Bits and Bytes No. 123: Judge Schall

IPO Reports that Judge Alvin Schall intends to take Senior Status in October 2009 — opening a vacancy on the Federal Circuit to be filled by the Obama Administration. Three patent law professors have played important roles in the Obama campaign and transition: Mark Lemley (Stanford); Arti Rai (Duke); and Beth Noveck (NYLS; now Whitehouse). At least some patent litigators will push for Obama to nominate an experienced district court judge.

Judge Schall was appointed by the first President Bush in 1992. He spent many years as a prosecutor and DOJ trial attorney after graduating from Princeton (go Tigers) and Tulane Law.

44 thoughts on “Bits and Bytes No. 123: Judge Schall

  1. 44

    With the comment rate by now trickling to zero, let the record indeed show that the preponderance of comments here favored experience over academic credentials.

    If it were up to me, I’d probably nominate someone like Bernard Chao ( link to ). His apparent Asian background is a freebee –– it’s nice that we have a woman, but we should recognize that most patent applications apparently either come from Asia or from Asian applicants. (If memory serves, for at least the past decade most of the companies in the top 10 rank are Asian.)

  2. 43

    If you believe that patent- and tech-trained judges improve the Court’s decision-making in patent cases (and the beauty of this country is that you are free to believe anything you want notwithstanding overwhelming evidence to the contrary), you should consider us all fortunate in view of the Court’s jurisdictional distribution and the political process that leads to nomination: we currently have five such active judges in Newman, Lourie, Linn, Moore and Gajarsa (whom many forget to count even though he was a patent examiner), the highest count in the Court’s history. Judges O’Malley and Saris would be outstanding additions to the Court because they know how patent cases should be tried and where they go off the rails. As to Apple’s Lutton, I believe his nickname is “Chip” rather than “Dick,” regardless of how you feel about him.

  3. 42

    I have the utmost respect for academic law professors, but a practitioner, preferably a litigator would be better. If you litigate, you know the law, or you fail utterly. It is a hard school, but moulds good people.

  4. 41

    TBL, by all means voice your concerns about a nominee. My teasing was over how your post could be read as a suggestion that if you had spoken up about Judge Moore, it might have affected the outcome of her confirmation proceedings.

  5. 40

    “I’ll show them what one screwball can do!” – Marge Simpson

    Dhuey, you’re right, my lone voice wouldn’t have made a difference. Not sure that means I should have stayed silent – by that logic, we should all stay home on voting day because one vote can’t possibly matter. Try telling that one to Al Gore. Anyway, if a bunch of patent attorneys had chimed in and complained, it might have made a difference. Probably not, but last time I checked the US of A was still ostensibly a representative democracy, and sometimes the system works. (And even if I was the only one to complain, it still would have made me feel good to tell my Senator why I thought she made a lousy appointment.)

    So yeah, whoever Obama picks will probably sail through, even if we voice opposition (does anybody but us patent attorneys even pay attention to the CAFC?), but if he makes a bad choice and we all sit by silently it will *definitely* sail through.

  6. 39

    I vote for a patent prosecutor (if I got a vote). S/he can be a litigator also, but prosecution experience is most important.

  7. 38

    So, let’s see, we have “BigGuy” directly responding to a post directed directly to “Mooney.”

    Doesn’t take a rocket scientist.

  8. 37

    “There’s an experienced Judge for you Malcolm.”

    Indeed. As an added bonus, he sat “by designation” in at least one case at the CAFC.

    As an extra super-duper bonus, if Judge Ward is elevated then his son Johnny will be able to take his cases to any court room in the Eastern District. Or, dare I say it, Johnny can simply take Judge Ward’s seat…

  9. 36

    Whoever it is, I think we should get Al Franken to preside over the hearings, because, with the richness of his experience at SNL, he could decide if whoever it was would be a really good judge or not.

  10. 35

    I don’t know of any academic or any judge at the federal level with the necessary experience.


    The Honorable T. John Ward
    100 East Houston Street
    Marshall, Texas 75670

    There’s an experienced Judge for you Malcolm. The Eastern District of Texas has seen more patent cases than just about any court I know of in the past several years.

    I hope the O-bomb reads these comments with his morning coffee.

  11. 34

    Either Lemley or Rai would be disastrous. If Judge Sleet were appointed, just think what fun we could have with a name like that.

  12. 32

    As it happens, all’s fair, I read it earlier this morning. It looks interesting enough that I’m going to listen to the oral argument.

  13. 31

    In 1982 the original draft of the bill creating the CAFC (written by experienced patent attorneys to stop the invalidation of 80-90% of patents by district and circuit judges lacking any scientific training) was adopted by Congress verbatim, but with just one “tiny” change.

    Eliminated by the General Bar in the dark of night was the provision that required all judges who were to hear PATENT cases be skilled, experienced patent lawyers. You know, registered patent Attorneys who actually had gone through the entire process, from writing and prosecuting applications to litigating patent cases. NOT “IP” lawyers.

    That enabled jerks like Sen. Specter to appoint political favorites including English majors. The absurdity of having scientifically illiterate and wholly inexperienced general lawyers is reflected in the resulting chaotic mess of CAFC case law.

    BTW, academics don’t qualify if they haven’t passed the PTO exam AND practiced for at least 5-7 years. For those who think otherwise, just have your next brain surgery performed by a dentist.

  14. 28

    As anyone who owns an iPhone or an iPod can tell you, Apple does a bit more than software…

    but I suppose a common patent blog troll wanker, with bitterly disappointed aspirations to be relevant (I’m thinkin Mooney here) wouldn’t really understand that.

  15. 27

    Local legal rag noted that the Apple IP director Dick Lutton is interested and has apparently been attempting to donate his way to an appointment. I’d much rather have an experienced judge on the CAFC than a wanker for software patenting.

  16. 24

    OMG, please not Lemley, Rai, or Novek…

    Let’s just appoint a wise homeless guy from the subway who, with the richness of his experience, could more often than not reach a better decision. Or a wise homeless woman.

  17. 23

    Happy I provided enjoyment, Noise. Laughter can be healing.

    I just posted to Patent Docs, on the Bayer case. Maybe to that thread you would like to add something substantive.

  18. 21

    Too much to ask for, I’m sure, but is it not possible to find somebody competent who had a career not just trying patent cases but also litigating patents.

    Validity in England is a preponderance issue, with the facts decided by the judge. Thus, the litigators (barristers) are just as often busy serving a corporate plaintiff who wants the patent busted as a corporate client that wants the patent held valid and infringed. Patents that get litigated are never written perfectly; they soon grasp that. They see how subtle the skill of claim construction is, and how crucial it is, to balance “fair” scope of protection for the inventor with “reasonable” legal certainty for the public (European Patent Convention, Protocol on the Interpretation of Art 69).

    The ranks of these English barristers provide the supply of new patents judges. From the get go, these new judges see through all the tricks that litigants play. It’s 12 to 15 months to trial, then a judgement that is seldom appealed, because there would be no point, because the judge got the law right (and the loser pays).

    Is that not the way to go?

  19. 20

    Please please please not another academic with no real world judicial experience.

    Judge Sleet would be a great choice, as would Patti Saris from D. Mass. or Kathleen O’Malley from ND Ohio – both have heard a number of patent cases and, from the talks I have heard given by both, have a real appreciation for the nuances of patent law.

  20. 19

    “Now we’ll never know how many of the yeas you could have made nays.”

    Nicely done, Dhuey.

  21. 18

    Chief Judge Sleet from Delaware is the logical choice: a district court judge and former trial lawyer, who brings extensive patent and other experience to the bench, as well as diversity. Plus, he lives relatively close to DC….

  22. 17

    Yes, TBL, you should forever regret your silence. Those 92 senators who voted to confirm her (zero opposed) wrongly interpreted your silence as tacit acceptance. Now we’ll never know how many of the yeas you could have made nays.

  23. 16

    I’ll forever regret not opening my mouth to oppose the nomination of Kimberly Moore. I won’t make the same mistake this time if the nominee isn’t to my liking.

  24. 15

    “I wouldn’t assume Prof. Lemley is even interested in the job. He’s got a pretty enviable situation over at Stanford.”

    Chillaxin with the hot stanford law students?

    Arti knows sup.

  25. 14

    Actually, Prof. Rai would be an excellent choice: she has an excellent grasp of the sciences having studied for 1-2 years at Harvard Medical School before going to Harvard Law school, she has an excellent grasp of patent law, and, in addition to her extensive writings on patent law, has written several papers on administrative law.

    As an aside, she was my professor while I was in law school and found her to be very thoughtful and open minded.

  26. 13

    I wouldn’t assume Prof. Lemley is even interested in the job. He’s got a pretty enviable situation over at Stanford.

  27. 12

    Lemley (“practitioners are just ‘gaming’ the system when they file RCE’s”) is probably not a popular choice either.

  28. 11

    Anon, that 55% administrative law figure is a bit misleading. Most of those are relatively simple cases involving civil servants.

    I do pro bono work in that area (veterans’ appeals), and I strongly agree that it is a very important part of the court’s appellate jurisdiction. Still, it’s something that a patent specialist can learn fairly easily. I don’t think the reverse is true for someone unfamiliar with patent law.

    I vote for someone with substantial patent experience, whether on the district court bench, academia or private practice. Please feel free to call me, Mr. President, should you have any further questions about this.

  29. 10

    While IP is less than a third in the NUMBER of cases handled by the court, IP takes up by far the vast majority of work by the court. Moreover, judges with actual patent and/or technical experience are very few on the court: look at their bios. This, of course, doesnt prevent them from being good judges, but there are decisions where the split tends to follow who has actual technical experience vs those who do not.

    I hope Obama nominates someone with actual patent experience, just like he nominated Kappos to the PTO, or Sotomayor to the SCOTUS.

  30. 9

    At the Symposium earlier this year, Chief Judge Michel seemed to favor a tech company general counsel while Judge Rader (to be Chief Judge next year) strongly favored a district judge. We’ll probably never know what is going on behind the scenes right now, and that’s a shame, since it’s probably quite interesting.

  31. 7

    Let’s hope we get someone with actual experience in patent law and not just a political appointee.

    Then again, according to the Federal Circuit’s website:

    “The court’s jurisdiction consists of administrative law cases (55%), intellectual property cases (31%), and cases involving money damages against the United States government (11%).”

    So it might actually be desirable for the replacement to have experience in one of these other areas of the Court’s jurisdiction.

  32. 6

    “Judge Duffy sounds good.”

    While Professor Duffy may be a “thought leader” (or whatever term the academics are calling themselves these days) in IP and patent law, I doubt he wears the correct political stripes to get nominated by this administration: Federalist Society member, hapless Scalia clerk, and generally Conservative. I hope I’m wrong, because I like Professor Duffy’s intellectual prowess and policies, notwithstanding his role in KSR. Maybe since the Fed. Cir. isn’t a very political court and Obama is “post-partisan” he stands a chance?

  33. 2

    Maybe an experienced patent litigator with a patent prosecution background and a EE degree would be best.

  34. 1

    Depending on who gets nominated, this could get just like a Supreme Court nomination with the anti-business method/software lobby vs. the pro.

Comments are closed.