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1 Yale Symp. L. & Tech. [1] (1999)

handle is hein.journals/yjolt1 and id is 1 raw text is: Yale Symposium on Law and Technology Spring 1999 Enabling the Jury to Apply Patent Law Rationally The Honorable Paul R. Micheld Cite as: 1 YALE SYMP. L. & TECH. 1 (1999) <http://lawtech.law.yale.edu/symposium/98/speech_michel.htm> i It is a great pleasure to speak to the Yale Law and Technology Society. What I would like to do is to comment about some of the current trends in intellectual property law as seen from the U.S. Court of Appeals for the Federal Circuit and emphasize certain areas where I think there are a lot of misunderstandings. I also hope to stimulate some responses, ranging from agreement to disagreement to bewilderment, because what I look forward to most is the dialogue that will hopefully follow my remarks. I. INTRODUCTION J2 Let me start with the current scene for developing clearer methods of construing patent claims. Claim construction is the baseline for everything. It sets the baseline for literal infringement most plainly, but it is also critical to assessing what the potential extended protection under the doctrine of equivalents may be. It is also the baseline for judging all attacks on validity and usually it is highly germane to questions of inequitable conduct and hence to the enforceability of patents. Therefore, the question of how we construe patent claims is pervasive. Oddly enough, in view of the fact that we've had an organized patent system since the very start of this country, we have had a well- developed body of patent law only since the 1920s, when our predecessor court began to issue judge-made rules, both before and after the 1952 Patent Act. Now, of course, the Federal Circuit has exclusive jurisdiction to review patent cases, both from the Patent and Trademark Office and also from the district courts from which they come to us both as infringement and declaratory judgment actions. You might think that everything about claim construction has long since been settled, but that is far from the case. The second area I want to touch on is the mysterious doctrine of equivalents which everybody talks about and tries to apply, but which, I think, nobody has thought through sufficiently. As a result, if you read the case law carefully, compare and contrast the cases, and try to integrate them, you will find a certain amount of dissonance in the case law that leads to unpredictability. You can ask very good patent lawyers in this country whether a certain device infringes a given patent, and a lot of them will tell you, Well, I'm not sure. Some will say, I think yes, and others will say, I think no. Any system that routinely produces such a scattering of conclusions from competent, intelligent, and well-informed lawyers indicts itself in my view. So I think the doctrine of equivalents needs more development. 4 Another particularly tricky area of patent law concerns the role of the jury. In fact, I think we've paid much too little attention to specialization and the respective roles of all the different players. The system has many players with hugely different capabilities and responsibilities: from the claim drafter to the examiner, to the supervisor of the examiner, to the Board of Patent Appeals and Interferences, to the generalist district judges who run the infringement trials, to the jurors who decide the fact issues not subject to judgement as a matter of law. Finally, of course, there is the Court of Appeals for the Federal Circuit and, once in a while, the Supreme Court. There are many

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