Inventive Step is reporting that President Obama has renominated Edward C. DuMont and Jimmie Reyna to serve on the United States Court of Appeals for the Federal Circuit. Oddly, the press release announcing the renomination of DuMont and Reyna, along with the renomination of 40 others, is not available from WhiteHouse.gov. On January 5, 2011, President Obama forwarded numerous nominations to the Senate, but the press release naming the 42 judges isn’t available. The only place where I could find a copy of the press release, which was apparently sent to some journalists and just not published otherwise, is here.
In any event, President Obama nominated both DuMont and Reyna in 2010. DuMont was nominated in April to take the position opened by the retirement of Chief Judge Michel and Reyna was nominated in September to take the position opened by Judge Mayer’s decision to take senior status. Neither individual had a hearing in the Senate Judiciary Committee, a prerequisite to an up or down vote by the full Senate. Perhaps the Senate Judiciary Committee will take swifter action on these nominations in 2011, but even if they do there is no guarantee that the Senate will have an up or down vote.
DuMont, a partner with Wilmer Cutler Pickering Hale and Dorr, is an appellate attorney who has handled a wide variety of cases. His firm bio explains that he has experience with patent matters, but he has also represented clients and filed briefs on numerous issues including trademarks, copyrights, the National Bank Act, the permissibility of taking cost-benefit considerations into account in environmental regulation, federal constitutional constraints on state land-use decisions, ERISA preemption, the proper limits on asbestos litigation, white collar crime, computer crime, how the FICA tax applies to a university’s retirement annuity program and much more. He was involved in the recent TiVo case to be heard by the Federal Circuit, appearing as counsel on the brief for TiVo. Prior to joining the Wilmer firm, DuMont served as an Assistant to the Solicitor General at the U.S. Department of Justice, and also as an Associate Deputy Attorney General, having responsibility for handling issues relating to computer crime, e-commerce and privacy.
Reyna, a partner with Williams Mullen, specializes in matters related to international trade. He has represented clients in legal and regulatory matters involving the cross-border movement of goods, services and investments and has experience with trade regulation, trade policy, trade negotiations and agreements, international treaties and accords, investment, business and corporate law, export controls and food safety. Reyna has also served on the World Trade Organization’s U.S. roster of Dispute Settlement Panelists.
Both DuMont and Reyna seem to be eminently qualified to be members of the federal judiciary, but neither are patent attorneys. The fact that they are not patent attorneys should not disqualify them from service on the Federal Circuit, but I can’t help but notice that the court charged with being the primary appellate court in charge of patent appeals has few patent attorneys among its ranks. Presently, the Federal Circuit is made up of 16 judges, with 6 of the judges being on senior status. Out of the 16 judges on the court, only three are patent attorneys. In order of seniority the patent attorneys on the Federal Circuit are: Judge Pauline Newman, Judge Alan Lourie and Judge Richard Linn. Out of these three only Judge Linn has served as a patent examiner.
The jurisdiction of the United States Court of Appeals for the Federal Circuit is defined by 28 USC 1295. The Federal Circuit does have a number of areas of jurisdictional responsibility, but the Court was primarily established to bring uniformity to patent laws. Since 1982 the Federal Circuit, through its own decisions, grew its jurisdiction even greater to take jurisdiction over virtually all issues that relate to patent litigation. This trend was halted by the United States Supreme Court in the summer of 2002 in Holmes Group, Inc. v. Vornado Air Circulation Systems, Inc., the United States Supreme Court limited the jurisdiction of the Federal Circuit to those cases where the patent claim is found in the initial complaint. As a result of Holmes Group, the Federal Circuit no longer has jurisdiction of those cases where a patent claim is brought only as a counter claim, but this has hardly limited the jurisdictional reach of the Federal Circuit with respect to patent matters. Other than this narrow Holmes Group carve-out, the Federal Circuit is the only one of 13 federal appellate courts to accept appeals of patent matters, whether they come from patent litigations initiated in any one of the 94 federal district courts, or whether they originate from the United States Patent and Trademark Office.
In looking at the cases filed at the Federal Circuit during 2010, 42% of the docket for the CAFC were patent cases. At the moment, the three judges who are patent attorneys on the Federal Circuit are all on active status and by that I mean are not on senior status. Judges Newman and Lourie, however, currently qualify to move to senior status or retire, and in a matter of a few years Judge Linn could elect senior status or to retire as well. Thus, moving forward in the not too distant future there could be a time when none of the judges active on the Federal Circuit would be patent attorneys by training and experience. This, in my opinion, would not be at all wise.
One of the problems we have seen over the years with the operation of the United States Patent and Trademark Office is that when someone who is a patent attorney is not in charge they really do not understand the day to day operations of the patent bar, nor do they have a fundamental understanding of what it is that patent examiners do. Not understanding the intricacies of the patent examination process has at times led to rules packages that make little sense and which fail to adequately take into consideration practice realities experienced by the patent bar and innovators. It is no great surprise that over the last two decades the leaders of the Patent Office who ran the agency best were Q. Todd Dickinson and David Kappos, both patent attorneys. After Dickinson was Nick Godici, a career employee of the USPTO who rose from the ranks of an examiner to assume the top job. As with any job, there is no substitute for experience and the knowledge that comes along with that experience.
The Federal Circuit has the unenviable job of issuing rulings on substantive matters in litigation and with respect to patent prosecution at the USPTO. These rulings in different procedural settings apply the same law and will have enormous impact on both litigation and patent prosecution regardless of the procedural posture of the appeal. With judges who have not drafted patent applications nor were engaged in patent prosecution for at least some period of time, I wonder if they can really understand the importance of the decisions they issue. Sometimes, it seems to me that the decisions of the Federal Circuit and certainly the decisions of the Supreme Court, exhibit a fundamental lack of understanding regarding how what they say will play out at the Patent Office.
The patent process is bizarre and for the uninitiated inventor filing your own patent application is akin to attempting to take out your appendix — not very wise. There are traps around every decision that can be made and nuances galore. When I teach would-be patent attorneys and patent agents in the PLI patent bar review course I tell them that drunk on a bet they couldn’t come up with a more bizarre system. That is 100% true. For every rule there are exceptions and exceptions on the exceptions and particular and archaic processes that must be followed. One example may suffice for the moment: did you know that in patent law the words “a”, “an” and “the” are all terms of art in patent claims? I kid you not. Okay, one more example: did you know that in patent law there are two separate and completely unrelated doctrines that claim to be “the experimental use exception”? Did we run out of language and have to refer to wholly unrelated concepts by the same name?
According to Chief Judge Paul Michel, now retired from the Federal Circuit, when he joined the Federal Circuit then Chief Judge Markey told him that it usually takes someone about 5 years to hit full stride. See Past, Present and Future in the Life of the U.S. Court of Appeals for the Federal Circuit (at page 1204). It is not at all difficult to believe that it would take even an eminently qualified jurist 5 years to hit full stride on the Federal Circuit. Patent matters are complicated and one misstatement here will have severe consequences over there. Examples of this are the seemingly benign statement by the Supreme Court in Festo that in order to avail yourself of the doctrine of equivalents the patentee must demonstrate they couldn’t have written the claim covering the equivalent at the time they filed the patent application. Of course, that would mean that the patentee wasn’t in possession of the invention, so to satisfy the doctrine of equivalents one must demonstrate a violation of the written description requirement. A similar type of problem occurred not long ago when Judge Moore wrote the original panel decision in the Egyptian Goddess case and announced that the point of novelty for a design patent must be non-obvious. This weaved together novelty and obviousness in a way never before envisioned and muddied the waters hopelessly until the entire Federal Circuit sitting en banc reheard the Egyptian Goddess case and did away with that pronouncement.
No one is flawless, and it is unrealistic to expect any one person to be correct all of the time, or for any one person who is knowledgeable and opinionated to agree with every decision rendered by the Federal Circuit. What is fair, however, is to expect that with 40% or more of the cases filed at the CAFC being patent cases the Court be made up appropriately, perhaps even more heavily on the patent side. The other big ticket areas of appeal to the Federal Circuit are personnel matters and Veterans affairs, making up 33% of the 2010 CAFC docket, and which are largely matters of Administrative Law and understandable by most any attorney with enough exposure. On the other hand, the innovations that are the subject of appeals in Federal Circuit cases can be and usually are highly technical, thus having at least some patent attorneys and those with appropriate scientific backgrounds on the CAFC is of paramount importance.
It is not my purpose to question the qualifications of DuMont and Reyna and I do hope they enjoy a speedy confirmation process. I do, however, believe that the patent community can and should have an open dialogue about the need for members of the patent bar to be appointed to positions within the USPTO and on the Federal Circuit. There are plenty of qualified patent attorneys to serve and the White House should look to members of the patent bar in the future.