Fordham 2016: Views from the Judiciary

Views from the Judiciary

The AmeriKat's favorite session of Fordham was first up on her morning's agenda - Views form the Judiciary. There is not much more to say by way of introduction, so lets get to it:

Sir Robin Jacob (UCL) was faced with the first question as to whether he would change anything about his career.  Robin said no, that he was incredibly lucky, but noted that when he came to the bar, IP was a happy but quiet world.  IP, he said was asleep, but he did not know why it was asleep especially as it was very much awake in the 19th Century.  It woke up in England when an English judge started enforcing patents with the result that Americans, who were losing their patents in the US, started litigating in the UK.  Hugh asked Sir Robin which patent law he considered to be the best patent law.  Sir Robin said that the "European Patent Convention is the best written patent law in the world.  It is clearly effective".  Hugh asked whether there was a difference between English patent law and European patent law.  Sir Robin said there was not.  English patent law is European patent law.  Although the law is the same, it does not mean that judges of different national courts will apply the law the same.  Often, he noted, a German and Dutch judge will likely apply the law similarly.  The differences come when you look at procedural differences with the common law courts (UK) conducting a more intensive dive into the facts and evidence than the civil law courts (Dutch and German).  Sir Robin commented that one area of IP law that no one has ever understood is trade mark law and particularly noted that smells should only ever be protected as a trade mark when consumers use their noses to walk around super markets to figure out what they are going to buy.  

Justin Watts (Freshfields) was gifted with choosing who was the next judge to speak.  He chose Judge Klaus Grabinski (Federal Supreme Court) who explained that being a first instance judge is far more fun than being a judge on the appellate court.  This is because as a first instance judge you get to see how the case is being run on the front line and discover, like an inventor, the legal issues that need to be tackled.  Echoing the comments from Sir Robin, Judge Grabinski stated the differences between European national courts are mostly procedural issues, not substantive.  This could be seen, explained Judge Grabinski, at the judges symposium that is held every other year.  The judges are split into groups by language to decide legal issues and often, the English and German groups would adopt more or less the same reasoning.  The French groups would often come to a different result. Judge Grabinski considers that the German and UK courts are more harmonized as a direct result.  The UPC will examine these differences in practice by virtue of the UPC procedural rules being a blend of common and civil law procedures.  We will see what works and what does not work and whether there are issues that need to be harmonized further.   Hugh asked whether or not the reputation of the first instance judge impacts how an appellate court deals views the first instance decision.  He said no, that he did not have a blacklist of judges in mind.  In the US, responded Hugh, it is sometimes better to have lost below and go up to the Court of Appeals on the basis of a decision from certain judges (ie. they are not well-respected so will be easier to overturn).  

Judge Rian Kalden (Hague) was next commenting that when she first started there were very few IP cases with only 6 first instance judges dealing with a handful of IP cases.  This has changed.  Today, there are now 10 judges in the first instance court who deal mainly with patent cases.  Patents have been a booming and successful business.  She has also seen a development whereby IP cases are not decided purely on IP law itself, but other issues such as competition law (for example, in the area of FRAND and standard essential patents).  "It has now become the case that the traditional approach to handling a patent case does not work any more.  In copyright, you see fundamental rights such as the freedom of expression and enterprise are being employed in copyright cases. All of the fundamental rights have equal value and the CJEU has said that when enforcing copyright you need to balance fundamental rights equally."  On the matter of the CJEU, Judge Kalden stated that the problem with the CJEU is that they are not IP specialists and they do not usually really understand the intricacies of the subject matter.  Although you may want to refer a case to the CJEU, you are hesitant as to the type of decision you will get back from the CJEU which you will be bound by.  Judge Grabinski stated that he was not as negative about the CJEU and that generally you usually get back something sensible.

Mr Justice Carr

Mr Justice Carr (High Court of Justice, UK)  commented on appearing before Lord Justice Aldous.  He said that if you appeared before him prepared, with everything organized in a logical manner you would be okay.  He liked structure, which is why he was so keen on setting out and applying the Improver and Windsurfing tests in patent law.  However, because the law has gone beyond those tests in certain respects, his decisions are not often cited.  Hugh raised his decision in the Arsenal case as one of his decisions that is referred to frequently - a case concerning badges of allegiance.  On this, Mr Justice Carr stated that the Court of Appeal was always going to say that the first instance judge (Mr Justice Laddie) who referred questions to the CJEU but did not apply their decision, got it wrong  

Judge Koji Hasegawa (Tokyo District Court) made an interesting point about Japanese law whereby if a piece of prior art is in English and before the court, even if it is a good document from a novelty or obviousness perspective, if it is not accompanied by a Japanese translation then they cannot rely on it.  Parties have to provide Japanese translations of all document before the court.  

Judge Bennett

Judge Annabelle Bennett (Federal Court of Australia - as of a week ago) has just left the court.  Although she is getting involved with non-profit organizations, she is ready to tackle other projects people throw her way.  As to her time on the bench, she said that looking towards laws of other countries is important. Counsel will often bring decisions of foreign courts to her attention.  The High Court has recently stated that the Australian Courts should look at cases of its trading partners and take this into account when rendering decisions.  This is something that Australian judges do especially when they come to examine patentable subject matter.  "We use UK decisions, " she continued "to assist us in understanding computer-implemented business method inventions as their case law has explained EU case law, especially from the Technical Board of Appeal cases, in a clear manner."


Lord Hoffmann (Queen Mary University of London) has been sitting a judge in Hong Kong since 1997.  As his only remaining judicial appointment, he stated that its clear that the Chinese are the only people who respect old age.  He said that the Hong Kong courts are wholly independent courts adopting much of its case law from the UK, Australia and New Zealand.  All proceedings are conducted in English.  As a judge you would think that you are sitting in an English court in the Strand.  He sits as the foreign judge amongst a panel of four other permanent local judges.  The foreign judge, from either the UK, Australia or New Zealand, will fly in for a month to sit on cases.    In his experience there has never been the hint of political interference. 

Mr Justice Birss

Mr Justice Birss (High Court of Justice, UK) really made the IPEC, said Hugh, does he miss it?  Yes, he said, you get more cases done and you can make a difference.  It has been a victim of its success, he noted.  "IPEC is very busy and HH Judge Hacon is run off his feet.  We need another judge its so busy."  Mr Justice Birss explained that the UK Copyright Tribunal does not do a great deal but what it does is very important,  in that its the body that sets the tariff for collective licensing.  Although a self-described nerd who therefore likes patents, he said that the most exciting thing that he did in 2015 was preside over the insolvency of the Lotus F1 team which was subsequently bought by Rennault.   The general cases can often, he said, be the most interesting. As to the impact of social media, Mr Justice Birss stated that it was a completely "unexpected and weird experience" to, as a judge, suddenly be thrust into the public eye.  As a barrister you conduct cases which are important but they or are you are often not in the public eye. Then as a judge, people are suddenly reporting on your decisions, such as the IPKat "who is sitting right here and reports on almost everything."  The strangeness comes when you read the comments on your decisions, he continued, which can be really positive or negative.  You have to develop a thick skin or just not read them.  Besides getting to grips with the reporting of judicial decisions on social media, Mr Justice Birss commented that he is lucky to be in the Rolls Building which is structured so that he and the other patent judges  - Mr Justice Arnold and Mr Justice Carr - are right down the hall from each other.  This enables them to keep up with what each other is doing.  The thing that surprised Mr Justice Birss the most about becoming a judge is the fact that advocates seem to forget that judges are humans and will respond to a case as a human.  Although those human reactions- be it good or bad - will not enter into the exercise of a judge's decision making, they are still there.  Judge Bennett agreed and said that also when you are sitting on the bench you can see everything.  The barristers will usually keep a straight face but when you see scurrying in the court room after a witness responds to a question, the answer which you may not have paid too much attention to, suddenly becomes very interesting.  She also said that if you make even a half decent joke, everyone in the court room will laugh like it is the funniest thing they have ever heard. She will miss people laughing at her jokes now that she has left the bench.  

Chief Judge Sharon Prost (US Court of Appeals for the Federal Circuit)  said that although she has a great office with the best view in DC, becoming Chief Judge has expanded her workload.  Her objective is to ensure that the CAFC is run efficiently and that she can clear the underbrush away from her colleagues so they can do their jobs without worrying what she does.  She said that her experience in government, although informative, cannot be used to guide her in statutory interpretation.  "You cannot let your own experiences influence you" she said. 

Chief Judge Dianne Wood (US Court of Appeals for the Seventh Circuit) is one of three academics on the Seventh Circuit.  She considers this to have been great for the court as there is a terrific tradition for the full and frank exchange of views.  People can disagree without being disagreeable, even on highly emotive issues such as the death penalty.  To become a federal judge, there is no one formula that works.  Often, timing is everything.    She noted her experience clerking to be invaluable, not just from the experience you obtain from watching great legal minds at work, but also hearing the fascinating stories of some of the most respected figures in legal history (for example Judge Irving Goldberg).  

Judge Pauline Newman

Judge Pauline Newmann (US Court of Appeals for the Federal Circuit) does not think that there is such a crisis in the CAFC.  There are different points of view everywhere, including on the court.  Her viewpoint is informed by the fact that IP law everywhere has a general appreciation for industrial and commercial issues.  Although we may have different national laws we generally come out the same way because of this overriding appreciation as to what the law means and what it is meant to do. "I see things a bit more from that view point rather than the purity of the law".   She noted that the cases she sees are often really close on the facts.  There will not be a great amount of turmoil on the fundamentals of law, but when you are dealing with cases right on the edge in terms of facts there is room for great differences in opinion.  As to the role of the CAFC, she thinks that "we all feel an obligation on the court to speak out when regional differences are raising concerns and need to be dealt with by consensus.  Judge Newmann considers it important to the issue that we have a uniform approach to policy which must be informed by the industrial origins and nature of IP rights, especially patent rights.   Achieving a consensus as to the optimum result can start even by writing a dissent so that all viewpoints are expressed and can be taken into account.  However, the real path to consensus on IP issues starts with people "in this room who should work with legislators to figure out what is the right consensus" on matters of patent law.  

Judge Kathleen O'Malley (US Court of Appeals for the Federal Circuit) considers law clerks to be incredibly important  - they do the hard digging and case law research.  They play a critical role on the court.  Judge O'Malley returned to the topic of having more fun as a district court judge than an appellate court judge because you never know what your day is going to be like - a preliminary injunction one minute or a witness going off the rails the next.  However, you don't have the luxury of really digging into the issues the way a review court is able to do. She considered that she takes a different approach to the law than others in that she does not think it is her job to create a particular path for the IP world, she is respectful of the role of the judge in interpreting and applying the law and does not just reach a conclusion for the sake of reaching a conclusion.  Judge O'Malley commented that foreign decisions are sometimes referred to by counsel, but often she will come across them via her clerks who find them on legal blogs and research.  Perhaps, says the AmeriKat, there is scope for US lawyers to refer to more foreign case law.