This episode is the courts and jurisdiction panel from DreyFEST, the celebration of Professor Rochelle Dreyfuss. It was recorded on March 24, 2023.
Jeanne Fromer (Moderator), New York University School of Law and Engelberg Center on Innovation Law & Policy
Judge Raymond Chen, U.S. Court of Appeals for the Federal Circuit
John M. Desmarais, Desmarais LLP
Marketa Trimble, University of Nevada, Las Vegas, William S. Boyd School of Law
Melissa Feeney Wasserman, The University of Texas at Austin School of Law
Announcer 0:01
Welcome to Engelberg Center Live!, a collection of audio from events held by the Engelberg Center on Innovation Law and Policy at NYU Law. This episode is the courts and jurisdiction panel from DreyFEST, the celebration of Professor Rochelle Dreyfuss. It was recorded on March 24 2023.
Jeanne Fromer 0:23
Thank you so much. And I'm delighted to be here. First, I'm going to introduce our panel. And we're going to do a little bit of a different format than some of the others because we have folks, as you'll see with such varied backgrounds and practices here, so I think it'll be fun to have like a an interactive conversation here. So next to me is Judge Ray Chen. The judge Chan is a judge that sits on the US Court of Appeals for the Federal Circuit. He's also a former solicitor of the Patent and Trademark Office, and maybe most importantly for today is class of 1994. at NYU Law School, next to judge 10 is Melissa Wasserman. She is the Charles hillford McCormack Professor of Law at the University of Texas School of Law, and associate dean for research there. And, again, most importantly for today, class of 2007 at NYU Law School. Next to Melissa is John divaris, founding partner of generis LLP, renowned patent litigator and again, most importantly, class of 1988, at NYU Law School. And next to John is marqeta. Trimble, she's the Samuel S line on Professor of intellectual property law at the University of Nevada, Las Vegas, William S. Boyd School of Law. And I wish I could say, I wish I could also claim you as a graduate. So, you know, we're our topic to talk about today is courts and jurisdiction and it's hard to even circumscribe Michelle's work in this space. It's been just so foundational and important and is in line with the comments everyone has made earlier on entirely different topics. And, you know, one of the first law review articles I ever read as a student was Michelle's NYU Law Review piece on the Federal Circuit as a specialized court. It both launched a so much fall on work on specialized courts in general, and also on specialized patent courts. We'll also be talking today about Michelle's really important work on on Transnational matters, about thinking about when there are conflicts, which which jurisdiction governs and how to deal with you some of those issues. So I'll just launch things by sharing something a little bit on the more personal side before then we get to the courts part. I, I think I may be the first one to have to, to speak about your show. In this context, I came to NYU, I showed up one day ever shows door as not a student. But as Alexandra fellow, and 2007. Rochelle had no involvement in my selection, and, uh, no idea I was coming. But here I am, I didn't know her. And here I am someone interested in doing patents and intellectual property. And Michelle had been on a long mission at that point to start bringing more intellectual property in the school. So thankfully, she welcomed me in and really, you know, quickly became, you know, a central mentor and important, you know, person in my life as I have worked on my initial scholarship on patent disclosure. And, you know, I'm just so honored to have had the chance to come back here and be a colleague with Michelle. I mean, I always feel like, you know, Michelle is the mentor. And because, you know, there's so much she's done and continues to do that is brilliant, foundational and that I learned from and so I will, you know, just leave it there, but I wanted to mention what a great mentor she's been in somewhat more formal capacities as well. So, you know, I thought we'd work through this panel by thinking through a bunch of the different institutions that the traditionalists who shins that play a role in deciding matters of intellectual property and talk about some of our shells work and how you know, where, where things have gone from there. And so I wanted to start off by talking about district courts. And, you know, Melissa, I'll start with you, because I think you could lay a bunch of the groundwork here about, you know, the type of specialization, Rochelle wrote about specialization in the Federal Circuit, but specialization at you know, in district courts and, and competition for patents and other IP cases.
Melissa Feeney Wasserman 5:39
So, first of all, I just want to thank Rochelle, Rochelle taught me patents, I was a research assistant, she supervised my student note. And basically every job I've had, since law school, she's served as a recommender. And helps kind of guide me through my career, and I would not be where I am today, or the scholar, and today without all of her input, and guidance. And what's really kind of touching is sitting here today, and hearing that from so many other people. Right. And I think there's lots of reasons why she's been so impactful on so many of us first, she's brilliant, so that helps when she's providing feedback, right. But she's also so generous with her time, and she has this amazing breadth that everyone's talked about, that I think provides a really a great way, like gives you excellent feedback, but also something I think, that people haven't touched on, is she's just so open to different methodologies and viewpoints. That also, you know, make her an excellent mentor to so many different people. And she's funny, quick witted, and she will always tell you what she thinks. I admire so many things about her. So thank you, why don't just start with that. Um, so what I want to say is the paper that or the chapter that I wrote today is co authored with Sarah, right, excuse envy audience. And the point that we make in it is that basically, we think that there's been increased specialization and adjudicators and the sort of patent litigation ecosystem over the last like 1020 years. And we chose this topic to kind of honor Shell's work that she's done a specialization in the courts in particular. And so we've really, and that work has kind of shaped so much of my writing more generally. So I just want to start off by just doing like, a really quick, you know, what do we think are in drawing from her work are the kind of benefits of specialization, right? The core ones we talk about its kind of expertise, right? Judges see the same cases over and over again, they develop expertise, they're more likely to write these high quality opinions that increase legal accuracy, meaning those kind of legal rules are consistent with the underlying policy of that legal regime. And then hopefully, it promotes some efficiency as well. Right? You do it more, you get faster. But as Michelle and others have written about, there's also concerns of drawbacks, right? Probably one big one is this myopia or tunnel vision, right associated with specialization where you may be overly prefer the policies further by the law they administer, right at expense of competing law and policy. And another one that comes up a lot that Michelle Sasa write about it and specialization is this vulnerability to politicalization. Right, either on how the judges are appointed, maybe in specialist courts, or if they're seeing the same groups of people in front of them over and over again, right, that there might be too much of a relationship, right, that would form there. So let's talk about district courts. So there's always been some sort of specialization going on with district courts and patent law. It used to be more driven by just geography and districts were located in certain areas, typically filed their patents there. And so certain judges would hear disproportionate number of cases and patent law. And districts like the Northern District of California was one of the early ones, right? To kind of propagate their own sort of local rules. And we've also had or had a little four way and formal specialization at the district court level with this patent pilot program, right, that went from a decade from 2011 onwards, where I were to just kind of opt in to hear more sort of patent cases. But what is more, I think, relatively new phenomena is that this industry, geographic considerations really don't explain the concentration of patent locations we see so much in these few litigations. Today, amen. Sad. We've had this rise of what people are scholarship job forum selling, right? Where we have certain districts, right, who have kind of gone out there and try to attract patent filings right within their district. And so the Eastern District of Texas, which I'm familiar with ways to build this reputation specific to patent law, despite having no geographic ties to patents or patent heavy companies. They've got local rules, right short discovery things massive Richard verdicts right, that have kind of drawn or attracted cases to them. And perhaps the most infamous district court judge with respect to foreign Selam might be judge Albright right. And the Waco district, who kind of almost went on a campaign right when he got on the bench to say, I love that and cases come file them, and Waco, and it works right here. The filings, I think, from 2016. And waco was like about 700, or I mean, we're single digits in 2016, and over 720 20, and at that time compromised, about 20% of the patent filings nationwide. Now that dipped down some we have the Supreme Court with TC heartland, right that helped with these venue specific rules, there's been some changes and wake up so that if you file in Waco, you don't automatically get right. Judge Albright. But so that's just kind of a overview, right of the sort of specialization we see right at the district court, adjudicators.
Jeanne Fromer 11:08
So, John, let me turn it over to you as a patent litigator, it would be great to hear about some of the trends in some of these district courts, Eastern District of Texas, Western District of Texas, Northern District, California, district of Delaware are probably the four that come to mind the most. You know what it's like in the real world? Why are patent cases gravitating? Where they're gravitating?
John M. Desmarais 11:30
Okay, thank you.
Let me start with a few comments about Rochelle though. I went to NYU graduate in 88. Rachelle taught me or professor Dreyfus taught me civil procedure. I didn't learn Panther, I guess I could do it over again. I tried to get her patents but she wasn't teaching patents. Then she taught me civil procedure. And she did a good job. I was it was actually my best grade in law school. So thank you. Great, yeah, it was total outlier. And I stuck with it. I became a civil litigator, and I love the course I loved. I love the class. She was a great professor and and I went on to be a trial lawyer. So So thank you, Michelle, for teaching me so well. And I had a funny experience recently. Now, recently, the last five or six years, we opened an office in California and California has these ridiculous rules that even though I've been practicing for 30 years, I had to take the bar. So 30 years out of law school, I have to study for the bar exam and California, I moved to a hotel in California, get my books and just start studying. And I'm not kidding you. I could see Rochelle in my head. And because I was studying Cipro, and I'm like, Oh, my God, too bad. So sad. And I'm like, 30 years later, that earworm, this is used to be I don't know, if it still is the catchphrase of hers. I still remember some poor son of a gun, was in the subway and smashed his head, something fell on him. And, and he had trouble with this cause of action. And she's like, too bad. So sad for the dead guy. And I still remember all these years, but I passed the California bar with flying colors. So thank you for teaching me so well, that it's stuck with me for 30 years. And I steal your phrase, too, because I use that. But I'm getting back to the question that she asked me. You know, the the reason people file in these courts, like the Eastern District of Texas, West Texas, in Delaware, is pretty simple. If people think they're plaintiff friendly, but that's not 100% True. And it's also not the reason the reason they filed there is because those courts give you a fixed trial date, and it's relatively quick. So that is playing a friendly was not playing a friendly on the merits, it's the plaintiff wants their cause adjudicated and these courts set a fixed firm trial date early. They very rarely dismiss cases because they're philosophically of the view that the plaintiff should get their day in court. And so they don't like motions to dismiss. They don't like summary judgment. So plaintiff can feel comfortable that they're going to get to the jury. At least in East Texas, and West Texas, they never state cases for IPRS or re exams or anything like that. So you know, you're going to stick to your schedule. And, and they're really good at managing the cases they have, like you said local rules about patents, the cases are all managed the same way. Everything's predictable, you know, what you're going to get the rulings you're going to get are not going to be crazy. And so plaintiffs like to file there, but actually the jurisdictions are fair on the merits. Like if you look, defendants when the jury trials, sometimes the plaintiffs win sometimes and the awards are not out of whack monetarily. So it's a fair place to try the cases in the courts attract these cases because of the way they administer them. You know, when You go outside of one of these districts as a patent plaintiff file and sdny, or are down, you know, in North Carolina or out in the Midwest, you don't know what's going to happen. Like I've had cases lasting 678 years, we know trial date. Other case going in Utah right now, literally seven years, and we don't have a child day, we're still on this on the fourth iteration of summary judgment, motions. And so luckily, they're on the defendant. So I'm enjoying that. But But that's why people are filing in these places is because of the it's because of the predictability on trial dates, and the plaintiffs want to get their cases adjudicated. I don't put a nd Cal in the same bucket with East East Texas, West Texas and Delaware, because nd Cal is very eager to get rid of cases and get rid of the trial. They love motions to dismiss. They love summary judgment motions, they force everyone that mediation so the plaintiffs in nd Cal, that's really, in my view, a more definitive, favorable place. So but the people liked the predictability. And Rochelle has written about this, about, you know, specialization and the benefits you get from it, and Melissa just talked about it. And I much prefer to be in one of these specialized dish district courts, because in addition to knowing you're going to get a trial date, when you're outside of these courts, the rulings are all over the place, the procedure they follow is sometimes wacky, the judges don't like the patent cases, they think they're too complicated, and they feel uncomfortable about them. So you know, they delay them, and they don't give you a lot of attention. So it's it's frustrating to be outside and one of the one of the places, so I'd rather be in those in those district courts than than anywhere else. I would do it differently, though, one of the problems I perceive with the current system is, as you said, these judges are looking for the cases. And you know, I think they're trying to help the local economy, they're, you know, they, they set up these patent jurisdictions in East Texas and West Texas, because it brings all the lawyers from around the country to these local small towns, we fill up the hotels, we fill up the restaurants, they become local economic heroes. And that perception I think, is bad for the system. And it makes people think that there's something corrupt going on, or it's plaintiff friendly, or you know, something bad about it. So I think we should just confront the fact that we need specialized district courts, and we should set up a legitimate system, where, you know, in in major metropolitan areas, there are courts that do patent cases and like them and want them and keep them on a schedule. And I think that's when you read Professor Dreyfus, his writings, I think she's probably sympathetic to that, too. You know, you talked about these, this pilot, you know, the patent pilot program, but that's not really working as well as it should. It's not really a thing. And, you know, maybe that could be fixed, but it's currently not the solution. So my two cents.
Jeanne Fromer 18:03
Thank you. Judge Chen. Okay. So you're as a Federal Circuit Judge, you see what's coming out of the district courts, the specialists and the non specialists, put specialists in quotes, obviously, right? Because it's de facto. And it would be great to hear what you're seeing, and in terms of the differences to the extent you're comfortable commenting on that. Sure.
Judge Raymond Chen 18:25
Thanks, Jeanne, let me first start by saying I'm really happy and thrilled to be here. And because this is for Rochelle, and I am proud to say that part of my identity is being a student of Richelle, Dreyfus. And, you know, when I look back, and you know, let me also salute Pat Martone, who taught me patent law too. And without her, I wouldn't have as deep of an understanding of the entire market value rule and convoyed sales and things like that, which blew my mind back then. But, you know, I, I think of Professor Dreyfus, like I think of my mom and dad in a broad and but fundamental way, which is only with time and in the wisdom of life, have I ever actually come to appreciate her as much as I should have when I was a student? You know, I remember. You know, when we were talking about section 101, and we were looking in the fall of 92. We were using Professor emergences book that wasn't yet ready for publication. So we were just looking at loose leaf pages of a draft case book. And, you know, I remember we were trying to figure out Benson fluke and deer, the BFD cases, and I, you know, she would say, Can you draw a straight line through these? Who knows? Let's talk about something else now. And I say wait a second. Wait a second lady, my electrical engineering mind cannot accept? Who knows? I need to know right now how to draw a straight line through Benson fluke and dear. It turns out that might have been the best answer that ever could have been on those trilogy of cases, but you know, all of her scholarship, studying the Federal Circuit, I've benefited from it, I feel like every time I read through those articles, I get something a little extra new out of it. And, you know, now that I'm on the court, I, it makes me feel like, you know, she, she has this balanced way of looking at it, we've talked about her ability to identify nuances and be fair to all sides and, and look at things more as a distant observer. And in some ways, I feel like, she's like the scientist, and the Federal Circuit is this experiment. Right? And, and the judges are the lab rats. She's, you know, identifying our behaviors and where we're going right, and oh, we didn't quite make the right choice. And maybe we weren't incentivized the right way. And now we need correction. So I find it all very helpful, actually. And I really appreciate that. And let me just say, I was thrilled to see that Judge Newman, also of the Federal Circuit, got to give her tribute by video this morning. You know, as you all know, Michelle is the Pauline Newman, you know, professor of law here at this school. And so I, between Polly and me, you know, I think of the Federal Circuit as the NYU court. Because, you know, when you combine her years and my years of experience, that's more than any other schools got. That's court and more specific. Yeah, it's the Dreyfus court. And when I think of NYU, I also think of, because of just my personal experience, this is the Dreyfus school. And your DNA is so into this school that it's going to be really hard to not have you here. And so it worries me a little bit about this school, this the identity of the school, and how I'm going to relate to the school and, you know, what's it really gonna be like, when the new mom arrives? It's gonna be really hard. So, but my expectations are high. Wherever Dean, Troy Mackenzie is, I hope he can hear me because I'm watching your question about specialists? And what am I seeing at the Federal Circuit? Let me say that I was, I was a proponent of the pilot patent pilot program, which is now defunct, it's been closed down, I believe, because I thought there was a really great opportunity to get judges that were genuinely motivated to work on these types of cases. These are painful cases, I don't know if any of you actually had to sit your butt down and read patents all day long. But it's, it can be a joyless enterprise, doing it day after day, and you want motivated people to get in there and do it. And, and there are times where you'll see an appeal from a district court, and you read the district court's opinion. And pretty quickly, you can tell Oh, no, this is someone that did not want to engage with this case, and is really just trying to move it along as quickly as possible. And because I understand how difficult these cases can be, I, I don't necessarily blame the judge. But and I understand that. And so I thought there was an opportunity with the pilot program that didn't really come to be, you know, you see a place like the Western District of Pennsylvania, they were part of the program. And they got only the smallest step increase of cases. But what I'll say as a general matter is that the the, the appeals that come from courts with the highest concentration of patent cases, I feel like they are doing overall a pretty good job. I mean, I understand that we that there are concerns about whether we have a Texas problem in patent law, and maybe we do maybe we don't but I cannot say sitting here that they necessarily have a decidedly higher reversal rate at the Federal Circuit. Maybe they lean a little too heavily on plain ordinary meaning when it comes to claim construction. You know, and that, you know, when you do that you're You, you get suspicious that maybe that will open the doors to a little too much mischief in the litigation process. But I think any what I'll call specialized District Court Judge they, they also learn the games that patent lawyers play. And they're able to regulate that as well. What What I don't understand at this point in time is why the original rocket docket that Bdva doesn't get the same level of patent cases that it used to 2030 years ago, they were the originals, I think, where they said, we go to trial really fast, we go to trial, we're proud to say we go to trial faster than anyone else. Now, they weren't carnival barkers about it in terms of trying to draw in any particular kind of work. But they had a certain pride about how they conducted their business. And they got a lot of patent cases, because plaintiffs wanted to get an early trial. But we don't see much from them. And I will say that it's a little bit of a shame. We don't see cases from other district courts, where there are district court judges that really respect. You know, I mean, I'll just pull out an example Patty saris, why aren't we? I mean, I would love to see more. I mean, I'm not going to affirm Patty service every time. I'm not saying that. But what I am saying is, there are a lot of smart, thoughtful, district court judges that know, patent law that for whatever reason, or not getting pet cases
John M. Desmarais 26:32
come in under Virginia. Yeah, Edie VA was a wonderful place. The The reason people don't file there is because the transfer case is over, they follow the venue rules. And so if you're playing it, and you file, you're gonna get a motion to transfer if you don't actually belong there. And it's going to go to MD cow. And nope, no plaintiff wants to be an MD Cal, so they rather file in Texas, where it's going to stick rather than Virginia,
Judge Raymond Chen 27:00
that that goes to another little species of specialization, which is all of the mandamus petitions we're getting on denials of transfer motions out of Texas. And so we're seeing that, and then we're also seeing in light of TC heartland, right. And let's see, you mentioned that how, whether Texas is the proper venue, we see so many of these kinds of mandamus petitions.
John M. Desmarais 27:26
One other question on what sounds like God, I've been thinking about the plain meaning business, and I'm wondering how receptive the court might be to a mandamus on a claim construction. That's all plain meaning where there's really disputes.
Judge Raymond Chen 27:41
We're not gonna play. You do, John and everybody does. It make sense. And by the way, it's not it doesn't comport with the law. You have to have a clear and indisputable, right, and interest of justice, and yada, yada, yada. All right.
Jeanne Fromer 28:02
So, you're speaking Oh, so we've been speaking about this form of competition, in some ways among the district courts. And we've been relatively local, just thinking about it in the US. So Margaret, I want to turn it over to you to, to, you know, talk a little bit about a different subset of Michelle's work and your work on Transnational judicial competition in IP law, whether it's the first in time versus last in time rules and the range of cases where this tends to come up, etc.
Marketa Trimble 28:33
Thank you, Jeanne, I have to say this was probably the most damning introduction I have ever received to be introduced as NOT a student. But I don't think that's really true, because I had the pleasure of enjoying what I would call formal apprenticeship with Professor Dreyfus, things through her involvement in various international committees, groups of scholars who have been thinking about transnational problems in IP litigation, conflict of laws, issues, private international issues in IP. And there were many layers at which I had the pleasure of learning from Rochelle, of course, a lot about the substance or procedure in this case, but also a lot about collaborating with scholars from different countries. And going back a little bit to what the first panel was talking about. There is actually a very fine line that many US scholars underestimate, I think, between this, you know, somewhat imperialistic colonial. Let me tell you what the truth is, and we know the best, but the other side of it is this. I would say excessive difference of you know this well, we don't really know from the US and to our country's experts. Which sometimes shows just as much of lack of respect as the first approach and what I always admired about her shell. But she didn't hesitate to be very critical of foreign scholars, and she would push for her views. And she would show that US law is superior or better in many respects, and would really engage in very rigorous discussion with these scholars, often notwithstanding language barriers, and all these other things. So I really appreciate this. And I guess here on behalf of all the scholars who were international, I've been international scholars working with Rochelle and really enjoying her contributions to this field. The first title mentioned, of course, Russia is crucial role in the American Law Institute project, the principles on Transnational IP litigation, and private international issues in IP. I particularly was involved in the International Law Association project, which I believe was the latest one in this group of efforts to come up with some kind of principles that would aid courts, with conflict of laws issues in IP cases, when I was asked to contribute to the wonderful book, for this amazing project, I was told you can write whatever you want within 4000 words or something that short. And I think it was the shortest period ever, I had to think about what to write about. Because I thought, okay, for Rachelle on this topic, there was only one moment in my interactions with Rochelle, when we disagreed. And it was really bad. And I thought, Okay, this is the chance to write about this. And that was the big disagreement we ended up in during the International Law Association committee meetings about first in time versus last in time, meaning who should have the last word? Well, who would have thought that Russia would disagree on that? So it's also fascinating because it was an excellent comparative law exercise, meaning, imagine a court that is faced with multiple foreign judgments. And it might sound a little weird and abstract. How often does it happen that litigants show up in court, and they already have two pre existing judgments from two other jurisdictions? It might seem like that would happen very much. It does happen in various other areas of law. And you would think in IPL that should never happen given the territoriality principle and given how litigation usually works. But of course, now that we have anti suit anti anti suit injunctions and litigants going to various courts in the world to litigate the issues of a standard essential patents and Frank licenses, we can certainly now imagine that there could be a court or there are courts in third countries who now see these judgments, conflicting decisions from two foreign jurisdictions. And the question is, which one should you give effect to which one should you recognize and force the first time a meaning the first decision to come out, or the decision that came out of the court that was seized first, where the litigants started litigating first, which one should win? And it's interesting from a comparative law perspective, because understandably, courts in systems that are adversarial typically prefer the last in time rule, because the belief is that it's up to the parties to litigate, and if they are unhappy with the second litigation, they should raise the point that there have already been previous cases. And this should not be litigated. Countries that have inquisitorial processes. So procedures prefer, of course, the first and time are all because it's up to the court to maintain the consistency and maintain some kind of coordination among proceedings. This is great as long as you are within one system, right. But when you have transnational cases, it gets more complicated. So in our committee, of course, not surprisingly, all Europeans were in favor of the first and time rule. While our American colleagues, most of them thought that last time would be preferable. So in my chapter, I did a little bit of legal archaeology, recent archaeology, to find out a wonderful 1969 article by Professor Ruth Ginsburg, to find out that she and through her actually the EU Brussels regulation, like then Brussels Convention has influenced the course of US law drastically when it actually pushed for the first in time rule for transnational IP cases. So that's my obscure conflict of laws piece in the book. And thank you Rochelle for being so much involved in the transnational conflict of laws world, which is so neglected it never get it's never gets its own panel at any conference.
Jeanne Fromer 35:24
But we've given it a slice. So, okay, you know, so that's some about the district court level, I want to make sure to move on now and discuss, give us some time to discuss the Federal Circuit. Okay. So Melissa, I'll turn it back to you. You know, you mentioned at the beginning, there's this increasing specialization that's going on the Federal Circuit's a specialized court to begin with, you know, it has exclusive jurisdiction over patent cases, and it specializes in other areas. But you think that's further specialization going on? So why don't you tell us about that? Yeah,
Melissa Feeney Wasserman 36:01
I think one of the kind of underappreciated forms of judicial specialization is opinion specialization, which I don't think it's been studied, right, as much. So I have a paper I wrote with Jonathan SLAC, who was a student at UT, at the time, on that just studied opinion, specialization in the Federal Circuit from about 2008 or 2004 to 2018, and found that it regularly occurs. So there's a handful of Federal Circuit judges that write a disproportionate number of the patent opinions, and they're probably not surprising. It's just Laurie LAN, Newman and writer. And there's also an equal number that seem to have an aversion to writing patent opinions. So Jed Wallace, for example, I should also say that your chin only been there for a year. So it doesn't really show up in my study, and we also found that when you look within technologies and patents, Judge Lloyd, perhaps not surprising, writes a disproportionate number of opinions in sort of biotechnology and drugs. And it seems that opinion, specialization is driven in part by the judges interest in the topic, right? The lorry and judge Lynn both had kind of extensive backgrounds in patent law, before joining the bench, or joining the court there. And Judge Wallace, for example, seems to have an aversion to pan cases, because he's writing a disproportionate number of international trade cases, given that he's served 16 years as a judge on the US Court of International Trade. scholars have argued that kind of opinion specialization in generalized courts, like the regional appellate courts, is normatively desirable, because they're in some ways, the way to get some of the benefits you see in specialized courts expertise, efficiency, without the drawbacks that you may see as specialized courts, right, there's much of this concern about tunnel vision or political causation. But in this paper, I just sort of caution that that that that may not be the same case for specialized courts. Right. I think there are reasons why we should be more skeptical of opinion, specialization, specialized courts, because I'm not sure at the Fed circuit, you get that much additional benefits of expertise and efficiency, because they're already hearing. Right. patent cases. Right. They have a limited jurisdiction already. And I think there does raise that concern, to the extent, right, they have exclusive jurisdiction of Panama, we want all the judges to be equally participating, I think and writing those opinions, rather than kind of narrowing it more to maybe a few who have a disproportionate impact. And it's just this kind of concern that I think also was animating some of the concerns with Judge Albright, that there's some concern that the idiosyncratic preferences right of a future just may have this disproportionate influence in the law.
Jeanne Fromer 38:48
Thank you. You know, one other aspects I wanted to bring up. I mean, Melissa has been talking about, she mentioned some of the benefits of specialization, expertise and efficiency, and she raised a worry, in this context about this de facto specialization that she's been seeing. And I'll just introduce, even though I'm the moderator here, I'll introduce them, you know, something about my chapter in the book that picked up on something that, as with many other things Michelle was present, to be thinking about, which was identifying a potential cost of a specialized court, like the Federal Circuit is it could become disconnected from other from other bodies of law that are other, you know, courts of law that are looking at a range of things that are not specialized, the regional, you know, Courts of Appeal, being the prime example there. And, you know, we're shall advise that in many ways, it would really be helpful for the Federal Circuit to weigh in with its own views. I make its own law on things that are intimately connected to patent law, but may not be patent law issues. So whether those were antitrust matters, or some jurisdictional or civil procedure matters. And in some ways, the Federal Circuit has adopted those views. Sometimes they've been become more expansive about making their own law on things. But in many other ways, they look to the Regional Court of Appeals. And I think, you know, we're seeing, we're starting to see some other strands of cases that are increasingly heading to the Federal Circuit, perhaps strategically. So and it may be useful to draw on Michelle's wisdom in this context, in my view, and to benefit from the Federal Circuit's wisdom and its specialization, its expertise, and weigh in on those all just identify one that's I think, you know, already started and one that we may see more of soon. The first is the software cases. Right? We haven't seen that many of them yet, but they're big. So we saw Google versus Oracle has a patent claim and a copyright claim, because software can be governed by both the patent claims fell out before this one to appeal to the Federal Circuit, the Federal Circuit was called upon to answer major questions about copyright law. And look to the ninth circuit, the Regional Court of Appeals, where I think, you know, we could have benefited from the Federal Circuit thinking through a lot of parallel issues on innovation and competition and making their their own rulings there. And we're seeing other cases and, you know, making their way through on software copyright this way. The other area I'll raise is design patent. Mark McKenna. And I have written about overlaps between design, patent copyright and trademark claims. These days on very much the same matter design patents, like utility patents, they're going to the Federal Circuit. And to the extent we're going to see continue seeing more and more of this overlap and claims, we may end up there for seeing more copyright and trademark claims that would not have otherwise been at the Federal Circuit on design issues heading there. And I think we really could benefit from the Federal Circuit's expertise in patent law on this front. So I'll just throw that out there as my own issue on the Federal Circuit and specialization, and so you know, I just wanted to turn it over to John, Judge Chen. McKenna, if you have any thoughts to add in your own thoughts react to any of this?
John M. Desmarais 42:48
Yeah, so I have, first of all, I think Rochelle has papers on this specialization and Federal Circuit have been great. And, and I'm a big proponent of I think the federal IQ score. Federal Circuit experiment has been wonderful for the same reasons I just mentioned about district courts. You know, when you get specialized judges who liked the subject matter, you get real thoughtful opinions, and it's, it's going in the right direction. There is one danger that I don't hear a lot of people talking about, though, with the Federal Circuit, and, and that I've noticed, anecdotally, throughout my 30 years in this business is, you know, when you have a court, like the federal circuit that is called upon to, you know, sort of set patent policy for the country. They sometimes not present company excluded. They sometimes forget their court and act like the legislature and they're deciding case on bristling. Yeah. All of you that are tweeting out there, I learned and I learned in Professor Dreyfus this class that a court is supposed to decide the case before them not sat down policy. And so oftentimes in the Federal Circuit, you you get real like rulemaking, like, from now on, it's going to be this way, in our cases, and it used to be this way, but from now on, it's going to be this way. You know, they did it in willfulness. They, I mean, they've done it and all the all the different doctrines. And I think there needs to be some check on that power. Because, you know, the court was set up to set policy, but they should do it the way that we learned in law school, which is they should decide the case before them. And let the policy reveal itself over time when lots of cases are decided. And you see where the law is gone, rather than then forgetting that, you know, and forgetting that doctrine, and instead just sort of laying down a rule that applies in all cases, because they can't anticipate all the application of that going forward. So that's why one by one sort of concern about the Federal Circuit, you know, and the Supreme Court has stepped in from time to time to stop that. But but you know, harkening back to my earlier comments, when the Supreme Court steps into a patent case, it's, you know, all heck breaks loose because they don't know what they're doing and patent law, so it's, I don't want that to have to happen. I'd prefer the Federal Circuit just to do it.
Judge Raymond Chen 45:08
To react to that this is a weird panel. It's even weirder when it's a roomful of academics. But okay. First, let me say, for John's concern, I can understand that concern, because maybe before I was on the Federal Circuit, I shared that concern, you would see and bank orders on patent law issues, consequential patent law issues could be inequitable conduct would be willfulness could be something doctrine of equivalents. And you would see the order have seven different questions laid out, like how should we decide this? How should we rule on this? How should we handle this, and then it does start to look a little bit too much like a quasi legislature. And so but at the same time, you know, it's the Federal Circuit's betwixt in between because federal circuit hears plenty of times from academics, why isn't the federal circuit using all the available policy levers to course correct and drive the law in the right direction, and essentially be a policymaker? So it's, no, I'm sitting here, I'm a judge, I'm telling you right now we do law, we do not do policy. I repeat, we do. We do not do promise. But at the same time, I would say that at this point, our court has been on a journey. And part of that journey is avoiding those kinds of in bank orders where the court comes across, appearing like a legislature. At the same time, I think the Federal Circuit, you know, going back to the idea that this is a 40 year experiment now, the first 20 years, maybe 30, at least 20. It felt like it had this mandate from Congress. It's it's this very unique species within the judiciary. And part of that mandate is very clearly, please harmonized patent law for America and make it uniform and make it predictable. Right. And so then you could see a whole set of cases, you know, and Michelle spoke about this in our articles where the court was really trying hard to standardize, thinking and organize District Court thinking on all these many different patent law issues, one of three included, and there was zero involvement with the Supreme Court well, just a little bit above zero. And so when a specialized court with a particular mandate, and no Supreme Court interest, it's not surprising that when you look backwards, this was a court that started to not cite the Supreme Court precedent, it it developed its own precedent, and was citing, therefore its own precedent, and because of its mandate, was very interested in writing very clear rules. And very clear rules is not necessarily a bad thing. Because patent law is complicated. I mean, look where we are right now, where we all kind of have to accept the premise that rules are bad, and standards are good. But look where the law is right now. If you practice patent law today, it's really complicated. If you are a patent examiner, today, if you are one of the 8000 patent examiner's in the USPTO today, that is a hard job. Because you got to stick and move like this, you've got only 20 hours on a given application from soup to nuts to complete an examination. As soon as you look at the 100 claims in an application, you've got to instantly decide whether it's patentable subject matter or not, that's been recited in that individual claim. You don't have time to start reading mayo or reading I don't know one of my opinions. There's no time for that. And you'd have you wouldn't even understand it, probably because you don't have a JD 90% of patent examiner's do not have a law degree. That's because the PTO can afford 1000 patent lawyers with also a technical degree. So I've lost where I'm going. But I guess the point I'm trying to make is that we're we're trying to bring clarity to the law. And that was only partially successful because the Supreme Court then suddenly, right, suddenly got involved in patent law in a way that was not expected. And yes, they identified a lot of different things where the law had gotten too calcified, too rigid in its rules, and probably the choices, the individual choices where the court had said things, like, for example, suggestion, motivation teaching was not at the right level, not in the right location. And so that needed to be corrected. And it was. But if you look at where the court is today, compared to where it was 10 years ago, I think there is now a much greater sensitivity to supreme court oversight, and to making sure that opinions are written. That is effectively communicating the thinking, I'm not saying that what was happening 20 years ago was bad. I'm just saying today, there's a better understanding that there's this other player in the system called the Supreme Court. And when we write opinions, they're almost like little amicus briefs, to the Supreme Court. Especially on something like section 101. It's like, okay, you know, you said this, we're dutifully reciting your case loan. Now, we're trying to logically extend out those broad principles, and we are forced to make certain choices here. The choices we're making, here are why we are making these choices. Tell us if we're wrong. Okay, tell us if we're wrong. And you know, 100 cert denials later, they haven't yet deigned to weigh in yet on one on one, although there are two seevis streams. So and then finally, on your issue, Jeannie, about whether the federal circuit should participate more on patent adjacent issues, in a way that we haven't really, you know, as far as I know, that issue was fully baked, by the time I arrived that the Federal Circuit had made its choice that when it comes to patent issues, that's our jurisdiction, if it's can be cleanly identified as a non patent issue than regional circuit law to apply. District Courts shouldn't have to be in the awkward position of looking at a particular issue. And seeing that there's both federal circuit law on it and regional circuit law on it in some days, they apply regional circuit law and other days, they apply federal circuit law on that same issue. And, you know, whether we have something unique to offer on copyright law, or something like that, or trade secret law, especially now that it's become federalized. I don't know the answer to that I have an instinct that we probably could. But it just so far hasn't come up often enough that I even have, you know, mature thoughts on those areas.
Jeanne Fromer 52:56
Thank you. Well, I want to make sure thank you. I want to make sure we have well as we're running low on time to a little time to get to the P tab at the end. But since I'm Dr. Chen Reyes, the Supreme Court any quick thoughts on the level of involvement of the US Supreme Court in reviewing patent and other IP judgments?
John M. Desmarais 53:20
It makes me very uncomfortable when the Supreme Court takes up the baton case, I think that it's very complicated. And I think the Federal Circuit is a place I'd rather have those decisions made. So whenever they take up a case, it's, it's super scary. So I'm actually going on Monday to the Amgen argument, and I'm gonna hold my breath and see how it's gonna come out. But I'm anticipating they're going to reverse the decision.
Jeanne Fromer 53:47
I think you you've expressed them what most academics, IP academics Express, also, whatever the Supreme Court takes any IP case at all patent copyright trademark. Okay, so let's turn quickly to the P tab then. So Melissa, will continue on with your
Melissa Feeney Wasserman 54:07
No, I mean, so P tab is also really changed that the patent litigation ecosystem, right and in 2011, it was created, there wasn't a duty Kotori board. Prior to it at the PTO, it just didn't really litigate the validity of many patents. It wasn't popular wasn't used frequently. And then that changed in 2011 with the creation of P tab that oversees several new proceedings, where third parties can challenge the validity of an already issued patents. And these proceedings share kind of a host of features that make them viable alternatives to litigation in federal courts and really distinguish them from what the PTO had prior. Right. And in particular, right. They take place in these adversarial court like hearings, which administrative law referred to as kind of formal like or type B adjudications. And Pete has been immensely popular as especially IP RS and 2000, or essentially 2012. Patent Office received, I think now over 10,000 post grant petitions way more than they initially anticipated three times more than they initially anticipated. They've tripled. Right? They're hiring a PJs to keep up with that. And now, you know, since the first time of its inception, the Federal Circuit has documented more patent appeals arising through the PTO right and P tab than it does from district courts. And so we just have another scientific on I should say, APJs, right, or scientifically trained. And so we have this kind of increased specialization occurring from keytab. From those adjudicators making many more validity terminations.
Jeanne Fromer 55:45
Yeah. So John, I mean, what's your reaction as a litigator? Here is the P tab, what Congress intended, what's going on?
John M. Desmarais 55:52
I think it's a good idea, but it needs to be fixed. Because what happens now, so I do plan upside cases and defense cases and patent law, one thing we haven't talked about yet is how expensive it is. I mean, these cases cost millions and millions of dollars, they last years and years. And I think what Congress intended was that the P tab would streamline things and make them cheaper and make them more efficient. But that's not actually what's happening in practice. So what happens now in practice is we're doing the district court litigation, and keytab work simultaneously in most courts, because the cases either are not being stayed or because of the way the schedule is going. And the N P tab allows the defendants to file more than one petition on a given patent on the same patent. So I've got cases going now where we're defending to a we're prosecuting the district court case, and we've got like five IPRS, or nine IPR is in one case, I have 10, IPR is on the same patents. And it's hugely expensive, and they're going at the same time, and it's not efficient. So I have a whole a whole separate group now at my firm specializing in the IP, IP ours, and the clients are paying for that. And it's very expensive for the plaintiff. And on the defense side. You know, the estoppel is not like there was this notion that the defendant would go to this tab and, and take their shot at validity there. And then the district court actually be streamlined. But the rules are not that tight. And so every single case now, the defendants are holding back, what we call system art, or, or commercial products. And you know, they're not putting the prior art in on those things. So once you make it through all the way through the P tab exercise, and the patent comes out, and you go back to the district court litigation, the defendants are still challenging validity. So you having a jury trial now one infringement of validity, and I don't think Congress intended that. But that loophole now is giving the defendants two shots, or sometimes, you know, 10 shots if you've got multiple IPR, and it just seems unfair to plaintiffs. And it's really extending the litigations because even if the district court does give you a stay, that just means the plaintiff now has to wait years to enforce their claim because you, you don't file for the P tab until a year after the complaint. Then if there's a state and your state for over a year, then you have an appeal, and then you you've got your dish, so your wind up like six, seven years before the plaintiff sees a jury. It's it's just it needs to be fixed. The idea is good, but it needs to be fixed.
Judge Raymond Chen 58:35
Yeah, I have a few thoughts. So we are at the Federal Circuit 1/3 of our entire docket is appeals from IPR ours from these patent cancellation proceedings at the PTO. It's a dramatic change to the Federal Circuit where maybe historically, a quarter of the cases were patent appeals, and the vast majority were from district courts, and just a few from the PTO. And now when you combine everything together, we are probably 60% patent. IPR is more than all district courts combined. And that just changes the complexion of the court. But what really concerns me is how many patents are going down through these IPR hours? And it doesn't bother bother me when an invalid patent or improvidently. granted patent goes down. But what is bothering me is we have just experienced the biggest stress test on the products that the patent office issues every year. And the result is not satisfying, because a large percentage of those patents that are put to the test through these IP Rs are going down. And, you know, I looked at the board's work, and most of the time we affirm because most of the time the claims were invalid, you know, even you know, without giving deference to fact findings. And what that tells me is we've got a property rights system where we are all consuming a lot of resources, just to take a second look at whether the property grantor correctly granted the property rights are not. And, you know, I don't know any other property form of property where we're doing that at at the level and scale. Now, of course, in Europe and Japan, and everywhere else, they've got their own cancellation proceedings and patents go get that second look and get more deeper, better scrutiny through opposition proceeding. But it just looks alarming to me. And it to me, you know, if I'm a patent owner, and I don't know what I've got in my portfolio when I look at my portfolio, because until it's put to the test, you won't know and so far, from my experience, I'm just the very tail end of this big elephant but from the tail end my perspective, month after month after month, I'm doing these oral arguments and looking at these IPR appeals and patents are to the degree of patents that are being invalidated. is high and or it's too high.
Jeanne Fromer 1:01:43
On that optimistic note, I think we're out of time. If you have questions from the audience, maybe you'll come find the panelists during a break. Please join me in thanking the panel.
Announcer 1:01:59
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