Who Will it Be? IP Practitioners Name Their Picks for Biden CAFC Appointee Following Judge Wallach’s Retirement

By IPWatchdog
March 18, 2021

https://depositphotos.com/100383942/stock-photo-legal-questions-concept.htmlU.S. Court of Appeals for the Federal Circuit (CAFC) Judge Evan J. Wallach announced earlier this week that he will retire from active service and assume senior status as of May 31, 2021, after 10 years of service with the court. This leaves an opening on the CAFC for President Biden to fill. Given the many important IP issues that have been playing out at the CAFC in recent years—patent eligibility law, Patent Trial and Appeal Board (PTAB) discretionary denials, and the constitutionality of PTAB administrative patent judges, to name a few—the IP community clearly has a big stake in choosing the right candidate.

To that end, IPWatchdog reached out to a panel of IP practitioners and stakeholders for their thoughts on who Biden should have on his short list of nominees, and why? Many named names, while others provided the criteria Biden should consider as he compiles his list of candidates. Here is what they had to say.

Julie Burke, IP Quality Pro LLC 

I hope Janet Gongola, Vice Chief Judge for Engagement at the Patent Trial and Appeal Board, is considered for the opening on the Federal Circuit. As Patent Reform Coordinator, Judge Gongola managed the USPTO’s implementation of the American Invents Act (AIA). In 2014, she was honored with a group Gold Medal from the U.S. Department of Commerce for stellar leadership in successfully implementing the AIA, the most significant and extensive reform of the U.S. patent system in more than six decades.

Through her positions as Senior Advisor to the Under Secretary and Director of the USPTO Associate Commissioner for Patent Examination Policy and Associate Solicitor, Judge Gongola has accumulated tremendous experience and perspective as to all matters of patent law and policy.

Judge Gongola has clerked for the Honorable Paul R. Michel at the Federal Circuit and for the Honorable Sue. L. Robinson at the U.S. District Court for the District of Delaware. Her technical background in chemistry and mathematics and her experiences as a research chemist, patent agent and patent attorney at Eli Lilly and Company, would be a welcome addition to the Federal Circuit. She is a strong champion for U.S. innovators and has an in depth understanding of the patent system. She’s highly respected inside and outside the USPTO.

Sharon Israel

Sharon A. Israel, Shook, Hardy & Bacon L.L.P.

AIPLA’s White Paper on Recommendations Regarding Nominations of Judges to the United States Court of Appeals for the Federal Circuit, Revised and approved, September 2018, is an excellent resource, describing qualifications for potential nominees to the Federal Circuit. The White Paper recommends candidates have “high intellect, legal skills, professional and personal integrity, sound judgment, and extensive experience in relevant fields of law and practice.” It goes on to state that “the Federal Circuit would benefit from the nomination of attorneys steeped in patent law and litigation, preferably a registered patent attorney with at least 15 years of experience in patent practice, having experience with litigation before district courts, the International Trade Commission, the Patent Trial & Appeal Board and/or the Federal Circuit or having served as a leader responsible for the procurement, licensing, and enforcement of patents for a research-based company that relies upon the incentives and protections provided by the United States patent system.” The White Paper details recommended characteristics for candidates and I believe it provides useful guidance, outlining the type experience that would benefit the Court.

Stephen Kunin, Maier & Maier PLLC

I would recommend John Whealan and Nathan Kelley. Both gentlemen have extensive experience in practice before the Federal Circuit. They have excellent reputations, are very bright and have judicial temperaments. Mark Whitaker and Terry Rea are well qualified and would address greater diversity.

Scott McKeownScott McKeown, Ropes & Gray

Given the relationship between President Biden and Senator Chris Coons, I would expect Senator Coons’ opinion to have significant impact on this selection. Keep in mind, aside from being from Delaware alongside President Biden, Senator Coons sponsored the Stronger Patents Act, spearheaded the Section 101 work of the Senate Judiciary Committee with Senator Tillis, and has a very close relationship with the Bio/Pharma lobby. Given the Biden administration’s focus on diversity, I would expect the selection to be a female candidate of color that is closely aligned with the pro-patent mindset of branded pharma.

Judge Paul MichelChief Judge Paul Michel, Chief Judge, US Court of Appeals for the Federal Circuit (Ret.)

The Federal Circuit has become essentially a patent court, with the flood of appeals from the PTAB merging with those from the district courts and the International Trade Commission. Patent-related appeals now make up three-quarters of the docket, triple the portion from prior decades. Meanwhile, patent rulings have become more complex and confusing as well as sometimes inconsistent. Predictability of outcomes has suffered, diminishing incentives for innovation investments. Obviously then, the new judge should be a prominent patent lawyer of extensive experience in litigation, counseling and licensing. Corporate and international experience would be desirable, too. Having clerked at the court is a bonus. But, first and foremost, the nominee must believe in a strong and stable patent system, with patents that investors and inventors can rely upon, so America continues to lead the world in technology.

Given the temper and needs of the times, the replacement should advance diversity and inclusion, coming from an under-represented demographic. An African American judge might be the most preferred because the court has never had one. The pool of such talent is rich and includes Tara Elliott, Ellisen Turner, George Jordan, and James D. Smith. All have decades of litigation experience at top firms. Turner, in addition, now at Kirkland and Ellis, was previously managing partner at Irell & Manella, replacing Andrei Iancu. Smith, in addition to managing offices for Arnold White and Durkee, Brobeck Phleger and Dewey Ballantine, served at international companies Nokia, Baxter, and Eco-lab as well as heading the PTAB. Tara Elliott distinguished herself in major cases as a top litigator, first at WilmerHale and now Latham & Watkins. George Jordan of Norton Rose recently headed the American Bar Association section on IP law.

From other population segments come Kathi Vidal, Laurie Hill, Sonal Mehta and Gregory Castanias. Any one of them might be ideal for a future vacancy.

Brian P. O’Shaughnessy, Dinsmore & Shohl, LLP and Past President, Licensing Executives Society, USA & Canada

The pandemic has taught us there is great value in the innovation and infrastructure of our healthcare industry. Until recently, it took a decade to develop an effective vaccine. In response to COVID-19, our pharmaceutical industry came together to create several in under a year. Innovation and associated infrastructure are critical to personal health and well-being, but equally important to national security and economic vitality.

President Biden should nominate someone who recognizes that properly incentivized innovation is critical to our personal, societal, and economic well-being. His nominee should be someone who respects and defends robust and reliable intellectual property laws, and the predictable application of those laws to everyday matters of commerce. Our intellectual property system fosters collaboration for responding to challenges, both great and small. The caretakers of that system must be mindful of both theory and practical application. Exemplars include former Undersecretaries of Commerce for Intellectual Property David Kappos and Andrei Iancu, 3M’s Kevin Rhodes, Qualcomm’s Laurie Self, Genentech’s Laurie Hill, and Bristol-Myers Squibb’s Henry Hadad. There are a great many worthy candidates, and these are but a very few; but we would be well served with representation from those steeped in the practical application of our intellectual property system, and how it can stimulate innovation and collaboration for the benefit of all.

Gene QuinnGene Quinn, IPWatchdog, Inc.

I am absolutely in favor of inclusion for the purposes of broader perspective, but I am a little concerned that in conversations about appointments to political and judicial positions during the Biden Administration the first criteria cited as being relevant is most frequently gender and skin color. Only as a secondary thought does knowledge and experience seem to factor into the equation. This is not to say that there are not many highly qualified women, minorities, or even minority women, who should be considered (many highly qualified candidates mentioned herein by others). I do, however, think that putting gender and skin color at the top as primary criteria will cheapen the substantial career achievement of any eventual nominee, which is unfortunate. Furthermore, diversity comes in many forms, and too often when focus is placed on the superficial, what winds up happening is a collection of individuals that look different but have strikingly similar backgrounds and experiences; witness the Supreme Court.

I’m not blind to the politics of the moment, and I don’t expect a white male to be appointed regardless of the presence of any diversity considerations that may be present (i.e., socio-economic, religious status or even disability status). Like many others, I suspect the nominee will be a woman, and quite likely a minority. Notwithstanding, rather than echo the many fine names suggested by others, I’ll use my space to expand the list to include names of women I know who would make excellent judges, such as Dr. Kate Gaudry (Partner, Kilpatrick Townsend), Emily Johnson (Senior Litigation Counsel for Amgen), and Meredith Addy (Founder, AddyHart). Each has a unique background and specialized knowledge and experience that would make them excellent choices for a position on the Federal Circuit; not because they are women, but because they are highly qualified.

Bridget Smith, Lowenstein & Weatherwax LLP

The Biden administration has stated a commitment to appointing diverse candidates, and I hope his administration will follow through on that stated commitment by nominating a person of color for this position. Sitting on the “Supreme Court of Patents,” this individual will have a unique opportunity to render decisions impacting innovation, trade, and American competitiveness for years to come. To that end, it would be wonderful to see an experienced patent professional who has worked extensively on both the patent-defending and patent-challenging sides of the “v” and has presented a balanced perspective on patent policy questions, including the crucial issue of patent subject-matter eligibility. Kirkland’s Ellisen Turner and Sterne Kessler’s Eldora Ellison would be great candidates. They are accomplished attorneys at the top of their game.

Sangeeta Shah, Brooks Kushman

As the majority of the Federal Circuit’s docket comprises patent appeals, I hope the Biden administration considers nominating a member of the patent bar to fill the Federal Circuit vacancy. Given the Federal Circuit’s role in handling patent appeals from both the USPTO and district courts, their decisions have substantial impact on the U.S. patent system and, by extension, the country’s ability to promote the “progress of science and useful arts” enshrined in Article 1, Section 8 of the U.S. Constitution. Having a splintered bench on critical issues, such as patent eligibility, has hindered the Federal Circuit’s ability to provide consistency. In view of the critical role of innovation to our economy and global competitiveness, a nominee with a deep understanding of the complex intricacies of the USPTO and patent law is needed to help bridge the current divide and chart a strong path for the future.

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Discuss this

There are currently 14 Comments comments. Join the discussion.

  1. Anon March 18, 2021 5:02 pm

    Ms. Israel, I obtain a “link has moved” for that AIPLA item.

    It may have inadvertently grabbed the “comma” at the end there.

    Other than that, I am heartened that no one floated academics such as Chen or Lemley.

  2. Pro Say March 18, 2021 7:14 pm

    Andrei Iancu, Meredith Addy, or Adam Mossoff.

    And as American innovation insurance . . . no one who the FAANG cabal wants.

  3. Curious March 18, 2021 9:55 pm

    This will be a good test to see who has more influence in the Biden administration … the Silicon Valley elites such as Facebook, Google, and Amazon or a more pro-patent group presumably led by Senator Coons of Delaware.

  4. Herb Wamsley March 19, 2021 8:26 am

    Great IP names, but four of the last six judges appointed to the Federal Circuit did not come from the IP community. Those of us who believe IP background is important have our work cut out for us.

  5. Eileen McDermott March 19, 2021 8:42 am

    That was my fault, Anon – it’s fixed now, thanks.

  6. Josh Malone March 19, 2021 8:59 am

    Rodney Gilstrap.

  7. Anon March 19, 2021 9:11 am

    Thank you. The link now works, and other than sound positions, I was a little disappointed that names were not provided.

  8. ipguy March 19, 2021 6:36 pm

    Judge Lucy Koh, currently a US District Judge in the Northern District of California.

  9. Night Writer March 22, 2021 12:48 pm

    I am betting it will be Chien as she is already a proven anti-patent judicial activists that wants trade secrets strengthened.

    Plus she is a minority woman, which appears to be high on Biden’s qualifications list.

  10. Keep Looking March 22, 2021 1:42 pm

    Given that the last president nominated people to the federal appellate bench who were in their 30s and 40s, I think this president should skew a bit younger too. Not to sound “ageist,” but in my opinion, the cutoff for a circuit court judgeship should be no more than 50-55 years old; 55 for a truly exceptional (and presumably, prolific) candidate.

    With that being said, there are quite a few African-Americans who are in their 40s to very early 50s who should be considered, some with extensive patent experience, and some who have broader IP experience. In addition to Tara Elliott, Ellisen Turner, and George Jordan, who were mentioned in the article above, the following people should be considered: Jeanne M. Gills, Trevor Jefferson, Brent Hawkins, and Mareesa Frederick, to name a few. There are many more.

    Not sure how one gets around the calls for judges without substantial biglaw or corporate experience in a field such as IP law. It is what it is.

    Of course, these more than qualified attorneys would have to actually want to be on the federal bench. I’m not presuming that service as a federal judge rises to to the top of attorneys’ wish lists today, compared to a generation or two ago, given all of the opportunities available in the legal profession and outside of it.

  11. Keep Looking March 22, 2021 2:42 pm

    Let’s try this again, since my first comment was deleted.

    The last president nominated people for the federal courts of appeal who were in their 30s and 40s. Therefore, I think this president will probably skew younger too for COA nominees — probably in the 40s and 50s, but no older than 55 (for truly exceptional and prolific candidates).

    In addition, if the president is trying to find nominees without predominantly biglaw or corporate experience, that’s going to be hard in the IP field. It is what it is.

    Anyway, there are quite a few African-American attorneys who are in their 40s and very early 50s would be more than qualified to be a judge on the Federal Circuit. In addition to Ellisen Turner, Tara Elliott, and George Jordan, mentioned above, the following attorneys would be solid nominees, if they wanted to serve: Jeanne M. Gills, Judge Trevor Jefferson, Mareesa Frederick, and Brent Hawkins. There are even more African-American attorneys with broader patent and trademark experience.

  12. Eileen McDermott March 22, 2021 2:46 pm

    your last comment wasn’t deleted, it just didn’t post automatically. Some comments require manual approval and that doesn’t always happen instantly.

  13. ipguy March 22, 2021 7:27 pm

    “Given that the last president nominated people to the federal appellate bench who were in their 30s and 40s,”

    The last president also nominated a lot of “unqualified”/”underqualfied” people to the federal bench.

    There’s something to be said for the experience that comes with age.

  14. Keep Looking March 23, 2021 9:53 am

    @ipguy: No doubt. There is something to be said for the experience that comes with age. But I think the WH is looking at how long these people could reasonably serve and be at (peak) productivity. Of course, there will be “outliers” who are on the bench (not in senior status) well into their 70s, 80s, and 90s. God bless ‘em. Most judges, however, have 15-20 years of peak productivity. Keeping that in mind, that is why people in their 40s and early 50s are in the “sweet spot,” if you will, from a purely political perspective. Note that some very influential judges (e.g., RBG) were confirmed in their 40s or early 50s. In addition, I suspect that the WH is looking for the people who are known in the IP community, who went to T-14s, were on law review/journal, had a federal clerkship, and some biglaw experience (even though that appears to be frowned upon now). So that winnows the field even more. But you can’t deny that they are probably looking closely at the ages of potential nominees. Why nominate a 55 or 60 year old who may elect to take senior status in 10-15 years when you can nominate a 45 or 50 year old who may elect to take senior status in 15 or 20 or 25 years. It’s a total numbers game. Of course, this presumes that a nominee would actually want to be on the federal bench for a long time. More and more younger judges are leaving the bench after a 5-10 year stint to go work for corporate America or a big firm, or to serve on corporate boards. Being a federal judge is not as attractive as it used to be, particularly with the privacy and security concerns we have today. Need to pay federal judges much more for the gig. That’s another subject though.

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