Monday, 9 June 2014

8 Points on What Patent Judgments Achieve

In the last week we’ve seen two US Supreme Court judgments on patent issues, Limelight Networks v Akamai Tech and Nautilus v Biosig.  In addition here in the UK there have been two significant recent Court decisions on important patent issues, Actavis v Lilly (first instance decision on claim construction) and Shanks v Unilever (appeal from the IPO on employee compensation).  The purpose of this post is not look at any particular decision, but instead to focus more generally on the purpose and impact of important patent judgments, including decisions by the EPO Boards of Appeal.

1.  A significant judgement should add to the case law providing guidance to lower courts in areas where it is need. Last week an article on the Patently-O blog site noted how in fact precedence can be incorrectly applied when it is used in the wrong context (see here). In addition a Court trying to do justice can sometimes contort the law in a way that sets an incorrect precedent, and so there can be a tension between ‘justice’ and future case law certainty.

2.  Court decisions are of course part of the appeal process. Their function is to correct mistakes, in particular ensuring that the law has been applied correctly.  However the sheer number of cases that are reversed on appeal or where there are dissenting opinions show that it can be difficult to agree and be certain on how to apply the principles of patent law.

3.  Very senior courts do bring a deeper level of insight to a case. This is important where the judgment is going to significantly impact future practice. They are more likely to understand the purpose of legislators, and perhaps even the historical perspective in which the legislation was drafted and the problems it was meant to address.

4.  Judgments of higher courts keep the lower courts accountable and that increases the quality of the system as a whole. Ultimately knowing that the judgement can be reviewed and changed by a higher body keeps the lower courts, and even individual Patent Office Examiners, on their toes. It means that lower Court judgments are more likely to be properly reasoned and based on a logic that is not idiosyncratic.

5.  Court decisions can be contrasted in many ways with the manner in which EPO Boards of Appeal make decisions.  EPO Boards of Appeal have a high turnover rate.  That means they have more of a feel for what happened on related cases and that can give a more consistent harmonised approach on matters which are not explicitly defined by doctrines.  Essentially, in my personal opinion, it makes them good at judging on complex matters, such as ‘Given this experimental finding, with this amount of data, and this prior art, what is a fair scope of claim?’.

6.  The US and UK are of course common law jurisdictions where judgments are part of law-making and the approach is more about arbitration between parties (in contrast to civil law where judges apply the law to the case in hand and there is more of an investigative approach).  In the individual cases cited above one can see different overall approaches in what the judgment does. Where a judgment is an appeal reviewing a previous judgment, either it can simply note if there are any mistakes in the first instance judgment (e.g. Shanks v Unilever) or it can set out to identify the correct principle that should be used in that situation, which is of course what the Supreme Court decisions do.  The latter approach is more helpful to developing case law.

7.  Policy matters do influence judgements, though that might not be explicitly indicated in the judgment.  The UK House of Lord/Supreme Court is more likely to do this explicitly versus the US Supreme Court. The influence of lobbying on law-making and judgements is hard to quantify in different jurisdictions, but it clearly does happen.

8.  In my personal opinion different territories respond differently to judgments.  The Nautilus US Supreme Court judgment has been heavily criticised, which is something that would not happen in the UK where there is a more deferential approach to Court judgments. I am as yet undecided as to whether criticism of judgements as happens in the US improves the Courts system or whether it is simply the result of a more entrenched mindset in a system that is very adversarial.

Limelight Networks v Akamai Tech can be found here.

Nautilus v Biosig can be found here.

Actavis v Lilly can be found here.

Shanks v Unilever can be found here.

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