January 2015

Institutional Competence: SCOTUS Dings CAFC

Others with more of a dog in the fight over Federal Circuit deference to district courts on matters of patent claim construction will have more (and more interesting) things to say about today’s opinion in Teva v. Sandoz. I’ll only note one particular passage in Justice Breyer’s majority opinion that caught my eye, on pages 7-8 of the slip opinion:
Finally, practical considerations favor clear error re­view. We have previously pointed out that clear error review is “particularly” important where patent law is at issue because patent law is “a field where so much de­pends upon familiarity with specific scientific problems and principles not usually contained in the general store­house of knowledge and experience.” Graver Tank & Mfg.Co. v. Linde Air Products Co., 339 U. S. 605, 610 (1950). A district court judge who has presided over, and listened to, the entirety of a proceeding has a comparatively greater opportunity to gain that familiarity than an appeals court judge who must read a written transcript or perhaps just those portions to which the parties have referred. Cf. Lighting Ballast, 744 F. 3d, at 1311 (O’Malley, J., dissent­ing) (Federal Circuit judges “lack the tools that district courts have available to resolve factual disputes fairly and accurately,” such as questioning the experts, examining the invention in operation, or appointing a court-appointed expert); Anderson, 470 U. S., at 574 (“The trial judge’s major role is the determination of fact, and with experi­ence in fulfilling that role comes expertise”).
It seems to me that this reasoning is a fairly direct challenge to the raison d’être of the Federal Circuit.  Learned Hand himself complained that the technical knowledge and expertise necessary to oversee the operation of the patent laws were beyond the grasp of most generalist Article III judges, and this was among the weightier reasons underlying the creation of our only federal appeals court whose jurisdiction is defined by subject matter. But judging by the Supreme Court docket (and the ruminations of some fairly capable generalist federal appellate judges), the argument for a specialist patent court is increasingly under assault.
Of course, it is trendy to take pot-shots at the Federal Circuit, and at the patent system generally. And the Supreme Court has been admonishing the CAFC–in subtle and not-so-subtle ways–for years; the quoted language from the Teva opinion is just the latest in a long line of examples. But the status quo has its defenders, and it does not seem likely that Congress will be loosening the Federal Circuit’s grip on patent law any time soon. So in the meantime, we’re left in the awkward position of continuing to rely on an institution whose comparative competence is increasingly called into question. Which, regardless of your view of the merits of a specialist court, can begin to wear on that court’s perceived legitimacy.

The Nice Classification and Law’s Expressive Function

Happy New Year! For trademark lawyers, today marks the entry into force of the 2015 Version of the 10th Edition of the Nice Classification. This is the classification system that trademark owners refer to in identifying what types of goods or services they are claiming a right to use their marks with. (Trademark law allows for concurrent use by different users in sufficiently distinct product or service categories–think Delta Faucets and Delta Airlines). Just scanning the USPTO’s helpful list of “noteworthy changes” in the 2015 version, I’m reminded how much trademark law is a window into society, and how it can be example of what Cass Sunstein called the “expressive function” of the law.

Glancing through the list, we see that e-cigarette fluids are now firmly associated with smoking and tobacco instead of chemistry; that 3D-printers are considered less a scientific curiosity and more a useful tool; that the government is no longer quite so particular about categorizing sex toys according to precisely how they get you off.

Of course, against this apparently progressive list of changes are some more troubling indicia of an increasingly stratified and commodified consumer culture. We must now be careful to distinguish custom tailoring from mere clothing repair. We apparently need separate categories for all the various specialty mitts one might use for different household tasks–whereas once a washcloth could be used in the shower or on your car, now you need two different specially-designed gloves to achieve both tasks–and be sure you don’t confuse either with the different specialty mitt you use in the kitchen. And because even in our social interactions we’d rather spend money than time and effort, there is now legal recognition for branded gift wrapping services.

So that’s where we’re headed in 2015. Whether law is leading or following, I’ll leave you to decide.