Judge O'Malley Thinks Fed. Circ. Could Be Back This Summer

By Dani Kass
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Law360 (March 25, 2021, 9:43 PM EDT) -- Circuit Judge Kathleen M. O'Malley predicted Thursday that the Federal Circuit could be back to in-person oral arguments by the end of summer, although her colleague, Circuit Judge Pauline Newman, was more hesitant to place a wager on a specific date.

The pair spoke with former Chief Judge Paul R. Michel at a virtual panel for the University of Texas School of Law Advanced Patent Law Institute about how COVID-19 has impacted their court, provided a series of warnings for lawyers who try to get away with misleading panels and encouraged the U.S. Patent Trial and Appeal Board to take objective indicia of nonobviousness more seriously.

Circuit Judges Pauline Newman and Kathleen O'Malley at a virtual panel for the University of Texas School of Law Advanced Patent Law Institute.

But first, they addressed the question on everyone's mind as vaccine rollout ramps up: when attorneys will be able to argue before them in person again.

"What I would have guessed three weeks ago is different than what I would guess now," Judge O'Malley said. "I never expected the vaccination rate to be moving along as well as it is."

Judge Newman was less optimistic, noting that due to D.C. politics, "we've really had to scramble to get ourselves vaccinated."

"I don't think anyone can reasonably guess [when we'll return]," she said. "We don't want to put counsel or the public or our staff through undue risk. At the same time, I think we all feel the sooner, the better to return to the courtroom."

Telephonic arguments have been "much more successful than perhaps any of us had hoped as we were trying to cope with this national emergency," Judge Newman said, adding that while there are many negatives, overall "the interest of justice hasn't suffered."

Judge O'Malley added that it's frustrating for younger and mid-level lawyers who are "missing out on the grandeur of being in open court."

Both sitting judges said they've been intrigued to learn from commentary about the telephonic arguments that attorneys think they can read the judges' facial expressions in person.

"I have been surprised to see that clearly they think that some of us on the court, probably most of us, are not great poker players, and so they like to see our faces because they know where we're coming from," Judge O'Malley said. "When we're on the phone, it's easier to play devil's advocate. I can sometimes hear the surprise when I give somebody a softball question. They're not sure if they should answer it the way they immediately think they should or whether they should disagree with me."

The judges also noted that while Federal Circuit briefing has always been high quality, it's gotten even tighter over the pandemic, whether it's because attorneys are putting more emphasis on the briefs or because work has taken over their lives more than ever.

"The problem with this pandemic is that you can work all the time, and people can find you all the time," Judge O'Malley said. "If someone wants to call you at 10 o'clock at night, you can't pretend you're not there or you're out at some event, because we're all there. Maybe people are working more than they should, more than they did in the past. It's possible you're getting a more studied eye as a result."

The judge admitted she does the same thing to her clerks, meaning opinions are ideally tighter and faster. 

"I do put my law clerks through more drafts and more iterations of any opinion that I issue, which is not necessarily pleasing for them," Judge O'Malley said.

But Judge Michel, who moderated the discussion and was the only one not on camera, said not to feel too bad for the law clerks.

"They're having the time of their lives," he said.

The three judges went into a long discussion about the frustration of attorneys using misleading citations or quotes, and their biggest pet peeves.

Judge Michel in particular said he's been helping attorneys edit briefs in his post-judicial career, where attorneys will cite more than 100 cases even if only five or 10 are controlling. He said there's a "bad trend" of relying on dicta rather than holdings.

Judge O'Malley said she'd noticed this too, and that she makes her law clerks actually pull out the books to avoid that exact problem of misreading a case.

"Just because there's some great sounding language in a case, doesn't mean it's an appropriate case to cite," she said.

Overall, they raised concerns that attorneys are running computer searches to find good quotes, rather than focusing on what precedent is actually applicable.

"It's extraordinarily risky to cite a case without knowing what it held and what it's about, and the other side can wipe you out," Judge Newman said. "Just throwing in quotes out of context isn't going to deceive the decision maker. You just open yourself up for bad news."

All three were also concerned about briefs that use ellipses in quotes, with Judge Mitchel saying he always gets "nervous," and Judge Newman saying she's "suspicious" about what's left out.

"I cannot believe how many times there have been ellipses and what is missing changes the entire meaning of the quote," Judge O'Malley said. "The shock is always the same. My mouth is agape, but it still happens. Or without even putting in ellipses, someone will leave the word 'not' out. It's happened more than once."

She was also concerned that when there's a string of cases cited, at times not all of them will be relevant, so she makes her clerks check every time. She did acknowledge that this could be because a younger attorney is being pushed by a more senior lawyer, "but it's very disappointing."

"I would rather have a five-page handwritten brief by Don Dunner, where every word of it was written by him, than the typical 65-page 14,000-word brief by a committee of lawyers, no matter how smart they are," Judge Michel said, referring to the well-respected Finnegan Henderson Farabow Garrett & Dunner LLP partner who died in 2019.

Judge O'Malley added that if a series of lawyers are working on one brief, it needs to be heavily edited to make sure it's all in one voice.

On another topic, she also expressed "frustration" about how the Patent Trial and Appeal Board disregards objective indicia of nonobviousness, which are factors that can be used to overcome an obviousness finding.

"The Patent Trial and Appeal Board doesn't care what any of us say about the importance of objective indicia. They're not going to look at them if it doesn't support the conclusion they want to otherwise reach, " Judge O'Malley said. "I think that that is a problem. Some cases have started to come around and understand it, and understand the importance of it, but I still think it's a hard pill for them to swallow."

The former chief judge also encouraged the others to give a glimpse into how they approach new cases. Judge Newman said she usually starts with the statement of issues, then moves on to the summary and then goes through the rest, flagging pages with sticky notes as she reads. Meanwhile, Judge O'Malley starts with the table of contents and the opening brief, and then goes straight to the lower court decision, and when applicable, the patent itself.

The talk also had a series of fun insights about the judges, including that Judge Newman is an "accomplished pilot" who flew herself from Long Island to her Ph.D. program at Yale University, and that Judge O'Malley is a "lifelong accomplished runner," according to Judge Michel.

--Editing by Regan Estes.

For a reprint of this article, please contact reprints@law360.com.

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