Docs @ BIO: Hello, I Must Be Going - Judge Randall Rader Says Goodbye at BIO

by McDonnell Boehnen Hulbert & Berghoff LLP

BIO International ConventionLast week, Judge Randall R. Rader, until recently Chief Judge of the Court of Appeals for the Federal Circuit, opened a day-long session on Intellectual Property Law by saying farewell.  In a speech at varying times passionate and wistful, the Judge (who is widely viewed as a strong proponent of patent law and thus appreciated by many in the biotechnology community) spoke at length about the Court and his involvement in it, and its unique place in this country and the world regarding its signal influence on U.S. patent law.

Judge RaderEschewing the podium for a handheld microphone and the floor in front of the audience, Judge Rader started his talk by "confessing" that in thinking about his speech (beginning "ten minutes" before he began speaking) he couldn't think of any jokes from his repertoire that were appropriate (indicating, as he said, that he would have to dive into his remarks "humorless" and that "maybe I am the joke").  He then recounted at length the day more than thirty years ago when he met with Howard Markey, then Chief Judge of the Court of Customs and Patent Appeals, in his Senate office.  The topic: the Federal Courts Improvement Act, the bill that would establish the Federal Circuit.  The Judge remembered the "passion and vigor" with which Chief Judge Markey advocated for the new Circuit Court, and his belief that U.S. patent law needed to be "invigorated" to enable patents to "work uniformly across the nation" in stimulating the economy by encouraging and protecting innovation.  From that day to this Judge Rader confessed to being a convert to Judge Markey's vision.

Turning from the Court of Chief Judge Markey to the Court as it is, Judge Rader engaged in a little institutional "psychoanalysis," saying that the Court has a dual personality with regard to patent law.  On the one hand, the Judge said, the Court was established and has the characteristics of a court of special expertise in patent law.  In what was perhaps a nuanced reference to Seventh Circuit Chief Judge Woods comments last year that the other Circuits were just as capable of deciding patent law cases as the Federal Circuit (based on the judges' technical expertise or lack of it), Judge Rader admitted that many judges are not patent law experts when they join the Court but "hearing 5-10 cases a month" quickly engenders expertise.  This forms the Court's "mission" or "agenda" or "responsibility" to ensure uniformity in the law geographically and strength of innovation policy.  This mission was something Judge Markey believed in, and Judge Rader and other members of the Court continue to do so.  In this regard the Judge mentioned a study by Professor Rebecca Eisenberg at NYU that showed that, of the twenty most influential cases decided in the Court's first decade, Judge Markey wrote eighteen of them.  On the other hand, according to Judge Rader there are members of the Court who believe that the Federal Circuit should decide cases more dispassionately without any particular concern for the development or consistency of patent law itself; he invited audience members "who know the judges" to draw up their own lists regarding into which camp the current judges fall.

Judge Rader then spent a few minutes discussing the consequences of the Federal Circuit's special focus on patent law and that having such dedicated subject matter jurisdiction created a "great responsibility" of patent appeals, that make this Court different from the other Circuit Courts and mitigates against the Federal Circuit just being a "decisional body" that handles these questions like other courts.  He pointed out that the position of the Court in the judicial hierarchy is unique -- the U.S., in creating the Federal Circuit made a policy choice to place expertise on technology in the intermediate appellate court level.  This is different than the case in Great Britain, he said, where that role is at the trial court level, consistent with the common law model that appellate courts are intended to correct errors not to make decisions in the first instance.  In contrast, in Germany the final decision is made by a court with expertise at the top of the judicial foodchain.  One advantage of the German model, he noted, was that it does not occasion some of the tensions between a court having expertise (the Federal Circuit) that is then reviewed by a court without expertise (the Supreme Court), which he acknowledges is "doing its best within a different culture" to apply the law but that it occasionally leads to "contradictory" results (which was the closest the Judge came to criticizing the Supreme Court or its recent spate of "contradictory" decisions).  And, exhibiting his intellectual breadth, the Judge noted the difference between the French Revolution (where the outcome was to kill all the judges with ties to the overthrown monarchy and structure a government where no one "with significant decisional authority" was placed over the people so that the legislature makes policy) with the American Revolution (which elevated judges to equal authority with the other branches of government so they can "overrule" the other branches when necessary, although the Judge did caution that he might not have said "overrule").  By "historical accident," Judge Rader said, the U.S. created a system where patent expertise was placed with the appellate court, leaving another review level above them without such expertise that creates tension between the two courts, making it sound almost inevitable that the current situation between the two Courts would eventually arise.

Finally, with regard to the Court's unique qualities and characteristics, Judge Rader cited its national jurisdiction, where the Federal Circuit "speaks in review and enunciates principles that are applied nationally."  This is a "vast responsibility" imposed on the Court, in view of the impact of its decisions on "in every similar factual situation" that may occur for each case it decides, in view of how the law the Federal Circuit enunciates affects "the largest economy in the world" and hence the global economy.  Judge Rader also noted that the Court's expertise and influence extends to all district court judges in the nation, and cited the interest among seventy-five district court judges who have "stepped forward" to be involved in programs to strengthen their skills in presiding over patent litigation, and the influence of the Court in this process.

With respect to patent litigation Judge Rader encouraged the lawyers making up the majority of the audience to address the system's "greatest weakness" that could be "potentially fatal":  the expense of a patent trial.  He asserted that any good trial lawyer will say that within a very short time after litigation commences she would be able to identify "95%" or even "98%" of the documents and other evidence needed to make her case.  Instead, the Judge accused the bar of looking for the smoking gun e-mail where the plaintiff admits to defects in her patent or the defendant admits to having to copy the patented invention.  This turns trials into "passion plays," according to Judge Rader, and greatly increases the costs of all patent trials despite the non-existence of such evidence in most cases.

Judge Rader took no questions; instead, be ended his remarks by exhorting members of the bar to "assume a role" and exercise "leadership" in improving the patent system.  He said that he believed that the bar is "just as important as the courts in addressing the problems of cost and complexity," and that "we are in this together."  "May you be up to your responsibility as I know the Federal Circuit judges will be up to theirs" was how he ended his talk, to a standing ovation and great well-wishes for his future.

Unless Judge Rader's significance on the Court, and the significance of his departure are not appreciated, a few quotes from his remarks in a recent case (when it had become evident that the zeitgeist had turned against patenting and patent law) should serve as a bittersweet reminder:

Too often patent law is misunderstood as impeding more than promoting innovation.  This academic proposition, called the tragedy of the Anti-commons in some scholarly presentations, suggests that exclusive rights impede the flow of information and limit experimentation that might lead to the next generation of technological advance.  Michael A. Heller & Rebecca S. Eisenberg, Can Patents Deter Innovation? The Anticommons in Biomedical Research, 280 SCIENCE 698 (1998).

In the first place, in an era of empirical research, one might ask the reason that this academic notion has never actually been verified.  Although studied, no research has substantiated this alleged attack on the patent system.  In fact, "the effects predicted by the anti-commons hypothesis are not borne out in the available data."  Timothy Caulfield, Human Gene Patents: Proof of Problems?, 84 Chi.-Kent L. Rev. 133, 137 (2009); see also American Association for the Advancement of Science, INTERNATIONAL INTELLECTUAL PROPERTY EXPERIENCES: A REPORT OF FOUR COUNTRIES 12 (2007) (finding the results of a 2006 survey of U.S. and Japanese researchers "offer very little evidence of an 'anticommons problem'" and that "IP-protected technologies remain relatively accessible to the broad scientific community").  Surveys of academic researchers have revealed that "only 1 percent . . . report having to delay a project, and none abandoned a project due to others' patents."  Wesley M. Cohen & John P. Walsh, Real Impediments to Academic Biomedical Re-search, in 8 INNOVATION POLICY AND THE ECONOMY 1, 10-11 (Adam B. Jaffe, Josh Lerner, & Scott Stern eds. 2008), available at (citing John P. Walsh et al., The View from the Bench: Patents, Material Transfers and Biomedical Research, 309 SCIENCE 2002 (2005)).  In other words, patents on research tools and biomedical innovations do not significantly slow the pace of research and do not deter researchers from pursuing promising projects.

The reason that patents have not been proven to impede more than stimulate technological advance is simple:  it does not happen.  It does not happen for several reasons.  First, experiments advancing technology rarely, if ever, generate commercial value.  Thus patent owners have little, if any, incentive to license or inhibit research.  Stated otherwise, even if a patent owner wanted to sue or license potential researchers, experiments do not produce income or a source of damages.  See id. at 12.

Second, in the modern age of technology, the character of technological advance has changed.  The era when the Bell Labs or some other tech center could hire the most promising engineers and essentially invent everything for the world has passed.  With the vast specialization of all fields of research, advances in technology require great cooperation.  A new product or a new direction in biotechnology or electronics will be produced by cooperation between a professor in Chengdu, China, a young programmer in Bangaluru, India, an engineer at a large corporation in Munich, Germany, a graduate student at Tokyo University, and a team at a small start-up company in Silicon Valley.  The patent system can help inform each of them of the other and bring together their incremental advances to achieve the next generation of progress in some tiny corner of human progress.

Thus, patents properly remain a tool for research and experimentation because the system encourages publication and sharing of research results.  Disclosure of how to make and use the invention is the "quid pro quo" of the patent grant.  See JEM Ag Supply, Inc. v. Pioneer Hi-Bred Int'l, Inc., 534 U.S. 124, 142 (2001).  In exchange for disclosure, the inventor receives a limited term of exclusivity to benefit from commercialization of his invention.  Without this promise of exclusivity, researchers at corporations would be forced to turn to secrecy as the best protection for their inventions.  Even academic researchers may delay publication of results in order to maintain an edge over the competition, Cohen & Walsh, supra at 14, and the race to the patent office helps counteract this tendency toward secrecy by rewarding earlier disclosure.  "The information in patents is added to the store of knowledge with the publication/issuance of the patent.  . . .  [It] is not insulated from analysis, study, and experimentation for the twenty years until patent expiration."  Classen, 659 F.3d at 1072.  Rather, information shared through patent applications is immediately available for others to build upon.  It speeds the progress of scientific endeavor.  In other words, the patent system's modern benefits facilitate experimentation far more than any hypothetical inhibition.

Momenta v. Amphastar (Fed. Cir. 2012) (see "Momenta Pharmaceuticals Inc. v. Amphastar Pharmaceuticals, Inc.: 'The Rest of the Story'").

Judge Rader was a Senate staffer and as Chief Counsel or Minority Chief Counsel for the Senate Subcommittee on the Constitution and the Subcommittee on Patents, Trademarks, and Copyrights.  He was appointed to the Court of Claims by President Reagan in 1988.  Elevated to the Federal Circuit in 1990 by President George H.W. Bush, Judge Rader served as Chief Judge from September 2010 until a few weeks ago.  In addition to his judicial role, the Judge has been an active teacher both in the U.S. and abroad and is one of the authors of the most widely used casebook for U.S. patent law, entitled Cases and Materials on Patent Law.


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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