How About a Patent Attorney for the Federal Circuit?

By Gene Quinn
January 10, 2011

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.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 12 Comments comments.

  1. Ray January 10, 2011 6:51 pm

    Another informative column Gene. Can you elaborate on how this current structure of judges or possible changes within the next month can affect the Tivo case set before this Court?
    Thanks

  2. Gene Quinn January 10, 2011 7:07 pm

    Ray-

    Thanks for the compliment.

    First, even if DuMont is confirmed he wouldn’t participate in the TiVo case because he represented TiVo. It is unrealistic to think that Reyna would get confirmed in time, or DuMont for that matter.

    There is still a shroud of mystery around whether Judge Mayer will participate. He could still participate in the ruling even though he wasn’t at the oral argument. As a senior status judge he can participate only because he was on the original panel. Other senior status judges do not participate in en banc hearings.

    I’m not sure whether O’Malley will participate, although I suppose that is possible. If she does I would have to say that it would benefit TiVo. I personally think the district court did exactly the right thing here. Rather than using contempt powers a summary proceeding that lasted about 9 months was undertaken. At no point during the case did the district court think there was a need for a full trial. So the district court didn’t have a full trial, but they didn’t use real contempt powers either. I would think that a district court judge would have a lot of sympathy for what the judge did here and lean toward TiVo. But how to find out if she will participate in the ruling? The CAFC keeps a tight lip, as do all courts.

    -Gene

  3. ben January 10, 2011 7:10 pm

    Um, just because Judge Moore didn’t ever register with the PTO doesn’t mean she wasn’t a patent attorney… she has a BS and MS in Electrical Engineering from MIT, worked as a patent litigator for K&E for several years, clerked for the Fed. Cir., taught patent law for 9 or 10 years, and wrote a book on patent litigation and several highly regarded papers re patent law.

    I’m guessing this is an oversight, or maybe patent litigators (who may or may not find it necessary or beneficial to take the patent bar. . . another point) are not “patent lawyers” in your book. By the same logic Mark Lemley and Doug Lichtman are not patent lawyers and would not be good candidates for the Fed. Cir. lol. I’m sure there are others.

    Ben

  4. Gene Quinn January 10, 2011 9:28 pm

    Ben-

    Obviously you didn’t read the article, or you didn’t understand the article.

    Unlike some patent attorneys, I would support Lemley for the CAFC. I would also support Lichtman as well. I know them both and have a lot if respect for them. Having said that, there is a definite and certain definition of “patent attorney.” The you ask whether a patent litigator would suffice demonstrates you are not famiar with the industry or practice of law. Only those who have passed the patent bar are legally and ethically allowed to call themselves patent attorneys. And— yes— I did mean to exclude Judge Moore because she is not a patent attorney and as such she has never prosecuted patent applications at the USPTO. So even if the greatest litigators and educators were to be on the CAFC there should be patent attorneys on the court who understand the unique issues associated with drafting and prosecuting patent applications.

    So LOL all you want, but I said what I mean and my position is extremely reasonable. Perhaps you should better acquaint yourself with the peculiarities of prosecution and why having patent attorneys on the CAFC is crucial.

    -Gene

  5. Jimbo Jones January 10, 2011 10:01 pm

    Judge Gajarsa was an examiner, so add him to your list. Also, just to push back on your thesis a little, what about the idea that litigation drives the law. The whole point of prosecution is to acquire property rights. The value of those property rights is ultimately determined by what you can do with them in court. The substance and procedure of that determination is what the judges really need to know about. It is ultimately predictability and sensible results in litigation that make the right worth having and promote progress. Even though very few patents are litigated, it is the threat of litigation and the ultimate outcomes possible in litigation that drive licensing practice and portfolio strategy. Hence, patent litigators (like Judge Moore and Judge Linn (whose career was mainly litigation), and district court judges like Judge O’Malley) are the most valuable.

    Not saying knowledge of prosecution isn’t helpful, but in the great majority of patent appeals to the Federal Circuit, prosecution practice isn’t particularly important. And really, is it so hard to understand? (If I may preempt an ad hominem attack, my practice includes prosecution).

  6. Gene Quinn January 10, 2011 10:43 pm

    Jimbo-

    I don’t mind push back, but let me throw this at you. The fact that litigation drives the ship makes it all the more critical to have more of a perspective of how the rules will play out at the USPTO. In many cases, particularly with inequitable conduct, the CAFC judges seem to not understand how practitioners will hide the ball or dump references. So the lack if understanding of the prosecution process leads some of the judges to make rather ridiculous rulings. They have an awful high opinion about what an examiner can accomplish in 15 hours they are allotted to examine.

    I guess the point I would make is that without the right there is no litigation. Without the right investment stalls. Many CAFC decisions make prosecution more difficult, impose unrealistic burdens on examiners and applicants and demonstrate a need for judges with a solid sense of the entire process. Litigation affects few, prosecution affects all.

    -Gene

  7. Chris January 11, 2011 8:02 am

    Given that many litigators will tell you that any good litigator could litigate a patent case (we’ll leave aside whether that statement is hubris or naivete), I think the patent litigator is as good as patent prosecutor for the CAFC argument is pretty weak. You could imagine that most people who are considered for a position on the CAFC would have a litigation background somehow. Litigators will be well represented by default.

    The point is that this was conceived as a specialist court. If the judges aren’t themselves specialists in that field, what’s the point? And should we be surprised with some of the decisions that come down as a result?

  8. Ben January 11, 2011 9:52 am

    Take any “reasonable position” you want. I have a feeling i’m not the only one lol’ing though.

    🙂

    ben

  9. Gene Quinn January 11, 2011 10:43 am

    Ben-

    I’m sure you are the only one laughing.

    You seem to be a big fan of Judge Moore. I think she is turning out nice, although I suspect she will be on the wrong side of the TiVo decision if her grilling of TiVo’s attorney is any indication. Whatever may become of that case, would you care to try and defend her original position in the Egyptian Goddess case that the point of novelty needs to be non-obvious? I doubt you will because that position was quite ridiculous, roundly criticized and ultimately revoked by the entire CAFC. Confusing novelty and non-obviousness is a terrible amateur mistake, and thankfully one that we don’t have to live with thanks to the en banc decision.

    -Gene

  10. James Abrahams January 11, 2011 3:46 pm

    In England we are particularly proud of our Patents Judges, who hear patent trials (without juries). They are ex-barristers (trial attorneys) with many years experience trying patent cases. But I have never heard it suggested that we should have judges who have experience drafting patents or prosecuting them in then Patent Office. I’m not saying that you are wrong; it’s just not an argument that would be made in England. B

  11. skyywise January 14, 2011 11:19 am

    It would be fair to point out that with the increase of cases coming out of the ITC (largely as a result of eBay), the nomination of Jimmie Reyna, given his background, is a wise decision to make sure the CAFC understands the practical effects of decisions affecting the ITC.

  12. Jochen Wiedmann January 17, 2011 3:21 pm

    A patent attorney is a representative of an interest group: Those who live from the patent system. IMO not exactly a qualification for a job that requires oversight and independency.