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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