As chief judge of the United States Court of Appeals for the Federal Circuit since 2004, Paul Michel plays a crucial role in shaping US patent law. Michel joined the Federal Circuit in 1988 and since then has helped to decide some of the most important IP cases in US history. Prior to being appointed to the CAFC, Michel, a Philadelphia native, served as a criminal prosecutor under now-Pennsylvania Senator Arlen Specter (an active sponsor of patent reform legislation) and also worked on Specter's staff later in his career. Although he had no IP training or background before joining the CAFC, Michel says his interest in patent law "didn't totally come out of the blue". He had harboured a passion for science and engineering since childhood, and also closely followed the career of his uncle, who worked as a renowned patent lawyer for Cravath Swaine & Moore in New York for many years.

In fact, three-quarters of the 12 active judges on the CAFC are not lifetime patent lawyers and about three-quarters of the court's hearings are not for patent cases (see chart 1). Although one of the court's lifetime patent lawyers is normally present on the typical, randomly selected panel, the rest learn about IP from colleagues and from the lawyers who argue the cases.

The court's IP IQ

Michel says that he learned IP law primarily by reading briefs and the cases they cited. "It was a very effective way to learn patent law," says the chief judge. "Later I did some teaching and still later took some courses, but 95% of the learning was actually from being assigned to individual cases and reading the briefs. It's like law school: you read opinions and you learn the law. It wasn't really a big transition."

In fact, Michel says he has never felt uncertain about any decision he's made, however complex, although he might change one sentence penned as part of his 1996 opinion in Vitronics Corp v Conceptronic Inc, in which he stated that expert testimony in claim construction proceedings is "rarely, if ever" necessary. "That probably overstated things a little bit and I would tweak the wording if I could do it all over again, but that's very rare," says Michel. "We work so hard on drafting; the law clerks help, the other judges help and we have a permanent staff of senior technical advisers who critique the opinion, so it gets a lot of review before it ever goes out the door and issues to the parties and the public."

One of the most important cases pending with the court today is In re Bilski, which was argued en banc – or before a full panel of all 12 judges – in May and is now pending a decision. The case deals with the scope of patentable subject matter and the hearing was one of the most well attended in the CAFC's history. It was also the first case in which two amici were permitted to present oral arguments. "It's a very interesting case and I thought all the judges worked very hard on it," says Michel. He adds: "I think it will be a very significant decision. It probably will have broader scope than either In re Comiskey or In re Nuijten [both of which also deal with the scope of patentable subject matter]." Michel expects the decision to be issued within the next one to two months.

Federal Circuit cases

Source: US Court of Appeals for the Federal Circuit

Confronting complexity

The CAFC gets roughly 1,600 appeals filed each year and nearly one-third of those are patent cases. Each judge on the court has to prepare roughly 25 to 30 cases each month, 34% of which are patent cases (only 1% are trade mark). Since the trend has been a steady increase in both the number of patent cases filed and the complexity of the technology involved in those cases over the last 10 years, Michel says his biggest challenge is finding ways to juggle the caseload without sacrificing quality. To that end, Michel has requested a fourth law clerk per judge from Congress, which he expects will be granted by March next year.

For now though, Michel says that one way to tackle the issue of complexity is to hire law clerks with very strong technical backgrounds, advanced degrees or experience in industry and law practice.

It also helps matters somewhat that 11 of the 12 active CAFC judges now have between six and 30 years experience (combined, the full court boasts 257 years of appellate knowledge). "And the lawyers get better and better too," adds Michel. Singling out Bill Lee of WilmerHale – who recently argued on behalf of one of the amici in In re Bilski – as an example, Michel says: "As patent law gets more important to the economy, it attracts cream of the crop lawyers more than ever before. There are several dozen superior advocates with a great grasp of patent law and that makes a huge difference to our court."

Appellate advice

Although Michel describes the small percentage of patent lawyers who are skilled in arguing at the CAFC as "superb", he identifies a major lack of understanding about appellate advocacy among lawyers overall. "There are a substantial number of performances that colleagues on the court find disappointing, even in patent cases that are not trivial or tiny, and I think that reflects an incomplete understanding as to what judges find persuasive and what they don't," says Michel. He adds that he and his colleagues use "every chance we get" to let attorneys know what they find helpful and important to include in briefs and at oral argument: "We all talk to almost anyone who will listen, but it doesn't get quite the uptake that you would think it would, or else all the briefs would be superb and all the oral arguments would be super helpful," he says.

Michel conjectures that reasons for this may include US law schools' overly academic approach to legal writing, which he views as "all wrong for an appellate brief", as well as the fact that today's patent cases simply involve too much money to allow younger attorneys an opportunity to argue them. "Law firm economics is part of the problem," says the judge. "When I was young, I got to argue cases on my own, but now that kind of learning is rare at best. Today, the brief is drafted by a committee of younger lawyers, but the lawyer who's going to actually argue the case doesn't get involved until very late in the process when it's too late to throw it away, so they just polish it up."

Supreme Court v CAFC

Michel adamantly rejects the notion that the Supreme Court has increased its focus on patent cases in recent years, at least numerically (see chart 2). But he does concede that the latest cases taken up by the Court have dealt with particularly fundamental issues. However, he denies that this is evidence of the High Court's desire to reprimand the CAFC: "That's the way the system's supposed to work," says Michel. "If the Supreme Court thinks the law needs to be adjusted to be consistent with Supreme Court decisions going back several decades, they'll take the case and make the adjustment, and going forward we work hard to make sure we are applying the adjustment that they have required."

Supreme Court patent cases

Source: US Court of Appeals for the Federal Circuit

He also argues that at least one of the major cases to be granted certiorari – KSR v Teleflex, which changed the standards for finding an invention obvious – is simply misunderstood. "It was argued to the Court that our case law required the so-called teaching-suggestion-motivation (TSM) test to be applied in every case and to be the only test applied and to be applied in a very wooden way," says Michel. "But my own contention is that none of those characterisations was true. I felt that the Court didn't rebuke the overall case law of the CAFC, but criticised that one case itself and said that this one particular panel seemed to have applied the test in an overly rigid way. I think the case is often mis-described, and because of that the Supreme Court's intervention is then seen as this huge rebuke, when I don't see any rebuke in there at all other than of one application by one panel in one case."

Michel on patent reform

"I did not testify or talk to individual senators, but I did write several letters to the committees about the workload impacts of several provisions, particularly the interlocutory and damages provisions. I was very concerned about whether the added cases and litigation that would come from those provisions if they were enacted as drafted could swamp the court, which is already quite burdened with patent cases. The median time of pendency for patent-related appeal here is about 11 months, and that's about as long as is tolerable for the industry. If we had the number of cases double, that lag time would hugely increase and the amount of attention we can give cases would decrease. I thought it was a threat to the speed and accuracy of the work of our court and all of our cases, but especially dangerous in the patent area. The damages provision would not allow the judge to tailor the damages methodology to the facts of the case. It would require a kind of analysis that would be extremely difficult to do as sketched out in the bill and would greatly increase the length of damages trials and greatly increase the difficulty on appellate review for deciding whether the damage calculation could withstand review or not, so it adds time and new complexity. Also, there were a lot of terms that weren't defined, so it added uncertainty, which meant that the courts over several years would have to try to interpret these words and it might take half a decade or longer before those terms would be clarified. So there were big transaction costs in enacting that bill the way it was written and I was just trying to caution Congress about that. They were responsive and made revisions and I was pleased that they paid attention to the letters I sent. But I think further refinements would be needed before it resolved the workload threat."