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Motivation for the Federal Circuit Test - page 16 / 35

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traditions, but under the CCPA they are more clearly present. In addition, the Federal Circuit appears to have continued these traditions, at least initially, which helps to explain what may appear to be an insular approach to patent jurisprudence.

“Failure” to Cite Precedent

The first tradition found in CCPA decisions is a failure to cite precedent in support of important concepts. For instance, the court will often assert that a test or concept is well established, but provide no reference to judicial decisions in support of the assertion. Decisions taken alone, such instances leave the reader with the impression the court is without a substantive basis for these assertions. However, when put in the context of a full history of decisions on point, it becomes clear these assertions are almost always supported by a rich history of precedent and discussion. This is one of the reasons why it is important to consider the history as a whole, and not simply a few isolated cases.

There are likely a couple aspects of CCPA patent litigation contributing to this unusual behavior. First, as a specialist court, expert in a technical area, the justices and litigants were intimately familiar with a highly specialized area of law. It is likely that they simply did not realize what was apparent to them at the time of the decision, would not be apparent to a wider audience in following years. Second, appeals to the CCPA were not in a vacuum; they were framed by the procedures of the patent office. Patent office procedures and customs were and still are highly complex and nuanced. In many of the CCPA decisions, knowledge of these procedures and customs is apparently taken for granted.

As such, what may now appear to be an unsupported assertion in a decision was in fact only a simple restatement of widely known – at the time, to patent practitioners – customs and procedures. Unfortunately, to the modern reader this tradition contributes to a perception that the TSM test is ad hoc, incomplete, or inconsistent with other doctrine such as Graham, because important concepts in a particular decision may not relate back to an easily identifiable trail of precedent. Worthy of note is the Federal Circuit’s attention to citing precedent, particularly in later cases. As is discussed below, the Federal Circuit takes a much more rigorous and thorough approach, providing references to previous decisions on almost all relevant legal doctrines implicated in any particular decision.

“Cursory” Opinions

In addition to omitting valuable citations to precedent, CCPA decisions rarely provide a complete discussion of each and every element of the applicable law. CCPA decisions, at least on the question of obviousness, usually focus narrowly on the particular facts and assertions of the parties. The decisions often fail to recite all of the applicable components of the law. Instead, they “jump” to the particulars of the quarrel and discuss only the minimum amount necessary to resolve it. This tradition is in striking contrast to most recent Federal Circuit decisions which recite every element of the law, and then methodically apply the facts to the law.

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