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President Barack Obama nominated Raymond T. Chen and Todd M. Hughes to the United States Court of Appeals for the Federal Circuit on Feb. 7.
Chen currently is the Patent and Trademark Office's solicitor and deputy general counsel for intellectual property law. Hughes is deputy director of the Commercial Litigation Branch of the Civil Division at the U.S. Department of Justice.
“Raymond T. Chen and Todd M. Hughes have displayed exceptional dedication to public service throughout their careers,” Obama said in a statement. “I am honored to nominate them today to serve the American people on the United States Court of Appeals. I am confident that they will be judicious and esteemed additions to the Federal Circuit.”
The Federal Circuit currently has nine active judges--three short of its full complement--and six senior judges.
The two vacancies that Chen and Hughes would fill were created when Judges Richard Linn (85 PTCJ 44, 11/9/12) and William C. Bryson assumed senior status (85 PTCJ 67, 11/16/12).
The announcement came right after the Senate Judiciary approved by voice vote the nomination of Richard G. Taranto to the court, filling a seat left vacant when Chief Judge Paul R. Michel retired in May 2010. The nomination now proceeds to the Senate.
Chen became PTO solicitor in 2008 after serving 10 years as associate solicitor.
Chen earned a bachelor's degree in electrical engineering in 1990 from the University of California, Los Angeles, and a law degree in 1994 from the New York University School of Law.
After graduating from law school, he joined Knobbe, Martens, Olson & Bear, Irvine, Calif., where he prosecuted patents and represented clients in intellectual property litigation. From 1996 to 1998, Chen served as a technical assistant at the Federal Circuit, performing the functions of a staff attorney.
He next joined the PTO and has represented the agency before the Federal Circuit often during his tenure. He argued over 20 cases, highlighted most recently by his advocacy on patent eligibility in In re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d 1385 (Fed. Cir. 2008) (en banc) (77 PTCJ 4, 11/7/08), In re Comiskey, 554 F.3d 967, 979, 89 U.S.P.Q.2d 1655 (Fed. Cir. 2009) (77 PTCJ 266, 1/16/09), and In re Nuijten, 500 F.3d 1346, 84 U.S.P.Q.2d 1495 (Fed. Cir. 2007) (74 PTCJ 631, 9/28/07).
He has also provided legal advice to the PTO on new regulations and examination guidelines, many of which followed Federal Circuit and Supreme Court decisions, such as these, in which he played a key role.
Chen has co-chaired the Patent and Trademark Office Committee of the Federal Circuit Bar Association and is a member of the Federal Circuit's Advisory Council.
Hughes first joined the DOJ's Commercial Litigation Branch in 1994 as a trial attorney, and became deputy director in 2007.
Hughes received a bachelor's degree from Harvard College in 1989 and completed a joint degree program with Duke University, earning both a law degree and a master's degree in English in 1992. After graduating from law school, Hughes clerked for Judge Robert B. Krupansky of the U.S. Court of Appeals for the Sixth Circuit.
He has represented the DOJ before the Federal Circuit on a number of occasions, though none related to patent issues. According to the administration's statement, “Throughout his career with the Department of Justice, Hughes's practice has been devoted to matters of federal personnel law, veterans' benefits, international trade, government contracts, and jurisdictional issues regarding the United States Court of Federal Claims.”
Those issues all fall within the suite of matters handled by the Federal Circuit.
Taranto was first nominated to the bench in November 2011, and the Judiciary Committee approved his candidacy after a noncontroversial hearing in February 2012 (83 PTCJ 645, 3/9/12; 83 PTCJ 762, 3/30/12). However, his nomination never made it to the full Senate floor.
Obama resubmitted his name Jan. 4 (85 PTCJ 347, 1/11/13).
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) (70 PTCJ 258, 7/1/05).
By Tony Dutra
Taranto's responses to the Judiciary Committee's questionnaire are available at http://pub.bna.com/ptcj/TarantoQuestionnaire.pdf.
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