Wednesday, December 2, 2009

Experienced Judicial Hand Expresses Intent to Create 'Do No Harm' Think Tank to Protect US Patent System From Congressional Overreach

Retiring Patent Judge May Start Think Tank

Michel Plans to Press Congress Not to Meddle With Current US System for Deciding Disputes Among Businesses

By Kristina Peterson
Wall Street Journal
December 2, 2009
The retiring chief judge for the federal patent appeals court may start his own intellectual- property think tank, where he will press for limited congressional meddling in U.S. patent law.

"Once I'm a retired judge, I can make a public nuisance out of myself," U.S. Federal Circuit Court of Appeals Chief Judge Paul Michel said in an interview this week in his chambers. "I think that's needed."

The Federal Circuit, based in Washington, handles all appeals of patent cases decided by a federal trial court. The appeals court also hears cases involving trademark law, government contracting, international trade and other matters.

Congress is in its third attempt since 2005 to overhaul U.S. patent laws. Judge Michel said when he retires in May 2010 he will be "unmuzzled" in the debate, particularly on the issue of how damages are apportioned in patent disputes.

The 68-year-old judge conceded that Congress has a role in shaping the patent office's growing authority and responsibilities. But when it comes to managing patent litigation, the courts should hold sway, he said.

A sweeping bill dictating broad rules for where cases are heard, how damages are determined and nailing down patent concepts like "willfulness" would be too rigid, he said.

Judge Michel may yet get a chance to speak directly to the congressional patent effort. After clearing the Senate Judiciary Committee earlier this year, patent-law changes have bogged down as lawmakers attempt to settle disagreement between big and small companies over the impact of changes in the bill.

"If they get it a little wrong, it will do a lot of harm," Judge Michel said of Congress.

His court hears between 20 and 30 patent cases every month.
"We can continue to adjust, modify and clean up unintended consequences," he said, referring to the federal courts.

Politicians and their staff would also benefit from hearing a wider array of opinions before changing the patent system, Judge Michel said.

No judges have testified before Congress on the topic, he noted.

"No judge was ever called as a witness, which seems to me a bit odd," he said. "It's mostly corporate people from a limited number of companies."

As chief judge since Dec. 25, 2004, Judge Michel has authored opinions for a steady stream of significant patent cases.

"He's written a prodigious number of opinions and very influential ones," said Philip Johnson, chief intellectual-property counsel of Johnson & Johnson.

Recently, the U.S. Supreme Court decided to revisit several of his court's decisions. Judge Michel acknowledged he was surprised that the high court chose to hear Bilski v. Kappos. In the opinion written largely by Judge Michel, the federal court ruled that methods of doing business generally cannot be patented, and the U.S. solicitor general urged the court not to take the case.

Judge Michel shrugged off the Supreme Court decisions in patent cases KSR v. Teleflex and eBay v. Merc Exchange, each of which overturned part of the lower court's decision.

"That's the way the system is supposed to work," he said. "They made significant adjustments, but they haven't bashed down the work of the federal circuit."

Among the changes Judge Michel brought to the court since taking over as chief is a pilot program requiring parties to go through mediation before starting litigation. Every year, between 30 and 40 major patent cases reach agreement before even entering the courtroom, he said.

"We can't make them settle, but we can make them show up," he said. Before his appointment to the court, Judge Michel worked for Sen. Arlen Specter (D., Pa.) when he was the Philadelphia district attorney and later on Mr. Specter's Senate staff.

As an assistant Watergate prosecutor, he investigated former President Richard Nixon's slush fund and the president's secretary, Rosemary Woods. When he was president, Ronald Reagan appointed Judge Michel to the federal appellate court in 1988.

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