EDITOR’S NOTE: What appears below are the prepared remarks for “The Honorable Howard T. Markey Distinguished Lecture on Intellectual Property Law,” given by Don Dunner at the John Marshall Law School on November 12, 2010. In light of the recent announcement that Chief Judge Rader will be stepping down as Chief Judge, Dunner granted us permission to publish this piece.
The title of my lecture today is “The Evolution of Patent Jurisprudence … from Giles Rich to Howard Markey to Randall Rader.” Why, you might ask, am I restricting myself to these three jurists if my subject is “The Evolution of Patent Jurisprudence”? Why not start at the beginning, for example, and talk of Article I, Section 8, Clause 8 of the Constitution, or the first patent act in 1790, or the beginning of the patent examination system in 1836, or the patent writings of Judge Learned Hand.
Those of you who are familiar with my career will know the answer: My 55 year career in patent law spans almost exactly the judicial tenures of Judges Rich, Markey and Rader. I have been specially blessed with my extensive interactions with all three judges, not to mention numerous oral arguments that I have been privileged to make before them. And so it seemed to me appropriate to spend my time today sharing my recollections and thoughts about these three giants of the patent profession.
Judge Richard Linn of the Federal Circuit, in chambers on Feb. 8, 2013.
On Friday, February 8, 2013, I had the honor to interview Judge Richard Linn of the Federal Circuit. We met in his chambers with the recording going for approximately 60 minutes. In Part I of the interview we discussed Judge Linn’s early interest in patent law and how he found himself appointed to replace the recently deceased Judge Giles Sutherland Rich. We then discussed engaging as a lawyer with civility while still zealously representing clients. That brought us to a topic near and dear to the Judge’s heart — the Inns of Court and the many patent focused Inns across the country that together make up the Richard Linn Inn Alliance.
In Part II of the interview, which appears below, we pick up with the discussion of the Inns of Court and further discuss civility and “Rambo style lawyering,” which Judge Linn explains was really the genesis behind the forming of the Inns of Court.
QUINN: I’m a member of the Pauline Newman Inn that meets at the Patent Office, and we’re members of the Linn Inn Alliance. I mean, first off how does that feel? How did it come about, I guess, maybe, first off. Second is how does that feel that the entire industries, the lawyers, are lining up in droves to join the Linn Inn Alliance? I would think that that is great evidence of what the industry does think of you and that this is really promulgated out of one Inn.
LINN: Well, I’ve been actively involved in the Inns of Court since I came onto the Court. The American Inns of Court is a unique organization. It plays a unique and important role in promoting ethics, civility and professionalism, and that’s what appeals to me. In 2000, I started attending meetings of the Giles Rich Inn, which meets here at the Federal Circuit every month. I’m lucky enough to fill the seat once occupied by Judge Rich. We’re sitting here in my chambers, which once were Judge Rich’s chambers. And when I first came on to the Court I felt a special responsibility to conduct myself in a way that would have made him proud, because he was always an icon in my eyes.
On Tuesday, September 4, 2012, Apple scored a big victory at the United States Court of Appeals in their patent infringement dispute with Mirror Worlds, LLC. The Federal Circuit, in an opinion written by Judge Lourie and joined by Judge Newman, upheld the district court’s entry of judgment as a matter of law, which erased a $208.5 million damages award given by the jury. See Mirror Worlds, LLC v. Apple, Inc. (Fed. Cir., Sept. 4, 2012).
Before you start to wonder whether little Mirror Worlds was out lawyered at the CAFC you can rest assured they were MORE than adequately represented. David Boies, one of the most prominent appellate attorneys in the United States, represented Mirror Worlds. Boies was also joined by Don Dunner, who is regarded as the Dean of appellate advocates at the Federal Circuit. Of course, Apple was also capably represented by William Lee of Wilmer Cutler Pickering Hale and Dorr LLP, himself no stranger to high stakes patent litigation and appellate practice before the Federal Circuit.
Before diving into the particulars of the case, it is worth noting that the presence of Boies, who is an accomplished Supreme Court advocate, suggests that there will be an appeal to the United States Supreme Court. Dunner is no stranger to successful appellate practice before the Federal Circuit and he and his team would easily be considered the A-Team. But there is an art associated with presenting a case so that it offers maximal opportunity to achieve one of the coveted spots on the Supreme Court’s calendar, which I suspect is why Boies joined Dunner in representing Mirror Worlds. Thus, stay tuned for the next chapter!
Last week at the 6th Annual Patent Law Institute presented by the Practising Law Institute last week in New York City I found myself a little star struck; or maybe “surprised” is the right way to characterize it. The term “All Star Panel” is thrown around too liberally in the CLE world and relative to programming at various annual meetings. Having said that, the panel titled “Dialogue Between the Bench and Bar” was comprised of some of the biggest names in the industry, and they didn’t seem interested in pulling punches. Nothing seemed sacred, at least in terms of topics, which lead to a lively and entertaining discussion that lasted 90 minutes without a single question from either the live audience or the webcast audience.
The panel that ended the first day of the program was moderated by Don Dunner of Finnegan, Henderson, who is the unofficial “Dean of Federal Circuit Advocates.” I had the pleasure of interviewing Dunner nearly a year ago and always enjoy listening to his thoughts and soaking in his wisdom. To his left was Chief Judge Randall Rader of the United States Court of Appeals for the Federal Circuit, and to Rader’s left was Seth Waxman former Solicitor General of the United States and now of Wilmer Hale. To Dunner’s right was Judge William Young of the United States Federal District Court for the District of Massachusetts, and to Young’s right was John Whealan, currently of George Washington Law School and former USPTO Solicitor.
The discussion was lively, perhaps even explosive. You could nearly see sparks fly when Chief Judge Rader continued to pepper Waxman with question after question about his opinion on the propriety of parties lobbying the White House in order to obtain a favorable amici brief from the Department of Justice. Rader zeroed in on the slippery slope and obviously is not pleased with the mixing of law and politics, saying: “this is a cause for concern… Politics and law have a divide.”
On Friday, March 11, 2011, lawyers representing i4i Limited Partnership filed the Brief for Respondents in the matter of Microsoft Corp. v. i4i Limited Partnership. The fight is at the United States Supreme Court, which will hear oral arguments in the matter on April 18, 2011. At issue is whether a patent in litigation deserves a heightened presumption of validity under the clear and convincing evidence standard or not. Today, in order for a defendant to invalidate a patent claim there must be clear and convincing evidence that the claim should have have been issued by the Patent Office. Microsoft seeks to lower the standard and make it easier to challenge issued patents in court.
More specifically, Microsoft would like to have the standard for invalidating a patent claim lowered to a mere preponderance of the evidence standard. They say that prior art not considered by the Patent Office should not be afforded the same level of deference. I say — why not?
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.
On two different occasions I had the privilege of interviewing the Honorable Paul Michel, the most recent former Chief Judge of the United States Court of Appeals for the Federal Circuit. In the final segment of my second interview with Chief Judge Michel we talked about appellate advocacy in general. The conversation turned to the type of appellate advocate parties should be looking to retain when in front of the Federal Circuit. Near the end of that conversation Chief Judge Michel said: “Don Dunner is a good example of somebody like that. Chemical engineer, lifetime patent lawyer, appellate specialist, wrote a treatise about the Federal Circuit. Covers all the bases. Argues in the court very, very, very frequently, and has for decades. He’s an example of a superstar advocate in my opinion.” With such lofty praise I had to interview Don Dunner.
Don Dunner is a partner with Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, and he has argued over 150 cases before the Federal Circuit. I contacted Don Dunner in mid-January 2011 and our interview took place shortly thereafter. Dunner was enormously candid, although many of the things I would have liked to ask him had to be off the table due to ongoing litigation. In fact, Dunner is involved in three exceptionally important cases: TiVo v. Echostar, Microsoft v. i4i and Uniloc v. Microsoft. Thankfully, Dunner did agree to return to talk to us further once these important cases finally resolve without further opportunity for appeal. We did, however, go in depth discussing eBay v. MercExchange, the dynmic between the Supreme Court and the Federal Circuit, how he approaches appeals generally and specifically blow-by-blow and which Federal Circuit Judges ask the toughest questions.