Skip to Main Content

The Federal Paper Chase: Judges' Papers in the Manuscript Division

U.S. Court of Appeals for the Federal Circuit

Under Article III of the Constitution, on October 1, 1982, the court formally known as the United States Court of Customs and Patent Appeals, became the United States Court of Appeals for the Federal Circuit.

It is the most unique of the thirteen court of federal appeals. The United States Court of Appeals exerts nationwide jurisdiction in a variety of subject areas, including international trade, government contracts, patents, trademarks, certain money claims against the United States government, federal personnel, veterans' benefits, and public safety officers' benefits claims. It accepts appeals from all federal district courts, the United States Court of Federal Claims, the United States Court of International Trade, and the United States Court of Appeals for Veterans Claims. In addition, the court reviews certain administrative agency decisions, including those from the U.S. Trademark Trial and Appeal Board, the U.S. Patent Trial and Appeal Board, the Boards of Contract Appeals, the U.S. Merit Systems Protection Board, the Congressional Office of Compliance, the Government Accountability Office Personnel Appeals Board, and the U.S. International Trade Commission.

Giles S. Rich Papers

“It seems beyond question that the machines – the computers – are in the technological field, are a part of one of our best known technologies, and are in the ‘useful arts’ rather than the ‘liberal arts,’ as are all other types of ‘business machines,’ regardless of the uses to which their users may put them,” Judge Giles S. Rich wrote in his opinion for In re Benson (1971). “How can it be said that a process having no practical value other than enhancing the internal operation of those machines is not likewise in the technological or useful arts?” His decision briefly reversed the then Patent Office Board of Appeals which had initially rejected the idea that computer programs which converted binary coded decimal number representations into binary number representations could not be patented since they were “mental processes” and “mathematical steps,” rather than art.1

Judge Rich disagreed. Although the Supreme Court would overturn his ruling, Rich’s opinion proved prescient.

For historians of intellectual property and technology, few collections contain as much research value as that of the Giles S. Rich Papers. Appointed to the United States Court of Customs and Patent Appeals in 1956, Rich served 43 years on the court until his death in 1999. Famously, having never assumed senior status, Rich, at the time of his passing had become the oldest active judge in federal court history. The papers span the years 1790-1990 with the bulk of the material focused on the period from 1956 to 1999.

Thomas O'Halloran, photographer. Patent Office. May 11, 1971. Library of Congress Prints and Photographs Division.

During his tenure his judicial decisions “helped to establish a legal cornerstone for modern biotechnology and the computer, information technology, and software industries,” noted one of the many obituaries that followed his death in 1999.2

“His legal career spanned advising clients on patents for talking pictures to ruling on whether life forms could be patented,” observed the Los Angeles Times in 1999.3

His colleague on the court, Judge Raymond C. Clevenger described Rich’s verdicts as “bellwethers, opinions that mark the boundaries [leaving] lesser judges … [to] fill in the holes.”4

Born in 1904, Rich not only witnessed great technological change and ruled on its legal provisions, he also wrote it into legislation as one of the authors of the 1952 Patent Law. It remains the core of the nation’s patent regulations. Initially, the collection lacked any documentation of his work on the law which preceded his court service. In 2017, however, a donation from the United States Court of Appeals for the Federal Circuit, found in Addition II, added new materials that addressed this omission as well as tracking Rich’s interest in patent reform from 1967 to 1976. For other aspects of his career prior to the court, researchers should review the Pre-Judicial File series, which focuses largely on Rich’s work as an expert on patent law and his teaching at Columbia University.

One of the key aspects of the law, written and championed by Rich, was the concept of “non-obviousness” or the idea that any item can be patented if its obviousness was not apparent to a person of ordinary skill working in the area of the proposed patent when the item had been developed. It would take nearly fifteen years before the Supreme Court affirmed this concept in Graham v. John Deere Company. (1966). The Subject File series contains materials related to this case and others that appeared before the Supreme Court in addition to files on biotechnology, software protection, trademarks, and the history of the Court of Customs and Patent Appeals. Rich provides further comment regarding “non-obviousness” in correspondence and other materials related to his Charles F. Kettering Award address in 1964 located in the Speeches, Writings, and Events File series.

His court papers, at least those directly related to cases over which he presided and/or participated, are divided between two series: United States Court of Customs and Patent Appeals (which itself is divided into two sub series: an administrative file and a case file) and the United States Court of Appeals for the Federal Circuit (which is divided into three subseries: administrative file, a case file, and an en banc case file).

Prior to 1982, patent cases filtered through the federal judicial system in different courts, which lead to confusion in decisions and outcomes. In an effort to centralize and establish greater uniformity in the field’s jurisprudence, in 1982 nearly all patent law was organized under one court by combining the Court of Customs and Patent Appeals and the Court of Claims under the United States Court of Appeals for the Federal Circuit.

Throughout both series, the case files are extensive. In part, this is due to Rich’s meticulous research and writing. “It was routine for him to write detailed memoranda commenting on opinions by other Federal Circuit judges,” wrote former Rich law clerk Paul R. Michel in a 1999 memorial to the judge. “These memos would cover every kind of matter – from the most sublime, usually unarticulated notions of jurisprudence and legal logic all the way down to proper placement of commas and everything in between.” Files for trials from the 1990s are the exception to this rule; they are incomplete in the collection and often comprise only Rich’s notes and law clerks’ memoranda. The case files in both series include final and draft copies of opinions, notes from oral arguments, correspondence and law clerks’ memoranda, vote tallies, circulated opinions, briefs, transcripts, background material and administrative sheets. These two series document patent and intellectual property law as it developed in tandem with science and technology in the latter half of the twentieth century. In addition, both contain Rich’s correspondence with fellow federal judges and his law clerks. One final note, case files from the 1982-1983 annual term of the United States Court of Appeals for the Federal Circuit can also be found in Addition I.

Marion S. Trikosko, photographer. Home computer systems & computer store. October 12, 1977. Library of Congress Prints and Photographs Division.

A “towering figure in patent and intellectual law for a half a century,” Rich cast an enormous shadow over the field, and it would be difficult to summarize all the cases in which he played a role.5

Several, however, are noted here and are located in either of the two series described above. In his opinion for In re Bergy which burst open the doors of the biotech industry, Rich argued that genetically engineered life forms, in this case a strain of bacteria that aided the breakdown of crude oil, were patentable. The Supreme Court later affirmed the ruling in Diamond v. Chakrabarty. Rich’s decisions in the aforementioned In re Benson and In re Diehr, extended patent protection to computer software programs, however, only the latter was affirmed by the Supreme Court. In a opinion written by Justice William O. Douglas, who former Rich law clerk Neil Smith asserts was “never a fan of the patent system” reversed Rich’s 1971 ruling in 1972’s Gottschalk v. Benson. “6

Although Judge Rich was personally stung by the Douglas opinion in Benson, the courts eventually adopted his position.” Rich would limit Douglas’s opinion in a later case, In re Alappat writing,"[i]n this way, the door remains open to the advancement of technologies by the incorporation of digital electronics.”7

Further examples such as In re Honeywell, where the judge asserted that the shape and appearance of an item, such as round thermostat, was also patentable, demonstrate Rich’s attention to design aspects of patent law. Rich’s concurrences such as In re Mogen David Wine Corp. and In re Deister Concentrator Company. also carried legal significance. Along with his majority opinion for In re Morton Norwich Products Inc., these three examples along with others from the collection, arguably contributed to the development of trade dress law, which protects product configurations. Even in his later years, Rich continued to draft influential opinions represented most notably by State Street Bank & Trust Company v. Signature Financial Group which recognized patents for business and financial methods.

Finally, the Correspondence File series consists of letters with attorneys, judges, government officials, and professional organizations and largely relates to Rich’s service on the bench. Law, legislation, and the impact of decisions by other United States courts are the major themes in the series, though much of the correspondence is general in nature pertaining to scheduling, invitations, and personal notes. Tom Arnold, George E. Frost, Frank Y. Gladney, Learned Hand, Alan Latman, Paul P. Rao, Homer J. Schneider, Arthur M. Smith, and Robert C. Watson are some of the more notable correspondents in this series.

  1. Neil A. Smith, "Remembrances and Memorial: Judge Giles S. Rich, 1904-1999," Berkeley Technology Law Journal, Vol. 14 No. 3 (Fall 1999): 909-918. Back to text
  2. John Thurber, "Judge Giles Rich; Patent Law Authority," Los Angeles Times, June 14, 1999. Back to text
  3. Ibid. Back to text
  4. Richard A. Oppel Jr., "Giles S. Rich, Oldest Active Federal Judge, Dies at 95," New York Times, June 12, 1999. Back to text
  5. Ibid. Back to text
  6. Neil A. Smith, "Remembrances and Memorial: Judge Giles S. Rich, 1904-1999." Back to text
  7. Ibid. Back to text

The following collection title links to fuller bibliographic information in the Library of Congress Online Catalog. A link to the collection finding aid is included when available.