LSIPR 50 2018: Raymond Chen and Kathleen O’Malley

Name: Raymond Chen and Kathleen O’Malley

Organisation: US Court of Appeals for the Federal Circuit

Position: Circuit Judges

In 2010, at the age of 54, Circuit Judge Kathleen O’Malley was appointed by President Obama to the US Court of Appeals for the Federal Circuit; she was the first judge on the Federal Circuit to have previous experience as a District Court Judge. Circuit Judge Raymond Chen is the second Asian-American judge to sit on the Federal Circuit (the first being Shiro Kashiwa), and upon his appointment he was the youngest serving appellate court judge in the US.

O’Malley has consistently formed her own views on judicial matters—she has not been swayed by the majority or status quo when decisions regarding patents hang in the balance.

In her first patent opinion as a full member of the Federal Circuit in 2011, Abraxis BioScience v Navinta, O’Malley dissented. She said the original panel had wrongly created special federal rules to govern the assignment of patent rights. She argued that they should instead have relied upon the usual rule that state contract and property laws govern the assignment of patent rights.

In October 2017, she played an instrumental part in the In re Aqua Products decision. Her opinion recommended an easier process to amend patents in America Invents Act reviews. The Federal Circuit found that the petitioner challenging a patent’s validity has the burden of demonstrating that proposed amendments are unpatentable, reversing US Patent and Trademark Office (USPTO) rules in this area.

Similarly, Chen did not let his youth hinder his work on the bench. Last November, he delivered judgment in Life Technologies v Promega, reversing the Federal Circuit’s earlier finding that the supply of a single component of a multi-component invention for manufacture abroad constitutes patent infringement. The matter had been returned to the Federal Circuit following a contrary ruling at the Supreme Court.

Advocating and educating

Throughout her career, O’Malley has been an advocate of judicial authority in handling patent litigation, urging Congress to direct more resources to the courts. She even made the controversial suggestion of using USPTO funds to increase the number of law clerks for judges at district courts deciding patent cases.

Alongside her judicial responsibilities O’Malley is a keen educator. She has taught courses on patent litigation at Case Western Reserve University Law School, as well as being a member of the Dean’s advisory committee. She is part of a programme at Berkeley Center for Law and Technology, which educates federal judges on the handling of IP cases.

O’Malley has served as an advisor to organisations publishing treatises on patent litigation, such as “The Anatomy of a Patent Case”, by the Complex Litigation Committee of the American College of Trial Lawyers. She was also asked to rewrite the “Manual for Scientific Evidence”, a joint project between the Federal Judicial Centre and the National Academy of Sciences.

Chen previously served as deputy general counsel for USPTO. At the USPTO he represented the office at the Federal Circuit, personally arguing more than 20 cases. He also issued guidance to patent examiners and advised the office on any relevant law and policy issues.

Chen was influential in determining the position that the US took as an amicus in IP cases before the Supreme Court and the Federal Circuit. In patent eligibility matter In re Bilski he successfully defended the USPTO’s denial of a patent application for a method of hedging risk in trade before the Federal Circuit en banc—a decision which was upheld by the Supreme Court in 2010.

Chen also assisted the US government in formulating its position in Microsoft v i4i Partnership. The case addressed the issue of the burden of proof required in order to overcome the presumption that a patent is valid; the Supreme Court decided in favour of the government’s position.

In 2011, Chen was awarded the Gold Medal Award by the US Department of Commerce, recognising his service at the USPTO in relation to his role in In re Bilski.