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Federal Circuit judge speaks at PatCon4 on rise in IP issues

There's nothing quite like having your work reviewed by the U.S. Supreme Court.

That's the position Judge Kathleen O'Malley finds herself in as a member of the U.S. Court of Appeals for the Federal Circuit, whose decisions are increasingly being looked at by the nation's highest court.

"We're now in a world where people run to Congress to complain about what we do or run to the White House," she told intellectual property attorneys and professors Friday at the University of San Diego.

"We even have the president referring to patent reform and patent litigation abuse in the State of the Union address. And now we're in a world where the Supreme Court is grading our papers. That's some pressure," she said.

O'Malley was in town to give the keynote address at USD's fourth annual patent law conference, PatCon4. The two-day patent law conference included experts from the academic and private sectors, and featured a debate on so-called “patent trolls.”

She said she understands why the Supreme Court is deciding to hear so many cases involving patents and intellectual property.

"I think it's just as simple as the fact that the issues have become more important to our economy," O'Malley said. "The Supreme Court understands that the issues are important and there's a lot of interest in them."

She also welcomes the justices' interest in patent law, asking only that they provide some guidance to the Federal Circuit on how those cases should be reviewed.

"The more guidance they can give us, the better," O'Malley said, "so that we can move forward and not have debates over things like 'standards of review' or 'what constitutes patentable subject matter.' The clearer their answers to us can be, the better."

One area in which the Federal Circuit court is looking for direction is whether it can review de novo (anew) the factual aspects of a claim construction decision by the district courts.

"We said that construing patent claims was like construing a statute, so there may be background facts but that's nothing like findings of fact," O'Malley said, referring to a previous Federal Circuit opinion. "And we said de novo review would foster uniformity in the patent system, and that's what the Federal Circuit is all about."

She said even if the Supreme Court disagrees and determines that the appellate court must review the factual components of a lower court's decision for clear error, it would be helpful.

"It would provide a framework that would encourage trial courts to focus on, and explain, their conclusions -- both factual and legal," O'Malley said. "And it would incentivize counsel to structure their presentation so as to differentiate their factual and legal arguments. And it would give the Federal Circuit that guidance, so we wouldn't be struggling, not just over what our standard of review should be, but what's finding of fact and what's not."

O'Malley, who was appointed to the Federal Circuit by President Barack Obama in 2010, spoke about her transition from the district court bench.

She said didn't realize how much scrutiny appellate court decisions get as opposed to trial court rulings.

"You say something or an opinion goes out, and within minutes, it is across the blogosphere," she said. "As a district court judge, your judgments are scrutinized. As a court of appeals judge, it's not just your judgments, but how you phrase your judgments that get scrutinized."

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