By Tony Dutra
May 23 --Judge Randall R. Rader today announced that he will step down as chief judge of the U.S. Court of Appeals for the Federal Circuit on May 30. Judge Sharon Prost will become chief judge on that date, and Rader will continue to serve as an active member of the Federal Circuit bench.
The announcement comes in the wake of the previous day's report in the Wall Street Journal giving the reason for Rader's recent recusal after an opinion--with him in the dissent--had already been published. Microsoft Corp. v. DataTern, Inc., 2014 BL 93378, 110 U.S.P.Q.2d 1411 (Fed. Cir. April 4, 2014) (66 PTD, 4/7/14).
According to the report, the chief judge recused himself because he “sent a laudatory email” to one of the attorneys involved in the case, Edward R. Reines of Weil, Gotshal & Manges LLP, Redwood Shores, Calif. The opinion was reissued May 5 as a two-judge panel decision without the dissent (88 PTD, 5/7/14).
William A. Zucker of McCarter & English LLP, attorney for the patent owner in the case, DataTern Inc., filed a letter May 21 asking the Federal Circuit to reveal the reason for Rader's recusal. The court had ruled against DataTern by affirming noninfringement by SAP AG, represented by Reines. Rader had not dissented to that portion of the opinion.
Reines served as chair of the Federal Circuit Advisory Council, appointed to the position by Rader in 2010 (186 PTD, 9/28/10), shortly after Rader took over the chief judge position (104 PTD, 6/2/10). Reines's name does not appear on the council's web page as of this date, and the chair is listed as “vacant.”
Rader spoke briefly about his decision on May 23 at a one-day conference in Washington co-sponsored by the Federal Circuit Bar Association and the U.S. Chamber of Commerce, “Best Practices: The International Series Global Dialogue, 2014 Update.”
Rader enumerated his accomplishments as chief judge with an introduction saying, “For just a moment, and I promise that, I have come to 'bury Caesar, not to praise him.' ”
Rader, 65, was appointed to the Federal Circuit by President George H. W. Bush in 1990 after a two-year stint on what is now the U. S. Court of Federal Claims.
He came to the appeals court after years of service in Congress. As chief counsel to the Senate Judiciary Committee in the early 1980s, Rader had a hand in the Federal Courts Improvement Act of 1982, which created the Federal Circuit and gave it exclusive jurisdiction over patent law.
Rader is an adjunct law professor at George Washington University, where he teaches patent law and other advanced intellectual property courses. He has taught related courses at the University of Virginia, Georgetown University, the Munich Intellectual Property Law Center and other university programs overseas.
As chief judge, Rader often focused on relations with members of foreign courts who specialized in patent law.
Perhaps not surprisingly, then, according to the May 23 announcement on the court's website, Rader “will also undertake additional teaching, lecturing and travel.”
However, he is also well known for occasionally taking a patent case sitting by designation at the district court level (207 PTD, 10/27/08). And in his speech at the FCBA conference, Rader mentioned that aspect of his future first.
“For me, this transition will enable me to return to my first love of sitting as a trial judge in various district courts,” he said. “Indeed, I look forward to serving as a district judge for a sizeable volume of cases in the next few months.”
“Intellectual Property Owners Association congratulates Chief Judge Randall Rader on his 4 years of service as Chief and his 24 years of service to date as an active judge on America's innovation court,” according to a May 23 statement by IPO Executive Director Herbert C. Wamsley.
Wamsley spoke highly of Rader as a prolific author of Federal Circuit opinions as well as in his other roles.
“Chief Judge Rader may be best known as a global goodwill ambassador to judges in other countries who handle intellectual property cases,” he said. “His work as an educator of judges and law students has been remarkable. We look forward to continuing to cooperate with him on educational programs.”
In his speech, Rader also praised Prost, saying she “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.”
Prost was appointed by President George W. Bush in 2001. Prior to her appointment, she, too, had served as chief counsel to the Senate Judiciary Committee.
Prior to that position, Prost had served since 1973 in various legislative and executive positions in the U.S. government, including as counsel to the Senate Committee on Labor and Human Resources and as acting solicitor of the National Labor Relations Board.
Prost received a bachelor's degree from Cornell University in 1973, an business degree from George Washington University in 1975, a law degree from American University in 1979, and an LL.M. from GW in 1984.
“We also wish to congratulate Judge Sharon Prost on becoming the next Chief Judge,” IPO's Wamsley said. “The court will need her strong leadership as it faces new challenges, including a large number of patent appeals from the Patent and Trademark Office in the new proceedings established by the America Invents Act.”
Reines is one of the most active appellate attorneys arguing cases before the Federal Circuit, including a number of open cases, but only one where Rader served on an announced panel.
The court initially granted Reines's client Medtronic Inc.'s motion for an emergency stay of the district court's preliminary injunction against the sale of its CoreValve System, which is a heart valve replacement product. Edwards Lifesciences AG v. CoreValve, Inc., No. 14-01409 (Fed. Cir. April 21, 2014) (80 PTD, 4/25/14). Prost and Rader joined a per curiam opinion of the court, with Judge Pauline Newman dissenting.
However, Rader recused himself from that case as well, and on May 7 the court withdrew the emergency stay. “The panel has been reconstituted and has reconsidered the motion on the record,” the court said. “It is concluded that the district court's stay of injunction shall remain in effect until the decision of the merits of the underlying action.”
Prost now joined Newman in that decision, with Rader's replacement on the panel, Judge Evan J. Wallach, dissenting.
Nicholas Groombridge of Paul, Weiss, Rifkind, Wharton & Garrison LLP, New York, counsel for patent owner Edwards Lifesciences AG, confirmed to Bloomberg BNA that, in any event, the parties' dispute in court ended with Medtronic's agreement to pay Edwards at least $1.1 billion to settle the case, as reported May 20 by Bloomberg News.
Text of Rader's speech is available at http://pub.bna.com/ptcj/RaderSpeech14May23.pdf.
Wamsley is a member of this journal's advisory board.
To contact the reporter on this story: Tony Dutra in Washington at firstname.lastname@example.org
To contact the editor responsible for this story: Naresh Sritharan at email@example.com
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