Posts Tagged: "don dunner"

Written by Don Dunner: ”Fifty-four years ago, a lawyer in the prime of his career was appointed by President Eisenhower to serve as a judge on the Court of Customs and Patent Appeals (CCPA). Within weeks if not days of that appointment, then Chief Judge of the CCPA, Noble Johnson, chose as his sixth and last law clerk a second year law student. Giles Sutherland Rich was the new judge; I was the new law clerk. Little did I realize at the time that the new judge on the block was about to embark on a judicial odyssey that would extend just short of the 21st century and that would propel him into the rarified atmosphere occupied only by true giants of the profession.”

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 we pick up with the discussion of the Inns of Court and further discuss civility and “Rambo style of lawyering,” which Judge Linn explains was really the genesis behind the forming of the Inns of Court.

Mirror Worlds also alleged that Apple induced its customers to infringe claim 13. The infringement theory in play here is called inducement and is found in 35 U.S.C. § 271(b): a party who “actively induces infringement of a patent shall be liable as an infringer.” Inducement, however, requires that there be a showing of an underlying act of direct infringement. This does not require that Apple themselves engaged in direct infringement, otherwise direct infringement and inducement would be one and the same theory, which they are not. Nevertheless, in order for there to be inducement each and every step of the claim in question must be performed.

The discussion was lively, perhaps even explosive. You could nearly see sparks fly when Chief Judge Rader continued to pepper Seth 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.” It is indeed troubling that the White House under both President Bush and President Obama have allowed lobbying by parties who seek a favorable DOJ amici brief. Interpretations of the law shouldn’t be for sale, or appear to be for sale to the largest donors.

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? Truthfully the standard for invalidating patent claims in court should be the same as it is when a patent is denied. The standard shouldn’t even be as low as “clear and convincing,” rather it should be “abuse of discretion.”

In this second installment of my interview with Don Dunner, the dean of CAFC appellate advocates, 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.

Don Dunner is a partner with Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, and he has argued over 150 cases before the Federal Circuit. 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.