Today we highlight four recent papers related to the Federal Circuit. The first, co-authored by retired Federal Circuit Chief Judge Paul Michel, focuses on the transformation of the U.S. patent system over the past fifteen years. The second analyzes the justiciability of litigation upon the invalidation of patents. The third reviews the Federal Circuit’s patent eligibility decisions in the seven years following the Supreme Court’s decision in Alice v. CLS Bank. The fourth examines the availability of Federal Circuit decisions. Here are more details on these papers.

Hon. Paul R. Michel and Matthew J. Dowd, From a Strong Property Right to a Fickle Government Franchise: The Transformation of the U.S. Patent System in 15 Years, Drake Law Review (2021)

The Honorable Paul R. Michel, retired Chief Judge of the Federal Circuit, and Matthew J. Dowd, his former clerk, authored an article for the Drake Law Review lamenting changes to the patent system over the past fifteen years. Michel and Dowd critique the Supreme Court’s rulings over this time period (in cases such as eBay Inc. v. MercExchange, L.L.C., Alice v. CLS Bank, and Mayo Collaborative Services v. Prometheus Laboratories) as well as the America Invents Act, which President Obama signed into law ten years ago. According to Michel and Dowd, these developments have led to a “a diminished U.S. patent system and decreased innovation certainty.” As a result, they say, Congress’s goal of creating “a uniform and stable body of national patent law through the Federal Circuit” has been undermined. To avoid falling behind global innovation competitors with stronger patent systems, they recommend overhauling the patent eligibility statutory provision (35 U.S.C. § 101) and minimizing the effects of eBay to provide an injunctive relief when a valid patent is infringed.

Greg Reilly, The Justiciability of Cancelled Patents, SSRN (July 8, 2021)

In an article forthcoming in the Washington & Lee Law Review, Chicago-Kent College of Law Professor Greg Reilly explores criticisms of the approach of extinguishing pending litigation and requiring prior decisions to be vacated once a patent is invalidated. While Reilly disagrees with the rationale behind this approach, he ultimately agrees with the result. He says “[p]atent cancellation eliminates the exclusive rights that form the basis for the plaintiff’s suit, mooting the infringement case no matter how belated in the litigation.” Reilly notes, however, that the Federal Circuit’s rationale for this approach has been criticized for “lacking sound doctrinal support; raising efficiency, gamesmanship, and patent policy concerns; and ignoring the constitutional structure and separation of powers by allowing an executive agency to trump decisions by federal courts.” He recommends that courts exercise discretion in vacating prior decisions in moot cases or that Congress restrict the retroactivity of invalidation to limit its effect on pending litigation.

Jasper L. Tran, Alice at Seven, SSRN (Oct. 7, 2021)

Jasper L. Tran analyzes the impact of the Supreme Court’s decision in Alice v. CLS Bank by reviewing thirty Federal Circuit cases that applied Alice and found patent claims to be eligible in the seven years following that decision. The test for patent eligibility required by Alice, Tran explains, has caused the invalidation of many patent claims before the Federal Circuit, but the thirty cases finding eligibility have been relied upon by patent owners “as helpful guideposts for eligibility analysis, in both claim drafting and patent litigation.” In his work, Tran found that that the Federal Circuit has seemingly been more willing to find eligibility the longer it has developed its jurisprudence under Alice, with twenty-six of the thirty cases of eligibility occurring in the past five years. But the invalidation rate under Alice has decreased, Tran explains, at least in part because patentees have stopped asserting patents that could be invalidated under Alice through litigation in federal court or inter partes review proceedings at the Patent Trial and Appeal Board. Tran concludes that “the net effect of these two natural responses has resulted in a decrease of the PTAB’s invalidation rate as it regresses toward the mean,” and he says “the true signal will eventually reveal itself after the false noises fall away.”

Jason Rantanen, Missing Decisions and the United States Court of Appeals for the Federal Circuit, SSRN (Sep. 24, 2021)

In his forthcoming article in the University of Pennsylvania Law Review, University of Iowa College of Law Professor Jason Rantanen examines Federal Circuit decisions in the context of Merritt McAlister’s article Missing Decisions. That article “demonstrates that many merits terminations by federal appellate courts aren’t readily accessible to the public, nor do they show up in major legal research databases like Westlaw, Lexis and Bloomberg.” As Rantanen highlights, however, the Federal Circuit often uses Rule 36 summary affirmances to dispose of cases, but the Federal Circuit was not analyzed in Missing Decisions due to the differing format of the statistical tables summarizing the Federal Circuit’s work. Rantanen, for his part, found most of the Federal Circuit’s merits decisions on the court’s website, but he notes that “[m]any decisions in petitions for writs and permission to appeal, and decisions involving the court’s jurisdiction can only be found by looking up the party name or appeal docket number on PACER.” Professor Rantanen ultimately agrees with McAlister’s view that “all judgments, opinions, and dispositive orders” should be “posted to the [Federal Circuit’s] website” to increase clarity regarding the Federal Circuit’s decision making.