriating the fruits of technological innovation. 4 1. See Hand,J.) ("I cannot stop without calling attention to the extraordinary condition of the law which makes it possible for a man without any knowledge of even the rudiments of chemistry to pass upon such questions as these. The inordinate expense of time is the least of the resulting evils, for only a trained chemist is really capable of passing upon such facts .... ), aff'd in part and rev'd in part, 196 F. 496 (2d. Cir. 1912). 3. Graham v. John Deere Co., 383 U.S. 1, 18 (1966) ("We have observed a notorious difference between the standards [of patentability] applied by the Patent Office and by the courts."). But there were risks associated with departing from the traditional-generalist-approach to federal adjudication. Most significantly, channeling cases to a single circuit violated the practice of allowing the common law to percolate. That practice began when the regional circuits were created and given judicial independence from one another.' It is based on the notion that law evolves through interchange among the regional circuits and experimentation within their territories. Eventually, experience demonstrates which rules work best. At that point, either the regional courts reach consensus or the Supreme Court intervenes and settles the law throughout the nation. However, once adjudication is centralized in a single court, that form of evolution is no longer possible. The Federal Circuit is now over a quarter-century old, and experience suggests that those who were optimistic about the court's creation and those who were pessimistic about the new approach were right. Forum shopping at the appellate level has ended; if there was a flight to trade secrecy, the explosion in patent applications indicates that the situation has been remedied.' At the same time, however, many observers are highly critical of the doctrinal results the Federal Circuit has achieved.' Some criticize the court's failure to respond effectively to the characteristics of individual fields;' others claim that the application of law to fact remains indeterminate.' The Supreme Court is evidently equally doubtful: in the last decade, it has granted certiorari in an unprecedented number of Federal Circuit cases-and reversed or vacated almost every decision."o At bottom, critics are concerned that the court's work product is suboptimalthat its isolation from other areas of the law, and from the wear and tear of debating issues with sister circuits, has stripped it of all incentive to write persuasive opinions or grapple with the broad policy issues a knowledge-based economy generates." The articles that Cotropia and Wagner presented at this symposium paint a sunnier picture. In addition to accepting the view that the Federal Circuit has fulfilled optimists' hopes, these pieces dispute the criticism the court has attracted. They do so, however, in contrasting ways. Cotropia's approach is denial.1 2 He offers two pieces of empirical evidence.' The first is that the Federal Circuit has among the highest rates of dissent in the nation; 4 the second is that it has the lowest rate of en banc decisions." He claims that the first finding demonstrates that isolation has not produced a "myopic view of patent law."" To the contrary, the high dissent rate "push [es] 10. In a three-year period, the Supreme Court considered eight patent cases. against the conclusion that the Federal Circuit experiences groupthink, in which ideas become entrenched and the court acts as a cohesive unit. In comparison with other circuit court judges, Federal Circuit judges think more independently and are willing to express their distinct viewpoints through dissents."" And even though the Federal Rules of Appellate Procedure contemplate that the courts of appeals will use en banc review to converge on a single rule," Cotropia suggests that the Federal Circuit is forging its disagreements into a coherent federal policy "in a relatively untransparent fashion"l 9 -"under the table by slowly steering the law . .. to get in line with current thinking."20 In contrast, Wagner's approach is apologetic: the Federal Circuit's rules may indeed be incoherent, but that is because there are actually two Federal Circuits, one charged with deciding cases; the other, with managing the adjudication of patent law. 21 These roles can conflict. When they do, the court is required to sacrifice doctrinal purity to administrative imperatives-or vice versa. It is, in short, doing the best it can with a schizophrenic mandate. 22 I disagree with both positions: I am not convinced that the empirical data rule out concerns about quality, nor do I think these concerns are excused by the court's conflicting goals. The emergence of empirical research in legal scholarship is a most welcome development, and Cotropia is to be congratulated for his role in bringing this methodology to the patent law literature. Empirical work is, however, a devilish enterprise in the legal sphere. There is little possibility of controlled experimentation, the relationship between the values being measured and the issues of interest can be murky, and the data must be interpreted with care. 23 17. Id. at 821 (footnote omitted). 23. There are also questions of methodology as well as the level of evidence needed to change a law that was itself adopted without a particle of empirical support. Both issues are well beyond the scope of this Commentary. Accordingly, while Cotropia is to be applauded for his attempt to get a handle on the controversy surrounding the Federal Circuit's decision making, his conclusions are not persuasive. First, there is a question as to whether raw comparisons of the dissent or en banc rates in various circuits tells us what we want to know. Each circuit has its own traditions and heritage. 24 And since different areas of the law develop in different ways, the dissent and en banc rates in any circuit can be as much a function of a tribunal's culture and the composition of its docket as it is a demonstration of a unique level of diversity in the viewpoints of its judges. Second, to assess whether the debate among the judges of the Federal Circuit compensates for the absence of percolation among the circuits-that is, to measure the vitality and productivity of the debate-one needs to know more about the dissents and en bancs than their mere numbers. On what issues are the judges disagreeing (substance or procedure or application of law to fact)? How central to the overall operation and efficacy of the patent system are the issues that generate dissent? Do the disagreements mirror the substantive concerns expressed by the critics of the system? What is the degree of polarization (how far do the views of the dissenters differ from those of the majority)? How many issues trigger dissent? Are the judges repeatedly dissenting on the same issues or instead disagreeing on novel issues? What happens after an issue is en banced: do dissents on that topic then disappear? Cotropia tells us little. At one point, he says that the en banc rate may be low because "there exist many disagreements among judges that never rise to the level of prompting en banc review for resolution." 25 That suggests that whatever diversity exists, it is not of a sort that puts important questions into play or is not significant enough to make much difference in outcomes. To the extent that critics are worried about stagnation on key matters, their concerns are not likely to be assuaged if dissents are so insubstantial. And as Cotropia notes, the number of dissents is inflated by the presence of 24. See, e.g., GERALD GUNTHER, LEARNED HAND: THE MAN AND THE JUDGE 515-16 (1994) (noting that during Hand's day, en banc opinions were "scorn[ed]" in the Second Circuit as disruptive and wasteful). 25. Cotropia, supra note 12, at 822. one outlier judge." 6 Although I take his point that there are other steady dissenters, he does not tell us how the Federal Circuit would compare with the other circuits if the outlier dissents were removed. In fact, there may be less divergence in the judges' perspectives than the numbers initially suggest. At the end of the day, it is impossible to know from the data presented whether the judges are generating a healthy number of diverse approaches to important new questions in patent law or are simply being stubborn. 27 The third problem is interpretive. If Cotropia is right that there is significant debate within the Federal Circuit, the paucity of en banc review is quite troubling. The proffered explanation of sub-rosa agreement is not supported by data. That in itself is worrisome in a purportedly empirical article, and especially so because it seems possible to devise techniques for determining whether, in fact, the controversies among the judges resolve over time. To the extent that the judges are not, in fact, reaching consensus on open issues, the apparent improvements in patent litigation may be something of an illusion. While forum shopping may have ended (because there is no longer a choice of forums in which to litigate), the law could still be highly dependent on the panel hearing the case. Finally, Cotropia understands the critique as a fear that the judges are engaged in groupthink, and he is right that his data on dissents demonstrates that the judges' views are not monolithic. 28 But there is a catch. Although the critics are worried about ossification, 29 the core criticism is about outcomes. It is not that the law is stagnating, but rather that it is suboptimaP-that the "group" is not engaged in serious thinking at all, at least not about policy. Certainly, the data is amenable to that interpretation. Thus, while it is likely true that many courts ignore the rule requiring an en banc to change 26. Id. at 820 (noting that Judge Newman had the highest number of dissents, with eighteen, while most other judges had between three and seven dissents). 27. The cases on the written description requirement give us reason to think the latter. The role of this requirement has generated many dissents over the last few years; it remains to be seen precedent, the large number of debates among the Federal Circuit judges, coupled with the low rate of en banc review, suggests that the judges are continually in conflict but fail to frame their disagreements in ways that make en banc review fruitful enough to identify optimal rules on which to converge. What, after all, would count as a fruitful way to resolve judicial conflicts in the Federal Circuit? The standard percolation story assumes that observable differences in regional rules will help courts find the optimal outcome.' But since disagreement among the judges of the Federal Circuit does not produce competing rules in different jurisdictions, that kind of experimentation is not possible. A second approach would be to debate policy-for each judge to articulate the rationale supporting his or her view of the issue under dispute. 32 But while Federal Circuit judges routinely recite policy justifications for the statutory requirements of patent law, they rarely provide policy reasons for their own decisions. Thus, the court has adopted a rather formalistic approach to judging. In fact, some of its members have publicly suggested that it would be wrong to explain (or even to be motivated by) policy." If that is the case, en bancs are, indeed, pointless-mere disputations rather than genuine argument. 34 31. See id. at 701. Golden proposes another approach. He would have the Supreme Court act as "prime percolator" by intervening when consensus in the Federal Circuit began too soon or lasted too long. Id. at 662. This is not the place to comment on Golden's approach, except to say that hitting the "reset button" will not help unless the Federal Circuit is prepared to do what is suggested above: engage in genuine reexamination of underlying principles. Besides, as Mark Janis has noted, a "truly bad Federal Circuit decision is likely to spawn abundant litigation" all on its own. 34. Cf Monty Python, The Argument Clinic, http://www.youtube.com/ watch?v-teMlv3ripSM (last visited Apr. 5, 2010) (Michael Palin: "Argument is an intellectual process, contradiction is just an automatic gainsaying of anything the other person says." John Cleese: "No it isn't." Palin: "Yes it is." Cleese: "Not at all."). Admittedly, Federal Circuit disagreements are more than just contradiction. They tend, however, to feature disputes about which way precedent cuts rather than discussions about new circumstances or national innovation policy. See, for example, In re Dillon, 919 F.2d 688 (Fed. Cir. 1990), where despite policy arguments offered by the dissent, the majority made the disagreement about precedent, forcing the dissent to do the same. Compare id. at 696-98, with id. at 702-16 (Newman, J., dissenting). Indeed, some of the cases the Federal Circuit takes en banc read in exactly this way. Consider, for example, Phillips v. A WH Corp. 35 That case, which concerned the proper methodology for construing claims, produced several opinions. Yet, despite the torrent of ink that has been spilled on theories of statutory construction and contract interpretation-not to mention a Supreme Court case on whether patents are closer to statutes or contracts 36 -not one of the judges invoked those policy discussions. It is no surprise then, that the en banc resolved very little and, as Wagner notes, the debate on claim construction continues." To put this another way, concerns with the Federal Circuit are not merely about the number of conflicting opinions, they are about the court's failure to engage in the judicial function of interpreting statutes, filling in statutory interstices with common law, and most important, agreeing to agree so that the end result is a "rule of law." Nothing in Cotropia's data indicates that the Federal Circuit is doing those things. In fact, his findings are equally (if not more) consistent with the view that each judge locks into a position from which he or she refuses to deviate. THE "Two FACES OF THE FEDERAL CIRCUIT" DEFENSE 3 1 I heartily agree with Wagner that the Federal Circuit is caught in a conflict between two roles. In an article published two years ago, I suggested that the effort to produce predictable law is in tension with the goal of generating law that accurately responds to national needs and policies." Further, I noted that the distortion is particularly acute because the highly expert Federal Circuit is trying to make it easier for lay trial courts to apply technically complex patent law to technologically abstruse facts. 40 But the issue is one of degree. The critique of the Federal Circuit can be reframed as questioning the balance the court has struck among the demands of its various roles. When bright-line rules drive the standard of patentability so low that economists, the Federal Trade Commission, and the National Academies become concerned about impenetrable patent thickets, 4 1 it is time to reconsider the tradeoffs the court has made, even while acknowledging that it faces a difficult task. Indeed, several of the recent Supreme Court reversals and remands can be understood in exactly this way. KSR International Co. v. Teleflex Inc. 4 2 is a good example. The Federal Circuit had created a bright-line rule, called the "TSM test," on nonobviousness.4 It required a challenger wishing to stitch together several pieces of prior art in order to demonstrate obviousness to show that the art included a teaching, suggestion, or motivation to combine.4 That rule was easy for the lower courts to apply and produced predictable results. 4 5 Unfortunately, the predictable result usually pointed to patentability, and that drove the standard of inventiveness down. The Supreme Court reversed the decision not because it thought the TSM test had no place in the analysis-in fact, the Court retained the test-but rather because it thought the approach too rigid. 46 In other words, the Court's view was that predictability and ease of application (in Wagner's words, "managerial considerations") had to give way to the Federal Circuit's lawmaking function. 47 Significantly, the Supreme Court faces the same problem the Federal Circuit does: it must both enunciate federal law and manage adjudication. Yet there are few Supreme Court decisions that simplify substantive doctrine in order to make the job of the lower courts easier. Of course, the Supreme Court does not face the expertise asymmetry with which the Federal Circuit must contend. And there is enough disarray in other federal regimes to suggest that the Supreme Court might, at least on occasion, take a page out of the Federal Circuit's playbook and attend to the difficulties lower courts will face when applying its law. Nonetheless, the usual way in which the Supreme Court guides decision making is instructive: it explains 41. to the lower courts the policies that it is trying to achieve. That form of "management" would serve the Federal Circuit well. More persuasive opinions that better articulate the reasons behind the approach the court chooses would lead to fewer reversals. These opinions would also help the bar's understanding of the law and thus might reduce the number of cases appealed. Of course, the real question is whether any of this matters. After all, Congress's main objectives seem to have been achieved. The regional circuits are no longer swamped. The flight to trade secrecy has ended. There is no forum shopping at the appellate level, and even with the high dissent rate, the range of disagreement on patent law issues in the Federal Circuit is probably narrower than it was among the regional circuits. It is not, however, clear that these were Congress's only goals. Prior to 1952, there were regular reenactments of patent legislation, and by historical standards, a new measure was overdue when the decision was made to create the Federal Circuit. 48 Thus, establishment of the Federal Circuit can be read as a substitute for a new act-as a decision to cede future elucidation of patent principles to a new entity. Reinterpretation of patent law is clearly necessary, for much has changed since 1952 and even since the Federal Circuit was established. The U.S. economy is now based less on manufacturing and more on knowledge production. 4 9 The biotechnology industry exploded; nanotechnology was developed; computer science gave birth to an IT sector that spans a multiplicity of fields, from financial services to biological research. Patenting moved upstream, to cover advances that are fundamental to their fields: genes and proteins, diagnostics, and business methods. These patents are often qualitatively different from the patents that came before. They cover large swaths of innovative opportunities, and some cannot be easily invented around." The business of patenting has also mutated. Universities, patent aggregators, and standard-setting organizations have entered the picture. In some industries, there is a high degree of specialization and therefore lengthy and complicated value-chain licensing." When it comes to adapting the basic doctrines of patent law to deal with these developments, the Federal Circuit's formalistic approach to adjudication creates something of a vacuum. 5 2 Congress usually deals with technologically complex subject matter by delegating authority to administrative agencies;" one can only speculate as to why Congress did not hand patent law over to the USPTO. Perhaps the problem was that the USPTO was established before agencies were given rule-making authority; 54 perhaps Congress thought the USPTO lacked expertise in relevant areas (such as economics);" perhaps the USPTO's close relationships with technology producers, coupled with the absence of contact with technology consumers, made it appear particularly susceptible to capture." Whatever the reason, the USPTO has only recently begun to tiptoe into policy making." Unless (or until) it obtains more authority, it is not an institution capable of keeping the patent regime current with changing needs. Arguably, the Supreme Court could serve instead. 8 As John Duffy has demonstrated, it is certainly possible for the Court, through careful intervention, to maintain close control over patent jurisprudence." And, indeed, because the Court sees the full range of federal issues, it is in the best position to decide overarching policy questions, such as determining the relationship between patent law and antitrust law, 60 identifying the areas where patent law is the right instrument for motivating investment in innovation," 1 or determining the right balance between ease and accuracy in decision making. 62 The Court is, however, too busy to intervene on a regular basis. Furthermore, the Justices have little experience in patent law (indeed, because of the transfer of patent cases to the Federal Circuit, Justice Stevens was the last Justice to have heard patent appeals as a circuit court judge). In contrast, several Federal Circuit judges had developed considerable expertise before ascending the bench;' presumably, the rest are quickly educated through repeated exposure to patent litigation. The richness of the court's docket gives its members ample opportunity to learn about emerging sciences, to consider all of the problems that arise as new technologies interface with patent law, and to intervene effectively. As between the Supreme Court and the Federal Circuit, the latter is therefore the right institution to establish midrange policy-to hone the standard of inventiveness, to determine the appropriate reach of the patentee's right, and to decide on the contours of the defenses to infringement. Admittedly, Congress could instead reassert its authority and enact law that addresses these changes. However, recent experience with patent reform shows the wisdom of the initial decision to leave these issues to the Federal Circuit. Reform has been in the works for half a decade and has gone nowhere, as increasingly deep divisions among the patent industries lead to legislative stalemate. 6 5 In this environment, perseverated disagreements among the judges of the Federal Circuit without meaningful opportunities (or willingness) to agree-or decisions that put managerial concerns over the obligation to engage in lawmaking-do not serve the country well. And that is true even if all of the goals Congress had in 1982 were met. Indeed, Cotropia's data could be used to tell an even more troubling story. One thing the Federal Circuit has learned to do is to write dissents that attract Supreme Court review. 6 6 Thus, even if the court rejects the notion of playing a dispositive policy role in patent adjudication, it could be spurring the Supreme Court to act-that is, it could be teeing up the issues so that the Supreme Court can easily grasp them. But the low en banc rate suggests that the Federal Circuit is unwilling to do that either-indeed, the rate may be low because the court is actively avoiding review. 67 Nor does the Federal Circuit engage with the Supreme Court in other ways. Take the issue of patentable subject matter. In a dissent from the dismissal of certiorari in Laboratory Corp. of America v. Metabolite Laboratories, Inc., Justice Breyer expressed skepticism 2. Cf Parke-Davis & Co. v. H.K. Mulford & Co., 189 F. 95, 115 (S.D.N.Y. 1911) (Learned 5. SeeCircuitCourts of Appeals Act of 1891 (Evarts Act), ch. JAFFE & JOSH LERNER, INNOVATION AND ITS DISCONTENTS: How OUR BROKEN PATENT SYSTEM IS ENDANGERING INNOVATION AND PROGRESS, AND WHAT TO Do ABOUT IT 11-13 (4th ed. 2004). 7. See, e.g., id. at 11-16. See generally NAT'L RESEARCH COUNCIL OF THE NAT'L ACADS., A PATENT SYSTEM FOR THE 21ST CENTURY (Stephen A. Merrill et al. eds., 2004); NAT'L RESEARCH COUNCIL OF THE NAT'L ACADS., REAPING THE BENEFITS OF GENOMIC AND 8. Dan L. Burk & Mark A. Lemley, Is Patent Law Technology-Specific?, 17 BERKELEY TECH. L.J. 1155, 1157 (2002); Dan L. Burk & Mark A. Lemley, Policy Levers in Patent Law, 89 VA. L. REV. 1575, 1648-50 (2003). 9. Kimberly A. Moore, Markman Eight Years Later: Is Claim Construction More Predictable?, 9 LEWIS & CLARK L. REV. Comes of Age, 23 BERKELEY TECH. L.J. 787, 809 (2008) [hereinafter Dreyfuss, Institutional Identity]; Rochelle Cooper Dreyfuss, The Federal Circuit: A Continuing Experiment in Specialization, 54 CASE W. RES. L. REv. 769, 779-80 (2004); Craig Allen Nard & John F. Duffy, 13.Id. at 815-17. 14. Id. at 815, 818. 15. Id. at 817, 822. 16. Id. at 807. . Cotropia, supra note 12, at 810. 29. See, e.g., Golden, supra note 11, at 701. 30. See, e.g., id. at 703 ("[P]atent law may ... become trapped in a suboptimal legal equilibrium."). (Twentieth Century-Fox Film Corp.) (1957). 39. Dreyfuss, Institutional Identity, supra note 11, at 796-800. 40. Id. at 802-04. which featured a concurrence by Judge Dyk (joined by Judge Linn) and dissenting opinions by Judges Newman, Mayer, and Rader.


The Federal Circuit’s Reach as a Specialized Court Beyond Patent Law , in Improving Intellectual Property 138 (Susy Frankel, Margaret Chon, Graeme B. Dinwoodie, Jens Schovsbo et al. eds., 2023)

The Federal Circuit’s Reach as a Specialized Court Beyond Patent Law, in *Improving Intellectual Property* 138 (Susy Frankel, Margaret Chon, Graeme B. Dinwoodie, Jens Schovsbo et al. eds., 2023)

Jeanne C. Fromer, The Federal Circuit’s Reach as a Specialized Court Beyond Patent Law, in Improving Intellectual Property 138 (Susy Frankel, Margaret Chon, Graeme B. Dinwoodie, Jens Schovsbo et al. eds., 2023)

Professor Rochelle Dreyfuss' scholarship is both voluminous and influential. There is rarely a question about any of the many aspects of intellectual property law on which she has not written thoughtfully and prominently. One of the first articles by Dreyfuss that I ever read was her seminal article evaluating the Federal Circuit as a specialized court. 2 In it, she evaluates the successes, failures, promise, and peril of this court, both through a lens of substantive patent law and a lens of civil procedure. One of her many important insights is about how the Federal Circuit should consider handling legal issues beyond patent law that arise in patent cases. She has seen the importance of this issue since the outset of the court, yet the court's thinking here has barely evolved or matured. Given the ongoing developments in the Federal Circuit on innovation and competition issues beyond patent law-including in copyright, preemption, and antitrust-it is high time for the court to heed her recommendations for more thoughtful development of these areas of law. The course of US patent law changed significantly in 1982 in the shadow of a secondary finding by the Hruska Commission, appointed to study a caseload 1 I gratefully acknowledge support from the Filomen D'Agostino and Max E. Greenberg Research Fund. The Federal Circuit's reach as a specialized court beyond patent law crisis of the federal courts. 3 The commission found that patent law decision making in the federal courts was askew. 4 As Dreyfuss vividly explains: Statistics demonstrate that in the period 1945-1957, a patent was twice as likely to be held valid and infringed in the Fifth Circuit than in the Seventh Circuit, and almost four times more likely to be enforced in the Seventh Circuit than in the Second Circuit. 5 As a result of these differential outcomes, forum shopping was prevalent as was legal uncertainty about any patent's validity and any third party's infringement. 6 Although the Supreme Court could in theory have reviewed more patent cases to stabilize and clarify the law, they were not. 7 Congress sought to solve these problems through passage of the Federal Court Improvements Act of 1982, which created the US Court of Appeals for the Federal Circuit. 8 As the law stands, the Federal Circuit has exclusive jurisdiction: of an appeal from a final decision of a district court of the United States, the District Court of Guam, the District Court of the Virgin Islands, or the District Court of the Northern Mariana Islands, in any civil action arising under, or in any civil action in which a party has asserted a compulsory counterclaim arising under, any Act of Congress relating to patents or plant variety protection. 9 No matter the district court in which a plaintiff brings a patent claim, the appeal of any final decision arising under patent law would lie in the Federal Circuit, rather than the corresponding regional circuit court of appeals. The Federal Circuit was also granted exclusive jurisdiction over most appeals from decisions of the Patent Trial and Appeal Board of the US Patent and Trademark Office (PTO) (such as regarding patent applications). 10 The establishment of the Federal Circuit's exclusive jurisdiction over these patent cases sought to eliminate the forum shopping plaguing patent cases and smooth out the courts' patent law decisions, bringing more uniformity and 3 Id. at 6. clarity to the law. 11 By honing its expertise in patent law and issuing more predictable decisions, it was thought that the Federal Circuit would do a better job of accomplishing patent law's goals of encouraging investment in technological innovation. 12 Moreover, removing the complex and time-intensive patent cases from the regional circuit courts of appeal could improve their workload. 13 Even though the Federal Circuit has exclusive jurisdiction over most patent appeals, it does not adjudicate only patent cases. Congress also conferred exclusive jurisdiction in the Federal Circuit over appeals of final decisions of the US Court of Federal Claims, certain decisions as to trademark applications originating in the US Patent and Trademark Office, final decisions of the US Court of International Trade, final decisions of the Merit Systems Protection Board, and final decisions of an agency board of contract appeals, among other things. 14 The Federal Circuit has ruled that it will adjudicate non-patent law issues on appeal in cases that arise under patent law, even if there are no patent claims on appeal. 15 As to choice of law for non-patent issues, the court held that it 'shall review procedural matters, that are not unique to patent issues, under the law of the particular regional circuit court where appeals from the district court would normally lie.' 16 The court reasoned that it chose to do so 'to minimize confusion and conflicts,' elaborating that '[s]ince our mandate is to eliminate conflicts and uncertainties in the area of patent law, we must not, in doing so, create unnecessary conflicts and confusion in procedural matters.' 17 It has ruled similarly that regional circuit law too governs substantive non-patent matters on appeal to the Federal Circuit. 18 Panduit, 744 F.2d at 1574-75. The Federal Circuit's reach as a specialized court beyond patent law seven years after the court's establishment, Dreyfuss analyzes the Federal Circuit as a specialized court. 19 Dissecting the expected benefits of the Federal Circuit, Dreyfuss finds that indeed due to the inability to forum shop on appeals, the Federal Circuit had made patent law more precise by producing greater horizontal equity across similar cases. 20 An important way to achieve this equity was by formulating what Dreyfuss describes as '[b]right line rules, objective criteria, and minimal exceptions,' which 'may not make for accurate adjudication (the 'right' result in every case), but they create a body of law that is easier to apply uniformly and to predict with certainty.' 21 Dreyfuss also finds that the Federal Circuit was issuing more accurate decisions on patent law than the regional circuits, in the sense of 'formulat [ing] rules that reflect sensitivity to the needs of the technology industry' and therefore innovation. 22 Relatedly, she also emphasizes that because the Federal Circuit had exclusive jurisdiction over appeals of patent infringement and validity decisions from the district courts and of patentability decisions from the PTO, for the first time, a single court could synthesize patent law across patentability and enforcement. 23 Dreyfuss additionally finds that five years after the Federal Circuit's establishment, filings in district courts had not slowed down, even if one might have expected them to do so because there was less value to relitigation. 24 In fact, Dreyfuss wonders if the Federal Circuit was so successful that it was attracting more court filings to resolve issues of patent law that might have been resolved extrajudicially in the past. 25 Turning to the expected costs of the Federal Circuit, Dreyfuss explores the worries that '[t]he repetitious nature of the docket might lead to greater coherency but it would take patents out of the mainstream of legal thought, expose the court to a one-sided view of the issues, and discourage qualified people from serving as judges.' 26 She finds reason to substantiate these worries. There was generally a perception of pro-patentee bias in the Federal Circuit, though Dreyfuss with careful nuance explores whether some of that might owe to changes in the law and other circumstances and whether there is as much pro-patentee bias as others worry. 27 balance on patent issues because of strong lawyering on both sides of patent cases. 28 Dreyfuss also analyzes the procedural complexities arising from the creation of the Federal Circuit: what makes something a patent case over which the Federal Circuit gets exclusive appellate jurisdiction, 29 and how should the Federal Circuit address the non-patent issues that arise in patent cases? As to the first question, Dreyfuss emphasizes the lack of fully settled law, but indicates that so long as a well-pleaded complaint arises under patent law, the court would take jurisdiction over appeals even when the patent issues had been severed or dismissed from the case. 30 As to the second question, Dreyfuss reasons that the court's decision to use regional circuit law to resolve these questions 31 'is not illogical, [but] the result it has reached-which is almost unique in federal jurisprudence-is objectionable.' 32 For one thing, it will frequently be difficult to distinguish substantive patent law, where the Federal Circuit would apply its own law, from procedural law, where it would apply regional circuit law. 33 It might similarly be difficult to distinguish substantive patent law issues from substantive non-patent law issues, such as with regard to preemption. 34 Moreover, Dreyfuss observes that there will be many instances in which the regional circuit court will not have previously considered the precise issue on which the Federal Circuit must apply the regional circuit law, especially when there are issues that will frequently arise along with patent claims as the Federal Circuit 'has largely displaced the regional circuits on issues that normally arise in conjunction' with them. 35 This means that the Federal Circuit, as per Dreyfuss, 'will now have to guess how a regional circuit would have decided a question that it never did, will, or could face.' Id. at 41. The Federal Circuit's reach as a specialized court beyond patent law Dreyfuss highlights as an example issues that will tend to arise in antitrust law at the interface between patent and antitrust. 37 She elaborates: 38 If a case arises in a circuit that has not revised its position on antitrust law, then the [Federal Circuit] is paralyzed; it cannot apply new theories to the antitrust issues, despite the fact that its own analysis of the same problem in the patent law context yields a different result. Even if a case comes up in a circuit that has generally re-evaluated its notions of antitrust policy, it is unlikely that the regional court will have considered how the analysis should operate when there are patent interests at stake from several perspectives. Dreyfuss indicates that the court could cure these concerns by crafting and applying its own law to non-patent issues. 39 That said, she recognizes that this creates other problems, of a district court being bound to look to either the regional circuit law or Federal Circuit law depending on whether the non-patent issue is bound up in a case arising under patent law. 40 Ultimately, she concludes that the Federal Circuit: will not develop expertise in, or appreciation for, competition issues unless it is required to analyze for itself the rules that it is called upon to apply. But empowering the court to interpret the law is not a drawback to extending its jurisdiction. Rather, it is a significant benefit. 41 Relatedly, she insists that 'freeing the [Federal Circuit] from regional circuit law would put the court's experience to better use,' such as when patent protection overlaps with other forms of intellectual property, whether copyright, trademark, or state protections. 42 Over the years, Dreyfuss has periodically returned to reevaluate her foundational scholarship on the Federal Circuit. In 2004, for the court's 20th anniversary, she points out some of the continuing perceived concerns, such as internal and external consistency, and some potential solutions, such as expanding the court's jurisdiction and designating more visiting judges from other courts to rule in Federal Circuit cases. 43 In 2008, for the court's 25th anniversary, Dreyfuss underscores how 'now that the court is established, it is no longer required to prove its bona fides. It has the luxury to step back, intro- spectively assess its role in patent lawmaking, and develop new norms and fresh approaches to crafting its decisions,' especially if judges with extensive practice experience before the court will be appointed. 44 In 2010, she writes how the Federal Circuit and the US Supreme Court can teach one another. 45 That same year, she considers how the Federal Circuit, more than Congress or the Supreme Court, is well placed to reinterpret patent law in light of the immense technological changes that have occurred. 46 In 2013, for the 30-year anniversary of the Federal Circuit, Dreyfuss considers how the court has lacked percolation on patent issues, but how recent legal changes offer up more opportunity for valuable percolation. 47 One year later, she responds skeptically to Judge Diane Wood's recommendation to abolish the Federal Circuit.foot_4 Dreyfuss's foundational and continuing work studying the Federal Circuit as a specialized court has been crucial in so many ways to evaluate the court's effect on patent law and beyond. In the court's earliest years, she had the foresight to lay out foundational issues with which the court is still wrestling. Herein, I focus on the Federal Circuit's choice to apply regional circuit law to non-patent issues in patent cases. Over the nearly four decades now of the Federal Circuit's existence, there have been several non-patent areas that tend to crop up in cases involving patent law. That is, there are many other areas of law that tend to recur when there are patent issues. In addition to procedural issues, these recurring areas tend to relate broadly to innovation and competition. Prominent among these are three areas that Dreyfuss pointed out in her earliest work: preemption, antitrust, and copyright. Preemption of state law by federal patent law gets at the heart of innovation and competition by ensuring that states cannot give protection that, as the Supreme Court puts it, 'clashes with the objectives of federal patent laws,' such as a patent term extension. 49 It is therefore unsurprising that when a plaintiff brings a patent infringement claim, the plaintiff might add on a state law claim that, if successful, would grant similar relief, or that the defendant might counterclaim on the basis of state law to shield itself from liability. Indeed, preemption claims often come up in patent cases. 50 Early in its existence, the Federal Circuit applied its general rule to preemption claims, that it would apply the law of the regional circuit court to this non-patent issue. 51 Yet in 1999, the Federal Circuit took a step toward absorbing Dreyfuss's fundamental claim, that some of the non-patent aspects of a patent case can implicate fundamental aspects of patent law and applying regional circuit law could thus be detrimental. In 1999, the Federal Circuit ruled that certain matters like preemption that it had previously considered non-patent matters-to which it would apply regional circuit law-were truly patent matters-to which it would need to make and apply its own law. 52 It reasoned that '[i]n order to fulfill our obligation of promoting uniformity in the field of patent law, it is … important to apply our construction of patent law to the questions whether and to what extent patent law preempts or conflicts with other causes of action.' 53 The court concluded that this was good policy consistent with the reasons for creating the Federal Circuit in the first place: 54 If we simply follow regional circuit law in deciding questions involving the interaction between patent law principles and other legal remedies, other courts will not have the benefit of our analysis of the substance and scope of patent law in such cases. Such abdication, we think, would in the end disserve the interest in attaining coherence and consistency in the law relating to patents. The Federal Circuit made a similar move in 1998 in the context of antitrust claims. Antitrust claims frequently come up in patent cases because a patent grant can impede competition in ways that extend beyond the scope of a valid The Federal Circuit's reach as a specialized court beyond patent law had jurisdiction over Oracle's appeals of the district court's determination that the API's so-called 'declaring code'-the names of each operation (or method) contained in the API and the methods' organization-was not copyrightable and that Google's copying was fair use. 62 The Federal Circuit stated it was applying the law of the regional circuit, here the Ninth Circuit, to resolve these copyright questions. 63 The court then proceeded to reverse both district court findings, concluding that the API declaring code is copyrightable and that Google's copying did not constitute fair use. 64 (Ultimately, the Supreme Court reversed the Federal Circuit, finding fair use but expressing no view on copyrightability. 65 ) With regard to each legal issue, there was no Ninth Circuit case law squarely on point. The Federal Circuit claimed to be applying the closest Ninth Circuit analogues, which seemed to disfavor copyrightability and favor fair use, yet it reasoned its way to the opposite outcomes in what might best be described as legal goulash. One speculates that this is precisely what Oracle wanted. Whether Oracle inserted its patent claims strategically to confer exclusive appellate jurisdiction in the Federal Circuit or this was a mere happy coincidence that got it to the Federal Circuit on its copyright appeal, it likely hoped that a court frequently perceived as being pro-patentee would favor copyright owners as well. Regardless of the Federal Circuit's outcome, a much cleaner, more constructive, and more honest approach would have had the court crafting its own law-by thinking through the legal and policy issues, including by looking to similarities and differences with patent law and reflecting on the overlaps in protection of patent and copyright in this context. Questions about the scope of copyright law-be they about copyrightability or fair use-remain distinct from questions about patent scope. Yet both copyright and patent laws are fundamentally grounded in promoting innovation and creation. 66 And from that vantage point, the Federal Circuit's own considered views would be enormously helpful. The Google case is not an isolated one and might indeed be a harbinger of important software copyright cases that will head to the Federal Circuit because of a coinciding patent infringement claim. Indeed, a critical follow-up to Google about the copyrightability of statistical analysis software is currently 62 Id. at 1348; Oracle Am., Inc. v. Google Inc., 886 F.3d 1179, 1189-90 (Fed. Cir. 2018) pending before the Federal Circuit because the case also involves patent infringement. 67 Another overlap between patent and copyright laws where the Federal Circuit may see increasing activity concerns design, such as in the fashion industry. Design patent cases head to the Federal Circuit on appeal just as utility patent cases do. 68 Recently, the Supreme Court expanded the copyrightability of design by construing narrowly the useful article doctrine that limits the availability of copyright protection. 69 It has become more likely that design can be the subject matter of utility and design patents as well as copyright. 70 As the Federal Circuit begins to review such cases, it would be similarly helpful for the court to bring its own expertise in patent law to bear on the requisite copyright issues, including the innovation-and competition-inflected policy concerns of overlapping forms of protection for design. In her seminal work studying the Federal Circuit as a specialized court, Dreyfuss foresaw how the court could be structured to helpfully rule on competition and innovation questions bound up in or connected to patent law, even if they are not directly about patent law. She has rightfully sounded this note for years. Now with increasing numbers of copyright issues on its horizon, the Federal Circuit ought to draw on Dreyfuss' insights to develop and apply its own law for issues that are not directly about patent law but implicate issues of innovation and competition. Braun Inc. v. Dynamics Corp. of Am., 975 F.2d 815, 819 (Fed. Cir. 1992). 69 Star Athletica, LLC v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017). Rochelle Cooper Dreyfuss, The Federal Circuit: A Case Study in Specialized Courts, 64 1, 6 (1989). U.S.C. § 1295(a)(1). 10 Id. § 1295(a)(4)(A). Atari, 747 F.2d at 1439-40. Rochelle Cooper Dreyfuss, The Federal Circuit: A Continuing Experiment inSpecialization, 54 769 (2004). Rochelle Cooper Dreyfuss, Abolishing Exclusive Jurisdiction in the Federal Circuit: A Response to Judge Wood, 13 327 (2014). 11Dreyfuss, supra note 2, at 7. 12 Id.13Id. 14 28 U.S.C. § 1295(a).15Atari, Inc. v. JS & A Grp., 747 F.2d 1422, 1429-38 (Fed. Cir. 1984) (en banc);

ANALYSIS OF THE FEDERAL CIRCUIT AS A SPECIALIZED PATENT COURT

THE FEDERAL CIRCUIT'S REACH BEYOND PATENT LAW IN PATENT CASES

Atari, 747 F.2d at 1439-40.