This is the fifth in a series of posts recalling what it was like to serve as a law clerk to Judge Julius J. Hoffman from 1967 to 1969.
• My brush with patent law
During my clerkship, I had a memorable encounter with patent law. I’ll explain.
First, a brief introduction to patent law–and how patent litigation has been handled by the federal courts. I know this sounds boring, but it’s actually pretty interesting.
Patent law is a very old doctrine. In the U.S., patents were first acknowledged in the 1787 Constitution. The framers of the U.S. Constitution knew that preserving the rights of authors and inventors was vital if our country was going to succeed. Article I declares that Congress has the power “to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” This clause, attributed to James Madison, was adopted unanimously without debate.
To promote innovation and ensure consistent results throughout the country, Congress went on to give the federal courts the authority to decide any disputes over patents–for example, who was the rightful owner of a patent awarded to a particular invention. Over the years, Congress has enacted a number of laws enforcing copyrights and trademarks as well as patents.
When it comes to patent disputes, federal district judges decide these cases at the trial level. If one or both sides are unhappy with the district judge’s ruling, they can appeal. At the time of my clerkship, appeals were heard by the circuit court of appeals that heard appeals from that district. In our case, that was the U.S. Court of Appeals for the 7th Circuit.
It was widely known that the judges at both the trial level and the appellate level were woefully lacking in the science background needed to decide these often complicated cases. They would therefore rely to some extent on the lawyers who presented the arguments on behalf of their clients. But their rulings were often pretty awful.
In 1968, I remember hearing that about half of all district court rulings on patent cases were overturned by the courts of appeals, but the truth is that very few of the judges at either level were competent at making these decisions.
In 1982, Congress changed things. District judges would continue to decide cases at the trial level, but appeals would be heard by a newly created court, the U.S. Court of Appeals for the Federal Circuit, an appellate court whose judges had a greater knowledge of science and applicable patent law. But during the years of my clerkship, appeals from Judge Hoffman’s patent rulings were still decided by the 7th Circuit Court of Appeals.
On to my story:
At the beginning of my first year as Judge Hoffman’s clerk, the judge distributed his two pending patent cases to my co-clerk, Susan Getzendanner, and me. Susan was the senior clerk. She had already served as Hoffman’s clerk for a year. I was the new and junior clerk. She and I became good friends, and I learned a great deal about clerking for Hoffman, and clerking in general, from her. (Thanks, Susan.)
As the senior clerk (and later the district’s first woman judge), Susan was handed the more difficult case, one that involved a patent for a TV antenna. I got what I viewed as a still-challenging case, one that involved power tools.
Susan, who was already the mother of one child, announced at some point during the winter that she was expecting her second child in the spring. At first, Hoffman was visibly upset. Would her pregnancy somehow affect his standing in the court statistics? (You remember the judge’s focus on being first in the district court’s statistics, right?)
When it turned out that the baby was due in March and that Susan didn’t intend to take time off before the birth (and almost no time afterward), Hoffman relaxed. After all, in March he would be taking his annual month-long vacation, going off to a luxurious resort, The Breakers in Palm Beach, Florida.
The only problem was the TV-antenna patent case. Hoffman had heard evidence in a bench trial (a trial held without a jury), and he’d expected Susan to write his decision while he was gone in March. So even though, as things turned out, Susan continued to work in chambers during most of March, shortly before Hoffman left on vacation he turned the TV-antenna case over to me.
Although I had already immersed myself in the ins and outs of power tools, that case was extracted from my pile of pending cases, and the TV-antenna case replaced it.
I was dumbstruck when the implications of Hoffman’s decision began to sink in. I had never even taken high school physics (a decision I still regret), but I was now expected to rule on the status of a patent on a TV antenna! The absurdity of having judges who have no scientific training decide patent cases suddenly hit me. I was even more shaken up when I sat down in March, after Hoffman had left for Florida, and began to leaf through the transcript of the bench trial.
I tried to make sense of what had taken place in the courtroom. I struggled with the scientific terminology, reading and re-reading passages of the transcript and the briefs presented by both sides. But I became absolutely livid when I discovered what the judge had done during the course of the trial. At least twice, the patent lawyers had given him the opportunity to hear a clear and simple explanation of the science that was critical to deciding the case–and Hoffman had both times refused to hear it. In his haste to move the trial along (always keeping his statistics in mind), he essentially told the lawyers, “No, no, that’s not necessary. Don’t waste my time. I understand everything you’re saying.”
When I read those passages in the transcript, I felt like screaming. How could he say that, knowing that he was going to dump this case on one of his unsuspecting clerks?
I struggled on, trying to gain some understanding of the science behind TV antennas. I reviewed the briefs filed by both sides and looked at the competing antennas that were stored in the evidence room. I finally threw up my hands and started writing an opinion.
I knew that an earlier opinion by a federal judge in Iowa had ruled against the plaintiff who had claimed infringement in a similar case. The Iowa court ruled that the patent was invalid and therefore was not infringed.
I reviewed the Iowa ruling and decided that I would not be influenced by it. Instead, I would make my own decision. A 1936 ruling by the U.S. Supreme Court (which all lower courts were required to follow) dictated that a patent holder could not assert the validity of a patent that had already been declared invalid in a similar case. But I decided that, although this case was similar to the Iowa case, it was different enough to rule differently.
So even though I was uncertain about the science underlying the parties’ claims, I decided to rule in favor of the plaintiff, the holder of the patent, who claimed that its patent had been infringed. My opinion held that the patent in our case was valid and had been infringed.
When Hoffman returned from Florida, he wasn’t pleased with the decision I wrote, but he filed it anyway. As always, he didn’t publish the opinion, but it can be found as a public record: Civil No. 66-C-567 (N.D. Ill., filed 6/27/1968).
The decision was appealed by both sides, and the 7th Circuit affirmed in part and reversed in part. 422 F.2d 769 (1970). It affirmed my decision that the patent was both valid and infringed.
Guess what happened next. The case ended up going to the U.S. Supreme Court and, believe it or not, became a landmark case in patent law.
Both my opinion and the Seventh Circuit’s opinion had relied on the U.S. Supreme Court ruling from 1936. But the Supreme Court decided to use this case to reverse its own ruling. This meant that we were able to uphold a patent that another court had not.
The Supreme Court decision became a landmark ruling. .University of Illinois Foundation v. Blonder-Tongue Laboratories., Inc., 401 U.S. 313 (1971). Patent attorneys all know this case as “Blonder-Tongue.”
In my wildest dreams, I never suspected that my painfully wrought opinion in the TV-antenna case would wind up in the Supreme Court and be considered, in any way, by the highest court of the land.