Prior to the interview I had a chance to informally chat with two of Judge Rader’s law clerks, Adam Eltoukhy (Stanford) and Joss Nichols (Columbia), and two of his Interns, Roozbeh Gorgin (Santa Clara) and Jennifer Volk (George Washington), who were present when Judge Rader spoke to me. When Judge Rader arrived we chatted briefly, mostly about the mechanics of the interview. He agreed to allow me to tape our conversation with my iPhone. As you read through the conversation, toward the end, knowing this will likely put the conversation in some perspective, because there are several references, which may seem somewhat random, to the iPhone.
As we spent a few minutes chatting we talked about March Madness and the Final Four, which was to take place the next day. Judge Rader explained he had West Virginia in the Final Four, but didn’t do well enough otherwise to have any chance of winning. I confessed to having Syracuse University winning the tournament, and also having Kansas in the Final Four. There was some pity laughter, but it quickly became apparent that everyone had a bracket that was blown up long ago.
Before proceeding with the conversation it may be helpful to know that I submitted an outline of questions in advance. I was not restricted to these questions, and there was a good give and take. My goal is never to play “gotcha” journalism, so I chose to steer well clear of any potentially sensitive matters, previously decided cases or issues that may become pending before the Federal Circuit. Notwithstanding, I think the interview provides a good look into how Judge Rader approaches the law, his views on the role of an Appellate Court and how he approaches writing a dissent. Judge Rader also spoke to me about his experiences sitting by designation at the District Court, what patent reform may mean, some thoughts about international work sharing to streamline patent prosecution and more. At the end of the interview he even indulged me with some fun questions in my feeble attempt to emulate James Lipton (of Inside the Actors Studio fame).
Judge Rader was pleasant and thoughtful, and I really enjoyed my time chatting with him in Chambers. So, without further ado, here is my conversation with Judge Randall Rader of the United States Court of Appeals for the Federal Circuit.
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QUINN: I thought this might be an interesting opportunity with you taking over as Chief Judge here in a couple months to chat with you on the record, and one of the things I’d like to ask you is what, if any, special preparations are underway for you to make the change, and what kind of change to your daily routine do you envision? Do you have a sense of that?
RADER: I sense that I will have a good many more administrative responsibilities. The Court has a staff that numbers in the hundreds and each of those people have certain demands that they need to have answered from the Judges and from the Court and it will be my responsibility that they get those answers. So, yes, I believe there will be many more administrative responsibilities.
QUINN: Do you expect your day-to-day work schedule to change?
RADER: Yes I do.
QUINN: I suppose that means longer?
RADER:Well, I don’t know if it means longer. I know it will mean different things. I am sure I will have a certain number of meetings every day, a certain number of times when I need to explain the Court’s position on things to various inquirers. So there will be demands of that nature on my time I am sure.
QUINN: In preparing for this interview I spoke with John White, who I teach a patent bar review course with, and one of the questions he thought might be interesting is to talk about what kind of influence, if any, does the Chief have on the Court as a whole?
RADER: It depends upon the area. In terms of the substance of the Court, the Chief Judge doesn’t have a largely different role than any other Judge. He can request an en banc poll just as any other Judge. He perhaps receives a little more attention from his colleagues because his colleagues know that he is often asked to speak for the Court and makes an effort to properly reflect the Court’s viewpoints on things. But in terms of the substance of the Court’s law, the Chief Judge acts as one of the other Judges. He is first among many and I don’t think he has a largely different responsibility in terms of defining the Court’s law.
QUINN: I know recently there have been a couple cases where there has been a 5 Judge panel as opposed to the typical 3 Judge panel? Is that something the Chief would do, or is that something that all of you would talk about?
RADER: The Chief does have the ability to do that, to organize 5 Judge panels. I would think the Chief would want to do that in consultation with the other members of the Court. As you can see it would naturally tend to increase workload a little, with more Judges working on one case, which leaves fewer Judges to work on the other cases. So I wouldn’t think the Chief Judge would want to do that without consulting with his colleagues.
QUINN: It also makes us in the Patent Bar wonder what is going on. Whether there is signaling that this is an important case that we hadn’t all been paying attention to previously.
RADER: The last 5 Judge panel we had was a part of a Judicial Conference. We had an International Judicial Conference where International Judges were present, 60 or 70 of them. We wanted them to see the Court in action. We also had several of our Judges who wanted to participate in that Court proceeding and the Chief Judge convened a 5 Judge panel so all those Judges interested in being part of the hearing presented to the International Judges could participate.
QUINN: I was wondering whether we might be able to chat for a moment about the difference between dissenting and writing for the majority.
QUINN: First, can you describe how deliberations unfold? And what I mean by that is who decides who writes for the majority, when do you know whether you will write a dissent or write for the majority — sort of the mechanics involved.
RADER: When we come off of the bench we immediately sit down as a panel of 3 and convene our conference. The junior most Judge always speaks first, and we do that for two reasons. One is to ensure a kind of judicial independence. The junior Judge cannot defer to the more experienced senior Judges, but must prepare his or her own independent opinion, which will be presented first in an oral fashion. And there is another reason for it, and that is if the first Judge and the second Judge differ then the presiding Judge can kind of rock back in his or her chair and listen, let the two Judges represent the case and receive the benefits of that revisitation of the issues before making a decision that will decide the outcome of the case.
Quinn: So you pretty quickly after the oral argument the panel has an idea, or maybe even knows, whether there is going to be a split or it is going to be unanimous.
RADER: We do not know for sure. We do not discuss the cases in advance. Now, I’ve worked with everyone on this Court for many years and I generally predict with some degree of accuracy how they are going to vote. So I will often predict when we will have a split, but I am not always accurate on that. The conference is when we really decide and we discuss and come to a resolution. The second order of business, after we have discussed the outcome, is to decide how to resolve it. We decide whether to issue a simple Rule 36 affirmance, which is a standard 1-page order that affirms on the basis of the judgment below. The second way of dealing with it is a non-precedential opinion, which is a short 5 page opinion written solely for the benefit of the parties that is not binding on the Court in the future. Then there is the standard precedential legal opinion that you see regularly and discuss and which you see in case books. By the way, I think we tend to do about one-third of each; one-third of summary affirmance, one-third of non-precedential opinions and one-third of full-blown precedential opinions.
After we have decided the outcome and how we are going to decide it, then we assign the opinion. The senior Judge in the majority assigns the case. If the Court has been unanimous in the outcome then it is the presiding Judge making the assignment. Usually the assignment is not a very formal process. Usually it is kind of a volunteers-accepted situation where Judges speak up and say “I’ll take that one,” and we distribute the cases amongst ourselves. But then in other instances the presiding Judge may have a preference. He or she usually gets to speak first and will pick those cases the presiding Judge wishes to author and then assigns the other cases to the remaining Judges.
At that point by the way, you started talking about dissenting, it’s at that point that the Judge who has voted against the outcome would express whether they are going to write a dissent and that is always good notice to have.
The difference in writing a dissent is very clear. Take a look at my dissents versus majority opinions. And that is probably true of any other Judge as well. When you are writing a dissent you don’t have to discipline yourself to be as clear, concise and brief in discussing the Court’s precedents and the Court’s law. You are able to say pretty much what you want in the way you want. It becomes more colorful, more metaphors, more analogies, more fun. [laughter]
QUINN: That leads me to this question. When you write the dissent who is your audience? Because whenever I try and write something, like an article or something, I try and say whether this is going to be an article for inventors or an article for law students or an article for seasoned members of the Patent Bar.
RADER: Dissents tend to have two or three audiences. One audience is, of course, the Supreme Court, if it is a case of sufficient importance that the Court might take it. For instance, in Bilski I figured I was writing for the Supreme Court. A dissent is also written to other members of the Court. I have had a pleasant experience several times of writing a dissent that became the majority because it was written with enough impact to cause one of the other Judges to change their vote. That happened just recently in one of my opinions. One of the Judges initially voted one way, read the dissent and it was strong enough to convince that Judge to change his vote and became a part of the majority. So that is another audience. You usually know when there is a chance of changing someone, so you write with that audience in mind. More often the audience is the bar and practitioners in general and your idea is to preserve what you think is the wiser course of action and present it in a way that may come back to the Court in another time and another case and may perhaps become in the future a majority. I’ve had that happen on occasion as well.
QUINN: Do you approach writing the dissent differently?
RADER: Sure. As I say, I don’t have to take as great care to reflect the Court’s law. I am instead writing a passionate presentation of what the law ought to be, not what the law is.
QUINN: When I read dissents, particularly yours or Judge Newman’s, it almost seems that the passion jumps off the page.
RADER: Yes. You can be more emotional and use emotion as a tool in your dissent, whereas your majority opinions you want to strip emotion out of the law and make sure it reflects the law as it is to be understood and applied.
QUINN: I also have some questions about your experiences sitting as a trial judge.
QUINN: Maybe I have missed it, but it seems that you are the only one on the Federal Circuit that is doing that. Is that true?
RADER: I am the only one who has ever handled a jury case, and the only one who has handled a patent case. I have heard that Judge Moore is handling a sentencing case. I think Judge Dyk once handled a contract case, but I am the only one who has handled a jury trial or a patent case.
QUINN: Have you enjoyed that?
RADER: Yes, I try and do it quite often. Check back, there have been many of them.
QUINN: Is that an experience that you think other members of not only the Federal Circuit but other members of the Regional Circuits would benefit from?
RADER: I think particularly other members of the Federal Circuit would benefit from that experience.
QUINN: Would you care to elaborate on that?
RADER: Yes. The job of an appellate Judge is to review a record for reversible error; to correct errors. In order to correct errors based on a record you need to understand the challenges of making a record, you need to understand the challenges of administering a trial and narrowing issues. As an example, I see very often in appellate practice where the losing case will seize on some minor issue and try and elevate that to an issue of great importance before the Court of Appeals when in fact all of the parties had dismissed it as of marginal significance when before the trial court. So the Appellate Court ends up considering and making decisions on something which was only marginally considered by the court below.
It strikes me that we ought to be reviewing the decisions that were made below. We should not allow parties to present to us as if they were major decisions, things that were part of the narrowing exercise, which a trial court must necessarily do.
The value of sitting as a trial judge is you can recognize this. When you have done it yourself you know what a challenge it is to narrow issues and have developed a record that reflects your accurate decisions.
QUINN: I know in the CAFC and I think in other courts as well it also works in reverse, where some District Court Judges sit by designation. Has that been beneficial to you and for the Court as a whole?
RADER: I think there have been two benefits to that. I think the District Judges themselves have seen the Federal Circuit in action and have become more acquainted with us and have gained more confidence in the work we do. I think it has worked in reverse as well. The Federal Circuit Judges have seen the District Judges and their marvelous preparation to work with us and have gained more confidence in them and their work. So it has been a wonderful institution strengthening exercise for both the District Courts and the Federal Circuit.
QUINN: Has anything you’ve seen sitting as a District Court Judge surprised you?
RADER: You get surprises every day. [laughter] I am being a little facetious but you need to talk to trial attorneys and they will tell you no matter how much you prepare a witness they will always surprise you [laughter]. And those surprises the District Judge learns to recognize as well and it becomes a wonderful part of the trial experience to react to the surprises that are inevitable.
QUINN: I had that experience very early on in my legal career during the summer after my 2L year. In this one case the first time the client had said anything like this was on the stand. Everyone was looking around asking “has he ever said that, has he ever said that?” We had no idea what he was going to say. This was a case the firm had been working on for several years.
RADER: I had an important case. I think I was working in Brooklyn. The witness took the stand and testified that the prior art had nothing to do with the claimed invention because you could clearly see that they were different. Then he took a mask presentation of one semiconductor and laid it over top of another semiconductor and of course they did not align whatsoever. Immediately I saw shocked looks on the face of the attorneys. We excused the jury. Then we learned he had misaligned the two presentations and when you aligned them properly the overlay was astoundingly similar. [laughter]
RADER: There was shock and surprise on everyone’s part. The witness to his credit, and he was a gentleman of tremendous distinction, had aligned it in the way he thought they were always to be aligned and it turned out that this was not his area of expertise. I then had to deal with a motion for mistrial and a motion for sanctions and all kinds of motions. We went on with the trial and did not have a mistrial and did not have sanctions and everything turned out well in the end.
QUINN: I don’t suspect you get that kind of surprise –
RADER: No. That was a pretty big surprise! But when you said surprise that is the one that came to mind.
QUINN: But at the CAFC you probably don’t get those kinds of surprises, do you?
RADER: Of course not, because we are not dealing with evidence.
QUINN: But do you get any kind of surprises? Occasionally does something surprise you or take you off guard?
RADER: Well, I don’t deal with that kind of surprise as much at the Federal Circuit. I am occasionally surprised and I express this to my law clerks that they argue something I thought was marginally important instead of something I thought was very important to the case. That is occasionally the kind of surprise I experience. But that is a matter of attorney judgment, of course, but I would have reached a different judgment.
QUINN: Now I have some miscellaneous things.
QUINN: With so many Judges reaching retirement age, do you anticipate large turnover at the CAFC during your term as Chief?
RADER: Yes. I expect that by the time I leave the Chief position that the Court will be vastly changed. I may at that time be only sitting with 3 or 4 active Judges I now sit with.
QUINN: That also leads me to ask whether you envision yourself more like Chief Judge Michel, reaching the age and stepping down to potentially do other things, or do you anticipate you will be more like Judge Rich and stay on the Court really until the end?
RADER: Yes. [pause, then laughter]. Trust me, I have no way to make that decision at this point.
QUINN: I guess I wasn’t really –
RADER: I haven’t really – I have occasionally toyed with that decision but I am so far from making it that I have –
QUINN: For me personally, I love patent law so much, and I know I am way away off from any retirement, but what would retirement look like for me? I can’t imagine not being involved.
RADER: I think that is true for me too. I’ll continue to teach regardless of where I am and I will continue to do many of the things I am doing now and they will always be at the heart of intellectual property law.
QUINN: Regarding important issues, without commenting on the merits of any particular issue, do you see anything on the horizon for the patent law area that might influence the direction of the law over the next few years? If you don’t want to answer that –
RADER: No, there are two things I can answer to that. One is that if the patent law reform amendments go into effect we will have a lot of adjustments. We will be switching to a first inventor to file system, and that will have some affect on the nature of the prior art. There will be adjustments necessitated by the changes made in that statute that will require the Court and the PTO to respond over a period of several years. Another point is that even if the Act is not passed, the PTO, and the Court has to be aware of the tremendous pressures on the patent system, there needs to be some effort to deal with the quality of patents worldwide as the number of filings increases. Part of that answer might be an international work sharing where the United States, European, Japanese and other major Patent Offices can acknowledge each other’s work and save time on work that has already been done elsewhere.
QUINN: Now, I don’t know whether you have seen these questions in advance –
RADER: I did. Go ahead.
QUINN: Well, now the fun stuff. Favorite hobby or pastime?
QUINN: Favorite sport?
QUINN: Favorite movie?
QUINN: That’s not what I would have predicted.
RADER: My colleagues [speaking to his clerks and interns] are going to disagree with me here. [laughter]
QUINN: Would you most like to meet Benjamin Franklin, Thomas Edison or the Wright Brothers?
QUINN: That one I predicted. I never would have predicted Casablanca.
RADER: Well, from him you get the founding of the country and it would be so fun to talk to him about what he thought at various points during the Constitutional Convention and how he perceived events that I, of course, have read about and studied. In addition, he is an inventor so you get a dual perspective.
QUINN: The coolest invention of all time?
RADER: I remember Judge Rich saying – do you remember Judge Rich’s answer to this?
QUINN: No. I do not.
RADER: The disposable diaper. [laughter] That was Judge Rich’s answer. I think my answer would be the airplane.
QUINN: Not the iPhone?
RADER: I have an iPhone, but –
QUINN: I have started referring to the iPhone as the coolest invention of all time because it is a computer in your pocket. In any event, who is the best fictional inventor, Emmett Brown (from Back to the Future), Q (from James Bond), Tony Stark (from Iron Man) or the Professor (from Gilligan’s Island)? Or you can go off the board.
RADER: Let’s go with Back to the Future guy. I mean that’s time travel. If somebody can travel through time, that is pretty cool.
QUINN: I thought you were going to go there, but for some reason I thought maybe you were a James Bond fan.
RADER: Some of that stuff is fun, isn’t it?
QUINN: Favorite sci-fi visionary: Jules Verne, Gene Roddenberry, George Lucas or H.G. Wells?
RADER: Roddenberry. Although H.G. Wells – no. Lets stick with Roddenberry, and then you know the answer to the Star Trek question.
QUINN: Yes. Star Trek or Star Wars?
RADER: I’ve got to stick with Star Trek.
QUINN: OK. Captain Kirk or Captain Picard?
RADER: Kirk! It’s my generation. [speaking to his clerks and interns] You guys can be Picards if you want, I’m with Kirk. [laughter]
QUINN: I would have gone Benjamin Franklin, the iPhone, Emmett Brown, you know, I might have gone Jules Verne just because of the importance to submarine technology –
RADER: Yes, there really are so many. I’ve read all of Jules Verne’s stuff, but it just wasn’t very good literature.
QUINN: Well, maybe one follows up then. How important do you think it is to expose children in grade school and elementary school to science fiction? I worked on a contest with Inventors Digest, a science fiction essay contest, and it seems to me that is where the next generation of inventorship comes from; from that creative process.
RADER: I agree. I remember when I was in grade school I had a section in my notebook where I designed rockets. My teacher once caught me doing that instead of what I was supposed to be doing. He brought it up to the front of the class and started posting these pages on the board. I think he wanted to embarrass me, but then he found out that the students were more interested in that than they were with what he was presenting. I ended up presenting a class on how I envisioned space travel. It turned what could have been an embarrassing experience into a confidence building experience. I remember where I was so it must have been the Fifth Grade because my father moved and I was in a different school every year. I remember where I was so it had to be the Fifth Grade. That would be age 11.
I don’t know how I got off on that, but the answer is yes. We ought to be giving kids opportunity to do imaginary work. Give them computers. Let them design things. Let them think thoughts that will seem strange to us, but which may really take us in different directions.
QUINN: Well that is all I really have.
RADER: Good. Come on back and we’ll do this again. I think this is a good thing to do.