The Federal Circuit has a rule that currently provides:
No employee of the court may engage in the practice of law. No former employee of the court may participate or assist, by representation, consultation, or otherwise, in any case that was pending in the court during the period of employment. For purposes of this rule, a person serving at the court as an intern, whether in a judge’s chambers or otherwise, is considered an employee of the court, whether such service is for pay, for law school credit, or voluntary.
The Court proposes to add this language:
Cases involving related subject matter: In addition to not participating in any case that was pending in the court during the period of employment, a former employee should also avoid participation in a case that includes any patent that was at issue in a case that was pending during the period of employment if the former employee participated personally and substantially in the pending case. See Canon 3(d) of the Code of Conduct for Judicial Employees (prohibiting disclosure of “any confidential information received in the course of official duties” and noting that a “former judicial employee should observe the same restrictions on disclosure of confidential information that apply to a current judicial employee, except as modified by the appointing authority.”).
(A link to the proposed change is here.) At the outset, if this means what it says, then, for example, if a clerk at the Court today works personally on a case involving the ‘123 patent, against which a party asserts 30 prior art references in one manner or another, that clerk is precluded from being involved in 31 cases. That’s nuts.
Assuming (hopefully) that what they mean is personally and substantially involved in a case where the validity, infringement, or enforceability of a patent was in issue, that’s perhaps okay, I guess, given IPR, but I’m not sure I fully appreciate the ramifications. Thoughts? (Also, does “should avoid participation in” mean it’s not mandatory?)
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I agree.
I assume that this rule will be prospective only, but I know former clerks are writing a letter to the Court about our concerns. If you are one, email me off list and I’ll put you in touch.
I agree that’s what it should say; but clerks avoid coming close to Rule 50, and so making it unclear is not good for anyone.
At the outset, if this means what it says, then, for example, if a clerk at the Court today works personally on a case involving the ‘123 patent, against which a party asserts 30 prior art references in one manner or another, that clerk is precluded from being involved in 31 cases. That’s nuts.
That follows only if you assume that those 30 prior art references are each subsequently in a “case.” That’s an extremely unlikely scenario.
In any case, I don’t think that’s how the proposed change should be read. I don’t think it’s reasonable to say that a case “includes” a prior art reference, or to say that a prior art reference is “a patent at issue” in the case. What is meant here is that you can’t be involved in any of the other 59 lawsuits that the patentee files with the same patent. That seems to me to be a reasonable bar.
So a troll sues a company on 8 patents. One patent, the ‘789 patent, goes up on appeal. The rest were dropped during the district court litigation. Your judge isn’t on the panel hearing the appeal, but let’s say you review the petition for rehearing en banc for your judge. The petition is denied and life goes on. Now, four years after you left the court, a different troll (that has acquired the portfolio of 8 patents), sues your client on one of the patents that didn’t make it up on appeal, the ‘123 patent. The ‘123 patent is not related to the ‘789 patent. Different inventors, subject matter etc. But the ‘123 patent was originally asserted in the case for which you reviewed the petition for rehearing en banc. So under that hypo, was the ‘123 patent “at issue” since it was originally in the district court case but didn’t make it into the substance of the appeal? What if the joint appendix had one page of infringement contentions relating to the ‘123 patent tucked in with 15,000 other pages? Does that make the ‘123 patent “at issue” in the appeal?
And as a practical matter, how would a former employee, e.g., law clerk, have any practical way of finding out whether they had been involved in a case at the CAFC where some particular patent may have been at issue at some point? What about clerks who worked at the court 5 or 10 years ago?
This rule, while certainly well-intended, appears to have some very serious (and I believe unintended) consequences.
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