How the SHIELD Act Takes Aim At the ‘Heart of Justice’


Joseph Schuman
April 8, 2013
Patent Law Courtroom

There is a certain weariness you hear from judges who actually run the patent-infringement litigation system when asked about the perennial political brawls over patent policy.

“I think it’s important for the congress to observe the physician’s oath of at least ‘do no harm,’” Judge Paul Michel, retired chief judge of the Federal Circuit, said recently when asked about the SHIELD Act currently circulating on Capitol Hill.

Officially known as the Saving High-tech Innovators from Egregious Legal Disputes Act, it is nominally aimed at curbing frivolous patent litigation. But a growing consensus of serious thinkers in the trenches of real-world patent policy feels the bill tackles an overhyped problem by dangerously weakening a system that throughout U.S. history has nurtured innovation and invention by protecting the rights of inventors.

“I think the shield act would do vastly more harm than good and that it’s entirely unnecessary,” Judge Michel said during a panel discussion in Washington sponsored by the publication Managing Intellectual Property. “The problem of abusive litigation tactics can be efficiently handled by existing authorities under the patent act and the federal rules of civil procedure. It’s just up to the judges and the parties to focus on that and employ them where they fit. It interferes with the independence of judges to decide the merits of individual cases on their facts.”

“That’s the heart of justice in America and every other advanced country,” Michel added. It’s “that judges who are neutral arbiters decide cases based on the facts and the evidence and the law, not who has the biggest lobbying operation. That seems to be what Congress is more interested in.”

Michel notes that during the seven years of legislative wrangling that produced the last big overhaul of patent law, members of Congress and their staff sought almost no input from the sitting judges most familiar with what works and doesn’t work in the system. Instead, as now, lobbyists seem to set the direction for debate.

“What needs to happen is for the policy discussion to shift from being based on propaganda and overstated claims reflecting the bottom line of various groups of companies to be a real debate on policy, on the merits based on facts, based on statistics, based on studies, based on analysis, based on what’s good for the system, what’s good for the country, what does industry overall need” rather than any one industrial sector, Michel said. “No one is going to have a patent system of their dreams because if they did it would be terrible for everybody else.”

Michel said he stepped down from the bench three years ago in part to be able to speak freely about intellectual property law and policy, and about a patent system he clearly cares and feels passionate about.

And he does indeed see patent problems Congress should address, most importantly the inadequate budget given to front-line examiners at the U.S. Patent and Trademark Office.

“If we’re going to have the kind of career-long, highly competent, highly respected patent examiners that Europe and Japan have, we’re going to have to pay our patent examiners at all levels of experience much higher salaries in order to attract and keep the talent we need,” he said.

Lest Patent Truth’s readers get the impression this is simply the view of one retired judge looking back at his old endeavors, take note of the following.

Michel’s successor as chief of the Federal Circuit, Judge Randall Rader, also spoke at the Managing IP conference, and was similarly asked if the SHIELD Act is needed to supplement the tools judges currently have to deal with abuses in the system. His response: An emphatic “No!”