by Dennis Crouch
Thomas McCarthy and Dina Roumiantseva have published a new article titled: Divert All Trademark Appeals to the Federal Circuit? We Think Not. They write:
With some regularity over the years, a proposal is made to change the Lanham Act so that appeals in all Lanham Act trademark and false advertising cases from district courts across the United States will be diverted from the regional circuit courts of appeal to the Court of Appeals for the Federal Circuit. We think it is time to discuss this proposal head on and hopefully to convince the reader that this diversion is not a good idea and should never be implemented. Advocates of this proposal claim that trademark law would benefit from the consistency that a single appeals court could provide and that the Federal Circuit has exceptional expertise in trademark law. We believe, however, that trademark law does not suffer from the kind of circuit conflict that led to the channeling of all patent appeals to the Federal Circuit in 1982. Moreover, our review of case law suggests that some regional circuits have a comparable or greater experience with trademark law. We argue that no change in the present system of trademark appeals is needed.
I see merit to the McCarthy-Roumiantseva argument. However, I also see a major problem with the current intellectual property system is its disjointed implementation nature. Copyright is adminstered by a branch of the Library of Congress. Patent and Trademark registration is handled by a single agency, except for state-law and FDA exclusivity issues. And, the appellate courts that hear most copyright and trademark infringement actions almost never hear any patent infringement actions – and vice versa. Trade secret is almost (but not quite) entirely state law derived. These major divides in administration and adjudication have led to a system that lacks substantial coherence across doctrinal silos and has opened the door for special interests to tweak individual portions of the law toward their favor.
IP lawyers used to divided into “Patent” lawyers and “Soft IP” lawyers for good reason. Patent law is a separate body of law with unique policies, principles and regulations. The tendency for lawyers to lump trademark, copyright and trade secret law into their patent practices (and many do not have patent practices) does not mean that the Federal Circuit should do the same.
In cases where an appeal is based on a patent issue, and a trademark or copyright is also at issue, the Federal Circuit applies the law of the regional circuit to non-patent issues, and does not harmonize any differences between regional circuit law. That is the job of the Supreme Court, which has become more active in reviewing decisions of the Federal Circuit.
In practical terms, providing the Federal Circuit with exclusive jurisdiction over trademark, copyright and trade secret cases would overwhelm the court, which already mostly hears appeals from the Court of Claims.
A really good patent opinion from, of all places, the Supreme Court of Nevada.
New Tek Mfg., Inc. v. Beehner, 702 NW 2d 336 – Neb: Supreme Court 2005
link to scholar.google.com
Among the things it discusses, and accurately at that, is Halliburton and 112(f).
Someone remind me again what happened in the thirty years from 1952-1982 and the notion of regional courts….
(Yes, that answer has quite a large bit to do with WHY the CAFC was formed)
Anon, please read Chief Judge Woods proposal. There would be no forum shopping.
Do you really think that forum whopping was the only “vice?”
lol, damm autocorrect: read that as “forum shopping.”
With respect to trademarks and copyrights, there is one major difference between those two types of IP, on one hand, and patent rights on the other: copyrights and trademarks are not inherently concerned with facts relating to technology and science. In theory, the Federal Circuit should be on top of what’s happening now, or at least what’s happened over the previous years. The fact that it sometimes appears clueless is, I believe, not a problem with the nature of the Federal Circuit’s exclusive appellate jursidiction but rather a problem that the Federal Circuit created for itself when it naively opened the gates to subject matter that has more in common with lawyering than it does with science.
The Amish await you with open(?) arms.
As usual, please feel free to not use anything that you would deny protection to.
Come back after you bone up a little on the history of innovation.
Come back after you bone up a little on the history of innovation.
Go bone up yourself, “anon.”
If you disagree with something I wrote, then identify what you disagree with and explain exactly what your disagreement is.
If you have any doubt about the lunacy that the Federal Circuit created and which has resulted in the tarnishing of whatever reputation it ever had, listen to the oral arguments today in Better Foods v. MyNetDiary. There you will find a patentee — a guaranteed l0 ser — arguing that “software is hardware” and that “software is an apparatus”. Does that argument sound familiar? I hope so. Because it gained zero traction. Worse than that, it just annoyed everybody in the room.
Live and learn.
Asked and answered: but here it is again, short and simple:
Read about the history of innovation.
You should not dissemble so and recognize that I have used the deliberate word of “equivalent” as opposed to the word “is.”
I have corrected this misstatement of yours n the past. Please try to pay attention.
I have used the deliberate word of “equivalent” as opposed to the word “is.”
LOL. So an apparatus that carries out a logical process is infringed under the doctrine of equivalents by software encoding the same process. Sure, that makes a lot of sense ….
Seriously, maybe try explaining to everyone exactly what you believe the difference is between “equivalent” and “is” in this context rather than clinging to your vapid script like it means something. And I do look forward to seeing you correct your bff NWPA the next time he “erroneously” strays from the talking point. He’s done so before and you’ve just let it ride.
The doctrine of equivalence does seem to give you fits.
The only thing “vap1d” here, is your insistence on something that is not.
Re the benefits of greater expertise in handling patent cases: The judges of E.D. TX clearly have the most such specialized legal experience, and thus logically should have much lower Fed. Cir. reversal rates than appeals from D.C.s handling patent cases less often. But, the last I heard, they had a higher reversal rate. ?
Paul, are you including all those transfer motion mandamus petitions in your data. The circuit is notorious in this regards. They also seem to have some patentee-friendly local rules.
What I would like to see is data on claim construction and that issue alone, and have that compared with other circuits.
I am often at claim construction hearings here in the ND Cal. The judges here are extremely competent, IMHO, and take their jobs seriously. They also rely on court appointed technical experts to independently advise the court. I think our local court would do quite well in comparison to the nation’s patent court.
Yes, N.D. CA also pioneered local rules that improve patent litigation earlier, which may be one reason it is less popular with trolls?
McCarthy-Roumiantseva’s argument is weak and incomplete. Ned has published a number of interesting comments of his own and excerpts from the Honorable Judge Wood that explain the case much better.
What we really need is not to move trademark cases to the CAFC but to remove patent jurisdiction back to the regional courts of appeal where it belongs. Let any senator that allows a Giles Rich or a Pauline Newman onto his local circuit spend a decade hearing about it from every victimized innovative small businessman in his state and we’ll see some very careful choices being made in staffing the courts correctly.
Thank you Mr. infringer’s Rights.
Chief Judge Wood of the 7th Circuit:
“The system I propose is similar to the one that is available in labor law cases, where the parties have a choice of where they may seek review of the National Labor Relations Board’s decisions. Under the National Labor Relations Act, “any person aggrieved” by a final order of the NLRB may obtain a review of the order (1) in a court of appeals where the alleged unfair labor practice occurred; (2) in a court of appeals where the party “resides or transacts business”; or (3) in the D.C. Circuit. … [I]f two petitions are received within ten (10) days of the Board order, the agency must notify the Judicial Panel on Multidistrict Litigation (JPML), which will then randomly select one or the other.
Something similar could be constructed for patent appeals. The alternative is not a return to the “bad old days” in which a single patent might be valid in the Second Circuit and invalid in the Tenth at the same time. The “aggrieved party” could be given the option of seeking review either in the Federal Circuit or in the regional circuit with jurisdiction over the district court from which the appeal is taken.38 If there are cross-appeals or multiple pending appeals around the country pertaining to a single patent, and they are in different circuits, the procedure outlined by 28 U.S.C. § 2112(a) could be adapted to allow the JPML to select one forum for that patent or that case. This would address the valid concern about the possibility of inconsistent decisions addressing the same patent or litigant. One court would be responsible for that particular case, but the development of the law would benefit from a variety of viewpoints.”
link to studentorgs.kentlaw.iit.edu
The Federal Circuit model has its own problems as a model, two things that quickly come to mind:
1. Regulatory capture. Judges and (in particular) clerks are incentivized to maintain friendliness (the nice way of saying it) with the patent bar. Plus the prestige of the court is overly connected and dependent on the centrality of patents to industry, further incentivizing the court to aggrandize patents.
2. Lack of Circuit splits, which are a key component of Supreme Court review, and is why patent law was ignored for a decade by SCOTUS. It also allows for a groupthink on certain issues as the whole court is contained within the same bubble.
This, plus the fact that trademark law really does not have the trouble of technical expertise (although only about half Fed Cir judges have technical degrees) means that IMO the argument for harmonization is actually quite weak. The argument is probably stronger in favor of a second patent circuit than for harmonization of Trademark law, which if you bought such an argument its would be reasonable to apply it to all of Federal jurisprudence (why should a drug dealer in California not have the same precedents as one in Maine?).
(why should a drug dealer in California not have the same precedents as one in Maine?)
I have always thought there was an argument that this difference — different rules in different Circuits — amounted to a lack of equal protection or denial of due process.
Silicone, seriously?
This is absolutely right on. A lot of people today think that patent law has suffered a disservice because of the Federal Circuit’s exclusive jurisdiction because of the quality of their judges and the lack of diverse viewpoints from the other circuits. McCarthy is being politic here; for most people, myself included, the opposition to unifying trademarks in the Federal Circuit has less to do with policy and more to do with not wanting to give more exclusive jurisdiction to a pretty lousy court.
In those rare instances where you see another circuit deliver a quality opinion on patent matters (like the Ninth Circuit’s masterful decision in Microsoft v. Motorola on FRAND licensing), you get a glimmer of what we would have without the tunnel vision of the Federal Circuit. Conversely, where you see the Federal Circuit decide things outside its exclusive area like copyright, etc., they do a miserable and laughable job (like the Oracle Java copyright opinion). The Federal Circuit has become the laughing stock of other circuit judges so I don’t know why anyone would want to expand their jurisdiction any further. It’s a disservice to our veterans, in fact, that they have jurisdiction over veterans benefits also.
A lot of people today
Like who? Can you list some prominent examples of “important” “experts” who believe that the Federal Circuit’s “lack of diversity” has led to it being a “lousy” court?
Seems to me the Federal Circuit’s historic problem has been the short-sightedness of a few judges who can’t see the forest through the trees and who seemed to believe their purpose in life was to protect the pocketbooks of their patent-worshipping friends or genuflecting before anything relating to the Internet or computers (or *gasp* “mobile” computers — I still can’t believe they exist!).
I recall one of those problem judges resigning fairly recently. That was a step forward.
MM, I don’t think the Federal Circuit would have even attempted half the stuff it did attempt over he years if its opinions had to be “reviewed” and “commented on” by its fellow circuits — and that is exactly why Chief Judge Wood it is generally good idea to have multiple circuit courts look at the very same issue of law.
As she point out, having multiple circuits review the same issue and come out in opposite camps informs the Supreme Court who then must “choose” which circuit has the better argument.
Without such oversight by fellow courts, mistakes in policy can often be made and cannot be undone due to the structure of the insular court. Think about that statement. Mistakes happened every day, it seems, and they cause enormous problems when whole areas of law are suddenly shunted in a new and unexpected direction. I am thinking now of divided infringement, BMC Resources and FilmTec as two of the more notorious examples.
And, yes, the overruling of Hotel Security by State Street Bank.
Ned see above – the “only” problem with your view is that it fails the test of history. What you say here “sounds good” but just did not happen – and there was no end in sight, hence, the CAFC.
anon, IF you are talking about forum shopping, see Chief Judge Wood’s proposal. The loser could choose either the local circuit or the Federal Circuit. If both side want to appeal and they want different courts, a random draw picks one. If a patent is adjudicated in multiple circuits, their appeal are consolidated thereafter in one court.
No more forum shopping by circuit. So, what remaining objection is there broaden the writ of patent appeals to other circuits just so that we can get other views on the same issue.
As I posted above, forum shopping was not (ever) the only aspect to consider.
Mistakes happened every day
There’s “mistakes” and then there’s the complete gaping inanity of patenting logic — an inanity that is being cheerleaded to this day, here and elsewhere, by parties directly invested in that inanity and pretty much nobody else. That’s the kind of “mistake” that causes enormous problems and “shunts whole areas of law into unexpected directions.”
BMC Resources and FilmTec
Please remind everyone again about what the subject matter of the patents at issue in those cases.
…and (once again) with the class w@rfare type “pocketbooks” – on a form of innovation most accessible to the common man….
But turn to biochem and small molecules, and how much of that is open to how wide of a class of people…
Oops, there is that dichotomy again…
the common man….
ROTFLMAO
Keep up the chuckles, Malcolm – ( I notice that you avoided actually discussing the item I presented)
“the Federal Circuit’s historic problem has been the short-sightedness of a few judges who can’t see the forest through the trees and who seemed to believe their purpose in life was to protect the pocketbooks”
How do you suppose that happened, Emmemm? Was it some kind of coincidence or conspiracy?
It’s the nature of a specialist court that the judges careers are invested in a particular outcome and that outcome is whatever expands and captures power for the special jurisdiction. The CAFC today is still a court that could adopt State Street Bank all over again.
State Street Bank was unanimous and there were a dozen judges that declined to reconsider it.
Can you look at DDR and expect any difference?
As long as the judges are personally interested in the outcomes, the court isn’t going to do a disinterested job.
“one of those problem judges resigning fairly recently”
His replacement invested her entire career in patenting logic and abstract ideas. Maybe she’ll shape up on the court but that would just be wild good luck; if she sticks to form, she’ll make Rader look like an ally of progress and sanity by comparison. And that’s just what a specialist court should expect.
The CAFC today is still a court that could adopt State Street Bank all over again.
I completely disagree.
Dinosaur thinking has a way of mostly disappearing into the weeds and that was a classic instance of it. So was the “no dissection ever!” nonsense that we heard in the run-up to Prometheus v. Mayo. Barring some major unexpected cultural change, those days are gone forever.
I’ve said it before and I’ll say it again: we’ll all look back on this “patenting logic” episode someday and wonder what the e f f people were thinking. And that day will happen in most of our lifetimes. My guess is it will happen sooner than most people think.
Plager and Bryson were on the SSB panel and still participate on the court. Newman, Moore, and O’Malley wanted to keep the Alice claims. Linn is still an active senior judge who liked the Alice claims. Probably Stoll, too.
How is that a court that couldn’t issue a new SSB decision?
The rot exists in the organization of the system. SSB never would have existed and certainly not for a decade as law of the land without a rotten court in the center. Jurisdiction should return to the regional circuits.
Alex: Regulatory capture. Judges and (in particular) clerks are incentivized to maintain friendliness (the nice way of saying it) with the patent bar. Plus the prestige of the court is overly connected and dependent on the centrality of patents to industry, further incentivizing the court to aggrandize patents.
Right.
Even with if congress were to adopt the proposals of Chief Judge Wood, where the appellant could choose the local circuit court or the Federal Circuit for his appeal, one could expect an enormous uproar from the people who control the IPO, the AIPLA and similar organizations because of exactly what you just said. In no way would they want other circuits to issue opinions on patent matters even if there was no forum shopping problem.
There is text. Then there is pretext and subtext. What these organizations say is generally a cover for what they really want. What they really want to further the best interests of big business.
Dennis, I have to agree with Tom on this, and not just because he is a law school classmate of mine as well as the leading authority on trademark law.
I think one should not overestimate the trademark law expertise of the Fed. Cir.. It is quite rare that even a real patent attorney gets appointed to the Fed, Cir, much less any TM attorney. But at least Fed. Cir. appointees get a lot more on-the-job training in inter-partes contested patent cases.
I also doubt if there is a huge difference in case outcomes between different circuits in trademark cases, as there used to be for patents on 103 obviousness issues? [That was a major rationale for the Fed. Cir. I can remember when a patent suit in IL, in the 7th Cir., had maybe a 50% chance, whereas suit in WI, only one state over, but in a different Circuit, had virtually no chance of winning.]
Paul, consider the Honorable C.J. Wood on the so-called need for a specialty court:
“The argument in favor of a specialized court for patent appeals is that this is an area where an expert court is particularly beneficial. But that proposition is contestable from several standpoints.
…
“If the answer is simply that patent appeals are much more difficult than any other type of case that comes before the courts, there are two responses. First, how much harder are they (in theory), and what makes them so? We have not adopted specialized trial courts for patent cases; they go before the district courts, who manage the expert witnesses and data collection with the same tools they use for other complex litigation. Both the district courts and the regional courts of appeals routinely deal with all manner of difficult, technically complex subjects.
…
Even though these cases are complex, there is great value in obtaining the views of a number of judges, and there is great value in using generalist judges. Law, in the final analysis, governs society. It should not be an arcane preserve for specialists, who never emerge to explain, even to their clients, what the rules are or why one side or the other prevailed. … Patent cases are no worse (and no better) than cases arising in many other areas. While there may be some gains from specialization, and while many of the civil law nations have opted for this approach, there are losses too. Traditionally, we have found that the costs of specialization are not worth its benefits. I remain convinced that this continues to be true, at least in our legal culture.”
At *6-7.
link to studentorgs.kentlaw.iit.edu
May I suggest that no other IP law specialty sees any benefit with a specialty court and is quite willing to live with minor differences in law between circuits.
Looking back, I wonder why some circuits were so patent friendly and others were so patent hostile. I have heard that the Second Circuit was perceived as patent hostile and yet it had on its court one of the best jurists of all time, Learned Hand.
If anybody can recall, which circuits were favored for patents and which circuits were not and for what reason?
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