Intellectual Property Survey Outline

INTELLECTUAL PROPERTY

LEFSTIN

SPRING 2014

General principles of stat interpretation:

I. Textualism – text should control

A. Generally:

1. Plain meaning canon

2. Should ambiguity or absurdity be pre-req for turning to extrinsic sources

3. Should leg history ever be consulted?

B. Rationale:

1. Judicial role – judiciary should only interpret, not make law

2. Wary of looking beyond the text b/c of constitutional concerns

C. Problems:

1. Simplicity over accuracy

2. If the meaning were that plain, there wouldn’t be anything to litigate

II. Non Textualist theories– purpose of statute should control

A. Intentionalist based theories:

1. Generally:

a. Rooted in belief that polices chosen by elected, representative body should govern society

b. Decide meaning by looking at leg intent (either specific or general)

2. Intentionalist/ Originalist – specific intent

a. Generally:

i. Look to text first, then review leg history and unenacted versions of the bill

ii. Focus on narrow intent on specific provisions in question (what did the enacting leg intend regarding the precise problem presented to the court)

iii. Ex: JEM Ag Supply; Dillski/Mayo

b. Rationale:

i. Believe role of judiciary is to be a faithful agent of leg

c. Problems:

i. Can the Senate actually have 1 unified intent / can have different motive, but 1 intent

ii. Leg history can be used to support any result a judge or leg wants

iii. Legislators can manipulate history

d. Imaginative Reconstruction version of intentionalism

i. Judge tries to imagine what the enacting leg would have intended had the precise problem been raised during the enactment process

3. Purposivism

a. Generally:

i. Text, if plain meaning is futile/ at variance with policy, look to purpose of act, leg history, social and legal context

ii. General focus that legislature had in enacting statute (what problem was the leg trying to redress and how did it redress that problem)

iii. Caveats: judges should not give words (1) a meaning those words cannot bear nor (2) a meaning that would violate established policies

iv. Can interpret statutes in situations never contemplated by enacting legislature

b. Rationale:

i. Believe they are faithful agents of a well-functioning regulatory regime

c. Problems:

i. Discerning a statute’s purpose

ii. Statutes generally have more than 1 purpose, and sometimes conflict

iii. Exceptions to the purpose?

iv. Judges are not appropriate policy-makers (no accountability)/ intruding into leg arena

B. Dynamic interpretation:

1. Generally:

a. Adopting law to new situations, understandings

b. Encourages judge to be flexible, consider what the enacting leg would have wanted given common day realities

2. Problems:

a. Same as purposivism

b. Power grabbing (more likely to happen in con interpretation)

Agency Law

I. Major issue: How do courts review actions of admin agencies?

II. Basic Anatomy of Agency Action under the APA:

A. Adjudication

1.Formal §554

a. Requirements of §§556, 557 apply

2.Informal

B.Rule Making

1.Formal § 553

a. Requirements of §§ 556, 557 apply

2.Informal

a. Notice and comment Rulemaking

3.Exempted

a. Policy statements, “interpretive rules” and procedural rules

III. APA §706 – scope of review

A. The reviewing court shall

1.(2) hold unlawful and set aside agency action, findings, and conclusions found to be—

a. (a) arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with the law

b. (e) unsupported by substantial evidence in a case subject to sections 556 and 557 of this title or otherwise reviewed on the record of an agency hearing provided by statute

IV. How judicial review of adjudication under the APA usually works

A. Formal adjudication

1.§§ 556-557 set procedural requirements

a. Trial-type hearing before Administrative Law Judge

i. If statute says this is required/ whether decision must be made on basis of record generated

b. Formal findings generated

c. Decision must be on record generated at hearing

2.Judicial Review

a. Substantial evidence for fact finding

b. Arbitrary/capricious/ abuse of discretion for other aspects [agency’s reasoning]

B.Informal adjudication à PTO

1.No specific procedural requirements

a. But due process clause may have application

2.Judicial review

a. Arbitrary/capricious/ abuse of discretion – pretty deferential

b. Agency’s decision must articulate basis for finding

V. APA §554 : formal adjudication

A. (a) this section applies, according to the provisions thereof, in every case of adjudication required by statute to be determined on the record after opportunity for an agency hearing, except to the extent there is involved—

1.(1) a matter subject to a subsequent trial of the law and facts de novo in a court

VI. How the fed circuit has structured review of PTO decisions;

A. Informal adjudication

1.No specific procedural requirements

B.Review is nonetheless a substantial evidence standard

1.Said to be a more exacting standard than arbitrary/ capricious/ abuse of discretion

2.Less deferential than arbitrary/capricious

C.PTO reviewed for substantial evidence in factual circumstance, less deferential than arbitrary/capricious

D. Zurko—using deferential standard of review

1.Issue: content of prior art. dispute boils down to: whether APA’s standards of review vs the long standing practice of fed circuit—patent office should be reversed

2.Holding: apply APA clearly erroneous standard, APA’s standard – more deferential

a. Scalia: no difference b/t APA standards of review

3.Rationale:

a. When we have an agency, they have specialized knowledge – give agency more leeway; separation of powers; courts not politically accountable

E. Gartside: whether action should be reviewed for substantial evidence

1.Standard of review should be substantial evidence—formal adjudication APA §554; judge concludes that this is informal proceedings, usually all we ask is that it’s reviewed under arbitrary, capricious standard, but since there is a record and a reference to appeal, despite the fact that this is informal, we should review this under substantial