This article contends that the Federal Circuit's decision in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., now on review before the United States Supreme Court, is more than just a controversial patent case. Festo raises, in addition, important issues with respect to stare decisis and the power and authority of the Federal Circuit and appeals courts in general. The jurisprudential issues raised by Festo are revealed by an analysis of the different methods used by the Federal Circuit majority on one hand, and Judge Michel's dissent on the other, in applying Supreme Court precedent to reach a legal conclusion. The majority's approach would give appeals courts relatively more flexibility to decide issues independent of Supreme Court precedent; Judge Michel's dissent relatively less. Having identified and characterized the different approaches used by the majority and Judge Michel, the article goes on to discuss how one might determine which approach best comports with existing law. The article concludes that: 1) while Judge Michel's approach probably better comports with Supreme Court law, one cannot rule out that an argument to the contrary can be made without more exhaustive study of Supreme Court jurisprudence; 2) because the Federal Circuit does not have any more or less power to make substantive law than other courts of appeals, whichever approach is appropriate for the Federal Circuit also must be appropriate for other courts of appeals; and 3) the Supreme Court has good reasons to address at least some of the jurisprudential issues raised by Festo regardless of how it ultimately resolves the patent law issues.
James E. Hopenfeld, Festo: A Jurisprudential Test for the Supreme Court?, 1 J. Marshall Rev. Intell. Prop. L. 69 (2001)