WESTINGHOUSE ELECTRIC CORPORATION Pittsburgh, PA Clement L. McHale General Patent Counsel WEYERHAUSER COMPANY Tacoma, Washington Patrick D. Coogan Patent Counsel XEROX CORPORATION Ronald Zibelli General Patent Counsel Mr. KASTENMEIER. Thank you very much, Ms. Newman. Let me be sure I understand you. With reference to the issue raised by Mr. Neuman which you also addressed, to wit that a special court or a national court dealing with patent appeals would be more likely to have a point of view about sustaining patents or not, and indeed Mr. Neuman suggested that the projected court would more likely, be pro patent. Your answer is not that that is not so, but rather that jurisprudence deriving from circuit after circuit tends to undercut patents and that a centralized court would be more understanding, would give consistent interpretations, would be more upholding of the patents, and would give more value to the patents. Is that more or less what you have said? Ms. NEWMAN. Yes. I think the aspect of the value to patents which would flow from a perception on the part of the practitioner of a consistent application of the law-both application of the law and interpretation of the facts-by a court which is experienced in handling technological matters would have that eventual result. For those of us who spend as much time within our day-to-day activities seeking the strengths and weaknesses of adversely held patents as we seek the strengths of our own, I feel that this perception of a consistent approach would have an impact on the decisions which are made based on an estimate of the value of the patent property. Mr. KASTENMEIER. The reason I inquired further is only to make sure I understand you. Your point is not that the forum substantively will tilt in one direction or another. It is not that the new forum represents substantive change, but rather would contribute to consistency and predictability which in and of itself would be supportive of the patent system, and of investment in research, and of all of the other things you and Mr. Witte were speaking of; is that correct? Ms. NEWMAN. Yes, it is; and it is our current perception of the approach of the court of Customs and Patent Appeals which has supported this belief. Mr. KASTENMEIER. Mr. Banner, you indicated, if I recollect, that reexamination will help but not eliminate difficulties. Put another way, would you say that with passage of reexamination legislation, the need for a National Court of Patent Appeals is less necessary than would otherwise have been the case? Mr. BANNER. No, sir. I don't think it is less necessary at all. Mr. KASTENMEIER. Because that was the point I think Mr. Neuman made, and if you say reexamination will help I am trying to understand the context in which you suggest it will help. Mr. BANNER. As I said, the recommendation which we made at the beginning of the Domestic Policy Review was a dual one, a related one; one was reexamination and the other was the centralized court. The reexamination is a procedure by which the patent is, let us say, properly examined, examined with repect to more art than it was the first time. It would be nice if we could have a patent system in which reexamination was not necessary since all patents when they are issued would have had the benefit of consideration of all prior art. Be that as it may, we now, with reexamination, will have a system in which some art which otherwise may have had to be tested vis-a-vis the patent in the district court can now be tested in the Patent and Trademark Office and that is a very positive thing. To the extent that that eliminates arguments in the district court, and some small arguments in the court of appeals, that is positive. The courts of appeal, however, would not particularly be affected by that because typically judgments of that type are judgments in which the court below makes a ruling on a factual issue. But then there are issues that go to another aspect of this discussion, is obviousness a question of fact or law. It is a difference of opinion in different circuits, as is synergism. After you have settled the problem of obviousness with respect to coming out of the reexamination process, you now have a patent that has been reexamined at least, and the Patent Office says it is not obvious. Another question in some circuits and not in others is that we do have to have synergism and so, as I say, this court is still very much a necessary improvement I think we are talking about here. Mr. KASTENMEIER. Thank you. I must say to the distinguished panels, both of them I hope, that the desirability or not of this legislation will not depend on their understanding of obviousness, synergism, or Graham v. Deere, because I am afraid we may not be able to quite reduce all of those things to a sufficient understanding to necessarily base our view on this legislation this morning. Let me ask you, Mr. Banner, about one suggestion Mr. Neuman made. Viewing it somewhat apart from the legislation, Mr. Neuman suggested that if forum shopping were a question it could be eliminated by an amendment which he himself suggested, which, as I understand it, he said there should be added a simple amendment which requires a patent owner to avail himself of section 1400(b) within a reasonable period, 30 or 60 days, and give notice of infringement. Upon his failure to do so the person accused of infringement may proceed under the Declaratory Judgments Act and select the forum. Are you familiar with that and how does it strike you? Mr. BANNER. No, sir. I am sorry. I am not familiar with the proposal. Mr. Remington provided me a copy just a few moments ago, but I have really not had a chance to look at it. Mr. KASTENMEIER. Then it would not be fair to ask for your comments. To the extent that you might subsequently have a comment, we would invite your response. Mr. BANNER. Thank you. Mr. KASTENMEIER. I do want to compliment this panel. Particularly, I thought Ms. Newman restated the case, which I think largely had been lost upon the subcommittee which has been looking at the technical aspects of the case that was stated in 1979 and 1980 for the creation of this court; she reminded us that it is not merely for the patent lawyers themselves but for the industrial and research organizations of this country upon whom we depend for advances in technology and for economic competitiveness with the world that this was in the first place suggested. Therefore, if it serves that end it has to be given great weight whether or not we approve this legislation. I wanted to ask the question again for the committee about the position of bar associations. I should have asked Mr. Zelenko this question. Last year and in this year, as I understand it, the ALPA supported the proposal to create this court; clearly, however, some of its members do not. But it as an organization does. The ABA as an organization does not, although many of its members do. We also understand that. Can you elaborate on the ABA sections? The section on patent and trademark and copyright laws, was that section overruled by the Bar Association at the annual convention. What is the breakdown within the American Bar Association in terms of the views of various sections about this legislation? Mr. BANNER. I think it would be more accurate to say that the section was not overruled but the section of patent and trademark and copyright law, which incidentally is the oldest section to have a specialized part of the law in the ABA, has as its membership primarily, almost exclusively, people who spend most of their time in patents, trademarks, and copyrights. That is the place where the people who are most familiar with that aspect of the law belong. Obviously many of us are also members of other sections, but that is not relevant here. However, the section of patent, trademark and copyright law, like all other sections of the American Bar Association, does not speak for the American Bar Association. If it has a view on any subject, it must speak, if at all, through the American Bar Associ ation. The American Bar Association has given the section the right to speak directly on certain points which are more administrative, things like that. But as a general rule on a point like this, the section does not speak, the whole group would speak, and in this case, as I understand it, the House of Delegates adopted the view opposing the legislation. Mr. KASTENMEIER. Since the House of Delegates has adopted a view, that does represent the ABA position. Mr. BANNER. That is my understanding, sir. Mr. KASTENMEIER. Does the gentleman from Massachusetts have any questions? Mr. FRANK. No. Mr. KASTENMEIER. I take note of his presence and appreciate it. My last question, and it is a tangential one, goes to trademarks. Should trademarks, in your view, be included or not? Mr. BANNER. In my view it is better not to include trademarks, sir. Mr. KASTENMEIER. Do either of the other witnesses have a point of view? Mr. WITTE. Trademarks should be excluded, in my view. Different problems; different things. Mr. KASTENMEIER. Would you change the jurisdiction at all if you had your own way about the jurisdiction of this particular court of appeals for the Federal circuit? In any respect? Mr. BANNER. I don't think I would, sir. Ms. NEWMAN. I think our feeling is that we would like to solve the major, most difficult problem which we perceive, and one of the problems which the proposed court sought to approach with respect to uniformity among the Federal courts handling patent appeals. Although from the viewpoint of a specialized bar we may, on balance, sense that the advantages of such a national court should not be unavailable to other specialized areas of the law, I think that we would be uncomfortable ourselves in urging it. Mr. KASTENMEIER. Another question is that as far as intellectual property generally is concerned, would this be a suitable forum not only for trademarks, but potentially could it be extended to copyright, copyright in the sense that we may have problems with the Copyright Royalty Tribunal. We have problems where that jurisdiction might go. Would this be a suitable forum? It might not be we might have to consider this in some context or another. Mr. BANNER. Yes. If I might just comment on the point, sir. It is something many of us have talked about in a very, I am afraid, superficial way. I would not be ready at this time to indicate a strong feeling one way or another. I certainly think, though, it is something that ought to be explored and it may very well be a good idea. Mr. KASTENMEIER. On behalf of the committee, we desire to thank all three of you for your appearance this morning and for the statements you have filed for the record. We appreciate, as I have indicated, particularly the restatement of why the legislation at the outset was considered desirable in terms of the American system of patents and inventions, and where this country should be going in terms of industrial competitiveness. We appreciate your other comments as well as we appreciated the first panel's contribution. That then concludes this morning's hearings and, subject to the call of the Chair, the subcommittee will be adjourned. The hearing record will be left open for 30 days for the submission of any further statements. The comittee stands adjourned. [Whereupon, at 12:20 p.m., the committee adjourned subject to the call of the Chair.] ADDITIONAL STATEMENTS AND LETTERS 1. Michael W. Dolan, Acting Assistant Attorney General, U.S. Department of Justice (April 29, 1981). 2. Professor Daniel J. Meador, University of Virginia Law School (April 13, 1981). 3. Dean Paul D. Carrington, Duke University Law School (April 20, 1981). 4. Charles R. Haworth, Esq. (April 7, 1981). 5. J. Philip Anderegg, Esq. (April 6, 1981). 6. Judge Walter J. Cummings, U.S. Court of Appeals for the 7th Circuit (March 9, 1981). 7. Donald R. Dunner, Esq. (April 28, 1981). 8. A. Leo Levin, Director, Federal Judicial Center (April 29, 1981). 9. James B. Gambrell, Esq. (June 2, 1981). 10. T. E. Sands, Financial Vice President, Big Three Industries, Inc. (April 29, 1981). 11. Charles E. Brown, Esq. (April 24, 1981). 12. Adrian M. Foley, Jr., Esq. (April 6, 1981). 13. Arthur H. Seidel, Esq. (April 8, 1981). 14. Hugh Q. Gottschalk, Esq. (April 2, 1981). 15. Kevin Peterson, Director of Patents, Burroughs Corporation (June 12, 1981). 16. Jack Kinley, J. C. Kinley Company (May 4, 1981). 17. Granger Cook, Jr., Esq. (May 11, 1981). 18. Leo J. Spillane, President, Gulf States Asphalt Co., Inc. (April 30, 1981). 19. Honorable Byron Skelton, Senior Judge, U.S. Court of Claims (March 17, 1981). 20. J. E. Kerwin, The Continental Group, Inc. 21. John E. Maurer, Director, Patent Department, Monsanto (March 20, 1981). 22. Wallace F. Neyerlin, Manager, Patent and Licensing Dept., The Lummus Company (June 18, 1981). 23. Joseph J. Kelly, Assoc. Patent Counsel, Johns-Manville Corp. (June 15, 1981). 24. Alan D. Lourie, Vice President, Corporate Patents, Smith-Kline Corporation (June 15, 1981). 25. R. P. Auber, Director, Patent, TM & Copyright Law, American Can Company (June 16, 1981). 26. Eldon H. Luther, Vice President, Corporate Patent Counsel, Combustion Engineering (March 31, 1981). 27. W. S. Thompson, Manager, Patent Department, Caterpillar Tractor Co. (April 3, 1981). 28. The Chemical Manufacturers Association (April 7, 1981). 29. The American Chemical Society (April 7, 1981). 30. Patent Law Association of Chicago (April 15, 1981). 31. Committee on Patents of The Association of the Bar of the City of New York (April 15, 1981). 32. National Association of Manufacturers (April 28, 1981). 33. The United States Trademark Association (April 29, 1981). 34. Beckman Instruments, Inc. (June 19, 1981). |