Michelle Lee, U.S. Patent and Trademark Office deputy director (Diego M. Radzinschi / The National Law Journal)
SAN FRANCISCO — Judge Randall Rader’s sudden departure from the U.S. Court of Appeals for the Federal Circuit in June gave patent litigators a lot to talk about.
A month later speculation has set in on a related topic—who will be tapped to replace him and is it finally the moment for a pick with ties to Silicon Valley?
With his first six appointments to the Federal Circuit, President Barack Obama opted for personal and professional diversity. A Latino, an Asian-American and an openly gay man were among his choices; so too was a district judge, an appellate specialist and a judge from the International Court of Trade.
Now Federal Circuit watchers see two more areas of diversity the president might address. Obama could put the first African-American judge on the court. The Patent Trial and Appeal Board’s chief administrative judge, James Smith, strikes some as a logical candidate.
Obama also could diversify the court geographically, fulfilling the West Coast technology bar’s long-standing wish for a seat on the nation’s patent appellate court. Deputy Director Michelle Lee of the U.S. Patent and Trademark Office—the former head of patent strategy at Google—and Magistrate Judge Paul Grewal in San Jose, a darling of the California IP bar, are oft-mentioned. While both have ardent champions, each would also present challenges as a potential nominee, lawyers cautioned.
It’s early in the process. Getting a candidate vetted, nominated and confirmed isn’t likely to happen during this Congress. And there’s no guarantee that any patent expert will get the nod this time around. The court also hears appeals involving international trade, government contracts and federal personnel. Obama could, for example, elevate a judge from the Court of Federal Claims, just as Rader was 24 years ago.
But with the patent caseload growing, the court’s patent jurisprudence coming under an ever-brighter spotlight, and the last appointment coming from the U.S. Department of Justice’s Commercial Division, chances are good.
Vincent Eng, a lobbyist at Washington, D.C.’s The Veng Group who works on behalf of judicial nominees, said he’s expecting Obama to think big. “It would not surprise me if we again see another highly qualified, national profile-type person,” he said.
COVERING THE WATERFRONT
Smith has that sort of blockbuster resume. He led international licensing at Baxter International, Nokia and Lexmark, practiced at Arnold White & Durkee, and was managing partner of Dewey Ballantine’s Texas office. A 1986 graduate of Duke University School of Law, he clerked at the Federal Circuit for Judge Paul Michel, and was assistant dean at Emory University School of Law before going into private practice.
Smith was appointed chief administrative judge of the Board of Patent Appeals and Interferences in 2011. Within four months, Congress would change the board’s name, overhaul its procedures and double its size to more than 200 judges. Smith would play a leading role in realizing that vision, including hiring and training those 100-plus new judges. Today the revamped Patent Trial and Appeal Board (PTAB) is a success—at least from the perspective of companies accused of patent infringement. It’s drawn more than 1,300 petitions for reexamination in less than two years.
“We are pleased that the more cases we’ve decided, the greater the interest in our trial jurisdiction seems to be,” Smith told The National Law Journal in an interview last year.
Smith is one of many PTAB judges who have appeared on public roundtables, once being called on to defend the board against Rader’s charge that it’s a “death squad for patents.”
“He’s had to manage that very challenging job, and he’s been able to pull it off,” said W. Karl Renner, cochief of Fish & Richardson’s post-grant practice group. As a jurist, he said, Smith brings “an approach that’s even and measured and leads to good decision making.”
Lee, 48, has a similar combination of in-house, law firm and PTO experience. She practiced at Fenwick & West and Keker & Van Nest before joining Google in 2003, when it was still a private company. As chief patent counsel, Lee helped the department grow from a handful of attorneys to about 70 and its patent portfolio expand from a few to thousands. She was hired to run the PTO’s new Silicon Valley branch in 2012, and became the agency’s deputy director in 2013 following Teresa Rea’s departure. Lee is an obvious candidate, and one who’s already in a leadership role in the Obama administration’s patent reform efforts. But without a permanent director for the PTO, Lee might be more crucial in her current post.
Lee also clerked for Michel, and the former chief judge said he thought she or Smith would make a solid addition. “Beyond just paper credentials, they’re both extremely ethical, extremely hardworking, and skillful at dealing with people,” he said.
In general, Michel said, the court would benefit from the addition of a patent lawyer with heavy-duty IP trial experience, plus counseling and work before the PTO, in industry and private practice—as Michel puts it, “someone who can cover the whole waterfront.”
ANOTHER TRIAL JUDGE?
IP litigators cheered when Obama elevated U.S. District Judge Kathleen O’Malley in 2010, making her the first Federal Circuit judge who’d regularly managed patent litigation at the trial level.
Some would as soon not stop at one.
But judges who sit on the Federal Circuit must be willing to live within 50 miles of D.C., which narrows the field.
One who wouldn’t have to move far is Chief Judge Leonard Stark of the District of Delaware. Appointed in 2010, the former Skadden, Arps, Slate, Meagher & Flom attorney has impressed IP litigators with his tackling of Delaware’s sprawling patent docket. Stark, who’s in his mid-40s, “genuinely wants to figure out better ways to handle patent infringement litigation,” said Jones Day partner William Rooklidge.
Rooklidge and others say Grewal, a former patent litigator in his early 40s, would be a great fit for the Federal Circuit. Since his appointment in 2010, Grewal has presided over dozens of patent cases, and he clerked on the Federal Circuit for Judge Arthur Gajarsa. However, the White House passed over Grewal in 2012 for a district court seat, suggesting his elevation might have to await another administration.
“He will end up on the Federal Circuit,” vowed Rooklidge. “He’s smart, he’s hard working, he’s got the patent chops.”
Judges Richard Seeborg and Lucy Koh of the Northern District of California are also seen as potential candidates.
But even if an Article III judge such as Stark, Seeborg or Koh wanted the job, elevating them would create another vacancy on the district court, and another confirmation battle. That doesn’t seem to be a fight the Obama administration wants right now.
AN OPEN FIELD
Others point out that five of Obama’s six picks to date have been men, leaving the court with seven men and four women among active judges. And the court remains overwhelmingly white, with Obama appointee Jimmie Reyna, the only Latino, and Raymond Chen, the only Asian-American on the court.
“It would be interesting to see if a qualified woman of color” gets the call, said Emory law professor Timothy Holbrook. “They’re out there.”
Though he didn’t name names, a couple of Finnegan, Henderson, Farabow, Garrett & Dunner partners are mentioned by others: One is Kara Farnandez Stoll, a former patent examiner who clerked with Federal Circuit Judge Alvin Schall and who has litigated big-ticket patent appeals at the court. Esther Lim, a former clerk of Rader’s who heads up Finnegan’s Shanghai office, would seem well-suited to further raising the Federal Circuit’s profile internationally.
Those said to have been considered for previous court vacancies include Deputy Assistant Attorney General Beth Brinkman, a former Morrison & Foerster partner who heads the Justice Department’s Appellate Division; Stanford law professor and Durie Tangri partner Mark Lemley; Chip Lutton, Nest Labs general counsel and former chief patent counsel at Apple Inc.; and former PTO Director Q. Todd Dickinson, now executive director of the American Intellectual Property Law Association.
If deep patent expertise is not a priority, Chief Judge Patricia Campbell-Smith of the Court of Federal Claims might be intriguing. Campbell-Smith, who is African-American, briefly practiced patent litigation in the 1990s before starting a career at the Court of Federal Claims, first as a law clerk, then as a special master. Obama appointed her a judge in 2013, and she was confirmed unanimously by the Senate last fall. One month later, Obama designated her chief judge.
Historically, only about four of the court’s 12 active judges have been career patent lawyers, according to Michel and Finnegan Henderson partner Donald Dunner. That’s where the number stands now.
But patent cases last year made up 55 percent of the court’s docket, a “historical high,” according to Judge Alan Lourie’s recent State of the Circuit address.
“And they are so important and they seem to be of increasing significance,” said former Chief Judge Michel. He said a case could be made to boost the number of career patent lawyers to six.
Still others point out that, like Rader, judges who start off without a lot of patent law experience can pick it up in time.
In other words, the field is wide open.
“They could choose somebody with expertise in any of the court’s areas of jurisdiction or none of them,” said Rooklidge. “The fact is that Judge Rader made really a specialty out of patent law and carving out areas like patent damages.” Finding someone of similar background, he added, “would make a lot of sense.”
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