Congratulations Judge O’Malley

by Dennis Crouch

In my mind, Judge O’Malley is still a newcomer to the Court of Appeals for the Federal Circuit, but the official records show that she joined back in 2010 as President Obama’s first nominee.  Prior to joining the Federal Circuit, Judge O’Malley had already been a Federal Judge (N.D. Ohio) for 16 years.  Her experience as a trial court judge has added significant depth and nuance to the appellate court over the past decade and in here 200+ opinions and orders.  Above all, she is  respected across the bar as a tough but impartial jurist.

I’m writing about Judge O’Malley because she has announced her plans to retire on March 11, 2022. These future-retirement announcements are designed to provide President Biden time to name a successor.  Barring other changes, this will be Biden’s second nominee following Judge Cunningham’s recent Senate confirmation.

Congratulations to Judge O’Malley on an amazing career!

32 thoughts on “Congratulations Judge O’Malley

  1. 6

    Pres. Obama appointed Leonard Stark (CJ of D. Del.) to the trial bench at about the same time that he appointed Judge O’Malley to the appellate bench. Stark has sat by designation on CAFC panels from time to time, and his work was very good. He would be a worthy pick for an open CAFC slot, and an especially fitting replacement for O’Malley, given his trial court background. He also hales from Pres. Biden’s own alma mater.

    1. 6.1

      “. . . and his work was very good.”

      But not infallible at the district court level:

      “Because it is unclear whether the district court applied the proper legal standard, we vacate and remand for an analysis under the proper legal standard.”
      INTELLECTUAL VENTURES I LLC v. TREND MICRO, 944 F.3d 1380 (Fed. Cir. 2019).

      “On appellate review, we reverse the grant of JMOL and reinstate the jury verdicts, for the verdicts are supported by substantial evidence. We remand to the district court for appropriate further proceedings.”
      GLAXOSMITHKLINE LLC v. TEVA PHARMACEUTICALS USA, 976 F.3d 1347 (Fed. Cir. 2020).

      “For the reasons discussed below, we affirm the district court’s judgment as to infringement of the Chang Patents and reverse the district court’s judgment as to infringement of the Ashley II Patents.”
      GALDERMA LABS., LP v. AMNEAL PHARMS. LLC, No. 2019-1021 (Fed. Cir. Mar. 25, 2020).

      “For the foregoing reasons, we affirm the district court’s grant of judgment as a matter of law that the ‘597 patent is invalid for lack of enablement. We reverse the district court’s denial of judgment as a matter of law for failure to meet the written description requirement and hold that the ‘597 patent is invalid for lack of written description as well.”
      Idenix Pharmaceuticals LLC v. Gilead Sciences Inc., 941 F.3d 1149 (Fed. Cir. 2019).

      “For the reasons discussed below, we reverse the grant of summary judgment in part, based on an error in the district court’s claim construction.”
      UNITED ACCESS TECHNOLOGIES, LLC v. AT&T CORP., No. 2017-2614 (Fed. Cir. Jan. 24, 2019).

      “The district court held that the asserted claims are directed to abstract ideas and fail to provide an inventive concept. We conclude that, with the exception of claim 1 of the ‘551 patent, the asserted claims of the ‘259, ‘545, and ‘551 patents (“Tab Patents”) are directed to patent-eligible subject matter. These claims are not abstract, but rather are directed to a specific improved method for navigating through complex three-dimensional electronic spreadsheets.”
      Data Engine Technologies LLC v. GOOGLE LLC, 906 F.3d 999 (Fed. Cir. 2018).

      et cetera.

      1. 6.1.1

        But not infallible…

        No eligible, American citizen is infallible, so this is a trivially true and largely irrelevant observation. Pres. Biden will not find a nominee with a perfect affirmance rate among mortal candidates. The Archangel Michael is not a U.S., citizen, and thus not eligible for the job.

        As a statistical matter, CJ Stark is one of only 24 judges in his circuit who are—year after year—consistently affirmed on appeal at a higher than average rate (link 1 below). Given that the average federal district judge is affirmed more than 3 times (Table 1, link 2 below) more often than s/he is reversed (i.e., >75% affirmance rate), this means that Judge Stark’s affirmance rate is even higher than that.

        Among those from whom Pres. Biden actually can his nominees, he will find few better than CJ Stark.

        1. link to

  2. 5

    Here are what should be the top picks:

    Albright (district court), Iancu (law firm and federal gov), or Mossoff (academia).

    1. 5.1

      O’Malley seems like a practical minded person. It would be interesting to see if she is leaving out of disgust with the people and jurisprudence (people like Taranto) of the CAFC.

    2. 5.2

      “Albright (district court)”

      Interesting question as to whether his pick-your-judge arrangement in Waco, or a position on the CAFC, would be more “rewarding” for him.

      1. 5.2.1

        I think that he would LOVE the chance to be at the CAFC level, plus there is the ‘benefit’ of the “steer to Texas” situation resolving itself.

        N’cest-ce pas?

    3. 5.4

      Prof. Mossoff would be an excellent pick. Former Director Iancu would also be obviously well qualified. It would be interesting, however, to watch him try to navigate the rather obvious discrepancies between his own agency guidance and controlling precedent.

      As the saying goes, where you stand depends on where you sit. I think that a lot of folks who really like Iancu right now would sour on him as he would turn out on the CAFC. I do not expect that his panel decisions would look much at all like his agency guidance documents.

      1. 5.4.1

        “I do not expect that his panel decisions would look much at all like his agency guidance documents.”

        I’m curious why you think this. Why should his interpretation of the law be any different as a CAFC judge than it was as PTO Director? I am not a fan of Iancu, but it seems quite unkind to suggest that he would be so “flexible.”


          I am not a fan of Iancu, but it seems quite unkind to suggest that he would be so “flexible.”

          Is that “unkind”? Mr. Iancu is a lawyer. A lawyer makes different arguments when he represents different clients. It is not unkind to take note that a lawyer might say one thing when representing a patentee, but completely another when representing an infringer. That is just the nature of the work.

          As Director of the PTO, Mr. Iancu had a responsibility to make a payroll. He needed fees coming in the door if he was to keep the lights on. People will not pay application fees if they know that there is no hope that they will get a patent. Mr. Iancu promulgated a set of examination standards that gave the population of would-be patent filers good reason to suppose that they would finish the process with a patent in hand.

          A judge on the CAFC, however, has no such institutional responsibilities to keep fees rolling in. Rather, a judge wants to avoid getting over-ruled the SCotUS. Similarly, a circuit judge does not want to create contradictions in the precedents that make his own job—and the jobs of his colleagues—harder going forward.

          Maybe Iancu really is a true-blue believer in patents for fee-payers. Maybe he really will be willing to brave SCotUS reversals and the ire of his colleagues to fight for those patents. On the other hand, maybe as a circuit judge he will care more about the usual things about which circuit judges usually care, rather than the things about which PTO directors care. I would not be surprised either way, but I gather that his boosters definitely would be surprised by the latter.


            Part and parcel of the problem with the CAFC:

            Rather, a judge wants to avoid getting over-ruled the SCotUS

            We need men of SPINE (like Judge Rich) to push back against the Supreme Court.

            The even more despicable aspect here is a LACK of understanding though that the Supreme Court is NOT all-powerful, and that even they do not have an unfettered ability to make S H 1 T up.

            As attorneys who have taken various State Oaths (of which I have seen ONLY ONE that arguably provide some wiggle room), we have a DUTY to NOT place one branch (even the Judicial one) above the Constitution. Greg’s mealy view (and he certainly is not the only one) reflects a lack of understanding what this oath means.


            “Is that “unkind”? Mr. Iancu is a lawyer. A lawyer makes different arguments when he represents different clients. It is not unkind to take note that a lawyer might say one thing when representing a patentee, but completely another when representing an infringer. That is just the nature of the work.”

            That’s a fair explanation, though I disagree that “USPTO director” and “CAFC judge” should be understood to have different clients.

  3. 4

    Wow, she’s only 64, although she’ll be 65 by the time she retires next year. She started fairly young on the federal bench—she was just shy of 38 at the time (if my math checks out). But ~28 years all told is quite a solid career doing Art. III work.

    She probably has another 20 years at least in which to do something else now, if she wants.

    Biden’s already picked someone who cut her teeth in BigLaw. As noted by Paul Morgan, for this round, he could select someone comparable to O’Malley with trial judge experience. Maryellen Noreika in DDel has been suggested. While Trump appointed her, she is a Democrat by party. But her scant judging experience—it won’t be 3 years until next month—is currently dwarfed by the decades she spent in private practice. Maybe Lucy Koh? It’d be like a consolation prize for missing out on a CA9 seat with Obama.

    Speaking of Obama consolation prizes, Biden could try for Ed DuMont again. DuMont is buddy buddy with Kamala Harris too.

    The male/female balance on the court is pretty good right now, so I don’t think Biden would feel too compelled in that respect.


      1. 4.1.1

        . . . and abysmal doesn’t even begin to characterize the damage Koh would do to American innovation.


          Meh, not sure that if would go that far — just look below as ipguy also seems to vouch for Koh.

          Why this is so is beyond me, as Koh is clearly anti-intellectual property.

          Perhaps ipguy can explain why he sees Koh so favorably.


            Aside from reading her patent-related judicial decisions, Judge Koh and I were seated at the same table during the luncheon of IP association event. While she was limited in what she could talk about, we still had a very nice discussion about patent prosecution, basically discussing the way the sausage is actually made and what doesn’t show up in the filewrapper, and the positive and negative effects patent prosecution history can have on subsequent patent litigation. I found her to be quite intellectually curious, and by no means anti-patent. Far from it. Since I’m not a litigator, I can’t speak to her trial judge skills but I’d have no problem with her being nominated to the CAFC.


          I appreciate all the replies, even the ones speculating as to my personal preferences on this question. Just to be clear though, I’m not laying out who my own choices are. All I’m doing is trying (and maybe not succeeding) to predict WWBD.

    1. 4.2

      DuMont has excellent background and experience. Certainly, Koh showed her judicial chops with Apple v. Google. In any event, it’s too much to hope that someone with patent prosecution experience and a reg. no. gets nominated.

  4. 3

    So I wonder which category (I am not even sure of the categories) will get the nomination to fulfill Biden’s quota system (“Equity!”).

      1. 3.1.1

        That would unironically be awesome. Oral arguments in front of Judge Sasha Velour would be great. You say something dumb and they would read you to filth.


          To your, “You say something dumb and they would read you to filth.

          I have to ask, “Huh?”

  5. 2

    It would indeed seem desirable to have another such Fed. Cir. judge with such extensive jury trial experience. My impression is that this is far more common on other federal circuit courts than it has been on the Fed. Cir.? [Even though some Fed. Cir. judges have desirably volunteered to serve as district court judges on some cases to get some of that experience.]

  6. 1

    With Cunningham (still a question mark as far as supporting strong patent system) being added, O’Malley being subtracted…and Newman inevitably being subtracted soon (she is 94)…patent owners are taking it on the chin recently.

    While I support O’Malley’s personal decision…this is a sad day for the US patent system imo.

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