Taranto Approved by Judiciary Committee, Nominee Now Awaits Full Senate Approval

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The Senate Judiciary Committee on March 29 approved the nomination of Richard G. Taranto and reported the nomination to the full Senate.

If confirmed, Taranto will take the 12th seat on the U.S. Court of Appeals for the Federal Circuit.

Taranto, who is currently practicing with Farr & Taranto, Washington, D.C, would take the seat left vacant when Chief Judge Paul R. Michel retired in May 2010.

Initially the committee was set to vote on Taranto during a March 15 markup. However, that meeting was postponed because the committee lacked a quorum. No Republicans other than Sen. Charles E. Grassley (R-Iowa), the ranking minority member, were present for that meeting, leading Sen. Leahy (D-Vt.), the committee's chairman, to conclude that the Republicans were “boycotting” the meeting.

Leahy renewed that charge March 22 after Grassley was again the only Republican to attend the 10 a.m. meeting. Grassley, however, said that he was not aware of any boycott, and he and Leahy agreed to try to get an off-floor vote, and to reconvene the meeting at 12:30 p.m. on that day. At that meeting, Taranto's nomination was once again held over and the committee agreed to reconvene on his nomination at the next business meeting.

On March 29, the committee quickly achieved a quorum after its 9:30 a.m. scheduled starting time and Leahy offered to open the discussions regarding several judicial nominations, but Grassley replied immediately that Taranto's nomination could proceed by voice vote.

Leahy called for ayes and nos and the nomination was approved despite one no vote by Sen. Michael S. Lee (R-Utah).

Taranto Nominated in November.

President Obama nominated Taranto for the bench Nov. 10.

“Richard Taranto is a lawyer of exceptional legal ability and great personal and professional integrity,” Obama said in a White Houses press release. “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.”

New York native Taranto, 54, is an appellate and Supreme Court attorney 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 in 1981-1982; for Judge Robert H. Bork at the U.S. Court of Appeals for the D.C. Circuit from 1982-1983; and for Justice Sandra Day O'Connor of the U.S. Supreme Court in 1983-1984. He was assistant to the solicitor general from 1986-1989 and worked at Onek, Klein & Farr before joining the firm in which he is a named partner in 1991.

Little Controversy at Nomination Hearing.

There was little controversy during a Senate Judiciary Committee hearing Feb. 29.

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

During that hearing, Sen. Alan S. Franken (D-Minn.) asked about Taranto's clerkship with Supreme Court Justice Sandra Day O'Connor. Grassley 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, and Lee tried to get Taranto to indicate whether he “gravitated” toward either textualism or intentionalism.

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 USPQ2d 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 USPQ2d 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 USPQ2d 1481 (Fed. Cir. 2008).

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 LP, 76 USPQ2d 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 made an important decision against his client in a case involving a $390 million damages award. Bard Peripheral Vascular Inc. v. W. L. Gore and Associates Inc., 101 USPQ2d 1641 (Fed. Cir. 2012). 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.

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