The fate of high-stakes legal battles over intellectual property law is the prize for those in the early jockeying to fill looming vacancies for as many as half of the 12 judges on the U.S. Court of Appeals for the Federal Circuit.
Although the circuit has no current openings, eight of the court's 12 judges will be eligible to retire or take senior status in the less than two years — and up to six of the eight can be expected to make the move, according to Chief Judge Paul Michel, who oversees the court.
"It's very clear that there will be a shift that is quite significant in a year or so," said Michel. "It is highly likely the president-elect will appoint three judges for sure, and possibly upwards of six," he said.
The glut of new judges would be the biggest changeover on the Federal Circuit's bench since its inception in 1982. And it comes at a time when an array of hotly contested patent issues has helped propel a round of handicapping on likely judicial candidates.
"Legal battles have been very contentious in the areas of damages apportionment, limits on patentable subject matter and defining obviousness in design," said Donald R. Dunner, a patent authority at Finnegan, Henderson, Farabow, Garrett & Dunner in Washington. Dunner helped draft the court's rules at its formation and spent a decade on the court's first advisory committee.
'Bilski' fallout
"The fallout of the Bilski decision [whether software or business methods are patentable] raises a host of unanswered questions that will take a decade for the courts to figure out," said Mark Lemley, an intellectual property (IP) professor at Stanford Law School. He is often mentioned as a candidate for the circuit but would say only, "I'm flattered. It is an interesting job to consider, but it is all speculation at this point."
The Federal Circuit, known as the nation's science court, has national jurisdiction over appeals of patent, trademark and government contract disputes, international trade disputes, federal personnel disputes and veterans' benefits claims.
Just one-third of the court's docket stems from patent appeals, but it gets most of the public's attention.
Judges become eligible for senior status when their combined age and years of court service total 80. They are not required to accept senior status, but once they do, it opens a vacancy on the court. Four judges are currently eligible, and another four will be during 2009 and early 2010, Michel said.
How a new group of judges might change the court is unclear, but Michel said, "We notice significant impact when even one judge joins the court.
"Some patent areas are quite controversial, and different industries are warring against each other," he said.
One significant dispute over precedents related to damages is between the pharmaceutical industry and business software groups, said Dunner.
In general, high-technology and software companies want to cut damages, while pharmaceutical companies and small biotech startups want larger damages, said Harold C. Wegner, a patent expert in the Washington office of Foley & Lardner and former director of the IP law program at George Washington University Law School.
The effect may be that a potential candidate, such as Chip Lutton, chief patent counsel for computer maker Apple Inc., might draw opposition from the pharmaceutical side, Dunner said. Lutton did not respond to a request for comment on his interest in a judicial nomination. "In the last two years, the court has gone out of its way to be subservient to the U.S. Supreme Court and fashioned opinions in a framework to fit the reasoning in Supreme Court precedent," said Wegner. "That has remarkably decreased the fratricidal dissenting on the court . . . .Whether it continues depends on whom Obama appoints."
"Almost everyone agrees it would be nice to have a sitting district court judge with experience in patent litigation," said Dunner. "I expect one of the top priorities will be to have such a judge appointed. To the extent Obama looks for Democrat backgrounds, that narrows the field considerably," he said.
"There is a sense in the patent community that the next vacancy should be filled by a judge with deep patent experience," said Ed Reines, a partner in Weil, Gotshal & Manges' Palo Alto, Calif., office. "There are a lot of talented judges on the court, but it is conspicuous that there is not one with jury trial experience," he said.
Others express different priorities.
"The government-contract bar has long sought and desired someone with more substantive expertise in the contracts area," said Scott McCaleb, a partner at Washington-based Wiley Rein and president-elect of the Federal Circuit Bar Association.
Government-contracts litigation presents special problems to an appellate court, including a series of laws directly related to government cost-accounting standards, and assurance of a level playing field for all competitors, he said. "It's a very specialized area of expertise that practitioners would love to see on the bench," he said.
"It is really important to get West Coast technology people on the court," said Robert Merges, a patent law expert at the University of California, Berkeley School of Law. Technology has been an important change in the profile of the IP industry in the past 15 years, "and the current court does not reflect that," he said.
Merges is also mentioned as a potential nominee, but he downplayed the possibility, saying Congress would have to loosen the "Baldwin Rule," a quirky requirement that Federal Circuit judges must live within a 50-mile radius of Washington. The rule is named after Judge Philip Baldwin, appointed in 1968. He famously preferred living in Texas to the capital. An attempt to repeal the Baldwin Rule failed last year when patent reform legislation died.
Backers of the rule cite the collegiality of all the judges in the circuit under one roof, while detractors argue that it limits the pool of judges to those willing to uproot families to move across country, given that the court sits for arguments only four days a month.
"If you want to attract people useful to the court, requiring them to live in Washington is a hard sell," said John F. Duffy, an IP professor at George Washington University Law School. "Younger people can't uproot a spouse. Many couples are dual professional couples and may not move easily and don't want to take young kids out of school," he said. Wegner agreed: "I think collegiality is overrated."
But Dunner countered, "I think the collegiality factor speaks strongly for retaining the rule." As for diminishing the pool of candidates, "the fact is, the court has had a number of judges selected from outside Washington and they moved," he said.
Throw into the mix the importance of timing of Michel's decision to take senior status. He is eligible now, and if he gives up his chief judge post early, that could change the succession of future chief judges. The job is awarded by seniority to the longest-serving judge younger than 65. Judge Randall Rader will follow Michel as chief judge for a seven-year term.
If Michel steps down before April, Judge Sharon Prost would follow Rader. But if Michel waits until after April, Prost would miss the age cutoff at the end of Rader's tenure, and the chief judgeship would pass to Judge Kimberly Moore after Rader.
Michel didn't commit to any timing for his decision. "I am very much enjoying the challenges and duties of the job, and I plan to continue until I complete the projects I've started," he said.
"I could step down tomorrow, or go out in two years. My guess is I won't do either. I'm not going any time soon."
The judges currently eligible for senior status include Michel, Pauline Newman, Haldane R. Mayer and Alan D. Lourie. Those eligible in 2009 include Alvin A. Schall, Timothy B. Dyk, Arthur J. Gajarsa and, in early 2010, William C. Bryson.
The potential nominees
Most frequently mentioned as potential nominees to the court from the ranks of the federal judiciary are U.S. district judges Kathleen O'Malley of the Northern District of Ohio in Cleveland; Jeremy Fogel of the Northern District of California in San Jose; and Patti Saris of the District of Massachusetts in Boston, along with Judge Mary Ellen Coster Williams of the U.S. Court of Claims in Washington.
O'Malley was appointed by President Clinton in 1994 and is known in the patent bar to want the job because her husband, George Pappas, a patent lawyer at Covington & Burling, is based in Washington. She was traveling and could not be reached for comment. Fogel was appointed by Clinton in 1998 and has served as a visiting judge on the Federal Circuit. He said he would be "honored to be considered." Saris is a 1993 Clinton appointee, and Williams is a 2003 President Bush appointee. They did not return requests for comment.
Potential nominees from private practice include Lutton of Apple Inc.; Beth Brinkmann, chairwoman of Morrison & Foerster's appellate practice in Washington; and James Pooley, a patent expert in Morrison & Foerster's Palo Alto, Calif., office. They did not respond to requests for comment.
Among academics specializing in patents, potential candidates include Lemley of Stanford, who advised the Obama campaign on IP issues; Merges of Berkeley; and Arti K. Rai of Duke Law School, who also advised the Obama campaign on IP issues and who served on Obama's Patent and Trademark Office advisory committee. She declined to comment.
Another often-mentioned name is John Whealan, associate dean for intellectual property law studies at George Washington, who served as U.S. Patent and Trademark Office solicitor from 2001 to 2008. He clerked for Rader, next in line to become chief judge of the Federal Circuit. He declined comment.
