The following summary outlines the keynote address and the final panel of the conference. This post was prepared with the assistance of Allie Bernstein, C-K’s Social Media Strategist.
Keynote Address—The Honorable Diane Wood
The Honorable Diane Wood, Circuit Judge in the U.S. Court of Appeals for the Seventh Circuit, delivered the keynote address of the conference, titled “Is it Time to Abolish the Federal Circuit’s Exclusive Jurisdiction in Patent Cases?” (This issue was also discussed in many of the panels.) Judge Wood answered that question with a resounding yes. She acknowledged the reasoning behind exclusive federal jurisdiction—greater national uniformity and efficiency, for example—but pointed out that “uniformity is great, but what if it is uniformly bad?” In her call for an improved jurisdictional system, she stressed that the Federal Circuit would benefit from the many different opinions that would come from the lower courts; the diversity of viewpoints would prove useful in non-obviousness and force all courts to sharpen their thinking about patents. Judge Wood also responded to those who contend that the Federal Circuit’s special expertise is necessary in the particularly technical and complex arena of patent law. She argued that patent law is no more difficult and no more technical than many areas of the law that the appellate courts handle adequately, and she noted that the district courts seem to manage patent cases well at the trial level.
Preview of 2013 Term
Carolyn Shapiro, professor and director of ISCOTUS, hosted the final panel of the conference, which highlighted cert. petitions granted and to watch in the upcoming Supreme Court Term. Steven Loy, Jan Conlin, Paul Wolfson, James Dabney, and Mark Lemley joined her in previewing the two IP cases that have been granted cert., Lexmark Int’l v. Static Control Components and Medtronic, Inc. v. Boston Scientific Corp. In Lexmark, which will be argued in December, the issue at stake is who has standing to sue for false advertising. (Article III standing is not at issue; the case is about prudential standing.) Steven Loy (counsel to Lexmark) commented on Lexmark’s position that the statute should be understood to require a relationship between the injury and the purpose of the law. Direct competitors might therefore have standing, but not anyone who could allege a possible injury.
The second case discussed was Medtronic, which asks whether, in a declaratory judgment action brought by a licensee under MedImmune v. Genentech, the licensee has the burden to prove that its products do not infringe the patent, or whether the patentee must prove infringement. Paul Wolfson (counsel to Medtronic) explained the argument for why the burden of proof should always be on the patentholder.
Finally, the panel discussion focused on selected cert. petitions the Court may choose to take up. (None of those discussed have yet been granted or denied.) This led to a discussion of how to balance substantive knowledge of facts and law with the expertise of the Court—namely, whether trial counsel or a Supreme Court expert should argue before the Court. Although there were disagreements, the consensus was that, regardless of who does the arguing, it is useful to consult with someone experienced in the Court.