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Obama Renominates Richard Taranto To Be 10th Federal Circuit Active Judge

Monday, January 7, 2013
By Tony Dutra

President Barack Obama acted Jan. 4 to resubmit 33 nominations for federal courts, including Richard G. Taranto's nomination to the U.S. Court of Appeals for the Federal Circuit.

The U.S. Senate closed the 112th Congress without voting on the nomination of Taranto and five other circuit court judges, each of which was renominated by the president. Obama resubmitted those six nominations, as well as that of Caitlin Halligan for the District of Columbia Circuit Court, though the Senate had returned her nomination to the president in 2011. This will be the third session of the Senate to consider Halligan.

President Obama nominated Taranto for the bench in November 2011, and the Senate Judiciary Committee approved his candidacy on March 29. However, Senate Republicans put a hold on judicial nominations during the election year. The Senate did not vote on any of the circuit court nominees after June 12.

The Federal Circuit currently has nine active judges--three short of its full complement--and six senior judges. The seat Taranto would take opened up when Chief Judge Paul R. Michel retired in 2010, though two other later-opened slots have been filled.

Litigator Edward C. DuMont was Obama's first nominee for Michel's position. However, DuMont, who would have been the first openly gay federal appellate court judge, withdrew his name from consideration after the Judiciary Committee failed to act on his nomination (218 PTD, 11/10/11).


Taranto First Nominated in 2011
“Richard Taranto is a lawyer of exceptional legal ability and great personal and professional integrity,” Obama said in a White Houses press release coinciding with the November 2011 nomination. “I am pleased and honored to nominate him to the U.S. Court of Appeals to the Federal Circuit, and I am confident that his intelligence, independence, judgment, and temperament will make him a welcome addition to that court.”

Taranto, 55, a New York native, is an appellate and Supreme Court attorney at Farr & Taranto, Washington, D.C., with considerable experience in patent law.

He is a 1977 graduate of Pomona College and received his law degree from Yale University in 1981. He clerked for Judge Abraham D. Sofaer of the U.S. District Court for the Southern District of New York from 1981 to 1982; for Judge Robert H. Bork at the U.S. Court of Appeals for the D.C. Circuit from 1982 to 1983; and for Justice Sandra Day O'Connor of the U.S. Supreme Court in from 1983 to 1984. He was assistant to the solicitor general from 1986 to 1989 and worked at Onek, Klein & Farr before joining Farr & Taranto in 1991.


Little Controversy at Nomination Hearing
There was little controversy during a Senate Judiciary Committee hearing Feb. 29 (41 PTD, 3/2/12).

The nomination hearing lasted about 30 minutes, with questions from only three members of the committee. None of the questions addressed patent topics.

Sen. Alan S. Franken (D-Minn.) asked about Taranto's clerkship with O'Connor. Sen. Charles E. Grassley (R-Iowa) asked for Taranto's views related to his pet project, the Whistleblower Protection Act, as well as his positions on potential cases involving the Defense of Marriage Act. Sen. Michael S. Lee (R-Utah) tried, but failed, to get Taranto to indicate whether he “gravitated” toward either textualism or intentionalism.

Taranto's nomination was approved by voice vote, with only Lee voting no, and reported to the full Senate March 29.

The Tech Law Journal published a report Dec. 24 speculating that briefs Taranto has written on behalf of clients related to same-sex issues could have led to a hold on the nomination by unnamed Republicans. No Republican senator has publicly claimed opposition to the nomination, however.


Notable Taranto Cases
Taranto is best known in the patent community for representing the alleged infringer in a case that set the standard for assessing the doctrine of equivalents. Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 U.S.P.Q.2d 1865 (1997).

Outside the patent context, Taranto may well be better known for representing Grokster in the Supreme Court's 2005 ruling on secondary liability in copyright infringement. Metro-Goldwyn-Mayer Studios Inc. v. Grokster Ltd., 545 U.S. 913, 75 U.S.P.Q.2d 1001 (2005).

He was not so successful at the Federal Circuit in a high-profile case on a damages award, as the appeals court affirmed a lower court's judgment as a matter of law relieving Microsoft Corp. from a jury award of over $1.5 billion for infringement of Lucent Technologies Inc.'s patents. Lucent Technologies Inc. v. Gateway Inc., 543 F.3d 710, 88 U.S.P.Q.2d 1481 (Fed. Cir. 2008) (188 PTD, 9/29/08).

Taranto also represented the patent owner Jerome H. Lemelson, chastised by the Federal Circuit for “submarine” patenting in Symbol Technologies Inc. v. Lemelson Medical, Education & Research Foundation L.P., 76 U.S.P.Q.2d 1354 (Fed. Cir. 2005).

However, the Federal Circuit has agreed with Taranto's arguments in multiple cases since 2003 on behalf of client Rambus Inc. as to antitrust cases brought against the company for its actions purportedly withholding patent information from a standards-setting organization.

But most recently, a divided court decided against his client in a case involving a $390 million damages award. Bard Peripheral Vascular Inc. v. W. L. Gore and Associates Inc., 670 F.3d 1171. 101 U.S.P.Q.2d 1641 (Fed. Cir. 2012) (30 PTD, 2/15/12). The court resolved the contested Gore-Tex patent ownership case, almost 40 years after the invention, against the company that gave the vascular graft its name.

By Tony Dutra

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