State of Innovation

Patents and Innovation Economics

Makeup of the CAFC

I have been wondering about the number judges on the Court of Appeal for the Federal Circuit who were practicing patent attorneys.  I was surprised that I could not easily find this information.  Here is what I found (I believe this information is accurate, but if I am mistaken please let me know).  According the CAFC’s website there are 15 judges and five of them are patent attorneys.  Six of the judges have technical backgrounds.  I think this is pitiful.  The CAFC has jurisdiction over most patent appeals.  According to the CAFC website 39% of its cases relate to intellectual property – 36% of which are patent cases.  It might be argued that since only 36% of their cases are related to patents, then it makes sense that only 36% of the judges should be patent attorneys.  I would argue this is incorrect.  First of all, we have plenty of federal judges without technical backgrounds.  It is not necessary to populate the CAFC with judges that do not have technical backgrounds to provide balance to the makeup of our federal judges.  In fact, the exact opposite is true.  Second, it is easy for a judge with a technical background to pick up and new area of law, but it is almost impossible for a judge without a technical background to understand the technical concepts associated with genetic engineering, XML, spread spectrum, organic chemistry or numerous other areas of technology.  We perpetuate a myth that the facts are decided at the trial level, so the judges at the appeal level do not have to understand the underlying technology to reach a correct decision.  However the judges on the Supreme Court prove over and over again that their ignorance of basic technology and science results is bad decisions.  See Bilski: The Good, the Bad, and the Ugly and KSR: Supreme Ignorance by Supreme Court .  As a result, I believe that we need significantly more patent attorneys as judges on the CAFC.

Judge Patent Attorney Technical Background
Rader No No
Friedman No No
Newman Yes Yes – Ph.D
Archer No No
Mayer No No
Plager No No
Lorie Yes Yes – Ph.D
Clevenger No No
Schall No No
Bryson No No
Gayarasa Yes Yes – BSEE Patent Examiner
Linn Yes Yes – BEE
Dyk No No
Prost No Yes – BS
Moore Yes Yes – MSEE
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August 17, 2010 - Posted by | Patents | ,

15 Comments »

  1. Thanks.

    I’ve often wondered how that score card fills out but was too lazy to search out the answers myself.

    With that said, there is 4th column missing from your table: Actually worked as an engineer or scientist.

    And a 5th column missing from your table: Actually invented something and got a patent for it (and then successfully sold the product).

    It is one thing to study “the theory” of science in school and it is a whole other bag to have had to do a one-on-one dance with Mother Nature and build something that really works.

    It is one thing to sit on the attorney’s or judge’s side of the table and dictate “the theory” of patent law to some poor hapless inventor. It is a whole other bag to have had to do a one-on-one dance with the PTO and get a patent in something you yourself invented.

    I suspect that only Newman actually worked as a scientist. The rest seem to be blowing theory out of their whale holes.

    Comment by step back | August 18, 2010 | Reply

    • Those would be interesting columns – maybe in the future

      You comment about theory is interesting. I meet an attorney who spent his career as DA and he complained that the Justices on the Supreme Court are not real attorneys – most of them never worked as a practicing attorney. They all were Judges, government bureaucrats, and/or academics.

      Comment by dbhalling | August 18, 2010 | Reply

      • I not long ago spoke with a USPTO examiner who complained that most attorneys dealt with by that examiner have no understanding of the underlying technology and they just push unintelligible buzz words into the examiner’s face day in and day out. That’s BAU for that examiner. The examiner expressed surprise (a happy kind) that as an attorney, I was demonstrating actual understanding of what lies under the hood and how it all works. Needless to say, we quickly reached agreement on a minor issue that was standing in the way of allowance.

        When you are a BS artist, people skilled in the art immediately know it. It is only the BS artist who is fooling him/herself into believing others are buying the BS. They’re not. They can smell it from miles away.

        Comment by step back | August 18, 2010

  2. p.s.
    from http://www.cafc.uscourts.gov/index.php?option=com_content&view=article&id=126:pauline-newman-circuit-judge&catid=1:judges&Itemid=24

    PAULINE NEWMAN, Circuit Judge: … She served as patent attorney and house counsel of FMC Corp. from 1954 to 1969 and as research scientist, American Cyanamid Co. from 1951 to 1954. Judge Newman received a B.A. from Vassar College in 1947, an M.A. from Columbia University in 1948, a Ph.D. from Yale University in 1952 and an LL.B. from New York University School of Law in 1958.

    Comment by step back | August 18, 2010 | Reply

  3. p.s.
    KIMBERLY A. MOORE, Circuit Judge: … was an Associate at Kirkland & Ellis from 1994 to 1995. From 1988 to 1992, Judge Moore was employed in electrical engineering with the Naval Surface Warfare Center. Judge Moore received her B.S.E.E. in 1990, M.S. in 1991, both from the Massachusetts Institute of Technology, and her J.D. (cum laude) from the Georgetown University Law Center in 1994.

    Comment by step back | August 18, 2010 | Reply

  4. p.s.
    RICHARD LINN, Circuit Judge: … was a Partner and Practice Group Leader at the Washington, DC law firm of Foley and Lardner from 1997 to 1999. He was a Partner and head of the intellectual property department at Marks and Murase, L.L.P. from 1977 to 1997. Judge Linn served as Patent Advisor, United States Naval Air Systems Command from 1971 to 1972, was a Patent Agent at the United States Naval Research Laboratory from 1968 to 1969, and served as a Patent Examiner at the United States Patent Office from 1965 to 1968 … He received a B.E.E. from Rensselaer Polytechnic Institute in 1965, and a J.D. from Georgetown University Law Center in 1969.

    Comment by step back | August 18, 2010 | Reply

  5. p.s.
    ARTHUR J. GAJARSA, Circuit Judge: … was a partner in the Washington, DC law firm of Joseph, Gajarsa, McDermott and Reiner, P.C. from 1987 to 1997. Since 2003, Judge Gajarsa has been an Adjunct Professor at the Georgetown University Law Center. From 1980 to 1987, he was a Partner in the law firm of Wender, Murase and White. From 1978 to 1980 he was a Partner in the law firm of Gajarsa, Liss, and Conroy and from 1971 to 1972 … received a B.S.E.E. from Rensselaer Polytechnic Institute in 1962, an M.A. from Catholic University of America in 1968, and a J.D. from Georgetown University Law Center in 1967.

    Comment by step back | August 18, 2010 | Reply

  6. Stepback, Thanks for all your work.

    Comment by dbhalling | August 18, 2010 | Reply

  7. Interestingly, two of the 3 CAFC judges in today’s Oil Well Blow Out Prevention (BOP) case are in your Yes columns:

    TRANSOCEAN OFFSHORE DEEPWATER DRILLING, INC., Plaintiff-Appellant, v. MAERSK CONTRACTORS USA, INC., Defendant-Appellee.

    Before, GAJARSA, Mayer, and MOORE, Circuit Judges.

    http://www.cafc.uscourts.gov/images/stories/opinions-orders/09-1556.pdf

    Held: Obviousness cannot be found on the basis of “theoretical” (prima facie) summary judgment when there are real-world secondary indicia present.

    Comment by dbhalling | August 18, 2010 | Reply

  8. Today’s list of CAFC judges:
    “RADER,* Chief Judge, ARCHER and PROST, Circuit Judges”

    are all, never-been-a-patent-attorney ones on your chart.

    And of course, they summarily find everything “obvious”:

    GEO M. MARTIN COMPANY v. ALLIANCE MACHINE SYSTEMS INTERNATIONAL, Decided: August 20, 2010

    “Following a trial for patent infringement that resulted in a hung jury, the … District Court ruled as a matter of law that … the “’566 patent” would have been obvious … Because the record supports the trial court’s judgment, this court affirms.”

    “Balancing all of the secondary considerations, this court agrees with the district court that, in light of the strong evidence of obviousness based on the Pallmac and Visy prior art coupled with the near-simultaneous invention of the Tecasa machine, the Trust’s objective evidence of non-obviousness, even if fully credited by a jury, would fail to make a difference in this case.”

    link:
    http://www.cafc.uscourts.gov/images/stories/opinions-orders/09-1132.pdf

    Comment by step back | August 20, 2010 | Reply

    • It is amazing how smart those political science majors are about technology. Its strange that they were unable to pass engineering physics in college.

      Comment by dbhalling | August 20, 2010 | Reply

      • Ha ha. LOL.

        They were so smart they didn’t even bother registering for Physics 101.

        _____________________
        p.s. That’s the way they did it at my college; to separate the men from the boys in the engineering department. They forced all incoming engineer-wanna be’s to take physics. It was boot camp for the few and the able. At least a good 50% washed out. Maybe some of them switched to poli-sci. Maybe some of those became the perspicacious judges who sit on our courts and decide between the life and death of each patent. Who knows? It’s hard to keep track of such things.

        Comment by step back | August 20, 2010

  9. Newman dissents v. Prost and Dyk:

    “This court [majority] now finds its own facts, applies theories that were not raised by any party, uses incorrect standards of review, and creates its own electrical technology contrary to the uniform and unchallenged expert testimony.”

    GENERAL PROTECHT GROUP, INC., v. ITC
    http://www.cafc.uscourts.gov/images/stories/opinions-orders/09-1378-1387-1434.pdf

    Comment by step back | August 27, 2010 | Reply

  10. Thanks for cheering me up.

    Comment by dbhalling | August 27, 2010 | Reply

  11. […] for the Federal Circuit.  Neither of them are patent attorneys.  As I pointed out in my post Makeup of the CAFC, the number of patent attorneys on the court has been shrinking since its creation.  Neither […]

    Pingback by CAFC Appointments « State of Innovation | January 11, 2011 | Reply


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