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Volume 9 of the Federal Circuit
Historical Society Journal

Volume 9, 2015

The patent jurisdiction of the United States Court of Appeals for the Federal Circuit provides a rich variety of historical facets—from the purpose of the patent system, the evolution of statutory patent law and its judicial interpretation over the more than two centuries of American history, and the tribunals which have addressed those matters, to the arc of technology and innovation in the United States, its impact on the history of our nation, and the role the patent system played. In this issue of the Journal, our authors illuminate different facets of that story.

The Federal Circuit derives from two courts: the United States Court of Claims and the United States Court of Customs and Patent Appeals (CCPA). Both courts dealt with patent cases, along with other subjects. The patent side of the CCPA primarily involved appeals from decisions of the United States Patent and Trademark Office (PTO) on patent (and trademark) applications. But the CCPA itself was created out of another court—the United States Court of Customs Appeal—to which the patent jurisdiction was added in 1929. Who were the judges confronted with such wholly dissimilar factual and legal environments as tariff rates and the patentability of inventions?

One of them, a new judge at the time of the statutory expansion of jurisdiction in forming the CCPA, was former Congressman Finis J. Garrett (1875-1956). Patricia M. McDermott, a historian who for many years served as the Federal Circuit Librarian, brings his story to life in The Honorable Finis James Garrett. Ms. McDermott’s outstanding biography informs us of the legal skills, intelligent consideration of complex issues, and high integrity of this respected jurist with whom so many today are unfamiliar. His contributions, of course, extended beyond the patent law, but we can now count Judge Garrett among those who had an impact on the American patent system.

Michael J. Remington had a different type of impact on the patent system, as well as all of the other areas of jurisdiction of the Federal Circuit. He was Chief Counsel to the House of Representatives Subcommittee on Intellectual Property and Judicial Administration and was directly involved in writing the bills that ultimately matured into the Federal Courts Improvement Act of 1982 (FCIA), creating the Federal Circuit and the United States Court of Federal Claims. In An Inside Story of the Creation of the Federal Circuit from a Legislative Perspective, Mr. Remington provides his insights into the long process in Congress that led from the idea of a new court of appeals with exclusive jurisdiction in patent cases, along with other types of matters, to the signing of the FCIA at the White House by President Ronald Reagan, which Mr. Remington attended.

Much has been written about the creation of the Federal Circuit, including in past issues of this Journal. We are pleased to add Mr. Remington’s reflections from a less frequently discussed locus—Capitol Hill.

When we think of significant technological developments and the patent disputes that swirl around them, the advanced innovations in communications, biotechnology, and other high-tech realms come to mind. In actuality, conflict involving patent rights typically has followed breakthrough inventions whenever they have occurred. In his article, The Barbed Wire Invention: An External Factor Affecting American Legal Development, Society Past-President Kevin R. Casey treats us to a history lesson about one such advance, and its powerful effects on the nature of the 19th century westward expansion of the United States and on American law, including patent law.

Returning to the modern era, few breakthroughs in human history compare to the discovery of the structure of DNA, the development of methods of manipulating the genes of living entities, and the isolation of DNA components. With the incredible promise of biotechnology has come conflict over entitlement to patents for important types of inventions in that field.

In The Evolution of Patent Ineligible Subject Matter and the Federal Circuit, Society Trustee David G. Conlin, and his co-authors, Christopher R. Cowles and Robert E. Bolcome III, trace the history that led to the current state of the law on what they call “patent ineligibility.” That is the threshold question of whether the subject matter defined by the patent or patent application claims qualifies for patent protection even if all other requirements (e.g., novelty, nonobviousness, and usefulness) are met. The authors, and others, believe that the determination of patent eligibility or ineligibility is fraught with uncertainty. Through the lenses of Supreme Court decisions stemming back to the mid-19th century, and CCPA and Federal Circuit opinions that attempt to reconcile the patent requirements set forth in the statute, case precedent, and the realities of advancing technology, the authors provide a comprehensive exploration of the difficulties that have arisen around this crucial patentability issue.

We are grateful to the authors of these fascinating and educational contributions to the Journal and hope that readers of all backgrounds will find each of the articles enlightening and interesting.

For additional information, please contact Maria Mirra at maria.mirra@finnegan.com.

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