Paul Michel, who retired as chief judge of the Federal Circuit in 2010, said at the American Bar Association's Section of Intellectual Property Law Conference in Bethesda, Maryland, that he expects his former court to fall in line with the often-controversial standards set by the high court.
With numerous reversals of patent decisions in the past year, most of them unanimous, the Supreme Court has made clear that it thinks of the Federal Circuit as a "rogue court" that is too pro-patent, and that is bound to influence the appeals court's thinking, Judge Michel said.
"It seems to me that the Federal Circuit is absolutely terrified," he said. "I think they're going to bend over backwards to not look like they're bucking the Supreme Court."
That could soon manifest itself in how the Federal Circuit applies the Supreme Court's January decision in Teva v. Sandoz, which held that factual decisions made by a district court judge during claim construction are entitled to deference on appeal.
In the handful of decisions since then where the Federal Circuit has applied the Teva standard, it has found that the judge did not make any factual findings and reviewed the claim construction rulings without any deference. Judge Michel said he expects that to change before long and that far more claim construction rulings will be given deference on appeal in the future.
Litigants and lower court judges have many ways to use Teva to safeguard claim construction rulings to make sure that they stand up on appeal. Judge Michel said that once they do so, the Federal Circuit will have little choice but to review the rulings with deference. That will make them tough to overturn and mark a significant shift in patent law, since claim construction rulings are now often reversed on appeal.
Under Teva, claim construction rulings are entitled to deference if the judge relied on extrinsic evidence like expert testimony, so litigants can now be expected to introduce such testimony during Markman hearings to bolster their chances that the ruling will be upheld, Judge Michel said.
If the parties don't do that, district judges will likely start appointing their own experts to ensure that their rulings are based on factual findings, making them "bulletproof" on appeal, he said.
Evaluating what is and is not patent-eligible under Alice is one more difficult task delegated to already-overburdened district court judges and the lack of clear guidance from the high court means that the Federal Circuit will continue to struggle with the issue as well, Judge Michel said.
"It's a terrible situation from the standpoint of the overall system," he said. "Other than the unlikely event that Congress rides to the rescue, I don't know how we're going to get out of this trap."
GO VRNG !!!
