Part 2: Don Dunner on CAFC Judges & Future CAFC Candidates
|Written by Gene Quinn
President & Founder of IPWatchdog, Inc.
Patent Attorney, Reg. No. 44,294
Zies, Widerman & Malek
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Posted: February 27, 2011 @ 9:58 am
In part 1 of my interview with Don Dunner we talked about how he managed to become the the dean of CAFC appellate advocates, arguing more than 150 cases before the court. We also discussed many of his most high profile cases and his approach to handling multiple simultaneous appeals. In this second installment of my interview with Dunner we talk about which judges on the Federal Circuit ask the most difficult questions, who he thinks are capable candidates for future federal circuit vacancies, why the Federal Circuit was created as a specialty court, continued hostility toward a purely specialty court and Congressman Issa’s attempt to create a pseudo-specialty trial court for patent issues. We also touch upon the familiar fun questions and learn that one of Dunner’s favorite movies is a well known courtroom comedy.
Now, the second part of my interview with Don Dunner, a partner with Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
QUINN: I have a question that maybe you won’t want to answer. Which of the CAFC judges ask the most difficult questions? And it doesn’t have to be somebody who’s sitting currently, it can be somebody who’s been on the court in the past. Or you can just say that they all ask equally brilliant and equally difficult questions.
DUNNER: No, they don’t all ask the same number of the same kind or the same quality of questions. There are some judges that don’t ask very many questions at all. But I would say that there are a lot of judges who ask good questions. One of the very effective questioners of late has been Judge Kimberly Moore, who’s one of the newer judges on the court. Judge Moore asked some really tough questions in the i4i Case. She was a tough questioner in the Uniloc Case. And she is certainly well prepared. When Judge Michel was on the court, some felt he was an aggressive questioner. But I always found his questioning very reasonable. Judge Clevenger is now a senior judge, but often asks some very difficult questions. Judge Dyk is probably one of the toughest questioners on the court. He clerked for three Supreme Court justices and was a very effective appellate advocate in private practice. He often asks questions going well beyond issues that were briefed. In one en banc argument before the court he asked questions about the content of briefs at the district court level in a precedential case that ultimately went to the Supreme Court. And there are other judges who also do as well. Chief Judge Rader is always well informed about the cases before him, and is a very aggressive questioner. Judge Bryson is a very reflective judge and often asks questions testing the edges of the argument you’re making, much as a Supreme Court Justice might question you: Where is your argument going to take us? How would your argument impact on A rather than B or rather than C? And so a lot of the judges as good, difficult questions. I’ve mentioned some of those who are tougher than others. I’m not saying tough in a negative way, but tough in the sense that they test you and your knowledge of the case.
QUINN: Now, you were just talking about Judge Dyk maybe asking questions that were not necessarily directly briefed. And that brought to my mind in looking at your roster I notice you were involved in the Nobelpharma case back, oh, now, that’s 12 or 15 years ago regarding–
DUNNER: I remember it well.
QUINN: Regarding the antitrust issue. And it was always my understanding, and maybe this is not correct, and I’ve been dying to ask somebody this question who would know for many years. What actually happened with the original panel withdrawing that decision? Was that sua sponte or was that provoked by a motion?
DUNNER: Well, I remember that case very well. And I will tell you an interesting anecdote about that case. The case is now no longer in the system so I can talk about it. Two of the judges issued a panel decision in my favor on the antitrust issue; with one dissent. Shortly after the opinion came down, I received a phone call from a friend of mine, who suggested that if I hadn’t had any Supreme Court cases, I probably would have one soon. A petition for en banc rehearing was filed, and we filed a response. The case, however, never went en banc because the panel issued an opinion changing its decision vacating the antitrust part of the decision in my favor and going the other way. So I don’t know what happened in the Federal Circuit, but I can guess.
QUINN: Okay, I have another question for you that hopefully is not too off the wall. With the Federal Circuit having so many judges that are capable of taking senior status and the court makeup having an opportunity to really significantly change over the next several years, I and others have kind of been looking at the appointments a little bit more carefully than you might otherwise for the Court. And I think there’s a couple folks, Jimmie Reyna has been nominated and Edward DuMont has been nominated. I think that they’re excellent attorneys. But in looking at the biographical information of the judges that are still there, we’re going to come to a point in time where we don’t have very many judges, if any, that are patent attorneys. Judge Newman, Judge Lourie, Judge Linn, but Judge Newman and Judge Lourie could take senior status at any time, or just simply retire. And Judge Linn is only a few years away from that point. So do you think it’s important that the Federal Circuit continue to have some representation from the patent bar?
DUNNER: The answer is yes. But the whole scheme of the Federal Circuit was to prevent it from becoming a specialized court. I believe there are statements in the congressional hearings suggesting that maybe four, maybe five at most of the 12 circuit judges should have patent backgrounds. And right now, aside from those who have learned patent law on the bench, you’ve actually got four. You’ve got Judge Moore in addition to Judges Lourie, Newman, and Linn. And a little known fact is that Judge Gajarsa started out with a patent firm, Cushman, Darby, and Cushman. He was only there for a year, I believe, and I don’t think he himself considers himself to have a patent background. So basically you’ve got four judges with patent backgrounds. Judge Lourie and Judge Newman both could go senior if they wanted to, but I think that neither is likely to do so short of having health problems. I think they’re going to stay around for a good long while because they not only love their jobs, but when they go senior, they no longer can participate in en banc hearings unless they’ve been on the panel. So both are likely to stay. Judge Linn was appointed in 1999. Whether he will go senior, I don’t know. Judge Moore is going to be around for a long time, since she was very young when she was appointed, and she will ultimately at some point be Chief Judge. But, yes, I think that there should be always a compliment of at least four judges, maybe five, with prior patent experience. And there are a lot of very bright people out there who I think would make superb judges. It would be very nice for a private practitioner with a lot of litigating experience to be appointed. And there are some super bright people who I know would take it if they were offered the job.
QUINN: Would you care to suggest a few or–?
DUNNER: Yeah, well, I can think of one who would be superb, a super bright lawyer named Bill Rooklidge who is on the West Coast, who’s a former president of the American Intellectual Property Law Association and who clerked at the Federal Circuit for Chief Judge Nies. Somebody like John Whealan, who used to be the Patent and Trademark Office Solicitor for many years who is now an Associate Dean at GW Law School, would be excellent. And there are others who would be very good. So there are a lot of people out there. There are academics who I know would be interested, who might also be very good. I’ve heard Todd Dickinson mentioned as a possibility. He’s a former Director of the PTO, who’s now Executive Director of the AIPLA, and who I suspect might take it if he were offered the job. So there are a lot of people out there who are very good prospects.
QUINN: Now, let me just take a step back a little bit. You had said that you’re pretty sure that in the legislative history there was this discussion of not having a specialized court. Now, the way I always understood it was that this idea of a specialized appellate court was just so foreign to U.S. jurisprudence that those types of things were said to calm fears and explain that isn’t going to be what’s happening. Today, if you look at the docket of the Federal Circuit over the last year or two, it’s 40 to 45% patent cases. And I wonder whether it makes sense to continue to have only four or five of the judges that have a patent background given that any and all of them can and randomly do get assigned to patent cases.
DUNNER: Well, I’d like to comment about that. The hostility to a specialized appellate court in the patent field was so great that unless the court was formed with a pledge that it would not became solely a patent court, the court never would have been formed. The only reason the court was formed was there was an innovation crisis during President Carter’s term, and there was concern about innovation slowing down in the United States and going overseas, and what have you. And then Professor Meador of the University of Virginia came along and said, I’ll solve the problem, let’s combine two existing courts, the CCPA and the Court of Claims, and we have judges who are not specialized patent judges but who have patent experience, and we’ll give them jurisdiction over areas that aren’t just patents so they’ll be exposed to other areas of the law. The general bar was against having a specialized patent court. The ABA came out, in fact, against it even though it’s Intellectual Property Law Section at the time came out in favor of it. There was just so much hostility to a specialized court that Congress pledged that it wouldn’t contain only patent people, it would contain other people who would bring other disciplines to bear on patent cases. English majors, history majors, political science majors, economics majors and what have you which would provide the court with insights that are not strictly in the patent field. That’s why you have three former Supreme Court law clerks, Judges Clevenger, Dyk, and Bryson. Unless you have that, even though there are lots of patent cases, there will be this continued hostility toward what was regarded as the Rifkin rule named after Judge Simon Rifkin, who was a former district court judge in the Southern District of New York and who was one of the co-chairs, I believe, of the Lyndon Johnson Commission on the Patent System. He talked about his view that when you have specialized courts, the judges start to talk their own language that nobody else understands and they develop biases towards or against specific points of view. The Federal Circuit, even though it has lots of patent cases, is hardly a pro patent court. They’ve rendered a lot of decisions which a lot of people think are not pro patent decisions, so they go both ways. They’ve had pro patent decisions, they’ve had anti patent decisions, and I think there is something in the legislative history — I’m not sure, I can’t quote it to you — suggesting that there shouldn’t be any more than four or five judges with prior patent experience. And I think that’s a good rule.
QUINN: Okay. You mentioned a couple of things I’d like to circle back to. One, do you think that this hostility toward a specialized patent court, or maybe a specialized court in general, or appellate court particularly, may subside given Congressman Issa’s patent district court project.
DUNNER: Well, I think the Issa concept is an interesting concept. It comes very close to the line of specialization that the general bar has traditionally been hostile to. On the other hand, it has within it some safeguards that push in the other direction. For example, the judges who will be participating in this process are not patent lawyers. They are generalist judges. They’re just generalist judges who are in courts that have had a lot of patent cases, and the judges can opt in or opt out as they please. So you’re ending up with generalist judges who will be getting more patent cases than they otherwise would get, such as a number of district courts now have. For example, in Delaware you’ve got judges, because so many corporations are incorporated in Delaware, who get more than their share of patent cases. And those judges have developed patent expertise. In Massachusetts you’ve got Judge Saris and other judges such as Judge Young who had had a lot of patent cases. In the Eastern District of Texas you have a lot of judges who have handled a lot of patent cases. And the same is true in Alexandria, Virginia and the Northern District of California. So you have judges who have a lot of patent cases and develop patent expertise, but who are generalist judges who have other cases, who have criminal cases, who have bankruptcy cases, who have whatever kind of cases you might think of. So you have at the district court level something paralleling what happened at the Federal Circuit in that you have judges who are not patent specialists but who become knowledgeable about patent law. So it’s an interesting experiment. I think if you try to go further and say let’s have a special patent court, let’s convert the Court of International Trade to a special patent court — I’ve heard people mention that — I think there would be tremendous hostility to that. So it does come closer to the line, but I don’t think it crosses the line.
QUINN: And then the other thing that you had mentioned was that there was an innovation crisis, as you called it, during the Carter Administration. There are a lot of people, and myself included, that wonder whether we are also experiencing another point in time when there is an innovation crisis. And I wonder if you might just comment on that, if you have any thoughts on that.
DUNNER: Yes. Well, I don’t know that we have an innovation crisis of the kind that was perceived to exist during President Carter’s administration. But I am concerned with attempts to dilute the patent law. I’m concerned with attempts to dilute it in the damages area. I might be accused of being biased because the i4i Case is presently before the Supreme Court, but that represents another attempt to dilute the effectiveness of patents, and I know there’s enormous concern with those efforts. So I don’t know that there’s an innovation crisis, but there is significant concern that there are a lot of efforts to pare back the effectiveness of the patent grant, and that does concern me. And I’m concerned with the efforts of the Business Software Alliance, backed by high tech firms, to get Congress to legislate and pare back significantly the ability of patent owners to achieve their return on their patents. So that does concern me. Whether you call that an innovation crisis or not, I don’t know.
QUINN: There’s an old saying, and I’m sure you’ve heard it, bad people or bad actors make bad laws. And one of the things that I fear is happening right now, and particularly in the patent space, is that it’s not just a bad person or bad actor within a case, but the belief that so-called patent trolls are the bad actors in the industry. Whenever a case comes up to the district courts or the Federal Circuit or the Supreme Court, they seem to have in the back of the mind — how is this going to play out for the problem which is maybe not at all in front of them, which is the non practicing or patent troll problem. And I wonder how much of that is really causing the patent laws to take a turn. Do you have a thought on that?
DUNNER: Well, you know, I’ve been involved in and seen litigation where a patent litigant will try to paint his adversary as a patent troll, or a non-practicing entity. There are lots of non-practicing entities which actually are beneficial to the patent system, universities and what have you. So, yes, you read references in opinions to patent trolls. There have been a reference or two in Supreme Court opinions to that effect. But there have been other cases in which the district court chastised trial counsel for characterizing his adversary as a banker, suggesting that it was not really innovating itself but was just looking to the patent system to generate money. So there is that attempt by litigators to paint the system black, and that’s picked up in some court cases. To what extent that has influenced some of the dominant themes by the Supreme Court is hard to tell. It certainly is something that you see. And I think district court judges are acting properly when they tell counsel not to go there, to stay away from that. Because after all, if somebody owns a patent, he’s entitled to enforce his patent, and he shouldn’t be damned because he’s a non-practicing entity. Many of them are good outfits, good companies, good industries.
QUINN: Yeah. Today Thomas Edison would be considered by some to be a patent troll.
DUNNER: Oh, yes, that’s an interesting point.
QUINN: Which by any fair definition that can’t be what it means.
QUINN: All right, now, if you’re game, usually I end interviews by trying to ask some questions, akin to James Lipton of the Inside The Actor’s Studio, just some random questions to kind of get to know you personally a little bit better.
QUINN: Favorite hobby or pastime?
DUNNER: Well, of late I have been using whatever spare time I have driving, working out on the elliptical trainer, listening to books on tape. Over the years I’ve mostly been reading U.S. Patent Quarterlies and BNA Journals and what have you. Of late I’ve been reading through books on tape . . . history, books about great people, Einstein, presidents, what have you. I love to do that. At times I can’t wait to get in my car to listen to the next episode. Also, as old as I am, I’ve managed to remain a skier, which is one opportunity to get to know your grandchildren. And we have a place on the Eastern Shore and I have a boat and I tinker around in it and use it to go for hard shell crabs in nearby restaurants that are on the water. And I also play a little tennis. So that basically is what I do. But I mostly work. I mostly work.
QUINN: Yeah, I hear you. Well, favorite author? Do you have a favorite author?
DUNNER: Oh, I love historians. I love to read books by Doris Kearns Goodwin. I’ve read David McCullough’s book on John Adams and others, and so I like authors who write historical books.
QUINN: Okay. How about a favorite movie?
DUNNER: Favorite movie. Well, I’ve watched My Cousin Vinny so many times. If I had to select my favorites, I would mention two favorite movies. One is My Cousin Vinny and one is To Kill a Mockingbird, both of which have to do with the practice of law.
QUINN: Do you care to elaborate on My Cousin Vinny? I think that’s a great move, it’s a funny movie, but not one I would necessarily expect you to pick.
DUNNER: I think the acting in it is just absolutely superb. I think the movie has a funny storyline. The ABA has a poll of great legal movies . . . they came out with it last year, and To Kill a Mockingbird is always number one, in a field of its own. My Cousin Vinny is right near the top, so there are a lot of people who like it. I guess there are other movies that I’ve loved over the years. Just two or three nights ago I saw Twelve Angry Men; I never tire of seeing that movie. And there are other great movies. I like war movies, such as The Longest Day. I never tire of seeing Patton, which was on TV last night, which I saw a piece of. So there are a lot of really very good movies.
DUNNER: One of my very favorite movies which nobody would probably include on his list is Limelight, a movie which you’ve probably never heard of which was written by Charlie Chaplin, produced by Charlie Chaplin, directed by Charlie Chaplin, the music of which was written by him, and he was the lead actor in it. So there are a lot of very great movies.
QUINN: Okay, very good. Do you have a favorite sport?
DUNNER: Favorite sport. Well, I love watching football. My daughter was a professional tennis player, so I do like tennis. And I play tennis myself. I’m not very good at it. But the sport I like to view the most is football. It would be a little better if the Redskins had a better team, but—
QUINN: Who would you most like to meet? And the theme here is famous American inventors, Benjamin Franklin, Thomas Edison, the Wright Brothers, or you can insert somebody and go off the board.
DUNNER: Well, Thomas Edison would be a good starter, I would guess. I haven’t really thought about that, but certainly Thomas Edison is in everybody’s book as the most prolific inventor of the greatest number of really significant developments. So Thomas Edison would be a good choice.
QUINN: Okay. How about the coolest invention of all time?
DUNNER: The coolest invention: what if I told you the refrigerator, would you laugh?
QUINN: (Laughs) Yes, I would.
DUNNER: (Laughs) Oh, gosh, there are so many great inventions, I wouldn’t even know where to start.
QUINN: Okay. Well, the refrigerator is not a bad one, I mean, that was a very important invention that we take for granted today.
DUNNER: You’re talking about the refrigerator?
DUNNER: Yes, but I said it to be cute.
QUINN: No, I know, I know. All right. How about favorite sci-fi visionary, Jules Verne, Gene Roddenberry, George Lucas, or H.G. Wells?
DUNNER: George Lucas certainly is right up there.
QUINN: Okay. Star Trek or Star Wars?
DUNNER: Since I’m not a Star Trekkie, or whatever they call themselves, I’ll have to pick Star Wars.
QUINN: And that’s all I have. I really appreciate you taking the time to chat with me.
DUNNER: Oh, it’s been a lot of fun. I like talking about the things I talked about, and you certainly asked a lot of good questions. So I appreciate the opportunity to answer them.- - - - - - - - - -
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About the Author
Gene Quinn is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.