Fordham International Intellectual Property Conference, Plenary Session: Judiciary & IP Policy - Fordham Intellectual Property, Media & Entertainment Law Journal
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Fordham International Intellectual Property Conference, Plenary Session: Judiciary & IP Policy

Fordham International Intellectual Property Conference, Plenary Session: Judiciary & IP Policy

Fordham International Intellectual Property Conference
“Plenary Session: Judiciary & IP Policy”

EU Courts
[Speaker: Lord Hoffman] [Panelists: Dr. Klaus Grabinski, Josh Holmes, Rt. Hon. Lord Justice Jacob, Hon. Robert van Puersem, Hon. Alice Pezard, William Robinson]
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[10:50] Lord Hoffman:
Judges uneasy about saying they judge cases on policy basis. Judge prefers to present decision as inevitable outcome of statuory language or precedent of cases. Deciding on policy looks like legislation, and falls outside of judiciary role.
Different if one can appeal to a policy derived from the legislation itself. Ex. Patent Act of 1967 (UK), parliamentary draftsmen think they can improve on language of convention, so it is not in the exact same language, but provision that says it should be interpreted as if it was!
Convention provided for a unified European papent court, but so far it has not been so easy. NEarest we have in EU is the EPO in Munich, dealing with applications. There is a decent case precedent dealing with interpretation of applications. Tried to avoid situation where EPO grants patent and court says it is invalid.

Looking to other member states. House of Lords had case where Court of appeal said it was invalid, and Dutch court says it was valid! Both judges are on this panel this morning.
In the absence of a European patent court, judges must decide how they think fit. Reasons for coming to answer. Even then, try to set up dialog bwteen courts saying why the judge can’t follow other court’s ruling, the other court will respond. Is this judges engaging in policy decisions? This is the type of policy decisions judges can be most confident in — derived from statutory policy.
Another kind of policy, less openly stated: Whether an extension of IP protection is desireable or not … People have personal views. Area in which judges are least qualified to make choices; issues are pragmatic, rather than principle. Constitutional question: Should judges be able to impose their own views on this policy? Or should it be left to elected representatives?

The extent of personal views differs with the level of state’s constitutional protection. In the EU, the adoption of a new directive or regulation is very difficut, 6+ years. Often involves much tradeoff, little to do with the merits of the proposal. For this reason, the ECJ feels more comfortable with creating their own policies rather than UK courts. the UK courts consistently take the narrow view — they see as a whole, the IP system integrated with other aspects of the law. the EU judges tend to see only aspects of law in which there is a european dimension, like Trademark. They tend to be from diverse background, not necessarily IP trained. If not trained, you tend to decide cases on the facts, leave it up to others to determine the policy! Easy to rule on the policy; Hardest part of opinions is not to write things that mess it up for others!

[11:08] [Panelists]
[Hansen] IS it true that the UK and EU difference is merely policy difference?
[Robert] The ECJ seems like it is basically deciding it, but then it is unclear who has actually won! Quite often it is something we don’t understand.
Take recent Intel case, most judges have difficulties understanding it, because they mix up two concepts! Then the judges have to decide the next case…

[William] The ECJ is faced with difficult circumstances. two points: (1) Ask, is there times when the ECJ it is necessary to engage in policy decision? In circumstances, is it less of a “freedom” to engage in policy and more of a “necessity”? (2) Put into contect the workload and practices of the ECJ. Last year each judge decided 21 cases, and sat in on over 100 other cases! There have been about 20 IP cases last year. Simply put in the context — an enourmous case load.

[Josh] Must cut the ECJ some slack. It has to balance factors. It can be criticized for failure to reform infacstructure. There is a reluctance in the EC judiciary to let specialized bodies be delegated.
Less necessary now to develop specialized judges at preliminary level — let it go to the court of first instance, and allow lower courts to take certain cases. The ECJ is deluged with cases, making it difficult to develop specialized courts.

[Hansen] The ECJ did develop expertise in some cases, couldn’t they have continued?
[Josh] Ad hoc specialization has happened. there have been judges who have specialized departments within their chambers. But, it doesn’t have the institutionalized specialization which could be much better.
Most important to develop administartive rules, based on policy. For that, need a small, focused body of individuals.

[Klaus Grabinski] Patent law has almost no European dimension — not a community law. Based on European Patent Convention. Think about the future EU patent judiciary. Some have advocated the ECJ to be the court to handle. The proposal now is to have a patent court, with only ECJ taking cases with a “community” perspective.

[William Robinson] Would it be better for ECJ to implement some docket control?
[Lenny] This is something that has been argued for a long time. The ECJ should be able to control the docket. It would go a long way to solve the problems.
[Jacob] Ultimately we must do that.

[Alice Pezard] Not compatible sometimes, three interpretations of law (___, human law, ECJ decision). Waiting for a European court — a solution for all the problems now. all the member states have focused on the preliminary questions. All important issues are decided this way; it is long; decisions come from not well trained judges.

[Question] How can we deal with the problem in Luxembourg? Judges in the first and second chambers?

[Jacob] A number of european judges sit in the same panels day in and day out. How difficult — Imagine that!
[Klaus] The trial court dealing with patents, they dealt with about 600 cases last year. And the length of cases have been the same. The solution could be shorter cases!

[Hansen] The answer may be consensus — let the dissenters dissent, but then cut them out; let the majority write the opinion. The ECJ could on its own do this without amendments or anything else.

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US Courts
[Speaker: Hon. Randall R. Rader] [Panelists: Andrew Bridges, Hon. William E. Kovacic, Hon. Jed S. Rakoff, James Toupin]
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[11:35] Judge Rader:
In the TSX case, the court transferred the case out of TX, and then judge faced impeachment for taking policy into consideration.
Do you take policy into condiseration? The answer has to be yes … in deciding whether to transfer, you weigh the policy against the procedural considerations, letting judge handle own docket. Also, must take into consideration the effect on future cases … forum shopping.
Isn’t it the only way to construe language in claim construction is in CONTEXT. The context of an entire case is essential to its conclusion. Doesn’t the court have to be aware of the implications of ruling as it rules?

The danger of policy decisions is that it could make you look past the proper implementation of the law. “Short circuits” the reasoning. For example, eBay. S.Ct. worried about patent troll problem, makes a decision on policy grounds — one of the worst decisions of S.Ct. in a while.
But every patent owner is a “non practicing entity” (trolls) — the problem is the proper recognition of it; That anyone is a troll who attempts to get maximum value (instead of damages). It should be a value consideration! The failure to consider the legal implications of policy decision is the great danger.
If you introduce policy into equation, automatically allowing unintended consequences.
Must make a decision as a judge, although policy comes in, it must not short-circuit the decision process. Can’t ignore policy, so must be aware of limitations.

[Hansen] In terms of specialized courts, we didn’t have it until 1982 — Do we want to expand that system to copyright and trademarks?

[Rader] It makes sense to expand it to copyright. With trademark it may not be so good.
[Rakoff] Specialized courts tend to be captured in the long run by the narrow specialists to practice before them, don’t take into account the broad implications.
Judges worry about being reversed … seems like The S.Ct has reversed the Fed. Cir. about 100% of the time …[*laughter*]

[Hansen] In the pre-Fed.Cir. situation, little concern with patent cases. A need to the Fed.Cir. because the innovation policy was being ignored.

[Rakoff] There is no doubt that there was serious problems that led to the creation. But, forum shopping is not limited to patent cases — true in torts, securities cases. There are dangers to the specialized courts; can be captured by one group of interests.

[Hansen] PTO has expertise, granted by congress. to what extent should a specialized court defer to the PTO, or is it all de novo?

[James Taupin] Recent litigation on the extent of the PTO’s rulemaking authority. The FTC has taken position that PTO should be deferred to as to the substance of law, but PTO has not taken position. Seen in Fed.Cir. a transition over time: now, a period where some unintended consequences become set law because the Fed. cir. keeps following the bad precedent. The S.Ct. has basically made the executive banch the other “circuit” by asking for Solicitor General’s advice whether to take a case or not. One of the unexpected consequences is an increase in the executive branch’s influence.

[Hansen] To what extent do you defer to adminitrative judges?
[Kovacic] When they’re right! An administrative body is entitled to deference in certain times. The idea of deference is inherently manipulatable. The more expert the court, the more deference the court gets. If the court is specialized, they give less deference to the administrative tribunal. The Administrative tribunal must then work extra hard to gain the deference — must earn it.

[Hansen] Are you viewing S.Ct. as policy based? What policy?

[Andrew Bridges] In the Betamax case, they refused to recognized a new line of liability, said you must go to congress … but in Grokster the plaintiffs tried to bring a new theory, one that congress couldn’t get through in the INDUCE Act, and the court adopted it! But never referred to congress’s role in creating copyright policy!
However, it is a proper judicial function to use restraint, when court says it will not enforce — that is why Fair use is judge made law.

Jason Lunardi