Patent Enforcement – Winter 2011
Prof. White
Introduction:
What is the Court of Appeals for the Federal Circuit (Federal Circuit)?
· Exclusive appellate jurisdiction in patent cases
What is the Subject Matter Jurisdiction of the Federal Circuit?
· 28 U.S.C. §1295(a) – The Federal Circuit shall have exclusive jurisdiction of an appeal from a final decision: If the jurisdiction of that court was based, in whole or in part, on a section of 1338 of this title (except copyright and TM).
§ Not the regional circuits
§ Fed. Cir. has national jurisdiction
§ Located in Washington, DC
§ 12 active judges (authorized, can be less – 10 right now)
§ Adopts predecessor court’s cases as precedent (CCPA and Ct. of Cl)
§ 28 U.S.C. § 1295 – subject matter jurisdiction of the Fed. Circuit
w Exclusive jurisdiction of an appeal from a final decision from:
w U.S. District Courts, if based in whole or in part on 28 U.S.C. §1338, except for claims arising under an Act of Congress relating to copyrights, mask works, or trademarks (these would go to 6th circuit)
Ø strange, since both patent and copyright are a federal property right – probably because judges don’t like doing patent cases (White)
w Court of Federal Claims
w Board of Patent Appeals and Interferences (BPAI)
w Court of International Trade
w An appeal regarding Plant Variety Protection
w Board of Contract Appeals
w U.S. International Trade Commission
w OTHERS
· 28 USC $1338: The district courts shall have original [and exclusive] jurisdiction of any civil action arising under any Act of Congress relating to: patents, plant variety protection, copyrights, trademarks.
· 28 USC $1331: Federal Question
What is the Standard of Appellate Review Governing Findings of Fact Made by a Federal Administrative Agency?
· Substantial Evidence per APA 5 USC $1706
What is the Standard of Appellate Review Governing Findings of Fact Made by a U.S. District Court?
· Clearly Erroneous – FRCP R.52a
What is the Standard of Appellate Review Governing Findings of Fact Made by the U.S. Patent and Trademark Office?
· Substantial Evidence per APA 5 USC $1706 Dickinson v. Zurko, (US 1999).
Federal Courts Improvement Act of 1982:
w Pub.L.No. 97-164
w 28 U.S.C. § 1338
Ø The district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to:
Ø patents, plant variety protection, copyrights, trademarks.
Ø Such jurisdiction is exclusive of the courts of states in patents, plant variety protection and copyright cases.
w 28 U.S.C. § 1331
Ø The district courts shall have original jurisdiction of all civil actions arising under the Constitution, laws, or treaties of the United States
w 19 U.S.C. § 337
Standard of Review
· What does the phrase Standard of Review mean?
§ How appellate court reviews findings of lower court
· What is the significance of knowing the Standard of Review in a given case?
§ What deference is given to findings of fact by the lower court.
Standards of Appellate Review-Court vs. Agency
· Dickinson v. Zurko, 527 U.S. 150 (1999) – The Fed Circuit review of PTO factual findings does not qualify as an exception to the APA court/agency rule, therefore the Fed Circ must now use the APA “substantial evidence” test, rather than the FRCP 52a clearly erroneous test (used for court/court review). So PTO findings of fact are now given more deference.
Facts:
w Zurko applied for a patent upon a method for increasing computer security.
PP:
w Examiner rejected claims as obvious.
w BPAI upheld the Examiner's rejection.
w Zurko appealed to the Fed. Circ. Where a panel found the PTO's factual finding to be clearly erroneous.
w Fed Circ. Reviewed decision en banc, and concluded the stricter (less deferential) court/court FRCP review was proper.
w Dickinson petitioned Supreme Court
Issue: Whether 5 USC $706 applies when the Fed Circ. reviews findings of fact made by the PTO.
Law:
w APA 5 USC $706 Court/Agency Review (AKA Chevron Deference)
Ø a reviewing court shall (2) hold unlawful and set aside agency findings found to be (A) arbitrary, capricious, [or] an abuse of discretion, or (E) unsupported by substantial evidence . . .
Ø Consolidated Edison (US) – substantial evidence as requiring a court to ask whether a reasonable mind might accept a particular evidentiary record as adequate to support a conclusion.
Ø Give more
ould be applied in reviewing the findings of fact of the Patent and Trademark Office (PTO), the United States Supreme Court granted petitioner, the acting PTO com-missioner, a writ of certiorari. The Court reversed the Federal Circuit's decision, finding that the correct standard of review was that set forth in the Administrative Procedure Act (APA), 5 U.S.C.S. § 706. The “clearly erroneous” standard had not been grandfathered by the APA, 5 U.S.C.S. § 559, because the Court of Customs and Patent Appeals, the predecessor court to the Federal Circuit, did not recognize the stricter “clearly erroneous” standard when the APA was adopted. Petitioner did not successfully present policy reasons that would justify an exception to the rule.
§ OUTCOME:
w The Supreme Court reversed the Federal Circuit's decision and held that the Federal Circuit should apply the standard of review set forth in the Administrative Procedure Act (APA) to review of the Patent and Trademark Office's findings of fact because, at the time of the APA's adoption, the Federal Circuit's predecessor court did not apply the stricter “clearly erroneous” standard.
Rights – Over what does a patent holder have a right?
Ø Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518 (1972). Deepsouth is allowed to escape infringment on a combination patent for deveining shrimp, by selling subassemblies which are quickly assembled (outside the US) by the customer.
Facts:
§ Both Deepsouth & Laitram hold patents on machines that devein shrimp more cheaply and efficiently than competing machinery – Laitram is senior, though
§ Laitram patents (Both are combination):
w #1 “Slitter”
w #2. “Tumbler”
§ After injunction, Deepsouth start shipping partially assembled de-veiners out of the country for the customer to finish assembly.
