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New Blood At Federal Circuit

Publication Date: 
August 17, 2011
Corporate Counsel
Sheri Qualters

Professor Mark Lemley discusses the impact new federal circuit appointees may have on patent cases in the below blog post by Sheri Qualters.

A flurry of new judges and nominees may change the playing field for patent cases at the U.S. Court of Appeals for the Federal Circuit.

Judges retiring or moving to senior status have opened the door to new appointees whose array of legal experience and viewpoints could change the fate of cases that hit the court. "After long-term stability, there's change," said Edward Reines, a partner in the Redwood Shores, Calif., office of New York's Weil, Gotshal & Manges and the current chairman of the Federal Circuit Advisory Council. "Change is not necessarily to be feared. Fresh perspectives are healthy."


In a period when a number of judges are coming to patent law issues from outside, "that's going to often mean we rethink long-held beliefs," said Stanford Law School professor Mark Lemley, who is also the director of the Stanford Program in Law, Science & Technology and a partner at San Francisco's Durie Tangri. "I think there's both some uncertainty as to how these judges will fit into the structure and also the opportunity to rethink things the patent bar takes for granted but the rest of the world does not," Lemley said.

When Dyk joined the court in 2000, for example, "he started bringing in the perspective of other areas of law," Lemley said. Dyk previously chaired the issues and appeals practice at Jones Day. Lemley recalled that Dyk took the position that the court's prior rules on willful patent infringement, which required an accused infringer to get an opinion of counsel, didn't mesh with how the rest of civil law treats punitive damages, Lemley said.

"He started out as sole dissenter, but in the Seagatecase, the court ultimately changed the rule," Lemley said. In 2007, the Federal Circuit, in In re Seagate Technology, raised the bar for plaintiffs alleging willful patent infringement, which allows for triple damages. The court held that accused infringers don't necessarily have to get an opinion of counsel to avoid a finding of willfulness.


Newman has been a "vociferous dissenter in the line of cases that involve joint infringement, where the Federal Circuit has refused to hold people liable for doing part of an invention," Lemley said. "Now they've taken those cases en banc," he said, referring to McKesson Technologies Inc. v. Epic Systems Corp. and Akamai Technologies Inc. v. Limelight Networks Inc. Lemley observed, "Her dissenting has raised enough attention that it's been taken up by the full court."