IP Law & Business/December 2007

Reprints & Permissions

It's been a tough year for the U.S. Court of Appeals for the Federal Circuit. The U.S. Supreme Court overturned some key Federal Circuit standards, and Congress threatens to overwhelm the court with new work. Chief Judge Michel talks with IP Law & Business's Xenia P. Kobylarz.

Q. Why do you think the U.S. Supreme Court has taken so much interest in patent law now after years of not reviewing any cases?

I'm not surprised by the level of interest by the Court in patent cases, because patent cases are so important, and they've become more so. The Court probably wanted to give the Federal Circuit a decade or two to have a chance to unify and clarify the patent law. After that interval it became appropriate to review some of the more important decisions from our court. KSR made some important adjustments in the manner of applying certain tests and principles dealing with obviousness. In some cases those adjustments might have a big impact, and in many, many cases I would expect little impact. Only time will tell.

Q: At a recent Federal Circuit Bar Association dinner in New York you exhorted a roomful of patent attorneys to file amici before the Supreme Court, saying the Court needs their help. Were you serious or just kidding? What I actually said was that all courts need as much help as they can get, from not only the parties but also perspectives from other knowledgeable people. That was the context in which I said that the Supreme Court could use help, and so could we, the Federal Circuit.

Q: In some of the recent cases before your court there have been dozens of amicus briefs filed by different parties. Do you actually read all of them? We are required to read all the briefs, and our court has a long tradition of being well prepared for oral arguments. Judges often reread the briefs several times. I don't know if every amicus brief is read several times, but nonrepetitive amicus briefs are certainly read.

Q: One of the main reasons the Federal Circuit was created 25 years ago was to bring certainty to patent law. How well has the court accomplished that mission? In reading the legislative history behind the 1982 act that created the court, I consider Congress being concerned about increasing the clarity and consistency and coherence of the patent law doctrines, and I think the court overall has been quite effective in that. Predictability, or certainty, as you're calling it, is a much more elusive quality. No body of law that I can think of has great certainty or predictability to it because the facts of individual cases are often quite different, and that causes different outcomes.

Q: Let's talk about patent reform in Congress. You wrote a letter to senators Patrick Leahy and Orrin Hatch about two provisions in the proposed legislation that you thought were bad ideas. Why are you opposed to the proposed changes?

I don't have any positions on any changes in the patent statute that Congress is contemplating other than to point out the impact on the work of the court. Policy choices are entirely up to the decision makers in Congress. Two of the sections of the bills would have quite a big impact in terms of delay and cost and increasing the difficulty of the decision making by creating new issues or ambiguities.

Under current law, if the claims construction ruling results in a grant of summary judgment, the case is immediately appealable to the court, and the court will review the claims construction. What the pending proposal would change is that even if summary judgment was not granted and even if the outcome of the case would not be changed by the claim construction, it would still be immediately appealable to the court. That likely would result in a sharp increase in the number of patent case appeals per year. According to one academic study, it might double the number of cases we get. It would be impossible to decide that number of patent cases in an expeditious and careful way. So there would probably be great delays, possibly the doubling of the average time from filing to disposition, and there would be a risk of confusion in the law and possibly erroneous decisions.

Q: You also expressed concern about the provision requiring judges to apportion damages. What is your concern?

There is extensive case law developed over many decades dealing with all aspects of damages, including apportionment and the rule known as the market value rule. So the question in my mind was whether proposed changes in the damages law would create new and difficult issues or would create gaps in the law or would slow down litigation and make it more expensive and more cumbersome.

Q: I promised a frustrated patent litigator I'd ask you this. Any chance the Federal Circuit will change its de novo review rule on patent claim construction?

I'm not going to get into the business of speculating and predicting what 11 other judges might do in some future cases with unknown facts. I have written in opinions that great respect is often due to the work of the district judge on claim construction. Therefore, ordinarily the construction should be upheld, unless it is shown to be erroneous and consequential by the challengers. The word deference is a little bit confusing. Usually when we talk about deference, we're talking about a finite and required and invariable level of allowing things to stand even if we don't agree with them. So maybe using the word deference isn't as good as using the word respect. So my view is, if we give adequate respect to the careful work by the district judges, who after all have read all the documents, heard all the evidence, and spent many hours or days on claim construction, the outcomes will be appropriate.

Q: Tell me a little bit about the court's new mandatory mediation process that began this year.

We select cases based on an analysis that they have good potential to settle. When we select the case, we require the lawyers and the executives to participate in one or two settlement discussions. If they make progress, we continue the discussions, and if they don't, we drop it. We have two full-time staff members who do mediation based on special training and experience. In addition, we have almost two dozen private lawyers who are retired or semiretired who mediate appeals on a pro bono basis. About 25 patent cases have settled this year, and that represents an enormous saving of judge time. In addition, often the results are even better for the parties than a judge-dictated result.

Q: Aside from the mediation program, what other initiatives have you implemented?

One of the things we're doing is modernizing several of our courtrooms with appropriate computers and electronic access to court files. We've also greatly expanded our Web site, providing all sorts of information that was not available before. Soon we'll have all of the briefs, as well as all of our opinions in all of our cases on our Web site.

Q: Looking back on your 20 years in the court, what would you consider as your legacy?

I think the whole idea of legacy by individual leaders is greatly overdone. I'm the fifth judge of this court, and I've served all the four judges, and each one made many, many contributions and laid a very strong foundation for each judge coming along. I inherited a very healthy court, well funded, well equipped, well operating with very strong traditions of careful preparation. So I guess my goal, when my time is done, is to hand over the court in better shape than I got it. And I know that my successor and his successors will do the same.

Q: So are you staying another 20 years?

I like being a judge very, very much. I've enjoyed every day since I came here in March 1988, and I've also enjoyed the challenges and responsibilities of being the chief judge. At age 70 or seven years as chief judge, whichever comes first, a chief judge must step down [though he can still sit on the court for life]. In my case I will turn 70 on February 3, 2011. I don't really have specific timing in mind, whether to stay until the end of the permitted time or to pass on the responsibility to another judge earlier. But I do feel committed to finishing all the initiatives I've started as chief judge.

Q: On a less serious topic, someone mentioned you're a real pro on the dance floor. Where did you learn?

I was a drummer in jazz and dance bands, so I guess that's where my original interest in ballroom dancing started. I didn't get to do much dancing when I was a practicing musician. But later in life I got the chance to be on the other side of the dance floor. My wife is extremely good at it, and I'm sort of an average middle-class would-be dancer. Soon we are going to take tango lessons, so I hope I'll become a competent tango dancer before too long.