Patent Court Specialization

By Kumar, Sapna | Iowa Law Review, July 2019 | Go to article overview

Patent Court Specialization


Kumar, Sapna, Iowa Law Review


I. Introduction

Created during a time of hostility to patents, the U.S. Court of Appeals for the Federal Circuit ("Federal Circuit") was designed to unify patent law and promote innovation.1 Members of Congress recognized the dangers of subject-matter specialization and attempted to structure the new court to ensure that it would be generalist in nature.2 Initially, it appeared that Congress was successful. The bulk of the early Federal Circuit's docket came from a broad range of subject areas, including torts and commercial law.3

The Federal Circuit, however, did not remain generalist for long. The steady rise of patent litigation in the 1990s caused the court to shift to semispecialized by the mid-2000s. At this time, the Federal Circuit still possessed an extensive non-patent jurisdiction,4 and was comparable in nature to the U.S. Court of Appeals for the District of Columbia ("D.C. Circuit") .5

The Federal Circuit's semi-specialized status came to an abrupt end with the passage of the Leahy-Smith America Invents Act ("AIA") in 2011. Inter partes review ("IPR") under the AIA proved to be unexpectedly popular, with various parties rushing to challenge patent validity in the newly created Patent Trial and Appeal Board ("PTAL").6 Because PTAB decisions can be appealed to the Federal Circuit by a party possessing standing, patent-related appeals surged, transforming the Federal Circuit into what is arguably a full-blown patent court.7

Over the years, the Federal Circuit's specialization has led to several problems. It has legislated through the use of bright-line rules and some of its judges have argued against Congress granting the U.S. Patent and Trademark Office ("PTO") greater authority.8 It has stripped power from the PTO, initially by claiming that the Administrative Procedure Act ("APA") does not apply to patents and later by minimizing deference.9 And although the Federal Circuit has been generous in allowing third parties to file amicus briefs, it has actively limited public participation through its use of judicial legislation10 and through its stringent interpretations of standing requirements.11

This Essay argues that the Federal Circuit's specialization is cause for concern. The court has generally been unwilling to provide policy rationales for its decisions and has instead relied upon a formalistic style of decisionmaking.12 Although it is highly unlikely that the Federal Circuit's structure is outright unconstitutional, its consolidation of patent-related authority raises separation-of-powers concerns. Consequently, this Essay proposes that Congress strengthen the PTO to serve as a counterbalance to the Federal Circuit. Greater substantive rulemaking authority for the PTO would improve the balance of power in patent law by reducing the Federal Circuit's ability to engage in judicial legislating and by allowing the executive branch to serve a greater role in patent policymaking. It would furthermore provide advanced notice of major changes to patent law and increase public participation through the notice-and-comment process.

Part II of this Essay discusses the growing specialization of the Federal Circuit. It notes that when the Federal Circuit was created, Congress intended for the court to remain generalist, and it further discusses how recent changes to patent law have impacted the court's docket. Part III examines various problems that have arisen from the Federal Circuit's specialization. It observes that specialization has contributed to the Federal Circuit disregarding the autonomy of the PTO and discusses how some Federal Circuit judges have engaged in political activism. Part III further maintains that the Federal Circuit has engaged in quasi-legislative behavior. Part IV then discusses the separation-of-powers concerns that the Federal Circuit poses and argues in favor of expanding the PTO's substantive rulemaking authority so that the PTO can serve as a counterbalance. …

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