SAN FRANCISCO — With six appointees to the U.S. Court of Appeals for the Federal Circuit, President Barack Obama has reshaped what some patent lawyers consider the most important court in the world. The six additions are comparable to four new justices joining the U.S. Supreme Court or more than a dozen being added to the Ninth Circuit.
Though it’s too soon to gauge any large-scale doctrinal shifts, the newcomers are already making their presence felt.
“We’re at a turning point,” said Perkins Coie patent appeals chief Dan Bagatell. “We just don’t know yet which way we’re turning.”
This much is known: Obama’s first two appointees to the Federal Circuit have shown a willingness to speak their mind, dissenting frequently and urging their colleagues—sometimes even the Supreme Court—to rethink older Federal Circuit precedents. “They’re not sitting back and letting the rest of the court steer the ship,” said Bagatell.
In the short term, that approach may be adding to the court’s reputation for fractiousness, and drawing even more attention from the Supreme Court, which has taken up six Federal Circuit cases this term, perhaps making 2014 its most crowded patent docket ever.
But patent law experts are confident that in time the new appointees will help settle down the court’s patent law jurisprudence, both internally and perhaps with the Supreme Court as well. “They’re drawing these lines in the sand now,” said Emory Law associate dean Timothy Holbrook. “Maybe we need some time to find middle ground or reduce the image of the court as being hopelessly divided.”
Each of the appointees fills a Federal Circuit professional niche. Judge Kathleen O’Malley is the court’s first district judge; Raymond Chen is the first career attorney from the U.S. Patent and Trademark Office; Richard Taranto was an accomplished Supreme Court practitioner; Jimmie Reyna and Evan Wallach are experts on international trade; and Todd Hughes is a U.S. Department of Justice commercial litigator familiar with a wide array of the court’s nonpatent jurisprudence.
Four add personal diversity to a largely homogenous bench. O’Malley is a woman, Reyna is Latino, Chen is Asian-American and Hughes is the first openly gay federal appellate judge.
So far, tech companies advocating for the court to rein in what they see as abusive litigation aren’t seeing a concrete shift in that direction, though three of the new judges just joined the bench last year and don’t yet have a track record.
With the court increasingly under the microscope, the six new appointees, along with Chief Judge Randall Rader and the other more senior members of the bench, have their work cut out for them. “The Federal Circuit stands as a beacon frankly to the world on how to set up a judicial system that honors and respects innovation,” said former PTO director David Kappos. “The Supreme Court, Congress, everyone seems to be gunning for the IP system, and the Federal Circuit stands against that.”
KATHLEEN O’MALLEY—THE FIRST DISTRICT JUDGE
For its first 28 years of existence, not a single district court judge was elevated to the Federal Circuit. Early appointees came from private practice, academia, government practice or the Court of Federal Claims. Many observers believe this is part of the reason the Federal Circuit historically has been quick to reverse district court judgments.
That changed in December 2010, when O’Malley joined the Federal Circuit from the Northern District of Ohio. O’Malley had been one of the pioneering trial judges in patent case management, and she wasted no time making her voice heard on the appellate court. Within her first year O’Malley wrote three dissents from denial of en banc review, urging her colleagues to reconsider Federal Circuit case law, often from the district judge’s point of view.
Most notably, she joined a growing faction within the circuit that wants to overrule Cybor v. FAS Technologies, which held that the Federal Circuit reviews claims construction without deference to the district judge. “It is time to revisit and reverse our decision in Cybor,” O’Malley wrote in Retractable Technologies v. Becton Dickinson. The court agreed to consider the issue en banc in 2013, and a decision is expected this year.
O’Malley has issued at least 14 dissents during her three-year tenure, along with about 50 majority opinions. Among her dissents was an early ruling in the Apple v. Samsung smartphone case in which she said the Federal Circuit should order a preliminary injunction on behalf of Apple. O’Malley will play a major role in another smartphone case—she was one of three judges who heard arguments last month in the Oracle v. Google copyright dispute over Java declaring code.
The judge also has been an outspoken critic of Congress’ latest attempts at patent litigation reform, saying the legislative branch should not dictate the details of case management. Last month O’Malley gave reformers something to cheer about—a decision that should make it easier for district judges to award attorney fees for “exceptional” cases.
O’Malley is 57 years old. She is married to Covington & Burling IP partner George Pappas.
Emory’s Holbrook said the judge is off to an impressive start at the Federal Circuit. “She has shown a healthy respect for what district court judges do,” he said. “The challenge now is that she has two colleagues [on an appellate panel], and she has to get them to agree with her.”
JIMMIE REYNA—THE DISSENTER
Reyna joined the court six months after O’Malley, and has been even more vocal in dissent, issuing at least 18 so far. “He is the dissenter,” said Emory’s Holbrook. “He’s got his own particular perspective, and he’s willing to express it, though he does so respectfully.”
Once again, a theme has been deference to trial court decisions—this time on the award of attorney fees for an exceptional case. “While we may be tempted to view ourselves as best-positioned to weigh whether a given party’s claim construction or infringement positions are objectively reasonable, in doing so, we fallaciously presume that we can neatly separate intertwined issues of law and fact,” he wrote in his dissent from denial of en banc review in Highmark v. Allcare Health Management Systems.
The Supreme Court may well agree—last fall the high court voted to grant cert in Highmark and a decision is expected later this year.
Reyna was an international trade attorney at D.C.’s Williams Mullen before taking the bench, and has naturally taken an active role on cases coming up from the International Trade Commission. “But,” said Perkins Coie’s Bagatell, “he’s also taken a real interest” in patent law, issuing notable opinions in the areas of damages and obviousness.
Reyna, 61, is a former president of the Hispanic National Bar Association who grew up in New Mexico and practiced there eight years before relocating to Washington. According to an article by a former law clerk of his, Abigail Perdue of Wake Forest University School of Law, Reyna has dedicated his career to “standing right” for “the Forgotten Man.”
EVAN WALLACH—THE VETERAN
Evan Wallach also has served as a lower court judge. He spent 16 years at the Court of International Trade before being elevated to the Federal Circuit in 2011.
So far, the 64-year-old Wallach has penned only a handful of patent law decisions, including one on indefiniteness that the Supreme Court will review this term. But Wallach has frequently joined in his newer colleagues’ calls for en banc review of circuit precedents. He was the only judge to join O’Malley’s pitch to leave malpractice cases that involve patent claims to state courts. The Supreme Court took up the issue and agreed with their positions.
Wallach also sided with Reyna, O’Malley, Rader and Judge Kimberly Moore in Highmark, saying that more deference is owed to district judges on fee shifting. One exception to this alignment: In the big software patent eligibility case CLS Bank v. Alice Corp., Wallach joined the court’s more senior judges, arguing for a narrower view of Section 101 eligibility. That case too is now before the Supreme Court.
Wallach was awarded a Bronze Star for his service during the Vietnam War and has taught extensively on the law of war. He practiced law in Las Vegas for nearly 20 years, including a stint as policy adviser to Sen. Harry Reid, before his appointment to the Court of International Trade.
RICHARD TARANTO—THE APPELLATE SPECIALIST
Richard Taranto had the kind of practice most lawyers can only dream of. After clerking for D.C. Circuit Judge Robert Bork and serving three years in the solicitor general’s office, Taranto built a successful Supreme Court practice at Farr & Taranto. As fate would have it, one of his biggest wins came in a patent case, Warner Jenkinson v. Hilton Davis Chemical, which tightened the doctrine of equivalents theory of patent infringement. That led to a surge of work before the Federal Circuit on behalf of clients such as Rambus, W.L.Gore and the Lemelson Medical, Education & Research Foundation.
“That work came largely to crowd out my Supreme Court work by 2005,” Taranto told the Senate Judiciary Committee. Still, as recently as 2011, Chambers USA listed Taranto among its top 10 appellate lawyers.
“It was a coup that he was added to the Federal Circuit,” said Weil, Gotshal & Man­ges partner Edward Reines, the chair of the Federal Circuit Advisory Council.
On the bench, the 56-year-old Taranto brings the measured manner of an appellate specialist. “May I ask you a question?” he asked Google attorney Robert Van Nest during last month’s Java copyright arguments, rather than simply interrupting.
He hasn’t made as much noise right off the bat as O’Malley or Reyna, but patent experts are confident they have a star in the making.
“Nothing that changes the face of patent law quite yet,” said Emory’s Holbrook, but opinions that are “incredibly well-reasoned and transparent.”
And given Taranto’s connections to the Supreme Court via clerkship and practice, Mark Lemley, director of Stanford Law School’s Program in Law, Science and Technology, believes he could help the Federal Circuit better align its jurisprudence with the high court’s.
“Whether it’s merited or not, the Federal Circuit does have a perception problem at the Supreme Court,” said Lemley, a partner at Durie Tangri. “Judges like Judge Taranto with their own credibility at the Supreme Court and their intellectual firepower are a big step in that direction.”
RAYMOND CHEN—THE PTO SOLICITOR
Given that much of its docket comes directly from the Patent and Trademark Office, it’s surprising that no career PTO lawyer has been appointed to the Federal Circuit.
Until now. Chen has spent the last 15 years there, as assistant solicitor and then solicitor. “He is extremely knowledgeable about the IP system,” said former PTO director Kappos, who describes many hours spent with Chen mapping out strategy on issues such as the patent eligibility of human DNA.
“I’m a guy who’s been around IP law a long time, and I come into discussions having a sense of where I want to go,” said Kappos, who now practices at Cravath, Swaine & Moore. But sometimes those discussions with Chen ended with Kappos saying, “You’re right, let’s go in your direction. I’ve got a new point of view.”
“There is an intensity to his advocacy,” Kappos said. “It’s not about bullying, not about getting your way. It’s about getting the right answer.”
Though he’ll bring specialized knowledge, Chen will be recused from cases that came before the PTO during his tenure there, Emory’s Holbrook pointed out. But that would still leave patent cases coming from the district courts, not to mention the nonpatent areas of Federal Circuit jurisdiction, he added.
Chen’s appointment is “a huge shot in the arm” for everyone who works at the PTO, Kappos said. He’s also one of only four Asian-Americans among nearly 200 judges on the federal appellate bench. And, at 45, he is said to be the youngest. Assuming he remains on the bench 10 or 15 years, he would be on track to ascend to the Federal Circuit’s chief judge position.
Chen grew up in Huntington Beach, Calif., and attended UCLA before getting his law degree at New York University School of Law. His wife, Lisa Hsiao, has practiced at Howrey and the Justice Department’s Office of Consumer Protection.
TODD HUGHES—THE JUDGE FROM MAIN JUSTICE
The court’s newest judge, Todd Hughes, adds two more types of diversity. Last fall he became the first openly gay individual appointed to the federal appellate bench. And as a longtime litigator in the Justice Department’s commercial litigation unit, he brings the government’s perspective to the Federal Circuit’s nonpatent docket, which includes federal personnel law, veterans benefits, international trade and government contracts.
Hughes’ appointment “has broken the lavender ceiling,” said Holbrook. “That itself is important and historic.”
And though Hughes may not be a patent expert yet, he’ll have an opportunity to make his mark quickly if he wants to, because he’ll be walled off initially from cases where the DOJ commercial litigation unit is a party. “Patent takes a pretty big chunk of what’s left,” Holbrook said.
Hughes began at DOJ in 1994, starting as a trial attorney in that unit and working his way up to director. He’s argued 17 appeals to the Federal Circuit and appeared before the Court of International Trade and Court of Federal Claims. As a judge, Hughes, 47, just heard his first arguments last month.
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From Holbrook’s perspective, each of the Obama appointees fills a specific area of need at the Federal Circuit: O’Malley’s district judge experience; Chen’s PTO background; Taranto’s Supreme Court chops; Wallach’s and Reyna’s perspectives on international trade; and Hughes’ work commercial background.
“All of these judges have a link to the Federal Circuit. I think the idea is to bring a level of familiarity not only with patent law but all of the court’s areas of jurisdiction.”
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