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ARTICLE
THE END OF AN EPITHET? AN EXPLORATION
OF THE USE OF LEGAL SCHOLARSHIP IN
INTELLECTUAL PROPERTY DECISIONS
Lee Petherbridge∗ & David L. Schwartz∗∗
ABSTRACT
The argument that the Federal Circuit is an insular court
lacking in intellectual curiosity has invaded academic discourse
about the court and its jurisprudence. It is rarely used as a
compliment. It is rather used as an epithetic description intended
to have broad explanatory power for nearly any of the many and
glaring limitations that speakers and commentators contend
exist in the court’s body of law. The empirical basis for the
argument comes from a single finding: that between 1996 and
2000 the Second and Ninth Circuit Courts of Appeals referenced
legal scholarship in their decisions in trademark and copyright
cases nearly four times as often as the Federal Circuit referenced
legal scholarship in its decisions in patent cases. While scholars
and others have relied upon this finding to assert that the
Federal Circuit’s performance is intellectually deficient, there are
reasons to question whether that inference is proper. For
instance, it stands in contrast to other observations that suggest
∗ Professor of Law and Richard A. Vachon, S.J. Fellow, Loyola Law School Los
Angeles.
∗∗
Associate Professor of Law, Chicago-Kent College of Law. For helpful comments
and suggestions, we thank Colleen Chien, Kevin Collins, Mark Patterson, Kathy
Strandburg, Oskar Liivak, Kristin Osenga, David Olson, Sapna Kumar, Greg Vetter, Paul
Janicke, Michael Olivas, Jason Rantanen, and Derek Simpson. We thank the Institute for
Intellectual Property & Information Law (IPIL) at the University of Houston Law Center,
Meg Boulware, and the other sponsors of the Institute’s National Conference in Santa Fe.
We also thank Paul Cohen, Crystal Coveney, Laura Foody, Anderson S. Jonas, Lauren
Locke, Matt Robinson, Gagik Stepanyan, Jacek Wnuk, Rose Ohanesian, and Richard
Tuminello for excellent research assistance.
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the Federal Circuit behaves a lot like the regional circuits when it
comes to its relationship to legal scholarship. In this study, we
explore the U.S. Supreme Court’s use of legal scholarship in its
patent, trademark, and copyright jurisprudence. We report evidence
of striking differences in the use of scholarship that depend on
whether a decision concerns patent, trademark, or copyright law.
The Court uses scholarship in patent decisions at a rate of 28%, but
uses it around twice as often in its copyright (67%) and trademark
(53%) decisions. While, moreover, the rates at which the Court uses
legal scholarship in its copyright and trademark decisions are some
of the highest observed in the Court’s entire jurisprudence, the rate
at which the Court uses legal scholarship in its patent decisions is
among the lowest observed. This Article discusses the significance
of these observations to the empirical basis for the epithetic
argument that the Federal Circuit is more insular and lacking in
intellectual curiosity than other circuit courts of appeals.
TABLE OF CONTENTS
I.
INTRODUCTION & BACKGROUND ........................................... 525
II. DESIGN.................................................................................. 534
III. METHODOLOGY ..................................................................... 537
IV. RESULTS & DISCUSSION ....................................................... 539
A. The Court’s Use of Scholarship in IP
Jurisprudence ............................................................... 539
B. IP Jurisprudence Compared to Other
Decision Types ............................................................... 541
C. Cross-Sectional Concerns .............................................. 542
D. Implications .................................................................. 548
1. Differential Use of Legal Scholarship
May Not Determine a Court’s Intellectual
Range or Openness ................................................. 548
2. Other Reasons Patent Decisions Might Draw
Less Judicial Use of Scholarship than
Trademark and Copyright Decisions..................... 549
3. Why do Trademark and Copyright Decisions
Appear to Be Outliers? ........................................... 556
4. Other Explanations & Concerns ............................ 558
V. THE END OF AN EPITHET, FOR NOW? .................................... 560
VI. CONCLUSION ......................................................................... 561
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I.
525
INTRODUCTION & BACKGROUND
Ten years ago, Craig Allen Nard presented a paper to an
audience at the University of Houston’s Institute for Intellectual
Property and Information Law symposium in Santa Fe, New
Mexico, that when published would be called Toward a Cautious
Approach to Obeisance: The Role of Scholarship in Federal Circuit
1
Patent Law Jurisprudence. (“Nard” or “Toward a Cautious
Approach to Obeisance”). The paper went on to become one of the
most influential studies of the Federal Circuit published over the
last decade.
At its core, the paper is perhaps a call for Federal Circuit judges
to use more empirical literature in the legal decisional process.2
However, while the paper contains an informative discussion about
the value that empirical scholarship and economic scholarship might
bring to the legal decisional process in patent cases, and an equally
informative discussion about the limitations of applying such legal
scholarship to the process, it is rarely relied upon for this content.
Instead it is relied upon for a single observation: that between 1996
and 2000, “the Second and Ninth Circuits [in trademark and
copyright decisions] cite scholarship roughly four times as often as
the Federal Circuit [does in its patent decisions].”3
Professor Nard offered several explanations for this finding.
One is that the comparatively high volume of patent cases decided
by the Federal Circuit might mean that it “is more familiar and
comfortable with patent law than the Ninth and Second Circuits
are with trademark and copyright law.”4 Perhaps, therefore, these
regional circuits’ lack of familiarity with trademark and copyright
law “may lead to greater reliance on secondary authority.”5 He also
speculated that perhaps Second and Ninth Circuit judges are more
often drawn from the academy and thus “come from a culture that
is more receptive to academic legal scholarship.”6 Another
explanation suggested was that there is something different about
trademark and copyright scholarship, viz. perhaps there was more
of it from which to choose, that might explain the observed
differences between the Federal Circuit and the Second and Ninth
Circuits.7
1. Craig Allen Nard, Toward a Cautious Approach to Obeisance: The Role of
Scholarship in Federal Circuit Patent Law Jurisprudence, 39 HOUS. L. REV. 667 (2002).
2. Id. at 684.
3. Id. at 682–83.
4. Id. at 683.
5. Id.
6. Id.
7. Id.
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Although no further empirical research was conducted,
Professor Nard’s finding has been often cited by other works,
many of which stretch and amplify its significance—often
brushing aside Professor Nard’s cautious description of his
8
results in the process. Perhaps the most important
amplification of the finding can be found in the National
Research Council of the National Academies publication A
Patent System for the 21st Century. Relying on Toward a
Cautious Approach to Obeisance, it asserts: “[S]pecialized
institutions have insular tendencies. . . . [T]he Federal Circuit
appears to rely less on independent scholarly analysis, even
legal scholarship, than the regional generalist appeals courts.”9
Although it mentions the concern that the observation in
Toward a Cautious Approach to Obeisance might be
susceptible to a different interpretation, it gives the concern no
weight, going on to recommend that the Federal Circuit seek
briefings that “draw upon insights from . . . legal scholarship
on the patent system, and the growing body of patent-related
economics literature.”10 Others have repeated and reinforced
this view. For example, a recently published essay expresses
the concern that “empirical research has show[n] that the
Federal Circuit is less likely than other courts to cite
scholarship in its opinions.”11
Professor Nard’s finding has been used to support a wide
variety of claims about the Federal Circuit and its jurisprudence.
Below we set forth some examples. Our purpose here is to
provide some illustration of how Nard’s finding is employed as a
rhetorical tool—to show how the work has been modalized—not
to name and blame the works we use as examples, nor to
evaluate the broader arguments presented in those works. For
present purposes we are agnostic on that topic.
In the first example, the finding is used to explain why the
Federal Circuit did not articulate an analytical step in an
opinion:
8. Id. at 684–85 (expressing concern that the benefits of using empirical research
not be overstated); id. at 687–89 (describing some of the difficulties the court might
encounter in deciding which research to treat as persuasive).
9. COMM. ON INTELLECTUAL PROP. RIGHTS IN THE KNOWLEDGE-BASED ECON.,
NAT’L RESEARCH COUNCIL OF THE NAT’L ACADEMIES, A PATENT SYSTEM FOR THE 21ST
CENTURY 86 (Stephen A. Merrill et al. eds., 2004) (footnote omitted), available at
http://www.nap.edu/html/patentsystem/0309089107.pdf.
10. Id. (applying Nard’s finding as a general recommendation for briefs before the
court).
11. John R. Thomas, Academics and the Federal Circuit: Is There a Gulf and How
Do We Bridge It?, 15 FED. CIR. B.J. 315, 315–16 (2005) (citing Nard’s 2002 finding).
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Although it may be implied . . . the court does not identify
the particular patent theory it is trying to effectuate. Such
a failure to identify the preferred patent theory is not
surprising, considering the Federal Circuit historically has
shown a lack of interest in patent law scholarship. See
Craig Allen Nard, Toward a Cautious Approach to
Obeisance: The Role of Scholarship in Federal Circuit
Patent Law Jurisprudence, 39 HOUS. L. REV. 667, 678–81
(2002) (demonstrating that scholarship is rarely cited by
12
the Federal Circuit).
In another example, the finding is used to support the
following argument:
Some evidence of the court’s reluctance to take on the
mantle of policy leadership can be found in Craig Nard’s
recent study demonstrating that the Federal Circuit pays
far less attention to legal and economic scholarship than
13
other circuit courts.
In another example, the finding is used to support the
argument:
The end result is a growing skepticism about the court’s
ability to experiment successfully, to adapt its
jurisprudence to changing scientific norms, and to develop a
common law that accurately reflects the patent system’s
varied role in fostering technological innovation. This
constraint becomes more pronounced in light of the court’s
singularness, and also in light of its reluctance to engage
the empirical and social science literature on patent law as
a way to offset its relative institutional disconnectedness
from the various technological communities its decisions
14
affect.
Nor are patent scholars the only ones who have picked up on
the power of the finding that between 1996 and 2000 the Second
12. Christopher A. Cotropia, Patent Claim Interpretation Methodologies and Their
Claim Scope Paradigms, 47 WM. & MARY L. REV. 49, 116 n.353 (2005).
13. Dan L. Burk & Mark A. Lemley, Policy Levers in Patent Law, 89 VA. L. REV.
1575, 1671 (2003). “Nard’s study shows that the Federal Circuit cites less scholarship
than other courts with significant responsibility for intellectual property matters.” Id. at
n.365.
14. Craig Allen Nard & John F. Duffy, Rethinking Patent Law’s Uniformity
Principle, 101 NW. U. L. REV. 1619, 1647–48 (2007) (footnotes omitted). Note 102,
appended to the word “affect,” states:
See Craig Allen Nard, Toward a Cautious Approach to Obeisance: The Role of
Scholarship in Federal Circuit Patent Law Jurisprudence, 39 HOUS. L. REV. 667,
676–83 (2002) (setting forth empirical research demonstrating that, in their
intellectual property cases, the other circuits cite scholarship roughly four times
more frequently than does the Federal Circuit in its patent cases).
Id. at 1648 n.102.
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and Ninth Circuits cited more scholarship in their trademark
and copyright decisions than the Federal Circuit cited in its
patent decisions. The Computer & Communications Industry
Association had this to say in its Brief to the Supreme Court in
eBay Inc. v. MercExchange, LLC:
Through ritual invocation of the patent incentive while
ignoring external precedent, scholarly literature and
empirical economic evidence, the Federal Circuit has proved
not only a booster of patents but a guardian of a lawyer’s
patent system, narrowly focused on the individual case but
blind to the effects of patents on particular fields and
15
indifferent to aggregate economic impact.
Note 3, from the quote, states:
The Federal Circuit’s insularity is confirmed by research
showing its reluctance to cite scholarship or even judicial
decisions other than its own. Craig A. Nard, Toward a
Cautious Approach to Obeisance: The Role of Scholarship in
Federal Circuit Patent Law Jurisprudence, 39 HOUS. L.
16
REV. 667, 678–81 (2002).
Two years later, the Computer & Communications Industry
Association offered the following argument in its Brief to the
Federal Circuit in In re Bilski:
This problem [a lack of a high regard for the public interest
in the patent system’s institutions] is aggravated by the fact
that the Court has also developed a reputation for insularity,
which compounds the limitations of an adversarial process
17
focused on the competing interests of the two parties.
Note 18 states:
See Craig A. Nard, The Future of Patent Law: Toward a
Cautious Approach to Obeisance: The Role of Scholarship in
Federal Circuit Patent Law Jurisprudence, 39 HOUS. L. REV.
667, 692 (2002). See also John R. Thomas, Academics and
the Federal Circuit: Is There a Gulf and How Do We Bridge
18
It? 15 FED. CIR. B.J. 315 (2005-2006).
At the time of the writings mentioned above, Toward a
Cautious Approach to Obeisance represented the only reported
15. Brief for Amicus Curiae Computer & Commc’ns Indus. Ass’n in Support of
Petitioners at 5, eBay Inc. v. MercExchange, LLC, 547 U.S. 388 (2006) (No. 05-130)
(footnote omitted).
16. Id. at n.3.
17. Brief Amicus Curiae of Computer & Commc’ns Indus. Ass’n in Support of
Appellee Director of the U.S. Patent and Trademark Office and Urging Affirmance at 18,
In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (No. 2007-1130).
18. Id. at n.18. The second article cited relies on Nard. See Thomas, supra note 11,
at 315–16.
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observations of the Federal Circuit’s use of scholarship. Professor
Nard’s novel, yet limited, research had come to be treated as
uncontested proof of a broader epithetic19 argument capable of
general application, namely, that the performance of Federal
Circuit judges is intellectually deficient.20 Nor can the pervasiveness
of the argument be underestimated. Today it can often be observed
at meetings of patent academics, and many who read this Article
will be aware of the frequency with which it is raised to explain this
or that dissatisfaction with the Federal Circuit’s jurisprudence.21
The hegemony of this argument is concerning. The reasons
are pretty obvious. To begin with, it encourages disrespect for the
court and for the judges personally. While legal scholars have an
obligation to be skeptical and critical of the governing paradigms
and institutions that define the patent system, the kind of
hostility the epithetic argument engenders is unnecessary. Legal
academics do not need to proceed from a posture that judges are
intellectually uninformed to fulfill their obligations as critical
observers.22 A debate over the performance of the Federal Circuit
can proceed without postulating that the judges are not really
sharp enough to be in the game.
19. Epithetic is used in its technical sense; in this case, pertaining to a phrase
applied to a thing to describe an actual or attributed quality. Epithets may, but need not
be used to derogate or diminish. Describing the argument as epithetic therefore seems
appropriate. One may earnestly believe that the Federal Circuit is “insular and lacking in
intellectual curiosity” and wield the argument in a purely descriptive sense. One might
also use the argument with the purpose to derogate or diminish, or perhaps even more
invectively, or somewhere in between. In any case, the term is appropriate. This Article is
agnostic on the absolute truth of the argument that the Federal Circuit is “insular and
lacking in intellectual curiosity.” Its purpose is much more modest, an examination of the
argument’s published empirical support.
20. See Nard & Duffy, supra note 14, at 1647–48 (suggesting that the Federal
Circuit’s tendency to forego legal scholarship contributes to its “relative institutional
disconnectedness from the various technological communities its decisions affect”).
21. Rochelle Cooper Dreyfuss, The Federal Circuit: A Continuing Experiment in
Specialization, 54 CASE W. RES. L. REV. 769, 772 & n.11 (2004) (reporting that
practitioners and academics raised concerns over the Federal Circuit’s use of scholarship
when she observed them in connection with a reexamination of her seminal work about
the Federal Circuit).
22. Nor is this sort of argument easily cabined to just the Federal Circuit’s patent
jurisprudence. Since most circuit courts of appeals rarely cite legal scholarship (and the
district courts likely even less), this argument can be easily ported to vilify or disparage
any court or judge. See, e.g., David L. Schwartz & Lee Petherbridge, Legal Scholarship
and the United States Court of Appeals for the Federal Circuit: An Empirical Study of a
National Circuit, 26 BERKELEY TECH. L.J. 1561, 1571, 1578 (2011) [hereinafter Schwartz
& Petherbridge, Federal Circuit] (reporting an in-depth study of the use of legal
scholarship by the Federal Circuit and the regional circuits); David L. Schwartz & Lee
Petherbridge, The Use of Legal Scholarship by the Federal Courts of Appeals: An
Empirical Study, 96 CORNELL L. REV. 1345, 1351–52, 1357 (2011) [hereinafter Schwartz
& Petherbridge, Federal Courts of Appeals] (showing the use of scholarship across all the
circuits over a 50-year period).
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The epithetic argument also fosters public disrespect for the
patent system, which presents a similar set of concerns. Legal
scholars should be critical of courts, of the patent office, and of
the whole idea of the patent system. But when the criticism
consists of characterizing the individuals charged with
overseeing the administration of the patent system—at least
the parts of the system that judges can oversee—as lacking in
intellectual firepower, it might encourage private actors to
perceive the patent system in ways that are socially harmful.
For example, it might encourage private actors to be less
willing to respect patents and innovation. Genuine innovators
might be harmed because some set of users of patented
technology that should license become marginally more willing
to ignore a patent and risk litigation, rather than license.
Moreover, when the patent system is characterized as poorly
managed and out of control, that sort of characterization might
encourage the perception that nearly any behavior is
acceptable, including, for example, very speculative and
aggressive theories of patent enforcement. None of the
preceding, of course, means that problems in the patent
system should not be ruthlessly discovered and illuminated.
They should. If the patent system is poorly managed and out of
control, the argument for why that is so should be made.
The problem of the epithetic argument is that it suppresses
useful arguments and observations about limitations in the patent
system and about the Federal Circuit because it encourages
intellectual laziness on the part of observers. It is much easier to
argue that “I’m right because the institutions I’m criticizing are
intellectually limited,” than it is to actually think deeply about what
the real issues are and how the performance of the institutions at
issue have impacted those issues. In this vein, it seems mostly to be
the case that the epithetic argument is an add-on—it is extra
weight on the scale. It is not, so far as we have seen, ever the entire
basis for the argument criticizing the patent system and its
institutions. This is still, however, somewhat troublesome because
the tactic can encourage the belief in a reader (or hearer) that the
argument to which the epithetic argument has been appended is
stronger than it really is.23
A final concern to raise here about the epithetic argument
is that it may be sufficiently hegemonic to chill the expression
of young legal scholars. This point mostly makes itself. Ask
23. In fact, the hegemonic quality of the epithetic argument may be such that
arguments made about the patent system are given its benefit even when the writer or
speaker makes no mention of it.
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yourself when the last time was that you heard an untenured
legal scholar say anything even ambivalent about the Federal
Circuit, much less anything positive. Have you heard young
scholars at meetings argue that the court has worked a “good”
development? Or even an “interesting” one? If the answer is,
“It’s been a long time,” then the next question for a patent
system-knowledgeable observer would be, “Is it really the case
that there have been no developments affecting the patent law
or the patent system, which might be laid at the doorstep of
the Federal Circuit, that are worthy of being made a topic of
study by a young legal academic interested in the patent
system, and which could be so characterized?”
One might have thought the epithetic argument already
adequately confronted. In late 2010, Schwartz & Petherbridge
reported an in-depth study of the use of legal scholarship by
the Federal Circuit and the regional circuits.24 The study used
a novel and large dataset that extends from 1990 until 200825
across all circuit level appellate courts in the federal system.
Considering various measures, such as proportion of reported
opinions citing legal scholarship, median citation per circuit
court judge, and mean citation per circuit court judge, it
observed that the Federal Circuit is not an outlier among
circuit courts in its use of scholarship.26
A line of argument emerged in response to these
observations, however, and to the interpretation given to them
by Schwartz & Petherbridge, which was that because the
Federal Circuit uses legal scholarship like the other circuit
courts of appeals it was not appropriate to infer based on use
of legal scholarship that the Federal Circuit was any more
intellectually limited than any other circuit court.27 Some
maintained that the Nard finding was still appropriate for the
inference because of the way Schwartz & Petherbridge directly
compared the circuit courts of appeals.28 In particular, it was
argued that Nard showed it is the Federal Circuit’s use of legal
scholarship in patent cases that is the problem, so
demonstrating—as Schwartz and Petherbridge did—that the
Federal Circuit uses legal scholarship across its entire body of
24. Schwartz & Petherbridge, Federal Circuit, supra note 22, at 1571.
25. Id. at 1576–77. The Nard finding examined a period between 1996 and 2000.
Nard, supra note 1, at 678–81.
26. Schwartz & Petherbridge, Federal Circuit, supra note 22, at 1578–82.
27. Id. at 1582.
28. These arguments were given in response to presentations of Schwartz &
Petherbridge at various meetings.
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jurisprudence in similar amounts to regional courts does not
address that specific concern.29 In short, the argument stated
that the low use of legal scholarship happens in patent cases;
having not carved out patent cases, the use of legal scholarship
in such cases might still be low and the inference might still be
justified.
To address this, Schwartz & Petherbridge collected more
data categorizing patent cases at the Federal Circuit as well as
civil cases (non-criminal cases) at the circuit courts. This
approach again revealed that the Federal Circuit did not seem
to be an outlying circuit court (it also indicated that the
Federal Circuit uses scholarship somewhat more in its patent
jurisprudence than it does in the remainder of its
jurisprudence).30 Even when patent cases were compared to
regional circuit courts’ civil–only jurisprudence, the Federal
Circuit’s use of legal scholarship seems to be within a range
defined by the other circuit courts of appeals.31 In response,
some maintained that the comparison of Federal Circuit
patent cases to regional circuit civil cases was only modestly
informative, due to the intuition that regional circuits
presumably had many civil cases that were very easy and
would thus not provoke the use of legal scholarship.32
Taken together, Nard, and Schwartz & Petherbridge put the
meaning of the finding: “[T]hat the Second and Ninth Circuits [in
trademark and copyright decisions] cite scholarship roughly four
times as often as the Federal Circuit [does in its patent decisions]”
33
into question. Is it properly modalized as the “Federal Circuit pays
far less attention to legal and economic scholarship than other
34
circuit courts,” or is that sort of qualification not quite on target?
Might the finding mean little more than the Federal Circuit does
not have direct statutory jurisdiction over copyright and trademark
infringement claims; e.g., is it possible “that there is something
about
trademark
and
copyright
cases
(and
relevant
scholarship) . . . that argues for differential use of scholarship in
these areas than is normative for other areas of law”?35
29. Id. at 1586–89.
30. Id. at 1587–88.
31. Id. at 1588.
32. Id. at n.74.
33. Nard, supra note 1, at 683.
34. E.g., Burk & Lemley, supra note 13, at 1671.
35. Schwartz & Petherbridge, Federal Circuit, supra note 22, at 1570 (noting that
the results “might suggest that trademark and copyright cases in the regional circuits,
rather than patent cases at the Federal Circuit, are the outliers in terms of use of
scholarship”).
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The central normative concern of this Article is whether Nard’s
empirical finding is good evidence for the epithetic argument that
the Federal Circuit is an insular court that lacks intellectual
curiosity, and by extension, whether it is good evidence for all of the
various arguments and claims that rely on the epithetic argument
either entirely or in part for their validity. We note that we could
have approached this normative concern without an empirical
study. A more purely analytical approach could expose many of the
limitations of the epithetic argument. The logical connection
between differential citation to scholarship and intellectual
disconnectedness is hardly a straight line. But such work has
already been done, starting with Nard himself. It is our sense that
too few people have listened, or at least too few have been
encouraged, to critically evaluate the connection between the
empirical evidence and the epithetic argument. We hope that by
adding some observational evidence to the discussion we will
encourage the patent community to view the significance of Nard’s
finding—and our own—more critically than it might have before.
It should also be clear then that we did not undertake this
project to definitively determine the validity of the argument that
the Federal Circuit is an insular court lacking in intellectual
curiosity. Nor did we undertake this project to evaluate directly any
of the arguments criticizing the court that rely on that argument.
Our purpose is much more modest; we undertook this project in
part to evaluate the published empirical support for a specific chain
of reasoning:36 (1) the differential use of scholarship between the
Federal Circuit and the regional circuits means that the Federal
Circuit is intellectually deficient; which (2) helps to explain (and
sometimes might explain completely) why many criticisms of the
court’s jurisprudence are correct. If the empirical support for this
chain of reasoning is weak, that does not mean the court cannot still
be intellectually limited. It just means the proposition is not
empirically well-supported. There may be other reasons or
approaches, or empirics yet to come that could still lend support to
such a proposition. We thus remain agnostic on the degree of truth
in the broad argument that the court’s performance is intellectually
deficient, and any arguments that rely on that argument. What we
hope to encourage is a neutral reevaluation of an increasingly
unquestioned belief in intellectual disconnectedness, beginning with
the observational evidence used to support it.
The remainder of this Article proceeds as follows: Part II
develops the thinking underlying the design of the data
36. In part also because we are curious about the U.S. Supreme Court’s relationship
to legal scholarship in intellectual property decisions more generally.
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collection and analysis. Part III explains the methods used to
collect the data and establish the dataset. Part IV presents the
results of the observations and discusses some implications.
Part V finishes the Article with a brief conclusion.
II. DESIGN
What if the Second and Ninth Circuits also had the Federal
37
Circuit’s patent jurisdiction? Would the use of legal scholarship in
Second and Ninth Circuit patent cases look the same as Nard
observed in trademark and copyright cases? What if the Federal
Circuit had statutory jurisdiction over copyright and trademark
infringement claims, as well as the many subjects currently within
its jurisdiction? Would its use of scholarship in trademark and
copyright opinions mirror that in its patent opinions or would it be
different? These questions are difficult to approach empirically;
such jurisdictions do not exist.
There is, however, one American court that presently has
jurisdiction over appeals in not only cases arising under the
patent laws, but also in cases arising under the trademark and
copyright laws. That court is the U.S. Supreme Court.
Studying the Supreme Court’s use of legal scholarship in
“intellectual property” decisions might help resolve some
ambiguities in the meaning of the finding in Toward a
Cautious Approach to Obeisance. To begin with, it is a single
court, which has several advantages for this study. The design
choice of studying a single court avoids the differences in
jurisdiction that exist between the Federal Circuit and the
regional circuits. Next, because it is a single court the
Supreme Court presents a single set of judges (usually called
justices). This fact helps to avoid the impact of cultural
differences that might exist between circuit courts of appeals,
differences that might be explained by the many locales in
which, e.g., Ninth Circuit, judges might reside, e.g., California,
Idaho, Alaska, Oregon, etc., versus those where Federal
Circuit judges might reside, e.g., Washington, D.C. as well as
differences like what judges had for breakfast, whether they
are getting divorced, and whether one or more of them is
working on a book deal and thus has less time to devote to
opinion writing.
The Supreme Court also has broad federal subject matter
jurisdiction in the sense that it hears appeals from the broad set of
37. Long ago they used to have part of it, shared of course with other regional
circuits. Nard & Duffy, supra note 14, at 1644.
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issues that can be heard in federal courts. In that respect, the
Supreme Court may be fairly practically comparable to the Second
and Ninth Circuits, and may be as close to anything we can observe
that is comparable to giving the Second and Ninth Circuits the
Federal Circuit’s patent jurisdiction.38
The average case, moreover, that reaches the Supreme Court
might be more likely to be broadly meaningful and uncertain in
outcome than appeals that are heard by the circuit courts. The
reason for this is simple: unlike the circuits, the Supreme Court’s
jurisdiction, for the most part, is discretionary. The Court chooses
which appeals to hear; part of its job is to broadly monitor the shape
of federal law, and to resolve problematic differences that may
39
arise. It might thus often base a choice to hear an appeal on a
prediction about the socio-legal significance of the issues presented,
viz. the greater the predicted significance might often mean a
greater likelihood that the Court takes the appeal. If so, then use of
legal scholarship might be more critical to an “engaged
jurisprudence”—assuming it ever is—for Supreme Court decisions
than it is for the average circuit level decision.
Importantly, if one believes—as the epithetic argument
requires—that the judicial citation to legal scholarship represents a
good proxy for the quality of a court’s decisional law, and more
specifically for judicial intellectual engagement and connectedness
to important issues of law and policy, the Supreme Court uses legal
38. A difference that remains and which might be of analytical significance is
that the Federal Circuit hears vastly more patent appeals than the regional circuits
hear copyright and trademark appeals. We cannot rule out that the frequency with
which a court hears a category of appeal has some bearing on the frequency with
which it uses legal scholarship when it writes decisions deciding an appeal. In our
data, the Supreme Court decided more patent cases (46) during the period studied
than it did trademark (17) and copyright cases (24). Forty-six is more than 17 and
more than 24, although not much more than their sum (41). In any event, the
differences in frequency with which the Court decided cases falling into the different
IP categories seems trivial when one considers that the Federal Circuit decided
something like 11 times as many patent appeals as the Second and Ninth Circuits
decided trademark and copyright appeals during the period Nard studied. Moreover,
if anything, hearing many more appeals in one issue area might be expected to
reduce the frequency on a per-decision basis with which a court uses legal
scholarship. Even though over a defined period of time it might encourage more
actual use. Accord Nard, supra note 1, at 681–82 (seeming to observe that the
Federal Circuit used about twice as much law review type scholarship in patent
decisions than the Second and Ninth Circuits used in trademark and copyright
decisions between 1996–2000).
39. See Lee Petherbridge & David L. Schwartz, An Empirical Assessment of the
Supreme Court’s Use of Legal Scholarship, Nw. U. L. REV. (forthcoming 2012)
(manuscript at 17–18), available at http://papers.ssrn.com/sol3/papers.cfm?abstract_
id=1884462 (presenting an empirical study examining the use of legal scholarship in
Supreme Court decisions).
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scholarship in spades.40 If, therefore, one is willing to dismiss the
Supreme Court as insular and intellectually disconnected, like the
Federal Circuit is supposed to be, then one verges on rejecting
scholarship usage in opinions as a proxy for intellectual
engagement. On the one hand, if the Supreme Court is an insular
and intellectually disconnected institution, then the use of legal
scholarship by justices (and by analogy judges) would seem to have
little evidentiary meaning to the proposition. On the other hand, if
one accepts that the Supreme Court is not an insular and
intellectually disconnected institution, then examining its use of
legal scholarship in intellectual property, viz. patent, copyright, and
trademark cases, should shine a helpful comparative light on the
meaning of the differences in use of legal scholarship observed by
Nard between the Second and Ninth Circuits and the Federal
Circuit.
Finally, the Supreme Court has acknowledged the
theoretical, doctrinal, and policy kinship of at least patent law
and copyright law;41 and has borrowed doctrines from patent
law and grafted them into copyright law on several occasions.42
43
These similarities suggest—all else being equal—that if
one examined the use of scholarship in Supreme Court patent
and copyright decisions one might expect to observe equality of
use. Trademark differs in what might be substantial aspects,
and so we were unsure what to predict. In approaching the
issue, we recognized that an assumption of the epithetic
40. Id. at 11–12 (showing the level of use of legal scholarship for all of Supreme
Court jurisprudence).
41. See, e.g., Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 439
(1984) (“The closest analogy is provided by the patent law cases to which it is appropriate
to refer because of the historic kinship between patent and copyright law.”).
42. See, e.g., eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 392 (2006) (reviewing
standard for injunctions in copyright cases as part of analysis of standard for injunctions
in patent cases); Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 936–
37 (2005) (importing patent law doctrine on inducement liability into copyright law); Sony
Corp. of Am., 464 U.S. at 439–42 (importing patent law doctrine on contributory
infringement into copyright law); see also Edward Lee, Freedom of the Press 2.0, 42 GA. L.
REV. 309, 393–94 (2008) (noting the Supreme Court’s importation of patent law doctrines
into copyright law).
43. And others: Both the patent and copyright laws are authorized by the same
clause of the U.S. Constitution, which notes that the laws are intended to “promote the
Progress of Science and useful Arts.” U.S. CONST. art. I, § 8, cl. 8. Both bodies of law are
similar in that they are exceptions to the general policy of disfavoring monopolies, and
both share the same normative underpinnings (e.g., optimizing the production of a class of
public goods). HERBERT HOVENKAMP, MARK D. JANIS & MARK A. LEMLEY, IP AND
ANTITRUST: AN ANALYSIS OF ANTITRUST PRINCIPLES APPLIED TO INTELLECTUAL PROPERTY
LAW § 1.3, at 1–13 (Supp. 2009) (“Intellectual property, while it does not generally create
a monopoly, may in some cases permit or even encourage monopoly in order to give
incentives for invention.”).
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argument is that patent jurisprudence should use legal
scholarship at least as often as copyright and trademark
jurisprudence. A complementary—and possibly animating of
the epithetic argument—assumption is that “intellectual
property” is a unitary body of subject matter which includes all
three areas of law.44 We took the conservative route, hewing to
these assumptions notwithstanding our uncertainties.
Accordingly, we assume that trademark cases may have
attributes, all else equal, similar to those present in patent
and copyright cases that encourage a court to cite legal
scholarship in a decision. Our research hypothesis, for the
abovementioned reasons, was that the Supreme Court would
use legal scholarship at similar levels in patent, trademark,
and copyright decisions.
III. METHODOLOGY
We observed the rate of use of legal scholarship in
Supreme Court “intellectual property” decisions, viz. decisions
concerning patent, trademark, and copyright law. We also
observed the Court’s use of scholarship in all other areas of its
jurisprudence. The methods are substantially as described in
45
Petherbridge & Schwartz. Briefly, the dataset includes
information from all Supreme Court decisions issued between
1949 until 2009. The cases were located using The Supreme
Court Database,46 which contains substantial information
about each Supreme Court decision.47 Decisions were human
coded for use of legal scholarship, and intercoder agreement
tested using Cohen’s Kappa.48 For our coding of legal
44. See, e.g., ROBERT P. MERGES, PETER S. MENELL & MARK A. LEMLEY,
INTELLECTUAL PROPERTY IN THE NEW TECHNOLOGICAL AGE ix (5th ed. 2010) (showing the
casebook divided into chapters for patent law, copyright law, and trademark law).
45. See generally Petherbridge & Schwartz, supra note 39, at 6–9.
46. Current Dataset, SUPREME COURT DATABASE, http://scdb.wustl.edu/
data.php (last visited Nov. 28, 2012). It is considered the “gold standard” of Supreme
Court databases, and is reputed to have highly reliable coding. Several leading law and
political science professors have noted that “in the law reviews, virtually no empirical
study of the U.S. Supreme Court produced by political scientists fails to draw on [the
database].” See, e.g., Lee Epstein, Jack Knight & Andrew D. Martin, The Political
(Science) Context of Judging, 47 ST. LOUIS U. L.J. 783, 812 (2003).
47. An online codebook for each of the fields in The Supreme Court Database can be
found on the website. Online Code Book, THE SUPREME COURT DATABASE,
http://scdb.wustl.edu/documentation.php?s=1 (last visited Nov. 28, 2012). The
documentation indicates that the coding of the variables is of high reliability. See Harold
J. Spaeth, Online Code Book: Introduction, THE SUPREME COURT DATABASE,
http://scdb.wustl.edu/documentation.php?s=1 (last visited Nov. 28, 2012) (showing the
depth and flexibility the Supreme Court Database provides for researchers).
48. See Jacob Cohen, A Coefficient of Agreement for Nominal Scales, 20 EDUC. &
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scholarship we observed Kappas across eight coders that
ranged from 1.000 (perfect) to .868 (almost perfect/excellent).
Overall, the dataset includes 7,730 Supreme Court decisions,
about a third of which use legal scholarship.49
Patent decisions were identified in The Supreme Court
Database using issue codes 80180 and 80210. Copyright decisions
were identified with issue code 80190. Trademark decisions were
identified by assigning four separate coders independently the task
of identifying all Supreme Court trademark decisions between 1949
and 2009. The results from all four coders were synthesized,
disparities investigated, and a final list of trademark decisions
determined. We did not consider a trade secret category of decisions.
50
The methods applied are a form of content analysis, and
therefore implicate concerns of selection bias, unobserved
reasoning, and the like.51 We define “legal scholarship” as
articles published in law reviews or law journals. We have not
PSYCHOL. MEASUREMENT 37, 38–40 (1960) (describing its logic of the statistical argument
and defending its merits). The closer the kappa statistic is to 1.00, the greater the level of
agreement. Id. at 41. There is no set k-value that signifies “good enough” agreement, but
magnitude guidelines have been suggested. Richard Landis and Gary Koch suggest that
k-values of 0.00–0.20 reflect “slight” agreement; 0.21–0.40 reflect “fair” agreement; 0.41–
0.60 reflect “moderate” agreement; 0.61–0.80 reflect “substantial” agreement; and 0.81–
1.00 reflect “almost perfect” agreement. J. Richard Landis & Gary G. Koch, The
Measurement of Observer Agreement for Categorical Data, 33 BIOMETRICS 159, 164–65
(1977); see also JOSEPH L. FLEISS, BRUCE LEVIN, & MYUNGHEE CHO PAIK, STATISTICAL
METHODS FOR RATES AND PROPORTIONS 604 (3d ed. 2003) (describing 0.40–0.75 as fair to
good and over 0.75 as excellent). In this study, approximately 30% of the measurements
were coded by multiple coders to establish reliability. See Lee Petherbridge & R. Polk
Wagner, The Federal Circuit and Patentability: An Empirical Assessment of the Law of
Obviousness, 85 TEX. L. REV. 2051, 2074 & n.118 (2007) (using a 25% sample and noting
literature that suggests using at least a 10% sample).
49. Petherbridge & Schwartz, supra note 39, at 12 (reporting this in Table 1).
50. See Mark A. Hall & Ronald F. Wright, Systematic Content Analysis of Judicial
Opinions, 96 CALIF. L. REV. 63, 64 (2008) (describing content analysis as a method of
searching judicial opinions for consistencies in order to make inferences about a specific
subject). The technique has been applied often in the study of patent law. See John R.
Allison & Mark A. Lemley, The (Unnoticed) Demise of the Doctrine of Equivalents, 59
STAN. L. REV. 955, 966–76 (2007) (explaining the dataset used of district court and
Federal Circuit opinions and drawing inferences from the consistencies within);
Petherbridge & Wagner, supra note 48, at 2076–102 (examining cases where “the Federal
Circuit affirmed, reversed, or vacated the decision of the lower tribunal on the question of
obviousness” and exploring implications of those findings); David L. Schwartz, Practice
Makes Perfect? An Empirical Study of Claim Construction Reversal Rates in Patent Cases,
107 MICH. L. REV. 223, 245–58 (2008) (making inferences concerning reversal rates from
485 district court and magistrate judges). It has been applied in other areas of intellectual
property law as well. See Barton Beebe, An Empirical Study of U.S. Copyright Fair Use
Opinions, 1978–2005, 156 U. PA. L. REV. 549, 557–58, 564–65 (2008) (analyzing a dataset
of reported federal opinions employing the four-factor test from section 107 of the
Copyright Act starting in 1978 up through 2005).
51. See, e.g., Hall & Wright, supra note 50, at 102–03 (discussing content analysis
and its potential disadvantages).
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discriminated in our definition of law reviews and law
journals. In contrast to other studies of legal scholarship, we
have included non-elite and specialty journals. We have
excluded treatises, hornbooks, and academic books from our
definition.52
We define “use” of legal scholarship to mean the Supreme
Court uses legal scholarship when it cites to it in a decision.
We thus employ the terms use and citation synonymously. As
we have explained elsewhere, this is at once a too narrow, and
perhaps, a too broad definition of the meaning of the idea of
53
use of scholarship. It seems indisputable that measuring use
in this way can only provide a partial picture of what it means
to say that a court uses scholarship. This definition of use,
nonetheless, is ubiquitous in the field of study of legal
scholarship and it has the merit of being amendable to fairly
clean and objective measurement. In addition, when we speak
of a Supreme Court “decision,” we mean all of the writings—
the opinions—attending the decision, so opinions for the Court,
concurrences, dissents, and mixed opinions.
IV. RESULTS & DISCUSSION
In this Part we set forth our observations, and discuss
them.
A. The Court’s Use of Scholarship in IP Jurisprudence
Table 1 shows the rate of use of scholarship in Supreme
Court patent, trademark, and copyright decisions. It shows
striking differences in the use of scholarship that depend on
the type of decision.
Patent decisions are overwhelmingly the least likely to use
scholarship, using it only 28.26% of the time.54 By contrast, the
Court uses scholarship nearly twice as frequently in its
52. We exclude treatises, hornbooks, and academic books from our definition
because the literature criticizing legal scholarship typically focuses on law review articles
and excludes other forms of legal scholarship. Nard reported data for sources beyond just
law reviews and law journals. See Nard, supra note 1, at 678 n.40. Nard’s report, however,
allows for some differentiation between law reviews and journals, and other forms of
scholarship. Id. at 680–81 & nn.43–45 (evaluating treatises, bar journals, and law reviews
separately). As the introduction indicates, the Federal Circuit is not typically criticized for
failing to cite the sort of scholarship embodied in patent treatises. Id. at 674 n.25
(explaining that the court cites treatises frequently).
53. Petherbridge & Schwartz, supra note 39, at 6 (explaining that the idea that
“citation equals use” is imperfect); Schwartz & Petherbridge, Federal Courts of Appeals,
supra note 22, at 1354 n.32.
54. See infra Table 1.
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trademark jurisprudence (52.94%) and more than twice as
frequently in its copyright jurisprudence (66.67%).55
Our data includes the entire population of Supreme Court
decisions during the period studied, and the results are,
arguably, therefore statistically significant by definition. To
develop a sense of the importance of the differences we
observed, we assumed that our data was a sample of a larger
population and considered whether the differences observed
would have been significant in that scenario. Our null
hypothesis was that there was no difference in use of
scholarship between patent, trademark, and copyright
decisions, and the statistical argument we used is the chisquare test. The chi-square calculated, df(2), is 10.2; p<.01,
and is strong evidence against the null hypothesis. If our data
were from a sample, instead of the entire population, the
evidence suggests that the differences observed are not due to
chance.
Decision
Type
Decisions
Not Citing
Decisions
Citing
Total
Decisions
% of
Decisions
Citing
Patent
33
13
46
28.26%
Trademark
8
9
17
52.94%
Copyright
8
16
24
66.67%
Table 1. The Rate of Use of Scholarship in Supreme Court IP
Decisions 1949–2009. The rate is measured in binary. If an
opinion cites legal scholarship it is included; if it does not, it
is excluded.
The Supreme Court thus uses legal scholarship significantly
more frequently in its trademark and copyright jurisprudence than
56
in its patent jurisprudence. The measured difference is, roughly,
57
twice as often. This finding, we think, adds some perspectives from
which to view the finding “that the Second and Ninth Circuits [in
trademark and copyright decisions] cite scholarship roughly four
times as often as the Federal Circuit [does in its patent decisions].”58
We discuss some of them in the Implications Part.
55.
56.
57.
58.
Infra Table 1.
Supra Table 1.
Supra Table 1.
Nard, supra note 1, at 683.
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B. IP Jurisprudence Compared to Other Decision Types
The Federal Circuit has been observed to use legal
scholarship somewhat more in its patent decisions than in its
other decisions. We wondered if the Supreme Court was
similar. The observations reported in Table 1 do not reveal
whether patent decisions might merely be at the low end of a
set of decisions that together evince a relatively high rate of
citation to scholarship. In other words, while it is clearly the
case that the Court more frequently uses legal scholarship in
its trademark and copyright decisions than in its patent
decisions, it was still unclear whether the Court’s use of
scholarship in patent decisions might nonetheless be fairly
high when compared to other areas of jurisprudence. Figure 1
describes the Court’s use of scholarship in IP decisions to its
use of scholarship in 13 other decision types.59
The overall average rate of use of scholarship is 32.21%, so
60
just between the rate for Unions and Federalism decisions.
The rate of use of scholarship in trademark and copyright
61
decisions are among the highest in the Court’s law. The rate
at which the Court uses legal scholarship in patent decisions,
however, is below the average rate of use for the entire dataset
62
and among the lowest of the decisional areas examined.
Accordingly, it seems that patent decisions are not at the low
end of a set of decisions that evince a relatively high rate of
citation. In something of a contrast to the Federal Circuit—
which uses legal scholarship a little bit more in patent cases
than in the rest of its jurisprudence—the use of legal
scholarship in Supreme Court patent decisions seems modestly
disfavored.63 Copyright and trademark cases, by contrast,
appear to be high flying outliers.64
59. See infra Figure 1 (showing the use of legal scholarship in Supreme Court
decisions).
60. Petherbridge & Schwartz, supra note 39, at 5; see infra Figure 1.
61. See infra Figure 1.
62. See infra Figure 1 (showing that legal scholarship is used at a 28.3% rate for
patent cases).
63. Nard, supra note 1, at 678; see infra Figure 1.
64. See infra Figure 1.
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Z
:
W
&
d
W
Z
&
h
&
W
W
d
D
Figure 1. The Rate of Use of Scholarship in Supreme
Court Decisions 1949–2009. The Decision types correspond
to “Issue Area” categorizations in the Spaeth dataset,
http://scdb.wustl.edu/documentation.php?var=issueArea.
Counting is again binary. Misc n=17; Copyright n=24;
Trademark n=17; Privacy n=100; Due Process n=303; First
Amendment n=629; Attorneys n=91; Economic Activity
n=1477; Unions n=317; Federalism n=360; Crimpro n=1788;
CivRights n=1300; Patent n=46; FedTax n=278; Judicial
Power n=1098; Interstate Relations n=85.
C. Cross-Sectional Concerns
The dataset represents a cross section that includes sixtyone years’ worth of observations. One concern, therefore, is
that our observations might be affected by, inter alia, the
Court’s general attitude toward scholarship across time and
the temporal distribution of decisions. For example, perhaps
the Court decided most of the patent decisions at a time when
its jurisprudence generally did not reflect much use of
scholarship, but decided most of its copyright and trademark
cases at a time when its jurisprudence reflected a much
healthier appetite.
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To examine this issue we employed regression, using
indicator variables for term, and an indicator variable defining
observations taken before and after the creation of the Federal
Circuit. The purpose is to statistically account for variation in
use of scholarship that is linked to term or that is linked to all
terms in the dataset that succeeded the creation of the Federal
Circuit. If our observations are affected by the Court’s general
attitude toward scholarship across time, and the fact that patent,
trademark, and copyright decisions are presumably not perfectly
uniformly distributed across terms, we hope to observe some
impact on the magnitude of an intellectual property category’s
ability to affect the odds of a citing decision.
% Impact on Odds of Use of Legal Scholarship
Variable
Model 1
Model 2
Model 3
Patent
-17
-16
-15
Trademark
122
121
96
Copyright
311
387
288
term indicators
na
X
na
federal_circuit
na
na
41
indicator
Table 2. Logistic regression models accounting for variation in
time (term) and whether an observation was made before or
after the creation of the Federal Circuit (federal_circuit). The
reference term is the 1982 term, selected essentially arbitrarily.
The reference category for federal_circuit is decisions issued
before the 1983 term. The response variable is bincite, which
identifies decisions that cite at least one piece of legal
scholarship.
Table 2 suggests that once we take into account the
variation in citation that is linked to term, copyright decisions
become a somewhat more impressive predictor of the Court’s use
65
of scholarship. In addition, it appears that observations made
from the 1983 to 2009 terms (federal_circuit) do explain some of
the variation in the model—these observations have a distinctly
positive impact on the likelihood that a decision references legal
scholarship.66 A Supreme Court decision that corresponds with
65. See supra Table 2 (displaying logistic regression models accounting for variation
in time (term) and whether an observation was made before or after the creation of the
Federal Circuit (federal_circuit)).
66. This is consistent with recent studies of the Supreme Court and the circuit
courts of appeals. See Petherbridge & Schwartz, supra note 39, at 14; Schwartz &
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the Federal Circuit era seems somewhat more likely to use legal
scholarship,67 and so being in a more recent term might help
somewhat to explain why a patent, trademark, or copyright
decision cited legal scholarship. As the relative relationship in
the impact on the odds of a citing decision for the various IP
categories stayed fairly constant, and none changed direction of
effect, viz. patent decisions predict lower odds of use while
trademark and copyright decisions predict higher odds of use,
Table 2 may present some evidence that our observations are not
explained by the Court’s general attitude toward scholarship
across time and the temporal distribution of decisions.68
Regressions are fine. But IP cases make up a small part of
the Court’s jurisprudence, and if a pattern exists it is nice to view
it graphically. Figure 2 presents a graph of the rate of use of
scholarship in the Supreme Court’s patent and copyright
decisions across the last 61 years. It suggests that the Supreme
Court has pretty much always been more likely to reference legal
69
scholarship in a copyright decision than in a patent decision.
At least two additional things about Figure 2 are worth
mentioning at this point. The first is that while the big picture
presented by Figure 2 is a fairly big-looking difference that has
persisted for a long time, the rate of use of scholarship in patent
and copyright jurisprudence does get close at one point, the
70
decade of 1961 to 1970. It is not clear what this means. The
differences observed both before and after the decade of 1961 to
1970 seem to us to be pretty pronounced. For that reason, we
suspect that the best interpretation of the closeness in rate of use
at this one point does not really mean very much in terms of the
broader picture of comparing the Supreme Court’s use of legal
scholarship across patent and copyright jurisprudence. That said,
a very plausible explanation for this observation was suggested
to us by the learned participants at the Institute for Intellectual
Property & Information Law (IPIL) at the University of Houston
Law Center’s meeting in Santa Fe. In particular, it was
suggested that the period between 1961 and 1970 might show the
Petherbridge, Federal Courts of Appeals, supra note 22, at 1360 (examining the use of
scholarship at the circuit courts of appeals); supra Table 2 (examining the trend in use of
scholarship at the Supreme Court); accord Robert J. Hume, Strategic-Instrument Theory
and the Use of Non-Authoritative Sources by Federal Judges: Explaining References to
Law Review Articles, 31 JUST. SYS. J. 291, 299 (2010).
67. See supra Table 2 (indicating that the creation of the Federal Circuit has
positively impacted the likelihood of legal scholarship use).
68. See supra Table 2.
69. See infra Figure 2.
70. See infra Figure 2.
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level of scholarship that it does because it represents the
Supreme Court coming to grips with the changes in patent law
imposed by the 1952 Act.71 The informed reader will know that in
the decade in question, the Court decided several cases
concerning a statutory requirement for patentability known as
nonobviousness that had not before been part of the statutory
72
law.
The implication of this observation is that perhaps one factor
influencing the Court’s use of legal scholarship in these cases is
new statutory enactments. A mechanism for this turns out to be
fairly intuitive: statutory changes can create ambiguities in
otherwise mostly settled case law. When the Court confronts
these ambiguities for the first time, it is likely to be writing on
more of a blank slate in terms of its precedents and other formal,
legally acceptable sources of decision. If, as Richard Posner has
suggested, judges and justices “feel naked before society when
the positions they take on novel cases . . . are seen to reflect
73
unstructured intuition,” then perhaps justices would be more
willing to resort to legal scholarship, an informal but still rigorous
appearing form of authority, to strategically mask the
uncomfortableness they feel in such instances. Compatible with this
is the fact that the Copyright Act experienced a major revision in
1976,74 and so if new statutory enactments stimulate the use of
scholarship by the Court, an expectation might be that copyright
law should show higher levels of use of legal scholarship in the 70s
and 80s. There have been other changes to the copyright law in
75
recent years, for example: The Audio Home Recording Act (1992),
76
the Digital Performance Right in Sound Recordings Act (1995), the
No Electronic Theft Act (1997),77 not to mention, of course, the
78
Digital Millennium Copyright Act (1998), some of which could be
71. Sapna Kumar deserves special credit for pressing this point with us, which is
not meant to diminish the fact that others also seemed to independently reach a similar
conclusion.
72. See Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 12 (1966) (including
consolidated cases). A companion case is United States v. Adams, 383 U.S. 39, 48 (1966)
(deciding a question of nonobviousness).
73. See, e.g., Richard A. Posner, Pragmatic Adjudication, 18 CARDOZO L. REV. 1, 11
(1996).
74. Copyright Act of 1976, Pub. L. No. 94-553, § 101, 90 Stat. 2541 (codified as
amended at 17 U.S.C. §§ 101–810 (2006)).
75. Audio Home Recording Act of 1992, Pub. L. No. 102–563, 106 Stat. 4237 (1992)
(codified as amended in scattered sections of 17 and 19 U.S.C.).
76. Digital Performance Right in Sound Recordings Act of 1995, Pub. L. No. 104–39,
109 Stat. 336 (1995) (codified as amended in scattered sections of 17 U.S.C.).
77. No Electronic Theft (NET) Act, Pub. L. No. 105–147, 111 Stat. 2678 (1997)
(codified as amended in scattered sections of 17, 18, and 28 U.S.C.).
78. Digital Millennium Copyright Act, Pub. L. No. 105–304, 112 Stat. 2860 (1998)
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Rate of Decisions Using Legal Scholarship
helping to maintain a rrelatively high level of use of legal scholarship
in Supreme Court copy
yright jurisprudence.
100%
75%
50%
25%
0%
Figure 2. The R
Rate of Use of Scholarship in Supreme
Court Patent and C
Copyright Decisions by Decade, 1949–
2009. Decade referss to “terms,” viz. 1961–1970 is ten terms,
the 1961 term, 1962 term, etc. Patent n=46; Copyright n=24.
Table 3. The Rate o
of Use of Scholarship in Supreme Court
Patent and Copyrigh
ht Decisions by Decade, 1949–2009. Data
corresponds to that p
plotted in Figure 2.
Term
Patent
Patent
Copyright
Copyright
Count
Rate
Count
Rate
1949–1960
0/6
0
2/5
.40
1961–1970
6/14
.43
1/2
.50
1971–1980
4/11
.36
3/3
1
1981–1990
1/3
.33
6/6
1
1991–2000
1/4
.25
3/5
.60
2001–2009
1/8
.12
2/3
.67
(codified as amended in scatteered sections of 5, 17, 28, and 35 U.S.C.).
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The second thing about Figure 2 worth mentioning at this
point is that the data presented tends to make less likely the idea
that perhaps the Federal Circuit somehow broke the Supreme
Court’s patent jurisprudence. The underlying idea here is
illustrated by the old adage: “garbage in, garbage out.” Perhaps
the use of scholarship in Supreme Court decisions reflects either
the use of scholarship in circuit court decisions, or perhaps the
general quality of circuit court work product. Consider two
hypothetical examples: If the circuit court does a wonderful job
presenting and analyzing the issues in a decision on appeal, then
perhaps the Supreme Court’s decision addressing the appeal will
provide a more robust analysis that will include reference to legal
scholarship. In the contrasting example, an intellectually limited
circuit court might produce a decision on appeal that does a poor
job revealing the nuances of an issue. If so, then perhaps the
Supreme Court’s decision addressing the appeal will appear to be
more abstract and intellectually limited because it has a poorer
substrate from which to work. If this explanation is correct then
our observations of the Supreme Court’s jurisprudence might not
reveal much about what, if anything, differential use of legal
scholarship has to say about an institution’s intellectual
competence. For much of our data, the argument would go: The
Federal Circuit’s deficiencies have handicapped the Supreme
Court’s patent jurisprudence.
Our results in this subpart provide some evidence that
seems inconsistent with such a theory. In particular, the
evidence suggests that the timing of decisions does not fully
explain the observations. And Figure 2, in particular, suggests
that the Supreme Court’s tendency to reference scholarship more
frequently in its copyright decisions over its patent decisions is a
tendency that long predates the creation of the Federal Circuit.79
Our results thus seem to provide little support for the notion that
the Supreme Court’s performance has been hampered by the
Federal Circuit.80
As a final exploration of whether the distribution of Supreme
Court decisions might explain our observations, we visually
examined the distribution of patent, trademark, and copyright
79. The description of Figure 2 is even more forceful if one accepts that it took some
time to get the Federal Circuit up and running. For example, if one postulates that, say,
between 1983 and 1990, the court might have been finding its legs, and thus, might not
have cited much scholarship; an examination of Figure 2 shows an impressive-appearing
gap extending back at least as far as 1970.
80. See supra Figure 2 (demonstrating that the Supreme Court’s tendency to cite
legal scholarship more often when deciding copyright cases than patent cases long
predated the creation of the Federal Circuit).
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decisions by term. The graph is presented as an Appendix but
generally shows that patent and copyright decisions are
distributed relatively evenly, while trademark decisions become
more frequent starting around 1980.
D. Implications
What are the implications of the observations reported in
Parts IV.A, IV.B, and IV.C for the meaning of the finding made
by Toward a Cautious Approach to Obeisance?; more importantly
perhaps, what should we think about the utility of the finding to
support the epithetic argument that the performance of Federal
Circuit judges is more intellectually circumscribed than other
judges? In addition, the observations are puzzling. Why does the
Supreme Court use legal scholarship so much more consistently
in its trademark and copyright jurisprudence as compared to its
patent jurisprudence? Why does the use of legal scholarship in
patent decisions seem to be somewhat disfavored relative to
other issue areas? In this Part, we offer some preliminary
answers to these questions that may be of use to future research
into patent jurisprudence.
1. Differential Use of Legal Scholarship May Not Determine a
Court’s Intellectual Range or Openness. In Part II (Design) we
postulated that the Supreme Court by virtue of its jurisdiction and
supervision responsibilities was unlikely to be an insular and
disconnected institution, like the Federal Circuit has been claimed
by some to be. If that is true, then the observations in Part IV
indicate that “healthy” courts can exhibit differential use of legal
scholarship across patent, trademark, and copyright jurisprudence.
It follows that differential citation in this set of cases may not
determine whether a court is adequately intellectually connected
and curious about the law, policy, and social consequences of its
jurisprudence. Analogizing this logic to the circuit court level, the
observation that the Federal Circuit cites legal scholarship less
often in its patent jurisprudence than the Second and Ninth
Circuits cite legal scholarship in their trademark and copyright
jurisprudence does not mean the Federal Circuit is necessarily an
intellectually circumscribed court. As a matter of purely abstract
logic, it might be, and an observation of differential citation could be
consonant with that determination, but the observation is
inconclusive because differential citation can exist in the
jurisprudence of a court that lacks the characteristic of intellectual
deficiency.
This interpretation might be strengthened if there are
explanations for why patent decisions might less frequently draw
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judicial reference to legal scholarship than trademark and copyright
decisions, especially if those explanations themselves do not require
the conclusion that the performance of the judges deciding patent
appeals is intellectually deficient. It is to these possibilities we turn
next.
2. Other Reasons Patent Decisions Might Draw Less
Judicial Use of Scholarship than Trademark and Copyright
Decisions. A fairly direct interpretation of these results is that
there might be something different about patent decisions that
set them apart from trademark and copyright decisions when it
comes to the use of scholarship. What might it be? Below we
suggest some possible explanations.
i. Patent Law is Easier for Judicial Decisionmakers. One is
that patent decisions are different because patent law is easier
for judicial decisionmakers to work than trademark and
copyright law. There is an assumption at work here, namely that
law review-type legal scholarship may be looked to by judges to
help understand complex areas of law; it must be acknowledged
that this may not at all be the case. Perhaps a judge (or a clerk)
is more likely to crack open a treatise when a case presents a
serious challenge than to search a database for law review
articles directed to a particular topic.
In any event, the point to be made is that perhaps patent
law is more intellectually accessible than trademark and
copyright law. Perhaps it has less entropy: the symbols and
concepts of patent law organize information fairly effectively,
making it easier to access and easier to apply. Jurists are less
inclined to look to scholarship for a patent law issue because they
look at the issue and say, “Oh, I get it,” and move on to other
work in other cases. Perhaps this is less true of trademark and
copyright law, the symbols and concepts of which might leave
more disorder and uncertainty in meaning.
ii. Patent Law is Better Developed than Trademark and
Copyright Law. A similar, but different, point is that patent
decisions may be different because patent law is better
developed. It is usually agreed that because the Federal Circuit
hears so many more patent cases it is developing patent law
much faster than the regional circuits are developing trademark
and copyright law.81 If that is true, it could mean that there is so
81. Depending on one’s point of view, the Federal Circuit might have quickly
developed it to stagnation. See Nard & Duffy, supra note 14, at 1641 (characterizing the
Federal Circuit’s jurisdiction over patent law as monopolistic); Randall R. Rader, The
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much precedent, varied in content, that parties and jurists tend
to reach the conclusion that the issues presented by patent cases
can be resolved using traditional forms of legal analysis that
focus on conventional theoretic logic and the interpretation of
legally binding precedent. Perhaps much of the doctrinal nuance
and leeway for policy manipulation is already built into patent
law, and available in its precedents;82 judges and practitioners
may find less need to look elsewhere for guidance or suggestions
on how to argue or analyze an issue.
Trademark and copyright law might present a contrast. As
noted earlier, statutory developments might play a more
pronounced role in the development of jurisprudence, which
could impede judicial development of the law. Judicial
development of the law in these areas might also proceed at a
slower pace because jurisdiction is distributed across so many
circuits. Judges have a harder time getting the repetitions they
need to be highly effective at comprehending and applying the
relevant law. Perhaps only a few become very highly
knowledgeable, and perhaps the body of cases less often provide
the blazemarks needed for judges to use conventional forms of
case analysis. If so, trademark and copyright appeals might more
often than patent appeals appear to be hard to resolve using
traditional legal analysis, viz. applying formal legally binding
precedents using analogical reasoning in the context of statutes,
and might, therefore, more often encourage a resort to
scholarship.
iii. Patent Appeals are Less Important. Our observations
could reflect that patent appeals are deemed less important by
the Supreme Court (or its clerks) than copyright and trademark
appeals. One theory holds that courts use legal scholarship
strategically; they manipulate the content of opinions, including
by manipulating the use of authority, on the hope that doing so
will cause an opinion to have a desired effect on a relevant
audience.83 The desired effect perhaps most likely to be in play is
United States Court of Appeals for the Federal Circuit: The Promise and Perils of a Court
of Limited Jurisdiction, 5 MARQ. INTELL. PROP. L. REV. 1, 3–4 (2001) (concluding that the
Federal Circuit develops patent law at twenty-five times the pace of the regional circuits’
development of copyright law); Nard, supra note 1, at 683 (characterizing the Federal
Circuit’s quick development of patent law as “unique”).
82. See generally Lee Petherbridge, Patent Law Uniformity?, 22 HARV. J.L. TECH.
421 (2009).
83. See, e.g., Hume, supra note 66, at 295–96 (proposing that strategic judges may
utilize legal scholarship in order to persuade readers); Petherbridge & Schwartz, supra
note 39, at 19 (suggesting that judges may use legal scholarship “to encourage the
perception that precedent-altering change is orderly”); Kimberly West-Faulcon & Lee
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the goal of winning support for the judgment reflected in the
opinion. The relevant audience might include, e.g., “other current
or future justices, former colleagues, legal academics, legislators,
the constituency of constitutional litigators, etc.”84 It has been
observed that courts are more interested in using scholarship
when cases are more important or difficult to decide,85 when
disagreement with the outcome evinced in a majority opinion is
more vigorous,86 when ideological differences exist,87 when the
court upsets settled expectations,88 and when cases involve
89
constitutional issues. Patent cases in the hands of the Supreme
Court might not have always fit into these categories. It is
common for us today to think of patent cases as being very
important, but it might not always have been the case that they
enjoyed such significance. If perhaps legal scholars or law
professors failed to impress on the law students who went on to
become justices that patent law is significant to the national
economy, the Court might have long believed that patent cases
really did not matter much, or that the perceptions of the people
reading patent opinions are largely irrelevant to the Court’s dayto-day and legacy concerns.90 In addition, even though patent
cases might be more important to justices today—sheer
Petherbridge, Legal Scholarship in Supreme Court Constitutional Decisionmaking: An
Empirical Examination 7 (forthcoming), available at http://papers.ssrn.com/
sol3/papers.cfm?abstract_id=2110347 (noting that judges may cite legal scholarship in
order to bolster the perceived validity of their opinions).
84. West-Faulcon & Petherbridge, supra note 83, at 7.
85. Petherbridge & Schwartz, supra note 39, at 17, 20–21; see also Hume, supra
note 66, at 308–09.
86. Hume, supra note 66, at 307–08; Petherbridge & Schwartz, supra note 39, at
17–18; West-Faulcon & Petherbridge, supra note 83, at 18–19.
87. Schwartz & Petherbridge, Federal Courts of Appeals, supra note 22, at 1366–68
(finding that citation to legal scholarship is affected by judicial ideology); West-Faulcon &
Petherbridge, supra note 83, at 32–33 (observing that “the use of legal scholarship is more
vigorous in opinions that promote liberal case outcomes”); accord Hume, supra note 66, at
309.
88. Petherbridge & Schwartz, supra note 39, at 20; West-Faulcon & Petherbridge,
supra note 83, at 27–29.
89. Schwartz & Petherbridge, Federal Courts of Appeals, supra note 22, at 1366–67;
West-Faulcon & Petherbridge, supra note 83, at 16–17; but see Hume, supra note 66, at
308–09 (finding that the presence of a constitutional issue had no significant effect on
circuit courts’ citation of legal scholarship).
90. In this vein, an interesting vignette: Woodward and Armstrong’s famous book,
The Brethren: Inside the Supreme Court, discusses the decisionmaking process in the
notorious Sakraida v. Ag Pro, Inc. patent case, which involved the central patent doctrine
of obviousness. Sakraida v. Ag Pro, Inc., 425 U.S. 273, 280–82 (1976). Woodward and
Armstrong note that the Court found the case “of no significance” and the opinion was
assigned as punishment to Justice Brennan. According to the book, “Brennan was
insulted, but refused to pass along the humiliation to his clerks. He did all the work on
the five-page opinion himself.” BOB WOODWARD & SCOTT ARMSTRONG, THE BRETHREN:
INSIDE THE SUPREME COURT 418–19 (1st ed. 1979).
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speculation of course—patent cases may not be important in
ways that encourage the use of legal scholarship. The Court may
not be particularly divided on the outcome, and the role of
ideology in Supreme Court intellectual property decisions is still
being explored.91 It might also be the case that patent cases are
less likely than other sorts of intellectual property cases to be
decided in ways that upset settled expectations. Indeed, the
Court has emphasized in its patent decisions the importance of
maintaining settled expectations in patent decisions, and such an
emphasis implies that the Court seeks to maintain something
close to the status quo, rather than move patent law in any
particular direction.92
The implications of this theory apply with additional force
when generalized to the circuit court level. The Federal Circuit
decided something like eleven times as many patent appeals as the
Second and Ninth Circuits decided trademark and copyright
appeals during the period Nard studied.93 This difference could
suggest that patent cases at the Federal Circuit rarely present the
sorts of forceful differences of opinion that stimulate amici,
encourage dissenting votes, or upset expectations, so as to
encourage judges to strategically use legal scholarship. Observers of
the Federal Circuit, in fact, might reasonably conclude that most of
the decisions the court issues are narrow in scope and directed
mostly at the parties.94 At the circuits, by contrast, trademark and
copyright cases might be more exotic. A feature, that flavored with
other considerations—such as greater statutory manipulation;
significance of issue; breadth of stakes involved (for example, for
content owners as a group)—might disproportionately encourage
the strategic use of legal scholarship.
iv. Patent Law is Scary. Those who teach patent law are
aware that to this day there exist the remnants of a culture that
91. See Matthew Sag, Tonja Jacobi & Maxim Sytch, The Effect of Judicial Ideology
in
Intellectual
Property
Cases
42–46
(Jan.
2007),
available
at
http://works.bepress.com/cgi/viewcontent.cgi?article=1003&context=matthew_sag (finding
that ideology matters in Supreme Court intellectual property cases, but works differently
than in other areas of law).
92. See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 739
(2002) (“[C]ourts must be cautious before adopting changes that disrupt the settled
expectations of the inventing community.”).
93. Nard, supra note 1, at 682.
94. Which is not to say the court never addresses patent issues of broad import or
issues that provoke powerful support on both sides. As the court clearly uses legal
scholarship in its decisions, it may well be the case that it behaves like other courts
(including the Supreme Court); opinion writers use it strategically to win support in those
cases where it is necessary to try harder to win support.
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preferred attorneys with technical backgrounds to other
attorneys. The attitude was that if you didn’t have a technical
background, you couldn’t understand patent law well, and so you
might as well just stay out of it. Today that view seems archaic,
except perhaps when applied to that set of young lawyers who
want to devote their careers to patent prosecution. Nonetheless,
if there is a general perception that patent law is inaccessible
because it deals with technological issues, such a perception
could discourage jurists from delving into scholarship. For
similar reasons, jurists confronted with patent decisions might be
more concerned about sounding unartful or being embarrassed
by a mistake.95
Patent law might also be scary to jurists because it is of
significance to the national economy. Jurists might be concerned
that the innovation policy questions presented by patent law are
at the edge of—if not beyond—a court’s institutional competence.
So not only might jurists be embarrassed by freelancing too much
with a decision, they might also be worried that by deciding one
case too erroneously, they might provoke a parade of unintended
consequences that could harm the nation’s economic
competitiveness.
Taken together, these concerns could encourage jurists to
decide most patent cases in a fairly conservative manner,
which might predict a more modest use of scholarship in
decisions.
By contrast, trademark and copyright law have mostly not
developed the same level of exclusivity as patent law.96
Attention to secondary sources may thus be more appealing,
and may produce less fear of embarrassment or failure in the
minds of jurists. If jurists are less worried about making a
mistake or being humiliated in deciding a case, they might be
more willing to be creative in the decision, which might
encourage more use, of legal scholarship.
95. Almost invariably when we give a talk about the judicial use of legal scholarship
we are confronted with the claim: “It’s the clerks.” Assuming so, perhaps our observations
might be explained by the Supreme Court not doing a good job of hiring clerks who have
excelled in patent law. If clerks are intimidated by patent law, perhaps it affects the way
they prepare materials for the justices, including the way they draft decisions.
96. See Petherbridge, supra note 82, at 472 (concluding that the Federal Circuit has
developed a “small-law” framework for patent cases that emphasizes decisions of modest
precedential value); see also William K. Ford, Judging Expertise in Copyright Law, 14 J.
INTELL. PROP. L. 1, 3 (2006) (noting that generalist judges decide copyright and most
trademark cases, while patent law is governed by a specialized panel of judges); Nard,
supra note 1, at 683 (suggesting that, while the regional circuits’ diverse dockets may
increase their reliance on secondary authority, the Federal Circuit may be more
comfortable with patent law and thus use legal scholarship less frequently).
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v. Patent Scholarship is Not Very Interesting to Judicial
Decisionmakers. Another possibility is that patent decisions are
different in their use of scholarship because patent scholarship is
different from trademark and copyright scholarship. Our
observations might reflect the fact that legal scholarship directed
to patent issues is a lot less interesting, compelling, and helpful
to judges than scholarship directed to trademark and copyright
issues. Perhaps, for example, when it comes to patent scholarship
it is more difficult for judicial decisionmakers to separate the
wheat from the chaff, and so they avoid it altogether. Perhaps
patent scholarship, more than other areas, does a poor job of
explaining the legal principles and arguments on which it relies.
Similarly, perhaps the underlying biases, empirical limitations,
economic assumptions, or other priors that inform at least some
patent scholarship are detectable by judges, which causes them
to avoid expressly citing work in a decision. Yet another
explanation is that patent scholarship might be more than other
areas of scholarship populated by “law and” and other forms of
legal/social sciences scholarship that at least some federal judges
claim to find useless and poorly done.97 It might also be that some
patent scholarship verges sufficiently toward the abstract98 as to
be unhelpful to jurists that expect to address more specific legal
and policy questions within the constraints imposed by existing
precedent, and in a systemic context that features substantial
economic reliance on settled expectations.
vi. The Patent Bar Has Dropped the Ball. Patent decisions
might be different in their use of scholarship because the patent
bar has done a poor job absorbing the teachings of patent
97. See, e.g., Harry T. Edwards, The Growing Disjunction Between Legal Education
and the Legal Profession, 91 MICH. L. REV. 34, 35 (1992) (“I see no reason why law
professors should write mediocre economics, or philosophy, or literary criticism, when arts
and sciences professors could be doing a better job . . . .”).
98. See, e.g., Thomas L. Ambro, Citing Legal Articles in Judicial Opinions: A
Sympathetic Antipathy, 80 AM. BANKR. L.J. 547, 549 (2006) (“When we [judges] do read
the occasional article, we find it often not only unpersuasive, but even at times at odds
with accepted means of analysis.”); Judith S. Kaye, One Judge’s View of Academic Law
Review Writing, 39 J. LEGAL EDUC. 313, 319–20 (1989) (“Prominent law reviews are
increasingly dedicated to abstract, theoretical subjects . . . and less and less to practice
and professional issues . . . . I am disappointed not to find more in the law reviews that is
of value and pertinence to our cases.”); David Segal, What They Don’t Teach Law
Students: Lawyering, N.Y. TIMES, Nov. 20, 2011, at 22–23 (quoting Supreme Court Justice
Stephen Breyer: “There is evidence that law review articles have left terra firma to soar
into outer space,” and quoting Chief Justice John Roberts: “Pick up a copy of any law
review that you see . . . and the first article is likely to be, you know, the influence of
Immanuel Kant on evidentiary approaches in 18th-century Bulgaria, or something, which
I’m sure was of great interest to the academic that wrote it but isn’t of much help to the
bar.”).
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scholarship. By definition, the information central to a decision
in a case is presented to a court by the parties, at least in most
cases. Perhaps the patent bar does a worse job than the
trademark and copyright bars when it comes to taking in the
teachings of legal academics. It might follow that, compared to
their counterparts in the trademark and copyright bars, they are
less effective at translating those teachings into legal arguments.
If so, it may be that when courts address patent appeals they are
less often presented with arguments expressly derived from legal
scholarship, and so are less likely to discuss scholarship when
writing a decision.
The opposite might also be true. Perhaps the patent bar is
much more knowledgeable and engaged with scholarship than
the trademark and copyright bars. In such a case, it might be
possible that the bar is so good at absorbing and translating the
teachings of legal scholars that it has no need to refer to the
articles from which it draws ideas. In this case, the fact that an
argument was taken from scholarship might not be made
express; jurists will be unaware that scholarship is the source
and therefore not refer to it.
Finally, one reason the patent bar might have “dropped the
ball” can be found in the preceding section’s explanation. Perhaps
legal scholarship directed to patent issues is a lot less
interesting, compelling, and helpful to practitioners than is
scholarship directed to trademark and copyright issues. This
might be more the fault of legal academics than it is of an insular
and disconnected patent bar; but the result is the same. Lack of
practitioner interest in what legal academics have to teach about
the patent system and its interaction with innovation and public
policy leads to no reference in briefs, which might lower the
probability that express references are made to such teachings in
a decision.
vii. There is Less Patent Law Scholarship. A very simple
explanation for what we observe is that there might be less
scholarship directed to patent law than there is directed to
trademark and copyright law. The basic hypothesis is this: there
might be a functional relationship between the amount of
scholarship available for an issue area and the probability that
courts will reference scholarship in a decision addressing the
issue area; and the function defining the relationship is at least
somewhat direct so that more scholarship available for an issue
area produces more scholarship referenced in judicial decisions.
If so, smaller amounts of patent scholarship should produce
smaller numbers of references in judicial decisions.
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In this vein, it may have been (and may still be) the case
that patent scholarship was the province of a relatively small
number of scholars. If the field was highly esoteric, then
scholarly production may have been low (and perhaps difficult to
99
grasp) relative to the trademark and copyright areas; assuming,
as may be reasonable, that historically a broader body of law
professors felt they could competently write into those areas.
3. Why do Trademark and Copyright Decisions Appear to
Be Outliers? As noted earlier in this part, the average rate of use
100
of scholarship in a Supreme Court decision is 32.21%. In its
patent jurisprudence, the Court uses legal scholarship at a rate
101
of 28.26%. This represents a difference of 3.95 points, which,
while notable, is comparatively modest to what is observed in
trademark and copyright decisions. The reference to scholarship
in those decisions is 20.73 points and 34.46 points, respectively,
above the overall average for the Court.102 From this perspective,
the Supreme Court might be treating legal scholarship in patent
decisions as it would treat legal scholarship in (close to) an
“average” decision. Trademark and copyright decisions are then
not just more likely to reference scholarship than patent
decisions, they are far more likely to reference scholarship than
the Court’s decisions addressing other issues.103 The judicial
response, in terms of reference to legal scholarship, to trademark
and copyright decisions is an outlier—different not just from
patent decisions, but far from the center of the Supreme Court’s
behavior when authoring decisions generally.
This finding is of interest. It is not the point of the study,
however, and so we will not devote much space to it and offer our
preliminary thoughts in only general terms. Why might
trademark and copyright decisions be outliers? The short answer
is that we are not really sure. Most of the explanations,
99. Indeed, one of the reactions to the presentation of this Article, when it was
presented to the participants at the IPIL’s conference, that most stood out was the view
that much patent scholarship remains difficult to grasp. As there is indisputably a cost to
a judge or justice who uses legal scholarship, it stands to reason that scholarship that is
hard to figure out or understand is not likely to get much use in judicial opinions. Nor is
cost the only reason why. If, as ample evidence suggests, judges and justices use
scholarship strategically, it stands to reason that the strategic value of using a piece of
legal scholarship decreases if the audience who is supposed to be (a little more) won over
by the reference cannot understand it, or worse yet, might draw a contrary conclusion
from it.
100. Petherbridge & Schwartz, supra note 39, at 12.
101. See supra Table 1.
102. See Petherbridge & Schwartz, supra note 39, at 12; supra Table 1.
103. See supra Figure 1.
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moreover, that we came up with are essentially the inverse of the
explanations we offered for why patent decisions show so much
less use of scholarship than trademark and copyright decisions. A
brief summary thus includes explanations such as: statutory
manipulation might disrupt the utility of cases to settle the most
prominent statutory ambiguities, and so the judges and justices
are more often deciding in spaces where they have less ability to
rely on formal, legally binding authority. As legal scholarship can
offer rigorous-seeming authority (although not binding), it might
be helpful to judges and justices who feel uncomfortable
revealing the more intuitive or pragmatic reasoning that
genuinely animated a decision. Likewise, perhaps the multiple
factors that may lead to strategic use of scholarship are for
some reason more prominent in trademark and copyright
opinions. A couple of other things that might be plausible come
to mind. Trademark and copyright might be subjects that are
somehow more broadly intellectually stimulating than other
areas of law. If so, perhaps when a copyright issue is raised,
jurists and their clerks tend to be stimulated to read and
investigate the issues more than they do when the issue is
something else. They might also be less afraid that they will
make a mistake if they bring independent research to bear on a
decision. Another possibility is that trademark and copyright
scholarship stands out for both being easy to understand, and
being especially on point to the issues that end up arising in
litigation. As was noted earlier, legal academics have been
crucified over the last ten to fifteen years for producing
scholarship that judges, the bar, and a set of legal scholars as
well, insist is useless and unhelpful to deciding cases.104 When
jurists speak of this issue they usually finger as the culprit “law
and” and other forms of law and social sciences, e.g., economics,
scholarship, as especially unhelpful. Perhaps the body of
trademark and copyright scholarship is characterized by less of
this form of legal scholarship than other areas of study, and is
more comprised of the sort of legal scholarship the jurists and
practitioners might find valuable in the execution of their dayto-day responsibilities.
104. SECTION OF LEGAL EDUC. & ADMISSIONS TO THE BAR, AM. BAR ASS’N, LEGAL
EDUCATION AND PROFESSIONAL DEVELOPMENT—AN EDUCATIONAL CONTINUUM: REPORT
OF THE TASK FORCE ON LAW SCHOOLS AND THE PROFESSION: NARROWING THE GAP 5
(1992); David Hricik & Victoria S. Salzmann, Why There Should Be Fewer Articles Like
This One: Law Professors Should Write More for Legal Decision-Makers and Less for
Themselves, 38 SUFFOLK U. L. REV. 761, 778 (2005) (arguing that law review articles are
becoming not only “unhelpful,” but “useless”).
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4. Other Explanations & Concerns. In Part III, we
referenced a number of concerns that should be considered
when interpreting observations made using the methods
employed in this study. Here, we raise a few more.
i. The Supreme Court is Insular and Lacking in
Intellectual Curiosity. As noted earlier, we postulated that the
Supreme Court by virtue of its jurisdiction and supervision
responsibilities was unlikely to be an insular and disconnected
institution. Those unpersuaded by the reasoning we provided
may be drawn to conclude from our observations that the
Supreme Court, when it comes to its patent jurisprudence is, like
the Federal Circuit is contended to be, an insular and
disconnected institution. The same logic presumably leads to the
conclusion when it comes to trademark and copyright decisions
that the Court may be well-adjusted, engaged, and appropriately
intellectually curious.
We cannot rule this out. Our observations, however, indicate
that trademark and copyright decisions are the outliers. Patent
cases are pretty close to the central measure of the Supreme
Court’s use of scholarship in decisions. So when it comes to
trademark and copyright decisions, the implication might be that
the Court is hyper well-adjusted, hyper-engaged, and hyperintellectually curious. Unless those decisions have a special need
to cite scholarship that surpasses that of nearly every other issue
area that the Court handles, in which case the heightened use of
scholarship could just be a natural response to the subject
matter. If patent law presented the same special need, then the
observations might indicate that the Supreme Court is operating
poorly when it comes to patent decisions. The cited scholarship
might have nothing to do with intellectual property or the other
issue areas of the decisions in which it was observed.
We have not examined our coding for the identity of the
scholarship cited in the Supreme Court’s patent, trademark,
and copyright jurisprudence. As a consequence, we don’t know
for sure that the scholarship cited is directed to those topics. It
is not beyond the realm of possibility that some (perhaps
much) of the scholarship cited in the Supreme Court’s
decisions addressing these matters is, e.g., scholarship
concerning civil procedure, remedies, or questions of
administrative law. If the scholarship used in the decisions
does not concern the substance of the various IP subject
matter categories, it could affect a number of the explanations
offered. For example, such a finding might favor an
explanation along the lines of: strategic use, patent law being
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clearer and easier to jurists, less important to jurists, or
alternatively, harder, scarier, and more important to jurists
than trademark and copyright appeals.
ii. Can Looking at Judicial Use of Scholarship This Way
Really Tell Us Anything? Another concern is that the study is
observing characteristics of judicial opinions that may not be
that informative on the question of a court’s intellectual
engagement. This is illustrated not only by the myriad reasons
that we have raised that could explain the use of legal
scholarship vel non independent of intellectual engagement by
judges or justices, but also by the epithetic argument’s
implication that if the Federal Circuit cited more legal
scholarship in its decisions, observers should expect that the
court is doing a better job deciding cases in view of the policies
that animate patent law (or an equally good job as the other
circuits that are supposedly better at least in part because
they cite legal scholarship somewhat more often). How
plausible is that? Does it verge a little bit on the absurd? For at
least some readers, we think it might. Neither of us is inclined to
give the Federal Circuit, or any court for that matter, a pass on
critical review because it cites a lot of law review articles. We might
be happy they are doing it; surely it is the case that being a law
professor can be isolating—that no one is paying attention, that
propositions we raise are not often enough getting turned into “fact”
through the process of citation by courts (and other law professors
for that matter). But in the grand scheme of things, it is not obvious
that case-by-case contributions from law review-style legal
scholarship even should be a particularly important source of
authority for judges. It may well be the case that judges, justices,
reporters, and some law professors all overly emphasize the
significance of citation to law review and law journal articles in
judicial opinions.
iii. Maybe the Supreme Court is Really Different. Our
design emphasizes an analysis of the Supreme Court’s use of
scholarship in its patent, trademark and copyright decisions,
and the idea that the analysis can be somewhat analogized to
the circuit court context. Perhaps this is incorrect. Perhaps for
some reason the Supreme Court is just so different from the
circuits in ways important to the comparison we engage that
our observations do not provide insight into factors that might
be at work in the circuit context.
iv. Other Error. As always, there is the possibility that we
have erred in some way in designing or executing this study.
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V. THE END OF AN EPITHET, FOR NOW?
Recall that the central normative concern of this paper is the
utility of the empirical observation: “[T]he Second and Ninth
Circuits [in trademark and copyright decisions] cite scholarship
roughly four times as often as the Federal Circuit [does in its
105
patent decisions],” as evidence for the epithetic argument that
the performance of Federal Circuit judges is intellectually
deficient. Recall also that Professor Nard cautioned of ambiguity
in the meaning of this finding, and that we are concerned that
others have brushed that ambiguity aside and relied on the
finding to create a portable argument used to give explanatory
weight to nearly any criticism aimed at the court and its work
product. The risk we are concerned about is that the epithetic
argument has the potential to interfere with the meaningful
academic analysis of the court’s work product because it provides
a shortcut to an easy, and always negative, answer.
A review of the results and analysis drawn from Part IV
leads us to the conclusion that empirical support for the chain of
reasoning linking differential citation to intellectual deficiency is
weak, if not extremely weak. Differential citation to legal
scholarship in a court’s jurisprudence might correlate with a
court that is intellectually limited, but it doesn’t have to. Not
only is the correlation not mandatory, there are so many other
possible explanations for observing differential use of legal
scholarship between patent, and copyright and trademark
decisions that the level of complexity presses the conscience into
some degree of caution in picking one as “correct” over all the
others. Our findings might, instead, offer some evidence for the
view that differential use of legal scholarship is a more natural
phenomenon that may be unconnected, at least in many
instances, from a court’s intellectual connectedness to ongoing
law and policy discourse.
Perhaps, then, this Article will put an end to an epithet, for
now. At least until better evidence, some of which at least should
be relatively formally empirically founded, can be gathered to
support the idea that Federal Circuit judges are insular and
lacking in intellectual curiosity. In the meantime, work can focus
on evaluating the court’s work product for its effect on the patent
system, the innovation community, and the public interest
without relying on the analytical shortcut that the Federal
Circuit is intellectually circumscribed and so its work product is
necessarily subpar.
105.
Nard, supra note 1, at 683.
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VI. CONCLUSION
We hope that in presenting this Article we have encouraged
the patent community to consider the significance of Nard’s
finding—and our own—more critically than it might have before,
and thereby encouraged some fresh possibilities in approach to
the study of patent jurisprudence, and the patent system and its
attendant institutions.
APPENDIX
[Distribution of IP Decisions by Term]