Judge Lourie Welcomes Supreme Court Review of Federal Circuit's Patent Decisions

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By Tony Dutra

Judge Alan D. Lourie of the U.S. Court of Appeals for the Federal Circuit told an Oct. 19 audience at the George Washington University Law School that the U.S. Supreme Court's interest in patent cases is a positive sign and not a comment on his court's judgment.

Speaking at the school's biannual A. Sidney Katz Lecture on “The Changing Federal Circuit,” Lourie said that the high court's involvement means only that it “clearly perceives patent law not as an obscure backwater but an important part of the economy.”

Though his remarks focused on developments at the appeals court, Lourie also rejected charges that his court is anti-academia. The simple answer for why the Federal Circuit rarely cites academic journals? “They aren't law,” he said.

Court's Voice on Chemical, Pharma Law

Lourie is the second most senior member of the Federal Circuit, after Judge Pauline Newman. He was appointed in 1990 by President George H. W. Bush, and he has effectively been the court's primary voice on jurisprudence related to chemical and pharmaceutical patents.

Just in the last two years, Lourie wrote the majority opinion in three controversial cases in those technology areas:

  • the Myriad case on Section 101 patent eligibility of isolated DNA patent claims, in Association for Molecular Pathology v. U.S. Patent and Trademark Office, No. 2010-1406, 99 USPQ2d 1398 (Fed. Cir. July 29, 2011) (147 PTD, 8/1/11);
  • patent eligibility of diagnostic method claims, in Prometheus Laboratories Inc. v. Mayo Collaborative Services, 628 F.3d 1347, 97 USPQ2d 1097 (Fed. Cir. 2010) (243 PTD, 12/21/10); and
  • the en banc court's decision that 35 U.S.C. §112 contains written description requirement separate from enablement requirement, in Ariad Pharmaceuticals Inc. v. Eli Lilly & Co., 598 F.3d 1336, 94 USPQ2d 1161 (Fed. Cir. 2010) (en banc) (55 PTD, 3/24/10).

With Prometheus due for Supreme Court review Dec. 7, No. 10-1150 (U.S., cert. granted June 20, 2011), and most patent community observers expecting the high court to grant certiorari in Myriad (199 PTD, 10/14/11), Lourie's own rulings could be modified or overturned by the Supreme Court.

However, he said it was “better to be noticed than ignored,” though he regrets every time he sees a headline reading, “Federal Circuit reversed again.”

Lourie poked a little fun at the high court by quoting one of its own, Justice Robert Jackson, for the line, “we are final, not because we are infallible; we are infallible because we are final.”

However, he insisted that “it is always interesting to see what they do” with Federal Circuit cases, and if they reverse, “They are entitled to respect. We may have different views, but we all adjust.”

No Apologies to Academia

The audience members were from all parts of the patent community, but students and professors most likely made up the majority. So Lourie posed the question to himself, “Why doesn't the Federal Circuit cite academic journal articles?”

Having four degrees myself, the judge said, I have no disrespect for academia. However, he said it is a core purpose of academic writing to be critical of court opinions and suggest changes to the court's jurisprudence.

He noted a comment attributed to Chief Justice John G. Roberts Jr. in a recent New York Times article: “What the academy is doing, as far as I can tell, … is largely of no use or interest to people who actually practice law.”

Lourie said he would not go so far as the chief judge. “But papers speculating on what should be the law can't have an impact on our decisions,” he explained. “We are not a rule-making body. … If we don't consider [your articles], we're not trying to offend you; we are just doing our jobs.”

Lourie ended his talk by noting a 1987 remark by the first Federal Circuit Chief Judge Howard T. Markey about “the privileged joy of working every day at the heartbeat of a free society—the law.”

“I feel the same way,” Lourie said.

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