Can Patent Judges "Colloquy" Themselves To Greater Uniformity?

This Kat has gone silent for the last week or so while taking part in the Fourth Global Forum on Intellectual
Property in Singapore, here. One of the overarching themes of the conference was the tension between the international nature of markets and the national role of the IP right in furthering innovation and competitive advantage. Perhaps the most challenging expression of this tension was set out by the always engaging and challenging Chief Judge Randall Rader, United States Court of Appeals for the Federal Circuit. Judge Rader has been an outspoken advocate of the position that the IP system has to find more effective ways to mitigate the potentially deleterious effects of this tension.

In particular, Judge Rader focused on the problem facing multinationals with world-wide markets for their patented goods, but which are subject to the uncertainties that flow from the possibility of conflicting national judicial decisions concerning (more or less) the same patent, the same invention, the same prior art and the same parties. Apple v Samsung not to the contrary, for both sides of a dispute under such circumstances, perhaps the only result worse than losing in a given jurisdiction is the spectre of prevailing in one country, only to lose in another. Certainty provides a baseline, even when such certainty means that you have lost the patent dispute, because one can then plan and manage for the future with full knowledge of the rules of the game.

As is widely appreciated, however, there are no structures for providing consistent results of identical dispute across various national jurisdictions. And so the question—should judges across jurisdictions seek ways by which more consistent results in virtually identical patent disputes can be reached? At one level, it is well-recognized that IP judges from various countries get together inter alia to discuss matters of mutual interest. In such meetings, one can assume that a given judge may try to champion his or her view about a given matter, in the hope that perhaps this judge will be persuasive vis-à-vis his colleagues, as they then return to their national jurisdictions and render judgment on the matter at hand. In certain situations, these kinds of meetings and discussions might then have the effect of reducing disparities in result across the national jurisdictions. Indeed, Judge Rader is known as an indefatigable proponent of certain views, expressed in diverse regional and international forums.

However, a comment by Judge Rader in his address at the Singapore conference suggested that something more systematic maybe be taking place. At one point, Judge Rader referred to a certain patent dispute (sadly, this Kat did not hear the name of the case) that had been litigated in a number of key jurisdictions. He then observed that an identical result had been reached in the dispute in the US, UK and Germany (in which it appears that the judge reversed a long-time precedent regarding the issue at hand), respectively. Judge Rader stated that this identity of result "was not by accident". He explained that the three national judges had apparently taken part in discussions and that they had explored how to reach a common result, subject to the national-law limitations of the three jurisdictions. In this way, judges could achieve a measure of uniformity on patent law questions even in the absence of any formal mechanisms or structures for doing so.

On the one hand, this Kat can appreciate the potential benefits achieved by such semi-formal consultations. The parties to the dispute were the recipients of a uniform result in three of the principal forums in the world for adjudicating patent disputes. On the other hand, this Kat has a lingering sense of unease about the fact that there seems to be a "club" of distinguished patent jurists who confer with each other outside of the formal national judicial structures. After all, however attractive may be the position that more uniform results in patent disputes across countries are good both for the patent system and the global marketplace, this comes at the potential price of doing harm to the notion of IP rights as being national in nature.

It is one thing for the head of the central bank of various countries to get together at Davos or wherever, and to discuss between and among themselves common financial matters. After all, policy coordination between the banks may well contribute to both national and international financial stability. However, when legal rights are involved, these rights are still in part local and national in nature. No matter how seemingly identical the cases, there still may exist material distinctions in the case at the national level. More generally, seeking to achieve trans-national uniformity might further distance IP judges from the demands of their national settings. In a world where international elites are already under attack for allegedly being too far removed from their constituencies, are patent judges, in seeking to reach a more uniform consensus, in danger of falling into this same trap, to the detriment of both the patent judiciary and the broader community that is nourished by the patent system?
Can Patent Judges "Colloquy" Themselves To Greater Uniformity? Can Patent Judges "Colloquy" Themselves To Greater Uniformity? Reviewed by Neil Wilkof on Friday, August 30, 2013 Rating: 5


  1. What are the different demands at the national setting?
    How will such discussions among legal elites fit into the feedback loops of the "judicialization" theory of Stone Sweet and others?
    Are judges stealing reasoning form other jurisdictions?

  2. Good questions, Jonas, which I'm sure Neil will want to address.

    An obvious problem which the judicial consistency approach causes is that it sacrifices one type of consistency in favour of another. Thus, while all decisions between Apple and Samsung (say) might be tweaked so that the same result is achieved in Germany, France, the US, Japan, Korea etc, this is likely to mean that there is a resulting internal inconsistency between decisions relating to the same issue in each jurisdiction.

    I also can't help wondering how much judicial manipulation in favour of outcome consistency might be expected from US judges if it transpired that their judges were having to upset their case law doctrines in order to reach the same results as were achieved in, eg France, Italy and Spain?

  3. Jeremy states "resulting internal inconsistency between decisions relating to the same issue in each jurisdiction."

    I agree.

    National sovereignty - and respect for the same - dictates that the laws are interpeted according to each nation's distinct flavor.

    At least in the U.S., and especially pertaining to patent law, it is Congress that is charged with writing the law (a charge written into the very fabric of our nation).

    With a bit of irony, it was Judge Rader who vehemently stressed this in the en banc Ariad case awhile back.

  4. US, Germany and England, says Rader CJ. Keep in mind that his bench, and the counterpart OLG in Germany, has three judges. Reasonable minds can differ, on issues such as obviousness, claim construction, on what any given printed document discloses to the person of ordinary skill in the art. Every jurisdiction sets the scope of protection by what the claim means and, in every jurisdiction the validity of that claim will likely turn on the obviousness issue. Do the members of the bench discuss the case amongst themselves? They do at the EPO.

    So I think there is unlimited scope for judges from different jurisdictions to talk over these issues and then come to a consensus about any one international patent family, without doing violence to the statute law and caselaw that binds each of them in their particular jurisdiction.

  5. I agree with the disquiet expressed by Neil, Jeremy and Anonymous @19/7. If the problem lies in differences in law between the jurisdictions, then judges should not be taking it upon themselves - even for ostensibly good reasons - to bend the law to fit an outcome that national legislatures did not intend.
    It is bad enough that the US Govt and a number of major US industry bodies like MPAA etc spend much time and resources pressuring other states and the EU to amend internal laws, often through international agreements (such as ACTA) in a way which manifestly favours American interests. We really don't want American judges doing the same thing, especially when in a few years time the US economy will no longer be the biggest in the world, at which point other major players will undoubtedly want the same ability to swing policy their way.

  6. MaxDrei@21:53,

    Can you provide any reasoning for your view?

    It seems like a mere wish. Does Germany or England have an equivalent to US's KSR? What about Doctrine of Equivalents?

    I think it much more than "reasonable minds can differ." I think it rather important why those minds are differing. If those differences are are generated by case law, for example, stare decisis cannot be ignored in the US. That serves as a kind of Darwenian mechanism to prevent any type of see saw effect that may happen when judges have too much latitude.

  7. As the 38 Member States adhering to the European Patent Convention have found out, every sovereign jurisdiction has a Doctrine of Equivalents (or something that has the same efeect but goes by another name). Every one has a notional PHOSITA, a lens through which patent cases are viewed. Different jurisdictions though have different ways to find out the facts.

    Every judge wants to know the facts. Then he or she can find the law, based on those found facts. Once the Facts are established, it is often pretty straightforward to decide the legal issues. Once the Facts are established, the judges in the different jurisdictions will usually have no difficulty reconciling the factual consensus with their particular Binding Precedents.

    In recent times there have been plenty of embarrassing judgements made by courts who haven't properly grasped the Facts. It really is not funny when one court has to explain in its judgement why a brother jurisdiction got it wrong and so (with the best will in the world) cannot be followed.

    So, I suspect that the main motivation of the judges to talk to each other is to avoid any future such embarrassments (rather than out of any burning urge to deliver more legal certainty to litigants).

  8. I'm also quite disturbed by this. Where's the statutory basis for cooperation between judges from different jurisdictions? Where's the transparency in what they discuss and agree between themselves. When parties appeal a decision they need to be able to see all the reason for the decision, and that would include discussions between judges. Who has decided on what things judges can discuss and agree on?

    There's also the basic point that judges cannot be allowed to become too powerful in any given system. Therefore when they decide to give themselves new powers it needs to be very carefully scrutinised. Also appointing judges to the US Supreme Court is a very political process, and the party in power can seek to influence decision by way of this process. Why should that judicial system be allowed to input into our patent decisions here in the UK?

    Harmonisation is a good thing, but must be done by the correct means, which has to start with publically available legislation/rules that will be the basis of cooperation.

  9. I would add to Andy J's and Anonymous @2/20 posts that policy swinging is not only inherently unstable between different and emerging countries, but within any country. Lack of a stabilizing judicial control does not produce a more fit law and cannot produce a more fit law, because 'more fit' merely becomes defined by a fickle flavor of the day, policy of the moment.

    Look at the recent revelations concerning "Trolls." A few powerful corporate interests had swung their lobbying power and the White House earlier this summer put out a "Trolls are the worst thing ever" whitepaper.

    Turns out not to be so.

    At all.

    A strong stare decisis effect serves to help combat this type of agency capture. When any individual judge can decide a case without regard to controlling law, the fickleness of the corporate tinged worst-things-ever of the day is too strong, and results not in any ever-better law, but in a constant see-saw back and forth battle for the perception of popular belief.

  10. MaxDrei @10:19,

    Sorry, but I am not buying the idea that it is the facts that are being checked.

    On appeal, it is rare that it is the facts that present the thorny issues, given the level of deference to findings of facts. Further, the gist of the thread here is on law - not case facts.

  11. Indeed, the post is referring to points of law rather than fact. But the post also mentions that each judge participating in the colloquy is bound to respect their own national precedents. The extent to which these are "Binding" varies though, with each jurisdiction. And judges the world over are adept at distinguishing the case at bar with the precedential cases when it suits them, to get to the result that they think is just and correct.

    On the issue of "deference" the issue is not between the first and appeal instances within one jurisdiction exclusively. Rather, it is between the facts found in one jurisdiction and those found later, in another.

    Consider for example the predicament of the BGH in Karlsruhe, while hearing a patent validity Appeal from the BPatG (Federal Patents Court) in Munich, when the English high court has in the meantime found out through discovery and cross-examination particular facts that render absurd the validity argument relied upon by the BPatG. What shall Germany's court of appeal do, to prevent a flat contradiction in the final outcome in Germany and the UK?

    I like to think that Randall Rader is also intent on avoiding handing down decisions that fail to command respect.

  12. MaxDrei @21:53, @10:19, and @14:09,

    Reading the exchange here, I am struck with far more suspicion and far less conviction of your advocacy for fact-based trans-sovereign review.

    I am left wondering why are you so intent to pursue a fact-based type of review (at an appellate level) as some of type of critical driver, when it is clear from the dialogue that such a position, even if true, is far overshadowed by the actuality and the concern for that actuality for the legal-based type of trans-sovereign review.

    For example, in your last post, you recognized the main dialogue, yet immediately seek to talk about the subject you deem more important. And you do so in a way (“But… bound to respect their own national precedents” as if you seek to dismiss the very point under analysis. You then indicate a weak point (in favor of a view on fact based versus law based) as if that point was in your favor (“ extent to which these are "Binding" varies though, with each jurisdiction”).

    These 'errors' make the apparent desire to emphasize a fact-based critically all the more puzzling.

    You then provide an apparently errant view of fact review – which no reasonable court would entertain – or should entertain, as an appellate review of facts clearly has more deference to their own lower court – by design. It seems that you do not know how courts do (or should) operate.

    You then ask a question – the point of which is immediately being pushed in the opposite direction. The German court of your example should not be concerned at all with what the English court did – the English court applied English law not German law.

    It is as if you already presuppose that there exists a universal ‘law’ and that all the sovereigns need to sacrifice in order to align to this unstated universal ‘correct’ law.

    That is wrong.

    Lastly, you end with amounts to a weak truism: ALL judges in ALL courts (not just Rader in the CAFC) are intent in ‘getting it right’ and “avoiding handing down decisions that fail to command respect.” This does not support the viewpoint that you seem to want to advance, and leave me with the distinct impression that your position is weaker than when you started discussing it.

  13. Readers, in the thread above I have been trying to provide food for thought, and not to bore you. At this point though, for this very reason, I see it as quite important that I stop forthwith, rather than feed my interlocutor any more lines.

  14. MaxDrei @21:45,

    Your concern about an 'interlocutor' is misplaced.

    Be more concerned with having and expressing a cogent argument, or at least recognizing that 'fact-based' view runs a poor second to what the thread is about (in other words, your food was inedible).

  15. In support of MaxDrei, I found your comments interesting and helpful in thinking around the relevant issues here.

  16. BluePrint @9:45,

    I am genuinely interested in what you found to be interesting and helpful (other than how off-topic and illogical) in the position advanced by MaxDrei.

    How was it helpful to take your eye off the ball?

    Was it helpful to view critical thinking in the posts that show how weak MaxDrei's position is?

  17. Discussion between MaxDrei and Anon relates to quesiton of jury involvement in patent disputes.

    In my opinion, juries are not qualified to assess facts related to patents. As such, I support MaxDrei position

  18. Anonymous @ 11:51,

    Should I take solace then, that since you use an emotion (rather than any basis in law) in siding with MaxDrei, that I am correct in my view?

    Thanks for the confirmation of my correctness.


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