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Intellectual Property, Commerce, & Technology

Jefferson Medalists - 2004 Address

By Donald R. Dunner

June 4, 2004

The first call I received regarding tonight's events was from Sam Pace, who told me, in substance, that he had finally figured out a way to get me to attend the Jefferson Medal Dinner: To give me the medal. While I might have come with less of an inducement, it is a special treat to come to dinner and to be honored with what I and many in the I.P. community feel is the most prestigious award given by any I.P. group in the U.S.

Needless to say, I accept the award with a great deal of pride and a large measure of humility -- humility because it is an awe- inspiring experience to be added to a group that includes the giants of the I.P. world: Learned Hand; Giles Rich, Howard Markey and a large number of Jefferson medalists, some of whom are here tonight and many of whom have had a direct impact on my career and life in more ways than I can count.

So, I ask myself, why am I here? What is it that I have done that has induced you to honor me with the Holy Grail of I.P. awards?

Your answer would be, I guess -- as the Federal Circuit would say -- the totality of the circumstances. But if I were to answer that question myself, I would choose my lifelong relationship with the Federal Circuit and its predecessors and my contribution -- modest as it was -- to the formation of that court.

And it is thus to that subject that I would like to devote the rest of my remarks tonight.

The story begins almost 50 years ago. In 1956, while still in Georgetown Law School, I began a two-year clerkship with the chief judge of the CCPA -- Noble Johnson. Within days of the start of that clerkship, a young New York lawyer named Giles Sutherland Rich - one of your early Jefferson medalists -- started his own relationship with that court, though he started at a level slightly higher than mine: As a judge.

I would like to say that I taught Judge Rich all the patent law that he knew, but there are too many of you here tonight who know that that isn't true.

Judge Rich, of course, along with another Jefferson medalist, Pat Federico, and several others, had fathered the landmark Patent Act of 1952. And Judge Rich spent the two years of my clerkship and many years thereafter using his knowledge of that Act and his unique ability to articulate that knowledge in his opinions to educate both his own court and the other Federal courts around the country in the proper application of the patent law.

Those efforts paid enormous dividends in their impact on the P.O. and the issuance of patents. But they had limited impact on the District Courts and the regional Appellate Courts, which had jurisdiction over all the patent infringements suits. The result was that for long after I left my clerkship at the CCPA, there were enormous attitudinal and other differences in patent jurisprudence between the various Federal circuits. The result was undignified races to the courthouse, patent owners seeking to litigate in patent-friendly circuits such as the 5th or 7th and accused infringers doing their best to get into patent-hostile circuits like the 8th, which had never seen a patent it liked. A more significant result was that there was enormous unpredictability and lack of uniformity in the outcome of litigated patent suits.

Fast forward to 1964, when a significant milestone in my career path took place. I was asked by the John Marshall Law School to give a critique on the accomplishments of the CCPA. And it was at that conference that I met a young professor from NYU - Jim Gambrell, a fellow speaker.

I'm not sure what made it click, but Jim and I became fast friends and began a collaboration that lasted long into the future and had a direct impact on my involvement with what became the Federal Circuit.

Let me be more specific.

Through Jim Gambrell, I met Irving Kayton, the head of the patent program at GW Law School, and I wrote a two volume text for a course I taught at GW Law School for the next ten years. I also began collaborating with professors Kayton and Gambrell in writing patent law perspectives, in which we derived much pleasure out of critiquing the patent-related decisions of the CCPA and other Federal courts.

But more significantly to the subject at hand, Jim Gambrell invited me in the mid-70's to join him as a patent consultant to a special congressional commission -- the Hruska Commission -- whose task it was to evaluate the entire Federal court appellate system, with a view to its revision and improvement.

As part of our consulting, Jim and I conducted a survey of as many of the patent litigators as we could corral and learned that there was limited support for a specialized court of patent appeals, a proposal which had been bandied around over the years as a solution to the patent litigation predictability problem. Only one quarter of the litigators were for it. Coupled with the widespread hostility to specialized courts that existed in the general bar, that did not bode well for the concept of a special patent court of appeals, and Jim Gambrell and I, and in turn the Hruska Commission, recommended against it.

It was about this time, in the late 70's, that a series of events took place which were at first unrelated but which later became inextricably intermeshed.

First, a pair of professors on special assignment to the Justice Department, Daniel Meador and Maury Rosenberg, came up with the ingenious idea that was the genesis of the Federal Circuit.. Given the widespread hostility to specialized courts, they proposed to form an appellate court with national and exclusive patent jurisdiction but which was not specialized since it would have jurisdiction over other subjects as well, such as international trade, federal claims, taxes, merit systems claims, and the like. To accomplish this result, they proposed to merge the Court of Claims with the CCPA, which provided the added benefit of using only existing judges and an existing courthouse, which those courts shared at the time.

Second, at or about this time, there was perceived to be an innovation crisis in the United States. To deal with this crisis, President Carter convened what became known as the Carter Commission on Industrial Innovation. Tom Arnold, another Jefferson medalist and then AIPLA president, wanted me to join him on the commission, since I was in line to succeed him as AIPLA President.

And the rest is history.

The Carter Commission included the Meador/Rosenberg proposal as one of its key recommendations.
As AIPLA President during the congressional hearings that followed, I contributed the voice of a major bar association in support of that proposal and succeeded - through my testimony in Congress and otherwise -- in drowning out the voices of the opponents, which included the ABA, many trial lawyers, and the 7th Circuit bar association, not to mention the voice of my successor as AIPLA President, George Whitney, who was strongly opposed to the idea.
The end result of that and other efforts was the establishment of the CAFC on 10/1/82.

Time does not permit me to say much more. But before I close I would like to provide a brief critique of this not-so-new-court after its first 21+ years

First, the fears that the CAFC would be populated by political hacks and ne'er do wells have been demonstrated to be unfounded. The court has three judges with Supreme Court clerking experience, two with PhD's in chemistry, three patent lawyers, two with trial court judging experience, and others who are extraordinarily hardworking and talented.

Second, the fears that the court would develop tunnel vision and become unduly pro-patent have not materialized. While some judges on the court are viewed as more hospitable to patents than others, one need only look at the court's doe decisions to conclude that the court is not pro-patent but is preoccupied with predictability and the notice function of patents. And the court has had nothing resembling tunnel vision.

Third, the concern about forum shopping has largely dissipated. While litigants still shop for desirable forums at the district court level, circuit forum shopping is non-existent since all the appeals go to the Federal Circuit.

Which leads me to the final critique point: How well has the court impacted on the predictability/uniformity problem that led to the formation of the Federal Circuit?

The short answer is that it has made an enormous improvement. One no longer sees the wild extremes of attitudinal differences or the use of loose terminology that leads inevitably to non-uniform application of the law. The result is that there has been a sea change in the situation as compared to what existed before 10/1/82.

But there is room for improvement in this area. In the last five to ten years, the court has been much less predictable than it was in the first ten. The common perception is that the court's decisions have become much more panel-dependant than they used to be.

The reasons for this are unclear. I have heard some suggest that it is a direct result of the increasing complexity of cases coming before the court. I have heard others suggest that it is the result of the independent thinking of exceptionally bright and strong-willed individuals now sitting as judges on the court.

Whatever the reason, it is a problem the court should focus on in an attempt to come still closer to the vision that led to the court's formation.

In the interim, I think we can all agree that this experiment has -- overall - been an enormous success. The fact that its judges have produced no less than seven Jefferson medalists is testament to that fact.

I am pleased that I have been able to contribute to that success and am honored and delighted to join them and the other medalists tonight.

Jefferson Medalists index

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