All Hands on Deck and Ready for the Post-AIA Era
U.S. Court of Appeals for the Federal Circuit (Federal Circuit) Chief Judge Sharon Prost never planned on being at the helm of the nation’s key IP court. While in college at Cornell University, her goal was to become a labor lawyer, but she didn’t initially have enough money for law school. Instead, she pursued her MBA at night, while working as a General Schedule (GS)-4-level government employee, and then attended law school as she gradually progressed up the GS scale. After obtaining her law degree from American University Washington College of Law in 1979, she achieved her goal of becoming a labor lawyer, and eventually served as Assistant Solicitor, Associate Solicitor, and Acting Solicitor of the National Labor Relations Board for five years.
Then, one day, she got a phone call from the office of Senator Orrin Hatch. “He peculiarly needed a labor lawyer, but also someone with a background in finance so that they could do ERISA law,” says the Chief Judge, who happens to have her MBA in finance and LLM in tax law. “I had this strange combination of the right skills, talent and education, so they hired me and I became Senator Hatch’s Chief Labor Counsel on the Senate Labor Committee.”
From there, Chief Judge Prost moved with Senator Hatch to the Senate Judiciary Committee from 1992 to 2001, where she most recently served as the Senator’s Chief Counsel. In 2001, she was appointed to the Federal Circuit by former President George W. Bush, and became Chief Judge in 2014. “I’ve had a few lives,” says Chief Judge Prost. “I’m a walking separation of powers.”
In this latest installment to Innovator Insights, the Chief Judge recounts her early days on the Court, discusses the biggest challenges she is facing as Chief Judge and provides advice about what IP practitioners can do better to ensure success when arguing in her Court.
What were your early days working on the Federal Circuit like? Did you find IP cases interesting/challenging at first?
I was on the Senate Judiciary Committee for years before I was appointed to the Federal Circuit in 2001, so I had some familiarity with IP. I did think IP would be interesting and challenging—I identified with it as a field of law, notwithstanding that all my friends rolled their eyes and thought patent law was geeky and weird and not part of the legal mainstream. I always thought it was particularly interesting and cutting-edge. I came to the Federal Circuit assuming that, since our Court had been around for 20 years, I would be able to just apply the existing law to the facts of the case at hand—only to find out that the law in so many respects was really not well-developed yet. The issues kept changing because we worked in such a dynamic area of science and technology, so I would characterize it as pretty daunting, particularly as a non-scientist. I had the benefit of amazing colleagues who were so ready, willing and able to counsel and share their knowledge; and of course I had unbelievable clerks who had the technical expertise that I lacked. They figured out ways to convey to me exactly what I needed to know on a particular case and to walk me through it, so gradually it got a bit easier. It’s become relatively easy ever since, although—as one of my colleagues on the Court who’s known for his brilliance once said to me—“These cases keep getting harder every year.” I was relieved to know that I wasn’t alone in thinking that. As my expertise increases, I think the cases continually get harder, so they continue to present a challenge—but you couldn’t ask for anything more, right?
Is there any one that stands out for you as being particularly memorable or educational?
I remember the Rambus v. Infineon Technologies case well, because I was a fairly new judge at the time, and I was on the panel with former Chief Judge [Randall] Rader and Judge [William] Bryson. I was constantly looking behind me wondering if I was really right in [dissenting]. But I was very confident that I was right; that was the first time I really had to speak my mind.
What’s most different now, compared to when you started on the Court?
I’ve developed quite an efficient process for getting things done now. I have become more discerning at being able to figure out fairly soon how to get where I need to be. But the wonderful thing about this job is that we get a new set of briefs for 20 or so cases each month and in all of those stacks there arise new issues—whether process or substantive issues—that I’ve really not had to delve into before. And now with the America Invents Act (AIA), there are a lot of process issues that we’ve never before confronted, which is also interesting and challenging.
What kinds of issues has the AIA presented exactly, and what challenges do you foresee going forward?
When I first came on the Court, each day we’d have one or maybe two patent cases; now, it’s not unusual to have four on a particular day.
For so long, the AIA has been anticipatory, but I think we’re here. It’s in full swing—the number of Patent Trial and Appeal Board (PTAB) appeals has grown a great deal, and we expect it to continue to grow, so that increases the patent docket in our Court. When I first came on the Court, we’d sit four days per week and each day we would have one or maybe two patent cases; now, it’s not unusual to have four patent cases on a particular day.
The cases coming from the district courts obviously present more heavy lifting than the PTAB cases do in a lot of respects. The PTAB cases are generally one or two-issue cases, so they’re not quite of the same vintage as the district court ones. But we all look at our future and wonder what the system we have is going to look like five or 10 years down the road—are we really going to be reviewing largely or almost entirely PTAB cases, as opposed to district court appeals? That would be a fairly dramatic change from what we’re used to.
We all look at our future and wonder what the system we have is going to look like five or 10 years down the road—are we really going to be reviewing almost entirely PTAB cases?
For now, we’re ok. We just got our twelfth vacancy filled when Judge Kara Stoll came on board, so for the first time we have six senior judges. We’re all hands on deck in a way we’ve never been. A few years ago, under former Chief Judge Paul Michel, we rose from three clerks each to four clerks each. I’m fairly optimistic that in the foreseeable future we’ll be up to the task. We’re proud of the fact that we’re very current; we have virtually no backlog and are probably one of the most current appeals courts in the country, so we’d like to be able to keep that going. It may get a little harder with the influx of PTAB cases, but we’ll do the best we can.
What are your views on the Supreme Court’s tendency to reverse Federal Circuit decisions?
I think we have the greatest system of justice in the world, and part of that system is that we’re reviewed by the Supreme Court. They take about 70 cases a year, so we’re looking at a very, very small percentage of our docket that even has a chance of ever getting reviewed. I know it maybe sounds naïve, but I think we have the most interesting, demanding docket in the country, so it should be no surprise to anyone that the Supreme Court would be interested in our cases. They’re important. And when the Supreme Court grants certiorari on one of our cases, clearly the chances are more likely than not that they’re taking it with an eye toward reversing. That’s not true in many other areas, because other cases come up as a result of a split in the circuits. Our cases don’t percolate through the circuits, so I think the Supreme Court’s relationship to us arises in a different way.
If we don’t like some of the results that come out of the Supreme Court, then for the next cases we can perhaps learn from that and think about what we can do better. I don’t mean we’ll change our minds and reach different results, but we can change the way we handle cases, the way we approach them and the way we explain our points of view. It’s a work in progress.
Do you think public criticism of IP rights has any effect on IP law?
Hopefully the AIA will help the perception—and maybe the reality—that if there are poor quality patents, those will be taken care of and the remainder will be of real value to everyone.
I guess in some respects there’s a negative perception of IP rights, but I’m not sure how widespread that is. We live in pretty much a cocoon here in Washington, D.C., and in our own legal circles. I would hope that the vast majority of people who deal with IP continue to have respect for the rights that patent holders have in our system. I think the system continues to work well.
The other thing that seems to be going on in the general public though is that the quality of patents is being questioned. I was on the “peanut butter and jelly case” in 2005 [In re Kretchman, 125 Fed. Appx. 1012 (Fed. Cir. 2005)], which is the most well-known case I’ve ever had. They asked for cameras in the courtroom—that’s the only case I’ve ever had with that request. It made the front page of the Wall Street Journal and the nightly news, and we all recognized that it wasn’t a good development, because that particular issue was not necessarily symbolic of or a good statement about the important IP rights that exist in most of the patents out there. That’s partly what Congress has reacted to in passing the AIA; hopefully the AIA will help the perception—and maybe the reality—that if there are poor quality patents, those will be taken care of and the remainder that exist will be of real value to everyone.
What current challenges is the Court facing from an administrative perspective?
When you become Chief Judge, your new best friends are people at the General Services Administration (GSA). There are always issues with respect to building and maintenance. It’s not the kind of work I expected to be doing at this stage of my life, but that’s what it is. The budget climate is such that, even though we’ve done fairly well, every year brings its own challenges that require a lot of monitoring and a lot of work. These are challenges inherent in running a court. And even though we are all hands on deck, we’ve got a different Court and a lot of judges are relatively new, so a lot of people here are just starting to get to know each other. Which is a good thing, but it requires a learning curve in terms of processes we employ for everything—the paperwork here is daunting, so everyone has to get up to speed in terms of how we operate. It’s a challenge; it’s not what I pictured I’d be doing as I reach close to age 65, but this is a wonderful Court and I would hope it runs pretty smoothly.
Have the administrative duties been the biggest challenge of your transition to Chief Judge then?
A large part of being Chief Judge is about clearing the underbrush from my colleagues to make it easier for them to do their jobs; I take that responsibility seriously, and the challenges go up and down from day to day. Also, the logistics of arranging things are a challenge—I still only have one vote on cases, but I do a lot of the legwork in terms of setting up our conferences and en banc sittings. I’m very pleased that the Court will be sitting in Boston the first week in October; we’re sitting in five different law schools while we’re there. But it’s no small venture to move half of our court to another city in the country for a week. It’s those kinds of tasks that now fall on me to be responsible for getting done effectively.
Did you envision yourself becoming Chief Judge one day?
No. There was always a chance that people would leave earlier and I would become Chief Judge, but it was highly unlikely, so I didn’t quite envision it. But I’m lucky—it’s a wonderful place to be, and I hope when it’s all said and done that I can say I’ve added some value in terms of leadership. I care so much about the institution, as do all of my colleagues, and just want to protect it and make it the best institution it can be. I’m really fortunate and blessed to be in the position I’m in.
What do you see as the role of the Court in commenting on legislation that might affect its workload or the substantive issues you deal with in cases?
It would be nice to be asked, but unless someone thinks I can bring some value to the table, then I do my job and they do theirs.
Everyone judges for themselves what their particular role is; I’m very restrained. If [Congress] asked me for my particular view, I would give it. But on substantive issues, I have my job and they have theirs, and I don’t see myself as having an affirmative role, unless asked. It would be nice to be asked, but unless someone thinks I can bring some value to the table, then I do my job and they do theirs.
What advice do you have for practitioners arguing at the Federal Circuit?
There’s a lot of emphasis placed on oral argument, and for good reason—I actually am one of the judges who most values the oral arguments and finds them helpful. But at the beginning and end of the cases it’s really the brief writing that matters. The importance of brief writing is to be clear and clean and honest. We rely heavily on the briefs, and we’re very fortunate; compared to other circuits I think the caliber of the briefing and the advocacy we get is super, but of course we’re unhappy around the edges sometimes.
As far as oral argument the best advice I could give is to answer the questions. If you come to oral argument and your perception is that this is your chance to orally re-convey to the Court the highlights of your brief, then you’ve got it all wrong. The point of oral argument is to see if the Court, having read your brief, has any questions or problems. It’s not your chance to say what you want to say, it’s your chance to hear what the Court has to say, and it’s your last chance to try to convince them of your position. The best advocates we have are so happy to be questioned and listen so carefully to the questions, because they realize that’s what their 15 minutes is about. And the ones that aren’t successful are the ones who act like you’re interrupting them from their dialogue and can’t wait to get back to their script.
Can you give us a sneak peek into the topic of your keynote address for the IPO Annual Meeting?
I’d like to talk about our Court. Five years ago, our Court had a completely different face. Half of us are different judges than six years ago, and our docket is very different, largely because of the AIA. So I’d like to share with the audience the new face of the Federal Circuit and what we’re doing now, what we look like and how our role is evolving as things around us evolve.