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Motivation for the Federal Circuit Test - page 11 / 35





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guidance for administrative decisions, while the various circuits begin developing “trial” patent law.

The focus of this discussion is administrative decisions out of the D.C. Circuit and decisions from the Supreme Court. The reason for focusing on administrative decisions of the D.C. Circuit is a result of the evolution of patent courts and choice of precedent. Currently, the most authoritative appellate court for patent law, other than the Supreme Court, is the Federal Circuit – which handles both administrative and “trial” law. The Federal Circuit was the successor to the Court of Customs and Patent Appeals adopting in whole the CCPA’s body of caselaw as its own for purposes of precedent.30 The D.C. Circuit was the predecessor of the CCPA, thus focusing our attention on the D.C. Circuit for now.

The early separation of the law between appeals of the administrative decisions of the patent office and infringement litigation affects modern patent litigation. The CCPA, and prior, the D.C. Circuit, handled only the administrative branch of the law, and not “trial” law. With the adoption of CCPA precedent the Federal Circuit adopted an entire body of law specifically developed for use in administrative decisions of the PTO. Thus, modern patent law as practiced by the Federal Circuit has inherited as its basis law that was not originally designed for direct application to the “trial” context.

General principles developed in the administrative context apply equally in both contexts. However, differences in the function each venue is meant to perform necessitate a nuanced application of those principles leading to substantive differences in specific circumstances, such as the required deference afforded patent office decisions. The failure to recognize subtle, but critical differences between these two contexts has unfortunately lead to inappropriate interpretations of precedent and significant deleterious effects on the modern patent system as a whole. See for example, Lee Hollaar and John Knight, “Unclear and Unconvincing: How a misunderstanding led to the heightened evidentiary requirement in patent litigation.” 31

Shift in Focus From Supreme Court to D.C. Circuit

Hindsight Condemned

Returning to the historical analysis, we return to 1895 and the D.C. Circuit, and look at the evolution of the law up to the creation of the CCPA in 1929. Initially, the Supreme Court and D.C. Circuit focused on reiterating the doctrines already developed. 32

30 In re Sernaker, 702 F.2d 989, 994 (Fed.Cir.1983). Since the Circuit courts were so fractionated in their views it was not possible to adopt any one Circuit as representative of the body of patent law, nor was it possible to adopt all of the Circuit’s views and have a coherent body of law. Accordingly, only the law of the CCPA was adopted in whole. A second reason for this approach was the specialized nature of the CCPA, having much greater expertise in patents than any of the Circuits.

31 32 http://digital-law-online.info/papers/jk/unclear.htm. “The improvement in the art involved, in our judgment, "only the exercise of the ordinary faculties of reasoning upon the materials supplied by a special knowledge, and the facility of manipulation which results from its habitual and intelligent practice; and is in no sense the creative work of that inventive faculty which it is the purpose of the Constitution and the patent laws to encourage and reward." Hollister


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