Patent Law

Chief Judge James F. Holderman of the United States District Court, Northern District of Illinois and Halley Guren, Senior Law Clerk to Chief Judge Holderman make four proposals (PTO post-grant review; the Federal Circuit?s changing the standard of review and providing more guidance; district judges? increased use of special masters; and H.R. 34?s pilot patent program of designated district judges) in their work in progress titled, "The Patent Litigation Predicament in the United States."  They believe these proposals taken in conjunction will "provide the most comprehensive approach to correcting the intertwined problems of high costs, inaccuracy, and unpredictability that plague our current patent system."  Below, I provide their remarks related specifically to the increased use of special masters.

To benefit fully from the better guidance the Federal Circuit will be providing us as to the patent law and procedure, we district judges should increase our use of specialized advisors, such as special masters, to assist us in better understanding the technology involved in the specific patent cases before us.  A special master is generally a court-appointed attorney or professor authorized under our Federal Rule of Civil Procedure 53 to assist judges in various pretrial proceedings, such as discovery, settlement, recommendations for findings of law and fact, the formulation of remedies, or the calculation of damages. 

Because we generalist district judges in the United States are expected to decide claim term meanings from the viewpoint a person of ordinary skill in the field of invention and to determine how such a person would understand the claim at the time of invention, we typically could use some assistance in understanding the technology that is relevant to the patent in the suit.  The premise behind a district judge?s designation of a special master to assist the judge with claim construction or other tasks in patent litigation is to delegate to an individual with a better technical background an otherwise judicial task and obtain a recommendation from that person that can be evaluated by the parties and the judge before the judge decides to accept or reject the special master?s recommendation.  The special masters selected for such tasks would have technical expertise that would assist us district judges, who typically do not have the extensive background that is necessary to address a particular patent.  Employing the expertise of special masters more than we district judges do at the present time would help us to be better informed when making our claim language determinations and, hopefully, to lower the reversal rate.  For example, Judge John T. Ward in the United States District Court of the Eastern District of Texas, who has helped to make the Eastern District of Texas one of the busiest federal districts for patent litigation filings, in part due to the enactment of the Eastern District of Texas?s local patent rules, appoints technical advisors to provide recommendations as to claim construction.  More of us should follow Judge Wards?s lead and appoint special masters or technical advisors.

There are drawbacks, however, to the patent litigation system that must be considered regarding the appointment of special masters.  Our system of justice places a high value on the concept of generalist judges addressing a wide range of issues, under a theory that the decisions of many generalists judges synthesize to give rise to a better system of law.  By using a special master, whose expertise is patent or technical issues, the parties may lose some of the benefits provided by having a generalist judge experienced in all procedural aspects of litigation.  A special master typically will not have that expertise.  Generalist judges also protect against what has been referred to as the ?capture? of a specialized judge, or here, a special master, who deals only with one area of law, to a particular specialized view of a special interest group.  I note that the ?capture? concept is often raised by commentators as a concern associated with specialized courts and judges as well.  However, I certainly believe that we district judges can keep an open mind and decide each case on its individualized merits.  That is what our oath of office demands, and I believe we have and will continue to uniformly perform our judicial duties in that manner.

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