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Rader: "We have to guess at what standards to use"

The Chief Judge of the U.S. Court of Appeals for the Federal Circuit is worried about the direction the country’s IP system is going in. Randall Rader tells Eileen McDermott why, and what can be done about it


In a recent address, Federal Circuit Chief Judge Randall Rader broke from character to deliver a slightly darker message than usual about the U.S. IP system. “We face the threat of being the first generation in many to pass on a weaker IP system than we inherited,” Rader told a room full of IP professionals in San Antonio, Texas in September. “I’m troubled that my life’s work and legacy will be in that way slightly tarnished.”

Rader’s concern stems from recent misconceptions in the mainstream press—and in one example, the writings of fellow judge Richard Posner—about the role of the IP system. He said that few have taken the time to explain “what the patent system is not.” For example: “It is not the sole province of the administrative sector of our government,” as Posner has suggested it should be in comments to the press. “It is not a consumer fairness doctrine. It is not the sole residuum of litigation abuse.”

While Rader conceded that all the attention to and confusion over patents might also be an indication of how increasingly crucial they have become, he added: “At the same time if left unaddressed it could metastasize into a crisis.”

Rader, who seemed frustrated by the position in which recent judicial and legislative decisions have left his Court, spoke with the AIPLA Daily Report in more detail about some of his immediate concerns.

Can you explain what was at the root of your comment that yours could be the first generation to pass on a weaker IP system than you inherited?

The Supreme Court and the media have been the primary focuses of difficulty and misunderstanding about the patent system. The patent system already has ways to deal with overbroad claims, such as through the enablement provision, for instance. But we’re not allowed to reach those anymore, so now we have to guess at what standards to use and we don’t get a chance.

Do you have any hope that the Supreme Court will help to clarify Section 101 law by taking up the Myriad case?

No hope whatsoever. We’ve vacated the CLS Bank decision so we’ll take that up again now and see what happens.

Do you think the USPTO’s new post grant opposition proceedings might help to clarify the law a bit since patent experts will be deciding those cases?

I think it’s actually a step backward. The German system has for years separated validity from infringement, for instance, and found it doesn’t work. You’ll have different timings in different forums. But we’ll have to wait and see.

Judge Linn will assume senior status on November 1 and Judge Gajarsa recently retired. Do those vacancies concern you?

We have an excellent nominee pending before the Senate right now but we’ll have to wait for the outcome of the election before we’re sure that will go through. So I have some concerns, yes. The Court has worked very hard to maintain a certain timeline, but with the impending onslaught of cases from the USPTO, that tends to multiply our workload.

"I’ve approached Congress and I’ve given them my impression; you’d think that they’d at least provide us with a few staff attorneys."

Throughout all of the proceedings [on the America Invents Act] with Congress, the Federal Circuit has been overlooked. The staffing of USPTO’s Patent Trial and Appeal Board has doubled, and it’s in the process of doubling again. The [Board’s] backlog has not declined much from the 40,000 it’s approaching and despite all of that no one has given any concern for the Federal Circuit. I’ve approached Congress and I’ve given them my impression; you’d think that they’d at least provide us with a few staff attorneys. We have the fewest number of staff attorneys of any [federal appellate] court. Most of them have in the double digits if not dozens. Congress just says when we have a problem to come back to them. So I do foresee that we’ll have a potential difficult period.

Will you need more judges eventually as well with the increased workload from the USPTO?

There may be a time when the Court needs more judges but I don’t think we’re at that point yet. But we need additional resources.

The American Bar Association is crafting a proposal for a small claims patent court. Would that help at all?

The perfect model to look to for that is the Patents County Court in Britain. That worked abysmally for 20 years or so because it was intended for small claims, but maintained the full procedures of a regular court, so it was still very expensive. But now His Honour Judge Colin Birss has recaptured the original vision and made it discovery-free and efficient so it has worked very well. So if we could find a forum and procedure that would operate like that, it would be very valuable to have one to two or even three forums like that. But they’d have to grasp that vision. Understanding and execution are always two separate things.

Can you explain what you hope to accomplish as part of AIPLA’s new Judges’ Committee?

I think there’s an opportunity here for judges, including administrative judges from the Patent Trial and Appeal Board, the Trademark Trial and Appeal Board, the International Trade Commission as well as Article III and Article I judiciary, to participate in AIPLA proceedings and inspire them in helping to defend the IP system.

"We need more aggressive leadership. Our organizations have been largely paralyzed."

What advice would you give to IP stakeholders and AIPLA members to help avoid passing on a weaker IP system?

We need more aggressive leadership. Our organizations have been largely paralyzed. They need to have more willingness to advocate the benefits of IP. That requires ongoing advocacy before policy makers and regulatory bodies. There is a broad expanse of issues that need to be addressed.

Download the AIPLA Daily Report, published by Managing IP from Washington, DC from our conference newspapers page.

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