An interview with the Honorable Arthur J. Gajarsa, Senior Judge of the US Court of Appeals for the Federal Circuit, on uniform patent law, pro bono work and fine Italian spirits

Intellectual Property and Technology News


As the Federal Circuit heads into an era of transition marked by many new court members, Judge Arthur J. Gajarsa sat down with his former clerk, DLA Piper associate Aaron Fountain, to share his observations on the court and its interaction with Congress, the Supreme Court and its practitioners.


Q: What are some of the most important lessons you learned when you began your career as a judge?


When I first came to the Federal Circuit, I tried to resolve some of the issues that I had identified in private practice as correctable by the court. But I quickly determined that I could not correct every particular issue that I (the private practitioner) had thought was incorrect. It takes time. We have to decide the cases presented to us based on the facts and the law. That’s how the common law is built – one case at a time. If we try to move too quickly on particular issues, we tend to create an imbalance that will probably need to be recalibrated later.


This is what I believe the Supreme Court has been trying to do in the patent area: recalibrate some of the issues the CAFC has decided over the last 15 or 20 years. But it’s unusual to have a panel of three judges who are completely in error. For the most part, I think the original panel provides a basis to determine the correct result.


Q: What are some of the most important lessons you have learned during your time on the bench?


The lessons I’ve learned from the bench are a continuation of lessons I learned as a practicing lawyer. As an advocate you must be a strong representative of your client’s position, but you also have to be civil in your representation. As a judge, you have to be civil to the attorneys who appear before you, and you have to respect that they are representing their clients to the best of their abilities. Wearing a black robe does not make a person any different from a person who appears before the court. We’re all officers of the court and we should act as such.


At times, I have found that attorneys do not make the best and strongest arguments on behalf of their clients. But at the same time, the attorneys must present their cases, and it’s not up to the court to correct their mistakes.


Q: How have practitioners’ views of the Federal Circuit changed over the years?


I believe they see a court more willing to systematize and rationalize the decisions that have been made in the past. I believe they also see a court that will author decisions that will at least establish issues for the Supreme Court to review, even if the Supreme Court might not particularly like or particularly agree with those decisions.


Q: Prior to the passage of the AIA, many remarked on the ability of the court to address the issues targeted by the pending legislation. What are your thoughts on how that process unfolded?


In my judgment, the court should not undertake on its own to participate in the legislative process. That’s not our function. We’re here to decide cases and not to tell Congress – unless we’re asked – what policy should be. Policy is determined by Congress, not by the courts. If Congress feels that some of our judgments are incorrect, it has the ability to correct them by the democratic process. Congress allows everyone to be represented and to advocate a particular position, which is not how we decide cases. Cases can only be decided by the facts and the applicable laws.  If we try to mix the two processes, we could create constitutional problems between the two separate and distinct branches of government.


Congress, under the AIA, has corrected some of the issues it saw were in error, like the Vornado case.1 They brought the US into parity with the rest of the world in first to file. I think it will take a while before we know whether the aspects included for inter partes and ex partes proceedings are correct, wrong or of no consequence.


Q: Given the limitation that the court must decide cases under the law as it exists, are there principles for the court’s correction or rationalization of its decisions?


Congress gave this court a mandate to rationalize and normalize patent law throughout the country. The problem is that many of our decisions were not necessarily in consonance with one another. For any particular conflict, the court could resolve it by sitting en banc, or the court could leave the resolution of the conflict for Congress. I think the court is now more willing to take up these conflicts, or perceived conflicts, in the first instance.


Q: Do you have any advice for identifying and presenting issues the court might be willing to rationalize en banc?


Well, there are a number of things to consider. Conflicting panel opinions are published over a number of years. The resolutions of conflicts are issues I think the court addresses once it’s confronted with the right case. For instance, Cybor2, issued back in 1998, deals with the matter of having the district court’s judgment reviewed de novo for matters of claim interpretation. Some people consider those matters to be factual determinations. If in fact they’re factual determinations, then they should be decided by a jury and the district court and not by the court of appeals. But we have taken the position that claim construction is a legal determination to be reviewed de novo. Is that the correct approach? I think eventually this court will revisit Cybor, but in order to do it, you need the right vehicle.


Q: Have you observed any impact on the work of the court due to members retiring or taking senior status and new members being appointed?


A number of us have taken the option of senior status because we believe the court should have some new blood. We have four new judges, which is the most change this court has had in years. We now have a different court because the judges’ backgrounds are different. We have trial judges from federal district court and the international trade court. We also have a practitioner in the trade area. And soon we’ll have an appellate lawyer. It’s a different group. Some of these folks have no patent law experience; some have indirect patent law experience. It’s no longer a totally patent court. In the past, over six or seven of the judges had been patent lawyers. Now we’re fewer than that.


The practice before the court has changed as well. More lawyers are arguing patent cases who are not considered patent lawyers as such, and they do a thoughtful and masterful job in presenting those cases. So the specialization that was observed before is no longer present to the same degree.


Q: Do you think it’s beneficial to have this moving away from a specialized focus on the subject matter of patent law? 


Personally I think it’s beneficial because you bring different perspectives on the issues. You don’t necessarily have to have a criminal lawyer sit on the bench on a criminal trial. What you need is a good trial lawyer, or a good appellate lawyer. I believe that once you’ve tried several cases, whether they’re criminal law cases, civil law cases, water rights cases or even patent cases, there is a certain degree of commonality in trying a case that runs throughout the presentation. The appellate work, even in the patent law, shares this commonality.


Q: Do you think the Federal Circuit’s limited subject matter jurisdiction affects its cognizance of those issues needing to be addressed en banc?


Actually, I think the Federal Circuit has a very broad jurisdiction. Many people don’t understand that we’re not just a patent court. Right now, patent cases are about thirty-five to forty percent of our total docket. The balance of our docket consists of issues dealing with claims against the federal government, appeals from the Merit Systems Protection Board and the Court of Appeals for Veterans Claims.


Q: What would you like to say to an audience of intellectual property and technology practitioners on the subject of veterans cases?


As lawyers, you are officers of the court and you have an obligation to represent anyone who has a valid and reasonable appeal to be heard before the Federal Circuit. Many veterans are not represented by attorneys because of the costs involved. I’ve always advocated that individual lawyers who appear before this court should take the opportunity to represent veterans before this court pro bono, giving them the experience of appearing before the Federal Circuit. The attorneys should also take the opportunity to prepare and appear in cases before the CAVC, because that’s where the record is made.


Q: One last question: do you have any tips for selecting a nice grappa?


I think you need a grappa that is aged for a minimum of 10 to 12 years in oak or cherry barrels.


1 Holmes Group Inc. v. Vornado Air Circulation Sys. Inc., 535 U.S. 826 (2002) (holding that regional circuits had jurisdiction to hear appeals where the only  claims arising under the patent law as counterclaims).

2 Cyber Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc).