Taming Patent: Six Steps for Surviving Scary Patent Cases


This Article mainly is for federal district judges, who keenly appreciate how modern patent law challenges their competence. The Supreme Court's 1996 Markman decision requires district judges to make highly scientific and technological decisions in patent cases. But these judges typically have no background in science or technology at all. This Article surveys six concrete steps judges should consider for coping with this stressful situation-steps that the parties may not disclose, because it may not be in their interest to do so. (1) Maximize the value of adversarial education by considering educational vehicles that other judges have praised. (2) Respect ethical limits on judicial education options. (3) Consider courtappointed experts under Rule 706 of the Federal Rules of Evidence, an option 80 percent of judges have never tried but one that is effective according to the judges who have. (4) Consider court-appointed technical advisors, especially now that the Federal Circuit's 2002 TechSearch decision has given guidance about this uncommon but promising alternative. (5) Consider a patent special master: a way to hire an experienced patent law expert to supplement the court's regular law clerks. (6) Recite and obey the Vitronics mantra to avoid a pitfall created by the Federal Circuit.

This Article also is for federal appellate judges. In the wake of the 2002 TechSearch decision, this Article contributes to the national conversation about how appellate courts should think about the little-used procedural office of the technical advisor.

About the Author

Professor of Law, UCLA School of Law (on leave of absence without pay); Judge, Superior Court of California.

By uclalaw