by Zachary Shapiro

Since its creation in 1982, the Court of Appeals for the Federal Circuit (CAFC) has been a magnet for controversy and criticism. While I do not align myself with those critics, it would be foolish to not acknowledge the problems that are present with the CAFC. For instance, for the vast majority of federal law, when law develops differently in different circuits, the Supreme Court is able to observe those developments, and decide which interpretation is most desirable. Because the CAFC has sole jurisdiction over patent law appeals, patent law is not subject to these circuit splits. While splits temporarily hamper uniform justice, they do allow for experimentation, enabling different legal interpretations to be tested in real life. In this way, splits can allow an appellate body to make a more informed decision regarding which interpretation should be followed.

The lack of circuit splits in patent law can be problematic, given accusations that the CAFC has succumbed to a form of institutional capture by the patent lobby.[1] Critics highlight the CAFC’s decision in Amazon[2] and eBay[3] as evidence of this capture. In Amazon, the CAFC found a broad presumption of irreparable harm, allowing for broad extension of preliminary injunctions in future cases of patent infringement (even though they overturned the injunction at issue in the case). This patent-holder-friendly standard was ultimately overruled in eBay,[4] after the CAFC applied its nearly automatic injunction standard. The Supreme Court overturned this decision, and dialed back the presumption, in large part because it was seen as too favorable to patent holders.

However, bias can be expected of any specialized body, and I argue that, even if capture exists to some extent, it presents a lesser risk than the danger of allowing other circuit courts to try patent appeals, when those judges often lack the expertise and familiarity with the unique intricacies of patent law. Expertise is particularly important in this field, because patent law is often quite technical, and implicates vital areas of society. Patent law deals not only with product development, but pharmaceutical and biochemical innovation. The negative effects of non-expert courts engaging with patent law have been especially clear in the area of subject matter eligibility. The Supreme Court’s confusing decision in Myriad,[5] which is unclear even to those well-versed in the field, highlights the uncertainty that can be created when a non-expert body issues decisions on complex scientific processes. Another example is the Mayo[6] decision, which some scholars have argued is having the harmful effect of chilling the development of personalized medicine therapies, due to uncertainty over whether patents will be granted for treatment regimes.[7] This could slow the development of personalized therapies, hailed by many as the future of medicine (although method claims could potentially save the field). This confusion is not limited to biochemical areas, as many have written about the lack of understanding of novel technology by the Supreme Court.

I believe there is manifest danger in binding rulings, particularly in the field of patent law, made by courts that do not understand the issues before them. Justice Scalia’s proclamation in Myriad that the issues discussed were beyond the understanding of the court should raise serious red flags. [8] Indeed, it is hard to imagine that any court, or system of law, can maintain institutional legitimacy, if it issues decisions that demonstrate misunderstanding of the field, or are not logically supported. Because of the great value of expertise to the field of patent law, it seems to me that the value of the CAFC’s expertise should trump concerns of institutional capture.

[1] See Adam Jaffe and Josh Lerner, Innovation and Its Discontents: How Our Broken Patent System Is Endangering Innovation and Progress, and What to Do About It (2004).

[2] Amazon.com, Inc. v. BarnesandNoble.com, Inc., 239 F.3d 1343 (Fed. Cir. 2001)

[3] eBay Inc. v. MercExchange, L.L.C., 401 F.3d 1323 (Fed. Cir. 2005)

[4] eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006)

[5] Assn. for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107 (2013)

[6] Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1290 (2012)

[7] See “The Mayo Test: Impact On Personalized Medicine And Beyond”

[8]  “I am unable to affirm those details on my own knowledge or even my own belief.” Assn. for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2120 (2013)