Judge Prost will take over for Judge Randall Rader, who on Friday announced his resignation as chief judge after four years. She joined the court in 2001 after eight years of working for the Senate Judiciary Committee as chief counsel and in other positions.
In her time on the Federal Circuit, she has developed a reputation as a "class act" who is respected by attorneys and other judges on the court, said Robert Greene Sterne of Sterne Kessler Goldstein & Fox PLLC.
At a time when the judges on the Federal Circuit have a broad spectrum of views on patent law that has led to some fractured decisions, "she's going to a unifying force on the court," he said.
"She's extremely well-liked by her colleagues, and the first thing about being chief judge is how you get along with your colleagues," said Donald Dunner of Finnegan Henderson Farabow Garrett & Dunner LLP.
In addition to her reputation for collegiality, Judge Prost is regarded by attorneys as a skeptic about some areas of patent law and is "not a dyed-in-the-wool pro-patent judge," Sterne said.
Instead, she wants a fair patent system that balances the rights of inventors with competitors and the public, he said.
"I think she's willing to revisit established precedent and new emerging trends with a new set of eyes," Sterne said. "I expect we'll see a re-examination of certain legal doctrines under her watch."
Judge Prost appears to have taken a particular interest in cases dealing with how to evaluate damages and whether a patent has properly put the public on notice about what it covers, Sterne said.
She has authored some significant patent decisions at the Federal Circuit, including last year's en banc majority opinion in Robert Bosch LLC v. Pylon Manufacturing Corp., in which the court held that it can hear appeals of patent infringement findings in district court even when issues of damages and willfulness are unresolved.
Like many recent Federal Circuit en banc decisions, that case split the court, and attorneys have said that it may spur more district judges to streamline cases by bifurcating the issues and determining infringement liability first.
Judge Prost also wrote a 2009 decision upholding a $290 million damages award against Microsoft Corp. in a patent case brought by i4i LP, which was represented by Dunner. At the time, it was the largest patent infringement verdict ever affirmed on appeal.
Microsoft appealed to the U.S. Supreme Court, which affirmed Judge Prost's decision in 2011, ruling that the Federal Circuit correctly held that patent invalidity must be proved by clear and convincing evidence. That decision was a fairly rare occurrence for the high court, which has frequently reversed the Federal Circuit.
Judge Prost also wrote a notable dissent in 2012 in the closely watched case of CLS Bank v. Alice Corp., which deals with the question of when abstract ideas implemented using a computer are eligible for a patent.
When the panel majority reversed a lower court's ruling that a computerized trading platform patent covered an abstract idea that cannot be patented, Judge Prost chided her colleagues for ignoring directives from the Supreme Court in recent cases "to apply the patentable subject matter test with more vigor."
The Federal Circuit later reviewed that case en banc, and it is now on appeal to the Supreme Court, which heard arguments in March.
Judge Prost becomes the second woman to take the helm of the Federal Circuit, following Judge Helen Nies, who led the court from 1990 to 1994.
Before working as chief counsel of the Senate Judiciary Committee, a position that Judge Rader also once held, Judge Prost served as chief counsel for the Senate Committee on Labor and Human Resources. Earlier in her career, she worked for the National Labor Relations Board, the Internal Revenue Service and the Government Accountability Office.
Oskar Liivak, a professor at Cornell University Law School who clerked for Judge Prost in 2005 and 2006, said that her background at numerous agencies had made her well-versed in how the government works.
"She has a wealth of experience with government service in all the different branches," he said. "I was impressed with how much she knew about all areas of government."
From his clerkship with Judge Prost, Liivak said, he learned to appreciate arguments that, in addition to making legal and logical sense, could be carried out in a practical way.
"There was a sense that the law is better off that way, if decisions are based on something that's workable," he said. "That seems like a very sensible way to go."
Among attorneys who have appeared before her, Judge Prost is known as a thoughtful questioner who is always well-prepared for arguments, Dunner said.
"She's very respectful on the bench and never asks hostile questions," he said, adding, "I think she'll be an excellent chief judge."
That opinion is shared by Judge Rader, who stepped down from his leadership post amid a controversy over an email he sent praising an attorney who had appeared before him.
In a speech to the Federal Circuit Bar Association on Friday announcing his resignation, Judge Rader said that Judge Prost "has the universal respect and admiration of her colleagues and the poise to lead all of us, me included as one of her circuit colleagues, through the challenges of the coming years."
Judge Prost is taking the reins at a time when the Federal Circuit will be facing numerous complex issues, attorneys said. The U.S. Patent and Trademark Office has recently begun issuing final decision in the popular new patent review proceedings created by the America Invents Act, and the Federal Circuit will soon be dealing with a "tsunami of appeals" of those decisions, Sterne said.
The Supreme Court has also taken an increasing interest in the Federal Circuit's work and has agreed to hear far more patent cases in the past few years than it has historically done. The high court's decisions, three of which are expected next month, will present challenges to the Federal Circuit that the chief judge can help navigate, Dunner said.
"The Supreme Court does not always speak as clearly as it might, and the Federal Circuit has as one of its major tasks interpreting what the Supreme Court said going forward," he said.
Judge Prost is the right person to lead the court, since she is a hardworker who will promote a collegial atmosphere among her colleagues, Sterne said.
"We're very fortunate to have her at the helm, there's no doubt," he said.
--Editing by Jeremy Barker and Christine Chun.
