Innovation and Recovery

Marquette Intellectual Property Law Review Volume 14 | Issue 2 Article 7 Innovation and Recovery John F. Duffy George Washington University Law School Follow this and additional works at: http://scholarship.law.marquette.edu/iplr Part of the Intellectual Property Commons Repository Citation John F. Duffy, Innovation and Recovery, 14 Intellectual Property L. Rev. 237 (2010). Available at: http://scholarship.law.marquette.edu/iplr/vol14/iss2/7 This Nies Memorial Lecture is brought to you for free and open access by the Journals at Marquette Law Scholarly Commons. It has been accepted for inclusion in Marquette Intellectual Property Law Review by an authorized administrator of Marquette Law Scholarly Commons. For more information, please contact . DUFFY 5-17-10 5/19/2010 2:23 PM THE THIRTEENTH ANNUAL HONORABLE HELEN WILSON NIES MEMORIAL LECTURE IN INTELLECTUAL PROPERTY LAW† INNOVATION AND RECOVERY JOHN F. DUFFY* I. INTRODUCTION ....................................................................................... 237 II. INNOVATION FOR RECOVERY ............................................................. 241 A. The Diversity of Innovation ....................................................... 241 1. Economic Innovation........................................................... 242 2. Regulatory Innovation......................................................... 243 3. Governmental Innovation ................................................... 244 B. Pragmatic Innovation .................................................................. 248 III. RECOVERY AND INNOVATION........................................................... 250 A. Claim Interpretation ................................................................... 252 B. The Paper Patent Doctrine ......................................................... 257 C. Diversity of Innovation and Accommodation of Pioneers ..... 259 D. Patentable Subject Matter .......................................................... 263 IV. CONCLUSION ........................................................................................ 266 I. INTRODUCTION I would like to thank Dean Joseph Kearney and Professor Kali Murray, who invited me to give this lecture, and also the faculty of Marquette Law School for hosting me these few days. I especially appreciate being given the chance to deliver a lecture † Audio of the Thirteenth Annual Honorable Helen Wilson Nies Memorial Lecture in Intellectual Property Law, delivered at Marquette University Law School on October 21, 2009, is available at http://law.marquette.edu/cgi-bin/site.pl?2130&pageID=919. This lecture is delivered each year by a nationally recognized scholar in the field of intellectual property law. The remarks have been edited to reflect subsequent developments. * Oswald Symister Colclough Research Professor of Law, George Washington University Law School. DUFFY 5-17-10 5/19/2010 2:23 PM 238 MARQUETTE INTELLECTUAL PROPERTY LAW REVIEW [Vol. 14:2 named in honor of Judge Helen Nies, as I am a great fan of her work in 1 2 the patent area. Indeed, a recent article of mine traces the Supreme Court’s reengagement in the patent area to the Court’s grant of 3 certiorari in American Airlines v. Lockwood, in which Judge Nies wrote a marvelous dissenting opinion at the Court of Appeals. Her dissent reads very much like a thoughtful and considered brief that was trying to attract Supreme Court review. She focused on a split in circuit authority on the issue in the case and articulated with great expertise the 4 reasons why the issue was important. In a subsequent law review article, Judge Nies explicitly stated her belief that dissents from Federal Circuit opinions could “provide[] an impetus for Supreme Court review,” as “[j]udges disputing a point more likely will pique the Court’s 5 interest than lawyers disputing a point.” She also defended the value of dissenting opinions, stating her conviction that “a judge who disagrees with the majority must make the effort to write a dissent, especially here at the Federal Circuit where dissents are virtually the sole means by which contradicting positions on the law are presented fully and without 6 personal bias to the Supreme Court.” Judge Nies’s dissent in Lockwood was a signal moment in modern patent law, as it marked a watershed in the Federal Circuit’s relationship to the Supreme Court. The Court’s decision in 1994 to 1. During her time as an active sitting Federal Judge from 1980–1994, Judge Nies authored more than 100 opinions on patent related matters. She also wrote a number of law review articles related to intellectual property matters including: Secondary Meaning: An Historical Note, 64 TRADEMARK REP. 247 (1974); The Federal Circuit: A Court for the Future, 41 AM. U.L. REV. 571 (1992); and Dissents at the Federal Circuit and Supreme Court Review, 45 AM. U.L. REV. 1519 (1996) [hereinafter Nies, Dissents at the Federal Circuit]. I am also a fan of Judge Nies’s choice in law clerks. Her former clerk Craig Nard, now a professor at Case Western but once a professor here at Marquette (see the faculty profile for Craig A. Nard at the Case Western Reserve University School of Law, http://law.case.edu/FacultyResearch/MeetOurFaculty/FacultyDetail.aspx?id=139 (last visited Dec. 8, 2009)), is a fine scholar and an excellent co-author. See, e.g., Craig Allen Nard & John F. Duffy, Rethinking Patent Law’s Uniformity Principle, 101 NW. U. L. REV. 1619 (2007); Thomas G. Field, Jr., Craig Allen Nard & John F. Duffy, Dickinson v. Zurko: An Amicus Brief, 4 MARQ. INTELL. PROP. L. REV. 49 (2000). 2. John F. Duffy, The Federal Circuit in the Shadow of the Solicitor General, 78 GEO. WASH. L. REV. 518, 523 (2010) [hereinafter Duffy, Federal Circuit]. 3. See American Airlines v. Lockwood, 515 U.S. 1211 (1995) (order granting certiorari); 515 U.S. 1182 (1995) (order vacating the Federal Circuit’s decision and remanding the case to the district court). 4. In re Lockwood, 50 F.3d 966, 980 (Fed. Cir. 1995) (Nies, J., dissenting from denial of en banc rehearing). 5. Nies, Dissents at the Federal Circuit, supra note 1, at 1520. 6. Id. at 1527. DUFFY 5-17-10 2010] 5/19/2010 2:23 PM INNOVATION AND RECOVERY 239 grant certiorari in Lockwood ushered in a period of renewed interest by the high court on patent law issues. In the first twelve years after the creation of the Federal Circuit (1982–1994), the Supreme Court heard only five patent cases, and those cases were only tangentially related to 7 substantive patent issues. Starting in 1994 and continuing to the present day, the Supreme Court has considered, on average, at least one patent law case per term, with the majority of the cases involving core 8 matters of patent policy. I have devoted attention to Judge Nies’s dissent in Lockwood not merely because it is appropriate to recall the great jurist after whom this lecture was named, but also because my lecture today may be viewed as a dissen (...truncated)