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January 19, 2009


Ivory-tower academic Doug Lichtman interviewed CAFC Chief Judge Michel. Michel displayed an impressive grasp of important facts and statistics, and a seasoned sense of reality, with interesting, albeit sometimes odd, views.

Lichtman proposed the idea of making patent examination adversarial. Clearly Lichtman isn't a prosecutor, or he'd know that examiners already have sufficient skepticism in granting patents. Michel waved that away, instead emphasizing turnover as being problem number one at the patent office. "Turnover is huge. For every 1,000 hired, you lose 600." Michel liked the idea of the patent office having a bigger budget.

Michel noted the backlog of "a million and a half applications," where "the delay is horrendous," and the patent board "terribly slow" with appeals.

Michel liked KSR for its offering district court judges easy summary judgment of obviousness. The role of juries didn't even merit lip service. Nothing surprising that the King of De Novo likes ruling on facts as a matter of law without deference.

Judge Michel did not cotton to the idea of a special patent court circuit, which Lichtman suggested, but did like the idea of concentrating patent cases in particular districts, which is exactly the venue shopping that Judge Michel helped damage with the CAFC's recent TS Tech ruling.

Michel thought the situation of the ITC unique, with specialized magistrate judges having the time to dig into cases because of limited workload, and not easily replicated.

Michel on the inherent difficulties of patent law:

Patent doctrine is difficult, even for experienced judges. And, I think some observers have unrealistic expectations when they talk about patent doctrine has to be so predictable that the outcome in any given case could clearly foretold, so that the business leaders could settle it up front and we'd have a really efficient system instead of all this supposedly wasteful litigation.

Michel thought fairness would be sacrificed with "bright-line rules."

Michel considered damages doctrine is "surprisingly underdeveloped," the main reason being that damages method is rarely challenged. Michel utterly dismissed apportionment being "the great bugaboo in the system, when in 20 years, no one can remember a case where it was litigated."

Michel felt similarly about written description case law being "underdeveloped," that the courts have not defined "what written description really requires."

With regard to Bilski, Michel worried not a bit about Supreme Court precedent, but "that we had scrambled up the doctrine in the State Steet case, and needed to correct our own, perhaps, careless articulation." Michel felt leeway that the Supreme Court hadn't handled a 101 case since the 1980s. "State Street sat un-relitigated for ten full years. I think that's amazing." "The court can't lead if the attorneys don't bring us the issues."

Michel on lousy lawyering:

The attorneys don't bring us the issues, don't frame up the issues in the tribunals below, and don't present these fundamental issues to the court, particularly whether the court should rehear...

We get 150 or so [petitions] a year. Half of them are in patent cases. And most of them are extremely weak. They don't carefully assess Supreme Court case law or Federal Circuit case law. They kind of conclusory fashion, they claim a conflict between case A and case B. They look like they're just going through the motions.

I'm surprised how unimaginative, unaggressive, shallow, most of the rehearing petitions are, and that very much handicaps the court.

Michel noted how getting the seven votes for a rehearing en banc "has proved extremely difficult." Michel encouraged amici briefs to strengthen the prospect for rehearing. Michel has urged the court to lengthen the time for filing petitions. Once a case goes en banc, amici participation flowers, but the problem is that CAFC gets "very little amicus participation at the threshold of whether to go en banc, and that may be where we need it even more."

Michel, feeling isolated, envisioned the prospect of "tacit allocation" of efforts between Congress, the patent office and the courts. "I was a little disappointed that no judge, at any level, was called as a witness on patent reform, even though much of the bills had to do with patent litigation and courts." Michel thus fails to appreciate the mercantile transaction that the legislative process is. The courts, in Congress' view, are supposed to be servile interpreters of the law, who bring no coin to the table to pay for a voice in drafting law. Michel expressed delight that the FTC gave him a chance to speak this past year.

Lichtman expressed skepticism that the "deference" accorded the presumption of validity was "the right approach." Michel dismissed the word "deference," and set him straight - the presumption of validity simply sets the burden to one side. The case law and statutes set the burden on the "challenger," the accused infringer. Lichtman insisted that deference was too heavy. Michel utterly disagreed.

Michel considered "the doctrine of equivalents should be a special equity type tool used only in fairly rare and compelling circumstances. It's not like an alternative to literal infringement to be used in every case. It's my own sense that the doctrine of equivalence has largely been abandoned... dried up."

Michel on 101: "101 was a dead letter." Then, a year or two ago, the patent office started rejecting on it, "and so we got cases." The opportunity to "do something about it only came about because the patent office stopped giving everybody an automatic pass on 101."

Bilski will be part of the answer, and the next five cases will hopefully flesh out the other parts of the answer. People are unrealistic if they expect any one case, even a celebrated en banc case, to map a whole area. It almost never works like that. It's just not possible... I think it's good that Bilski didn't answer questions it couldn't answer, because we'd have given poor answers.

Lichtman clearly dislikes willfulness, citing an example of a business making hay with a patented invention, and then suddenly having to stop, but Michel waved that away, arguing that a business can find an unpatented workaround. "Triple damages are extremely rare." A "very common outcome" is that courts take into account the circumstances. While Lichtman came across as dogmatic, Michel considered the law regarding willfulness and enhanced damages not a problem at all.

Professor Lichtman did a poor job as an interviewer, more interested in insistently pontificating his naive opinions and sophomoric impressions than asking good questions and developing follow-on responses from CAFC Chief Judge Michel. At times, Michel pondered what Lichtman was even asking. For example, Lichtman suggested the court could give more examples in its rulings. That drew a laugh from Michel and dismissal of silliness.

Posted by Patent Hawk at January 19, 2009 4:32 PM | Case Law


A pleasure to read this summary. Just one observation: why is Chief Judge Michel so dismissive of the possibility of simplifying patent law? The fundamentals/universals/irreducible minimum of a patent system are laid down in the EPC. When the EPC was revised after 30 years, nothing of substance needed fixing. What's wrong with it? Or is the USA simply incapable, of discarding its present patent statute, the source of all the unnecessary legal uncertainty? Do Americans perhaps believe deep down, that ongoing huge legal uncertainty is in the US national interest?

Posted by: MaxDrei at January 20, 2009 12:18 AM

Hi Max:

I think the problem is not entirely with statute, but with the high courts making matters worse: the CAFC and Supreme Court. For example, there's nothing wrong with 101 statutorily, only with CAFC interpretation. Judge Newman seems the only judge on the CAFC to have her wits about her, to see the big picture.

The most telling thing that I took away from the Michel interview was his fundamental lack of awareness that the role of the court is to follow legislative intent and clarify, not confuse. It was disturbing to perceive such cluelessness at the core of his worldview.

Posted by: Patent Hawk at January 20, 2009 6:36 PM

worth repeating:

Judge Newman seems the only judge on the CAFC to have her wits about her, to see the big picture.

Posted by: Noise above Law at January 20, 2009 7:57 PM

Thanks Hawk. Delighted you find nothing wrong with the Statute. Bats, you know, find nothing wrong with their (superb) echo-finding night vision. They all have a laugh about those funny humans in Europe, devoid of such vision, stumbling around blind all night. Mention eyesight to them, and they have no idea what you are going on about. Bats don't go in for reading too much. I agree that to be able to see the "Big Picture" is a privilege.

Posted by: MaxDrei at January 21, 2009 12:26 AM


Careful reading, please. I wrote: "I think the problem is not entirely with statute..."

Please keep reading. A post is forthcoming on needed patent reform.

Posted by: Patent Hawk at January 21, 2009 8:32 PM

Sorry Hawk. I will try to be more careful in future. But:

When you wrote "not entirely" I thought you were excluding only "100%", and therefore not excluding the condition "0%", corresponding to "the Statute is already perfect". I agree that the judges add to the problem but maybe that's because they can't help it. Suppose US industry is a car and the patent statute is its steering mechanism, and the patents judges are mechanics. There are some cars with a steering system that self-centres, and is so simple that even a clueless mechanic can't render it ineffective. Then there are those vehicle steering mechanisms that are so complex that they are beyond the ability of any human to operate. If the mechanic (more; the ultimate "decider") is an old guy in the SCOTUS, with no experience in patent law, it might be better to have a simple patent statute, that can survive his tinkering.

Tiresome American attorneys use "not" all the time, when replying to an EPO Examiner who (as always) writes:

"D1 deprives your claim (to ABCD) of patentability, for the following reasons. If you think you have something patentable over D1, please define it in your reply, and tell me why you think it's not only new but also why I should recognise it as not being obvious".

Back comes amended claim ABCDE, the answer "D1 does not disclose ABCDE", and nothing else.

Look, I know why they do this. It's for domestic US common law reasons. But it's no answer to the question.

Looking forward to your upcoming postings. It's fun to debate.

Posted by: MaxDrei at January 22, 2009 1:09 AM