Giles Rich

Giles Rich
Judge of the United States Court of Appeals for the Federal Circuit
In office October 1, 1982 – June 9, 1999
Preceded by	Seat established
Succeeded by	Richard Linn
Associate Judge of the United States Court of Customs and Patent Appeals
In office July 19, 1956 – October 1, 1982
Appointed by	Dwight Eisenhower
Preceded by	Noble Johnson
Succeeded by	Seat abolished
Personal details
Born	May 30, 1904 Rochester, New York, U.S.
Died	June 9, 1999 (aged 95) Washington, D.C., U.S.
Alma mater	Harvard University Columbia University

Giles Sutherland Rich (May 30, 1904 – June 9, 1999)^{[1][2][3][4][5]} was a judge on the United States Court of Customs and Patent Appeals(CCPA)^[6] and later on the United States Court of Appeals for the Federal Circuit (CAFC),^[4][7] and had enormous impact on patent law.^[3][8] He was the first patent attorney appointed to any federal court.^[7][8]

Early life

Judge Rich was born May 30, 1904, in Rochester, New York.^{[1][2][3][4][6][9]} Rich was the son of Giles Willard Rich, a patent lawyer, and Sarah Thompson (Sutherland) Rich.^[1][6] His father worked for a variety of clients, including George Eastman, the founder of the Eastman Kodak Company.^[3][5] After his first year of high school his family moved to New York City, where he graduated from the Horace Mann School for Boys in 1922.^[3][5] Rich received a B.S. from Harvard College in 1926 and an LL.B. from Columbia Law School in 1929.^{[2][3][4][6][9]} and was admitted to the New York bar.^[1][6]

In the fall of 1929 he joined his father's law firm, Williams Rich & Morse,^[6] where he worked as a patent attorney^[3] until 1952.^[1][6][9] From 1952 to 1956, he was in private practice at Churchill, Rich, Weymouth and Engel in New York, NY.^[9] From 1942 to 1956, he was also a lecturer in patent law at Columbia University in its School of General Studies.^{[1][3][4][6][9]} In the 1940s, motivated by a prize competition, Rich authored a series of law review articles^[10] on patent practices and the anti-monopoly laws, and particularly, on contributory infringement and misuse.^[1] The series is considered by many to be a classic in the field.^[1][7] He was very active in the work of the New York Patent Law Association, and eventually became its vice president in 1948 and 1949, and its president in 1950 and 1951.^[1][2][6][9]

1952 Patent Act

Rich took an active role in the work of the New York Patent Law Association^[1][6] when it undertook to introduce and foster legislation to address the Supreme Court's Mercoid cases, which virtually destroyed the doctrine of contributory infringement.^[1][6] In 1947 he became part of a two-person committee to draft a new U.S. patent statute,^[1][11] all while continuing to practice law full-time.^[4] His partner on the statute drafting committee was Pasquale Joseph Federico,^[11] the Examiner-in-Chief of the U.S. Patent Office.^[1][6][12] After four years of work, Rich and Federico's draft statute was introduced in the Congress by Joseph Bryson (D-SC) in 1951.^[13] After passing both houses without substantial debate, as part of a "consent bill,", it was signed into law by President Truman in 1952, to take effect in 1953.^[14] It was the first full revision of U.S. patent law since the Patent Act of 1870.^[15]

Judicial appointment and later life

In 1956, Rich was nominated by President Dwight Eisenhower on May 17, 1956^[1] to become a judge on the U.S. Court of Customs and Patent Appeals (CCPA),^[4] which had jurisdiction for certain cases from the U.S. Patent Office, the U.S. Customs Court, and the U.S. International Trade Commission. He served as chief judge of the CCPA for part of that time, and was also an adjunct professor of patent law at Georgetown University from 1963 to 1969.^[4][9] In 1963, he was awarded the Charles F. Kettering Award from the Patent, Trademark, and Copyright Research Institute at George Washington University.^[9]

Upon passage of the Federal Courts Improvement Act of 1982, the CCPA and the appellate division of the Court of Claims were merged into the new Court of Appeals for the Federal Circuit (CAFC), and the judges from the CCPA, including Judge Rich, were transferred to the CAFC.^[16] Judge Rich served on the CAFC until his death in 1999.^[3][7] At 95, he had become the oldest active federal judge;^[1][3] he never took senior status,^[7] a time when judges typically assume a reduced workload and semi-retire.^[17]

Notable judicial opinions

Judge Rich's judicial opinions were often notable for their colorful and memorable language. For example, in one case in which a majority of the Federal Circuit judges were unwilling to accept as a binding precedent an earlier decision of that court with which he was apparently in sympathy, he said in dissent that they acted with "defiant disregard" of precedent and added: "[I]t is mutiny. It is heresy. It is illegal."^[18]

Chakrabarty, Diehr, State Street

Judge Rich's judicial opinions include some of those most groundbreaking, influential, and controversial to modern U.S. patent law. He wrote opinions in which the court struck down prior rules against the patenting of living things (In re Chakrabarty), software-implemented inventions (In re Diehr), and business methods (State Street Bank v. Signature Financial Group), saying those rules did not have a proper basis in the patent statute (which he stated that he had co-written), and opening the way for inventors to receive patents in those areas of subject matter.^[19]

Controversy over those cases

In re Diehr and especially State Street Bank v. Signature Financial Group were highly controversial decisions. Many in the academic and legal community thought that the cases were wrongly decided and examples of judicial activism on the basis of a pro-patentee agenda, and the legal reasoning utilized in these decisions has been severely criticized.^[20] For example, in State Street Bank v. Signature Financial Group, Judge Rich justified his conclusion on the basis that the business method exception to patentability was abolished by the 1952 Patent Act. However, this line of reasoning is contradicted by Judge Rich himself, among others. He had earlier stated, in a law review article written not long after the passage of the 1952 Patent Act,^[21] that Section 101 of the Act denied patent protection to business methods, observing that the diaper service, "one of the greatest inventions of our times," was patent-ineligible because it was a business method. The State Street decision was substantially overruled in the Federal Circuit's 2008 decision in In re Bilski. The Supreme Court's decisions in the Bilski-Mayo-Alice trilogy even more definitively rejected the line of doctrine that culminated in the State Street decision.^[22]

Outspoken critic

Judge Rich was an outspoken critic of the Supreme Court and Justice Department when they took positions on patent law in opposition to those which he advocated. For example, in his opinion on remand in the case In re Bergy,^[23] after the Supreme Court vacated the judgment of the CCPA that he had authored for that court, and remanded the case to the CCPA "for further consideration in light of" the Supreme Court's decision in Parker v. Flook, he wrote a second Bergy opinion for the CCPA. In it he reached the same result and said that Flook shed no light^[24] and that the Justice Department had misled the Supreme Court to reach its decision.^[25]

Controversy over interpretation of 1952 Act

This episode was part of a long-running controversy about how the 1952 Patent Act should be interpreted − was it a mere re-codification of prior law without substantive change or did it break new ground? Judge Rich took the position that it broke new ground and that special deference should be given his views because of his relation to the process as draftsman of the bill.^[26] A contrary view – that Congress intended no major substantive change – is reflected in the concurring opinion of Justice Hugo Black in Aro Mfg. Co. v. Convertible Top Replacement Co.^[27]

Recognition and Legacy

In 1992 Rich earned special recognition from President Bush for his contributions to the U.S. patent code.^[28] That same year, Rich was also honored with an American Inn of Court established in his name to foster professionalism, ethics, civility, and legal skills in the area of intellectual property.^[29]

Upon learning of Judge Rich's death, the Acting Commissioner of Patents and Trademarks, Q. Todd Dickinson, remarked:

Judge Rich was the single most important figure in twentieth century intellectual property law...Judge Rich leaves a rich legacy in his voluminous body of judicial opinions and in the 1952 Patent Act which he helped to draft. We have lost the dean of the twentieth century patent system.^[8]

A prominent annual intellectual property moot court competition, the Giles Rich I.P. Moot Court Competition, run by the American Intellectual Property Law Association, starting in 1973, was named after him.

In 2006 Judge Rich was inducted into the IP Hall of Fame.^[28]

Personal

On January 10, 1931, Rich married his first wife, Gertrude Verity Braun, the daughter of a Barnard College professor who was head of the German Department,^[1][6][9] and they had a daughter, Verity Sutherland, born in 1940.^[1][2][5][6] Gertrude died in 1953, and Rich married his second wife, Helen Gill Field the same year.^[6][9] At the time of his death, he was survived by his second wife, Helen; his daughter, Verity Rich Hallinan; a granddaughter; a niece, Eleanor Van Staagen Mitchell; and a nephew.^[2][5][30]

He was an accomplished photographer,^[3] and known among patent lawyers and judges for his curiosity and familiarity with the mechanics of everyday appliances.^[3][5][31]

Rich succumbed to lymphoma on June 9, 1999, at Sibley Memorial Hospital in Washington, D.C.^[2][5]

References

1. United States Court of Appeals for the Federal Circuit: A History: 1990–2002. Compiled by members of the Advisory Council to the United States Court of Appeals for the Federal Circuit in celebration of the court's twentieth anniversary. Washington, D.C.: U.S. Court of Appeals for the Federal Circuit. 2004. LCCN 2004050209.
2. Barnes, Bart (June 11, 1999). "Giles S. Rich Dies at 95". The Washington Post. Retrieved 5 August 2016.
3. Oppel, Richard A. (June 12, 1999). "Giles S. Rich, Oldest Active Federal Judge, Dies at 95". New York Times. Retrieved 5 August 2016.
4. "Biographical Directory of Federal Judges - Rich, Giles Sutherland". History of the Federal Judiciary. Federal Judicial Center. Retrieved 5 August 2016.
5. Thurber, Jon (June 14, 1999). "Judge Giles Rich; Patent Law Authority". Los Angeles Times. Retrieved 6 August 2016.
6. Rich, Giles S (1980). A brief history of the United States Court of Customs and Patent Appeals. Washington, D.C.: Published by authorization of the Committee on the Bicentennial of Independence and the Constitution of the Judicial Conference of the United States : 1980. pp. 131–134. Retrieved 8 August 2016.
7. Davis, James F. (September–October 2009). "Judge Giles S. Rich: His Life and Legacy Revisited" (PDF). Landslide: A publication of the American Bar Association. 2 (1): 2. Retrieved 5 August 2016.
8. "Patent and Trademark Office Mourns Death of Judge Giles S. Rich". Press Release #99-14. United States Patent and Trademark Office. June 10, 1999. Retrieved 6 August 2016.
9. Biographical Note (November 2014). Giles S. Rich Papers. Washington, D.C.: Library of Congress. pp. 3–4. Retrieved 6 August 2016.
10. Rich, G. (1942). "The Relation between Patent Practices and the Anti-monopoly Laws". JPOS. 24 (pts. 1-5): 85, 159, 241, 328, 422.
11. Sirilla, George M. (foreword by Honorable Giles S. Rich). "35 U.S.C. 103: From Hotchkiss to Hand to Rich, the Obvious Patent Law Hall-of-Famers". Marshall L. Rev. 32 (3): 443. Retrieved 5 August 2016.
12. Federico, P.J. (1954). "Commentary on the New Patent Act". Journal of the Patent and Trademark Office Society. 75: 161.
13. U.S. Congress (1953). Calendars of the United States House of Representatives and History of Legislation (PDF). 82nd Cong (H.R. 7794). p. 272. Retrieved 7 August 2016.
14. "Pub. L. No. 593, ch. 950, §4(a), 166 Stat. 815". U.S. House of Representatives.
15. Riesenfeld, Stefan (1954). "The New United States Patent Act in the Light of Comparative Law". U. Pa. L. Rev. 102 (3): 292.
16. "The U.S. Court of Appeals for the Federal Circuit: An Act To establish a United States Court of Appeals for the Federal Circuit, to establish a United States Claims Court, and for other purposes.". History of the Federal Judiciary. Federal Judicial Center. Retrieved 8 August 2016.
17. "28 U.S.C. § 371(b)".
18. Atlantic Thermoplastics Co., Inc. v. Faytex Corp., 974 F.2d 1279, 1281 (Fed. Cir. 1992). In 2009, the Federal Circuit ruled in favor of the "mutineers," however, in Abbott Laboratories v. Sandoz Inc., 566 F. 3d 1282 (Fed. Cir. 2009). By then, however, Judge Rich was no longer on the court.
19. The earlier two of these decisions were later affirmed by the U.S. Supreme Court. See Diamond v. Chakrabarty and Diamond v. Diehr. The Supreme Court overturned the State Street Bank decision in Alice Corp. v. CLS Bank International see also Bilski v. Kappos. The Supreme Court drastically "re-interpreted" Diehr in Mayo Collaborative Services v. Prometheus Laboratories, Inc. or overruled it sub silentio.
20. See, for example, R. Hulse, Patentability of Computer Software After State Street Bank & Trust Co. v. Signature Financial Group, Inc.: Evisceration of the Subject Matter Requirement, 33 U.C. Davis L. Rev. 491 (2000); Pamela Samuelson, A Manifesto Concerning the Legal Protection of Computer Programs, 94 Colum. L. Rev. 2308 (1994); Rafael X. Zahralddin, The Effect of Broad Patent Scope on the Competitiveness of United States Industry, 17 DEL. J. CORP. L. 949 (1992); Pamela Samuelson, Benson Revisited: The Case Against Patent Protection for Algorithms and Other Computer Program-Related Inventions, 39 EMORY L.J. 1025 (1990). See also Law School Symposium,("[Professor] Sarnoff denounced as 'judicial activism' the Chakrabarty court's expansion of statutory language.”).
21. The Principles of Patentability, 28 Geo. Wash. L. Rev. 393 (1960).
22. See Bilski v. Kappos; Mayo Collaborative Services v. Prometheus Laboratories, Inc.; Alice Corp. v. CLS Bank International.
23. 596 F.2d 952 (CCPA 1979).
24. "To conclude on the light Flook sheds on these cases, very simply, for the reasons we have stated, we find none." Bergy, 596 F.2d at 968.
25. He wrote:

    We have observed with regret that the briefs filed by the Solicitor General . . . in Parker v. Flook, a case which, as the Court noted, "turns entirely on the proper construction of § 101," badly, and with a seeming sense of purpose, confuse the statutory-categories requirement of § 101 with a requirement for the existence of "invention."

    Bergy, 596 F.2d at 963. He also stated that the foregoing argument by the government was "subversive nonsense." Bergy, 596 F.2d at 964.
26. See Giles S. Rich, Congressional Intent – Or, Who Wrote the Patent Act of 1952?, in Patent Procurement and Exploitation (BNA 1963). The answer was "we did," meaning the drafting committee of patent lawyers urging passage of a revised patent act. In that article and a paper entitled The Vague Concept of Invention as Replaced by Section 103 of the 1952 Patent Act, Judge Rich argued: “The intent with respect to the Patent Act of 1952 was the intent of a subcommittee to pass a bill prepared by patent lawyers as agreed to by a codification council, committee council and member of the subcommittee after the countless discussions and hearings.”
27. Black quotes a passage from the Senate debates on the act:

    If anyone is inclined, despite other evidence to the contrary, to attribute to Congress a purpose to accomplish any far-reaching changes in the substantive law by this enactment, he should take note that, just before the bill was passed in the Senate, Senator Saltonstall asked on the floor, "Does the bill change the law in any way or only codify the present patent laws?" Senator McCarran, Chairman of the Judiciary Committee which had been in charge of the bill for the Senate, replied, "It codifies the present patent laws." 98 Cong.Rec. 9323 (July 4, 1952).

    Aro, 365 U.S. at 347, n.2. Justice Black's discussion apparently takes the view that congressional intent was to be found in the floor debates rather than that of a group of "patent lawyers as agreed to by a codification council, committee council and [a] member of the subcommittee," as Judge Rich urged (see preceding footnote).
28. "Giles Rich: A highly influential judge and an author of the US Patent Act of 1952". IP Hall of Fame. Retrieved 7 August 2016.
29. "The Giles S. Rich American Inn of Court". Retrieved 7 August 2016.
30. "Issue overview (Volume 3, 2009)". Federal Circuit Historical Society. Retrieved 6 August 2016.
31. Michel, Paul R. (1999). "Recollections of Judge Giles S. Rich". Berkeley Tech. L. J. 14 (3): 889–894. doi:10.15779/Z38ZT16. Retrieved 6 August 2016.

External links

• Federal Judicial Center CCPA entry on Giles Sutherland Rich
• Giles Rich at the Biographical Directory of Federal Judges, a public domain publication of the Federal Judicial Center.
  

Bibliography

Rich, Giles S. (1980). A brief history of the United States Court of Customs and Patent Appeals. Washington, D.C.: Published by authorization of Committee on the Bicentennial of Independence and the Constitution of the Judicial Conference of the United States : U.S. G.P.O.