Disbanding the Federal Circuit is a Bad Idea

By now much of the patent world likely already knows that Chief Judge Randall Rader has announced that he will step down as Chief Judge of the United States Court of Appeals for the Federal Circuit effective May 30, 2014. Many in the popular press are tying his decision to step down to his recent recusals, which were necessitated by an ill-advised email sent by Judge Rader praising a member of the patent bar that routinely appears before the Federal Circuit. On May 23, 2014, Judge Rader sent a letter to all of the other Judges on the Federal Circuit apologizing for his lapse in judgment and for the need to recuse himself. Given the timing of Judge Rader’s decision to step down and his apology letter it is easy to understand why many are speculating that the two are connected.

Given the anti-patent climate that has been created by major Silicon Valley technology companies, the Obama Administration and certain Members of Congress, the news that Judge Rader will step down as Chief Judge comes at a difficult time. As innovators celebrated the defeat of the latest round of patent legislation that would have weakened the patent system and patent rights generally, the industry is now face with losing Judge Rader, at least to some extent.

Judge Rader will stay on the Federal Circuit, he will continue to teach, lecture and travel, spreading the positive patent message that he delivers so uniquely well. Even though the Chief Judge is really only a leader among equals, there is no doubt that a bully pulpit is provided to a Chief Judge. Judge Rader was willing to talk about the virtues of the U.S. patent system generally, and continually raised issues relevant to businesses both small and large that innovate. His absence at this critical time will be missed.

Perhaps most troubling about this entire episode, if in fact it is an episode at all, is that it comes without any evidence of impropriety. Of course, for lawyers and even more so for Judges, ethics is about the appearance of impropriety, not actual impropriety. Still, anyone who knows Judge Rader has to know that there is absolutely no chance his view or opinions would ever be swayed by anything other than merit. He enjoys a vigorous debate, and he has always appeared uniquely qualified and extraordinarily ethical. To the extent that the improvident e-mails played any role in his stepping down I have no doubt that it was to make sure the important work of the Federal Circuit was not called into question.

Of course, certain vocal “journalists” within the ranks of the popular press that hate patents so much just couldn’t help themselves. These events are far too precious an opportunity to pass up when it offers the ability to push their own preconceived agenda. It didn’t take long for one of the most intellectually dishonest patent critics to surface calling for the dismantling of the Federal Circuit while he lays praise on the Supreme Court. See After a scandal at America’s patent court, it’s time for reform.

Now the thing you need to know about this particular patent critic is that truth is not something that he concerns himself with at all. In the past he has incorrectly claimed that the Federal Circuit directly ignored the Supreme Court and decided to allow software patents on their own initiative. See Lies, Damn Lies and Media Hatred of Patents and Doubling Down. Anyone who knows the history of software patents knows that such a claim is utterly absurd and could have been easily determined to be false with the most modest effort and research.

The Supreme Court specifically found software to be patentable in Diamond v. Diehr in 1981, which was before the Federal Circuit was created; the Federal Circuit was not created until October 1, 1982. Furthermore, it is well accepted fact, that Martin Goetz was awarded the first software patent by the United States Patent and Trademark Office in 1965, some 17 years before the Federal Circuit was created. So take with a grain of salt anything this fellow asserts as a fact because at least in the patent space he just makes things up as he goes along.


Still, even though patent critics play fast and loose with the truth, and sometimes outright lie, they hate patents and the Federal Circuit so much that they want there to be a scandal so they can ride the controversy toward their agenda, which is a dismantling of the patent system as a whole. In order to accomplish this task they pretend that the Supreme Court Justices are akin to infallible patent gods. Of course, nothing could be further from the truth if you actually want to concern yourself with facts.

Let’s talk about facts. The reality is the United States Supreme Court just doesn’t understand patent law and they don’t understand science. I suppose this is to be expected when you consider that according to Justice Kagan the Justices don’t even use e-mail! Do you know anyone who doesn’t use e-mail? If you do know someone who doesn’t use e-mail do you think that person is in a position to opinion in any way, shape or form about issues that fundamentally impact technology and innovation? To put it bluntly, it is completely appropriate for technophobic individuals, even if they are Supreme Court Justices, to even consider, let alone decide, patent cases.

Of course, Chief Justice Roberts of the United States Supreme Court takes issue with the Federal Circuit attempting to interpret and apply Supreme Court precedent. Years ago, in oral arguments in Carlsbad Tech. v. HIF Bio, Roberts lamented what he perceived to be the Federal Circuit’s habit of ignoring Supreme Court precedent.

Roberts can complain all he wants about the Federal Circuit not following Supreme Court precedent, and I am certainly not a fan of a lot of recent Federal Circuit cases, but let’s be perfectly honest here, shall we? It is impossible to follow Supreme Court precedent on patent law issues because decisions are inconsistent with one another, often internally inconsistent and scientifically inaccurate. To the extent that the Federal Circuit is seen as not following Supreme Court precedent it is because the Supreme Court refuses bright line rules, which in the world of science and technology are absolutely essential. Of course, bright line rules are also exceptionally helpful in the business world for decision making purposes as well. Furthermore, the Supreme Court decides one case here, another case there, and has no appreciation for how patent law concepts and principles are intertwined. Indeed, a careless, overbroad, poorly worded decision on a litigation issue, for example, will also impact patent prosecution, and vice versa.

But let’s talk specifics and look at a handful of Supreme Court rulings in the patent space.

In terms of scientific inaccuracies, the Supreme Court said in Warner Jenkinson v. Hilton Davis that a pH of 5 is equivalent to a pH of 6, which is absolutely absurd because pH is logarithmic. There seemed to be no appreciation of the logarithmic nature of pH, what it means that pH is logarithmic, or anything other than 5 is the number right next to 6. The Supreme Court also said in Graver Tank v. Linde Air Products thata manganese is equivalent to magnesium.  Both of these are scientifically ridiculous statements.  They’re just not true.

The Supreme Court also incredulously asked what utility converting hex-code into binary code could ever have since it could only be used in a computer.  When confronted with whether to allow software to be patented in Gottschalk v. Benson, in 1972 Justice Douglas wrote that “the mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.”  Justice Douglas was objectively incorrect.  The claim in question clearly was tied to a machine and the mathematical formula would not be preempted.  It could be continued to be used, just not in the fashion covered by the claim.  For proof that the mathematical formula could not be preempted the claim in question specifically required this: “storing the binary coded decimal signals in a reentrant shift register.”  So clearly one could employ the formula, but not the process as tied to the shift register in the specified way.

The Supreme Court also said in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. that in order to be entitled to prove infringement under the doctrine of equivalents the patentee has to provably demonstrate they were not in possession of the equivalent at the time they filed the application.  What that means is that the patentee must prove that they didn’t invent the equivalent they are claiming is now infringed by their patent. So only if the patentee proves they did not invent as of the time they filed the application are entitled to claim infringement under the doctrine of equivalence. To call that absurd is an understatement. Applied literally it fundamentally alters mountains of jurisprudence interpreting the requirements of 35 U.S.C. 112(a), which require the patent applicant to not only be in possession of an invention but to explain it with enough specificity so that others can understand the boundaries of the invention, make the invention and use the invention. Sadly, the Supreme Court didn’t show any understanding of the ramifications of what they said.

The Supreme Court in Mayo v. Prometheus also said that a claimed invention that is not identical to something that appears in nature is still nevertheless patent ineligible as being a law of nature. See It is almost impossible to unpack such an obviously flawed logical statement, yet in Mayo Justice Breyer acknowledged that the “additional steps [contained in the claim] are not themselves natural laws…” Thus, even though the claim in question included additional steps that are not found in nature the totality of the claim was still insufficient “to transform the nature of the claim.” If a student were to make such a statement they would fail. It is too cute at least by half, if not by whole, and shows a complete lack of intellectual honesty on the part of the Supreme Court. If they wanted to invalidate the claims in Mayo, then the proper analysis was under 35 U.S.C. 102, 103 and 112, as urged by the Solicitor General. In essence, the Supreme Court got lazy, didn’t want to do any heavy lifting, and took the logically ridiculous, internally inconsistent way out because they can; after all they are the Supreme Court and they do know everything about everything.

These are just five different cases where the Supreme Court said things that are clearly wrong, because they were logically inconsistent, intellectually dishonest or flat out scientifically inaccurate. While this always pains some to hear, the Supreme Court is simply not infallible. No where is this lack of infallibility more pronounced than when it comes to the intersection of science and patent law.

While I do hope the Federal Circuit can find common ground, there is no doubt that making sense of Supreme Court precedent on patent law issues is virtually impossible. The remedy for this is not to dismantle the Federal Circuit. The remedy would be for the Supreme Court to get a clue, or to take patent cases only to the extent that there is an irreconcilable split within the Federal Circuit. That would be far more consistent with the intent of the Federal Circuit when it was created because after all, the Federal Circuit was create for the express intent of taking patent cases away from the Regional Circuits and to relieve the need for the Supreme Court to take patent cases. Put another way, the real intent of the Federal Circuit was to result in at least some litigated patents being valid, and the Supreme Court and the Regional Circuits to a very large extent never ruled in favor of the patentee.


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Join the Discussion

11 comments so far.

  • [Avatar for MaxDrei]
    May 30, 2014 01:03 pm

    I think that young people in Europe become lawyers because they want a career practising law. I think that the patent attorney profession in Europe aims to attract young people who are looking for a career in business but also have i) an unquenchable appetite to study and understand science and technology ii) a burning desire to explain to others what they have only just themselves understood, and iii) advocacy skills and the competitive drive to nourish them.

    Me, for example. On graduating, I knew I did NOT want to be a doctor, lawyer, accountant or research scientist. I thought I would get into technical journalism. Then I found out that the patent attorney profession suited me perfectly.

    And yes, also in Europe the difficulties of properly testing claim drafting competence just keep on growing.

  • [Avatar for Gene Quinn]
    Gene Quinn
    May 30, 2014 10:55 am


    The new spam control question seems to have nearly completely stopped spam comments, which is wonderful!

    The US used to test claim drafting competence on the patent bar exam, but that stopped in early 1998 or late 1997. I personally took the first exam without claim drafting on it in August 1998. The problems the US experienced were twofold. First, with so many people wanting to take the exam grading claim drafting exercises became quite onerous from the USPTO perspective. Second, from the exam takers perspective the claims were graded not to ensure competence at all. The only way to score well on claim drafting was to draft a claim that was so narrow that it would be commercially useless for the client. So the way to pass the exam became writing a claim that essentially no examiner could reject for any reason and which would require a first action allowance.

    I have heard some rumblings about claim drafting or technical skills coming back to the patent bar, but nothing official and only very very early rumblings, mostly from the patent bar and some ex PTO officials.

    Based on how you describe the English system I like the sound of that a lot, although it is probably politically not feasible in the U.S. because we cling to the notion that having trial judges who are experts is a bad idea.


  • [Avatar for MaxDrei]
    May 29, 2014 07:01 pm

    Hey Gene, I like the new Spam Control question. This to see if it works.

    There is much criticism of the judges, that they are not patent law specialists, but I do not see that as the obstacle to caselaw clarity. Also in the UK, the appeal court and supreme court judges that hear patent actions are seldom patent law specialists, and there is no complaint about their work.

    But in England the judges at first instance are patent specialists and every trial is a bench trial, not a Jury Trial. Appeals are lodged in only a minority of cases, and seldom succeed.

    Besides, the patents are written, filed and prosecuted by members of a distinct specialist profession, with its own specialist and tough exam to qualify in the arts of patent attorney practice. Notably, claim drafting competence is tested. Attaining high enough marks to pass ain’t easy. Multiple choice just doesn’t cut the mustard when it Comes to extracting the inventive concept out of a client’s Memorandum.

    So the English judges are intolerant of less than competent drafting skills and are kept up to the mark by the overall high professional standards at the PTO.

    So I suggest that the USA institutes a path to qualification that includes testing claim drafting competence. Not only will it benefit the clients but over time it will gradually raise judging standards too.

  • [Avatar for EG]
    May 29, 2014 06:01 pm

    “I thought we went back and forth one time, perhaps by private correspondence, discussing SCOTUS cases that didn’t make any sense and were just inaccurate. I couldn’t find that conversation anywhere. What cases are you thinking about in particular?”


    Here are a few off the top of my head:

    KSR International: Our Judicial Mount Olympus says that obviousness can be based on “common sense, but where does “common sense” appear in Section 103?

    Mayo v. Prometheus: the claims recite a “process” which is one of the four expressed the statutory subject matters included in Section 101. But contrary to what Our Judicial Mount Olympus says, Section 101 never refers to any “exceptions” such as “natural phenomena, laws of nature, or abstract ideas).

    Bilski/Mayo v. Prometheus/Myriad: Our Judicial Mount Olympus (they’re not alone) blip over subject matter eligibility under Section 101 as being a “requirement’ but not a “condition for patentability” like Sections 102/103, as is required by Section 282 for an invalidity defense.

  • [Avatar for SJE]
    May 29, 2014 04:21 pm

    Gene: I agree that people cling to a fiction, but I disagree with you about the tolerance of scientific ignorance, and other ignorance in general. The problem of ignorance is that they do not even comprehend their ignorance.

    A related issue is who is selected for the Supreme Court (and its clerks). They are, in general, people who went straight from ivy league undergraduate to ivy league law school, clerkship, then service as lawyers in federal govt, academia or the appellate courts. Where is the military service, running a business, or even running a government agency? Its a long time since we had Taft, who was a Justice as well as Governor, Senator, and President. Justice Jackson, who didnt even graduate from law school but served at the Nuremburg trials, was one of our best justices. Being opinionated is a disqualification, else we would surely have already had a Justice Posner.

  • [Avatar for gene.quinn]
    May 29, 2014 02:57 pm


    I think the problem goes deeper. I don’t think the problem is that people believe it is acceptable to be scientifically ignorant. I think the problem is really one squarely about political correctness. Despite the fact that the world is getting more complicated and technologies now are capable of doing what a decade ago was still considered science fiction, we cling to the notion that any average Joe is capable of understanding enough to provide not only an informed, but correct decision. That is, of course, pure fancy.


  • [Avatar for SJE]
    May 29, 2014 02:27 pm

    I often hear statements like “if I understood science I would have become a doctor instead of a lawyer.” We wouldnt tolerate such ignorance in our doctors, yet tolerate it in our judges.

    Indeed, we repeatedly strive for diversity on the bench and in juries. There would be huge protest if the laws on rape and women’s reproduction were decided by an all-male Supremen Court, or if the rights of minorities were decided solely by WASP males. Yet ignorance of science is OK.

  • [Avatar for Anon]
    May 29, 2014 10:19 am


    I agree with two important concepts you share:

    1) the rule of law is what is applied in future cases – and that the rule is the important takeaway from a case. I have seen too many instances of people stuck on facts, and not pulling forward the rule of law.

    2) Justice Breyer does not seem happy with the rule (or perhaps more accurately, the lack thereof) that has come from his decision in Mayo. In all fairness to the lower courts, I do not think that a workable law was capable of being derived from Breyer’s decision in Mayo, so Justice Breyer should first be most upset with himself, as clearly <I<Mayo was an appeasement to him from his earlier strong feelings on a case that was determined to have cert improvidently granted.

    As to the Alice case, I have previously supplied my hopes that history repeats with a Chakrabarty pro-patent like decision, or a Diehr-like decision that followed the Benson and Flook decisions. It is time for the pendulum to swing back to promoting innovation and recognizing that patents are a good thing.

  • [Avatar for Paul Cole]
    Paul Cole
    May 29, 2014 07:23 am

    Anyone who can navigate the contradictions within the opinion of Justice Douglas in Funk Brothers v Kalo deserves a medal You can spend tens of hours considering the opinion and its background without finding anything clearly workable. And what matters is what rule he applied (if any) rather than what rule later commentators and courts thought he applied.

    And if you read the oral argument in Alice you will see that Justice Breyer is now unhappy with his opinion in Mayo and the way it has been interpreted.

    So what will happen in Alice???

  • [Avatar for gene.quinn]
    May 28, 2014 05:54 pm


    I thought we went back and forth one time, perhaps by private correspondence, discussing SCOTUS cases that didn’t make any sense and were just inaccurate. I couldn’t find that conversation anywhere. What cases are you thinking about in particular?

    I also should have mentioned how the Supreme Court in Myriad also said that discoveries are not patent eligible, although the statute says otherwise. I may add that now.


  • [Avatar for EG]
    May 28, 2014 03:45 pm

    “It is impossible to follow Supreme Court precedent on patent law issues because decisions are inconsistent with one another, often internally inconsistent and scientifically inaccurate.”


    Let’s also add to this list of faux pas by Our Judicial Mount Olympus, decisions that are at odds with the “plain language” of the patent statutes.

    As for that disingenuous Timothy Lee post on VOX, I took one brief look at it to see what it was about and clicked it off in disgust. More nonsensical malarkey from the anti-patent crowd.