Fordham 25 (Report 6): The Judges

Brad Smith at last night's Gala Dinner

After an incredible night at the gala dinner, where the AmeriKat's new IP idol, Brad Smith (Microsoft), delivered and incredible an emotive speech on the stories of innovation, IP and society that makes our field so unique and exciting, Day 2 of the Fordham conference got into swing.  The AmeriKat, rarely a morning Kat, did not make it to the sunrise sessions but she prowled in for the ever popular view from the judges session with a smattering of trivia and more serious issues.

Mr. Justice Arnold (Chancery Division, High Court) recalled working with both Robin Jacob and Christopher Floyd when they were all barristers. He enjoys cooking, but within his job, he finds it fascinating rather than "fun" with the most interesting area being trade marks.  He agreed that the most challenging area in IP law right now is copyright because of the impact of the caselaw of the CJEU and because of the extensive technological developments in the tech sector.  It is difficult to find consistent principles in the decisions of the CJEU on copyright, in part because the problems they are addressing are not simple.  He expected that over time the CJEU caselaw would be refined through dialogue with the national courts, just as it had been in the area of trade marks.  He commented that all supreme courts, including the UK Supreme Court, found IP cases challenging, in part because they do not have a specialist IP background.

Hon Annabelle Bennett (Chancellor, Bond University) considers that patent law is changing the most.  When asked what annoys her the most about advocates it was lawyers who do not answer the question.  It is also not okay to be interrupted by advocates.  Judges get to do the interrupting.

Hon. Annabelle Bennett

Mr. Justice Birss (Chancery Division, High Court, London) commented that occasionally when judges from other divisions (who do not handle IP cases) get together they talk about the cases they are doing.  When some of his colleagues who do not do IP cases hear about what is preoccupying his attention in court, they think that Mr Justice Birss's cases are incredibly interesting.  That is because it is!  The subject matter - be it an invention, a product or a service - is incredibly interesting.  In answer to whether everyone can become a patent lawyer, Mr Justice Birss commented that you don't have to have a science degree to be a great patent lawyer.  A lot of great patent lawyers do not have science backgrounds.  A lot of great copyright lawyers, are scientist.  There is no predetermination as to whether someone is going to be a great IP lawyer by virtue of their background.

Hon. Edger F. Brinkman (Court of The Hague, The Hague)  spent a year in the Court of Appeal but has returned to first instance and much prefers being a trial judge.  He missed the freshness of the cases and (like Rian) the vibrancy and speed of summary proceedings that can be completed in just a few weeks.  His preference is for patents, especially pharmaceutical patents, which remind him of his chemistry background.  He enjoys the trials themselves most, and very much likes asking "trick" questions - he is most annoyed when advocates know the answer!  He is in favour of specialist courts, but queried whether judges should stay on those courts for the entirety of their careers.   

Lord Justice Floyd (Court of Appeal) said that the Chancery Division is very interesting.  He said that is where he had the most fun.  He considers that the US Supreme Court practices, with the greatest respect to them, are verging on the anti-patent side.  It is very difficult for non-specialist courts.  He considers that trade mark cases are the most fun, including the Kit-Kat case and color trade mark cases, which are pushing the limits of protection to trade mark law.

Hon. Dr. Klaus Grabinski (German Federal Supreme Court) commented on a question on amicus briefs: the German courts have no concept of these submissions and would simply send them back!  Arnold J commented that the UK Supreme Court receives increasing numbers of interventions and welcomes them.

Hon. Gordon Humphreys  (Chairperson of the Fifth Board of Appeal, European Union Intellectual Property Office) explains that decisions should be consistent and if there is a variance in decisions then they should refer it to the Enlarged Board.  This is happening increasingly. In the past year there have been 3 referrals and there are two pending.

Sir Robin Jacob (Faculty of Laws, University College London) responded to a question on allowing new evidence at appeal level.  He felt that this rendered the appeal stage a new hearing rather than being a true appeal - parties should bring all of their case, and make it their best case, at first instance. 

Judge Rian Kalden

Judge Rian Kalden (Court of Appeal of The Hague) relished her work as a first instance judge, particularly enjoying fast, summary proceedings, but on the other hand likes the additional time for reflection that that appeal court benefits from.  She sees copyright as a key area of development and noted that the CJEU has recently begun to take an interest in this area.  Her advice for advocates is to avoid verbosity in written arguments where that is not strictly necessary.

Maria Eugénia Martins de Nazaré Ribeiro (Formerly Judge of the General Court of the European Union, Luxembourg) has spent 30 years at the General Court, although she didn't initially mean to be a judge.

Hon. Pauline Newman (U.S. Court of Appeals for the Federal Circuit, Washington, D.C.) said her work in private practice was more "fun", but the job of a judge was very interesting.  On the appellate side, the argument is always full of tension and drama.  However, that comes with the obligation to try to find the "right" answer - she didn't necessarily call that "fun".  She thinks that the developments in the IP field reflect what is happening in the nation more broadly - the evolution of the tech sector is driving not just GDP and international development, but also the growth in the patent litigation business.  Patent litigation is no longer the sleepy boutique practice it was when she entered it, it is now a hugely interesting and dynamic area.  The tech sector has also driven huge developments in copyright law, and perhaps that is more fun!

Judge O'Malley

Hon. Kathleen M. O’Malley (U.S. Court of Appeals for the Federal Circuit, Washington, D.C.) read Gideon's Trumpet when she was 13 and that is when she knew she wanted to be a judge. She says that you are never really ever prepared to be a judge until you get on the bench and do it.  The experience of being a trial judge is the best preparation. She likes first principles - analyzing jurisdiction, procedure and separation of powers.  Sometimes they come up in patent law but they often come up in all cases and that is what she enjoys the most.  Congress went out of the way not to create a specialist court as they wanted the judges to have a general court experience.  About half of those on the Federal Circuit have technical background but everyone is equipped to deal with science.  She considers that IP is becoming much more global and noted how often judges refer to foreign precedents.

Hon. Gerard Rogers Chief Judge (Trademark Trial and Appeal Board, U.S. Patent and Trademark Office) was formerly an interlocutory attorney in the Court, which he remembered being a very satisfying role as it involved so much control over the procedural path of the cases, shepherding them through discovery and up to trial.  The work of the chief TTAB judge involves hearing fewer cases.  He always wanted to be a journalist rather than a lawyer (having graduated in the Watergate era), and particularly enjoys the writing of the decisions.  In response to a question about the value of oral argument, he noted that the TTAB only hears oral argument in around 15% of cases.  This low value is  partly due to the nature of many decisions being ex parte appeals of examiners' decisions where the record is already highly developed.  However oral argument is still important in cases where the goods or services diverge from regular, consumer goods and the Board needs additional help to understand the nature of the case.

Hon. Misao Shimizu (Intellectual Property High Court, Tokyo) has heard a broad variety of cases, including family and tax law, as well as IP.  His court now hears 50% patent, 25% trade mark, and 25% copyright cases and he enjoys patent cases the most.  He is looking forward to hosting a pan-Asian IP conference in the autumn at which judges from several Asian countries will exchange experience and hold a mock IP trial.