ALM Properties, Inc.
Page printed from: Corporate Counsel
Select 'Print' in your browser menu to print this document.
New Blood at Federal Circuit
The National Law Journal
A flurry of new judges and nominees may change the playing field for patent cases at the U.S. Court of Appeals for the Federal Circuit.
Judges retiring or moving to senior status have opened the door to new appointees whose array of legal experience and viewpoints could change the fate of cases that hit the court. "After long-term stability, there's change," said Edward Reines, a partner in the Redwood Shores, Calif., office of New York's Weil, Gotshal & Manges and the current chairman of the Federal Circuit Advisory Council. "Change is not necessarily to be feared. Fresh perspectives are healthy."
Patent practitioners suggest that the two newest members, Kathleen O'Malley and Jimmie Reyna, neither of whom is a patent specialist, may revisit concepts the patent bar takes for granted. O'Malley, the first former district judge on the court, brings to it the perspective of someone who has actually tried cases. Court watchers also predict that new judges will insist on more full-court review of cases to get a fresh look at some issues — at a time when the Federal Circuit has already been stepping up its en banc review. They note that even one judge, through impassioned dissents, can drive the court to revisit issues en banc.
The recent shift began when former Chief Judge Paul Michel retired on May 31, 2010, and Randall Rader took the helm the following day. At that time, Alvin Schall's October 2009 move to senior status had already created a vacancy. Haldane Robert Mayer opened another slot by taking senior status in June 2010. Last month, Arthur Gajarsa became the latest judge to opt for senior status. Also last month, two long-term judges on senior status died: Daniel Friedman, the last surviving original Federal Circuit member, and Glenn Archer Jr., a former chief judge.
There are now 10 active judges on the court: Rader, O'Malley and Reyna, and judges Pauline Newman, Alan Lourie, William Bryson, Richard Linn, Timothy Dyk, Sharon Prost and Kimberly Moore.
Last December, O'Malley, a former Northern District of Ohio judge, was sworn in. In April, Reyna became the most recent Federal Circuit judge to join the court. Reyna was a partner at Richmond, Va.'s Williams Mullen, where he led the firm's trade and customs practice group and its Latin America Task Force.
President Barack Obama nominated Evan Wallach, an International Trade Court judge, to the court last month. In April 2010, Obama nominated Edward DuMont, an appellate litigation partner at Wilmer Cutler Pickering Hale and Dorr. Judicial nominees usually receive a Senate Judiciary hearing within a few months, but none has been scheduled for DuMont, who, if confirmed, would be the first openly gay federal appeals judge. Senators of both parties have declined to provide details of the reason for the delay. According to Beth Levine, the committee spokeswoman for ranking minority committee member Sen. Chuck Grassley (R-Iowa), "There are questions in Mr. DuMont's background investigation that have to be resolved."
Several other judges are eligible for senior status but appear to be in no hurry to retire, including Bryson, Dyk, Lourie and Newman. Linn becomes eligible in April 2012.
It's hard to predict how the two new judges or the two nominees — if appointed — would change the court, particularly because none is a patent specialist, said Reines of Weil Gotshal. O'Malley, for example, brings much-needed district court judicial experience, Reines said. "Someone that sat in the seat of a district court judge will have a valuable perspective on what a reviewing court should do," Reines said. "At times, some district court judges have felt like the Federal Circuit didn't have a full appreciation of their role. The addition of Judge O'Malley was a major boost in addressing that concern."
Aside from his expertise in the international trade issues that are in the Federal Circuit's jurisdiction, Reyna also appears to be a quick study on the complexities of patent cases, said Reines. Reines argued in front of Reyna this month for Newegg Inc. in Sovereign Software v. Newegg. "He impressively engaged the technology during oral argument in a complex case, cutting through the issues," Reines said.
In a period when a number of judges are coming to patent law issues from outside, "that's going to often mean we rethink long-held beliefs," said Stanford Law School professor Mark Lemley, who is also the director of the Stanford Program in Law, Science & Technology and a partner at San Francisco's Durie Tangri. "I think there's both some uncertainty as to how these judges will fit into the structure and also the opportunity to rethink things the patent bar takes for granted but the rest of the world does not," Lemley said.
When Dyk joined the court in 2000, for example, "he started bringing in the perspective of other areas of law," Lemley said. Dyk previously chaired the issues and appeals practice at Jones Day. Lemley recalled that Dyk took the position that the court's prior rules on willful patent infringement, which required an accused infringer to get an opinion of counsel, didn't mesh with how the rest of civil law treats punitive damages, Lemley said.
"He started out as sole dissenter, but in the Seagatecase, the court ultimately changed the rule," Lemley said. In 2007, the Federal Circuit, in In re Seagate Technology, raised the bar for plaintiffs alleging willful patent infringement, which allows for triple damages. The court held that accused infringers don't necessarily have to get an opinion of counsel to avoid a finding of willfulness.
Several practitioners point to Newman as the prime example of a dissenter who has moved the court on certain issues. She is known as a strong defender of the rights of patent owners: Her résumé includes 30 years working in patent law, mostly at chemical giant FMC Corp.
Newman has been a "vociferous dissenter in the line of cases that involve joint infringement, where the Federal Circuit has refused to hold people liable for doing part of an invention," Lemley said. "Now they've taken those cases en banc," he said, referring to McKesson Technologies Inc. v. Epic Systems Corp. and Akamai Technologies Inc. v. Limelight Networks Inc. Lemley observed, "Her dissenting has raised enough attention that it's been taken up by the full court."
The ground-shifting en banc decision in Therasense Inc. v. Becton Dickinson & Co. last May was another case in which Newman's prior dissents played a role. The majority opinion, joined by Newman, made it harder for a defendant to show that a patent litigant committed inequitable conduct, or fraud on the patent office, when prosecuting a patent. Newman previously "dissented a lot on inequitable conduct because she thought it was a plague, and now [the Federal Circuit is] finding it's a plague," said Steven Moore, a partner in the Stamford, Conn., office of Kelley Drye & Warren. "Newman has been a very big voice on the problem of inequitable conduct, basically because she's actually prosecuted patents and realizes that it's a terrible thing to say somebody has committed inequitable conduct," Moore said.
A new chief judge and potentially four new judges within a two-year period is likely to increase en banc hearings, said John Whealan, a George Washington University Law School associate dean. Already, patent lawyers believe it's much easier to get an en banc hearing than it was five years ago, Whealan said. "You're already starting to see that the court is more apt to revisit certain areas of law that they think need revisiting," he said. "The addition of outside new people on the bench can only help [efforts to get en banc treatment]….You have people who haven't expressed their views in these areas and are taking a fresh look."