Following the surprising decision in 2011 to overturn two lower court rulings by specialist judges in the HGS v Eli Lilly case, yesterday the Supreme Court ruled in Schütz v Werit: the five judges said that the first instance court and the Court of Appeal were both wrong – but the Court of Appeal was more wrong. The decision, on what constitutes “making” an invention, was overturned. With at least two more patent cases heading to the UK Supreme Court this year, does this bode ill for consistency and predictability in litigation?
It is the oft-voiced opinion of Chief Judge Rader of the US Court of Appeals for the Federal Circuit that supreme courts don’t understand IP and their meddling hinders innovation. (His view might be coloured by the numerous reversals the Federal Circuit has suffered at the hands of the US Supreme Court in recent years, though I’m sure he would deny that.) I know many European practitioners share similar views about the non-specialist judges at the Court of Justice of the EU: that’s why there has been so much fuss about keeping Luxembourg as far away from the unified patent court as possible.
The situation with the UK Supreme Court (left) is different in a couple of respects. First, the author of both opinions is Lord Neuberger (above), who used to be a patents judge and is respected for his specialist knowledge. Second, neither of the two decisions could be interpreted as the Supreme Court curbing the patent enthusiasm of the lower courts (as you might characterise the US Supreme Court-Federal Circuit tensions). In fact, in the HGS case, the five Supreme Court judges actually felt that the lower judges had been too strict in interpreting industrial application. And even though the Schütz case might limit some patent rights, I suspect most practitioners will welcome its common-sense approach.
But in the bigger picture there is clearly a feeling among some judges at the highest level that they need to rein in their IP-specialist inferiors, particularly the more eccentric opinions. Hence the concerns voiced in the US about the Federal Circuit becoming a so-called caste of priests, focused on the patent detail but not the overall policy. In some cases supreme courts may even see patent-specialist judges as being like prison wardens who have spent a bit too much time with the unruly inmates – not just in court but socially and on the conference circuit too.
Given the recent record of Supreme Court reversals in both the US and UK, therefore, I think I would be just a little bit worried if I were defending the next case to come before either of them.