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Yes, the U.S. Court of Appeals for the Federal Circuit hears morethan just patent cases. But because it hears all patent appeals, it is oftenviewed as the “patent court.” The court’s judges, however, are not asunified as its subject matter. In recent years, two primary camps havedeveloped among the court’s judges: those who favor broad patent rights andthose who seek to put limits on a patent’s reach. As the court enters its third decade of life, there has beena shift away from the tendency to expand patent rights, toward a more nuancedview. “[There] is a concern with the increased value ofpatents,” says Gary Hoffman, head of the IP group at Washington D.C.’sDickstein Shapiro Morin & Oshinsky. Philosophically, some of the judges believe that as theimportance of IP rises in the economy, the scope of a patent should be definedas carefully and as narrowly as possible — even if that means deviating fromprior court practice. If that doesn’t happen, the rationale goes, patent ownerswill be tempted to engage in mischief. Some judges think that “patents are being used not topromote scientific progress but for blackmail and greenmail and worse,”says Paul Devinsky, a partner in the Washington, D.C., office of McDermott,Will & Emery. The other judges are more respectful of past decisions ofthe court and more deferential to patent owners. Lawyers who practice beforethe circuit warn that it is perilous to place judges in pigeonholes, since theyare always capable of defying prediction, and since patent cases are idiosyncratic.With these caveats in mind, those lawyers make the following observations aboutthe 11 active judges on the circuit. The judges most likely to interpret a patent narrowlyinclude Raymond Clevenger III and Alan Lourie. Alvin Schall and Timothy Dyklean this way but can be unpredictable. William Bryson and Chief Judge H.Robert Mayer aren’t especially activist but probably belong in the narrowinterpretation camp. Judges Richard Linn and Arthur Gajarsa tend to have abroader view of patents. So do judges Randall Rader and Paul Michel, but they,too, can be unpredictable. Judge Pauline Newman is in a group by herself. Newman isespecially concerned with following precedent. The court’s move towardnarrowing patent rights sometimes contradicts past decisions and puts Newman inthe expansionist camp. Newman placed herself on the broad side in her dissent in SymbolTechnologies Inc. v. Lemelson Medical, Education & Research Foundation(2002). The Symbol opinion, written by Mayer and joined by Clevenger,found that an unreasonable delay in prosecuting a patent, the so-called defenseof prosecution laches, was a valid argument against patent infringement. In her dissent, Newman wrote, “The judicial creation ofa new ground on which to challenge patents that fully comply with the statutoryrequirements is in direct contravention to the rule that when statutoryprovisions exist they may be relied on without equitable penalty. This newcause of action, ‘prosecution laches,’ will open legally granted patents to a newsource of satellite litigation of unforeseen scope, for the continuationpractice is ubiquitous in patent prosecution.” Judges don’t like to be put in categories. Rader argues thatthe court’s specialized docket magnifies differences that would be lessapparent in the nonspecialized circuit courts. “The pace of common-lawdevelopment is so much faster in Federal Circuit,” says Rader. He alsonotes that when observers see splits, there are often distinguishing facts orcircumstances. Case in point: In LNP Engineering Plastics, Inc. andKawasaki Chemical Holdings Inc. v. Miller Waste Mills Inc., the issue waswhether the prosecuting attorney had withheld prior art from the U.S. Patentand Trademark Office by failing to translate all of a Japanese patent intoEnglish. In late December 2001, a panel consisting of Newman, Rader, and Brysonupheld the trial judge’s ruling that the attorney had not intentionallydeceived the PTO and that the patent was enforceable. Only a year before, a similar case came up before Michel andSchall and senior judge Byron Skelton. In Semiconductor Energy LaboratoryCo. v. Samsung Electronics Co., the panel upheld a district court judge’sruling that a patent was unenforceable because the patentee had failed to filea full translation of a Japanese patent. While they reached the opposite decision, all six judgestend to be deferential to trial judges’ rulings. “The lesson there is notwhat you did, but what you convinced the district judge [of],” saysMcDermott, Will’s Devinsky. Kimberly Moore, an associate professor at George MasonSchool of Law and a former clerk at the Federal Circuit, says that the courttries to avoid splits by taking cases en banc, as it did most recently in itsNovember 2000 decision in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. Festo was a victory for the narrow interpretationcamp. The decision, which is now before the Supreme Court, sharply limits thedoctrine of equivalents. That doctrine prevents would-be patent infringers frommaking minor changes to an invention in order to escape liability forinfringement. Four judges dissented in Festo: Michel, Linn, Rader, andNewman, all of whom were from the broad interpretation camp. There are limits to the narrow and broad categories. Rader,for example, was part of the 2-to-1 majority that decided Intermatic Inc. v.The Lamson & Sessions Co. in December 2001. That decision, written byLourie, overturned a jury verdict that was based on the doctrine ofequivalents. Lourie went even further than Festo in his decision,writing that the doctrine might not apply to even an unamended claim if abroader claim was amended during prosecution. In other words, Festoapplies to some unamended claims. Newman, once again striking out on her own, filed a stingingdissent in part. “This decision, by extending the Festo absolutebar to such unamended claims, will give the coup de grace to this vestige ofthe doctrine of equivalents,” she wrote. Other panels, however, have taken a much more restrictiveview of the Festo decision. TurboCare Division of Demag DelavalTurbomachinery Corp. v. General Electric Co. was decided in August 2001 byBryson, Gajarsa, and Linn. The panel found that the amendment that Turbocaremade to its patent did not narrow the meaning of the original claim, andpreserved the doctrine of equivalents. A panel consisting of Mayer, Newman, and Bryson also ruledthat Festo did not apply in Bose Corp. v. JBL, Inc., a December2001 case that involved an amendment. Festo was again inapplicable in InteractivePictures Corp. v. Infinite Pictures, Inc., decided in December 2001.Interestingly, this decision was written by Alan Lourie, the judge whom mostpractitioners cite as being the leader of the “narrow” wing ofjudges. (The other judges on the panel were senior judge Glenn Archer, Jr., andGajarsa.) Practitioners use the case to demonstrate why the justices cannoteasily be placed into such neat categories. Interactive Pictures amended its patent claim as a result ofa prior art rejection, changing some wording in the claim. The panel found thatthe change was not narrowing because it only made explicit what had beenimplicit in the original claim. For the third time in 2001, Festo didnot apply. Now it is up to theSupreme Court to figure out Festo. Associate professor John Duffy ofWilliam & Mary School of Law notes that in the last decade the Court hasstarted to take a greater interest in the Federal Circuit. Between 1982 and1991 the high court granted certiorari in just two patent cases and heardarguments in only one of them. Over the next nine years, the Court granted review in eightpatent cases, most of them dealing with major issues such as claims and thedoctrine of equivalents. Duffy notes that the Court may have been giving theFederal Circuit time to bring the disparate patent laws of all of the circuitcourts into harmony, building up a consistent set of rules. Now that the Federal Circuit has refined the broader issues,the Supreme Court is stepping in to sort out the finer points of law. “I think it is to the Federal Circuit’s credit thatthey’ve gotten the law to the point where attention can be devoted to thesevery hard issues,” says Duffy. “It is not surprising that you wouldhave judges that have differences [of opinion over the proper scope of patentrights]. I don’t think that there is a well-accepted solution. It’s simply avery, very difficult problem.”

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