BIOGRAPHICAL OUTLINE OF HOWARD THOMAS MARKEY, CHIEF JUDGE,

U.S. COURT OF CUSTOMS AND PATENT APPEALS

Born November 10, 1920, in Chicago, Illinois, J.D., cum laude, Loyola University, Chicago, 1949; master of patent law, John Marshall Law School, 1950; Parker & Carter; Parker, Markey & Plyer, 1949-50; 1952-72; married Elizabeth Pelletier of Chicago, 1942; four children: Jeffrey, Christohper, Thomas (deceased), and Mary Frances; served 5 years Army Air Corps, WWII; one of earliest jet plane test pilots (1944); recalled and served 21 months in Korean War; major general, U.S. Air Force Reserve (retired); DSM, LM, DFC, SM, PH, AM, BS, Mil. Merit Ulchi (Government of Korea), and nine service medals; author, "Thomas More-Circa 1975," 21 Loyola L. Rev. (New Orleans) 807; "Old Wine in New Bottles," 122 Cong. Rec. H-5107 (Daily Ed. June 1, 1976); "The Status of the American Patent System-Sans Myth, Sans Fiction" 59 JPOS 164 (1977); "Science and Law-Toward a Happier Marriage" 59 JPOS 343 (1977); George Washington Honor Medal, Freedoms Foundation, Valley Forge (1964); Citation of Merit, John Marshall Law School (1972); Medal of Excellence, Loyola University School of Law (Chicago, 1973); Doctor of Laws, Honoris Causa, New York Law School (1977); Jefferson Medal, New Jersey Patent Law Association (1977); first editor in chief, Law Review Publication,. Loyola University (Chicago); past president and past chairman of the board, Air Force Association; past post commander, American Legion; trustee, Aerospace Education Foundation, Air Force Aid Society; Rotarian; chairman, Professional Ethics Committee, Federal Bar Association; chairman, Science Liaison Task Force, Federal Judicial Center; Coordinator, Bicentennial Projects of the Federal Judiciary; member, Judicial Conference of the United States, American Bar Association, American Judicature Society, World Association of Judges, Supreme Court Historical Society, Board of Certification of Circuit Executives, Subcommittee on Judicial Improvements of the Judicial Conference of the United States; appointed Chief Judge of the U.S. Court of Customs and Patent Appeals, June 21, 1972; entered upon duties of that office on June 26, 1972.

Chief Judge Markey is the first active judge to have sat with every federal Circuit Court of Appeals, having sat in over 450 cases and written over 90 opinions in every type of case for the circuits. He has also sat as a trial judge in the federal District Court of the District of Columbia. He has lectured to the Judicial Workshops conducted by the Federal Judicial Center.

Judge MARKEY. Mr. Chairman, I have just two comments with reference to the written statement. On page 2, I refer to the fact that S. 2857, as now drafted, does not create the problem of slamming the doors of the Federal courts. I should have gone further to say that in providing relief from some of the crowded conditions in the district courts, those segments of the bill tend to relieve that problem. It not only does not raise the problem but it tends to relieve it.

As the chairman may have noted in the prepared statement, we foresee no difficulty at this stage in our court's activities as they may be affected by the bill. The number of increased appeals, of course, is totally unpredicable. We do not believe in crying until we are hurt or in demanding additional staff or funds or anything of that sort on the premise that we might have to do more.

If that should arise, we would not hesitate to so inform the committee or the appropriate committees of the Congress. We do not do that until it is absolutely necessary.

The prepared statement does point out, Mr. Chairman, one or two very small things. In subsection 1546 of the bill, there is an indication that jurisdiction there is set exclusively in our court and does not extend to any other decision of the Secretary of Commerce. Under section 1544, we already take appeals from certain of the Secretary's decisions.

There would be, therefore, a conflict, and our suggestion was that this could be cured, as we said in our statement, by simply saying, "Except as otherwise provided by law."

Alternatively, you could delete the sentence on the premise that the grant of that jurisdiction need not be described as limited. It is limited by the language itself.

Nothing else is that important except perhaps, Mr. Chairman, at the top of page 8 of my statement, where I refer to the end of section 1546, which contains a paragraph dealing with mandamus and injunctions. I believe it may have been the intent of the committee, or of the drafters, to apply that to subsection (c) and (d), rather than referring to the entire section.

The entire section includes 1546 (b) saying that our court has all the powers of a court of appeals, which we would favor as a reaffirmation There is not a great deal more to comment about the statement itself, Mr. Chairman, in view of the fact that it is in the record.

I would say, however, that at the end of the statement, where it was indicated we would be pleased to answer any questions about the operations of our court, it was not intended for a moment to indicate that I would not try to answer any questions beyond the operations of our court, should the chairman have any such questions.

Senator DECONCINI. Judge, what is the caseload of the appeals court?

Judge MARKEY. The caseload currently in our court is only about 28 appeals from the Customs Court last year. The year before that it was 26. It has hovered in the 26, 28, 30 area for the last 5 or 6 years.

On the patent side, it has varied from 130 and 140 and 185 and 195 cases. The difficulty, of course, as the chairman is no doubt aware from working with other committees and with other courts, is the numbers game. It is impossible, in my view, to compare courts or workloads vis-a-vis the other courts. It is possible, obviously, to make comparisons from year to year with regard to the same court.

Our cases, as the chairman no doubt knows, are extremely technologically complicated not only on the customs side but also on the patent side. For the moment, we have laser cases, satellite cases, satellite cameras. You name it and we have it somewhere in the courthouse. This requires a good deal of expertise. We have no criminal appeals, for example. We have no appeals under 1983 or any civil rights situations with prisoners and so on. The courts of appeals, as the chairman is no doubt aware, dispose of those types of cases with a great deal less effort than we might have to go through.

That is a long answer to a short question, Mr. Chairman. I will try to keep my answers short.

Senator DECONCINI. Thank you, Judge. I am glad to get that little bit of background.

S. 2857 provides for Government counterclaims. It provides that the Government can counterclaim. There was some testimony given last Friday to the effect that this may be too broad a stroke and may get into a lot of other areas. There was even some testimony that said we should not have any counterclaim whatsoever even in a restricted

area.

Do you care to comment or do you think it would affect your court any great deal if the Government could counterclaim?

Judge MARKEY. It would not affect our court at all, Mr. Chairman, except insofar as a counterclaim serves its normal function which is the reduction in the judicial workload or, put another way, the aiding of judicial economy.

Obviously, if the matter is handled in one proceeding, it often saves economy, but on occasion it can go the other way. Normally it would save the separate action.

My interpretation, Mr. Chairman, of that provision of the bill is that the drafters of the bill intended that the counterclaim or setoff would be based on or arise from the very same transactions which the plaintiff has brought into the courthouse. It would not be based on some other importation that may have occurred months or years earlier which would be entirely separate from and distinct from that involved in the complaint. If there were any question about that, of course, a simple amendment could so indicate.

This would bring it into line, of course, with the normal counterclaim under the Federal Rules of Civil Procedure in the courts of appeals and district courts where a compulsory counterclaim is brought up from the very same facts or the factual situations which gave rise to the complaint in the first place.

Insofar as our court is concerned, it would have virtually no effect inasmuch as we would receive the entire case from the beginning.

Senator DECONCINI. I understand, Judge, that you had an opportunity to review both Judge Re's testimony and Mr. Vance's testimony, which will be presented here shortly.

Do you have any general comments as to either of these statements? Judge MARKEY. Yes, Mr. Chairman. As indicated in my statement, of course, which was prepared prior to the opportunity to see either the statement of Judge Re or that of Mr. Vance, I am sure my colleagues at the Customs Court will forgive me if I comment in response to the chairman's question in some disagreement with the second portion, you might say, of the Custom Court's statement.

I think there is total agreement across the board on what is called the "first category," that is, the grant of powers of the district court and so on to the Customs Court.

With respect to the position, as I understand it and if I understand it correctly, that the bill should be split, I think that would be a fundamental mistake. I find nothing in the statement of the Customs Court which would warrant that.

I frankly think that much of that statement, if I understand it correctly, is based on some misconceptions. I was very pleased by the statement of the Customs Court to note the complete willingness of the Customs Court to accept the additional jurisdiction involved before the subcommittee at this moment and all the additional duties that that may entail.

However, there are indications in the statement of the Customs Court, on some matters, which do not seem to recognize the unique nature of customs litigation. Under the Constitution, as the chairman knows, we are to attempt to create uniformity of treatment of merchandise and classes of merchandise.

It is not like the normal lawsuit where a party has a complaint against the Government.

32-626-78-9

We cannot have someone importing glasses, for example, in New York and paying one duty and importing the same glasses or similar glasses in New Orleans and paying a different duty.

There are indications in the statement of the Customs Court that the bill somehow grants powers of the district court and in other sections removes them. I think that stems from an apparent failure to distinguish between a grant of power or a having of power and the exercising of it. These are two different things.

There are statements that it is desired that they have all the powers of the district court, and that is fine. We are thoroughly in accord with that. But, the notion that there are no restrictions and no limits on the exercise of the powers of the district court, if that notion exists here, is, of course, mistaken.

The Congress has repeatedly limited the exercise of the powers of the district courts. They are denied entirely, for example, in the field of NLRB and FCC. These, of course, go directly to the court of appeals.

They are limited in the labor law against giving injunctions against a labor organization and its activities and so on. So, I think that is a fundamental mistake that might have led to a thought of splitting the current bill.

Then, Mr. Chairman, there is the constant reference throughout that portion of the statement of the Customs Court to something called "the congressional policy of judicial review." I may not be too aware, but I have not been able to find any congressional policy of judicial review. The implication here is that it resides in the Administrative Procedure Act.

As the chairman knows, the Administrative Procedure Act has been applied by the Congress to some agencies and some actions of some agencies and has been specifically denied to other actions of other agencies or of the same agency. Or it has been denied where almost total discretion is granted by the Congress to one of the Secretaries. The courts have, where nothing has been said, in many instances indicated the view that judicial review under the APA should be granted.

On the other hand, they have fully recognized that in the areas of national security, for example, and others that it does not. The Export Administrative Act, for example, Mr. Chairman, has one tiny paragraph applying the APA and judicial review to one single action of the Commission, and that is where sanctions are applied for a violation of the regulations. The entire remainder of the act, of course, is left to discretion.

So, in essence, Mr. Chairman, I do not think it necessary to split the bill. I do not find in the so-called second category any substantive matter which would seriously impede the exercise of the powers of a district court by the Customs Court.

With respect to Mr. Vance's statement, Mr. Chairman, I find it excellent work. I find almost nothing with which to disagree specifically. To take it section by section would take far more time than the subcommittee is prepared to give and would probably not be productive.

I will say this, Mr. Chairman. In essence, I think the courts could live with the bill as it now is. It would be difficult. We would have to work out a good many controversies.

However, much of the statement of Mr. Vance and the bar association speaks of portions of the present bill raising questions. Judges, as the chairman may know, have answers for questions that have not even been raised yet! I am sure that we would, over a period of time, work them out.

It would be a far better thing, however, if much, if not all, of the recommendations of the bar association as contained in Mr. Vance's statement were to be adopted. I would hope in that regard, Mr. Chairman, that the subcommittee would, in fact, decide or elect to retain the bill, making such modifications as the chairman and staff may find useful from Mr. Vance's statement and others, rather than splitting it. Again, Mr. Chairman, I am sorry to make that a long answer to a short question.

Senator DECONCINI. No, Judge, that is what we wanted. I appreciate that in-depth analysis. To tell you the truth, we are a little bit concerned about how to move forward, and I appreciate those comments.

I want to thank you again, Judge. Mr. Altier may have a few questions to address to you.

Mr. ALTIER. If the bill, 2857, moves toward making the Customs Court more or less equivalent of a Federal district court, and if your court, the Court of Customs and Patent Appeals, possesses all the law and equity of the Courts of Appeals in the United States, then why should not both courts, the Customs Court and your court, have the capability to issue both permanent and temporary injunctive relief? Judge MARKEY. I have no reason to think otherwise. I have no knowledge as to why the provision in section 1546 denies it. I assumed it was for the congressional purpose of providing discretion to the committee, that is, to the Secretary or to the International Trade Commission or to the Customs Service.

There is, of course, no business of the courts sticking their noses into the business of the Customs Service and that of the International Trade Commission in trying to run it for them and trying to operate it in any of the details. That would be a fundamentally improper thing to do.

To say that the power would be exercised improperly in that regard, I think is a conjecture. If it were to happen, Congress could stop it pretty fast. If that were necessary, the Congress could stop it. I cannot imagine it happening.

On the other hand, I am not totally aware of many situations where it would be necessary for it to happen.

I think that we have it now. Under the All Writs Act, for example, we have, with respect to our patent side, issued writs and will in the future where necessary.

I have no difficulty with that.

So, I do not think there is any problem with it if the Congress should elect to give us what I think we already have.

Mr. ALTIER. The bill, however, does provide for, I believe, temporary injunctive relief for the Customs Court.

Judge MARKEY. Yes.

Mr. ALTIER. Do you know any reason why that was inserted in the bill? Do you know why the bill does not provide for permanent injunctive relief?