By Erin Geiger Smith
ISELIN, N.J. (Reuters) - Recent tension between the U.S.
Supreme Court and the Federal Circuit Court of Appeals can be
traced to a dispute over what kind of rules framework should be
set for patent law, a former Federal Circuit judge said.
Arthur Gajarsa, who retired from the patent-focused court in
June 2012 and is now senior counsel at Wilmer Cutler Pickering
Hale and Dorr, spoke at a patent seminar on Wednesday hosted by
the New Jersey Intellectual Property Law Association.
He said the Federal Circuit, which has jurisdiction to hear
most patent appeals from U.S. district courts nationwide, has a
statutory mandate "to normalize patent law" throughout the
country and tries to do this "by establishing rules which
district courts can follow."
Those rules, he said, "have to be clear, concise, and in
some cases rigid. The Supreme Court does not like rigid."
In recent terms, the high court has taken a number of
high-profile patent cases that came out of the Federal Circuit,
which was established in 1982.
That was a departure from the early years of the
Washington-based appeals court, Gajarsa said. Previously, the
Supreme Court heard very few appeals of the Federal Circuit's
opinions, other than in cases relating to its jurisdiction, he
This term, for instance, the Supreme Court agreed to hear
three patent cases coming out of the Federal Circuit.
One area in which the two courts have not seen eye to eye -
how to determine what inventions are eligible for patents - was
addressed in the Supreme Court's 2010 decision in Bilski v.
In that case, the Federal Circuit had ruled that a "process"
was patentable if it was "tied to a particular machine or
apparatus" or if it "transforms" something into a different
state. The process at issue was a so-called business method
related to commodities buyers trying to hedge risk. Applying the
test to the proposed invention, the Federal Circuit found it
ineligible for a patent.
That opinion, Gajarsa said, was straightforward and set up a
fairly understandable rule. Gajarsa joined the majority opinion
authored by then Chief Judge Paul Michel.
The Supreme Court agreed with the Federal Circuit that the
business method at issue was not patentable, but its opinion was
more broad. Business methods could be eligible for patents, the
Supreme Court said, even in cases where they may not pass the
Federal Circuit's "machine-or-transformation test."
That opinion "muddled" the rule on what ideas constituted
obviousness as related to patents, and the high court would have
to take on more cases on the topic to try and straighten it out,
Inventions that are obvious or constitute abstract ideas
cannot be patented under U.S. patent law.
Daryl Joseffer, a partner at King & Spalding who frequently
argues before the Supreme Court, also spoke at the conference.
He agreed with Gajarsa that the rigidity of the Federal Circuit
versus the often more flexible standards of the Supreme Court
would mean the high court continued to take high-profile patent
Joseffer pointed to a case that many patent experts believe
the Supreme Court will take up next term, Akamai Technologies,
Inc v. Limelight Networks Inc.
In Akamai, the Federal Circuit in September 2012 clarified
what constitutes so-called "divided infringement," which is
where different parties perform different steps to carry out the
process of the patent that is allegedly infringed.
The Federal Circuit held that a party may be liable in these
divided infringement cases even if it took multiple unrelated
parties to carry out the action.
Whether or not the high court agrees to hear Akamai, a
decision that may not come until late this year, the cases
already in front of the court will continue to provide clues as
to how patent law will be shaped.
For his part, Gajarsa said he wondered if the tension
created by the Federal Circuit's attempts to develop rules would
result in the Supreme Court's taking apart that normalization of
patent law "piece by piece."
Follow us on Twitter @ReutersLegal | Like us on Facebook