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Valley's Patent Bar Hears From New Federal Circuit Chief

The Recorder

Sharon Prost wasn't expected to become chief judge of the Federal Circuit. Had former chief Randall Rader served out his entire term, rather than step down unexpectedly last spring, Prost, 64, would have been too old to qualify.

"I didn't have the best part about being chief judge—everybody knowing you're going to be chief judge, but not having to do the everyday work," Prost joked Thursday at a Silicon Valley conference on patent law.

Prost has led the U.S. Court of Appeals for the Federal Circuit for six months now. She talked about leading the court —and the scrutiny it has been getting from the U.S. Supreme Court—at a conference jointly sponsored by the Berkeley Center for Law and Technology and the Stanford Program in Law, Science and Technology.

Taking questions from Keker & Van Nest partner Matthias Kamber, her former clerk, the chief judge admitted to being something of a Supreme Court geek. She not only reads the opinions in every Supreme Court case, she reads all of the oral argument transcripts as well.

Prost was an attorney for the Senate Judiciary Committee for many years, and has been a Federal Circuit judge since the early 2000s. Still, it was a big deal for her to participate in her first meeting of the U.S. Judicial Conference, the governing body of the federal judiciary, with other chief judges and justices, including John Roberts. "I had to prepare. What if I'm called on by the chief justice?" she recalled thinking. Since then she's grown more comfortable with the role.

Over the last several years the high court has been reviewing, and reversing, more Federal Circuit patent decisions. Prost cited a few possible reasons. Patents are becoming more important to the economy and the law is evolving rapidly to keep up with changes in technology. In addition, Congress has charged the Federal Circuit with bringing predictability and uniformity to patent law, so she and her colleagues naturally strive to create bright-line rules the patent bar can rely on. The Supreme Court "let us have our ride for awhile, which I think is fair and understandable," and now the court may be trying harder to bring Federal Circuit law in line with other regional circuits.

"Fair enough," Prost said, though she sees an "inherent tension in what's going on here."

She said she would prefer to see fewer unanimous reversals from the Supreme Court, because dissenting opinions and separate concurrences can help tease out the boundaries of the court's guidance. "We really care about and want to follow their instruction," she said, so "I'm a little disappointed sometimes that there's not more of a dynamic exchange" among the justices.

Prost said she's been devoting about 30 percent of her time to management and administrative issues. She has the option of reducing her caseload up to 25 percent, but has chosen not to so far.

She said she's not a big fan of en banc review of cases because the process doesn't often lead to more consensus on difficult issues. She also described herself as a "convert" to the value conferred by international judicial conferences, after participating in exchanges held in Japan, China and Korea. She credited her predecessor, Rader, with taking an active role in that area, but said she doesn't expect to participate as frequently as he did.

"I don't have the energy former Chief Judge Rader had," she said, "and never will."