Will Silicon Valley finally get a judge on the very high court of patent law?
San Jose, Calif.-based U.S. District Judge Jeremy Fogel is on the White House short list for the open spot on the U.S. Court of Appeals for the Federal Circuit, according to a person briefed on the matter. The opening came when Judge Alvin "Tony" Schall announced in August that he would take senior status.
The argument from Fogel's supporters is simple: The Federal Circuit deals with technology patents all the time. The Federal Circuit has had an uneasy relationship with district court judges, whose opinions they regularly overturn. And in the Federal Circuit's 27 years of existence, neither a district judge nor someone from the tech capital has ever been appointed.
Of course, the last time that the Valley pushed for a Federal Circuit nominee, it didn't work out so well. The local IP bar rallied around San Jose-based U.S. District Judge Ronald Whyte, but the Bush White House decided to nominate instead Kimberly Moore, a professor at George Mason University School of Law in Virginia.
Whyte has since taken senior status, and Fogel, who has been on the bench for 12 years and handled more than a hundred patent cases, is now the local favorite. Fogel is getting some push from well-connected pols. Three on the House Judiciary Committee -- California Reps. Zoe Lofgren and Howard Berman, plus Rick Boucher of Virginia -- sent a letter to the White House last month recommending Fogel.
"It's an honor to be mentioned," Fogel said, but declined to comment further.
It won't be easy for him to get nominated. Also on the short list are Judge Gregory Sleet, Chief Judge of the patent-saturated U.S. District Court of Delaware, and Judge Kathleen O'Malley, who's had her share of patent cases in federal court in Ohio. This according to a person briefed on the matter. Boston U.S. District Judge Patti Saris has been mentioned, too.
Sleet seems to have a good shot; Vice President Joe Biden tapped him for U.S. Attorney and judge while serving as Delaware's senator. Sleet would also be the first African-American on the Federal Circuit.
Regardless of who it is, there is a movement to get a district court judge on the Federal Circuit.
"I think there is widespread support for bringing a district court judge with patent experience," said Peter Menell, a professor at Berkeley Law who specializes in intellectual property.
Mark Lemley, an IP law professor at Stanford whose name has also been mentioned as a possible nominee, agreed.
"I think the Federal Circuit would clearly benefit from having a district court judge -- a lot of criticism that has been leveled at the court is its alleged insensitivity to district courts," Lemley said. "There are a lot of issues that are more evident on the ground if you are litigating patent cases on a regular basis. For example, it's quite easy to understate the significance of the damages issues or the significance of the patent troll population if you see only the cases that make it to the appellate level."
But Lemley pointed out that there are other interests who may have a stronger voice in the White House: "There's lots of different constituencies who would like to have a say in this and district court judges aren't the most powerful lobbying group."
There are a couple of reasons why a district court judge hasn't ever made it. One is the quirky Baldwin rule, which requires Federal Circuit judges to live within a 50-mile radius of Washington. (The rule comes from Judge Philip Baldwin, who famously preferred his native climes of Texas to the Beltway). The other is, as Lemley points out, politics. Many of the judges are D.C. insiders like Randall Rader and Sharon Prost, both former staffers of Orrin Hatch, a longtime member of the Senate Judiciary Committee.
In fact, one of President Obama's lesser-known campaign promises was to appoint Federal Circuit judges based on merit. Arti Rai, an IP law professor at Duke who represented Obama at the narrowly publicized IP law debates, said that a district judge would be a good idea. And she said the appointment wouldn't be an "afterthought delegated to a senator who happens to have a staffer who wants to be on the Federal Circuit."
Rai's opponent that night was Ed Reines, a Weil, Gotshal & Manges IP lawyer who argued for John McCain. Reines, who is always in the Federal Circuit mix, said he wants Obama to keep that promise.
"Professor Rai promised during the campaign that a President Obama would select Federal Circuit judges based on merit and need," said Reines. "The community is hopeful that promise will be fulfilled."
There may be plenty of opportunities beyond Schall's seat: Seven of the Federal Circuit's 12 judges will be eligible for senior status by 2010. Chief Judge Paul Michel has already announced that he'll retire in May. District judges, academics like Lemley, and industry types like Apple IP chief Chip Lutton, who's said to be interested, could all get their chance. But for the current opening, veteran Federal Circuit practitioner Donald Dunner of Finnegan, Henderson, Farrabow, Garrett & Dunner, says he'd bet on a district judge.
"Everyone wants a district court judge with patent experience," he said.