The CCPA's Lasting Impact On U.S. Patent Law: Part 1

• Published date: 11 July 2022
• Subject Matter: Intellectual Property, Patent
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Author: Ms Amanda Murphy, Caitlin E. O'Connell, Angeline Premraj, Emma N. Ng, Brady Nash, Stacy Lewis and Thomas Irving

The Court of Customs and Patent Appeals (CCPA), which always sat en banc and was the predecessor to today's Court of Appeals for the Federal Circuit (CAFC), developed a rich body of jurisprudence relating to U.S. patent law. Titans of the U.S. patent bar, such as Judge Giles Sutherland Rich, who was a co-author of the 1952 Patent Act, populated the CCPA and rendered those decisions.

The CAFC adopted all CCPA holdings as binding precedent in its very first decision, South Corp. v. U.S., 690 F.2d 1368 (Fed. Cir. 1982):

This appeal is the first to be heard, and this opinion the first to be published, by the United States Court of Appeals for the Federal Circuit, established October 1, 1982 by the Federal Courts Improvement Act of 1982, Pub. L. No. 97-164, 96 Stat. 25.

The court sits in banc to consider what case law, if any, may appropriately serve as established precedent. We hold that the holdings of our predecessor courts, the United States Court of Claims and the United States Court of Customs and Patent Appeals (CCPA), announced by those courts before the close of business September 30, 1982, shall be binding as precedent in this court.

Id. at 1369 (emphasis added).

Overturning CCPA holdings should, therefore, require either a decision by an en banc Federal Circuit, as indicated in South Corp., or a decision by the CCPA overruling the precedent. The last chance the CCPA had to overrule one of its decisions was in 1982, some 40 years ago. And the Federal Circuit has rarely explicitly done so in the 40 years of its existence.¹ One would thus conclude that nearly all CCPA authority remains as en banc precedent in the Federal Circuit.

But a recent Federal Circuit patent decision in Indivior UK Ltd. v. Reddy's Labs. S.A., 18 F.4^th1323 (Fed. Cir. 2021), has caused a stir in the minds of some that the CCPA's influence over the Federal Circuit may be diminishing. We previously published on that case (here) and suggested that the Federal Circuit's decision may have conflicted with the CCPA's holdings from In re Wertheim, as argued by Judge Linn in his dissent from the majority opinion in Indivior.

Inspired by this seeming discrepancy between the decisions by the two courts in two factually similar cases, we looked at the patent cases decided by the Federal Circuit in 1983 (the first full year of the CAFC's existence), and those decided in 2021 (the most recent full year of CAFC decisions at the time of this article) to investigate whether the Federal Circuit...