This month we highlight four recent papers related to the Federal Circuit. The first two discuss the interplay between Article III courts and executive agency regulations and decision making, particularly the application of the public rights doctrine and deference within the U.S. Patent and Trademark Office. The third paper discusses the Federal Circuit’s approach to trademark registration. And the fourth discusses the mandate rule—specifically, how differences in the interpretation of the rule stem from a misunderstanding of the rule’s statutory origin. Here are more details on these papers.

James E. Pfander and Andrew G. Borrasso, Public Rights and Article III: Judicial Oversight of Agency Action, SSRN (June 17, 2021)

Northwestern University Law Professor James E. Pfander and alumnus Andrew G. Borrasso have written a paper to be published in the Ohio State Law Journal concerning the application of the public rights doctrine to patent law adjudication. Studying the development of the public rights doctrine from Murray’s Lessee to Crowell v. Benson, Pfander and Borrasso argue that “Congress has discretion in assigning to agencies or to courts the authority to create new (constitutive) rights, but must preserve courts’ role in resolving [specified] disputes.” Notably, they conclude that the Supreme Court’s decision in Oil States “to uphold the [Patent and Trademark Office’s] role may have been right for the wrong reasons.” Their understanding also specifically calls into question the “claim and issue preclusive effect [of Patent Trial and Appeal Board] decisions.”

Paul R. Gugliuzza, Patent Law’s Deference Paradox, SSRN (April 6, 2021)

In this article, Temple University Law Professor Paul Gugliuzza discusses the paradoxical nature of patent law deference, where “[t]he decision of a single examiner at the Patent Office to grant a patent”—a decision he characterizes as made under great time constraints with “incentives skewed in the applicant’s favor”—is prioritized over the opinion of “a panel of expert administrative judges.” In response to this paradox, Gugliuzza recommends two reforms. First, he contends, “the presumption of validity should be weakened by the courts or eliminated by Congress.” Second, “the Supreme Court and the Federal Circuit should stop describing patent validity as a question of law,” and instead “hold that an invention’s patentability is a mixed question of law and fact because it mainly involves applying the law to the facts of a particular case.” According to Gugliuzza, this would both bring patent law deference in line with other areas of the law and reflect “how the patent system actually works.”

Lorelei Ritchie, What is ‘Likely to be Confusing’ About Trademark Law: Reconsidering the Disparity Between Registration and Use, SSRN (March 12, 2021)

Although federal trademarks are generally considered use-based, the implementation of these rights through registration by the Federal Circuit and U.S. Patent and Trademark Office is markedly different, says Southern Illinois Professor Lorelei Ritchie. In an article forthcoming in the American University Law Review, Ritchie discusses how, in her view, “there is a perception among judges and practitioners alike that marketplace realities are not, and should not, be taken into account in the federal trademark registration process.” She points out that the Supreme Court has stated that “the right to registration is indeed coexistent with the right to use and enforce a trademark,” and she argues that “a dilemma arises when coexistent rights are instead determined by non-coextensive factors.” Ritchie suggests several mechanisms that might resolve the disparity between registration and use, including Congressional legislation, judicial clarification, and administrative action.

Adam Crews, The Mandate Rule, SSRN (March 29, 2021)

In this article forthcoming in the South Carolina Law Review, Andrew Crews discusses the origins and current interpretation of the “mandate rule.” After asserting that “[t]he mandate rule has become a source of conflict, confusion, and error in the federal circuit courts,” Crews asserts that these issues primarily stem from the “abstractification” of the mandate rule, which involves treating the rule as “an inherent aspect of judicial hierarchy or the powers of appellate courts generally.” Instead, Crews argues, “[t]he mandate rule is, and always has been, a statutory rule, and many of its nuances and applications can be resolved by straightforward reference to the applicable but oft-overlooked statutes.”