In the fall of 1929 he joined his father's law firm, Williams Rich & Morse,[5] where he worked as a patent attorney[3] until 1952.[1][5][6] From 1952 to 1956, he was in private practice at Churchill, Rich, Weymouth and Engel in New York City.[6] From 1942 to 1956, he was also a lecturer in patent law at Columbia University in its School of General Studies.[1][3][4][5][6] In the 1940s, motivated by a prize competition, Rich authored a series of law review articles[8] 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][9] 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][5][6]
1952 Patent Act
Rich took an active role in the work of the New York Patent Law Association[1][5] 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][5] In 1947 he became part of a two-person committee to draft a new U.S. patent statute,[1][10] all while continuing to practice law full-time.[4] His partner on the statute drafting committee was Pasquale Joseph Federico,[10] the Examiner-in-Chief of the U.S. Patent Office.[1][5][11] After four years of work, Rich and Federico's draft statute was introduced in the Congress by Joseph Bryson (D-SC) in 1951.[12] 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.[13] It was the first full revision of U.S. patent law since the Patent Act of 1870.[14]
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 rulings from the United States Patent and Trademark Office against the patenting of genetically engineered micro-organisms (essentially giving birth to the bio-tech industry) (In re Chakrabarty), software-implemented inventions (In re Diehr), and business methods (State Street Bank v. Signature Financial Group), saying the inventions covered in those patent applications had a proper basis in the current patent statute (the 1952 Patent Act of which he was one of the principal drafters). [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 United States Patent and Trdaemark Office 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 one of the principal draftsmen of the bill (the co-draftsmen were Henry Ashton and P.J. Federico, then the Examiner-in-Chief of the United States Patent and Trademark Office).[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]
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.[30]
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][5][6] and they had a daughter, Verity Sutherland, born in 1940.[1][2][7][5] Gertrude died in 1953, and Rich married his second wife, Helen Gill Field the same year.[5][6] 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][7][31]
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][7][32]
^ abcdefghijklmnopUnited 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. LCCN2004050209.{{cite book}}: CS1 maint: others (link)
^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.
^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[permanent dead link],("[Professor] Sarnoff denounced as 'judicial activism' the Chakrabarty court's expansion of statutory language.”).
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.
^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[permanent dead link], 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.”
^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).
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.