Outline: Untangling the Tangled Web: Federal Court...

Untangling The Tangled Web: Federal Court Reform Through Specialization For Internet Law

And Other High Technology Cases

LeRoy L. Kondo

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UNTANGLING THE TANGLED WEB: FEDERAL COURT REFORM THROUGH SPECIALIZATION FOR INTERNET LAW AND OTHER HIGH

TECHNOLOGY CASES

TABLE OF CONTENTS I. INTRODUCTION: THE TANGLED WEB OF COMPLEXITY IN A HIGH TECHNOLOGY

WORLD. ......................................................................................................................1 II. CURRENT STRUCTURE OF THE FEDERAL COURTS AND AGENCIES IN DECISIONS

REGARDING INTELLECTUAL PROPERTY CASES AND THE GROWING NECESSITY FOR COURT REFORM..........................................................................................................14 A. Article III Courts .................................................................................................. 15

1. United States District Courts .........................................................................16 2. The Court of Appeals for the Federal Circuit ................................................19

a. The Federal Circuit's Semi-Specialized Subject Matter Jurisdiction.......19 b. The Federal Circuit's Impact on Patent Law Policy Transformation and the CAFC's Role in Protection of United States' Business Interests ..22 c. The Supreme Court's Deference to the Federal Circuit's Semi-Specialist Court Decisions ..........................................................................................25

3. Other Specialized Article III Courts ..............................................................28 a. The Court of International Trade .............................................................28 b. Semi-Specialized Courts ...........................................................................31

B. Article I Administrative Courts: Authority of Agencies and the Patent and Trademark Office..........................................................................32

1. General rule-making and adjudicative authority delegated to agencies under Article I ................................................................................................32

2. General functions of the Board of Patent Appeals and Interferences of the PTO as an Article I tribunal ...........................................................................35

3. The Supreme Court's Dickinson decision shifted decision-making power from the semi-specialized Federal Circuit to the PTO, a specialized

agency ............................................................................................................37 C. The ICANN Forum for Domain Name Alternative Dispute Resolution--an

International Specialized, Pseudo-Judicial/Administrative Regulatory Body......41 III. POLICY CONSIDERATIONS IN SUPPORT OF INCREASED SPECIALIZATION IN THE

FEDERAL JUDICIARY SYSTEM .....................................................................................46 A. The Specialist Court vs. Generalist Court Debate ..............................................46

1. Specialist vs. generalist courts ........................................................................46 a. Addressing the Lack of Prestige Characteristic of Some Specialist Courts.........................................................................................................47 b. A Response To Allegations of a Putative “Myopic” Or “ Tunnel

Vision” Focus of Specialized Judges .......................................................48 c. A Response to the Criticism That Specialist Courts May Be Particularly

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Susceptible to Special Interest Group Manipulation .................................53 d. A Reply to the Suggestion That Generalist Judges May Readily Become Self-Educated to Adjudicate Technically or Scientifically Complex

Issues ......................................................................................................55 2. Models for federal court reform: specialized judges in specialized state

courts .............................................................................................................58 a. State Business Courts: The Delaware Court Of Chancery As A

Specialization Model For Other Jurisdictions and Areas of Law…..........60 b. State Drug Courts and Family Courts .......................................................62

B. Effect of Specialization on Uniformity of Judgment and Determinancy in Intellectual Property Cases Leading to Enhanced Judicial Credibility and Stabilization of Law .............................................................................................67 1. The Federal Circuit's mandate to provide national uniformity and

predictability of judgment..............................................................................67 2. The problem of indeterminancy reflected in the following: Federal

Circuit's 'panel dependency,' ambiguities in patent law concepts, and in the deployment of lay juries...........................................................................69

3. Internet law cases raise unique procedural and substantive issues leading to lack of uniformity of law and predictability of judgment..........................75 a. Courts Differ In Their Approaches In Determining Personal

Jurisdiction Over A Defendant..................................................................76 b. Courts Vary In Their Treatment of Choice of Law Issues .........................83

C. Specialization as a Prescription for Forum Shopping Leading to Enhanced Judicial Efficiency and Economy...........................................................................86 D. Protection of United States' Business Interests, Promotion of Research and Development, and Public Domain Disclosure......................................................93

IV. POTENTIAL MODELS FOR COURT REFORM THROUGH INCREASED SPECIALIZATION IN THE JUDICIARY .......................................................................................................99 A. The Court's Increased Use of Technical or Scientific Advisors, Experts, and

Special Masters .....................................................................................................100 1. Appointment of technical advisors ................................................................101 2. Appointment of experts and Rule 706 ...........................................................110 3. Appointment of special masters.....................................................................114

B. The Increased Use of Specialized Judges in Federal Court Reform for Intellectual Property and Other Complex Technical/Scientific Cases ..................122 C. Deployment of Special "Blue Ribbon" Professional Juries or Educated Juries to Resolve Complex Issues of Fact in Intellectual Property and Other High

Technology Cases ...................................................................................................135 1. The problem with lay juries ............................................................................138 2. Blue Ribbon juries as a solution .....................................................................144

V. CONCLUSION: UNTANGLING THE TANGLED WEB OF COMPLEXITY IN THE COURTS THROUGH SPECIALIZATION........................................................................................150

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UNTANGLING THE TANGLED WEB: FEDERAL COURT REFORM THROUGH SPECIALIZATION FOR INTERNET LAW AND OTHER HIGH

TECHNOLOGY CASES

LeRoy L. Kondo∗

I. INTRODUCTION: THE TANGLED WEB OF COMPLEXITY IN A

HIGH TECHNOLOGY WORLD

The Internet's unprecedented explosive growth,1 favorably compared to

that experienced during the Industrial Revolution, has created a “tangled web” of

legal and scientific complexity that has far outpaced the judiciary's ability to

manage these cases.2 Exponential growth in this decade is also occurring in

numerous high technology fields such as computer science, biotechnology,

telecommunications, and engineering specialties.3 Such technological

achievement is essential to the integrity of the world's economy: In the Internet e-

commerce arena alone, sales mushroomed to over $102 billion in 1998, with

predictions that by 2003, e-commerce sales to consumers could well reach $400

∗ Loyola Law School, Henry Yuen Scholar, J.D.; Stanford University, National Research Service Award postdoctoral fellow; University of California, San Francisco & Berkeley, joint Ph.D. program. © L. Kondo, 2001. The author expresses gratitude to Dr. Henry Yuen, CEO of Gemstar International, for his invaluable support. Professor Karl Manheim’s review of earlier drafts is appreciated. Special thanks to the JOLT editors and staff members for their assistance during the editorial process. Communications may be sent to the author at [email protected]. 1 See Internet Domain Names and Intellectual Property Rights: Hearing Before the Subcomm. On Courts and Intellectual Property of the House Comm. on the Judiciary, 106th Cong. 126 (1999) ( statement of Jonathan C. Cohen, President, Intellectual Property Constituency of the Domain Name Supporting Organization) (In 1999, it was estimated that over 30 million people use the Internet on any given day, and this number is growing exponentially.), available at http://commdocs.house.gov/committees/judiciary/hju63594.000/hju63594_0f.htm 2 See Alan Heinrich, Karl Manheim, and David J. Steele, At the Crossroads of Law and Technology, 33 LOY. L.A. L. REV. 1035 (2000) (analogizing growth of Internet technology to that historically experienced in the Industrial Revolution). 3 See, e.g., LeRoy L. Kondo, Major Considerations in Meeting Requirements for Patents in Biotechnology, 17 BIOTECH. L. REP. 794 (1998) [hereinafter LeRoy L. Kondo, Biotechnology Patent Considerations]

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mailto:[email protected]

http://commdocs.house.gov/committees/judiciary/hju63594.000/hju63594_0.HTM

billion.4 Similarly, business-to-business e-commerce was anticipated to grow

exponentially over tenfold, reaching $1331 billion in 2003.5

(favorably comparing explosive growth in the biotechnology industry to that occurring in the Industrial Revolution). 4 See Internet Domain Names and Intellectual Property Rights: Hearing Before the Subcomm. On Courts and Intellectual Property of the House Comm. on the Judiciary, 106th Cong. 196 (1999) (statement of Anne Chasser, President, International Trademark Association) (noting $102 billion in e-commerce business in 1998), available at http://commdocs.house.gov/committees/judiciary/hju63594.000/hju63594_0f.htm; The Domain Name System: A Case Study of the Significance of Norms to Internet Governance, 112 HARV. L. REV. 1657, 1663 (1999) (estimating that by the turn of the 21st century, e-commerce transactions could reach the $300 billion mark); NUA Internet Surveys, Dataquest: Consumers Will Spend $380 Billion by 2003, at http://www.nua.ie/surveys/index.cgi?f=VS&artid=905355338&rel=true. 5 See NUA Analysis, E-Commerce Spending in the U.S. 1998-2003 at http://www.nua.ie/surveys/graphscharts/comparisons/ecommerceus.html (noting that in 1999 business-to-business e-commerce was estimated at $109 billion, with business-to-consumer commerce predicted as $18 billion in 1999).

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http://commdocs.house.gov/committees/judiciary/hju63594.000/hju63594_0.HTM

http://www.nua.i.e./surveys/graphscharts/comparisons/ecommerceus.html

The judicial system has been perplexed in the face of the extraordinary and

unique complexities introduced by novel technologies and scientific breakthroughs.

Judge Friendly and Judge Learned Hand were harbingers advocating court reform as a

paradigm shift within the judiciary, as they predicted the occurrence of the current

dilemmas posed by the modern technological age. For example, Judge Friendly observed

that the tremendous complexity in intellectual property law challenges a generalist

judge's6 comprehension and capabilities. He noted, "courts must. . . deal today with a

great number of patents in the higher reaches of electronics, chemistry, biochemistry,

pharmacology, optics, harmonics, and nuclear physics, which are quite beyond the ability

of the usual judge to understand without the expenditure of an inordinate amount of

educational effort by counsel and of attempted self-education by the judge, and in many

instances, even with it."7

Judge Friendly's commentary regarding the limitations of federal judges echoed

the words of Judge Learned Hand almost a century ago, when he observed that generalist

courts were ill-equipped to decide complex technological issues:

I cannot stop without calling attention to the extraordinary condition of the law which

makes it possible for a man without any knowledge of even the rudiments of [science and

technology] to pass upon such questions as these. The inordinate expense of time is the

least of the resulting evils, for only a trained [scientist] is really capable of passing upon

such facts. . . . How long we shall continue to blunder along without the aid of unpartisan

and authoritative scientific assistance in the administration of justice, no one knows; but

6 See infra Part III.A. (discussion on the generalist vs. specialist judge debate). 7 H. FRIENDLY, FEDERAL JURISDICTION: A GENERAL VIEW 156-57 (1973).

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all fair persons not conventionalized by provincial legal habits of mind ought, I should

think, unite to effect some such advance. 8

More recently, Judge Michel observed, "it seems likely that society at large, not to

mention the business community, will be less tolerant of any inconsistent or possibly

unsound adjudications by general adjudicators handling highly complicatedmatters of

great economic importance with widespread practical consequences."9 He predicted that

Congress might soon respond to pressures from the business community and from other

countries to implement increased specialization within the Federal Circuit or other federal

courts.10 Corporations with enormous economic stakes in high technology races impose

pressures on the legal system to transform itself, posing special challenges that promise to

shift the boundaries and contours of intellectual property law.

Judge Learned Hand stated his prescription for the generalist court’s

predicament:"No one will deny that the law should in some way effectively use expert

knowledge wherever it will aid in settling disputes. The only question is as to how it can

do so best."11 He observed that courts historically have frequently and justifiably

"summoned experts to help it where its knowledge was lacking," particularly where

8 Parke-Davis & Co. v. H.K. Mulford Co., 189 F. 95, 115 (C.C.S.D.N.Y. 1911), (Learned Hand noted, “The court summons technical judges to whom technical questions are submitted and who can intelligently pass upon the issues without blindly groping [about]…”) (emphasis added). 9 Paul R. Michel, The Court of Appeals for the Federal Circuit Must Evolve to Meet the Challenges Ahead, 48 AM. U.L. REV. 1177, 1184-85 (1999) [hereinafter Michel, Review of Federal Circuit Decisions] (Judge Michel commenting that a scholar suggested that the Y2K problem, reeking some havoc within the federal courts, be adjudicated in temporary special courts subject to Federal Circuit review). 10 Id. at 1184 (Judge Michel noting that business leaders rather than the legal community will express suggestions for specialization in the Federal Circuit: "[T]hese suggestions will be expressed more powerfully and will be supported more widely each time they are raised. Ultimately, members of Congress may respond to such 'corporate demands,' particularly those of mid-size and large corporations, more than the urgings of the American Bar Association or similar groups."). 11 Learned Hand, Historical and Practical Considerations Regarding Expert Testimony, 15 HARV. L. REV. 40 (1901) [hereinafter Learned Hand, Expert Testimony].

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required "to help it out of its difficulties."12 Nevertheless, the court’s simplistic

deployment of experts in times of need may serve merely as a partial “band aid” remedy

to the serious challenges against the integrity of our judicial system.

The federal judicial system has experienced difficulties in reaching uniform and

just decisions in Internet and other technologically complex cases.13 Most intellectual

property disputes are decided by generalist judges and juries in U.S. District Courts with

perhaps insufficient understanding of the technological and societal complexities raised

by such cases.14 The only federal court that specializes in intellectual property cases is

the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit” or “CAFC”), a semi-

specialized court with subject matter jurisdiction over patent, trademark, U.S.

International Trade Commission, and other cases.15 While currently only three of the

twelve CAFC judges have technical backgrounds, the bench obtains intensive practical

exposure to technologically complex cases through the large proportion of intellectual

property cases on its calendar.16

As a semi-specialized tribunal, the CAFC provides some guidance to district

courts, the Patent and Trademark Office ("PTO"), and U.S. corporations, through

published judicial opinions.Perhaps counterintuitively, the Federal Circuit, as a semi-

specialized court, reviews the technical finding decisions of generalist district court.

This specialist appellate court review of generalist trial court court decisions runs

contrary to the generally accepted judicial principle that appellate courts should focus on

12 Id. at 42. 13 See, e.g., State St. Bank & Trust Co. v. Signature Fin. Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998); Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980). 14 See infra Parts III.A. and IV.A-C. (discussing specialization and the deficiencies or shortcomings of generalist courts and juries). 15 See infra Part II.A.2.a. (describing the Federal Circuit's subject matter jurisdiction). 16 See infra Part II.A. (discussing the composition of the Federal Circuit bench and its expertise).

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significant societal policy interests in adjudication rather than becoming mired in the

intricacies of factual determinations.17 Consequently, the Federal Circuit’s appellate

decisions may sometimes “miss the mark” through oversimplification of issues or failure

to consider broader societal or socioeconomic implications.

The problem results, in part, from the divergence of science and law, where

scientists familiarize themselves with hypotheses, data, and the scientific method,

whereas judges and lawyers attune themselves to the world of laws, policies, and the

application of legal principles. While the scientist's goal is to strive toward learning the

scientifically verifiable and perhaps immutable objective truths of the universe

manifested as laws of nature,18 the lawyer's goal, in contrast, is to subjectively persuade

the court or jury of the superiority and justness of his client's cause.19 The American

legal system, founded upon the adversarial theory that "if you set two liars to exposing

each other, eventually the truth will come out,"20 may not be conducive to a judge’s

committed search for understanding.

A principal problem also lies in the technical complexity of the subject matter of

intellectual property matter itself—where inventions, by definition, must satisfy a novelty

17 Interview with Karl Manheim, Professor, Loyola Law School, in Los Angeles, Cal. (Mar. 16, 2001) [hereinafter Karl Manheim Interview] (noting that the Federal Circuit's semi-specialist court review of generalist district court decisions is the reverse of the characteristic United States appellate court structure). See infra Part II.A.2.b. (noting that the generalist Supreme Court has usually deferred to the Federal Circuit's semi-specialized court decisions, ostensibly establishing "national policy" in intellectual property law rather than performing a regular "monitoring function" in this factually intensive and rapidly changing field). 18 See generally, HARALD FRITZSCH, AN EQUATION THAT CHANGED THE WORLD: NEWTON, EINSTEIN, AND THE THEORY OF RELATIVITY (Karin Heusch trans. 1994). Certainly, physics described by Newton and Einstein may be viewed as providing relatively immutable mathematical principles of the universe (e.g., E = mc2) in comparison to the highly subjective world of law, changing with the vicissitudes of legislatures instituting laws, judges presiding in the courts, and public policy. 19 Id. 20 Peter Huber, Comment, A Comment on Toward Incentive-Based Procedure: Three Approaches for Regulating Scientific Evidence by E. Donald Elliot, 69 B.U.L. REV. 513 (1989) (quoting George Bernard

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requirement. Senator Patrick J. Leahy observed, "I believe that patent law stands apart

from virtually every other legal discipline both in its extreme focus on science and

technology and its need for uniformity in decision-making."21 Federal judges and juries,

with the notable exception of the Federal Circuit, generally lack the scientific expertise

arguably necessary to comprehend and decide highly technical intellectual property cases

such as those in Internet law.22 Professor Kenneth Dueker states: "It is unreasonable to

expect judges to be experts in the field of computer science as parties wrangle over the

mechanics of the Internet."23 Yet, the United States Supreme Court, in Daubert v.

Merrell Dow Pharmaceuticals, Inc., held that under Federal Rule of Evidence 702,24

"[T]he trial judge must ensure that any and all scientific testimony or evidence admitted

is not only relevant, but reliable."25 This mandate allows courts to appoint experts such

as expert witnesses, technical advisors, and special masters to help them meet their

responsibility.26

Shaw who stated, "The theory of the adversary system is that if you set two liars to exposing each other, eventually the truth will come out."). 21 See S. REP. NO. 97-275, at 39 (1981), reprinted in 1982 U.S.C.C.A.N. 11, 48[hereinafter Federal Circuit Senate Report] (Senator Leahy supporting creation of the Federal Circuit for patent law cases, but opposing specialty courts for environmental and tax cases). 22 See Sheila Jasanoff, SCIENCE AT THE BAR: LAW, SCIENCE AND TECHNOLOGY IN AMERICA 221-22 (1995); John H. Langbein, The German Advantage in Civil Procedure, 52 U. CHI. L. REV. 823, 835-37 (1985). 23 See Kenneth Sutherlin Dueker, Note, Trademark Law Lost in Cyberspace: Trademark Protection for Internet Addresses, 9 HARV. J.L & TECH. 483, 507-08 & n.135 (1996) (noting that courts are confused by Internet trademark technologies, even in the absence of technological complexity). 24 FED. R. EVID. 702 (Rule 702 states that expert witnesses may be appointed by the court to assist the trier of fact in understanding evidence or determining facts in issue. It further states, "If scientific, technical, or other specialized knowledge will assist the trier of fact to understand the evidence or to determine a fact in issue, a witness qualified as an expert by knowledge, skill, experience, training, or education, may testify thereto in the form of an opinion or otherwise…"). 25 Daubert v. Merrell Dow Pharm., Inc. 509 U.S. 579, 589 (1993). 26 See Kumho Tire Co., Ltd. v. Carmichael, 526 U.S.137, 141 (1999) (The Supreme Court expanded the federal judge's gatekeeping role to permit appointment of experts in technical and other specialized fields, as well as in scientific disciplines. The Court held that Daubert's admissibility criteria for scientific experts also applied to experts in technical and specialized fields); Joiner v. Gen. Elec. Co., 78 F.3d 524, 530, 533-34 (11th Cir. 1996), rev'd, 522 U.S. 136, 148 (1997) (Breyer, J., concurring) (Justice Breyer noted that while judges generally lack training in science and technology, "[N]either the difficulty of the task nor any comparative lack of expertise can excuse the judge from exercising the 'gatekeeper' duties that the Federal

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Chief Justice Rehnquist said that judges should not aspire to become members of

a new generation of "amateur scientists."27 He emphasized the importance of their

"gatekeeping" role in admission and evaluation of scientific evidence, routinely

encountered in cases dealing with intellectual property inventions.28 Of course, balance

is required, and judges should not shirk their responsibilities through over-delegation of

their judicial decision-making responsibilities to technical or scientific experts who may

have a clearer understanding of complex technical issues.29

However, the “tangled web of technological complexity” has ensnared most of the

generalist federal judiciary, in spite of the Supreme Court’s commendable objectives

expressed in Kumho Tire and Joiner. The Internet and associated computer technologies

create special challenges for judges, legislators and the entire legal system because of

their unique differences from other prior forms of communication.30 For example, the

Internet has posed novel issues in copyright law relating to electronic data and

transmission through cyberspace. Judge Coffman lamented that such challenging

questions presented by new technologies creates "a legal problem vexing in its difficulty,

[with] a dearth of squarely applicable precedents … seem[ing] inexplicable, and an

Rules of Evidence impose…" The Court of Appeals for the 11th Circuit stated, "[T]he gatekeeping responsibility of the trial courts is not to weigh or choose between conflicting scientific opinions, or to analyze and study the science in question in order to reach its own scientific conclusions, from the material in the field. Rather, it is to assure that an expert's opinions are based on relevant scientific methods, processes, and data, and not on mere speculation, and that they apply to the facts…"). 27 Daubert, 509 U.S. at 601 (Rehnquist, C.J., concurring in part and dissenting in part). 28 Joiner, 522 U.S. at 148 (Breyer, J., concurring). 29 See Jay P. Kesan, An Autopsy of Scientific Evidence in a Post-Daubert World, 84 GEO. L.J. 1985, 2040 (1996) (noting judges' reluctance to be "gatekeepers" of scientific evidence, delegating to others, such as special masters, their duty to assess reliability of evidence); Daubert, 509 U.S. at 594-97 (observing some courts have used their inherent powers in appointing experts to shirk their judicial responsibilities as "gatekeepers"). Over-delegation or abdication of a judge's adjudication responsibilities to technical experts is a violation of the Daubert rule that requires that judges make the decisions regarding reliability and admissibility of scientific evidence. 30 See F. LAWRENCE STREET AND MARK P. GRANT, LAW OF THE INTERNET xxxii, xxxvi (2000) [hereinafter STREET AND GRANT, LAW OF THE INTERNET] (the authors noting legal challenges posed by the Internet).

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almost complete absence of guidance from the terms of the Copyright Act."31

Technological advances often far outpace established law and legal doctrine.

Judge Michel states his perception of the need for court reform within the federal

judiciary for intellectual property cases as follows:

I have developed a strong sense that litigators, as well as a very large portion of

the client base, consider the status quo to be significantly unsatisfactory. I am

also sensitive to criticism that appears in academic commentary and in analyses

done by experts that raise serious questions about whether the U.S. system of civil

justice is not unduly slow, disruptive, expensive, and unnecessarily unpredictable.

Therefore, if I have a bias, it is that the current practices are significantly

unsatisfactory, and, therefore, major reforms should be considered and tried, at

least on a pilot basis. (emphasis added).

Michel, Review of Federal Circuit Decisions, supra note 9, at 1203.

This article proposes that the “tangled web” of legal and scientific complexity

experienced in the aftermath of explosive technological growth in this new millennium

may be “untangled,” at least in part, through court reform by implementing policies of

increased specialization within the judiciary. Part II discusses the current structure of

adjudication in intellectual property cases. Federal jurisdiction is dominant in these

areas, thus district courts, the Court of Appeals for the Federal Circuit, the Court of

International Trade (as an Article III court), and the Patent and Trademark Office (as an

Article I administrative court) are the primary focus. The Internet Corporation for

Assigned Names and Numbers (“ICANN”), an independent administrative panel, is also

briefly discussed.

31 Shapiro, Bernstein and Co. v. H.L. Green Co., 316 F.2d 304, 305 (2d Cir. 1963).

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Part III presents various policy arguments for and against increased specialization

within the federal judicial system. Topics for discussion include (1) the

specialist/generalist court debate over increased specialization within the judiciary;32 (2)

the effects of specialization within the federal court system on uniformity, determinancy,

accuracy, precision, and predictability of judgment--with particular focus placed upon the

Federal Circuit, a stabilizing semi-specialized tribunal; (3) criticisms of the Federal

Circuit and federal courts for indeterminancy due to "panel dependency," doctrinal

vagueness in claim interpretation, and inexperienced lay jury panels; (4) the impact of

specialization in prevention of forum shopping through the uniformity of nationwide

application of intellectual property law; (5) judicial efficiency and economy resulting

from specialization in attempts to relieve the crisis in volume plaguing the federal courts;

and (6) the effects of a more specialized judiciary on the protection of American business

interests, promotion of research and development, with discussion of countervailing

policy considerations.

Part IV explores potential models for federal court reform through increased

specialization. This Part discusses (1) the court’s appointment of technical or scientific

advisors, experts, special masters, and magistrates; (2) the increased use of specialized

32 See infra Part III.A.1., Specialist vs. Generalist Courts; Joseph R. Nolan & Jacqueline M. Nolan-Haley, BLACK'S LAW DICTIONARY 684, 1397 (6th ed. 1990) (defining a specialist court's "special or limited jurisdiction" as granting authorization over only a few kinds of cases expressly designated by statute; and a generalist court's "general jurisdiction" to hear all controversies, including civil and criminal cases). In this Article, a specialist court is defined as one whose subject matter is limited to one particular category or class of cases (e.g., intellectual property law); whereas a generalist court is one that hears all controversies (e.g., federal district courts), irregardless of subject matter. A semi-specialized court is one that hears cases that are limited to one or more categories or classes of subject matter, but does not hear all controversies irregardless of subject matter (e.g., Federal Circuit). Judges will be referred to as "specialized" if they have professional or in depth on-the-bench training in a particular subject matter of cases or controversies (e.g., drug court "specialist" judges), acquired through significant focused exposure to cases in one area of law. Judges will be referred to as "generalist" if they have no professional background or focused in depth on-the-bench training in a particular subject matter of a cases or controversies, even if such judges have significant exposure to one or a few categories of cases (e.g., district court judges).

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judges for intellectual property and other complex scientific or technical cases, (3) the

establishment of specialized divisions within the federal courts, and (4) the potential

deployment of “blue ribbon” expert juries or educated juries used to resolve complex

issues of fact.

Finally, Part V provides concluding remarks that the challenge of complexity

threatening to engulf the federal judicial system in high technology arenas may be met, at

least in part, by increased specialization within the judiciary. Building upon the

successes of the Federal Circuit as a "clear experiment"33 in court reform, this article

advocates the increased deployment of specialist judges, technical advisors, scientific

expert witnesses, "blue ribbon" expert jury panels, specialist federal high technology

judiciaries, or other approaches to provide the specialization required to meet the judicial

challenges of the future.

II. CURRENT STRUCTURE OF THE FEDERAL COURTS AND AGENCIES IN

DECISIONS REGARDING INTELLECTUAL PROPERTY CASES AND THE

GROWING NECESSITY FOR COURT REFORM

Congressional authority for the creation of the federal courts is provided by

Article III of the United States Constitution.34 In addition, Congress has used its Article I

powers to create administrative agencies or tribunals with adjudicative responsibilities.35

This part of the article provides a brief overview of the federal court system, including

existing specialty tribunals that hear intellectual property cases. It also presents initial

33 See Michel, Review of Federal Circuit Decisions, supra note 9 and accompanying text, at 1178 (CAFC Judge Michel noting the creation of the Federal Circuit was "clearly an experiment"). 34 U. S. CONST. art. III. 35 U. S. CONST. art. I.

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discussion demonstrating the growing need for increased specialization in the federal

judiciary.

A. Article III Courts

Litigation of major Internet law disputes, as in most intellectual property cases,

occurs primarily in U.S. District Courts with the potential for review by the Federal

Circuit or other courts of appeal, depending on the particular issues involved.36 Although

the United States Supreme Court wields the theoretical power to hear and decide cases

appealed from the Federal Circuit or, more rarely, from District Courts, the Supreme

Court has infrequently chosen to interfere with the Federal Circuit's decisions.37

Article III, § 1 of the United States Constitution states, "The judicial Power of the

United States, shall be vested in one supreme court, and in such inferior Courts as the

Congress may from time to time ordain and establish."38 Since Article III, § 2, d.1

provides the Supreme Court with original jurisdiction only "[i]n all Cases affecting

Ambassadors, other public Ministers and Consuls; and those in which a State shall be

Party,"39 this section implies that Congress must necessarily create lower federal courts

for complete exercise of judicial power.40 Congress created the first tier of lower federal

courts, the district courts, which President George Washington signed into law as the

36 See 28 U.S.C. § 1338(a) (1988). 37 U. S. CONST. art. III § 1. See infra Part II.A.2.c. (noting the Supreme Court's general deference to the Federal Circuit's decisions). 38 U. S. CONST. art. III § 1. 39 U. S. CONST. art. III § 2. 40 See Martin v. Hunters' Lessee, 14 U.S. 304 (1816) (Justice Story justifying the constitutional authority for creation of lower courts).

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Judiciary Act in 1789.41 A century later, a second tier of federal courts, the courts of

appeal, was added by the Evarts Act.42

1. United States District Courts

Congress has granted exclusive jurisdiction in patent law cases to the U.S. District

Courts.43 These lower federal courts, staffed by generalist judges and lay juries, resolve a

large proportion of significant intellectual property disputes.44 In contrast, both litigation

and prosecution attorneys involved with patent law issues almost invariably specialize in

their areas of expertise. 45 While litigation lawyers may lack technical backgrounds and

are not required to register as "patent attorneys" with the Patent and Trademark Office

("PTO"), many of these litigators have become "specialized in fact,” with a virtually

exclusive focus upon patent practice in the representation of clients before the federal

courts.46 Patent prosecution attorneys or patent agents, with technical backgrounds,

generally prosecute patents virtually exclusively before the PTO.47

In view of the practical necessity for deploying specialized litigation and patent

prosecution lawyers to argue intellectual property cases, one could maintain by analogy

that specialist district court judges should also possess greater expertise or understanding

41 Act of Sept. 24, 1789, ch. 20, 1 STAT. 73 (this Act providing for district courts to replace existing circuit courts). 42 28 U.S.C. §§ 1291 to 1296 (2001) (describing the history and current jurisdiction of the courts of appeals). 43 See 28 U.S.C. § 1338(a) (1988) (providing exclusive patent jurisdiction to the district courts). The remainder of intellectual property cases are generally resolved by the Patent & Trademark Office (PTO) and the Federal Circuit. 44 Interview with Gregory Wood, Partner, Merchant & Gould, in Los Angeles, Cal. (July 20, 1999) [hereinafter Gregory Wood Interview]. The PTO, an administrative agency, and the Federal Circuit hear a portion of I.P. disputes. 45 Id. 46 Id 47 Id. See, e.g., Manual of Patent Examining Procedures (MPEP), (7d, 2000), at http://www.uspto.gov/web/offices/pac/mpep/mpep.htm. Prosecution attorneys, registered with the PTO, may also participate in litigation matters, often supporting litigators in such matters as instructing them in

13

necessary to rightly decide technologically complex cases than current generalist judges.

The Advisory Commission on Patent Law Reform, in acknowledging a need for greater

specialization at the lower court level, proposed several solutions in court reform.48 The

Commission supported the following proposals: (1) appointment of specialized judges

possessing experience in patent cases to a newly created special branch of federal district

courts, (2) placement of an "expert" judge, with expertise in patent law, in every district

court, and (3) restriction of the number of district courts with jurisdiction to hear patent

cases.49

Judicial expertise in patent law is particularly critical in "Markman" hearings

where district court judges resolve disputes concerning claim interpretation50 as matters

of law. The judge’s interpretations of patent law claims are often dispositive in the jury's

subsequent determinations regarding potential infringement.51 Thus, district court

reformers may reasonably consider proposals for increased specialization in reforming

the first tier of our fundamental federal court system. While perhaps more radical than

other proposals for specialization to be discussed, reformation at the district court level

has the advantage that a specialized district court judge, as fact-finder, could possess

adequate knowledge to effectively resolve complex matters at the interface of science and

law.

specialized technologies, providing opinions on the scope of claim interpretation, and providing them with prosecution documentation and technical/legal opinions. 48 See The Advisory Comm'n on Patent Law Reform, Report to the Secretary of Commerce 75 (1992) [hereinafter Advisory Comm'n Report] 81-83, 97-99, 107-110 (proposing federal court reform in addressing patent cases). 49 Id. 50 See generally, Ted D. Lee & Michelle Evans, The Charade: Trying a Patent Case to All "Three" Juries, 8 TEX. INTELL. PROP. L.J. 1 (1999) (noting courts hold a "Markman" hearing with admission of extrinsic evidence such as expert witness testimony, with subsequent de novo review). 51 See infra Part III.B.2. (discussing “Markman” hearings and claim interpretation as a matter of law for judges).

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2. The Court of Appeals for the Federal Circuit

a. the Federal Circuit's Semi-Specialized Subject Matter Jurisdiction

In contrast to the generalist nature of the U.S. District Courts and courts of

appeal,52 the Court of Appeals for the Federal Circuit (“Federal Circuit” or “CAFC”) is a

semi-specialized court with subject-matter jurisdiction,53 rather than geographical

jurisdiction, over intellectual property cases (e.g., patent, trademark), U.S. International

Trade Commission cases, and Federal Tort Claims Act, among others.54 The CAFC

hears all appeals from the PTO and district courts involving intellectual property cases,

typically serving as the “court of last resort” for intellectual property cases.55

The Federal Circuit was created by the Federal Courts Improvement Act of

1982.56 When established, the CAFC was unique--as the only Article III appellate court

in existence with nationwide subject matter, rather than geographical, jurisdiction. The

Federal Circuit has exclusive jurisdiction over PTO appeals for both patent denials and

interference proceedings.57 Unsuccessful inventors or assignees who have been denied

52 See 28 U.S.C. §§ 1330 to 1390 (2001) (describing the jurisdiction of the district courts); 28 U.S.C. §§ 1291 to 1296 (2001) (establishing the jurisdiction of the courts of appeals). 53 See 28 U.S.C. § 1295 (2001) (describing the exclusive jurisdiction of the Federal Circuit over appeals from district courts). See S. REP. NO. 275, at 6, reprinted in 1982 U.S.C.C.A.N. at 16 (the report accompanying the Senate bill in support of creation of the Federal Circuit stating, "This rich docket assures that the work of the proposed court will be broad and diverse and not narrowly specialized. The judges will have no lack of exposure to a broad variety of legal problems. Moreover, the subject matter of the new court will be sufficiently mixed to prevent any special interest from dominating it."). 54 See 28 U.S.C. § 1295. See also H.R. REP. NO. 312, 97th Cong., 1st Sess. 19 (1981) [hereinafter H.R. REP. NO. 312] (the legislative history for creation of the Federal Circuit indicating Congressional intent to create a less specialized intermediate appellate court with a broad jurisdiction comparable to that of regional courts of appeal). As a semi-specialized tribunal, the Federal Circuit also asserts jurisdiction over such agencies as the International Trade Commission, the Board of Contract Appeals, and the Merit System Protection Board. 55 See infra Part II.A.2.c. Since the United States Supreme Court has rarely heard intellectual property cases on certiorari over the past two decades, the Federal Circuit has been given a "vote of confidence" for this class of cases. 56 Pub. L. No. 97-164, 1982 U.S.C.C.A.N. (96 STAT.) 25. 57 See 35 U.S.C. § 1295(a)(4) (West Supp. 1983) (codifying the Federal Circuit's jurisdiction). See also 35 U.S.C. §§ 101-03, 131-35, 141 (1976). These Federal Circuit appeals derived from original CCPA appeals authorized under statute. The Federal Circuit hears appeals from the PTO’s decisions that (1) an invention

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patents and litigants who have lost in interference proceedings may wish to appeal PTO

decisions to the Federal Circuit. Proponents of a more specialized intellectual property

tribunal maintain that the Federal Circuit's mere "semi-specialized" status in hearing

patent law cases among others in its mixed subject matter jurisdiction prevents the CAFC

from achieving its full potential.

Correspondingly, Judge Howard Markey, previous Chief Judge of the Court of

Customs and Patent Appeals (CCPA), the precursor to the Federal Circuit, observed,

"The Court of Appeals for the Federal Circuit is obviously less specialized. . . than either

of the two courts it consolidates. . . since. . . we will continue all of our present

jurisdiction plus."58 The Federal Circuit judges, appointed by the President with Senate

advice and consent,59 are primarily generalist judges, with only three current judges

having any formal degrees in science.60 Since Federal Circuit judges are usually not

registered patent attorneys, they may also be subject to the same criticisms of generalist

judges in district and appellate courts discussed further in Part III.A.

was not patentable ("denials"), and (2) a priority race between parties A and B claiming rights to the same invention in an interference was won by party A ("interference proceedings"). 58 Hearing on S. 21 Before the Subcomm. on Courts of the Senate Comm. on the JudiciaryHearing on S. 21 Before the Subcomm. on Courts of the Senate Comm. on the Judiciary, 97th Cong., 1st Sess. 246 (1981) (statement of Howard T. Markey, Chief Judge, United States Court of Customs and Patent Appeals) [hereinafter 97th Congress Hearings]. See Commission on Revision of the Federal Court Appellate System, Structure and Internal Procedures: Recommendations for Change, 67 F.R.D. 195-96 (1975) [hereinafter Hruska Commission Recommendations] (The Hruska Commission consisted of 16 members, appointed by the President, House, Senate, and Chief Justice. Senator Roman Hruska served as chairman.). See Act of Oct. 13, 1972, Pub. L. No. 92-489, 86 STAT. 807; Act of Sept. 19, 1974, Pub. L. No. 93-420, 88 STAT. 1153 (Formation of the CAFC as a semi-specialized court was stimulated by the Hruska Commission recommending Congressional action to implement federal court reform. Congress originally created the Hruska Commission by statute for a 15-month period granting $270,000, then extended the term to 24 months, increasing funds to $606,000.). 59 28 U.S.C.A. § 44 (West Supp. 1983). Article III status confers lifetime tenure to CAFC judges, critical for an adequate understanding of intellectual property issues.60 See generally ALMANAC OF THE FEDERAL JUDICIARY, FEDERAL CIRCUIT (Christine Housen ed. 1999) (The author noted in biographical information that Federal Circuit Judges Newman, Lourie, and Gajarsa alone have natural science undergraduate or graduate degrees. The other judges lack formal scientific training. Appointment of moderately specialized judges to the CAFC has occurred sporadically in practice, rather than by statutory mandate.).

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b. The Federal Circuit's Impact On Patent Law Policy Transformation And The

CAFC's Role In Protection Of United States' Business Interests

Notwithstanding its lack of specific expertise, the Federal Circuit has

significantly advanced the delineation of patent law doctrine over the past three decades,

due, at least in part, to its semi-specialized jurisdiction and focus. Some commentators

maintain that the Federal Circuit has been "patent friendly" in defining this area of law,61

supporting protection of the United States' business interests. For example, under 35

U.S.C. § 101, the CAFC has utilized its semi-specialized insights into patent law's "metes

and boundaries" to expand statutory subject matter to include computer software

programs,62 living organisms,63 and business methods, defined as "processes."64 Such

broadening of statutory categories by the Federal Circuit for patentable subject matter

have served as the foundation upon which corporations have built the major pillars of

novel computer software technologies, biotechnology developments, and business

methods.

This CAFC policy shift contrasts with the federal courts’ historic failure in patent

law to adequately protect the interests of the United States' semiconductor industry,

leading to Japan’s dominance of this field in the 1980s.65 Thus, the "experiment"66 of the

61 See John R. Allison & Mark A. Lemley, Empirical Evidence on the Validity of Litigated Patents, 26 AIPLA Q.J. 185 (1998) (noting the Federal Circuit has generally supported patentees in its decisions). 62 See e.g., In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995). 63 See Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980) (“Congress intended statutory subject matter to ‘include anything under the sun made by man.’”) (quoting S. Rep. No. 1979, 82d Cong., 2d Sess. (1952); H. Rep. No. 1923, 82d Cong., 2 Sess. 6 (1952)). 64 See State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998). 65 ROBERT P. MERGES, PETER S. MENELL, & MARK A. LEMLEY, INTELLECTUAL PROPERTY IN THE NEW TECHNOLOGICAL AGE 1084, 1084-86, 1093-94 (2d ed. 2000) [hereinafter MERGES, NEW TECHNOLOGICAL AGE] (noting that the Semiconductor Chip Protection Act of 1984 was a partial Congressional response to protection of silicon semiconductor chip technology in response to gaps at the fringes of applicable patent and copyright law). 66 See Michel, Review of Federal Circuit Decisions, supra note 33 (describing the Federal Circuit's role as a "clear experiment").

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Federal Circuit as a semi-specialized court of appeals for intellectual property cases has

apparently succeeded if success is measured in terms of protecting U.S. technology and

business interests through such modes as expanding the categories of patentable subject

matter.

In part, the Federal Circuit's semi-specialization in patent law has permitted that

court to conduct detailed analysis of Bonito Boats' finely crafted bargain. The Supreme

Court's Bonito Boats mandate is to achieve the proper balance between promoting

industry’s business interests in the protection of valuable intellectual property rights, on

one hand, and advancing the public’s interests in free access to information and societal

objectives, on the other.67 The Supreme Court and commentators note the success of the

Federal Circuit in meeting both judicial substantive and procedural efficiency objectives,

particularly in providing uniformity, order and predictability to a complex body of law.68

c. The Supreme Court's Deference To The Federal Circuit's Semi-Specialist Court

Decisions

Over the past quarter century, the U.S. Supreme Court has implicitly given the

Federal Circuit its “vote of confidence” in resolving complex technological issues by

rarely granting certiorari to hear patent or trademark cases. The Supreme Court, staffed

by generalist justices, may hesitate to decide technologically difficult cases perhaps in

part because of its unfamiliarity and discomfort with the world of high technology.

Regardless of the underlying rationale, the Court has rarely intervened in intellectual

property case decision-making by the Federal Circuit in spite of the enormous societal

67 See Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 109 S.Ct. 971; see infra Part III.D. 68 See infra Part III.B.1. (discussing the role of the Federal Circuit in providing nationwide uniformity, predictability, and consistency of judgment in intellectual property law). See also Rochelle Cooper Dreyfuss, The Federal Courts: A Case Study in Specialized Courts, 64 N.Y.U. L. REV. 1, 185 (1989).

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impact of high technology on economic policies affecting corporate business interests. In

the period from 1945 to 1980, the U.S. Supreme Court denied certiorari in all but one

patent case--and this was a case where the Court chose to resolve a circuit conflict.69 Yet

the Hruska Commission justified the Supreme Court’s acquiescent role by presenting an

idealized view of the Supreme Court’s function in continuing to establish “national policy

in the area of patent law as in other areas of federal law,” without the necessity of

performing “a monitoring function on a continuing basis in this complex field.”70

However, the Supreme Court apparently has only infrequently fulfilled this ostensible

panoramic “monitoring function”71 in high technology intellectual property cases.

Correspondingly, the Federal Circuit was established to provide uniformity in the

application of intellectual property law,72 prevention of forum shopping among federal

courts,73 and specialized expertise in a complex body of law.74 Consistent with this

historic trend, since 1980, the Supreme Court has chosen to resolve only a few select

patent issues.75 Thus, the Supreme Court, through its inaction in denying certiorari to

69 127 CONG. REC. H8391 (daily ed. Nov. 17, 1981) (statement of Rep. Railsback); see also Commission on Revision of the Federal Court Appellate System, Structure and Internal Procedures: Recommendations for Change, 67 F.R.D. 195 (1975); see generally Hruska Commission Recommendations, supra note 58 (Justice Douglas noting the Supreme Court’s denial of certiorari where circuits conflicted in areas of patent law). 70 Hruska Commission Recommendations, supra note 58, at 220. 71 See id., at 184 (Chief Justice Rehnquist giving the justification for its passivity by noting, "The Federal Circuit. . . has made good progress in its aspiration to combine careful decisionmaking with a willingness to correct its own error in order to produce a substantial and consistent body of jurisprudence, which should rarely require Supreme Court review."). 72 See, e.g., Judge Howard T. Markey, The Phoenix Court, 10 APLA Q.J. 232-235 (1982) (Judge Markey noting that there are circuit disagreements on the law in at least a dozen instances). 73 See FRIENDLY, FEDERAL JURISDICTION, supra note 7; Hearings on S. 677 & S. 678 Before the Subcomm. on Improvements in Judicial Machinery of the Comm. on the Judiciary, 96th Cong., 1st Sess. 20 (1979) (A. Leo Levin’s statement) [hereinafter, 96th Congress Hearings]. 74 FRIENDLY, FEDERAL JURISDICTION, supra note 7, at 153-61 (Judge Friendly supporting the patent court’s specialized expertise. See generally Thomas H. Case and Scott R. Miller, Note: An Appraisal of the Court of Appeals for the Federal Circuit, 57 S. CAL. L. REV. 301 (1984) (providing a detailed assessment of the CAFC upon its inception in 1982). 75 See Warner-Jenkins Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 137 L. Ed. 2d 146, 117 S. Ct. 1040 (1997) (holding that the doctrine of equivalents utilizes an "element-by-element" comparison); Markman,

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intellectual property cases, has permitted the Federal Circuit to become, in essence, the de

facto "court of last resort" for patent cases, in major part because of its "semi-specialized"

understanding of this complex body of law.76

Support for the Federal Circuit's expanded jurisdiction over intellectual property

cases was documented by the White Commission, chaired by retired U.S. Supreme Court

Justice Byron R. White. In 1998, the White Commission analyzed the workings of the

federal appellate courts with an eye toward court reform.77 The Commission noted that a

significant increase in the Federal Circuit's jurisdiction over intellectual property cases

was supported by academic scholars; but the Commission generally remained silent on

whether it would support such a delegation of authority to the CAFC.78 However, the

Commission briefly discussed the option of placing copyright cases within the Federal

Circuit's jurisdiction, transferring them from regional circuits and complementing the

CAFC’s existing intellectual property jurisdiction over patent and trademark cases.79

Most commentators recognize that the Federal Circuit has already provided some

degree of uniformity and predictability to the area of intellectual property law.80

However, further Federal Circuit specialization through the appointment of specialist

judges with demonstrated legal and technical expertise in this field has been advocated to

52 F.3d 967, aff'd, 517 U.S. 370 (1996) (describing claim interpretation by judges); Pfaffv. Well Electronics, Inc., 525 U.S. 55 (1998) (invention's "on sale" status); Dickinson v. Zurko, 119 S.Ct. 1816 (1999) (CAFC standard of review of PTO decisions). 76 See Michael Paul Chu, Note: An Antitrust Solution to the New Wave of Predatory Patent Infringement Litigation, 33 WM. & MARY L. REV. 1341, 1351 (1992) ("[The] Federal Circuit is effectively the court of last resort for patent appeals because few patent cases reach the Supreme Court."). 77 See COMMISSION ON STRUCTURAL ALTERNATIVES FOR THE FEDERAL COURTS OF APPEALS, FINAL REPORT (Dec. 18, 1998) (The 105th Congress created the "White Commission," named after Justice Byron White, to study and make recommendations for reform within the courts of appeals.). 78 See Michel, Review of Federal Circuit Decisions, supra note 9, at 1181. (White Commission neither recommending increases or decreases in the jurisdiction of the Federal Circuit). 79 Id.

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provide the CAFC with the tools necessary to accelerate transformation in this area of

law to keep pace with innovative breakthroughs occurring in this technological age.81

3. Other Specialized Article III Courts

a. The Court Of International Trade

The United States Court of International Trade (“CIT”) is a specialized court that

was fundamentally transformed by the Customs Courts Act of 1980,82 from its original

Article I status as the United States Customs Court83 to its current Article III status. The

historical roots of this court extend back to 1890, when Congress first formed the Board

of General Appraisers, a Department of Treasury administrative agency.84 The Customs

Court responsibilities were originally more generally circumscribed and "directed to the

execution of one or more such powers. . . prescribed by Congress." During the

transformation from Article I to Article III status, CIT functions, jurisdiction, and powers

were expanded in roles consistent with the Article III judiciary's "structure, organization,

and procedure."85

Within Federal Circuit's appellate jurisdiction, the CIT also employs full-time,

specialized, and life-tenured Article III judges to serve on the bench.86 The provision of

80 See infra Part III.B.1. (Commentators generally recognize that the Federal Circuit, as a semi-specialized court, has made significant progress in meeting its objectives to provide uniformity of law and consistency of judgment in the area of intellectual property law.). 81 See infra Part IV.B. (noting the patent bar's approval of the recent appointment of an intellectual property attorney to the Federal Circuit). 82 See Customs Courts Act of 1980, Pub. L. No. 96-417, § 101, 94 STAT. 1727, 1727 (codified as amended at 28 U.S.C. §251 (1982)). 83 See generally H.R. Rep. No. 1235, 96th Cong., 2d Sess. 18, reprinted in 1980 U.S.C.C.A.N. at 3729-30 (The Article I United States Customs Court, formed in 1926, underwent a Cinderella-like transformation when it became the Article III Court of International Trade in 1980.). 84 Customs Administrative Act, ch. 407, §§ 12, 13, 26 STAT. 136-37 (1890). 85 See National Archives & Records Administration, THE UNITED STATES GOVERNMENT MANUAL 74-75 (1989) [hereinafter U.S. GOVERNMENT MANUAL]. 86 See 28 U.S.C. § 252 (1988) (granting CIT judges life-time tenure to hold office during good behavior, whereas, previously, the Customs Court judges had fixed terms); 28 U.S.C. § 1338 and 28 U.S.C. § 251(a)

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life tenure is significant to advocates of increased specialization because it permits judges

to develop expertise while on the bench and to provide stability to an increasingly

complex body of international trade law,87 obtained through congressional court reform.88

b. Semi-Specialist Courts

Semi-specialized Article III federal courts,89 staffed by part-time generalist

judges90 include the Temporary Emergency Court of Appeals,91 the Special Court hearing

railroad property matters,92 the Foreign Intelligence Surveillance Courts,93 and the federal

(respectively (1) giving federal district courts original jurisdiction over patent cases, and (2) stating the CIT is “a court established under Article III of the Constitution of the United States”). 87 See U.S. GOVERNMENT MANUAL, supra note 85, at 74-75 (1989). 88 HONORABLE DOMINICK L. DICARLO, THE UNITED STATES COURT OF INTERNATIONAL TRADE at I (1992) (Chief Judge DiCarlo presides over the CIT.). See H.R. REP. No. 1235, 96th Cong., 2d Sess. 18, 27-28, reprinted in 1980 U.S.C.C.A.N. 3729, 3739. The Customs Courts Act of 1980 established the CIT with the following objectives: (1) "the explicit grant of all judicial [Article III] powers in law and equity," (2) the "re-emphasis and clarification of Congress' intent that the expertise and national jurisdiction of the [CIT] be exclusively utilized in the resolution of conflicts and disputes arising out of the tariff and international trade laws," and (3) the "transfer of exclusive jurisdiction to the [CIT] for civil actions for the recovery" of damages.” Part 1581 provides the CIT with all the powers in law and equity granted to U.S. District Courts. Although arguably more theoretical, the existence of constitutionally authorized bi-national non-Article III panels in the CIT context opens the door to potential feasibilities of an international panel or tribunal that would hear international patent disputes. Since Congress possesses the power to delegate intellectual property matters to be heard by the PTO as an Article I administrative agency or legislative court, Congress' authority may perhaps extend to granting Article I court status to a specialized international tribunal, panel, or agency hearing exclusively disputes concerning intellectual property matters. While intriguing, discussion of this possibility is outside this Article’s scope. 89 Rochelle Dreyfuss, The Federal Circuit: A Case Study in Specialized Courts, 64 N.Y.U.L. REV. 1,4 (1989) [Rochelle Dreyfuss, The Federal Circuit] (Specialist courts are generally defined as those "possessing jurisdiction in but a single area of law." In contrast, the Federal Circuit's broader jurisdiction is that of a "semi-specialized" court.) See generally infra Part II.B. Article I administrative tribunals, in contrast to Article III courts, are “legislative courts” that possess some specialized adjudicative attributes, with decisions appealable to Article III district courts. 90 See supra note 32 and accompanying text (defining specialist and generalist courts). 91 See e.g., Economic Stabilization Act Amendments of 1973, Pub. L. No. 93-28, § 218, 87 Stat. 27, 29 (expired 1974) (noting creation of the Temporary Emergency Court of Appeals with exclusive jurisdiction over appeals from district court decisions to adjudicate disputes arising under this Act, giving the President the authority to control inflation by placing limits on prices, salaries, and rents); Comment: The Appellate Jurisdiction of the Temporary Emergency Court of Appeals, 64 MINN. L. REV. 1247, 1247 n.2 (1980). 92 See Regional Rail Reorganization Act of 1973, Pub. L. No. 93-236, §209(b), 87 Stat. 985, 999 (codified as amended in 45 U.S.C. §719(b) (1982)). 93 See Foreign Intelligence Surveillance Act of 1978, Pub. L. No. 95-511, §103, 92 Stat. 1783, 1788 (codified at 50 U.S.C. §1803 (1982)).

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district court division that appointed prosecutors under the Ethics in Government Act.94

Such semi-specialized federal courts, perceived as combining the best of both worlds—

the "panoramic viewpoints" of generalist courts and focused comprehension of

specialized courts—have been utilized historically to address specific issues confronting

the government.

B. Article I Administrative Courts: Authority of Agencies and the Patent and Trademark

Office

1. General rule-making and adjudicative authority delegated to agencies under Article I

Article I of the U.S. Constitution empowers Congress to establish specialized

legislative tribunals, often referred to as "agency or Article I courts."95 Under Article I,

Congress may delegate rule-making and adjudicative authority to administrative agencies

that specialize in statutorily defined areas of law. Representative administrative agencies

created under Congress’ Article I power include the Environmental Protection Agency

(EPA) and the Occupational Safety and Health Review Commision (OSHRC).96 Judicial

authority for Congress' establishment of agencies, as "legislative courts," was supported

by Supreme Court decisions in Northern Pipeline Construction Co. v. Marthon Pipeline

Co.97 and Commodity Futures Trading Commission (CFTC) v. Schor98 that circumscribed

the limits of Article I agency tribunal powers. In Northern Pipeline, the Supreme Court

plurality held that while it was Article III’s “inexorable command” that United States

94 Ethics in Government Act of 1978, Pub. L. No. 95-521, §602(a), 92 Stat. 1824, 1873-74 (codified as amended at 28 U.S.C. §49 (1982 and Supp. V, 1987)). See Veterans' Judicial Act of 1988, Pub. L. No. 100-687, 301 (a), 102 Stat. 4105, 4114 (codified at 38 U.S.C. §4053) (A parallel Article I semi-specialized court is the Court of Veterans Appeals.). 95 U.S. CONST. art. I, § 8, cl. 9. 96 See, e.g., 321 U.S. 414-448 (1944) (setting forth environmental regulations of the EPA); 29 U.S.C. § 661 (1982) (codifying the amended Occupational Safety and Health Act of 1970, Pub. L. No. 91-596, §12, 84 Stat. 1590, 1313). 97 Northern Pipeline Construction Co. v. Marthon Pipeline Co., 458 U.S. 50 (1982).

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judicial power be placed only in judges with both life tenure and salary stability,99

legislative courts and administrative tribunals could be created in accordance with “the

exceptional power[] bestowed upon Congress by. . . historical consensus.”100

Legislative courts or agencies are vested with authority to formulate rules and

adjudicate cases based upon their specialized expertise.101 Agencies were established to

fill the interpretative void of legislative enactments to fulfill congressional intent in

specialized areas of law. Agency interpretations of a statute are generally given

"controlling weight" upon judicial review by an Article III court as long as it is

reasonable, rather than "arbitrary, capricious, or manifestly contrary to statute."102

Appellate courts generally uphold agency decisions in about 70-75% of cases.103

Article I decisions are generally subject to judicial review by Article III courts.

However, decisions by Article I courts or agencies, as adjudicative bodies, are often

given some degree of deference by the courts. 104 Thus, federal courts generally support

decisions by Article I agencies or courts, such as the PTO, unless these decisions are held

to be “arbitrary and capricious,”105 not supported by “substantial evidence,”106 or an

“abuse of discretion.”107

98 Commodity Futures Trading Commission (CFTC) v. Schor, 106 S.Ct. 3245 (1986). 99 Northern Pipeline Construction, Co., 458 U.S. at 58-59. 100 Id. at 70. 101 See generally Harvey L. Pitt, Securities Regulation by Enforcement: A Look Ahead at the Next Decade, 7 YALE J. ON REG. 149, 164-165 (1990) (noting, "[a]dministrative agencies were established largely to develop and consolidate expertise in technical areas of societal interest[,] . . . fill[ing] the interstices of Congressional pronouncements, at a level far beyond that which Congress is willing or able to provide"). 102 Chevron U.S.A. v. Natural Resources Defense Council, Inc., 467 U.S. 837 (1974). 103 See Orin S. Kerr, Shedding Light on Chevron: An Empirical Study of the Chevron Doctrine in the U.S. Court of Appeals, 15 YALE J. ON REG. 1, 30 (1998) (noting that the appellate courts upheld agency constructions of law in 73% of cases in 1995-96). 104 FTC v. Ruberoid, 343 U.S. 470, 490-91 (1952) (Jackson, J., dissenting). 105 5 U.S.C. § 706(2) (1994). FCC v. Sanders Bros. Radio Station, 309 U.S. 470, 472 (1940) (the Court reviewing an FCC decision for potential “arbitrary and capricious” action).

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2. General Functions of the Board of Patent Appeals and Interferences of the

PTO as an Article I Tribunal

The Board of Patent Appeals and Interferences of the PTO ("Board") operates

functionally as a specialized Article I tribunal when it hears patent cases, such as those

relating to the patentability of inventions, interference or priority proceedings, and other

related issues. The PTO, a division of the Department of Commerce,108 employs over

three thousand patent examiners, reviews over two hundred thousand applications

annually, and issues over one hundred thousand patents per year109 in compliance with

over three hundred pages of regulations promulgated by this agency in accordance with

its congressional mandate.110 The PTO’s principal focus is in issuance of patents and

trademarks,111 hiring and deploying expert scientists specialized in the subject matter of

various scientific disciplines.112 However, the PTO, through its Commissioner and

Board, secondarily may re-examine patent validity,113 declare an interference,114 or

106 See SSIH Equipment S.A. v. United States International Trade Commission, 718 F.2d 365, 379-83, 218 U.S.P.Q. (BNA) 678, 690-93 (Fed. Cir. 1983) (Nies, J.) (defining "substantial evidence" as "such relevant evidence as a reasonable mind might accept as adequate to support a conclusion"). 107 Morgan v. United States, 298 U.S. 468, 478 (1936) (the Court determining whether there was an “abuse of discretion” in a Department of Agriculture’s procedural decision). 108 35 U.S.C. § 1 (1988 & Supp. V 1993). 109 See 1997 Pat. & Trademark Off. Rev. 8. 110 37 C.F.R. §§ 1-10, 170 (1999). 111 35 U.S.C. § 1 (1988 & Supp. V 1993); 35 U.S.C. §§ 301-306 (1988) (noting duties of the PTO Commissioner). 112 See generally United States Patent and Trademark Office, http://www.uspto.gov (last visited Apr. 22, 2001). 113 35 U.S.C. § 302; 37 C.F.R. §§ 1.510-1.570 (1994) (providing reexamination procedures). In reexamination proceedings, the patent owner or a third party may compel the PTO to determine validity of a previously issued patent for an invention in light of newly revealed prior art (i.e., patents, publications). 114 35 U.S.C. § 135 (1988); 37 C.F.R. §§ 1.606-1.608 (providing interference procedures). In an interference proceeding, the PTO determines the “first inventor” in a priority race between two or more inventors who claim patent rights to the same invention. Only this “first to invent” is entitled to a patent. See, e.g., Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 495-97 (describing an interference between two genetic engineering patent applications).

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http://www.uspto.gov/

consider reissue of a patent.115 Thus, the specialized scientific expertise of the PTO

Board, as a legislative tribunal, permits it to make pertinent decisions based on relatively

established technical/legal grounds.116 While the Federal Circuit reviews PTO Board and

Commissioner decisions de novo,117 practicing patent attorneys may consider such PTO

administrative and adjudicative proceedings as practical alternatives to conventional

patent litigation relegated to the federal courts.

3. The Supreme Court’s Dickinson Decision Shifted Decision-making Power

From the Semi-specialized Federal Circuit to the PTO, A Specialized Agency

In Dickinson v. Zurko, the Supreme Court shook the foundations of the patent

world by holding that the review of PTO decisions by the Federal Circuit should be under

the Administrative Procedure Act's ("APA's") “court/agency” standard articulated

previously,118 rather than under the “court/court” clearly erroneous standard under the

Federal Rules of Civil Procedure.119 One principal effect of the Supreme Court’s holding

in Dickinson is that the semi-specialized Federal Circuit must now give greater deference

to PTO findings and decisions, as a specialized Article I agency.

115 35 C.F.R. §§ 1.171-1.179 (1994) (providing reissue procedures). Under these regulations, a patent owner may file a reissue application to request that the PTO permit correction of errors. Once reissue application is made, a third party may either protest reissue proceedings or file for reexamination. 116 See also U.S. Dep’t of Commerce, Patent and Trademark Office, Manual of Patent Examining Procedure (MPEP) §§ 2300.02, at 2300-6 to 2300-7 (1995) (noting that it generally has taken two years to litigate an interference issue through the PTO’s Board). 117 See 28 U.S.C. § 1295 (1994) (granting the Federal Circuit exclusive jurisdiction over PTO Board and Commissioner appeals); In re Donaldson, 16 F.3d 1189, 1192 (1994) (the CAFC reviewing PTO Board decisions de novo). 118 See footnote 105 and accompanying text. 119 Dickinson v. Zurko, 527 U.S. 150, 154-56. Justice Breyer, in the majority opinion, noted that pre-1947 courts gave deference to PTO findings, consistent with court/agency rather than court/court review standards. Thus, the Federal Circuit should review PTO decisions under the same standard applied to other administrative agencies under the APA. Id. at 160. But see id. at 170-72 (Rehnquist, C.J., dissenting). Chief Justice Rehnquist argued that the Federal Circuit review of PTO cases should utilize the court/court standard. See infra Part II.3.a. (describing the potential transformation of the PTO from an Article I agency to an Article III court).

26

Some supporters of Dickinson maintain that the PTO, with its superior expertise

in intellectual property law and mastery of factual inquiry, should justifiably be

empowered with greater decision-making authority than the Federal Circuit, which is

primarily composed of generalist judges without technical training.120 PTO proponents,

which often include the Patent Bar and American Bar Association, argue that heightened

PTO authority would encourage America's investment in research by supporting the

PTO's policy of patent protection of technologies. Conferring Article III status upon the

PTO might aid in meeting these policy objectives.121 In contrast, opponents maintain that

the Federal Circuit, with its exclusive grant of subject matter jurisdiction in intellectual

property arenas, possesses the greater expertise and broader understanding of legal

principles.122

Nevertheless, with the Supreme Court in Dickinson defining today's judicial

standards in intellectual property law, the balance of power has tilted toward greater

authority vested in the more specialized PTO, as an administrative agency composed of

technical experts, to determine the patentability of inventions.123 Certainly, the PTO's

120 See Orin S. Kerr, Rethinking Patent Law in the Administrative State, 42 WM. & MARY L. REV. 127, 182 (Oct. 2000) [hereinafter Kerr, Rethinking Patent Law] (The author argued that a contract theory should be used to evaluate the Federal Circuit's standard of review over the PTO, where patents are viewed as "consideration" for the PTO's acceptance of the patent application's "offer." Under this contract theory, the author maintained the court/court theory should have been applied.). Article III status, if conferred upon the PTO, would subject it to the court/court standard of review. See infra Part II.3.a. 121 See supra Part II.A.3.a. 122 See supra note 120 (supporting that the Federal Circuit might instead continue to review PTO decisions under the less deferential court/court standard); supra Part II.A.3.a. Dickinson detractors criticize the Supreme Court's categorization of the PTO as an "agency" rather than as a "court" because the PTO, as an agency, is particularly vulnerable to corporate political lobbying, advertising, and economic pressures to issue more patents to protect America's business interests, perhaps at the expense of the public's interests in unrestrained access to technological knowledge. Some might caution that the Supreme Court's decision for review of PTO factual findings under the deferential APA "substantial evidence" standard means that factual determinations relating to written description, obviousness, best mode, utility, and anticipation could become, in essence, immunized from scrutinizing judicial review on appeal. The PTO, as a specialized Article I tribunal, may also be scathed by criticisms of its potentially myopic focus upon narrow technical issues rather than on broader far-reaching societal concerns. 123 See Dickinson, 527 U.S. 150.

27

scientific expertise is vastly superior to that existing in any federal court today, perhaps

even including the Federal Circuit. It is not surprising that the Federal Circuit, a semi-

specialist court, has experienced some apparent difficulty in adjudicating complex

technological cases. Moreover, since intellectual property is, by definition, novel--

distinguishable in claims from any prior inventions-- the Supreme Court's Dickinson

decision could be perceived perhaps as a rational “vote of confidence” in the specialist

PTO agency's competence in making the difficult determinations concerning patentability

of inventions. Even some Federal Circuit judges, such as Judge S. Jay Plager, support

greater deference to the PTO as an expert administrative agency.124 While appointment

of specialist judges to the Federal Circuit or, alternatively, the CAFC's greater use of

technical advisors in the future might remedy the Federal Circuit's lack of expertise,

consistent with the goals of the Federal Courts Improvement Act that created the

CAFC.125 However, until greater specialization at the appellate level occurs through

court reform, the constitutional mandate for "[promotion of] the Progress of Science and

useful Arts"126 might be best served by the Supreme Court's holding in Dickinson to

ensure that greater decision-making authority is vested in the PTO.

C. The ICANN Forum for Domain Name Alternative Dispute Resolution—An

International Specialized, Pseudo-Judicial/Administrative Regulatory Body

124 SeeAn Interview with Circuit Judge S. Jay Plager, 5 J. PROPRIETARY RTS. 2, 5 (December 1993) (Federal Circuit Judge Plager noted, "I came from an administrative law background. I thought the PTO was an administrative agency. But we don't review it as if it is. There is no other administrative agency in the United States that I know of in which the standard of review over the agency's decisions gives the appellate court as much power over the agency as we have over the PTO."). 125 See Federal Courts Improvement Act of 1982 § 120(c)(1), 28 U.S.C. § 715 (1982) (This Act, applying to the Federal Circuit, provided that the circuit may deploy technical advisors to aid with consistency of decisions.). See Giles S. Rich, Columbia Law School Julius Silver Program in Law, Science and Technology—Inaugural Lecture, 68 J. PAT. & TRADEMARK OFF. SOC'Y 604, 617 (1986). However, in the Federal Circuit, technical advisors are specifically utilized to ensure panel opinions issued do not conflict

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The Internet Corporation for Assigned Names and Numbers ("ICANN") was

created in 1998, as a result of U.S. Department of Commerce support, to organize and

provide rules for the Internet domain name system.127 The U.S. government founded

ICANN as a prototypic private "court" with voluntary participation; however, once

participants have agreed to register with ICANN and fall under this body's rubric,

ICANN's contracts and decisions are binding.128 Under ICANN’s Uniform Dispute

Resolution Policy, ICANN requires that domain name holders submit to ICANN-

administered arbitration proceedings.129 At present, ICANN has authorized four

approved dispute resolution providers: the World Intellectual Property Organization

("WIPO"), the National Arbitration Forum ("NAF"), the CPR Institute for Dispute

Resolution ("CPR"), and eResolution ("eRes").130 Trademark owners have preferred to

utilize the WIPO because its panelists consist of attorneys or professors specializing in

with other previously issued opinions. Greater use of such technical advisors is advocated in aiding panels to ensure understanding of complex issues. 126 U.S. CONST. art. I, § 8, cl. 8. 127 Internet Domain Names and Intellectual Property Rights: Hearings Before the Subcomm. On Courts and Intellectual Property of the House Comm. on the Judiciary, 106th Cong., 1999 WL 551028 (1999), http://www.house.gov/judiciary/robe0728.htm (testimony of Michael Roberts, Interim President and Chief Executive Officer of ICANN, noting that the U.S. Government had given ICANN, a private non-profit organization, the authority to centralize domain name management consistent with the White Paper objectives). See WORLD INTELLECTUAL PROPERTY ORG. [WIPO], FINAL REPORT OF THE WIPO INTERNET DOMAIN NAME PROCESS, WIPO Pub. No. 92-805-0779-6 (1999), http://wipo2.wipo.int/process1/report/finalreport.html. In October, 1999, ICANN issued its Uniform Domain Name Dispute Resolution Policy (hereinafter "UDRP") in response to cybersquatting, defined as "the abusive regulation of domain names by bad faith actors . . . in order to mislead customers . . . or to extort payment from the rightful trademark owner.. . ." See John G. White, ICANN’s Uniform Domain Name Dispute Resolution Policy in Action, 16 BERKELEY. TECH. L.J. 229, 231 (2001) (suggesting that ICANN might expand UDRP rules to apply to passive warehousing and other issues.). 128 See generally ICANN, Rules for Uniform Domain Name Dispute Resolution Policy [hereinafter UDRP Rules], http://www.icann.org/udrp/udrp-rules-24oct99.htm (page updated Jan. 3, 2000). 129 See id; Diane Cabell, Trademark Disputes Online – ICANN’s New Uniform Dispute Resolution Policy, Representing E-Commerce Clients, 180th Program, Massachusetts Continuing Legal Education (Nov. 18, 1999), http://www.mama-tech.com/udrp.html. 130 ICANN, Approved Providers for Uniform Domain Name Dispute Resolution Policy, http://www.icann.orag/udrp/approved-providers.htm (page updated Apr. 14, 2001).

29

http://www.house.gov/judiciary/robe0728.htm

http://www.icann.org/udrp/udrp-rules-24oct99.htm

http://www.icann.orag/udrp/approved-providers.html

trademark law, in contrast to the NAF’s generalist judge panel. 131 According to

ICANN's Registrar Accreditation Agreement, ICANN can prevent registration by those

refusing to follow the UDRP.132

Thus, ICANN and its dispute resolution arbitration panels may function as

pseudo-judicial or pseudo-administrative regulatory bodies. ICANN effectively utilizes

its authority and URDP policies to resolve domain name disputes at low cost and within a

short two-month time frame.133 Procedurally, the complainant submits a complaint to

one of the approved administrative dispute resolution providers,134 then chooses either a

one or three person panel for arbitration.135 ICANN decisions may be appealed to the

courts,136 with ICANN implementing the court's decision.137

ICANN’s arbitration panels, while privately formulated under the UDRP, operate

as public "court-like" entities with at least a semblance of (1) open board meetings and

proceedings, (2) representation by a Board through consensual judgments, and (3) due

process rights including notice, an opportunity to be heard, and access to appeal

procedures.138 Yet ICANN's Internet dispute resolution authority may be transient

because, as noted in the WhiteCommission’s analysis: (1) the United States may be

reluctant to maintain ICANN's role as the Internet's economic value increases, (2) the

131 See WIPO, WIPO Domain Name Panelists, http:// arbiter.wipo.int/domains/panel/panelists.html

http://www.icann.org/udrp/approved-providers.html (as of Nov. 25, 2001); NAF, List of Qualified Dispute

Resolution Panelists, http://www.arbforum.com/domains/panelists.asp (last visited Nov.. 5, 2001); Tamara Loomis, Domain Names; Disputes Get Swift Resolution Under UDRP, N.Y.L.J., July 27, 2000, at 5 (noting panelists at NAF are drawn from retired judges). 132 See Loomis, supra note 131. 133 See id. (Domain name dispute resolution, handled online, was slated to cost as low as $1,000, with resolution within forty-five days.). 134 UDRP Rules, supra note 128, ¶ 3(a). [hereinafter UDRP Rules]. 135 See id. ¶ 3(b)(iv). 136 See id. ICANN, Uniform Domain Name Dispute Resolution Policy, ¶ 4(k), http://www.icann.org/udrp/udrp-policy-24oct99.htm (page updated June 4, 2000). 137 See id. (However, courts, rather than ICANN, resolve Anticybersquatting Consumer Protection Act domain name disputes.).

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http://arbiter.wipo.int/domains/panel/panelists.html

http://arbiter.wipo.int/domains/panel/panelists.html

http://www.icann.orag/udrp/approved-providers.html

http://www.arbforum.com/domains/domain-judges.html

http://www.icann.org/udrp/udrp-policy-24oct99.htm

need for business competition in domain name registration becomes more apparent, and

(3) some consensus regarding a replacement managerial administrative or judicial

structure is obtained.139 Thus, national or international courts or administrative agencies

may be considered as reasonable alternative forums to ICANN panels in resolving

domain name disputes.

Notwithstanding the benefits of ICANN's alternative dispute resolution ("ADR")

panels in resolving Internet law and other complex high technology cases, Professor

Stempel notes that "courts appear to continue to be distinctly more competent as the

default option for adjudication than their current competitors—broad-based legislation,

administrative agencies, arbitration, mediation, and variant hybrids."140 While generalist

district and appellate courts in their current form may exist as imperfect forums for the

adjudication of complex technological issues in comparison to administrative agencies

(e.g., PTO for patent and trademark issues) or private administrative bodies (e.g., ICANN

for Internet trademark law),141 courts should remain the preferred default decision-maker

in these cases relative to other alternatives. Generalist federal courts may consider

increased specialization to achieve higher levels of comprehension and competency in

deciding complex high technology cases.142

138 See id. ¶ 4. 139 See Management of Internet Names and Addresses, 63 FED. REG. 31,741; 31,742 (June 10, 1998) [hereinafter The White Paper]. 140 Jeffrey W. Stempel, A More Complete Look at Complexity, 40 ARIZ. L. REV. 781, 784 (1998) [hereinafter Stempel, A Look at Complexity]. 141 Id. 142 Courts, in theory, possess the following procedural safeguards to protect the integrity of the decision-making process: (1) equal access to all litigants in open forums, (2) independence and neutrality of judgment in resolution of controversies, (3) published opinions subject to judicial scrutiny, (4) resources to deploy technical advisors, expert witnesses, and others to enhance the court's competence, (5) published awards subject to public inspection and debate, (6) stabilization rather than deterioration of the law, and (7) ability to ensure fairness in assessing the constitutional or public policy bases underlying existing legislation. See id. Thus, courts, particularly if specialized to a greater degree, possess features that make

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III. POLICY CONSIDERATIONS IN SUPPORT OF INCREASED SPECIALIZATION

IN THE FEDERAL JUDICIARY SYSTEM

With the recent successes achieved by the semi-specialized Federal Circuit and

the specialized PTO in advancing “Progress in Science and the useful Arts,” the tide of

public and legal opinion has shifted dramatically over the last two decades towards

support for increased specialization in the judiciary.143 This part of the article discusses

various policies relating to increased specialization in the federal judiciary. These

policies include: (1) utilization of specialist rather than generalist adjudicators; (2)

uniformity and greater predictability of judgment, with concomitant stabilization of

jurisdictional and choice of law discrepancies among courts; (3) prevention of forum

shopping; (4) increased judicial efficiency and economy; and (5) protection of business

interests, promotion of corporate research and development, and patent disclosure of

inventions to the public.

A. The Specialist Court vs. Generalist Court Debate

1. Specialist vs. Generalist Courts

Tremendous controversy has historically existed and still exists today among

judges, academic scholars, legislators, and lawyers regarding whether increased

specialization within the judiciary would be beneficial. This part of the article addresses

the following issues: (1) the lack of prestige characteristic of some specialist courts, (2)

arguments that specialized judges have “myopic” focus, (3) criticisms that specialized

them superior to other alternatives (e.g., ICANN or ADR) in resolving complex matters common to high technology arenas. 143 See John B. Pegram, Should the U.S. Court of International Trade be Given Patent Jurisdiction Concurrent with that of the District Courts?, 32 HOUS. L. REV. 67, 71 (1995) [hereinafter Pegram, Court of International Trade] (The author noted, “Today, the attitude towards specialized courts has become more favorable. The Federal Circuit, which is highly specialized, is considered a success.”).

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courts may be particularly susceptible to special interest group manipulation, and (4) a

reply to the suggestion that generalist judges may readily become self-educated to

adjudicate technically or scientifically complex cases.

a. Addressing the Lack of Prestige Characteristic of Some Specialist Courts

Opponents sometimes note that specialist courts, being less prestigious, would be

unable to attract the most highly qualified judges to the bench, resulting in an inferior

body of specialized law.144 Since federal courts have historically deployed primarily

generalist judges, and since specialized judges have primarily resided in state courts (e.g.,

family court, drug court) having lower status and compensation, specialization has been

unfairly stigmatized as being inferior. However, conceptually, a specialized judge is no

more inferior to a generalist judge than a specialist in neurology is inferior to a general

practitioner in medicine. In fact, in the medical field, specialists are often considered

more prestigious than generalists, drawing higher compensation for their expertise.

Societal perceptions of the prestigiousness of judicial positions are a product of

political power and economic support that serve as the foundations of the current judicial

system. Thus, increased specialization in the federal judiciary by appointment of more

Article III specialist judges, with lifetime tenure and concomitant salary increases would

undoubtedly enhance the prestige of a specialized bench.145 For example, in the brief

two-decade lifetime of the Federal Circuit's existence, the prestige of this semi-

specialized court has increased, and the CAFC has been able to attract superior law clerks

144 See Christopher F. Carlton, The Grinding Wheels of Justice Needs Some Grease: Designing the Federal Courts of the Twenty-First Century, 6 KAN. J.L. & PUB. POL'Y 1,4 (Summer/Fall 1997) (noting that appointment of less qualified judges would result in "balkanized procedural rules to develop and substantive principles to evolve in a sheltered environment"). 145 See supra Part II.B and infra Part IV.B (supporting the deployment of Article III judges in district courts and conceivably within the PTO).

33

because of its sterling credentials and reputation in the legal community. However, even

in the absence of Article III status, economic support manifested through increases in

terms of tenure, greater employment security, salary, and budgets may provide the

enhanced prestige necessary to attract highly qualified specialist judges to the bench.

b. A Response to Allegations of a Putative "Myopic" or "Tunnel Vision" Focus of

Specialized Judges

Some specialist court opponents allege that specialist judges may make decisions

based on an overly narrow "myopic focus."146 These critics maintain that the status quo

deployment of generalist judges with a more panoramic view of the law should be

retained.147 For example, the Hruska Commission originally criticized specialization by

stating, “the quality of decision-making would suffer as the specialized judges become

subject to ‘tunnel vision,’ seeing the cases in a narrow perspective without the insights

stemming from broad exposure to legal problems in a variety of fields.”148 Similarly, in

the 97th Congressional Hearings, opponents cautioned, “the proposed [Federal Circuit]

court with its limited and specialized jurisdiction may well lose the competence to act on

146 See Simon Rifkind, A Special Court for Patent Litigation? The Danger of a Specialized Judiciary, 37 A.B.A. J. 425, 425-26 (1961) (cautioning that creation of a specialized Bar and court would "intensif[y] the seclusiveness of that branch of the law and. . . further immunizes it against the refreshment of new ideas, suggestions, adjustments and compromises which constitute the very tissue of any living system of law."). 147 RICHARD A. POSNER, THE FEDERAL COURTS: CHALLENGE AND REFORM, 258 (1996) [hereinafter RICHARD POSNER, THE FEDERAL COURTS] (Judge Posner observed that some believe generalist judges, with their varied experiences, promote cross-fertilization of ideas critical to a vital federal court system. However, this thesis perhaps inaccurately assumes that specialized judges "bury their heads in the sand" and are necessarily isolated from contact with other judges, legal concepts presented in the legal literature, court personnel, academicians, attorneys, and other sources.). See alsoid. (Judge Rifkind warning of the potential deficiencies of specialized courts). 148 Hruska Commission Recommendations, supra note 58, at 234-35. See also Court of Appeals for the Federal Circuit – 1981: Hearings on H.R. 2405 Before the Subcomm. on Courts, Civil Liberties and the Administration of Justice of the House Comm. on the Judiciary, 97th Cong., 1st Sess. 42-43 (1981) [hereinafter H.R. Hearings] (Judge Howard T. Markey, while supporting creation of the Federal Circuit as a semi-specialized tribunal, argued against an entirely specialized patent court noting, “There is a possibility of the horse-blinders, tunnel-vision type approach at that level if you had nothing but patent lawyers day in and day out, day in and day out.”).

34

the broad and fundamental questions posed, for example, in antitrust cases. I believe that

these requisite broad views are acquired, and continually renewed, by constant exposure

to the sometimes heated, and philosophical, debates to all areas of law.”149 Consistent

with this view, Judge Posner believed that specialized judges would lose their ability to

see the broad panoramic policy landscape through “reduction . . . [of] the cross-

pollination of legal ideas.”150

However, the perceived "overly myopic" or "tunnel vision" focus of specialized

judges may be based upon unsettled assumptions. First, the mere fact that a specialist

judge concentrates his decision-making responsibilities in one distinct area of law

certainly does not necessarily mean that his or her comprehension of larger societal and

public policy concerns is deficient. Specialist judges may have unrestricted access and

exposure to constitutional, legal, and sociological literature to permit a balanced, well-

rounded view. Second, while generalist judges are often exposed to a wide variety of

cases, many of such judges possess dockets that span more limited areas of law. Thus,

for example, while the Delaware Supreme Court may be initially characterized as a

generalist court, it hears a disproportionately large number of cases, relative to other

states, of corporation and business-related cases.151 Nevertheless, the Delaware Supreme

Court's "specialization in fact" has not been criticized as endowing it with a narrow

149 97th Congress Hearings, supra note 58.. 150 Richard A. Posner, Will the Federal Courts of Appeals Survive Until 1984? An Essay on Delegation and Specialization of the Judicial Function, 56 CAL. L. REV. 761, 787 (1983) [hereinafter Posner, Judicial Delegation and Specialization]. In a slippery slope conclusory argument, Posner cautioned, that an appellate judge’s specialization could decrease one’s objectivity in judgments, encourage instability in application of the law, and lead to constitutional infractions of the separation of powers. Id. at 775-90 (Judge Posner delineated a fine demarcation between judicial specialization and specialized courts. See id. at 778; supra Part III.A.1, supra Part IV.B).151 Since the Delaware Court of Chancery hears a large number of cases involving corporations, its judges become relatively "specialized" in fact by virtue of the court's calendar.

35

"myopic" focus. 152 Instead, this court’s specialized corporate focus has been held as an

exemplary model for other states to follow.

Third, it would be highly inconsistent for detractors to maintain that generalist

judges may become skilled in specialized areas of law through self-study but then argue

that specialist judges could not use self-study to widen their span of knowledge of other

areas of law outside their own expertise.153 No reliable evidence, at present, appears to

exist to demonstrate unequivocally that specialist judges at equivalent levels are any less

capable or intelligent than their generalist counterparts.154 Thus, it would be premature to

conclude that specialist judges would remain "myopic" in focus rather than exploring

tangential areas of law-science interfaces and social, economic, and legal policies

impacting their respective areas of specialized law. Well-designed research and

investigation is necessary to ensure that conclusions in this important area are based on

fact rather than on unsupported opinion and conjecture.

As a variant of their argument, specialist court detractors sometimes caution that

judicial specialization on the bench or otherwise in complex cases would remove these

cases from the judicial mainstream, making them undecipherable to the "average lawyer

or judge" or "man in the street"--an undesirable consequence.155 Such opponents state

that deployment of generalist judges to hear and decide complex technical or scientific

152 See, e.g., Paramount Communications v. Time Inc., 571 A.2d 1140, 1153 (Del. 1989); Robert A. Ragazzo, Unifying the Law of Hostile Takeovers: Bridging the Unocal/Revlon Gap, 35 ARIZ. L. REV. 989 (1993). 153 Detractors sometimes argue that generalist judges are capable of mastery of a wide range of specialized technical areas through self-study. Similarly, specialist judges may widen their perspectives to avoid the criticism of "myopia" in decision-making. 154 In the absence of definitive studies, support is lacking for the view that specialist judges could not remain open-minded regarding various far-reaching policy considerations regarding legal stances maintained. 155 See Ellen Jordan, Specialized Courts: A Choice?, 76 NW. U.L. REV. 745, 748 [hereinafter Jordan, Specialized Courts] (1981) [hereinafter Ellen Jordan, Specialized Courts: A Choice?].

36

cases, such as those in intellectual property law, would result in "more thorough airing

[of] an issue."156 They argue that generalist courts "air issues" in the public forum by

virtue of the necessity for educating judges on the record, with subsequent publication of

their decisions.157

However, this argument neglects to consider that the average "Walter Mitty" man-

in-the-street possesses little comprehension of the finer points of brain surgery or

neurological medicine.158 Yet this same hypothetical man will commonly rely upon the

expert judgment of his specialized neurosurgeon or neurologist, in spite of his ignorance,

to make intelligent decisions regarding his own health and well-being. Similarly, the

average citizen, unable to fathom the scientific complexities of high technology cases,

should support the foremost priority of the courts to achieve justice in their decisions

through specialization.

Moreover, the detractors' argument incorrectly assumes that the man-in-the-street

understands the substance and procedure of court testimony and decisions.

Commentators have noted their frustration that lay jurors in complex scientific or

technology cases, witnessing first-hand the "airing of issues," are unable to understand

either the technology involved or the jury instructions concerning the law to be applied in

the case.159 Finally, the argument neglects the critical fact that the press, through news

media, including newspapers, television, and radio, often functions to "air issues"

156 Id. (noting generalist court supporters may prefer the goal of "airing of issues" in different federal courts to that of obtaining of national uniformity of law under specialist court decisions). 157 Id. (stating that "basic assumptions will not be taken for granted, and questions will be seen in a context broader than that of the specialist's narrow concerns"). 158 See Thurber’s World (and Welcome to It)!, http://home.earthlink.net/~ritter/thurber/, last updated October 19, 2000 (noting Jame’s Thurber’s satirical short story, “The Secret Life of Walter Mitty,” where Walter Mitty was exemplified as the epitome of the average man). 159 See infra Part IV.C (discussing use of "blue ribbon" expert juries rather than lay juries in technically complex cases).

37

http://home.earthlink.net/~ritter/thurber/

pertaining to judicial decisions to the general populace. The press, as the true public

forum, often functions practically in translating "legalese" and technical verbiage of court

cases into language that is comprehensible to readers.

c. A Response to the Criticism That Specialist Courts May Be Particularly Susceptible to

Special Interest Group Manipulation

Specialist court detractors argue that a specialized judiciary hearing technically

complex cases (e.g., intellectual property) may be particularly susceptible to political

lobbying, a stratified bar, or special interest group manipulation that would ensure

appointment of favorable judges to the specialist court's bench.160 An underlying

assumption is that special interest groups have positions contrary to the societal interests

of the general public and possess sufficient political clout to manipulate the judicial

system.161 Judge Richard Posner believed that it is more probable that special interest

groups would obtain control over a specialized court rather than a generalist court for two

principal reasons: (1) specialized court appointments are necessarily made from special

interest group "warring camps," unlike generalist court appointments, and (2) specialist

benches are more susceptible to the vicissitudes of political opinion than generalist

benches. However, constitutional scholars recognize that the United States Supreme

Court historically has been subject to broad far-reaching swings in social policy

depending on whether Democrats or Republican presidents have been empowered to

make judicial appointments. 162

160 Id. (commenting on the fear that "courts may be 'captured''' by special interest groups). 161 See generally, e.g., Jonathan R. Macy, Promoting Public-Regarding Legislation Through Statutory Interpretation: An Interest Group Model, 86 COLUM. L. REV. 223 (1986) (noting that existence of the interest of the general public critically assumes that public and private interest influences can be distinguished in legislation and judicial pronouncements). 162 See Karl Manheim Interview, supra note 17. For example, the interpretation of the Commerce Clause has shifted substantially with changing bench appointments. See Interview with Stanley Goldberg,

38

Thus, commentators observe that judges often align themselves politically among

major party lines, with Democratic judges frequently supporting the disenfranchised blue

collar working class, racial and other insular minorities, purchasers of goods and services,

and criminal defendants.163 In contrast, Republican judges commonly align their

judgments with the economically privileged elite, corporate businesses/management,

white Anglo-Saxon majoritarian America, sellers of goods and services, and criminal

prosecutors.164 With the enormous baseline "scatter" level of major policy swings

depending upon political party affiliations of judicial appointees within the Supreme

Court and other generalist courts, it would be difficult to find support for the hypothesis

that specialist courts succumb to special interest group pressures more than generalist

courts.

d. A Reply to the Suggestion That Generalist Judges May Readily Become Self-educated

to Adjudicate Technically or Scientifically Complex Issues

Some believe that federal generalist judges may readily educate themselves to

acquire needed specialized information, "much as any intelligent, well-educated person

does, through his or her readings of various publications, exposure to television and

radio, and educational pursuits through courses, lectures, and seminars.”165 Similarly,

Justice Frankfurter once noted, “It is an old observation that the training of Anglo-

American [generalist] judges ill fits them to discharge the duties cast upon them by patent

legislation. . . . [S]o long as the Congress . . . makes the determination of originality [for

Professor, Loyola Law School, Los Angeles, Cal. (Feb. 15, 2001). In criminal procedure, scholars have attributed policy changes in the Fourth Amendment's exclusionary rule that has become riddled with exceptions to the appointment of conservative Republican judges to the Supreme Court bench. 163 See Jeffrey W. Stempel, Two Cheers for Specialization, 61 BROOKLYN L. REV. 67, 104 (1995) [hereinafter Stempel, Two Cheers for Specialization]. 164 Id.

39

patentability assessments] a judicial function, judges must overcome their scientific

incompetence as best they can.”166 Nevertheless, self-study by generalist judges remains

an imperfect solution to remedying such deficiencies, particularly in complex high

technology cases involving intellectual property issues, in part because of the intrinsic

limitations in the knowledge base of generalist judges.

In contrast, proponents of specialized judiciaries maintain that specialized judges

who are intimately familiar with one area of law—through either possession of

technical/legal backgrounds or association with scientific/legal experts—may more

rightly decide cases involving complex "cutting edge" technologies.167 It is difficult to

imagine that generalist judges, even through intensive self-study, may, in a short period

of weeks or months, obtain sufficient knowledge of highly specialized areas of high

technology to comprehend the finer nuances of these complex fields. Analogously, in

medicine, a neurologist, proficient in his or her field, possesses the expertise to discuss

with other brain specialists the latest breakthroughs in medical science in treatment of

specific neurological disorders.168 However, the prudent general practitioner would focus

upon superficial diagnostic criteria for such diseases, relegating the in-depth diagnosis

and treatment to the neurological experts.

165 See Jack B. Weinstein, Limits on Judges Learning, Speaking and Acting—Part I—Tentative First Thoughts: How May Judges Learn? 36 ARIZ. L. REV. 539, 541 (1994). 166 Marconi Wireless Tel. Co. v. United States, 320 U.S. 1, 60-61 (1943) (Frankfurter, J., dissenting in part)(footnote omitted). 167 See infra Part II.A.2. (discussing the Federal Circuit as a specialty court and Part III.2. discussing state specialty courts as models for federal court reform). See also RICHARD POSNER, THE FEDERAL COURTS, supra note 147, at 245 (Judge Posner supporting specialized courts as a solution for high caseloads and complex subject matter). See generally, Daniel J. Meador, An Appellate Court Dilemma and a Solution Through Subject Matter Organization, 16 MICH. L.J. REF.[Do not know what this is in reference too?] 471 (1983); Daniel J. Meador, A Challenge to Judicial Architecture: Modifying the Regional Design of the U.S. Courts of Appeals, 56 U. CHI. L. REV. 603 (1989) (discussing the advantages of federal specialty courts). 168 See Judge Markey's comments, infra note 169 (commenting that brain surgeon specialists become more proficient in their craft with practice).

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Thus, specialized judges, with technical training and calendars dedicated to

intellectual property matters, would possess both the ability and time to become “expert

judges” in the intricacies, nuances and subtleties of complex areas of law.169 Such

specialized judges would potentially have the scientific and legal expertise needed to

debate the finer points of intellectual property law as only experts in a field can.170 These

“expert" judges would possess the knowledge to resolve factually and legally complex

cases expeditiously and decisively, to leave a legacy of consistent and uniform case law

that clarifies rather than confuses.171 If specialized judges are deployed and increased

specialization within the judiciary is established, it is anticipated that the field of law

could begin to make the paradigm transformations necessary to ensure the preservation of

judicial system credibility much as the field of medicine has done when confronted with

accelerating advances in technology.

2. Models For Federal Court Reform: Specialized Judges in Specialized State Courts

Under our federalist system, experimentation within the state courts may be used

as a model for court reform in the federal judiciary. Over the past two centuries, ongoing

nationwide discussion of the benefits of state specialty courts has resulted in the

successful formation and establishment of business courts,172 adult drug courts,173 family

169 Hearing Before the Subcomm. on Courts of the Comm. on the Judiciary, 97th Cong., 1st Sess. 42-43 (1981), (statement of Chief Judge Howard T. Markey, Court of Customs and Patent Appeals) (Chief Judge Markey noting, "if I am doing brain surgery every day, day in and day out, chances are very good that I will do your brain surgery much quicker. . . than someone who does brain surgery once every couple years"). 170 See Richard A. Posner, Will the Federal Courts Survive Until 1984?: An Essay on Delegation and Specialization of the Judicial Function, 565 CAL. L. REV. 761, 781 (1983); RICHARD A. POSNER, THE FEDERAL COURTS: CRISIS AND REFORM (1985) [hereinafter Posner, Judicial Delegation and Specialization]. 171 But see Ellen Jordan, Specialized Courts: A Choice, supra note 155, at 747-48 (noting generalist judges faced with difficult cases impose "costs of uncertainty and delay, and the disproportionate drain on judicial resources such cases cause"). 172 See generally Ad Hoc Committee on Business Courts, Business Courts: Towards a More Efficient Judiciary, 52 BUS. LAW. 947, 961 (1997).

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courts,174 juvenile drug courts,175 teen courts,176 domestic violence courts,177 and business

courts.178 Specialist judges in state courts have brought thoughtful in-depth analysis,

logic, and consistency to judgments, leading to greater credibility of the judiciary in its

pronouncements.179 While specialty business courts have been established in many state

jurisdictions, New York has made notable progress in establishing specialized courts as

subdivisions or subunits of existing courts. 180 These include the Commercial Division of

the Supreme Court, the Housing Court, family courts (with four specialized divisions),

drug treatment courts, and domestic violence courts. Thus, specialized state courts, with

their corresponding specialized judges, may serve as potential models for deployment of

specialized judges and courts in the federal system.181

a. State Business Courts: The Delaware Court Of Chancery as a Specialization Model

For Other Jurisdictions and Areas of Law

173 See generally John S. Goldkamp, The Drug Court Response: Issuses and Implications for Justice Change, 63 ALB. L. REV. 923 (2000). 174 See generally Monrad G. Paulson, Juvenile Courts, Family Courts, and the Poor Man, 54 CAL. L. REV. 694, 701 (1966). 175 See Marily Roberts et al., The Juvenile Drug Court Movement, Fact Sheet 59 (Office of Juv. Just. and Delinquency Prevention), Mar. 1997 at 1, 2. 176 See Allison R. Shiff & David B. Wexler, Teen Court: A Therapeutic Justice Perspective, 4 CRIM. L. BULL. 342, 343 (1996). 177 See Art Barnum, DuPage Total Crimes Drop, But Robberies Increase 49%, CHI. TRIB., Apr. 27, 1997, at 1. 178 See generally Ad Hoc Committee on Business Courts, Business Courts: Towards a More Efficient Judiciary, 52 BUS. LAW. 947, 961 (1997). 179 See generally LeRoy L. Kondo, Advocacy of the Establishment of Mental Health Specialty Courts in the Provision of Therapeutic Justice for Mentally Ill Offenders, 24 SEATTLE U.L. REV. 373 (2000) [hereinafter LeRoy L. Kondo, Mental Health Specialty Courts] (discussing various specialized state court models such as family, drug, and mental health courts). 180 See Quintin Johnstone, Article: New York State Courts: Their Structure, Administration and Reform, 43 N.Y.L. SCH. L. REV. 915, 918-21, 973 n.10 and accompanying text (1999/2000) (noting New York's court structure includes specialized courts as parts or divisions of existing courts). 181 See James R. Brown, Drug Diversion Courts: Are They Needed and Will They Succeed in Breaking the Cycle of Drug-Related Crime? 23 NEW ENG. J. ON CRIM & CIV. CONFINEMENT 63, 84, 99 (1997) [hereinafter Brown, Drug Courts] (maintaining that drug courts may also serve as prototypes for domestic violence courts that also provide intensive client treatment).

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Our nation's first specialized business court, the Delaware Court of Chancery, has

existed for over two centuries.182 Strictly speaking, the Delaware Court of Chancery is a

semi-specialized tribunal--like the Federal Circuit--rather than a purely specialized

tribunal, because its jurisdiction extends beyond corporate matters. While this well-

regarded court's judges have developed considerable expertise in resolving corporate law

issues through its extensive business docket, the court neither focuses exclusively on

corporate cases nor hears all business cases arising in Delaware.183 The Delaware court's

significant accomplishments in pioneering major principles in corporate law has made

this business court an exemplary model for other jurisdictions and areas of law to

follow.184 With the Delaware court as a historic predecessor, business courts have

already been established in New York, New Jersey, North Carolina, and Wisconsin.185

Recently, the American Corporate Counsel Association vocalized support for "business

courts or specialized divisions or parts [of courts] dedicated to business litigation."186

Thus, the Delaware Court of Chancery may serve as one appropriate example of

182 William H. Rehnquist, The Prominence of the Delaware Court of Chancery in the State-Federal Joint Venture of Providing Justice, 48 BUS. LAW. 351, 351 (1992). 183 See Rochelle C. Dreyfuss, Forums of the Future: The Role of Specialized Courts in Resolving Business Disputes, 61 BROOKLYN L. REV. 1, 5-6 (1995) [hereinafter Dreyfuss, Forums of the Future]. See also DEL. CONST. OF 1792, art. VI, § 14 (1792) (The Delaware Court of Chancery was established, creating a Chancellor with powers of equity, separate from courts of common law. Relatively unique among specialty courts, the Delaware Court of Chancery arose historically in 1792 as a court in equity, deriving originally from the British judiciary system.). 184 See generally Thomas L. Ambro, How Delaware Does Business Courts, BUS. L. TODAY 28 (Jan.-Feb. 1995), R. Franklin Balotti & Ronald E. Brandel, Business Bench: Are Special Courts the Future?, BUS. L. TODAY 25 (Jan.-Feb. 1995). 185 See Elaine R. Friedman, New Business Courts Gain Acceptance But Plaintiffs' Lawyers Seek To Block State Legislation, NATL L.J., January 6, 1997, at B1; Kimberly A. Ward, Getting Down to Business—Pennsylvania Must Create a Business Court, or Face the Consequences, 18 J.L. & COM. 415, 416 (1999) (noting business courts are also being considered in California, Florida, Ohio, and Pennsylvania). 186 Diane P. Wood, Law, Truth, and Interpretation: A Symposium on Dennis Patterson's Law and Truth: Speech: Generalist Judges in a Specialized World, 50 SMU L. REV. 1755, 1764 (1997) (citing American Corporate Counsel Association Board of Directors Recommendations on June 13, 1996).

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successful state court reform that may serve as a preliminary model for studying potential

federal judicial reform in increasing specialization for high technology cases.

b. State Drug Courts and Family Courts187

State drug courts were instituted as part of a nationwide program known in the

media as the “War on Drugs,” a term popular in the 1980s to describe the governmental

response to America’s drug crisis. Drug courts were created “out of a sense of frustration

that law enforcement and imprisonment policies were not having the impact on drug

supply or demand that proponents of the war against drugs of the 1980s had hoped

for.”188 These courts have received tremendous public support, and there are now over

425 drug courts in operation in the United States today.189

Since the War on Drugs has cost over $300 billion dollars to date190 and has not

had a major impact on the incidence of drug-related crime, treatment of drug abusers has

been advocated as a logical, cost-effective alternative.191 Thus, in the 1980s, states

experimented with the concept of drug courts to manage the increasing number of drug

abuse cases and place offenders in effective drug treatment programs.192 Drug courts

have promoted reduction of the financial and societal costs of incarceration through the

monitoring of nonviolent drug abusers. Proponents of these courts predict that

187 See generally LeRoy L. Kondo, Mental Health Specialty Courts, supra note 179 (describing drug and family courts as models for mental health specialty courts). 188 Marilyn Roberts et al., The Juvenile Drug Court Movement, (Office of Juv. Just. And Delinquency Prevention, Fact Sheet 59, Mar. 1997). 189 See John S. Goldkamp, The Drug Court Response: Issues and Implications for Judicial Change, 63 ALB. L. REV. 923, 923 (2000) (noting the existence of over 425 established drug courts, with other drug courts currently in the planning stage). 190 See, e.g., Carol Vance, To Achieve Law and Order, People Must be Changed, PROSECUTOR, May/June 1995, at 28 (noting prison facility construction costs and costs of housing an inmate for a 30 year period are approximately $1 million per inmate). 191 See Mathea Falco, Toward a Rational Drug Policy, Toward a More Effective Drug Policy, 1994 U. CHI. LEGAL F. 9, 16 (1994).

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rehabilitation results in lowered recidivism or reconviction crime rates for these

offenders, reducing court caseloads and correctional facility costs.193

Drug court supporters maintain that drug tribunals have successfully reduced the

incidence of drug abuse reoffenses, lowered drug-related criminal activity, diminished the

number of prisoners incarcerated in prisons and jails, reduced court caseloads, and

obtained considerable cost reductions throughout the criminal justice system.194

Therefore, the well-regarded and successful establishment of state drug courts as

specialty courts may serve as another model for federal courts considering enhanced

specialization for complex high technology cases.

State family courts originated in the United States at the turn of the nineteenth

century, about the same time as juvenile courts, but long before drug courts.195

Comparable to drug courts, family courts created a nontraditional, nonadversarial tribunal

to resolve a family’s legal issues efficiently and quickly, with a minimum of trauma to

children and families in crisis.196 As a result of relatively recent support by the American

public, specialized family courts or divisions now exist in diverse forms in several states.

In 1996, the American Bar Association funded a two-year project designed to facilitate

192 See Brown, Drug Courts, supra note 181, at 83-84 (citing Robert C. Davis et al., Court Strategies to Cope With Rising Drug Caseloads, 17 JUST SYS. J. 1, 2 (1994)). 193 Id. at 84 n.206 (citing JAMEY H. WEITZMAN, DRUG COURTS: A MANUAL FOR PLANNING AND IMPLEMENTATION (Robin J. Kimbrough ed., 1995)). 194 See generally Jamey H. Weitzman, Drug Courts: A Manual For Planning And Implementation (Robin J. Kimbrough ed., 1995). 195 See, e.g., Herma Hill Kay, A Family Court: The California Proposal, 56 Cal. L. Rev. 1205 (1968). 196 See H. TED RUBIN & VICTOR EUGENE FLANGO, COURT COORDINATION OF FAMILY CASES 64-65 (National Center for State Courts 1992).

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the establishment of unified family courts in six cities.197 A conference of bar presidents

also advocated the establishment of these courts.198

At present, five states utilize a separate family court for family law cases,199 five

other jurisdictions employ separate trial divisions for these matters,200 and one state

possesses a family department within the trial court.201 In order to handle cases in

different parts of their respective states, fourteen states place geographical restrictions on

family courts or court divisions;202 nine other states plan to or will experiment with

family court programs in the near future.203 Two other states have received legislative

approval to establish these courts,204 leaving fourteen states that continue to handle

family law cases solely within general trial court proceedings.

A judge’s term within a family court may vary significantly. While some states’

family court judges receive lifetime appointments,205 other states permit temporary

judicial assignments of limited duration. Detractors maintain that these rotating judges

possess less knowledge of this specialized area of law than is necessary for just and

efficient adjudication of cases.206 Yet for smaller jurisdictions with limited financial

resources, such rotating judges may fill an appropriate prescription for minor judicial

197 See R. William Ide III, ABA News Center—From the Chair, UNIFIED FAM. CHRON., May 1997, at 2. 198 See Mary Wechsler, Unified Family Courts, CONFERENCE CALL 1 (Summer 1995). The A.B.A.’s two-year project is entitled, “Communities, Families, and the Justice System.” Id. 199 States that have separate family courts include Delaware, New York, Rhode Island, South Carolina, and Vermont. 200 These states are Florida, Hawaii, New Jersey, Washington, and the District of Columbia. 201 Massachusetts utilizes this unique approach. See MASS. GEN. LAWS. Ch. 211B, § 1 (1989 & Supp. 1996). 202 These states are Alabama, Colorado, Kansas, Louisiana, Mississippi, Missouri, Nevada, New Mexico, Ohio, Oklahoma, Oregon, Pennsylvania, Texas, and Wisconsin. 203 These states are California, Georgia, Illinois, Kentucky, Maine, Maryland, Michigan, New Hampshire, and Virginia. 204 These are Michigan and Virginia. 205 Judges in Massachusetts and Rhode Island serve life terms. 206 In the District of Columbia, judges remain in the Family Division for nine months.

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change. Rotating judges may also be considered as a viable practical alternative in the

federal court system. Scholars have supported this practice for over a decade that

provides judges with intensity and focus in one area of law, with subsequent rotation to

other areas of law to prevent staleness and isolation.207

Criticisms of the traditional generalist trial court forum include the following: (1)

family matters are often burdensomely expensive and time consuming; some disputes are

tried more than once, or are tried before different judges—or even different courts—in a

fragmented, rather than unified, approach; (2) children may be inadvertently subjected to

trauma; (3) judges hearing family law cases may lack interest in a given dispute,

understanding, or the temperament to hear these cases; and (4) courts inadequately

address needs of the poor, who lack financial resources to hire an attorney and must

represent themselves.208 Court reform has established state family courts that are

designed to specifically address these disadvantages of traditional trial court fora. Thus,

state family courts may serve as yet another distinctive, successful preliminary model for

federal courts considering increased specialization in high technology arenas.

B. Effect of Specialization on Uniformity of Judgment and Determinancy in Intellectual

Property Cases Leading to Enhanced Judicial Credibility and Stabilization of Law

1. The Federal Circuit's Mandate To Provide National Uniformity and

Predictability of Judgment

207 See, e.g., Daniel J. Meador, A Challenge to Judicial Architecture: Modifying the Regional Design of the U.S. Courts of Appeals, 56 U. CHI. L. REV. 603 (1989). But see, Stempel, Two Cheers for Specialization, supra note 163, at 117 (noting reservations that initial rotating panel decisions may have "inordinate influence" over subsequent panel decisions and the body of law influenced). However, appellate courts typically use three judge panels for decision-making. Thus, rotation panel decisions may not possess greater value as precedent than that now existing in the current appellate court structure. 208 See ROBERT C. MURPHY, REPORT OF THE FAMILY DIVISION REVIEW COMMITTEE 6-7 (1993) (describing results of a study of Maryland’s family law court system).

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Specialization in the federal court system may provide judges with the tools for

implementing greater uniformity of judgment, determinancy, accuracy, and predictability

in intellectual property cases. Increased uniformity and predictability in adjudication

almost invariably lead to enhanced judicial credibility and the resultant desired effect of

stabilization within a given body of law. The absence of nationwide uniformity of law

and the presence of conflicts between the PTO, district courts, and the circuits was a

primary impetus for establishing the Federal Circuit as a semi-specialized Article III

tribunal. Lack of uniformity of application of patent laws historically led to rampant

forum shopping, with bitterly fought battles in the circuits over patent infringement

cases.209

In response, the 97th Congress addressed the need for a "Federal Circuit-type

court," stating that a specialized patent law court would result in the desired uniformity of

law, with concomitant decreases in expenses of litigation and forum shopping.210 The

Honorable Pauline Newman, prior to joining the Federal Circuit, testified before the

legislature on her opinion that such a specialized appellate court would give "a greatly

enhanced degree of predictability of the outcome of patent litigation," by providing

uniformity in application of legal rules.211 Even the Supreme Court, in Graham v. John

Deere Co., noted a lack of uniformity that could well be remedied by the Federal Circuit

209 Dreyfuss, The Federal Circuit, supra note 89, at 7; See also Pauline Newman, The Federal Circuit—A Reminiscence, 14 GEO. MASON U. L. REV. 513, 516 (1992) (noting Judge Friendly's often cited comments regarding the "mad and undignified race" in forum shopping occurring in patent cases (emphasis added)). 210 97th Congress Hearings, supra note 58, at 211, 224 (prepared statements of Donald R. Dunner and Richard C. Witte). 211 Pauline Newman, The Federal Circuit: Judicial Stability or Judicial Activism?, 42 AM. U.L. REV. 683, 687 (1993).

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to resolve the problem of "a notorious difference between the standards applied by the

Patent Office and by the courts."212

Whether the Federal Circuit has provided the level of uniformity and

predictability of judgment that was originally envisioned has not yet been determined.

However, since the Federal Circuit's inception, there has been a dramatic increase in the

CAFC's affirmation of district court appeals.213 Some commentators attribute this initial

elevated affirmation rate to the Federal Circuit's success in establishing nationwide

uniformity of judgment in patent law cases; however, a subsequent decrease in

affirmation rate makes this conclusion equivocal.214 Specialist court proponents maintain

that increased specialization within the judiciary215 may lead to greater uniformity of law

and perhaps higher district court affirmation rates.

2. The Problem Of Indeterminancy Reflected In the Following: The Federal Circuit's

'Panel Dependency,' Ambiguities In Patent Law Concepts, and In the Deployment of Lay

Juries

Patent attorneys often criticize that the Federal Circuit's 'panel-dependency,'

resulting from the appointment of three-judge panels to hear cases, may lead to

unpredictability or indeterminancy of judgments.216 The concern, whether legitimate or

212 Graham, 383 U.S. 1, 18 (1996). 213 See ADMIN OFFICE OF THE U.S. COURTS, FEDERAL JUDICIAL WORKLOAD STATISTICS 2 (1985) (noting that in 1985, only 56.5% of all appeals from district courts to the Federal Circuit were affirmed). Annual Report of the Director of the Administrative office of the United States Courts, Table B5, at 155 (1987); Annual Report of the Director of the Administrative office of the United States Courts, Table B5, at 158 (1988) (observing that the CAFC affirmed 74% of all district court appeals in 1987 and 78% in 1988); But cf. John C. Jarosz, The Federal Circuit and Its Patent Damages Decisions, 1 UNIV. BALT. INTELL. PROP. L.J.17, 30 (1992) (noting a later drop in affirmed cases in 1990-91). 214 See Jarosz, supra note 213, at 30. 215 See Andersen, Federal Circuit Big Shoes to Fill, supra note 399, at 78. The Patent Bar supports appointment of judges with intellectual property backgrounds and experience, like Foley & Lardner's Linn, to the Federal Circuit. 216 See Michel, Review of Federal Circuit Decisions, supra note 9, at 1191. (Panel decisions are also utilized in other appellate court settings outside the CAFC.).

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not, is that various panels hearing infringement cases involving the extent of the

applicability of the doctrine of equivalents in claim construction interpretation and

assessment may decide such issues differently.217 Yet, some level of indeterminancy is

unavoidable because until the CAFC Panel decides an appealed case, the trial court's

result is not viewed as being determinative.218 The net result is that litigators may prefer

to continue litigation on appeal rather than reach settlement219 or accept summary

judgment at the trial court level, vastly increasing costs of litigation.220 Advocates of

increased specialization in the federal courts maintain that court reform would result in

greater uniformity and predictability of judgment with concomitant decrease in

indeterminancy because logical rules will be developed to meet high technology

objectives. Such enhanced uniformity of application of law would result in greater

consistency among panels.

Indeterminancy or lack of predictability of judgment also exists in the application

of vague patent law concepts, such as the critical issue of claim interpretation and the

doctrine of equivalents.221 Subsequent to the Supreme Court's decision in Warner-

217 See id. Judge Michel estimates that ninety percent of panel cases are decided unanimously, suggesting to him that perhaps in ninety percent of cases, the panel selected is immaterial. However, he acknowledges that complaints of panel dependency could be "symptomatic of broader ills," such as, 'indeterminancy' or 'unpredictability.' 218 However, this unavoidable indeterminancy is also mirrored in non-intellectual property cases at the federal district court level since the trial court's result is not finalized until completion of appellate court review. 219 While the CAFC considered the possibility of hiring a settlement attorney, Judge Michel estimates that less than five percent of appeals would be amenable to a settlement approach. Michel, Review of Federal Circuit Decisions, supra note 9, at 1199. 220 Id. at 1191-92. Attorneys inaccurately perceive the chances of reversal on appeal to be at least fifty percent (e.g., interpretation of claim construction cases), although in fact, actual reversals occur in only twenty to thirty percent of cases, id. at 1192. However, since parties have already spent approximately ninety percent of litigation costs in district court, most will probably choose to elect to spend an additional ten percent to complete appeal process, id. 221 Id. at 1196.

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Jenkins Co. v. Hilton Davis Chemical Co.,222 Judge Michel observed that this ambiguous

doctrine has spawned "the greatest source of indeterminancy" in patent law, with almost

all filed patent cases alleging both literal and equivalent infringement.223 Recently, the

Federal Circuit published Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., LTD.

224 In Festo, on remand from the Supreme Court, the CAFC decided en banc that the

doctrine of equivalents was limited by prosecution history estoppel in that the subject

matter relinquished during patent application prosecution was barred from claim

coverage.

The Federal Circuit's decision in Festo may have been calculated to diminish the

level of uncertainty of adjudication among the generalist lower courts resulting from this

doctrine through erection of an easily applied "bright line" standard.225 Certainly,

indeterminancy in interpretation of the Doctrine of Equivalents in patent claims has led to

increased uncertainty among the lower courts. In effect, Festo's per se "bright line" rule

may have served to diminish the workload of the district courts, shifting litigation from

the generalist lower federal courts to the specialist PTO's Board of Patent Appeals.226

However, a rigid "bright line" rule, while perhaps enhancing predictability of judgment

Warner-Jenkinson Co. v. Hilton Davis Chem Co., 520 U.S. 17, (1997). 222

223 Michel, Review of Federal Circuit Decisions, supra note 9, at 1196. 224 Festo Corp., 234 F.3d 558, 56 U.S.P.Q.2d (BNA) 1865. 225 See Karl Manheim Interview, supra note 17. (Professor Manheim commented that the Festo decision may mirror the Federal Circuit's objective to provide certainty to claim interpretation by erection of a bright line standard. Yet a judge's responsibility to interpret claims in Markman hearings as a matter of law may still challenge a generalist judge's comprehension of unfamiliar, novel technologies that constitute the subject matter of intellectual property inventions.). 226 Id. (noting that the PTO's specialist Board of Patent Appeals may be better equipped to interpret claim scope based on prosecution history than generalist district court judges). The CAFC's strategy is similar to the Supreme Court's creation of a "bright line" rule in Pfaff for application of the two-pronged "on sale" bar requirement for patents under §102(b). Pfaff v. Wells Elects, Inc., 119 S. Ct. 394 (1998); 35 U.S.C. § 102(b) (1984).

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throughout the district courts,227 may paradoxically lead to judicial inefficiency and

ineconomy. This undesirable scenario might occur if patent applicants choose either to

appeal PTO decisions on claim validity or to litigate claims in the courts rather than

creating additional disadvantageous prosecution history estoppel under Festo.

Alternatively, the Federal Circuit's decision in Festo may have resulted in the delegation

of the principal responsibility of claim interpretation to the specialized PTO as a

undefined mixture of technically complex factual and legal issues.228 Nothwithstanding

the Federal Circuit's en banc Festo decision, the expansion of claim coverage through the

doctrine of equivalents and the contraction of coverage under the nonobviousness

requirement continues to perpetuate indeterminancy in corporate competition in high

stakes patent infringement and claim validity battles.229

The Supreme Court has ineffectively attempted to reduce levels of

indeterminancy in claim interpretation by delegating this decision to generalist judges

rather than to generalist lay jurors. Thus, in Markman v. Westview Instruments, the Court

held, "judges, not jurors, are the better suited to find the acquired meaning of patent

227 See generally, William M. Landes and Richard A. Posner, Harmless Error, 30 J. LEGAL STUD. 161, 169-70 (2001) (formulating a mathematical model for the erection of per se or "bright line" rules to maximize the fruits of greater predictability of judgment through increased benefits to the public with decreased error, losses, and costs of retrial); Maureen Armour, Rethinking Judicial Discretion: Sanctions and the Conundrum of the Close Case, 50 SMU L. REV. 493, 554 (1997) (The author noted that "[w]ithout a bright line to guide the courts[,]" there may be a "head-on collision between the institutional and judicial norms" regarding which normative policies should govern decision-making in an area of law. Bright line rules obtained through black letter statutory law or "grey" case law increase predictability and consistency of judgment among appellate courts. 50 SMU L. REV. 564.). 228 See generally, John F. Duffy, On Improving the Legal Process of Claim Interpretation: Administrative Alternatives, 2 WASH. U. J.L. & POL'Y 109, 114, 130-31 (2000) (noting the Federal Circuit should defer more frequently than it does to the PTO agency's expertise in claim interpretation, as the Supreme Court has mandated, irregardless of co-existing expertise in the CAFC). 229 See id.

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terms."230 Yet Berkeley Professor Mark Lemley noted that there has been a high Federal

Circuit reversal rate for Markman district court decisions--as high as 40% reversal being

reported in some studies.231 Similarly, one observer comments "there's a high likelihood

that on review, the [Federal Circuit] will change the construction of the claims."232 The

problem, in part, is that generalist district court judges, and perhaps even semi-

specialized Federal Circuit judges, may lack the in-depth technical knowledge and

training necessary to make sage determinations on such critical issues as claim

interpretation in intellectual property law. Thus, indeterminancy is predicted to continue

unless and until increased specialization is implemented within the federal judiciary in

the resolution of complex issues of fact and law.233

An additional source of indeterminancy occurs with the increasing use of lay

juries in patent infringement cases.234 Typical American juries, comprised of lay citizens

with no specialized expertise in either law or science, are ill-equipped to comprehend the

subtleties of such complex technologies as satellite telecommunications, genetically

engineered human hormones, or the computer code used in Internet transmissions.

Experienced litigators may capitalize on the naivete of juries to make simplistic or

emotional arguments in "smoke screens" that may minimize the tremendous complexity

230 Markman, 517 U.S. 370, 388 (noting that lay juries had great difficulties in interpreting the highly technical and scientific language of patent claims). However, giving complex decisions to lay judges rather than to lay juries could be construed as taking judgments "out of the frying pan and into the fire." 231 Victoria Slind-Flor, 'Markman' Precedent Holds Up Patents, NAT’L L.J. JAN. 15, 2001, at A1, (The high Markman reversal rate is a growing concern among intellectual property law firms and is "coming up at nearly every meeting of the intellectual property bar."). 232 Id. at A12 (a frustrated Judge Samuel B. Kent calling Federal Circuit judges, "little green men wearing propeller hats who don't know Tuesday from Philadelphia"). 233 See infra Part IV.B. advocating increased use of specialized judges and Part IV.C. discussing the increased use of specialized "blue ribbon" juries in high technology cases. 234 Michel, Review of Federal Circuit Decisions, supra note 9, at 1196-97.

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of the field.235 Consequently, increased use of special "blue ribbon" juries comprised of

experts who truly comprehend the subtleties of intellectual property cases may constitute

a significant proposal for court reform in this area of law.236

3. Internet Law Cases Raise Unique Procedural and Substantive Issues

Leading to Lack of Uniformity of Law and Predictability of Judgment

Internet law, like other complex high technology cases, constantly challenges the

competence limits of the legal system. The Internet, lacking territories or boundaries--

"cyberspace" has no situs--has raised perplexing legal issues, particularly in jurisdiction

and choice of law arenas, which have stymied the courts. In the wake of such unique

issues, the courts have discovered that Internet and “computer technolog[ies] do not fit

neatly within any of the categories of intellectual property law.”237 Two such

controversial Internet issues where federal courts differ radically in their decisions are (1)

personal jurisdiction and (2) choice of law, both involving procedural due process under

the Fourteenth Amendment.238

a. Courts Differ In Their Approaches To Determining Personal Jurisdiction

Over A Defendant

Some courts have simplistically attempted to erect a "bright line" rule that

transmitting information to a location or placing such information on the World Wide

235 Judges' instructions and admonitions to their juries may be used, in part, to offset distortions in legal argument. 236 See infra Part IV.C. (discussing the advantages of blue ribbon juries for complex high technology cases). 237 MERGES, NEW TECHNOLOGICAL AGE, supra note 65, 1084 See id. at 1084-86, 1093-94; Peter S. Menell, The Challenges of Reforming Intellectual Property Protection for Computer Software, 94 COLUM. L. REV. 2644, 2651-54 (1994) (noting that policy makers have inadequately instituted legal reform to meet the changing needs of the intellectual property community). Thus, the courts should intervene to provide timely adjudication of high technology issues where Congress and policy makers have lagged behind in their responsibilities.

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Web is sufficient to subject a defendant to the jurisdiction of the court where the

information was received.239 However, most courts, following the leading case of Zippo

Manufacturing Co. v. Zippo Dot Com, Inc.,240 have observed that no clear "bright-line"

rules can be constructed for Internet jurisdictional issues since many of these cases lie on

a spectrum depending upon whether a Web site may possesses commercial or interactive

features.241 The Pennsylvania court said that a "sliding scale" of the probability of a

court's assertion of personal jurisdiction over a defendant depends on the "nature and

quality of commercial activity that an entity conducts over the Internet."242 Jurisdiction

may be exercised over active Web sites, but not passive Web sites. However, for the

"middle ground" cases, interactivity and commercial activity on the Web site is

examined.

In an example of an active Web site, the Sixth Circuit Court of Appeals in

CompuServe, Inc. v. Patterson,243 noted that a principal issue in many Internet cases was

238 The 14th Amendment's due process clause permitting a court to obtain personal jurisdiction over a nonresident defendant in the forum state when requirements are met. U.S. CONST. amend. XIV, see World-Wide Volkswagon Corp. v. Woodson, 444 U.S. 286, 291 (1980). 239 See e.g. Playboy Enters., v. Chuckleberry Publ'g., 939 F. Supp. 1032 (S.D.N.Y. 1996) ( ruling that Playboy could obtain a judgment preventing a foreign company's use of an Italy Internet site with a "Playmen" name because jurisdiction was obtained by transmission of information to the United States). 240 952 F. Supp. 1119 (W.D. Pa. 1997). The Zippo court noted that it should consider whether an Internet site is "passive" or "active" to aid in resolving jurisdictional or choice of law issues. "Passive" sites are those in which Internet users merely view information on the Web site without any further interaction. In contrast, "active" sites are those where users participate actively by such activities as entering data in response to questions, clicking options on the web site, or accepting contractual terms presented. 241 See, e.g., CompuServe, Inc. v. Patterson, 89 F.3d 1257 (6th Cir. 1996), reh’g denied, 1996 U.S. App. LEXIS 24796 (6th Cir. 1996). 242 952 F. Supp. 1124. (The Zippo court continued, "At one end of the spectrum are situations where a defendant clearly does business over the Internet. At the opposite end are situations where a defendant has simply posted information on an internet Web site which is accessible in foreign jurisdictions. A passive Web site that does little more than make information available to those who are interested in it is not grounds for the exercise of personal jurisdiction. The middle ground is occupied by interactive Web sites where a user can exchange information with the host computer. In these cases, the exercise of jurisdiction is determined by examining the level of interactivity and commercial nature of the exchange of information that occurs on the Web site." (citations omitted)). 243 89 F.3d 1257 (6th Cir. 1996), reh'g denied, 1996 U.S. App. LEXIS 24796 (6th Cir. 1996).

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whether sufficient Burger King-defined "minimum contacts"244 occurred during business

transactions. Here, the court concluded the Ohio district court possessed jurisdiction over

a Texas Internet user because he "reached out" from Texas to Ohio and "originated and

maintained" contacts in Ohio, when he subscribed to an Ohio online network service and

entered into an agreement to sell his software over the Internet.245 Minimum contact

analysis becomes relatively straightforward in Internet cases where a defendant has

intentionally and purposefully availed himself of the protections of the forum state,

thereby leading a court to conclude that jurisdiction exists.

In contrast, in passive Web site cases, defendants typically argue that placing

information passively on the Internet does not purposefully direct activities towards

citizens in a targeted jurisdiction.246 For example, in Bensusan Restaurant Corp. v.

King,247 the New York court determined no personal jurisdiction existed over a defendant

who passively created an Internet Web site because that activity did not indicate

purposeful availment of the benefits of New York state.248 However, in State v. Granite

Gate Resorts, the Minnesota Court of Appeals found jurisdiction over a relatively

"passive" Internet gambling service website called "WagerNet," stating it was "open to

international markets," noting the defendant's intent to recruit customers from a wide

geographical range.249 The court, in finding minimum contacts existed, analogized the

passive Web site to broadcast and direct mail solicitation where advertisers distribute

244 Burger King Corp. v. Rudzewicz, 471 U.S. 462, 476, 105 S.Ct. 2174, 85 L.Ed.2d 528 (1985). 245 89 F.3d. 1257. 246 See, e.g., State v. Granite Gate Resorts, No. C6-95-7227, 1 ELEC. INFO. POL'Y & L. REP. (BNA) 919 (Minn. Dist. Ct. 2d Jud. Dist., Ramsey County, Dec. 11, 1996). 247 Bensusan Restaurant Corp. v. King, 937 F. Supp. 295 (S.D.N.Y. 1996). 248 Id. at 301 ("Creating a site, like placing a product into the stream of commerce, may be felt nationwide. . . but without more, it is not an act purposefully directed toward the forum state."). 249 Granite Gate Resorts, No. C6-95-7227, 1 ELEC. INFO. POL'Y & L. REP. (BNA) 919; 568 N.W.2d at 718-21.

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their messages over a large area, then wait for recipients of the ads to actively respond to

purchase the products. Thus, although the Bensusan and Granite Gate Resorts cases both

involved passive Web sites, the two courts arrived at opposite conclusions regarding

assertion of personal jurisdiction over the defendant.

While cases involving classical active and passive Web sites at the extreme ends

of the jurisdictional spectrum are more readily analyzed, interactive Web site mid-

spectrum cases pose an inherently greater challenge for courts. For example, in Maritz,

Inc. v. CyberGold, Inc.,250 the Missouri court held that jurisdiction existed over defendant

CyberGold, although the defendant claimed it operated a passive Web site. This court

found that the 8th Circuit's minimum contacts "nature and quality of contacts prong" was

met because CyberGold intentionally transmitted advertising information globally to

Internet users.251 In addition, the court found that the second "quantity of contacts prong"

was met since CyberGold sent e-mail advertising to Missouri users about 130 times,

indicating the defendant purposefully availed itself of Missouri privileges.252

Some courts have modified the Zippo test employing a "totality of contacts"

approach, where the court considers factors such as (1) interactivity of the Web site, (2)

defendant's other actions involving the forum state, and (3) customers, advertisements,

and wire communications in the forum state.253 Still other courts have used the "effects

test" for evaluating jurisdiction—rather than Zippo spectral analysis or the 8th Circuit

250 Maritz, Inc. v. CyberGold, Inc., 947 F. Supp. 1328 (E.D. Mo. 1996). 251 947 F. Supp. 1328 (The Eighth Circuit's test for gauging minimum contacts consisted of five parts: (1) nature and quality of contacts, (2) quantity of contacts, (3) relation of the cause of action to the contacts, (4) the foreign state's interest in providing a forum for its residents, and (5) party convenience.). 252 Id. at 1333. 253 Inset Systems, Inc. v. Instruction Set, Inc., 937 F. Supp. 161 (D. Conn. 1996); Panavision International, L.P. v. Toeppen, 141 F.3d 1316, 1319 (9th Cir. 1998) (the Ninth Circuit noting that "something more" besides registering another's trademark as a domain name and posting a Web site on the Internet is required to demonstrate that defendant directed his activity toward the forum state).

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analysis—whereby the court assesses whether the defendant's actions were targeted

directly toward or have a direct effect in the forum state. For example, in Panavision

International, L.P. v. Toeppen,254 the Ninth Circuit court noted that the "effects doctrine"

measured the "effects felt in California" as an indicator of purposeful availment,

consistent with prior decisions in the 9th and 6th Circuits.255 The court analogized this

jurisdictional case with tort principles since here, the defendant's intentional actions in

registering plaintiff's trademarks as domain names for the purpose of extortion caused

harm to the plaintiff in California where jurisdiction was asserted.256 Similarly, in the

recent case of GTE News Media Services Inc. v. BellSouth Corp.,257 the D.C. Circuit

court utilized a strict purposeful availment standard, requiring that a defendant

intentionally target its activities towards a specified forum before personal jurisdiction

could be asserted. This limiting jurisdictional standard was intended to give potential

Web site operator defendants notice that they will be liable for legal action if they target

activity towards a forum.258

Thus, various district courts differ substantially in their approach to the question

of asserting personal jurisdiction over a defendant's Web site. Cases such as these,

resulting from the inherent complexity of Internet interactions themselves, lead to circuit

splits, lack of predictability of judgment, and forum shopping in the absence of

uniformity of application of law. Internet Web site owner plaintiffs, faced with various

jurisdictional approaches, might prefer to sue a defendant in a court known to use or

254 Panavision 141 F.3d 1316. 255 Cybersell, Inc. v. Cybersell, Inc., 130 F.3d 414 (9th Cir. 1997); CompuServe, , 89 F.3d at 1257 (6th Cir. 1996). 256 Panavision, 141 F.3d 1316. 257 GTE News Media Services Inc. v. BellSouth Corp., 199 F.3d 1343 (D.C. Cir. 2000). 258 Id. at 1350.

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favor the Zippo spectral analysis rather than one employing the D.C. Circuit's "effects

doctrine" and strict purposeful availment standard: the Zippo court approach appears

more "plaintiff friendly," while the "effects doctrine" approach is more "defendant

friendly." Since the Worldwide Web permits instantaneous transactions in multiple

states, litigants in high stakes Internet disputes find themselves consuming financial

resources in costly jurisdiction battles with concomitant reductions in the forum court's

efficiency and economy.

b. Courts Vary In Their Treatment of Choice of Law Issues

Internet cases raise choice of law issues because the various states have their own

competing interests in applying their own substantive law.259 The Internet is unique in

that it permits parties in remote locations to instantaneously, at the click of a mouse, enter

into contractual agreements with performance independent of the parties' physical situs or

the information involved.260 Of course, a court's choice of one state's law over another's

should be rationally based with considerations for justice and fairness in decisions,

consistent with the parties' expectations.261 Historically, in Milliken v. Pratt,262 the

original version of the Restatement Conflicts of Laws was applied by the court that first

held that the substantive law of the place of contracting was to govern the contract's

validity and construction unless that law offended the public policy of the forum. Courts

in the 1950s began to utilize the "center of gravity" approach that considered policies

259 See generally, e.g., American Bar Ass’n Global Cyberspace Jurisdiction Project, Achieving Legal and Business Order in Cyberspace: A Report on Global Jurisdiction Issues Created by the Internet, http://www.abanet.org/buslaw/cyber/initiatives/draft.rtf (visited Apr. 22, 2001); David R. Johnson & David G. Post, Law and Borders—The Rise of law in Cyberspace, 48 STANFORD L. REV. 1367 (1996). 260 UCITA § 109 cmt. 2 (2000). 261 Gene R. Shreve, Conflicts Law—State or Federal?, 68 IND. L.J. 907, 907 (1993). 262 Milliken v. Pratt, 125 Mass. 374 (1878); RESTATEMENT OF CONFLICT OF LAWS (1934).

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http://www.abanet.org/buslaw/cyber/initiatives/draft.rtf

underlying conflicting laws.263 Under this flexible approach, still used today, the court

first examines all significant factors influencing the decision regarding the choice of law

to be applied, and second, determines which state's substantive law possesses the most

significant link to the transaction or parties and applies that state’s law in the case.264

The "center of gravity" approach was later replaced in most states by the approach

presented in the Second Restatement Conflict of Laws, where in the absence of a

contractual provision for choice of law, the court examines (1) the places of contracting,

negotiations, and performance; (2) the location of the contract's subject matter; and (3)

the parties' places of business and incorporation, considering their domicile, residence,

and nationality.265 In addition, the Second Restatement provides the following criteria for

evaluating the above factors: (1) the relevant policies of the forum, the interested states,

and those underlying the relevant field of law; (2) the protection of the parties' justifiable

expectations; (3) the interests of international and interstate jurisdictions; (4) the degree

of effort needed for application of the law; and (5) the promotion of uniformity and

consistency of judgment.266

However, the Second Restatement's geographical "most significant relationship"

approach to choice of law in the absence of a contractual forum selection clause cannot

be readily applied to Internet transactions in "cyberspace," which is lacking a readily

263 Auten v. Auten, 308 N.Y. 155, 124 N.E.2d 99 (1954). The "center of gravity" test was similar to the prior "significant contacts" test formulated in W. H. Barber Co. v. Hughes, 223 Ind. 570, 63 N.E.2d 417 (1945). 264 Id. at 155. 265 RESTATEMENT (SECOND) CONFLICT OF LAWS § 188 (1971) [hereinafter SECOND RESTATEMENT]. 266 See John D. Faucher, Comment, Let the Chips Fall Where They May: Choice of Law in Computer Bulletin Board Defamation Cases, 26 U.C. DAVIS L. REV. 1045, 1063 (1993) (describing the Second Restatement criteria for weighing its factors). The Second Restatement says the applicable law to be applied is that of the state with "the most significant relationship to the transaction and the parties." SECOND RESTATEMENT § 188(1), supra note 265.

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definable geographical situs or location.267 The Organization for Economic Cooperative

and Development observed that choice of law issues are "particularly difficult in the case

of international computer networks where, because of dispersed location and rapid

movements of data, and geographically dispersed data processing activities, several

connecting factors could occur in a complex manner involving elements of legal

novelty."268 Some commentators maintain that only treaties such as TRIPs or the WIPO's

Copyright Treaty could adequately resolve choice of law and jurisdiction issues relating

to Internet technologies.269 Correspondingly, the Berne Convention's rule stated that for

copyright infringement action, the choice of law was to be the law of the nation in which

the infringement occurs, rather than the law of the author's nation, or the law of the nation

where the work was first published.270

However, like personal jurisdictional issues, discussed previously in part

III.B.3.a., the existence of the Internet raises choice of law issues that lead to lack of

uniformity and predictability of judgment, with consequent forum shopping unless

national or international courts or legislative bodies intervene to provide order to this

complex, unsettled area of law. Issues of choice of law and jurisdiction raised by the

267 Rosaland Resnick, Cybertort: The New Era, NAT'L L.J., at A1, July 18, 1994. (noting "[t]he trouble with cyberspace, lawyers say, is that there's no 'there' there"). 268 See Dan L. Burk, Patents in Cyberspace, 68 TUL. L. REV. 1, 5 (1993) (citing the Organization for Economic Cooperation and Development's memorandum in Guidelines on the Protection of Privacy and Transborder Data Flows of Personal Data 13, 36 (1980)). 269 See Kai Burmeister, Jurisdiction, Choice of Law, Copyright, and the Internet: Protection against Framing in an International Setting, 9 FORDHAM I.P. MEDIA & ENT. L. J. 625 n.159 and accompanying text (1999). 270 The Berne Convention for the Protection of Literary and Artistic Works of Sept. 9, 1886, last revised at the Paris Universal Copyright Convention, July 24, 1971 (Paris), 25 U.S.T. 1341, 828 U.N.T.S. 221.

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Internet have been the recent topic of academic commentary for future courts and

legislatures to resolve.271

C. Specialization as a Prescription For Forum Shopping Leading to Enhanced Judicial

Efficiency and Economy

While the Federal Circuit has been instrumental in providing greater uniformity

of application of law within circuits, it is perhaps inevitable that the complexity of high

technology issues continues to challenge the federal courts, resulting in circuit splits and

creating forum shopping opportunities for litigants .272 For example, Professors Landau

and Biederman recently noted that conflicts among the federal circuit courts of appeals in

copyright law existed in virtually all doctrines ranging from "threshold issues of

originality and ownership to infringement and damages."273 Conflicts of substantive law

led inevitably to forum shopping. This occured notwithstanding the enactment of the

Copyright Act of 1976,274 originally designed to provide uniformity of law. These

professors noted that while some circuit clashes were resolved by either the Supreme

Court275 or Congress,276 forum shopping by litigants for courts favorable to their

271 See generally, e.g., Bruce H. Kobayashi & Larry E. Ribstein, Uniformity, Choice of Law and Software Sales, 8 GEO. MASON L. REV. 261 (1999); Kathleen Patchel, Article: Choice of Law and Software Licenses: A Framework for Discussion, 26 BROOK. J. OF INT'L L. 117 (2000). 272 See Rochelle Dreyfuss, Federal Circuit, supra note 89, at 7. In the 1940s and 1950s, prior to the establishment of the Federal Circuit, regional circuit courts differed radically in their treatment of patent validity, with the Fifth Circuit upholding patent validity and infringement twice as frequently as the Seventh Circuit, and eight times more often than the Second Circuit. Id. 273 Michael Landau & Donald E. Biederman, The Case for a Specialized Copyright Court: Eliminating the Jurisdictional Advantage, 21 HASTINGS COMM. & ENT. L.J. 717, 738-39 [hereinafter Landau & Biederman, Specialized Copyright Court] (commenting that a specialized copyright court would have accelerated stabilization of this area of law). 274 17 U.S.C. 101 et seq. 275 Landau & Biederman, Specialized Copyright Court, supra note 273, at 738-39. (describing resolved circuit conflicts). 276 Id. at 738 n.96 (The authors noting a 1997 amendment to section 303 of the Copyright Act of 1976 resolved an intercircuit split involving the sale of phonograph records).

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positions continued to cause both the judiciary and litigants increased costs of

adjudication and inefficiency due to lack of uniformity of law.277

Prior to the Federal Circuit's creation, proactive legislators believed that a

specialized patent court would reduce forum shopping and decrease expenses of

litigation.278 They predicted that such an expert court focusing on patent matters could

provide uniformity and consistency in intellectual property law, resulting in increased

judicial efficiency and economy. Even in antitrust appeals, Judge Newman contemplated

that the specialized Federal Circuit’s focus upon patent claims, retaining nonpatent claim

issues in generalist district courts, could be an effective means to prevent forum shopping

by litigants, while preserving the "best of both worlds" of specialist and generalist court

decision-making authority.279

With increased specialization, particularly by the semi-specialized Federal Circuit

and specialized PTO, intellectual property law has become more uniform, with a decrease

in forum shopping.280 However, with the exponential growth of high technology

breakthroughs, litigants have invariably found themselves again forum shopping among

circuits that may have ruled favorably on similar matters. Greater specialization in the

district courts and/or the Federal Circuit may serve to significantly reduce the need for a

litigant's meandering through forums, resulting in increased uniformity of the application

of the law among appellate court circuits.281

277 Id. at 738-39. For example, the Supreme Court's denial of certiorari to resolve intercircuit splits in cases involving whether the Yellow Pages may be protected by copyright laws encourages blatant forum shopping by litigants. Id. at 739-741 278 97th Congress Hearings, supra note 58, at 211 (prepared statement of Donald R. Dunner).279 Hon. O. Newman, Tails and Dogs: Patent and Antitrust Appeals in the Court of Appeals for the Federal Circuit, 10 APLA Q.J. 237, 239-42 (1982). 280 See infra Part III.B.1. 281 See infra Parts III.B. and III.C. (noting that the Federal Circuit, as a semi-specialized tribunal, has resolved circuit splits, contributing to national uniformity of law and a diminution in forum shopping).

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In addition to providing greater uniformity of law, specialization in various

judicial contexts has resulted in measurably greater judicial efficiency and economy.282

Chief Judge Howard Markey argued that specialization such as that initially proposed

within the Federal Circuit would make the court more efficient as CAFC judges become

regularly exposed to patent law cases that raise similar issues.283 Likewise, legislators

historically have noted that a specialized patent tribunal should predictably reduce

expenses of litigation, making it more economical, and accelerate patent litigation

proceedings, yielding both increased efficiency and economy.284

The inefficiency and ineconomy due, at least in part, to inexperience of generalist

judges, may be illustrated by a example: Judge Motley's unanticipated decision in the

case of Agee v. Paramount Pictures held that in Laurel & Hardy silent films used in an

episode of "Entertainment Today," there was no copyright infringement when a sound

recording was syncronized to the film's purely video images.285 This unexpected decision

flew in the face of decades of accepted industry custom and usage, causing both the

courts and the parties substantial avoidable expense in subsequent litigation.286

Predictably, the Second Circuit eventually reversed Judge Motley's holding that there was

no right of "syncronization" under the Copyright Act of 1976.287

282 See infra Part III.A.2. (state specialty courts have been utilized to facilitate judicial efficiency and economy). 283 See H.R. Hearings, supra note 148, at 42-43 (noting before his appointment to the Federal Circuit, Judge Howard Markey supported the CAFC’s creation). 284 97th Congress Hearings, supra note 58, at 211, 224 (prepared statements of Donald R. Donner and Richard C. Witte).285 Agee v. Paramount Communications, 853 F. Supp. 778, 787 (S.D.N.Y. 1994) (The judge, perhaps through lack of knowledge and expertise, ignored decades of accepted industry practice in this holding.). 286 Id. at 778. 287 Agee v. Paramount Communications, 59 F.3d 317 (2nd Cir. 1995). It may be unrealistic to expect that generalist judges or juries will develop adequate expertise in specialized areas of law common to complex high technology areas to rule on these difficult cases. Substantial attorney fees may be generated in efforts towards educating lay judges or juries, with no guarantee of complete—or sometimes even marginal—

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Greater specialization within the federal courts, whether through such means as

greater deployment of specialized judges or increased use of technical advisors, may, at

least in part, be used to aid judges in efficiently reaching results that will be upheld on

appeal. For example, the Emergency Court of Appeals, created during World War II to

control prices and wages, was a specialized court that was considered tremendously

efficient because it disposed of cases quickly, with minimum delay.288 Similarly, the

three judge panel system of the semi-specialized Federal Circuit, characteristic of all

appellate court panels, could be deemed relatively efficient and economical since fewer

than the entire twelve en banc group is required to reach decisions on most complex

intellectual property cases.

Furthermore, recent increases in the volume of intellectual property case loads

experienced in the federal courts significantly contribute to decreased judicial efficiency

and diminution in the quality of judgment. The Federal Circuit normally decides about

900 appellate cases annually—over one-third being patent cases—with approximately

1,000 ongoing, pending cases in any given month.289 CAFC Judge Michel observed, "the

total workload of the Federal Circuit is significantly larger than in its first full year of

operation in 1983," commenting that "the court is operating at close to its capacity."290

Michel cautioned, "even slight increases in the caseload could threaten to erode

expedition of cases and perhaps the quality of decisions, or at least the articulation of the

understanding of the multifaceted issues involved. See infra Parts IV. B. and C. (advocating use of specialized judges and juries). 288 See Rochelle C. Dreyfuss, Specialized Adjudication, 1990 BYU L. REV. 377, 393-96 (noting however, that procedures were equivocally constitutional). 289 Michel, Review of Federal Circuit Decisions, supra note 9, at 1194. 290 Id. at 1181.

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rationales."291 Indeterminancy in patent law cases is expected to increase because it is

predicted that the Federal Circuit's caseload will unrelentlessly rise—with increasingly

complex technical issues and no greater allocation of judicial resources by Congress in

sight.292 Overburdened appellate court judges may (1) have insufficient time to fully

comprehend legal issues, particularly in complex technological areas; (2) give inordinate

deference to district court decisions without meticulous inquiry; or (3) be unduly swayed

by corporate parties with tremendous financial and political resources at the expense of

smaller entities. Since intellectual property litigation costs—often measured in the

millions of dollars—typically rank among the highest in corporate law, economy is

considered lacking in this area of law.293

Even if dedicated judges spend the time necessary to provide well considered

analyses and decisions, delays become almost inescapable, leading to the flip-side

problem that "[j]ustice delayed is justice denied."294 Notwithstanding that more circuit

court judgeships were created in response to case volumes, critics argue this tactic is

detrimental in the long term since it would diminish the prestige of the judiciary, and

reduce the uniformity of law.295 Thus, to address the crisis of caseload volume,

specialization within the federal courts may now be warranted as a more realistic solution

291 Id. at 1181 (Judge Michel noting that Congress initially authorized 12 Federal Circuit judges, however, this number may be insufficient to handle the increased caseload). 292 Id. at 1194. 293 See Gregory Wood Interview, supra note 44 (several intellectual property litigation attorneys at Merchant & Gould noting that $1-2 million minimum is required to pursue a claim such as infringement in the federal court system). 294 See LAURENCE J. PETER, PETER'S QUOTATIONS: IDEAS FOR OUR TIMES 276 (1977) (quoting William Ewart Gladstone, Prime Minister of Great Britain, 1968-74). 295 See Thomas E. Baker, An Assessment of Past Extramural Reforms of the U.S. Courts of Appeals, 28 GA. L. REV. 863, 884 (1994) (observing that "[p]art of the prestige of judgeships. . . has been their relative rarity"); Report of the Federal Courts Study Committee, at 7 (the report noting that increased judgeships in a circuit commonly result in increased numbers of circuits, with a higher burden on the Supreme Court to resolve increased resultant intercircuit conflicts); William F. Smith, The Role of the Federal Courts, CASE

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rather than simply increasing district court judgeships in the hopes that "more is

better."296 Increased specialization is predicted to permit courts to improve the quality of

adjudication, while at the same time to appropriately address the increased quantity in

caseloads. By this means, judicial economy and efficiency is anticipated to be preserved.

D. Protection of United States' Business Interests, Promotion of Research and

Development, and Public Domain Disclosure

American corporations spend over $5 billion per year to obtain intellectual

property protection for their inventions and products.297 These corporate investments are

increasing due to a thriving U.S. economy and a paradigm shift in business priorities

from development of low technology/manufacturing-oriented stable products to high

technology innovative products.298 Since corporations own more than 80% of all

patents,299 intellectual property protection through patents, trademarks, and copyrights

may be viewed, to a large extent, as an effective means for safeguarding United States'

business interests. Corporations utilize the twin swords of litigation and injunctive relief

to vanquish their competitors, under the protections of U.S. patent policy.300

& COM. 10, 12 (Jan.-Feb. 1983) (commenting, "[i]ncreasing the number of decision-makers issuing opinions threatens uniformity, evenhandedness, and stability in the application of the law."). 296 See Irving R. Kaufman, New Remedies for the Next Century of Judicial Reform: Time as the Greatest Innovator, 57 FORDHAM L. REV. 253, 258 (1988). In Dec, 1987, costs of creating a court of appeals judgeship were about $630,000, while separate annual operating costs of a new court of appeals were approximately $478,000. 297 See John R. Allison & Mark A. Lemley, Symposium: Taking Stock: The Law and Economics of Intellectual Property Rights: Who's Patenting What? An Empirical Exploration of Patent Prosecution, 53 VAND. L. REV. 2099, 2100 (2000) (noting companies spend over $5 billion a year for patents—not including issuance, licensing and enforcement). 298 Id. at 2100. 299 Id. at 2101. 300 See Jean O. Lanjouw & Josh Lerner, Preliminary Injunctive Relief: Theory and Evidence From Patent Litigation (National Bureau of Econ. Research Working Paper No. 5686, 1996) (examining 252 patent suits, and concluding that an objective of preliminary injunctions is to place deterring economic costs on competitors); Josh Lerner, Patenting in the Shadow of Competition, 38 J.L. & ECON. 463 (1995).

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A more specialized federal judiciary system could promote corporate America’s

business interests, research and development and patent disclosure by honoring the

Bonito Boats “finely crafted bargain” between inventors and the general public.301 Such

a bargain is struck when a patent is issued—permitting an inventor the protection against

infringement for a limited term and simultaneously providing society with the inventive

“secrets” that the public may utilize to “promote the Progress of Science and the useful

Arts,” as mandated by the U.S. Constitution.302 The U.S. Supreme Court acknowledged

that the policy underlying this clause of the Constitution was to provide “greater [legal]

certainty and predictability [that] would foster technological growth and industrial

innovation and would facilitate business planning.”303 In the absence of such

constitutional, statutory and judicial safeguards, companies would have little incentive to

disclose their precious technological breakthroughs to the world. In contrast, as a

testament to the value of a strong patent system, Japan has developed technological

301 Bonito Boats v. Thunder Craft Boats, 489 U.S. 141, 146-151 (noting, “The Patent Clause itself reflects a balance between the need to encourage innovation and the avoidance of monopolies which stifle competition without any concomitant advance in the “Progress of Science and useful Arts.” “The federal patent system thus embodies a carefully crafted bargain for encouraging the creation and disclosure of new, useful, and nonobvious advances in technology and design in return for the exclusive right to practice the invention for a number of years."). 302 U.S. Const. art. I, § 8, cl. 1-8 (“The Congress shall have Power . . . To promote the Progress of Science and useful Arts, by securing for limited Times to . . . Inventors the exclusive Right to their. . . Discoveries . . .”). 303 Markman, 517 U.S. at 390 ("It was just for the sake of such desirable uniformity that Congress created the Court of Appeals for the Federal Circuit as an exclusive appellate court for patent cases.” H.R. Rep. No. 97-312, pp. 20-23 (1981), observing that increased uniformity would 'strengthen the United States patent system in such a way as to foster technological growth and industrial innovation.' Id. at 20."); Aerojet-General Corp. v. Machine Tool Works, Oerlikon-Buehrle Ltd., 895 F.2d 736, 744 n.7 13 U.S.P.Q.2d (BNA) 1670 (1990) (citing House Report at 20 stating, "The establishment of a single court to hear patent appeals was repeatedly singled out by the witnesses who appeared before the Committee as one of the most far-reaching reforms that could be made to strengthen the United States patent system in such a way as to foster technological growth and industrial innovation. The new Court of Appeals of the Federal Circuit will provide nationwide uniformity in patent law, will make the rules applied in patent litigation more predictable and will eliminate the expensive, time-consuming and unseemly forum-shopping that characterizes litigation in the field . . ." House Report at 23. (commenting, "the central purpose [in creating the Federal Circuit] is to reduce the widespread lack of uniformity and uncertainty of legal doctrine that existed in the administration of patent law.")).

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expertise protected by patents to transform itself into one of the world’s pioneers in

innovation.304 Similarly, in the United States, the Federal Circuit has often been credited

with expanding the subject matter of patentable inventions and upholding the validity of

patents, with corresponding support for growing corporate enterprises.305

The federal courts, through the power of judicial review of legislation, possess the

arsenal required to critically evaluate congressional legislation, even probing legislative

history and possibly curbing potential corporate special interest group manipulation of

the law-making process.306 In honoring the Bonito Boats balancing policies, a specialized

judiciary could conceivably function to protect American society and the general public

by perhaps preventing corporate special interest groups from adversely impacting

intellectual property law through the enactment of self-interested statutes.307 Further

investigation is necessary to evaluate the potential impact of court reform such as

increased specialization in the judiciary consistent with the checks and balances inherent

to our tripartite system of government.

304 Megumu Kurokawa, Background of Japanese Patent System, in Japanese Patent Practice: Prosecution/Licensing/Litigation (A.I.P.L.A. 1994) [Kurokawa, Background of Japanese Patent System]; Supreme Court of Japan, Court System of Japan (1992) [Court System of Japan]. (The disparaging reference to goods "made in Japan" vanished in the latter half of the twentieth century as Japan surpassed the United States in the automobile and semiconductor industries—to name a few.). 305 See infra Part III.D. 306 See, e.g., William Patry, The Enumerated Powers Doctrine and Intellectual Property: An Imminent Constitutional Collision, 67 Geo. Wash. L. Rev. 359 (1999) (noting that in recent years, the Supreme Court has struck down several Congressional acts, demonstrating the power of the judiciary that may be mobilized to curb special interest group undue interference upon the law-making process if inconsistent with constitutional objectives); Feltner v. Columbia Pictures Television, Inc., 523 U.S. 340 (1998) (invalidating the Copyright Act under Seventh Amendment grounds for failing to provide for a right to trial by jury). 307 See, e.g., Sonny Bono Copyright Term Extension Act of 1998, Pub. L. No. 105-298, 112 Stat. 2827 (1998) (codified in sections of 17 U.S.C.); Jennifer Shecter, No lights, no camera, lots of action: Behind the Scenes of Hollywood's Washington Agenda Money in Politics Alert (The Center for Responsive Politics, Washington D.C.), Oct. 11, 1998, at http://www.opensecrets.org/alerts/v4/alrtv4n35.asp. (noting Walt Disney and motion picture businesses supported the copyright legislation granting a 20-year extension to all copyrighted works. In addition, Hollywood studios won a major victory in obtaining a term of 70 years beyond an individual’s life for individuals, and a 95 year term for studios.).

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Fundamental to a stable United States intellectual property system is the

establishment of uniform policies that reliably and predictably permit issuance of patents,

trademarks, and copyrights with corresponding rights to exclude others from infringing

upon these rights through adequate enforcement procedures.308 Equally important is the

need to ensure that the Supreme Court's mandate that the Bonito Boats "finely crafted

bargain" is honored to ensure that the public and community at large are benefited

through the granting of limited business monopolies to corporations.309 Thus, it becomes

imperative to establish a judicial system that gives the intellectual property right holder

security in the knowledge that courts will uphold these rights in a cost-effective, efficient,

and predictable manner.310 Where the judicial system exhibits inefficiency or

unpredictability in rendering its decisions, costs of litigation often increase, 311 with the

business community being compelled to allocate tremendous financial resources to

litigation in the face of uncertain outcomes.312 These substantial corporate resources

have often been diverted from scientific endeavors or other innovative pursuits, resulting

in the judiciary’s loss of credibility and support.

IV. POTENTIAL MODELS FOR COURT REFORM THROUGH INCREASED

SPECIALIZATION IN THE JUDICIARY

308 See The Advisory Comm’n on Patent Law Reform, Report to the Secretary of Commerce 75 (1992) [hereinafter Advisory Comm'n on Patent Law Reform] (noting that a patent holder’s right in a patent as intellectual property only possesses value if the judicial system protects and enforces that right effectively and inexpensively). 309 Bonito Boats Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 146 (1989) (noting that the Patent Clause limiting Congress' authority to "promote the progress of science and useful arts" as a benefit to the public, rather than solely as an incentive to businesses). 310 See Advisory Comm'n on Patent Law Reform, supra note 308, at 80. 311 See infra Part III.B.2 (discussing the Federal Circuit’s Doctrine of Equivalents that has resulted in indeterminancy in the interpretation of patent claims, leading to increased litigation costs and loss of confidence in the judicial system). 312 See Advisory Comm'n on Patent Law Reform, supra note 308, at 75 (noting that as patent litigation costs skyrocket, innovation is threatened and perhaps curtailed).

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This part of the article examines models for court reform through increased

specialization within the judiciary. This section presents a discussion of the following

topics: (1) increased use of the courts' appointment of technical or scientific advisors

under such statutes as 18 U.S.C. § 1835, experts under Rule 706, and special masters

under Rule 53 to permit greater comprehension of complex technical/legal issues; (2) the

Federal Circuit’s own use of technical advisors in its appellate review of PTO and

District Court decisions; (3) recommended court reform thorough increased use of

specialist judges and adjudicators in the Federal Circuit, PTO, and federal district courts;

(4) establishment of specialized divisions within the Federal Circuit, PTO, or District

court; (5) the deployment of professional or educated "blue ribbon" juries in the

resolution of complex issues of fact, with discussion of the shortcomings of the existing

lay jury system in high technology cases; and (6) establishment of federal high

technology judicial or administrative courts.

A. The Court's Increased Use of Technical or Scientific Advisors,

Experts, and Special Masters

As the first model to be presented for court reform, increased deployment of

expert scientific personnel in the federal judiciary would be a minor, but significant,

modification of the existing court structure. Currently, judges in federal courts, who find

themselves faced with perplexingly complex scientific issues in civil or criminal practice,

appoint technical advisors, experts, and special masters in various supportive

capacities.313 The court's use of such "neutral experts" has been advocated for over a

century, with judicial reliance on experts gradually growing in popularity as technology

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has increased in complexity.314 The Federal Judicial Center (“FJC”) published its

Reference Manual ("FJC Manual") in 1994, discussing and supporting the use of

technical advisors, experts, and special masters.315 With the Supreme Court's decisions in

Kumho and Joiner, the judge has been relegated the responsibility to evaluate expert

testimony involving scientific, technical, and "other specialized" knowledge according to

the Federal Rule of Evidence 702.316 Thus, it is likely that federal courts – particularly at

the Federal Circuit and at district and at appellate court levels – will utilize technical

advisors, experts, and special masters with increasing frequency in the future as an aid to

both judges and juries in comprehending and resolving complex issues of technology and

law.

1. Appointment of technical advisors

The U.S. Supreme Court first acknowledged the federal courts' authority to

appoint technical advisors in 1920 in Ex parte Peterson,317 when Justice Brandeis noted,

"courts have inherent power to provide themselves with appropriate instruments required

for the performance of their duties."318 Presently, the Federal Courts Improvement Act

313 See, e.g., 18 U.S.C. § 1835 (1996), 28 U.S.C. § 636 (2000), FED. R. EVID. 706, FED. R. CIV. P. 53. See generally Improving Judicial Gatekeeping: Technical Advisors and Scientific Evidence, 110 HARV. L. REV. 941 (1997). 314 See Samuel R. Gross, Expert Evidence, 1991 WIS. L. REV. 1113, 1188-89. 315 Joe S. Cecil & Thomas E. Willging, Court-Appointed Experts, in REFERENCE MANUAL ON SCIENTIFIC EVIDENCE 525 (1994) [hereinafter Cecil & Willging, Court-Appointed Experts]. See generally FEDERAL JUDICIAL CENTER, REFERENCE MANUAL ON SCIENTIFIC EVIDENCE 531 (1994) [hereinafter FJC MANUAL]. (The Manual was prepared in response to the Carnegie Report and was created by the FJC in conjunction with the Carnegie Corporation "to prepare model protocols for judges that seek to disaggregate the complex issues surrounding scientific or technical evidence." Carnegie Report, infra note 322, at 9.); JOE S. CECIL & THOMAS E. WILLGING, COURT-APPOINTED EXPERTS: DEFINING THE ROLE OF EXPERTS APPOINTED UNDER FEDERAL RULE OF EVIDENCE 706 (1993). 316 Kumho Tire Co. v. Carmichael, 526 U.S. 1371, 141-142, 147 (1999); General Elec. Co. v. Joiner, 522 U.S. 136 (1997); see supra note 28 and accompanying text. 317 Ex parte Peterson, 253 U.S. 300 (1920). 318 Id. at 312.

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permits judges to appoint expert technical advisors to aid them in decision-making.319 In

addition, the FJC Manual generally provides that the court has the inherent authority to

appoint technical advisors, consistent with Reilly and other leading cases.320 Authority to

appoint technical advisors may also found in the Federal Rules of Evidence 706, although

this basis is less frequently utilized.321 Technical advisors, in contrast to court-appointed

expert witnesses, are used by courts in educational roles to provide technical information

or clarification needed for the court's comprehension of complex terminology and

concepts.322 Since technical advisors have a purely advisory role and make no

"findings," they cannot be deposed or cross-examined by parties, unlike expert witnesses,

and their interactions with judges are not generally chronicled on the court record.323

Furthermore, communications between judges and technical advisors, like those with

319 Federal Courts Improvement Act of 1982 § 120(b)(1), 28 U.S.C. § 715 (1982). This Act's provisions permit circuits, including the Federal Circuit, to hire technical advisors, in part to ensure consistency of judgment in issued decisions. See Giles S. Rich, Columbia Law School Julius Silver Program in Law, Science & Technology—Inaugural Lecture, 68 J. Pat. & Trademark Off. Soc'y 604, 617 (1986). 320 See Fed. R. Evid. 706 (advisory committee note stating, "the inherent power of a trial judge to appoint an expert of his own choosing is virtually unquestioned."); see also Reilly v. United States, 863 F.2d 149, 156 (1st Cir. 1988) ("Rule 706. . . was not intended to subsume the judiciary's inherent power to appoint technical advisors."); Ex parte Peterson, 253 U.S. 300, 312 (1920) ("Courts have . . . inherent power to provide themselves with appropriate instruments required for the performance of their duties."). 321 See Fed. R. Evid. 706(a) (Under Rule 706(a), the judge appoints an expert who is given a written description of responsibilities, relays the expert's findings to the litigants, permits cross-examination of the expert either through deposition or in court testimony.); Biogen, Inc. v. Amgen, Inc., No. CIV.A. 95-10496-RGS (D. Mass. Dec. 10, 1996) (the court's order and memorandum for deployment of a technical advisor), reprinted in MediaCom Corp. v. Rates Tech., Inc. 4 F. Supp. 2d. 17, 35-37, (D. Mass. 1998); see also Renaud v. Martin Marietta Corp., 749 F. Supp. 1545 (D. Colo. 1990), aff'd, 972 F.2d 304 (10th Cir. 1992) (appointing an expert used more as a technical advisor than as an expert witness, shielding the expert from cross-examination and deposition). 322 See generally The Carnegie Commission on Science, Technology, and Government, Science and Technology in Judicial Decision Making; Creating Opportunities and Meeting Challenges 24 (1993) [hereinafter Carnegie Report] (noting judges face a complexity of technical issues in such areas of civil litigation as product liability, toxic, tort, medical malpractice, and environmental law). 323 Reilly, 863 F.2d at 155-56. But see Amgen, Inc. v. Hoechst Marion Roussel, Inc., 126 F. Supp. 2d 69, 78 n.3; 2001 U.S. Dist. LEXIS 431, 57 U.S.P.Q.2d (BNA) 1449 (2001) (Judge Young making all communications with the technical advisor a matter of sealed record, whereby an appellate court may view the record if required).

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judicial clerks, remain confidential.324 Costs of the court's use of technical advisors may

be charged to parties "pursuant to its inherent power" to make such appointments to

promote judicial efficiency.325

For example, the Federal Circuit itself uses senior technical advisors to identify

CAFC decisions that may potentially be in conflict with a circulating opinion on a current

case.326 Other courts of appeals utilize technical advisors to assist them in understanding

complex matters.327 Technical advisors may be appointed by federal court judges under

18 U.S.C. § 1835 which states the court "shall enter such orders and take such action as

may be necessary and appropriate to preserve the confidentiality of trade secrets,

consistent with the requirements of. . . applicable laws."328 In Markman hearings where

the court has the responsibility to interpret claim construction,329 some judges employ the

services of a "technical advisor" to instruct the court regarding complex technology and

terminology. The Supreme Court in Markman noted that "judges, not juries, are the

324 Mediacom Corp., 4 F. Supp. 2d at 36 (Judge Young noted Dr. Tilly's role is that of "confidential advisor to the court analogous to the role performed by a judicial clerk. Dr. Tilly will not be called upon to testify. He will not act as a finder of fact nor will he attempt to advise the court on any matter of law."). 325 Mediacom Corp., 4 F. Supp. 2d 17, 37 (citing two appealed cases (e.g., San Juan Dupont Plaza Hotel Fire Litig., 994 F.2d 956 (1st Cir. 1994)) to support the court's taxing of technical advisor costs to parties pursuant to its inherent powers). 326 Helen Wilson Nies, The Federal Circuit: A Court for the Future, 41 AM. U. L. REV. 571, 572 (1992). 327 Collins v. SEC, 532 F.2d 584, 605 n.40 (8th Cir. 1976) (the Eighth Circuit panel using a university professor as technical advisor to aid the court in understanding a complex case under the Investment Companies Act). 328 18 U.S.C. § 1835 (Supp. 1999). See also United States v. Kai-Lo Hsu, 185 F.R.D. 192, 196-200 (E.D. Pa. 1999) (employing a National Cancer Institute scientist as a "technical advisor" to review scientific documents in a trade secret case.). 329 See Markman v. Westview Instruments, Inc., 517 U.S. 370, 388-89 (1996). See infra Part IV.C. (discussing Markman hearings). See generally Mediacom Corp., 4 F. Supp. 2d 17. Judge Young noted that the court's use of technical advisors "does not mean that the [expert] determination reverts to a contest between partisans[,] but instead "means that a court may be expected to keep its own counsel and consult its own resources in formulating its conclusion. at 24, n.5. A detailed description of Judge Richard Stearns' approach in utilizing technical advisors was presented whereby the court directs (1) parties to either agree upon an appropriate technical advisor for the court, or, alternatively, to provide names of three such experts in technical matters; (2) parties to arrange to share compensation costs of the confidential advisor pursuant to its inherent powers; (3) parties to avoid contact with the advisor; and (4) the technical advisor to sign an "Affidavit of Engagement" whereby he agrees to educate the court in complex technical

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better suited to find the acquired meaning of patent terms."330 Technical advisors are

particularly warranted and utilized in Markman proceedings, since as the Federal Circuit

observed, "patent specifications are written for persons of skill in the technical field, not

for laymen [or lay judges]."331 For example, in a biotechnology case, the court appointed

an expert technical advisor to aid it in understanding technology sufficient to permit it to

interpret claim construction in Markman hearings.332

There is some debate within the judicial community regarding the situations that

may warrant appointment of technical advisors. The FJC Manual describes that technical

advisors should be deployed by judges as a "last or near-to-last resort," with "hen's teeth"

rarity, primarily in non-routine analysis of exceptionally complex cases.333 However,

District Court judges in the Ninth Circuit have tended to take a more liberal approach

towards use of such advisors. For example, Judge Jones appointed four technical

advisors in various medical fields to aid the court in evaluating scientific evidence

regarding breast implant litigation.334 Similarly, Judge Marsh used a technical advisor,

recommended to the court by the parties, solely to provide the judge with clarification of

complex scientific reports, terminology, and theories.335 Increased use of technical

issues, to retain neutral third party status with no conflict of interest in the outcome of litigation, and to notify the court promptly should any party make prohibited contact with the advisor. Id. at 29-30, 35-38. 330 Markman, 517 U.S. at 388.. 331 Fromson v. Anitec Printing Plates, Inc., 132 F.3d 1437 (Fed. Cir. 1997) (the court utilizing technical advisors to explain printing plate technology to the judge as an aid in the court’s interpretation of the scope of claims). 332 See Genentech, Inc. v. Boehringer Manheim GmbH, 989 F. Supp 359, 365, 370 (D. Mass 1997). 333 Cecil & Willging, Court-Appointed Experts, supra note 315, 534 (citations from Reilly, 863 F.2d at 156-57). 334 See Hall v. Baxter Healthcare Corp., 947 F. Supp. 1387, 1392 (D. Or. 1996). 335 See Samuel H. Jackson, Technical Advisors Deserve Equal Billing with Court Appointed Experts in Novel and Complex Scientific Cases: Does the Federal Judicial Center Agree?, 28 ENVTL. L. 431, 462 (1998) (noting Judge Marsh's appointment of Dr. Horton to "gain an understanding of the parties' issues and positions"); Arthur D. Hellman, Central Staff in Appellate Courts: The Experience of the Ninth Circuit, 68 CAL. L. REV. 937, 981-83 (noting that (1) the Hruska Commission initially recommended a pool of technical advisors, like the pool of existing law clerks, but later withdrawing its original suggestion because

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advisors seems warranted, particularly in view of the increasingly complex technical

issues now confronting the federal courts in Internet law, intellectual property, toxic tort,

medical malpractice, and other scientific-legal disciplines.336 Federal judges hearing such

cases may justifiably rely upon appointed independent technical advisors invoking the

inherent and stabilizing power of the court.337

As an extension of this concept, a federal science advisory board consisting of a

panel of technical advisors might also be proposed as a resource for judges in evaluating

intricate issues of science and technology.338 Such neutral court-appointed advisory

panels may be formed by judges in the Federal Circuit, appellate courts, or district courts.

Technical advisory panels would be particularly justified to support judges in analyzing

the occasional matters of great impact to the business community and society.339

Currently, the Federal Circuit does utilize technical advisors to evaluate complex

technologies.340 Yet, Congress has exhibited some inconsistency in permitting the

Federal Circuit to utilize technical or scientific advisors in its appellate review of PTO

and district court cases. Although the Federal Circuit has been granted explicit

of the perhaps unfounded concern that technical advice to judges may undermine the adversarial process, and (2) Judge Wyzanski made an economist his law clerk to aid in understanding issues in a complex antitrust trial). Law clerks may serve as another means by which technical expertise may be legitimately infused into the courts through their judicially acceptable confidential communications with judges. 336 Hall, 947 F. Supp. 1387, 1392-93 (employing an epidemiologist, chemist, rheumatologist, and immunologist to advise the judge regarding admissibility of scientific evidence); Reilly v. United States, 863 F.2d 149 (1st Cir. 1988) (The judge appointed an economist as technical advisor to assess damages in a medical malpractice case, basing its "inherent authority" to appoint a technical advisor on the rationale presented in United Shoe. United States v. United Shoe Machinery Corp., 110 F. Supp. 295 (D. Mass. 1953). "[O]ne court has provided an exemplary guide to the worth and vitality of [technical advisors in] courts of law." 863 F.2d at 161). 337 Baxter Healthcare, 947 F. Supp. at 1392 (Judge Jones emphasizing his judicial role as "gatekeeper" under Daubert to appoint advisors). 338 See Joel Yellin, Science, Technology, and Administrative Government: Institutional Designs for Environmental Decision-making, 92 YALE L.J. 1300, 1330 (1983). 339 For example, biotechnology intellectual property, tobacco, silicon breast implant, or other complex litigation may benefit from technical advisory panel input.

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congressional authorization to use technical advisors for review of ex parte appeals from

the PTO,341 Congressional authorization for such advisors for review of district court

appeals is only implicit in the FCI Act.342 However, given the Supreme Court's

reluctance to interfere with the CAFC's decision-making process, it is probable that the

Federal Circuit will be permitted to utilize technical advisors to assist CAFC judges in

reaching their judgments in review of both PTO and district court cases. Thus, the

Federal Circuit's increased use of specialized technical advisors in complex intellectual

property cases may be warranted and supported as an extension of precedent for prior

use.343 While intellectual property cases are jurisdictionally allocated to the Federal

Circuit, the Courts of Appeals may similarly be called upon to decide complex legal and

scientific issues in mass tort, medical malpractice, and similar cases. It is predicted that

future use of technical advisors by adjudicators in the Federal Circuit, Courts of Appeals,

and district courts will increase, particularly in complex technical and scientific cases.

2. Appointment of experts and Rule 706

The FJC Manual, with the "Extraordinary Procedures" section addressing court-

appointed experts and special masters, was written in response to the court's new role as

340 See, e.g., Jeffrey W. Tayon, Covenants Not to Compete in Texas: Shifting Sands from Hill to Light, 3 TEX. INTELL. PROP. L.J. 143 (Spr. 1995) (noting that the author was technical advisor and law clerk to Federal Circuit Judge Miller, with a specialty in medical instrumentation patents). 341 H.R. REP. NO. 312, supra note 54, at 37-38. 342 Id. (Explicit support for Federal Circuit's use of technical advisors is lacking in the FCI Act. Legislative history from the House raised a potential concern that the Federal Circuit's deployment of technical advisors in district court appeals might be perceived as interfering with a litigant's due process rights in adversarial proceedings. Id. However, restriction of the role of such advisors to purely advisory capacities, with judges responsible and accountable for all adjudicative decision-making authority has generally alleviated this concern. The advisor’s role may be analogized to that of a law clerk whose role includes advising the court on various vital matters of importance.). 343 See, e.g., M. Ethan Katsch, Symposium: Dispute Resolution in Cyberspace, 28 CONN. L. REV. 953, 969 (noting that ombudspersons are paired with technical advisors who have expertise in the Internet to enable each ombudsperson, acting as a judge or mediator, to resolve disputes, preferably through settlements). For example, the Federal Circuit might pair judges with technical advisors for respective technologies, as employed in the University of Massachusetts Internet Online Ombuds Office.

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envisioned in the Daubert decision.344 Under Daubert, the Supreme Court stated the new

"gatekeeper of good science" role for federal judges in ensuring that scientific evidence is

valid, relevant and applicable to the facts involved.345 The Daubert factors for

admissibility of scientific evidence include 1) testability of scientific hypotheses in

studies, 2) error rate control (i.e., precision), 3) peer review and publication, and 4)

general acceptance by the scientific community.346 Support for the court's authority to

appoint experts was also provided by the Federal Judicial Center Manual,347 based to

some extent upon the Carnegie Commission Report findings.348 Federal Rule of

Evidence 706 provides courts with broad discretion and authority to appoint expert

witnesses.349 Rule 706 provides guidelines for appointment, compensation, disclosure,

and selection of experts.350 Under Rule 706(a)'s appointment provision, the court may

appoint expert witnesses and may, if it so chooses, permit parties to submit nominations

or to agree to the appointment.351 The expert files a written copy of duties with the court

and advises parties of findings.352

Unlike the technical advisor, the expert witness is subject to deposition and to

cross-examination upon being called to testify in court.353 Correspondingly, the expert

344 See Daubert, 509 U.S. 519. Cecil & Willging, Court-Appointed Experts, supra note 333; Federal Judicial Center, Court-Appointed Experts: Defining the Role of Experts Appointed Under Federal Rule of Evidence 706 (1993). 345 See generally Edward W. Warren, Judge Leventhal's Revenge: The Courts as "Gatekeepers" of "Good Science" After Daubert, 1994 PUB. INT. L. REV. 93; Paul S. Milich, Controversial Science in the Courtroom: Daubert and the Law's Hubris, 43 EMORY L.J. 913, 918 (1994). 346 See Daubert, 509 U.S. at 593-94. 347 See generally FJC MANUAL, supra note 315 (discussing experts appointed by the court). 348 See generally, Carnegie Report, supra note 322. 349 See generally, Cecil & Willging, Court-Appointed Experts, supra note 315; FED. R. EVID. 708. 350 FED. R. EVID. 706. 351 FED. R. EVID. 706(a). 352 Id. 353 Id.

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witness’ testimony is a matter of public record.354 Under Rule 706(b)'s compensation

clause, the court may pay the expert reasonable compensation. Funds may be extracted

either from the parties for most civil litigation or from earmarked government funds if

either provided by statute or involving Fifth Amendment just compensation issues. 355

Rule 706(c) provides that the court may authorize disclosure of the court's appointment to

the jury; 706(d) allows parties to select their own expert witnesses.356

The advantages of using a court-appointed expert witness include assisting the

court in its decision-making on complex technical issues, particularly (1) where party

experts were not credible or failed to provide essential information; (2) when one party

was unable, perhaps due to lack of financial resources, to present expert testimony; (3) to

resolve conflicts in the "battle of the experts;" or (4) to aid in settlement.357 In contrast,

the disadvantages of utilizing expert witnesses include: (1) neutral, unbiased experts may

be difficult to obtain;358 (2) parties may object, arguing potential intrusion by the court-

appointed expert on the adversarial process;359 (3) judges may lack proper criteria for

determining whether a case is appropriate for appointment of an expert;360 and (4) judges

perceive their decisions may be reversed for improperly appointing an expert.361

However, the Federal Judicial Center survey performed by Cecil and Willging

showed that of over four hundred federal judges, 20% of responding judges stated they

354 See infra Part IV.A.1. (In contrast, the technical advisor’s communications with the judge, like that of a law clerk, is considered confidential.). 355 FED. R. EVID. 706(b). Cecil & Willging, Court-Appointed Experts, supra note 315, at 558 (the authors noting that judges surveyed indicated implementation of Rule 706's compensation clause could be better served by clarification (e.g., statute) of the sources of funding for reimbursement of experts for their fees). 356 FED. R. EVID. 708(c) and (d). 357 See generally Cecil & Willging, Court-Appointed Experts, supra note 315. 358 E. Donald Elliott, Toward Incentive-Based Procedure: Three Approaches for Regulating Scientific Evidence 69 B.U.L. REV. 487, 503 (1989) [Elliot, Scientific Evidence]. 359 Cecil & Willging, Court-Appointed Experts, supra note 315, at 540. 360 Elliott, Scientific Evidence, supra note 358, at 503.

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had used a court-appointed expert witness under Rule 706,362 and 87% of 431 judges

believed court-appointed experts were likely to be helpful in at least some cases. 363 A

Harris poll survey found 76% of 200 federal judges and 70% of 200 state court judges

supported use of independent experts in complex cases.364 Experts were reported as most

commonly appointed for intellectual property, personal injury and business accounting

cases.365 Particularly in multiparty suits (e.g., complex asbestos and DES cases) where

stakes are high, panels of experts have also been utilized.366 Notwithstanding criticisms

of the use of court-appointed experts,367 the court's deployment of such expert witnesses

in appropriate situations requiring deciphering of complex technical or scientific matters

may be warranted and justified.

3. Appointment of special masters

Special masters are generally court-appointed attorneys or professors who are

authorized under the Rule 53 of the Federal Rules of Civil Procedure368 to assist judges in

361 Id. (noting some judges contemplated being reversed for improperly appointing an expert). 362 Joe S. Cecil & Thomas E. Willging, Accepting Daubert's Invitation: Defining a Role for Court-Appointed Experts in Assessing Scientific Validity, 43 EMORY L.J. 995, 1004 (1994). 363 Joe S. Cecil & Thomas E. Willging, Federal Judicial Center, Court Appointed Experts: Defining the Role of Experts Appointed Under Federal Rule of Evidence 706, at 11 (1993). 364 Louis Harris & Associates, Judges' Opinions on Procedural Issues 52-53, tbls. 6.8 & 6.9. 365 Id. at 1006. 366 In re Joint Eastern and Southern District Asbestos Litigation, 129 B.R. 710, 763-64 (E. & S.D.N.Y. 1991), vacated on other grounds, 982 F.2d 721 (2d Cir. 1992) (the Bankruptcy Court appointing Professor Margaret Berger to assemble a panel of experts from different scientific fields to assist the court in determining the number of future asbestos claims predicted); In re DES Cases, No. CV 91-3784, 1991 WL 270477, at *2 (E.D.N.Y. Dec. 6, 1991) (the court directing a special master to create two panels of experts: (1) a panel of expert economists to evaluate the proportion of national market share possessed by DES producers and distributors); and (2) a panel of medical experts to support the court in determining the issues of the type of medical injury, if any, suffered and causality.). 367 See Joseph Sanders, From Science to Evidence: The Testimony on Causation in the Benedection Cases, 46 STAN. L. REV. 1, 70 (1993) (Judges report that their principal reluctance in appointing experts stems from a hostile bar, more than either (1) the inability to take supervisory responsibility for the selection and monitoring of experts or (2) a fear of reversal by appellate courts perceiving that a judge oversteps his authority in using experts to interpret evidence in a case.). 368 See FED. R. CIV. P. 53; Margaret G. Farrell, The Role of Special Masters in Federal Litigation, C842 ALI-ABA Course of Study: Civil Practice and Litigation Techniques in the Federal Courts 931 (1993); available at Westlaw, ALI-ABA Database (discussing the court’s appointment of special masters).

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pretrial proceedings, discovery, settlement negotiations or arbitration between parties,

formulating recommendations for findings of fact and conclusions of law, and devising

remedies such as monetary damages or injunctive relief.369 Additional legal authority for

the appointment of special masters by district court judges has included the following:

(1) the Magistrate's Act which permits appointment of magistrates as special masters,370

(2) the federal district court's inherent power to appoint special masters and ancillary

support personnel to crystallize issues and make preliminary findings,371 and (3) the

consent of the parties.372 Court-appointed special masters, utilized with increasing

frequency after the ground-breaking Agent Orange products liability case,373 possess

quasi-judicial authority to reach settlements between parties in technically complex

cases.374

The FJC Manual acknowledges that the court may delegate significant

responsibilities to special masters.375 Special masters operate within the rubric of the

federal court system and have no independent legal authority apart from that of the

369 MANUAL FOR COMPLEX LITIGATION, SECOND § 21.54 (1985). "The master's findings must be based upon evidence presented at a hearing conducted essentially like a trial, with subpoena powers enforceable through the court." Id. § 21.52 at 100. The master may also make determinations of the admissibility of evidence. Furthermore, the master "has and shall exercise the power to regulate all proceedings in every hearing before the master and to do all acts and take all measures necessary or proper for the efficient performance of the master's duties under the order." Fed. R. Civ. P. 53(c). 370 The Magistrates Act, 28 U.S.C. § 636. 371 Ex parte Peterson, 253 U.S. 300, 314 (1920); Reilly v. United States 863 F.2d 149, 154 n.4 (1st Cir. 1988). 372 Heckers v. Fowler, 69 U.S. (2 Wall.) 123 (1864); Peretz v. United States, 11 S. Ct. 2661, 2669 (1991). See also Peter G. McCabe, The Federal Magistrate Act of 1979, 16 Harv. J. on Legis. 343, 374 (1979). 373 See In re Agent` Orange Prod. Liabl. Litig., 611 F. Supp. 1396, 1450 (N.Y. 1985) (describing the role of special masters and implementation schedules). 374 See Marvin E. Aspen, Intensive Ad Hoc Mediation, in ADR and the Courts: A Manual for Judges and Lawyers 225 (Erika S. Fine & Elizabeth S. Plapinger eds., 1987) (Judge Aspen advocating use of special masters in cases involving “a highly technical subject matter requiring similar technical expertise by a skilled negotiator” or “complex issues requiring the services of a skilled negotiator” as a cost-saving option for litigants). 375 See generally Margaret G. Farrell, Special Masters, in FJC Manual, supra note 315.

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district court judge to make final decisions on law or fact or to enforce court orders.376

Rule 53 provides that special masters shall be deployed "only upon a showing that some

exceptional condition requires it," or in jury situations, "only when the issues are

complicated."377 The Advisory Committee, in writing Rule 53's commentary, specifically

stated that "masters may prove useful when some special expertise is desired."378

Special masters have been frequently utilized in patent cases,379 as well as in

unusually complex cases involving product liability, malpractice, antitrust, and mass torts

claims.380 The FJC Manual specifically states that a court may appoint special masters

"to educate the fact finder-judge or -jury in the subject matter of particular controversies,

such as patent disputes."381 For example, special masters were utilized in class action

lawsuits that have been commonly featured in news stories concerning asbestos, silicone

376 See In re Bituminous Coal Operators' Ass'n, 949 F.2d 1165, 1168 (D.C. Cir. 1991) (noting special master magistrates operated under the "total control and jurisdiction of the district court"). 377 FED. R. CIV. P. 53 and accompanying advisory committee notes. See also Jenkins v. Raymark Indus., 109 F.R.D. 269, 271, 289 (E.D. Tex. 1985) (the court utilizing a special master for benefit of the jury in an asbestos case). Ronald E. McKinstry, Use of Special Masters in Major Complex Litigation, in FEDERAL DISCOVERY IN COMPLEX CIVIL CASES: ANTITRUST, SECURITIES AND ENERGY 213, 225 (1980). Proponents of increased specialization in the judiciary may advocate use of special masters in intellectual property cases, where comprehension of complex technical or scientific issues by judge and jury are challenged. 378 FED. R. CIV. P. advisory committee's notes. 379 See, e.g., In re Newman, 763 F.2d 407 (Fed. Cir. 1985). 380 See, e.g., Procedure in Antitrust and Other Protracted Cases, in SHORT CUTS IN LONG CASES, 13 F.R.D. 41, 62, 79-81 (1951) (supporting the court's appointment of special master "experts" in technically complex matters). See generally MANAGING COMPLEX LITIGATION: A PRACTICAL GUIDE TO THE USE OF SPECIAL MASTERS (Wayne D. Brazil, ed., 1983). United States v. Conservation Chem. Co., 106 F.R.D. 210, 214-26 (W.D. Mo. 1985) (special master deployed by the court because of the imminent danger to public health resulting from chemical waste deposits and the case's complexity as exhibited by the massive amounts of technical evidence presented). 381 See Margaret G. Farrell, Special Masters, in FJC MANUAL, at 583, supra note 315.

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breast implants, tobacco, the Dalkon Shield, Agent Orange, and other products.382 The

court generally allocates costs for special masters' compensationbetween the parties.383

District court judges also have the authority to refer cases to a court-appointed

magistrate judge under the Federal Magistrates Act,384 whereby the magistrate is required

to "conduct hearings, including evidentiary hearings, and to submit to a judge of the court

proposed findings of fact and recommendations for the disposition, by a judge of the

court of [the] motion." Under this Act, the magistrate judge makes recommendations to

the district court judge who makes final, binding de novo dispositions. Thus, the

magistrate acts to aid the district court judge in determinations under the court's complete

control and jurisdiction. Under section 636 (b)(2), "a judge may designate a magistrate to

serve as a special master" pursuant to FRCP Rule 53. In civil cases on consent of the

parties, a magistrate may be appointed by a district court judge to serve as a special

master regardless of whether complex issues or exceptional circumstances are present in

a case that may warrant invocation of Rule 53.385 Significantly, section 636(b)(3)

382 Federal Courts Study Comm., Report of the Federal Courts Study Committee 59-63 (1990) (noting product liability and environmental litigation). See also Cimino v. Raymark Indus., 751 F. Supp. 649, 653, 665 (E.D. Tex. 1990) (the court commenting that cases, such as those in products liability, where large numbers of people are adversely affected, warrant a court's use of special methods to ensure accuracy and fairness of judgment). 383 See generally David I. Levine, Calculating Fees of Special Masters, 37 HASTINGS L.J. 141 (1985). 384 See Federal Magistrates Act, 28 U.S.C. § 636(2001) (section 636(b)(1) requiring that the District Court make a de novo determination of any disputed parts of the Magistrate's proposed findings and recommendations); S. REP. NO. 74-625, at 1 (1976); H.R. REP. NO. 94-1609, at 2 (1976) (Congress amended the Magistrate's Act "in order to clarify and further define the additional duties which may be assigned to a United States Magistrate in the discretion of a judge of the district court." The House Report noting that a de novo determination does not require a judge to conduct a new hearing on contested issues, but rather that the judge makes his own determination based on the record without being bound to the magistrate's findings and conclusions. H.R. Rep. at 3.); See Pub. L. No. 101-650, 104 Stat. 5089 (1990); Title I, Judicial Improvements Act of 1990 including the Civil Justice Reform Act, codified in 28 U.S.C.A. 471-82 (West 1999) (legislative history of the Act noting the change the title to "United States magistrate judge" to comport with the significance of this office). 385 28 U.S.C. § 636 (b)(2), (c). Section 636(c) provides that the magistrate acting as a full time judicial officer may conduct "any or all proceedings in a jury or nonjury civil matter and order the entry of judgement in the case, when specially designated to exercise such jurisdiction by the district court or courts he serves."

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provides that a "magistrate may be assigned such additional duties as are not inconsistent

with the Constitution and laws of the United States," with the legislative history

encouraging courts to conduct "innovative experiments" in their assignment of duties to

magistrates.386 Thus, the Supreme Court, in Peretz v. United States, upheld a district

court judge's delegation of duties to a magistrate for jury selection and voir dire

proceedings with consent of the parties.387 The Court reasoned, "Congress intended to

give federal judges significant leeway to experiment with possible improvements in the

efficiency of the judicial process that had not already been tried or even foreseen."388

From 1972 to 1994, magistrate judges disposed of 517,000 civil matters.389

While in patent cases, critics have charged that use of special masters and/or

magistrates unnecessarily increase costs of litigation, perhaps compromising the system

by providing "justice at a price,"390 special masters remain an invaluable aid to judges

because of their specialized expertise and skills in assessing scientific and technical

information. In this new millennium, faced with a plethora of emerging technologies,

increased use of special masters and magistrates skilled in the technological arts may

enhance an adjudicator’s understanding and ability to reach undisturbed, equitable

decisions. Court reformers should develop evaluation criteria for determining the

386 28 U.S.C. § 636(b)(3), S. Rep. No. 940625, at 19 (1976), reprinted in 1976 U.S.C.C.A.N. 6162-74. 387 Peretz, 501 U.S. 923 (the Court holding that the magistrate's jurisdiction over these proceedings was constitutional since parties consensually waived their rights to an Article III district court judge for such proceedings and since non-waivable protections of Article III were not involved). 388 Id. at 932. (the Court noting that "we should not foreclose constructive experiments that are acceptable to all participants in the trial process and are consistent with the basic purposes of the statute"). Pursuant to section 636(c), after parties consent, the magistrate may order completion of pretrial discovery, decide on dispositive motions, conduct a final pretrial conference, then allow the case to proceed to jury or non-jury trial. Appeals under section 636(c)(3) may be made directly to the appropriate United States Court of Appeal "in the same manner as an appeal from any other judgment of the district court." 28 U.S.C. § 636(c)(3). 389 See HENRY MELVIN HART, HART & WECHSLER’S THE FEDERAL COURTS AND THE FEDERAL SYSTEM 124 (4th ed. 1996).

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effectiveness of increased specialization in the courts through utilization of special

masters, magistrates, and technical advisors. An evaluation committee may be formed to

develop criteria that include the assessment of the following factors: quality, accuracy,

and precision of decision-making; establishment of uniformity, predictability of

judgment, and consistency in a body of law; judicial efficiency and economy; procedural

due process considerations (e.g., notice, opportunity to be heard, neutral adjudicator); and

subjective satisfaction of the participants in litigation.391

B. The Increased Use of Specialized Judges in Federal Court Reform for Intellectual

Property and Other Complex Technical/Scientific Cases

Academic scholars, practicing intellectual property attorneys, and federal judges

have acknowledged the benefits of deploying specialized judges in specialized courts.

For example, Professor Richard Revesz recommended that specialized judges should

either be utilized generally in the courts, or they should be used exclusively for certain

complex areas of law.392 Predictably, since the legal profession is composed primarily of

lawyers, law professors, and judges with generalist background and training, it is

anticipated that there will be resistance to court reform involving increased specialization

in the federal judiciary, particularly in the use of specialized judges. However, the

Hruska Commission, in its probing analysis of federal court reform, acknowledged that

specialist judges necessarily develop significant expertise in an area of law, and it

390 See, e.g., Fraver v. Studebaker Corp., 11 F.R.D. 94, 95 (W.D. Pa. 1950) (the court denying a motion to appoint a special master in a patent case due to prohibitively high costs to plaintiff). 391 LeRoy L. Kondo, Evaluation Criteria Blueprint for the Assessment of the Efficacy of Court Reform (Mar. 20, 2001) (unpublished manuscript, on file with author). 392 Richard L. Revesz, Specialized Courts and the Administrative Lawmaking System, 138 U. PA. L. REV. 1111, fn. 32 (Apr. 1990) [Richard Revesz, Specialized Courts]. (The author commented, "Of course, the broad application of [these] argument[s] would counsel against any use of generalist judges. A narrower argument, however, is that certain areas are so complex that it is inefficient for a generalist judge to learn about them.").

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initially recommended that specialized judges should be utilized more frequently in

future court reformation.393 Similarly, Federal Circuit judges, and other members of the

bench, acknowledge the limited abilities of generalist judges to rightly decide complex

intellectual property cases.394 Federal Circuit Judge Michel noted that since the inception

of the Federal Circuit, generalist appellate and trial judges have criticized this specialty

court, even recommending that the patent infringement jurisdiction be returned to the

regional circuits.395 However, neither the Federal Court Study Committee nor the Long

Range Planning Committee of the United States Judicial Conference recommended any

changes in the present jurisdiction of the Federal Circuit.396

When Congress first created the Federal Circuit, only Chief Judge Markey and

Judge Rich were former patent attorneys before receiving their court appointments.397

On the current bench, three judges out of eleven on the Federal Circuit were previously

registered patent attorneys prior to their appointment to the bench, with the patent bar

having primary input into the decision-making process regarding suggestions for judicial

393 Hruska Commission Recommendations, supra note 58, at 235 (although the Hruska Commission cautioned that specialized judges might conceivably use their heightened expertise to influence policy beyond their scope of review). See also infra Part III.A. (discussing specialized judges and courts). 394 96th Congress Hearings, supra note 73, at 114, 194-95, 537. (Judge Friendly lamented, “Judges often understand facts in a patent case only ‘[i]mperfectly.”) (In the prepared statement of CAFC Chief Judge Howard T. Markey, he commented that patent decisions by judges have contained grossly incorrect legal rules that—if indiscriminately applied—would invalidate all patents; such rules include the following: “[a] combination of old elements is unpatentable and certainly suspect,” and “[a]bsent a new function the invention is unpatentable.” He expressed frustration that some judges, out of ignorance, employ these types of "mindless decisional rules for all [patent] cases."). 395 Michel, Review of Federal Circuit Decisions, supra note 9, at 1182-83 (observing reservations expressed by the Chief Judge of the Third Circuit and the former Chief Judge of the Ninth Circuit). 396 Id. See also Report on the Proceedings of the Judicial Conference of the United States, reprinted in United States Courts: Selected Reports 51-52 (1993) (noting adopted recommendations from the Long Range Planning Committee). 397 Sutton, Patent Trials After CAFC, 10 APLA Q.J. 309, at 309-310 (1982) (finding no Federal Circuit judges possessed a technical background sufficient to qualify them as registered patent attorneys licensed to prosecute patent applications).

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appointments.398 However, in 1989, five of eight members were once intellectual

property attorneys, with four members from the patent bar, and Judge Helen Nies from

the trademark bar.399 It is predicted that this trend toward specialization on the Federal

Circuit will continue by necessity as technologies become increasingly complex.

With the Federal Circuit’s principal focus upon intellectual property cases, the President

does possess the statutory authority to appoint more specialized, technically proficient,

patent attorneys to the bench. However, Section 305 of the Federal Courts Improvement

Act suggests that the President should consider attorneys with "a broad range of

professional expertise,"400 perhaps because of the "semi-specialized" nature of this court

in hearing cases selected from a variety of subject matter. Nevertheless, the Federal

Circuit, or a division of it, might further evolve to become more "specialized in fact" in

the future through court appointments, approximating a "science or patent court," rather

than remaining a mere "semi-specialized" court, with patent law as one aspect of its

extensive repertoire.401 Correspondingly, when Judge Giles S. Rich, the “elder statesman

of the patent bar” recently died, Richard Linn, a former patent attorney from Foley &

Lardner, replaced him as the newest appointment to the twelve-member Federal

398 See Michel, Review of Federal Circuit Decisions, supra note 9, at 1185 (noting two out of ten Federal Circuit judge hailed from the patent bar). 399 See id. at fn. 27 (Judge Michel commented that generally only one of nine CAFC judges appointed since 1985 was from the patent bar. Most CAFC judges came from general litigation or government service sectors.); Steven Andersen, Senate Confirms Richard Linn to Take Judge Rich’s Seat on the Federal Circuit Big Shoes to Fill, CORPORATE LEGAL TIMES at 78 (Feb. 2000) [hereinafter Anderson, Federal Circuit Big Shoes to Fill]. (noting Federal Circuit Judge Helen Nies, an outspoken intellectual property proponent, died in a bicycle accident in 1998). 400 The Federal Courts Improvement Act of 1982, Pub. L. No. 97-164 (1982) U.S. CODE & CONG. AD. NEWS (96 Stat.) 25 [hereinafter FCI Act]. See also H.R. REP. NO. 312, supra note 54, at 50. 401 A division or branch of the Federal Circuit might be designated by statute to hear intellectual property cases exclusively. The President then may appoint Article III judges to this Federal Circuit Intellectual Property division who possess adequate expertise to fully comprehend both the technological and legal aspects of cases before it. Article III judges with diverse intellectual property backgrounds in computer science, engineering, biotechnology, telecommunications, and other fields promise to bring more rapid uniformity and stability to complex and varied areas of intellectual property law.

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Circuit.402 Thus, through natural attrition and presidential appointment, it is conceivable

that the Federal Circuit might become more specialized to meet future corporate and

societal needs.

At least theoretically within the realm of possibilities is that the Patent and

Trademark Office,403 an Article I court—like the original Court of International Trade—

404 might be transformed into an Article III court with life-tenured expert judges,

remaining under the appellate jurisdiction of the Federal Circuit. Such court reform

could be viewed as a natural extension of the historic conversion of the Article I Court of

Customs and Patent Appeals to the existing Article III Federal Circuit for complex

intellectual property cases.405 With the Supreme Court's recent Dickinson decision

granting a lowered CAFC standard of review,406 it is at least remotely conceivable that

Congress might take the next logical step and empower the PTO, as an expert

administrative court like the CIT and previous Court of Customs and Patent Appeals,

with Article III status.407

402 Anderson, Federal Circuit Big Shoes to Fill, supra note 399, at 78 (The newest appointment to the twelve member Federal Circuit bench was Richard Linn from Foley & Lardner, where he was chairman of their Intellectual Property Electronics Group. Michael Kirk, Executive Director of the American Intellectual Property Law Association, stated that the seasoned patent lawyer, “Dick Linn represents the type of individual [we feel] should be appointed to the court. . . . We believe that, given the patents aspect of the [Federal Circuit’s] activity, there should be some people there with [patent law] qualifications.”). 403 See infra Part II.B.1. (describing the PTO structure and operations). 404 See Act of July 14, 1956, Ch. 589, 70 Stat. 532, 532 (granting Article III status to the Customs Court, as the precursor to the Court Of International Trade). 405 See Ex parte Bakelite Corp., 279 U.S. 438, 460 (1929) (holding the Court of Customs and Patent Appeals, as a forerruner of the Federal Circuit, was an Article I court); Act of Aug. 25, 1958, 72 Stat. 848, 848 (making the Court of Customs and Patent Appeals an Article III court); Act of Aug. 25, 1958, §§ 2-4, 72 Stat. 848-49; H.R. Rep. No. 695, 83rd Cong., 1st Sess. 2, reprinted in 5 Congress and the Courts: A Legislative History, 1787-1977, at 17,938, 17,939 (B. Reams & C. Haworth eds. 1978) (noting a rationale given for this Article III transformation was to permit life-tenured judges to serve on and move between specialized courts, district courts, courts of appeals). 406 See infra Part II.B.3. (noting the Supreme Court's decision in Dickinson shifted decision-making power from the Federal Circuit to the PTO). 407 However, critics may note that the Supreme Court's implementation of the court-agency standard of review rather than the court-court standard indicates the PTO's diminished status, in spite of the imposed

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The PTO, like the CIT, hears cases with major global economic impact (i.e.,

intellectual property), unlike other agency tribunals such as the Environmental Protection

Agency ("EPA"), OSHA, or similar typical administrative courts. Since the PTO's

decisions have major consequences for protecting American business interests, Article III

status would provide the PTO with life-tenured judges possessing specialized expertise

and comprehension of the intricacies of the interfaces of law and technology. Within a

fully specialized Article III PTO court, life-tenured expert judges could be appointed

from the patent bar who have the knowledge base necessary to conduct in-depth inquiries

into the major legal/technical issues raised by high technology cases. The PTO’s

specialized intellectual property focus would also provide its expert judges with ready

access to technical advisors who are skilled in patent matters.

Under this Article III court model, the PTO would then be subject to the court-

court standard of review rather than the court-agency standard, as the Federal Circuit had

advocated in Dickinson.408 Federal Circuit appellate decisions would then be reviewed

by the generalist Supreme Court. This federal judiciary structural model would be more

consistent with the general principle that specialist courts focus upon the narrower

specific issues raised by technological advances, while generalist courts determine the

broader societal policy concerns underlying legislative and judge-made law. Perhaps

additional investigation might be pursued regarding the impact of this potentially far-

reaching court reform upon intellectual property policies.

The concept of the creation of science or patent courts to properly address

intricate technological or scientific issues such as those encountered in intellectual

deference to PTO fact finding relating to complex intellectual property inventions. In addition, unlike the CIT Article I court, the PTO is a classic agency, and critics might deny Article III status to any agency.

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property law is not an entirely novel and untested one as some critics may claim.409

Patent courts have been effectively utilized in foreign countries such as Great Britain and

Japan. In England, one patent judge and four chancery judges in Patents Court, part of

the Chancery Division of the High Court, hears patent disputes.410 Specialist Patent

Court decisions are appealable to the generalist Court of Appeal, then to the House of

Lords.411 As in the United States, the Japanese Patent Office decides issues of patent

validity, whereas the courts handle infringement litigation.412 However, unlike in the

U.S., in Japan, the Patent Office hears trials for invalidation, correction, and extension of

patents.413 Japanese federal courts are more specialized than those in the United States,

with intellectual property divisions existing in Tokyo and Osaka district courts.414 Judges

in these two courts hire former Japanese Patent Office investigators as “technical

advisors” to aid them in decision-making.415 Appeals from district courts are heard in

eight High Courts,416 with the Tokyo High Court having the additional Federal Circuit-

like responsibility for reviewing Patent Office and other agency decisions.417

408 Dickinson, 527 U.S. 150, 154-56. 409 See Arthur Kantrowitz, The Science Court Experiment, 17 JURIMETRICS J. 332, 332 (1977) (proposing a science court to address evidentiary inquiries of scientific facts); Arthur Kantrowitz, The Science Court, in THE USE/NONUSE/MISUSE OF APPLIED SOCIAL RESEARCH IN THE COURTS 52 (Michael J. Saks et al. eds., 1978) (one of the first to propose science courts in addressing social science issues. 410 See 35 HALSBURY’S LAWS OF ENGLAND § 714 (4th ed. 1994); Interview with His Honour Judge Ford, 6 PAT. LITIG. ASS’N NEWSL. 1, 7 (1991). 411 See 35 HALSBURY’S LAWS OF ENGLAND § 719, 728-29 (4th ed. 1994). 412 See Kurokawa, Background of Japanese Patent System, supra note 304, at 14-15. 413 See Japan Patent Law No. 121 of Apr. 13, 1959, § 123, 125, 126, as amended (Jap.) translated in Japanese Group of A.I.P.P.I., Japanese Laws Relating to Industrial Property 1 (In contrast to the U.S. system, in Japan, anyone may challenge patent validity by alleging such grounds as the existence of prior invalidating art; or improper amendment or introduction of new matter.) 414 See Masashige Ohba, Overview of Differences Between the U.S. and Japanese Systems of Patent Litigation, in Kurokawa, Background of Japanese Patent System, supra note 304, at 356-57 (Tokyo or Osaka district courts, with their specialized i.p. divisions, hear most Japanese i.p. cases). 415 Id. 416 Court System of Japan, supra note 304, at 11. 417 See id.

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Specialized intellectual property judiciaries have had notable success in Germany

and Japan.418 If the percentage of worldwide issued patents is an appropriate litmus

indicator of technological success, then Japan has been more successful than the United

States in protecting its economic interests in novel technologies. In intellectual property

contexts, such specialist judges promise to be better equipped in possessing the "scientific

literacy" required to fulfill their judicial "gatekeeping" responsibilities under the Supreme

Court's Daubert mandate to understand and assess scientific, technical, and other

complex evidence.419 Specialist judgeswould be armed with firsthand knowledge of

science and technology, and would fully—rather than partially—comprehend the

scientific method, complex statistical analyses, and methods for properly evaluating

expert testimony in fact finding in complex technical and scientific cases appearing

before the court. These qualifications would lend specialist judges a distinct advantage

over their generalist counterparts in decision-making.420

Another progressive specialization proposal would be to establish the Federal

Circuit as an entirely specialized high technology court staffed by panels of specialized

adjudicators, attorneys and juries that would hear cases involving their respective fields

of specialization, such as biotechnology, engineering, telecommunications, computer

418 See LeRoy L. Kondo, Biotechnology Patent Considerations, supra note 3, at 816 (The author noted, "One survey of DNA sequence patents granted by the European Patent Office noted that in 1996, U.S. companies held 40 percent, Japan held 33 percent, and Europe held 24 percent."). 419 See generally Paul S. Miller, et al., Daubert and the Need for Judicial Scientific Literacy, 77 JUDICATURE 254, 254 (1994) [Miller, Scientific Literacy]. 420 Id. See generally Adam J. Siegal, Setting Limits on Judicial Scientific, Technical, and Other Specialized Fact-Finding in the New Millennium, 86 CORNELL L. REV. 167, 222 (Nov. 2000) (noting recent decisions in Daubert, Joiner, and Kumho indicate that the Supreme Court has relegated substantial responsibility to federal judges to actively "acquire all relevant scientific, technical, or other specialized knowledge that will increase the likelihood of making correct admissibility decisions," rather than passively "refraining from engaging in any activities that may adversely affect their ability to remain impartial. . . to preserve the integrity of the adversarial system.") See also infra Part III.A.2. (discussing specialized state business, drug, and family courts as potential models for federal court reform).

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science, business methods, and Internet law.421 Such heightened specialization could

give greater comprehension to courts handling cases dealing with complex bodies of law

within each intellectual property subspecialty, much as medicine in the United States has

become increasingly specialized over the past two generations.422

While increased use of specialized judges at the Federal Circuit level would be a

significant modification of existing court structure, deployment of specialized judges at

the district court level would be a more innovative, perhaps radical mode of court reform.

Thus, some congressional commentators advocate greater specialization at the district

court or federal trial court level rather than at the Federal Circuit appellate court level.423

Similarly, academicians have proposed creation of a science court staffed with

specialized judges divided into subject matter divisions to hear cases deemed by

Congress to be sufficiently complex.424 Such cases could be transferred to the science

court from district courts and appealable to the Federal Circuit.425 However, other court

reformers advocate the court's deployment of a panel of experts whose determinations

421 Specialized patent litigators, focusing on this unique area of law, already try cases in intellectual property law. While only patent prosecution attorneys must be members of the patent bar, laws may be revised to ensure that litigators and judges are also members of the patent bar. 422 See generally KENNETH M. LUDMERER, TIME TO HEAL: AMERICAN MEDICAL EDUCATION FROM THE TURN OF THE CENTURY TO THE ERA OF MANAGED CARE (1998); EDWARD D. BERKOWITZ, TO IMPROVE HUMAN HEALTH: A HISTORY OF THE INSTITUTE OF MEDICINE(1998). Medicine at the turn of the twentieth century utilized primarily general practitioners with M.D.s who practiced general medicine. Now, in the twenty-first century, the proportion of general practitioners is less than ten percent, with the vast majority of physicians choosing to specialize in one particular area of medicine, as medical knowledge expanded and became increasingly more complex. Similarly, it is predicted that specialists in law will begin to dominate practice as law becomes increasingly complex. It is probable that some judges, as reflections of their societal mileau, will also become more specialized by necessity in order to retain even a semblence of competence. 423 97th Congress Hearings, supra note 58 at 85.424 Mark A. Nordenberg & William V. Luneburg, Decisionmaking in Complex Federal Civil Cases: Two Alternatives to the Traditional Jury, 65 JUDICATURE 420, 430-31 (1982) (supporting creation of a science court with specialized divisions). 425 Id.

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would be advisory rather than binding upon the court.426 As an alternative permutation of

court reform, science courts or expert panels might be utilized in a more conservative role

by district courts to decide upon such complex matters as causation in product liability

cases, with the remainder of issues to be decided by the district court judge.

While the Patent Bar generally supports increased specialization in the judiciary,

progress in court reform will probably be accelerated by appointment of an independent

evaluation committee to objectively assess the effectiveness of increased specialization in

the courts in meeting enumerated objectives.427 If specialist district court judges or

panels, trained in science or other respective areas, are utilized and evaluated on an

experimental basis, it is predicted that objective studies will demonstrate their

effectiveness in providing enhanced uniformity, predictability and consistency of

judgment to the body of intellectual property law. It is maintained that specialized judges

on the Federal Circuit and in district courts, by definition, would possess the technical

expertise necessary to fully comprehend diverse fields of the intersection of law and

science, to adequately address the challenges of complexity surrounding intellectual

property law.

C. Deployment of Special “Blue Ribbon” Professional Juries or Educated Juries

to Resolve Complex Issues of Fact in Intellectual Property and Other High Technology

Cases

426 Troyen A. Brennan, Causal Chains and Statistical Links: The Role of Scientific Uncertainty in Hazardous Substance Litigation, 73 CORNELL L. REV. 469, 523-25 (1988) (proposing an advisory Federal Hazardous Substance Science Panel); 2 American Law Institute, Enterprise Responsibility for Personal Injury 339-45 (1991) (recommending an advisory Federal Science Board). 427 See LeRoy L. Kondo, Appendix A in Mental Health Specialty Courts, supra note 179. (proposing legislation including an Evaluation Committee for the assessment of the effectiveness of this specialty court in meeting court reform objectives); see supra footnote 391 and accompanying text (describing a blueprint for functioning of an Evaluation Committee).

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The Seventh Amendment to the United States Constitution guarantees the right to

a jury trial, and intellectual property litigants are entitled to request a jury trial when

damages are the principal remedy sought.428 The right to a jury trial in patent

infringement cases was supported by the first Patent Act of 1790, granting, "such

damages as shall be assessed by a jury."429 At the turn of the nineteenth century, Chief

Justice John Jay, in Georgia v. Brailsford,430 acknowledged that the jury's obligation

historically extended to judgment of both matters of law and fact.431 In the judicial

system's formative years, historians observed that since judges often lacked legal training

and access to law books, lay jurors were "as well suited to resolve legal issues as anyone

else."432 By the close of the eighteenth century, jury trials became relatively

commonplace.433 However, during the nineteenth century, courts, perhaps from a degree

of judicial elitism,434 restricted the jury's role to that of the modern day "finder of fact,"

because of the ostensible inability of juries to comprehend "the new industrial reality"

and their anti-corporation biases.435 Law began to be viewed, much like science, as an

objective intellectual discipline, with trained judges becoming increasingly necessary for

428 U.S. CONST. art. VII. See generally Barry S. Wilson, Patent Invalidity and the Seventh Amendment: Is the Jury Out?, 34 SAN DIEGO L. REV. 1787 (1997). Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1547, 220 U.S.P.Q. (BNA) 193, 197 (Fed. Cir. 1983) (noting, a Seventh Amendment right to jury in intellectual property cases).

Patent Act of 1790, ch. 7, 4, 1 Stat. 109. 429

3 U.S. 1 (1794). 430

Id. at 1, 4. 431

Albert W. Alschuler & Andrew G. Deiss, A Brief History of the Criminal Jury in the United States, 61 U. CHI. L. REV. 867, 917 (1994) (the authors noting, "Jurors initially resolved legal issues at a time when lawbooks and legal professionals were in short supply").

432

See generally Donald Zarley, Jury Trials in Patent Litigation, 20 DRAKE L. REV. 243 (1971). 433

Laura Gaston Dooley, Essay: Our Juries, Our Selves: The Power, Perception, and Politics of the Civil Jury, 80 CORNELL L. REV. 325, 354 (1995) (stating that judicial elitism "began to poison nineteeth-century attitudes towards juries" and noting that scholars speculated that the "rise of well-trained judges" contributed to the decline of jury prestige).

434

See generally Stephan Landsman, The Civil Jury in America: Scenes from an Unappreciated History, 44 HASTINGS L.J. 579, 607 (1993); Martin A. Kotler, Reappraising the Jury's Role as Fact Finder, 20 GA. L. REV. 123, 127 (1985); Note: The Changing Role of the Jury in the Nineteenth Century, 74 YALE L.J. 170 (1964).

435

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maintaining uniformity of decisions.436 Yet, some of these early criticisms may be

addressed by "expert juries," otherwise known as “blue ribbon” juries, comprised of

citizens with appropriate education and expertise to understand and pass judgment upon

complex technical/legal issues.

This right to jury was closely guarded in patent law until the Supreme Court's

recent controversial Markman decision in 1996,437 where claim interpretation was

deemed to be a matter of law for the court. This determination was consistent with policy

objectives of uniformity and predictability of judgment 438 and "foster[ing of]

technological growth and industrial innovation."439 However, the Markman decision

confirmed a litigant's right to jury trial for patent infringement cases, or other intellectual

property cases involving damages, subsequent to the court's Markman hearing to

determine the scope of claim interpretation.440 Thus, the right to a jury trial in intellectual

property cases remains protected by both the U.S. Constitution's Seventh Amendment

and the Supreme Court's Markman decision, in spite of the enormous factual and legal

complexity that high technology cases bring to lay jury panels nationwide.

While the Supreme Court has not yet decided the constitutionality of whether a

"complexity exception" exists in federal courts to enable a court to withdraw complex

cases from jury consideration, Justice White, in Ross v. Bernhard, noted that the scope of

Seventh Amendment protection of one's right to jury trial must consider "the practical

abilities and limitations of juries[;]" and the due process clause may require a bench trial

436

See Markman, 517 U.S. 370, 38 U.S.P.Q.2d 1461 (the Court noting "uniformity would, however, be ill served by submitting issues of document construction to juries." Id. at 391).

JEROLD S. AUERBACH, UNEQUAL JUSTICE: LAWYERS AND SOCIAL CHANGE IN MODERN AMERICA 74-101 (1976) (maintaining that the late nineteeth century saw a transformation towards law as a "scientific enterprise"). 437

438 517 U.S. 390-91, 38 U.S.P.Q.2d 1470-71. 517 U.S. 390, 38 U.S.P.Q.2d 1471 (citing H.R. Rep. No. 97-312, at 20-23). 439

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in "exceptional cases." 441 Since jury award verdicts for damages have ranged as high as

$20 million to over $1 billion to protect patent holders from infringement by competitors,

corporations have high stakes investments in the sometimes uncertain outcomes of lay

jury determinations.442

1. The problem with lay juries

Some argue that traditional juries, drawn from a “cross-section of society,"

should be permitted to retain their fact-finding function in all cases, rather than having

courts relegate this duty to "blue ribbon" expert juries.443 However, Chief Justice Warren

E. Burger has criticized lay jurors for their inability to understand issues and evidence in

technically complex cases, stating, "the masses of complicated technical information. . .

combined with the often difficult legal issues involved, strain the abilities of the juries to

find facts competently."444

440 517 U.S. 390-91, 38 U.S.P.Q.2d 1470-71. 441 Ross v. Bernhard, 396 U.S. 531, 538 n.10 (1970); See Joseph Sanders, Scientific Validity, Admissibility, and Mass Torts After Daubert, 78 MINN. L. REV. 1387, 1439-40 (1994) (advocating the use of blue ribbon juries in scientifically complex cases); Keith Broyles, Taking the Courtroom into the Classroom: A Proposal for Educating the Lay Juror in Complex Litigation Cases, 64 GEO. WASH. L. REV. 714, 716 (1996) (noting that "some courts address the concern of juror competence by reading a complexity exception into the Seventh Amendment jury trial right" on due process grounds). 442 See Litton Sys., Inc. v. Honeywell, 87 F.3d 1559, 1576, 39 U.S.P.Q.2d (BNA) 1321, 1332 (Fed.Cir. 1996) (granting a jury award of $1.2 billion that was later set aside), vacated, 520 U.S. 1111 (1997). See Steven B. Judlowe & Lee A. Goldberg, Jury Trials in Patent Litigation in PATENT LITIGATION 173, 175 (PLI Patents, Copyrights, Trademarks, and Literary Property Course Handbook Series No. 397, 1994) (noting patent damage awards of between about $20 million to almost $900 million from 1982 to 1992).

,

443 See, e.g., Susan W. Brenner, The Voice of the Community: A Case for Grand Jury Independence, 3 VA. J. SOC. POL'Y & L. 67, 119 (1955) (observing that "the grand jurors' lack of professional expertise" gave a community common sense perspective); Ballard v. United States, 329 U.S. 187, 191 (1946) (holding that the Sixth Amendment right to a jury in criminal trials requires that juries be chosen from "a fair cross-section" of the community). But see generally, e.g., Jeanette E. Thatcher, Why Not Use that Special Jury?, 31 MINN. L. REV. 232 (1947); Richard C. Baker, In Defense of the 'Blue Ribbon' Jury, 35 IOWA L. REV. 409, 410 (1950) [hereinafter Baker, Blue Ribbon Jury]. 444 Burger Suggests Waiving Juries in Complex Civil Trials, NAT'L L.J., Aug. 13, 1979, at 21; Warren E. Burger, THE USE OF LAY JURORS IN COMPLICATED CIVIL CASES, REMARKS TO THE CONFERENCE OF STATE CHIEF JUSTICES 3-5 (Aug. 7, 1979) (remarking that lay jurors fail to understand technical evidence); John Guinther, THE JURY IN AMERICA 211 (1988) (noting the Justice Burger's statements in the Federal Judicial Center commentary).

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Numerous studies have documented the incompetence of lay juries in deciding

cases involving highly complex issues of fact or law.445 In one representative study

involving an economic science case, researchers concluded, "the jurors were

overwhelmed, frustrated and confused by testimony well beyond their

comprehension."446 Research has established that comprehension and memory of

traditional lay jurors in complex cases are inadequate, in part, because lay people tend to

remember a few general impressions of these cases rather than a logical and coherent

organizational pattern incorporating specific details.447 In battles between expert

witnesses in complex cases, where conflicting expert testimony is presented, lay jurors

become understandably confused.448 For this reason, lay jurors often err by either

overlyrelying upon, or under-utilizing, such expert testimony.449

Observers have noted that lay jurors, charged with fact finding in complex

technology cases, evaluate the facts utilizing "their own attitudes, values, prejudices, and

emotions."450 Most jury panels are comprised of citizens with solely a high school

education, with limited comprehension of science and technology451 or legal principles.452

Dan Drazan, The Case for Special Juries in Toxic Tort Litigation, 72 JUDICATURE 292, 295 (1989) [Drazan, Special Juries in Toxic Tort Litigation] (noting most jurors have only a high school education and may not comprehend complex technical evidence). See also Amiram Elwork et al., Toward

445 See generally, e.g., Michael J. Saks & Robert F. Kidd, Human Information Processing and Adjudication: Trial by Heuristics, 15 LAW & SOC. REV. 123, 149 (1980-81) (describing lay juror judgment errors when confronting complex information). 446Arthur Austin, The Jury System at Risk from Complexity, the New Media, and Deviancy, 73 DENV. U. L. REV. 51, 54 (1995) (the author noting, "at no time did any jury grasp—even at the margins—the law, the economics, or any other testimony related to the allegations or defense"). 447 See MOLLY SELVIN & LARRY PICUS, THE DEBATE OVER JURY PERFORMANCE: OBSERVATIONS FROM A RECENT ASBESTOS CASE 45-46 (1987). 448 See Jane Goodman, Edit Greene & F. Loftus, What Confuses Jurors in Complex Cases: Judges and Jurors Outline the Problems, TRIAL 65-66, 69 (Nov. 1988). 449 See David L. Faigmen & A.J. Baglioni, Jr., Bayes Theorem in the Trial Process, 12 LAW & HUM. BEHAV. 1, 13 (1988). 450 Kidd and Coach, Patents and Jury Trials, 2 J. PROPRIETARY RIGHTS 17 (1990). See also, Martin H. Redish, Seventh Amendment Right to Jury Trial: A Study in the Irrationality of Rational Decision Making, 70 NW. U. L. REV. 486, 504-05 (1975) (probing competence of jury members in complex cases). 451

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Regarding the jury's incompetence in highly complex or technical cases, one court noted,

"One who has never studied a science cannot understand or appreciate its intricacies. . . .

[T]he jury [possesses] a vast power to commit error and do mischief. . . with technical

burdens far beyond its ability to perform."453 One commentator comments, "the jury

does not simply find 'facts,' it invents facts," because "facts" are socially constructed and

inextricably colored by the race, gender, and class of the jurors assessing them.454 Thus,

the lay jury is particularly vulnerable to becoming ensnared in the tangled web of

scientific complexity confronting it in high technology intellectual property cases.

Unfortunately, the adversarial system encourages attorneys to utilize trial tactics

that capitalize upon these juror weaknesses rather than seeking objective justice, often

intentionally clouding, rather than clarifying, pertinent technical facts and law.455

Correspondingly, commentators have noted that lawyers in our "winner take all"

adversarial system may purposefully select less educated citizens for their jury panels in

attempts to ensure that such triers of fact are unable to accurately assess the merits of

highly complex matters.456 Hence, former Chief Justice Warren Burger suggested that in

Understandable Jury Instructions, 65 JUDICATURE 433 (1982) (studies revealing that juror comprehension of jury instructions is less than fifty percent). 452 See Skidmore v. Baltimore & O.R. Co., 167 F.2d 54, 69 (2d Cir. 1948) (quoting remarks from Edson R. Sunderland, Verdicts, General and Special, 29 YALE L.J. 253 (1920) (The Second Circuit noted, "While the jury can contribute nothing of value so far as the law is concerned, it has infinite capacity for mischief, for twelve men can easily misunderstand more law in a minute than a judge can explain in an hour."). 453 Id. at 60-61. 454 Lawrence M. Friedman, Article: Some Notes on the Civil Jury in Historical Perspective, 48 DEPAUL L. REV. 201, 216 (1998) (noting that the subjectivity and distortions of a lay jury's factual evaluation justify selecting a blue ribbon jury instead, where members are "more impartial, more intelligent than people scooped off the streets." at 216). 455 See Marcus Gleisser, JURIES AND JUSTICE 253-54 (1968) (noting experienced litigators capitalize on juror emotions and prejudices, clouding issues to win their cases). 456 See generally Douglas Ell, The Right to an Incompetent Jury: Protracted Commercial Litigation and the Seventh Amendment, 10 CONN. L. REV. 775, 781 (1978); Rita Sutton, A More Rational Approach to Complex Civil Litigation in the Federal Courts: The Special Jury, 1990 U. CHI. LEGAL F. 575, 577-78 (1990) (noting that well-educated jurors may be excluded from selection).

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the absence of an educated jury, judges instead should act as fact finders in complex

cases involving highly technical facts that would confuse most juries.457

Similarly, Federal Circuit Judge Howard Markey noted that jury trial advocates,

"never cite[] empirical evidence that each of more than 500 trial judges can be guaranteed

to reach more ‘correct’ judgments than those entered on jury verdicts" in complex patent

cases.458 In fact, some circuits have determined that cases, such as those occurring in

intellectual property arenas, may be overly complex for a lay jury to competently

comprehend the evidence and the law when three factors exist. These factors are: (1) the

case size, volume of evidence, anticipated trial length, and/or applicable legal rules

themselves, which give the case the attributes of unmanageable complexity; (2) the extent

of factual and legal inquiry involved, including the amount of expert testimony, is

significant; and (3) the court's inability to tangibly simplify case complexity for jury

understanding by partitioning it into discrete manageable segments.459 However, even a

generalist federal court judge, considered among the well-educated elite of society, may

lack sufficient specific knowledge and understanding of the complexities of modern

technologies encountered in intellectual property and other fields.460

2. Blue Ribbon juries as a solution

“Blue Ribbon” expert jury panels consisting of scientifically sophisticated

members who comprehend technologically complex concepts may provide more fair,

more consistent results in intellectual property, toxic tort, medical malpractice, or other

457 See Burger Suggests Waiving Juries in Complex Civil Trials, NATIONL LAWJOURNAL Aug. 1979, at 21; Warren Burger, Is Our Jury System Working?, 118 READERS DIGEST. 126 (February 1981). 458 Howard T. Markey, On Simplifying Patent Trials, 116 F.R.D. 369, 372 (1987). 459 See In re Japanese Elec. Prod. Antitrust Litig., 631 F.2d 1069, 1086-88 (3d. Cir. 1980). 460 See supra Part III.A. (noting generalist judges may lack competence to comprehend technical cases).

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technologically challenging cases.461 These "blue ribbon" juries were prevalent in the

first half of the twentieth century and are still utilized today to a limited extent in regions

of the United States.462 They are also used in Great Britain,463 where jury panels are

typically derived from members from given professions or trades.464

A "blue ribbon" jury panel is not randomly selected from a societal cross-section

reflected in voter registration or drivers' license lists, tax records, or telephone

directories.465 Instead, jurors are chosen from a pool of individuals who possess the

appropriate educational background, professional training, and/or other pertinent

experience to render informed opinions on complex matters.466 For example, Judge

Rubin recommended a “blue ribbon” jury either comprised of persons with technical

training in the field or of individuals with formal general education in a products liability

case.467 For highly complex technical cases, such as those in intellectual property law,

the professional "blue ribbon" jury might be comprised of individuals with specific

training in the particular technical field at issue in the case (e.g., Internet, engineering,

biotechnology). Depending on the court's applicable state statutes, such professional

461 See Graham C. Lilly, Article: The Decline of the American Jury, 72, U. COLO. L. REV. 53, 84-85 (2001) (noting that a special jury of experts might be empaneled to consider cases involving economic, medical, or scientific evidence, balancing "the litigants' right to a jury trial [with] their equally important right to a fair trial"). 462 See Baker, Blue Ribbon' Jury, supra note 443. 463 See Warren E. Burger, Agenda for Change, 54 JUDICATURE 232, 235 (1971) (commenting that British courts utilize expert rather than lay jurors in complex civil litigation). 464 See generally James C. Oldham, The Origins of the Special Jury, 50 U. CHI. L. REV. 137 (1983) (noting that special professional juries in early England were specifically recruited from a pool of the clergy, restaurant workers, law office personnel, or booksellers, depending on the case considered). 465 See ARTHUR T. VANDERBILT, JUDGES & JURORS: THEIR FUNCTIONS, QUALIFICATIONS, AND SELECTION 70 (1958); 28 U.S.C. § 1863(a)-(b) (1994) (describing the lay jury selection process). 466 See generally Franklin Strier, The Educated Jury: A Proposal for Complex Litigation, 47 DEPAUL L. REV. 49 (1997) (supporting use of jury panels derived from a well-educated citizen pool); Drazan, , supra note 451, at 294. 467 In re Richardson-Merrell, Inc. Bendictin Prods. Liab. Litig., 624 F. Supp. 1212, 1217 (S.D. Ohio 1985), aff'd, 857 F.2d 290 (6th Cir. 1988), cert. denied, 488 U.S. 1006 (1989) (the plaintiffs considering a blue jury trial option, but ultimately electing to try the case before a regular jury).

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juries may be utilized on motion by one or both parties to the litigation. In addition to

use of a "full blue ribbon jury," selection of a "partial blue ribbon jury," consisting of

equal number of jurors drawn from a “blue ribbon” pool and a regular pool may be

considered as a modification of existing structure.468 Deployment of either "full" or

"partial" special juries could provide sufficient expertise and comprehension necessary

for the jury to make informed decisions regarding complex issues of fact.

The Supreme Court upheld the use of these special professional juries in Fay v.

New York.469 Similarly, the Court, in Taylor v. Louisiana, noted that proportional

representation, lacking in “blue ribbon” juries, did not impede the requirement that a jury

represent a fair cross section of the community.470 Consistent with Fay and Taylor, the

constitutionality of the use of the “blue ribbon” jury system has been generally upheld in

the circuits.471 While federal courts are authorized to utilize professional juries on

consent of both parties,472 general expansion of the routine usage of "blue ribbon" juries

on motion by one party in complex litigation awaits congressional approval.473 States

such as Delaware have authorized the use of "blue ribbon" juries for trying complex

468 See Sanders, From Science to Evidence: The Testimony in the Benedictin Cases, 46 STAN. L. REV. 1, 81 n. 393 (acknowledging Richard Lempert for origination of the concept of a partial blue ribbon jury). 469 See Fay v. New York, 332 U.S. 261, 296 (1947) (indicating Supreme Court approval of New York's use of blue ribbon juries for select cases); Alexander v. Louisiana, 405U.S. 625, 642 (1972) (highlighting that in Fay, the Court approved "New York's special 'blue ribbon' jury system"). 470 Taylor v. Louisiana, 419 U.S. 522, 526, 538 (1975). 471 See, e.g., United States ex rel. Jackson v. Follette, 462 F.2d 1043, 1041 (2d Cir. 1972) (observing that, "Two recent attacks in this circuit on the 'blue-ribbon jury' have failed. (citations omitted) We are not about to overrule both the Supreme Court and two previous panels of this court." (citations omitted)). 472 See Article: Confronting the New Challenges of Scientific Evidence, 108 HARV. L. REV. 1481, 1583, 1596-97 (1995) (describing blue ribbon jury practices); William W. Schwartz & Alan Hirsch, The Modern American Jury: Reflections on Veneration and Distrust, in VERDICT: ASSESSING THE CIVIL JURY SYSTEM 399, 409 n.24 (Robert E. Litan ed., 1993) (noting that judges are authorized to provide that jurors may be selected from individuals with appropriate education and either technical, scientific, or business experience). 473 In re Richardson-Merrill, 624 F. Supp. 1212 (S.D. Ohio 1985), aff'd in part and vacated and remanded in part, 857 F.2d 290 (6th Cir. 1988), and cert. denied, 488 U.S. 1006, 1217 (1988) (holding that a special "blue ribbon" jury of experts in a complex products liability case would only be permitted with the consent of both parties).

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cases,474 following New York's example utilizing a “blue ribbon” jury comprised of

businessmen and professionals.475

Florida's Dade County has utilized the “blue ribbon” jury system in civil

litigation, selecting members with "a high level of intelligence" to evaluate a damage

award in a case involving burns due to contact with high voltage power lines.476

Likewise, in Jackson v. Follette, the court found that the state's use of a special “blue

ribbon” jury for a criminal trial did not violate defendant's equal protection and due

process rights absent a showing that lack of a particular class was caused by

discrimination.477 Similarly, in State v. Hobbs, a “blue ribbon” jury, consisting of

experienced lawyers as the defendant's peers, was upheld in a case involving alleged

election fraud.478

The Supreme Court's consistent upholding of the constitutionality of New York's

use of “blue ribbon” juries in Fay479 lends support for increased experimental use of such

special juries by state and federal judiciaries in matters of complex litigation. Certainly,

474 DEL. CODE ANN. tit. 10, 4506 (Supp. 1996) (using special juries for complex cases in Delaware courts since 1988); Nance v. Rees, 161 A.2d 795, 801 (Del. 1960) (indicating that while the U.S. Supreme Court has not yet ruled on the constitutionality of the Delaware statute, in Nance, Delaware's highest court has upheld a similar statute.). 475 Fay, 332 U.S. at 270 (upholding the constitutionality of the New York blue ribbon jury by a narrow 5-4 vote). More recently, in United States v. Simoy, the court acknowledged that military courts serve in fact as blue ribbon juries because military court members, by Congressional law, are those "best qualified for the duty by reason of age, education, training, experience, length of service, and judicial temperment. United States v. Simoy, 46 M.J. 592, 606 (1996); (quoting 10 U.S.C. § 825(d)(2)). Military court members are tried by "a panel of their best qualified superiors" rather than by "a jury of their peers.” United States v. Moore, 26 M.J. 692, 699 (1988) (stating that a highly experienced military intelligence office was an appropriate member of the special jury). 476 Florida Power & Light Co. v. Hargrove, 160 Fla. 405, 409 (1948). 477 Jackson v. Follette, 332 F.Supp. 872, 876 (S.D.N.Y. 1971) (citing the Supreme Court in Fay that a "mere showing that a class was not represented in a particular jury is not enough." 332 U.S. at 284); United States ex rel. Fein v. Deegan, 298 F.Supp. 359, 366 (S.D.N.Y. 1967) (holding that use of a blue ribbon jury did not violate a criminal defendant's Sixth Amendment right to an impartial jury nor his Fourteenth Amendment rights to equal protection and due process). 478 In re Schlesinger, 404 Pa. 584, 626 (1961) (noting that "[f]or several years Bench and Bar and public alike have been urging the Courts to obtain blue ribbon juries"). 479 Fay, 332 U.S. 261; Alexander, 405 U.S. 625.

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for court reform to have a consistently significant impact in intellectual property, toxic

tort, product liability, or other technically complex arenas, juries as well as judges should

become more specialized. An anomalous and unbalanced legal system would result from

increased specialization of the judiciary without corresponding specialization of the jury

system. Without jury specialization, litigators may capitalize on the fog of complexity

surrounding high technology cases by attacking the vulnerabilities of lay juries, even if

specialized judges were not susceptible to such tactics. Thus, proactive state jurisdictions

are challenged to assess the potential value of specialized “blue ribbon” juries in high

technology contexts. With successes at the state trial court level, expansion of the usage

of “blue ribbon” juries for complex litigation may be accelerated through congressional

codification into law, and the Supreme Court's ultimate affirmation of the

constitutionality of such jury panels in these unique contexts.480

V. CONCLUSION: UNTANGLING THE TANGLED WEB IN THE COURTS THROUGH

SPECIALIZATION

A “tangled web” of complexity threatens to engulf the federal judicial system in

intellectual property, antitrust, toxic tort, medical malpractice, and other high technology

arenas, as we enter a new "Technological Age " to transition into the next millennium.

The Federal Courts Study Committee concedes that a crisis exists in the federal judiciary,

480 Obstacles to the Supreme Court's ultimate approval of routine use of special blue ribbon juries in complex high technology cases are not insurmountable but nevertheless include (1) the Seventh Amendment which generally proscribes a right to trial by jury, U.S. CONST. amend. VII; (2) the Constitutional "fair cross-section" requirement that a litigant possesses the right to an impartial jury drawn from a cross-section of the community, see Duren v. Missouri, 439 U.S. 357 (1979); and (3) The Jury Selection and Service Act of 1968 imposing the "cross-section" requirement on federal juries. 28 U.S.C. 1861 (1994). Since the Seventh Amendment does not directly apply to the states, state courts may experiment more freely than federal courts with special juries. See 6 james WM. Moore et al., MOORE'S FEDERAL PRACTICE, # 38.11 (3d ed. 2000). See Rita Sutton, A More Rational Approach to Complex Civil Litigation in the Federal Courts: The Special Jury, 1990 U. CHI. LEGAL F. 575, 593 (suggesting that

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particularly at the appellate levels, that must be addressed through court reform.481

Similarly, the American Bar Foundation, in acknowledging court difficulties, supports

specialization within the federal courts, particularly in the appellate system, to handle the

growing, unmanageable crisis of caseload volume.482 Untangling this “tangled web” in

the federal court system is not a simple task. However, high technology proponents, such

as those in Internet and other newly evolving arenas, may look optimistically towards

increased specialization in the federal courts and in international forums as a means for

solving the complexity problem—at least in part.

Certainly successes by the Federal Circuit in establishing uniformity of law

indicates that the "clear experiment," as Judge Michel calls it, of this semi-specialized

Article III court has exceeded expectations, suggesting that greater specialization within

the federal courts would be met with similar successes.483 Thus, greater use is advocated

of specialist judges, technical advisors, scientific expert witnesses, “blue ribbon” expert

jury panels, specialist federal judiciaries, or other approaches to provide necessary

specialization within the judiciary to meet evolving challenges of the future.

Congress could amend the federal Jury Selection and Service Act "to eliminate the [cross-section] requirement in complex civil litigation," allowing for use of special college-educated juries). 481 Report of the Federal Courts Study Committee, 1990, at 109-10 ("However people may view other aspects of the federal judiciary, few deny that it appellate courts are in a 'crisis of volume' that has transformed them from the institutions they were even a generation ago."). See also S. REP. NO. 781, 90th Cong. (1967) (creating the Federal Judicial Center for examination of court reform proposals); Richard A. Posner, THE FEDERAL COURTS: CRISIS AND REFORM 14 (1985) (noting that federal appellate courts have increased their dockets at an alarming rate that is more difficult to address than growth in the district courts). 482 See American Bar Foundation, Accommodating the Workload of the United States Courts of Appeals 5 (Am. B. Found., 1968) (supporting creation of courts of appeals with subject matter jurisdiction to address the crisis of increasing appellate workload). 483 See Michel, Review of Federal Circuit Decisions, supra note 9, at 1178. (noting that the creation of the Federal Circuit in 1982 by Congress—as the nation's first subject matter appellate court—was "clearly an experiment," and further comments that "[i]t may be too soon to tell whether this experiment of specific subject matter jurisdiction is over.").

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Court reform through increased specialization should better equip the judiciary to

meet the challenges of its evolving responsibilities. The judicial system has the potential

to progress and transform itself through proactive judges who often assume responsibility

for exploring the frontiers of legal doctrine in the context of competing societal policies

in the absence of definitive precedent or legislative guidance.484 It is predicted that

increased specialization within the judiciary will result in greater comprehension of

technologically complex cases; enhanced nationwide uniformity of law; greater quality,

accuracy, precision, and predictability of judgment; decreased numbers of circuit splits;

diminished indeterminancy; significant improvements in judicial efficiency and

economy; and measureable subjective satisfaction with the court system.485 Further

experimentation and studies are necessary to investigate the utility of various modes of

increased specialization in achieving the various policy objectives of intellectual property

law in the advancement of science.

An Evaluation Committee may be formed to determine and examine various

objective and subjective factors in a blueprint for the organized assessment of the

effectiveness of court reform. Specialization within the lower tier of federal courts

should reduce burdens on the Federal Circuit and the United States Supreme Court to

resolve appellate circuit splits that may concern intricately complex technological issues.

484 Peter S. Menell, The Challenges of Reforming Intellectual Property Protection for Computer Software, 94 COLUM. L. REV. 2644, 2651-54 (1994). (The political economy of reforming intellectual property law to accommodate new technologies creates a particularly perplexing dilemma. From the standpoint of a political economist, the opportunity for comprehensive reform is most propitious before interest groups form around a new technology. Unfortunately, policymakers usually do not have sufficient understanding of the property regime during this nascent stage of development. Policymakers thus are left in the awkward position of either creating a regime before they adequately understand the problem or, , waiting until the contours of the problem emerge, at which point economic interests have vested and reform, if it is possible at all, is severely constrained).

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The Supreme Court could then properly focus its attention upon high technology

intellectual property arenas to accept certiorari for cases that would permit establishment

of essential broad-based policies in exponentially expanding areas of patent, copyright,

and trademark law. The Supreme Court, Congress, the Federal Circuit, and other federal

courts have the unique challenges and opportunities associated with growth in novel high

technology frontiers in establishing and enforcing laws and policies that promote

"Progress in Science and the Useful Arts." Significant court reform through

implemention of increased specialization within the federal judiciary should support the

courts in meeting these constitutionally-mandated objectives.

485 See PAUL D. CARRINGTON ET AL., JUSTICE ON APPEAL 174 (1976). The authors noted that Judge Learned Hand himself assigned specialized judges within his Second Circuit for complex matters,and advocated specialization within the judiciary.

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