At the Federal Circuit, a New Chief Enters in Tough Times

At the Federal Circuit, a New Chief Enters in Tough Times Jason Doiy / The Recorder

SAN FRANCISCO—Before joining the U.S. Court of Appeals for the Federal Circuit, Randall Rader and Sharon Prost worked as counsel to the Senate Judiciary Committee.

On the bench Rader’s straight-talking, maverick style calls to mind Sen. John McCain. Rader used the chief judgeship as a bully pulpit to advocate for IP law around the globe. Prost, who succeeded Rader as chief judge Monday, might be compared more to former Sen. Olympia Snowe. While gregarious and outgoing, Prost is expected to do more of her work behind the scenes, building consensus on the court and seeking common ground.

For a Federal Circuit that’s been finding it difficult to speak with a unified voice, or stay in step with the U.S. Supreme Court, Prost’s style may be just what’s needed, say lawyers and academics familiar with her work.

“She’s right in the center of the court” on patent issues, former Chief Judge Paul Michel said. “I think she’ll be able to convince colleagues to talk with one another and negotiate decisions that are more uniform than in some cases in recent years.”

“She’s courteous in her opinions and respectful in her dissents,” Perkins Coie partner Dan Bagatell said. He sees her as the kind of judge who can “build bridges and mend fences.”

Prost, 63, became the Federal Circuit’s seventh chief judge after Rader resigned the position and extended a public apology to his colleagues for “transgressing limits on judges’ interactions with attorneys who appear before the court.” Rader had sent an effusive email to Weil, Gotshal & Manges partner Edward Reines, describing his judicial colleagues’ praise for Reines’ advocacy skills and arguably offering his own personal endorsement.

It’s not clear how much impact the controversy has had within the court, though it’s worth noting that Rader, Prost and at least one other Federal Circuit judge canceled speaking appearances in the San Francisco Bay Area over the past month. Rader, meanwhile, was the only active judge not to participate in oral argument during the court’s monthly calendar this past week.

But long before the email came to light, the Federal Circuit had a reputation for division in its patent jurisprudence. Practitioners have complained that three-judge panels frequently ignore precedents set by their colleagues, and when the court has taken patent appeals en banc it’s tended to generate fractured opinions with multiple, often impassioned dissents. In CLS Bank v. Alice, a high-profile case involving software patentability last year, the court could not even muster a clear majority, something Rader at the time called the biggest failure of his career.

Patent experts stressed that chief judges don’t hold magical powers over their colleagues. “There’s nothing [Prost] can do structurally to enforce consensus,” said Emory University School of Law professor Timothy Holbrook.

Still, he and others are confident that through personal charisma and leadership by example, Prost might be able to smooth the edges on the circuit’s case law. They’re also hopeful that the recently canceled appearances at law school conferences and local bar events are just a temporary aberration.

Prost and Rader had been scheduled to appear at Stanford’s IP and the Biosciences conference on May 16. Judge Kathleen O’Malley was to have appeared May 20 and 21 before the Berkeley Center for Law and Technology, and Rader was set to address a Law Seminars International conference on patent damages May 29. All of those appearances were canceled.

Holbrook said it’s understandable the judges may have wanted to briefly “take a step back and let the firestorm blow over.” If this were to signal any long-term pullback from interactions with the bar, that would be unfortunate, he said. “A lot of people want to hear what they have to say about patent law,” he said.

The judges certainly haven’t stepped back completely. The full bench was present for Rader’s farewell address to the Federal Circuit Bar Association on May 23.

NIGHT SCHOOL

Prost is the daughter of devout orthodox Jews who survived concentration camps before emigrating to the United States. Her father died when she was 13, and she earned her law degree, master’s in business administration and master’s in law attending night classes. Prost declined an interview request for this article, but at her 2001 confirmation hearing, she said it was her parents’ example that inspired “my goal to serve the public and to work toward the administration of justice.”

That work ethic is said to have followed her to the Federal Circuit. “She is famous or infamous, depending on your perspective, for knowing the record better than the lawyers appearing before her,” quipped Stanford law professor Mark Lemley.

As chief judge Prost can draw on 40 years of experience across all three branches of government, including the Internal Revenue Service, the agency now known as the Government Accountability Office, and the National Labor Relations Board. She spent 12 years on Capitol Hill, mostly as chief counsel to Sen. Orrin Hatch on the Judiciary Committee.

President George W. Bush nominated her to the Federal Circuit in 2001. Confirmation was unanimous, with Democratic Sen. Patrick Leahy, D-Vt, going out of his way to praise her constructive approach within the committee.

At the Federal Circuit, Prost has written some major decisions that have cheered patent holders, including i4i v. Microsoft, which held in 2010 that the presumption of patent validity can only be overcome by clear and convincing evidence. The Supreme Court took up the case and affirmed, leaving intact a $240 million judgment for willful infringement.

She’s been equally willing to side with companies complaining about patent abuse. Two years ago, Prost wrote an opinion instructing a Texas judge to impose Rule 11 sanctions due to a patentee’s frivolous arguments, and to consider awarding attorney fees under Section 285 of the Patent Act. Judge Jimmie Reyna wrote that the Federal Circuit could find the case exceptional itself, but Prost left it to the district judge to make the initial call.

That type of careful approach to decision-making and respect for limits has won admirers in the patent appeals bar.

“She has a refined understanding of the proper role of the judge vis-a-vis the executive branch and the legislative branch,” Jones Day partner Gregory Castanias said. That means appropriate deference to the U.S. Patent and Trademark Office and the Patent Act.

Prost also has participated in three panel decisions reviewing the Apple v. Samsung smartphone litigation. She wrote 2012 and 2013 opinions that took issue with U.S. District Judge Lucy Koh’s handling of injunctive relief, and last year’s decision sparing the companies from having to reveal confidential financial information to the media.

Competing voices

Common ground is often hard to find at the Federal Circuit. Individual dissents from panel decisions are frequent, and multiple dissenting opinions are not uncommon from en banc opinions.

Prost writes her share of dissents. It was her panel dissent in CLS Bank that led to the court’s notorious 5-5 en banc stalemate last year. But patent attorneys say Prost picks her spots and writes respectfully. She’s not the type to fire off blazing dissents from denial of en banc review, they say.

Foley & Lardner partner Harold Wegner pointed out last month that when the court has issued three or more dissenting opinions in a case, Prost most often makes up part of the majority.

The question now is whether Prost can export her inclusive approach beyond the chambers of the chief judge.

“What I found in my five and a half years as chief judge is you really can’t tell anybody what to do,” Michel said. “You have to lead by example and not by talk or command. She sets a very good example. I think the result will be the judges will trust her.”

Through gentle persuasion and accommodation, “the end product may be an opinion without dissents or with some short, mild dissents on limited points,” Michel said. That, in turn, might lead to more clarity for the bar and less attention from the Supreme Court.

Contact the reporter at sgraham@alm.com.

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