Panelists Push for Predictability at IPWatchdog’s 2024 Patent Litigation Masters Program
“[In the early days of the Federal Circuit], it was the whole ethics of the court to be predictable and consistent and to not engage in policymaking on a personal level. Now, judges want to reshape the law.” – Judge Paul Michel
Gene and Renee Quinn with Judges Paul Michel (second from left), Pauline Newman and Randall Rader.
“Make it happen.” That was the request U.S. Court of Appeals for the Federal Circuit (CAFC) Judge Pauline Newman made of attendees of IPWatchdog’s Patent Litigation Masters 2024 program on Monday, imploring them to “think creatively” to solve the intellectual property problems of today. Pointing to developments such as the Unified Patent Court (UPC), Newman said “it’s a time of change and flux, and we can learn a good deal, not only from the UPC, but the way the law is developing in jurisdictions like Japan and China.”
The Joy is Gone
Newman spoke on a panel with retired CAFC Chief Judges Paul Michel and Randall Rader, who echoed her sentiment that the Federal Circuit has lost its way in recent years. Michel especially criticized the court for having almost never gone en banc in a fundamental patent case in the last decade, calling it a “dereliction of duty.”
All three judges lamented the Federal Circuit’s current lack of a unified voice on fundamental issues of patent law, which Michel attributed in part to the lack of en banc decisions, explaining that in the early days of the court, the judges went to great lengths to bring certainty and predictability. In the earlier years of the CAFC, which was established in 1982, “it was the whole ethics of the court to be predictable and consistent and to not engage in policymaking on a personal level,” Michel said. “Now, judges want to reshape the law.”
Judge Rader noted that the court even sometimes went en banc sua sponte during his tenure, which partially overlapped with Judge Michel’s. Rader recalled how, in the early Circuit conferences of the CAFC, there would be 2,000 or 3,000 people in the audiences “and there was such enthusiasm for what the CAFC was doing.” He added: “I don’t hear that kind of joy anymore…. Now we need umbrellas; we’re under a cloud of rain.”
Gene Quinn (far left) with Stephen McBride of sponsor Carmichael IP and Patent Litigation Masters Co-Chair Scott McKeown of Diamond Sponsor, Wolf Greenfield (far right).
Know Your Audience
On the final day of the program, one session covered “Winning and Losing at the Federal Circuit,” where panelist Matthew Dowd of Dowd Scheffel cited Federal Circuit statistics showing that just over half of appeals at the CAFC in FY 2023 were patent-related, and the overall chances for all cases of getting a loss in a lower tribunal reversed was 13%. There was a 1 in 6 chance of getting a decision reversed on appeal from the district courts and an 8-10% chance of getting a decision fully reversed on appeal to the CAFC from the Patent Trial and Appeal Board (PTAB). “That’s a pretty daunting statistic,” Dowd said.
Another panel on Wednesday discussed winning and losing at the PTAB, where the chances of patent owners winning is equally daunting. Many of the panelists said one of the most common mistakes made there is that patent owners often forget who their audience is. “I still see patent owners coming in trying to play to a jury,” said Scott McKeown of Wolf Greenfield, who co-chaired the Litigation Masters program as the Diamond Sponsor. The Board can’t do anything with stories about how great the patented invention is, McKeown explained. “In front of an expert agency, it can’t work.”
Matthew Dowd shared CAFC statistics on appeals.
Earlier in the conference, McKeown also weighed in on the unpredictability injected into litigation by the U.S. Patent and Trademark Office (USPTO) on a broader scale. “The patent office makes hamburger and you have to litigate filet mignon,” he said.
Stephen Schreiner of Carmichael IP, which also sponsored the Litigation Masters Program, agreed with McKeown that winning at the PTAB requires understanding the difference between it and other forums. Schreiner urged attendees to “know your audience” and to make sure petitions and responses are directed to administrative patent judges who are scientists and engineers with advanced degrees and technical experience. “These are the people that are going to be reading the briefs and evaluating your arguments,” Schreiner said, so parties should “focus on the good stuff” and make sure their arguments aren’t shaky.
Harnessing Hope
The theme of uncertainty and unpredictability permeated many sessions at Patent Litigation Masters this year, including those on the International Trade Commission (ITC), injunctive relief generally, standard essential patent (SEP)/ FRAND litigation, patent damages, and more.
Judge Michael Fleuchaus (left) and Volkmar Henke of Bardehle Pagenberg on a panel about the UPC Tuesday.
Perhaps the only forum that panelists and attendees seemed to have confidence in at the moment was the Unified Patent Court (UPC), which has been operating since June 1, 2023. While the court was decades in the making, those in attendance seemed positive about the UPC judges’ extensive technical experience and the way it is working so far. Panelists were also very positive about patent owner chances in Brazilian courts, where injunctions are issued fairly regularly and predictably.
Unfortunately, the outlook for the U.S. patent litigation system was much darker. Judge Michel reiterated his often-stated view that “the only rescue of the patent system is going to have to come primarily from the U.S. congress.” Michel has been very involved in promoting bills like the Patent Eligibility Restoration Act of 2023 (PERA) and the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act to further that goal.
“There’s an important role for the courts still, but I think we need intervention from the Congress,” Michel said.
Judges at lunch.
A third bill that would address the broad unavailability of injunctive relief since eBay v. MercExchange is expected to be introduced later this year, according to IPWatchdog sources.
As uncertain as the patent landscape may be though, Judge Newman had an empowering message for attendees about how to create change and move forward into a new era of patent law. “This is a very interesting time to be in this business,” Newman said. She added:
“It’s a new ballgame at a time of such dramatic promise in the new technologies. It would be a mistake not to apply the most creative thinking we can come up with. To the extent there is a chance at this conference to explore the issues and possibly take action, that is what it’s all about; the future of the nation is in our hands.”
Judges Newman, Rader and Michel pose under their IPWatchdog Masters Hall of Fame sketches:
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