At the American Bar Association’s Intellectual Property Law Section spring conference at the start of May, a group of federal judges overseeing complex patent lawsuits admitted they are not experts in the specialized technological fields underlying patent litigation. According to reporting from Bloomberg Law, Senior Judge William Bryson of the Court of Appeals for the Federal CircuitSee CAFC candidly stated, “People like me are experts in no fields,” while Judge Kara Stoll added, “It’s been a long time since I got my degree,” emphasizing, “It’s imperative that you teach us.”
This admission, while unsurprising, is notable in light of ongoing debates around the utilityAn invention must useful to be patentable. Very few inventions are invalidated as lacking utility. Perpetual motion machines, for example, are typically found invalid for lacking utility. of the Patent Trial and Appeal Board (PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA.). With district court judges managing expansive dockets—“350 to 400 cases on our docket at any given time,” according to Judge Gregory B. Williams of the District of Delaware—it’s unreasonable to expect them to master the wide range of technological fields involved in patent cases. From biotechnology and semiconductors to software and telecommunications patents, the sheer volume of unique inventorship issues, prior artPrior art is the knowledge in the field of a patent that was publicly available before the patent was filed. determinations, and technical jargon makes it impractical for any single district court judge to become an expert while also handling hundreds of other cases across various legal areas.
In addition to being more efficient and less expensive than traditional litigation, expertise is another PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. asset. PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. judges are experts in these fields—they don’t need to be taught. As noted by leading IP firm Fish & Richardson, “In contrast to federal district court judges, APJs are more likely to possess substantive experience in patent law as well as the technical expertise of the patent under review.”
It is partly because of this expertise that Congress, when passing the America Invents Act, expected federal judges to stay proceedings if related patent validity challenges were playing out at the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA.. Instead, USPTOUnited States Patent and Trademark Office. See also PTO. leadership has actively committed to directing questions of patent validity away from the agency’s technically-trained judges and into federal courts where cases are overseen by judges who are, by their own account, not experts.
One might assume that the USPTOUnited States Patent and Trademark Office. See also PTO. would be invested in promoting itself as the arbiter of disputes it is uniquely qualified to resolve. Of late, the opposite has been true.
