Federal Circuit Decisions Research Articles

Competition Policy in Patent Cases and Antitrust

The article that follows examines the competition policy reflected in the decisions of the Court of Appeals for the Federal Circuit in its patent cases. The court's views on this subject have been manifested most plainly in decisions that have transformed the law concerning infringement under the doctrine of equivalents and claim construction. In both categories, the court narrowed patent scope by reason of its desire to protect competitors. The article argues that the court's premise in prescribing narrower claim scope reflected an incomplete view of competition policy. The court's analysis overlooked the benefits to competition provided by patents, which stimulate inventions and their development. The article traces the development of antitrust jurisprudence and demonstrates how respect for the contribution of patents to competition and skepticism of free-riding has evolved, particularly beginning in the 1970s. The article draws a parallel between the Court's reasoning about competition policy, on the one hand, and the rejected views of Justices Hugo Black and William O. Douglas and abandoned patent-antitrust jurisprudence, on the other. The Federal Circuit's decision in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 234 F.3d 558 (Fed. Cir. 2000), on the subject of equivalents is considered in the paper. In that decision, the majority adopted a new rule that completely barred infringement under the doctrine of equivalents of any claim limitation where, in prosecution, there had been a narrowing amendment relating to patentability. In the past, prosecution estoppel foreclosing equivalents had been subject to a "flexible bar," which, in some circumstances, allowed for equivalence notwithstanding such an amendment. The article points out that because almost all patents are amended during prosecution, the effect would be to allow widespread copying of patented inventions by trivial modifications of any narrowed claim limitation. The incentive to innovate in the future would be correspondingly diminished and the expectations of past patentees would be correspondingly altered.

Patent Law in the Age of the Invisible Supreme Court

This article examines the permanence of the U.S. Supreme Court's retreat to the peripheries of patent law after the creation of the Federal Circuit, and explores the roles that the Supreme Court might imagine for itself in contemporary patent law. For discussion purposes, the article describes two hypothetical models for Supreme Court decisionmaking in patent cases: an aggressive interventionist model and an extreme non-interventionist model. After considering the shortcomings of both models, the article proposes an intermediate, managerial model. The managerial model rejects the proposition that the Court should intervene in patent cases to correct perceived substantive errors in Federal Circuit decisions. Instead, the model encourages the Court to manage disputes over the appropriate allocation of power among institutions of the patent system. Accordingly, the Court should intervene in patent cases that present such issues, and should direct its opinions towards resolving such issues, leaving the elaboration of detailed substantive patent doctrine to the Federal Circuit.

The Incidence and Structure of Conflict on the U.S. Court of Appeals for the Federal Circuit

In 1982, Congress established the Court of Appeals for the Federal Circuit, a specialized court, with the objective of reducing judicial conflict and harmonizing circuit law in specific policy areas of special complexity. This article examines the incidence and determinants of judicial conflict on the U.S. courts of appeals, focusing specifically on the Federal Circuit. Using international trade and customs regulation cases decided during the 1982 to 1995 terms, the analysis reviews three possible explanations of judicial conflict: policy‐oriented, sociolegal, and organizational. The analysis shows that conflict appears in 8.4 percent of the trade and customs regulation decisions rendered by the Federal Circuit during the period of study. The policy direction of Federal Circuit decisions and the court’s hierarchical relationship with lower specialized courts provide the strongest explanation for the emergence of conflict on the court. Organizational factors such as panel composition evinced rather anemic explanatory capacity. The results raise an important functional similarity between the Federal Circuit and the generalist courts of appeals. Contrary to the laments of legal practitioners that conflict on the Federal Circuit is excessive relative to conflict on the generalist circuit courts, this analysis finds little support for that claim. Rather, the level of overt conflict on the court is actually low and corroborates conflict levels that have been reported for other U.S. courts of appeals.

Obviousness and New Technologies

The recent Court of Appeals for the Federal Circuit (CAFC) decision in State Street Bank and Trust Co. v. Signature Financial Group has opened up a new area, methods of doing business, as patentable subject matter. This paper explores the institutional competence of the United States Patent Office (USPTO) and the CAFC to administer patents in this new field. Analogies are drawn with another new technology, computer programming, which was only recently made eligible for patent protection. It is argued that entrenched doctrinal methods in the CAFC and historical staffing preferences in the USPTO make it likely that patents will be granted on innovations that are obvious, at least in the non-technical sense of that word. A suggestion is made for a legislative change which might ameliorate the problems caused by such patents, if they are issued, and the paper concludes with some speculations on the extent of the possible harm from such patents.

Biotechnology in the USA: From Enablement to Infringement

This paper provides a general introduction to key issues in recent US biotechnology cases, and in so doing highlights areas of major significance to the management of biotechnology research and transfer in general. Current trends discernible in US biotech case law are highlighted. Citing relevant judgments to illustrate these trends in Federal Circuit decisions, the author discusses issues ranging from ‘prior art’ considerations to enablement and utility as well as inequitable conduct, inventorship, infringement, and the impact of the perceived unpredictability of biotechnology inventions. He concludes that there is a general trend to apply a strict disclosure standard to biotechnology inventions, both for patenting and infringement purposes, with the courts stressing the need to frame patent claims more precisely. Patentability claims tend to be upheld over the prior art in cases where the scope of the claim is clearly defined and is a reasonable reflection of what has actually been accomplished by the inventor.

The Evolving Application of the Written Description Requirement to Biotechnological Inventions

A United States patent must provide a of the invention claimed therein. In its earliest implementation, a patent's written description fulfilled a notice function of putting the public in possession of the boundaries of the patentee's property right. Under modern practice, that notice function is performed by the claims of the patent. In 1967, the Court of Customs and Patent Appeals (CCPA) breathed new life into the written description requirement of section 112 of the Patent Act by applying it for a different purpose, that of ensuring support for claims first presented or substantively amended after a patent application has been filed. The court viewed written description compliance as a means of ensuring that the patent applicant had actually invented the later-claimed subject matter as of the earlier filing date of the application. The CCPA and its successor, the Court of Appeals for the Federal Circuit, repeatedly recognized that the manner in which the written description was provided was not critical, so long as those of ordinary skill would understand the newly-claimed subject matter to be fairly within the patentee's original contribution.Written description jurisprudence significantly diverged from these principles with the Federal Circuit's 1997 decision in Regents of the University of California v. Eli Lilly. In Lilly, the court applied the written description requirement to claims originally filed in a pioneering University of California patent application directed to the recombinant production of insulin, and held that the written description requirement is not satisfied for claims to DNA absent an express disclosure of nucleotide sequence. The Lilly decision may profoundly limit the scope of protection available for new gene inventions; viewed in tandem with contemporaneous Federal Circuit decisions interpreting the enablement requirement of section 112 , it represents the latest advance in an ominous trend towards imposition of uniquely heightened patentability requirements for biotechnological inventions. Lilly aptly illustrates the increased widening of the gulf between the norms of the business and scientific communities and the U.S. patent system, as users of the latter come to understand that the patent system no longer reflects the realities of scientific contribution.

Use of trademarks on Internet can be a problem

The article that follows examines the competition policy reflected in the decisions of the Court of Appeals for the Federal Circuit in its patent cases.1 The court's views on this subject have been manifested most plainly in decisions that have transformed the law concerning infringement under the doctrine of equivalents and claim construction. In both categories, the court narrowed patent scope by reason of its desire to protect competitors. The article argues that the court's premise in prescribing narrower claim scope reflected an incomplete view of competition policy. The court's analysis overlooked the benefits to competition provided by patents, which stimulate inventions and their development. The article traces the development of antitrust jurisprudence and demonstrates how respect for the contribution of patents to competition and skepticism of free-riding has evolved, particularly beginning in the 1970s. The article draws a parallel between the Court's reasoning about competition policy, on the one hand, and the rejected views of Justices Hugo Black and William O. Douglas and abandoned patent-antitrust jurisprudence, on the other.The Federal Circuit's decision in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 234 F.3d 558 (Fed. Cir. 2000), on the subject of equivalents is considered in the paper. In that decision, the majority adopted a new rule that completely barred infringement under the doctrine of equivalents of any claim limitation where, in prosecution, there had been a narrowing amendment relating to patentability. In the past, prosecution estoppel foreclosing equivalents had been subject to a “flexible bar,” which, in some circumstances, allowed for equivalence notwithstanding such an amendment. The article points out that because almost all patents are amended during prosecution, the effect would be to allow widespread copying of patented inventions by trivial modifications of any narrowed claim limitation. The incentive to innovate in the future would be correspondingly diminished and the expectations of past patentees would be correspondingly altered.Following the writing of the article, the Supreme Court decided Festo on certiorari, 122 S. Ct. 2519 (2002), and rejected the Federal Circuit's complete bar approach. The Court continued the flexible bar approach to equivalents, allowing for infringement despite a narrowing amendment. The doctrine of equivalents was explained in terms of “the nature of language,” which “makes it impossible to capture the essence of a thing in a patent application.” Id. at 1837. The Court announced a new rule, starting with a presumption that “the territory between the original claim and the amended claim” was disclaimed as to “readily known equivalents,” Id. at 1842. The presumption could be overcome where:[1] “The equivalent may have been unforeseeable at the time of the application;” [2] “the rationale underlying the amendment may bear no more than a tangential relation to the equivalent in question;” or [3] “there may be some other reason suggesting that the patentee could not reasonably be expected to have described the insubstantial substitute in question.” Id.The Court recognized the effect of uncertainty from the doctrine of equivalents on competitors as a result of the flexible bar, but rejected that as a reason for a complete bar. Id. For example, “if competitors cannot be certain about a patent's extent, they may be deterred from engaging in legitimate manufactures outside its limits, or they may invest by mistake in competing products that the patent secures.” Id. at 1837. The Court also quoted Justice Black's concern for competitors in his dissent objecting to the doctrine of equivalents in Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605 (1950). Festo, 122 S. Ct. at 1838. Despite a “delicate balance” between the interest of the patentees and those of the public, the Court squarely disagreed with the preference of the Federal Circuit, Justice Black, and competitors of the patentee. Each time the Court had addressed the subject over a 100-year period, it “affirmed the doctrine over dissents that urged a more certain rule.” Id.The Court's holding preserved placement of the burden of the uncertainty implicit in the doctrine of equivalents on competitors in favor of protecting patentees and the patent incentive to innovation. Id. At the same time, the effect of the Court's new rule was to impinge on the scope available to patentees. Requiring the inventor to write all knowable variations of his invention into the claims is a way of reducing the scope of equivalency. It is out of keeping with Graver Tank, which applied equivalents to an unclaimed variation described in the specification, as well as the thoughtful analyses of the Antitrust Division about the importance of a full patent reward. By the same token, applying equivalents to later-developed technology extends the patent to apply to the more creative competitor but inconsistently leaves the straightforward free-rider with a minor knowable variant outside the patent.

United States: Court of Appeals for the Federal Circuit Decision in Georgetown Steel Corporation V. The United States

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