A widespread perception among the patent law community is that the patent system would be more effective if judges with technical backgrounds and patent law experience decided patent disputes. Proponents believe that if judges all had similar baseline knowledge of technological analysis, there would be more consistency in decision-making, leading to more predictability for parties. Some district courts have unofficially become semi-specialized in patent law disputes, and Congress is debating whether to institute a more formalized Patent Pilot Program in which district court judges specialize in patent law cases. This Note joins the debate and examines patent law cases at the Court of Appeals for the Federal Circuit ("Federal Circuit"), concentrating on appeals from the International Trade Commission ("ITC"). The ITC serves as a useful case study of patent law disputes at the Federal Circuit level, as it represents approximately seven percent of all patent law disputes that the Federal Circuit handles. Additionally, it is becoming an increasingly important forum for patent law disputes. The administrative law judges ("ALJs") at the ITC are widely viewed as patent experts because of the primacy of patent cases on their docket. The great majority of the ALJs, however, do not possess a technical background. The ITC, to an extent, can be viewed as a model for a patent-specialized trial court program due to similarities between the compositions of the ITC and the proposed specialized trial courts or judges programs. An examination of the last twenty-five patent investigations appealed from the ITC reveals that more than seventy percent of the issues on appeal are not technical in nature, in the sense that the Federal Circuit does not analyze the issues in a way that requires knowledge of the "science" behind the patents or does not focus on technical issues. The results of this study have a variety of possible implications, some of which point in opposite directions. First, they could imply that, despite the fact that the majority of the ALJs and Commissioners at the ITC do not possess a technical background, their patent law experience allows them to effectively resolve technical issues before cases are appealed. This conclusion could support the establishment of specialized patent trial courts or designated patent judges, in order to allow the Federal Circuit to concentrate on questions of law rather than fact. On the other hand, recent research has revealed that when compared to the generalist district courts the ITC does not perform better, at least with respect to patent claim construction issues, as measured by the reversal rates by the Federal Circuit. If the majority of the issues on appeal, including the claim construction issues, are not technical, this suggests that the Federal Circuit does not reverse the ALJs because the ALJs misunderstand the "science" aspect of the patent but rather because of the general unpredictability of claim construction. If all the courts, including a specialized agency such as the ITC, are reversed at the same rate, this suggests that having judges with technical backgrounds and/or technical experience may not make much difference. Finally, the results of this study suggest that patent practitioners should consider the Federal Circuit's procedure in analyzing patent issues. This study indicates that, for the most part, the Federal Circuit avoids technical claim analysis and focuses on non-technical issues. These results suggest that, as a matter of patent litigation strategy, practitioners should avoid technical arguments, at least at the appellate level.
Not So Technical: An Analysis of Federal Circuit Patent Decisions Appealed from the ITC,
Mich. Telecomm. & Tech. L. Rev.
Available at: https://repository.law.umich.edu/mttlr/vol17/iss1/6