By Dani Kass

Law360 (February 26, 2021, 7:55 PM EST ) Federal Circuit Judge Raymond Chen on Friday said he's concerned some attorneys aren't taking remote oral arguments in front of the court as seriously as in-person hearings and urged them to grant the proceedings the same degree of gravitas.

Even if you're not flying to Washington, D.C., and staying in a hotel to "be in the arena" with a panel of Federal Circuit judges, Judge Chen said you should still prepare like you were.

"Make sure you do a moot court and you [have] a great set of moot court judges thoroughly testing you on all of your hardest points, your weakest points, to make sure that you're as prepared as you can be," he said at a virtual Southern Methodist University Dedman School of Law event. "Especially [have] great familiarity with the joint appendix and all of the relevant case law at your fingertips. It's going to come up at the phone argument. You need to have all that right there in front of you and be ready to respond."

Judge Chen said "by and large" attorneys are doing well with the remote arguments, even if it's not an "optimal" situation for anyone. He added that if the Federal Circuit had realized that going remote was going to be a long-term change, they might have switched to video arguments, rather than sticking to phones.

"We thought we could just skate by with a few months of telephone arguments, but now it's gotten to about a year," he said.

In the conversation with Haynes and Boone LLP associate Angela Oliver, Judge Chen also noted how "strange" it was to not have been in a courtroom or seen his fellow judges in close to a year, but said he's "gotten to know my dog really well."

At SMU Law's "Emerging Intellectual Property Issues: The America Invents Act @ 10 Years" event, the judge talked through his career, patent trends coming out of courts and the PTAB, and advice for current and future lawyers.

Judge Chen was driven into electrical engineering by his family, even though he didn't like it and claimed to be not very good at it, so he saw patent law as an escape into a brighter future.

He started his law career as an associate at Knobbe Martens, before becoming a technical assistant at the Federal Circuit, an associate solicitor at the U.S. Patent and Trademark Office and finally deputy general counsel for the agency. Former President Barack Obama put him up for the judgeship in 2013. 

"For the first couple of years here, I did not feel comfortable here because I was still relatively young," the 52-year-old said Friday. "I was in my 40s when I joined the court, and I literally grew up in this career appearing in front of these judges."

"I had always looked to these judges like they were the golden gods of patent law," he continued, "and now they wanted me to think of them as a co-equal, and actually psychologically that was really hard for the first year or two. I did not want to call Judge Lourie 'Alan,' I did not want to call Judge Newman 'Polly.' That made me sick to my stomach to even think about doing it. It was an adjustment for sure to no longer look at them as above me and try to figure out a way to be comfortable with seeing them see me as a co-equal of them."

In a similar vein of fitting in with more experienced attorneys, Judge Chen advised law students listening in to get out of their comfort zones while still in law school, whether it involves public speaking, doing a clinic or a specific class.

"This is what happened to me after law school, you gain more self confidence," he said. "And you think, 'OK, I might be younger than a lot of the other lawyers in the room, but I have my own abilities, and I've already stress tested myself in a few ways, and this might be a new situation for me, but I'm pretty sure I can get through it just like I got through those other situations while I was in law school.'"

Judge Chen's biggest pieces of advice to win before his court were to "win below" and to "not mischaracterize the record or the precedent." For the former, he said the court is generally disinclined to flip lower court decisions "unless there is a very clear mistake."

"We're really more inclined to find legal error than fact-bound error," he said.

And for the latter, he said mischaracterizing won't necessarily doom the client's case, but it will hurt the lawyer's reputation with the court.

"We will find you, and when we find you, we'll be very disappointed," he said. "I have a long memory. You don't need to do that to yourself."

Turning to patent law specifically, Judge Chen expressed frustration about the fact that the Patent Trial and Appeal Board and district courts used different claim construction standards until recently, since it can put Federal Circuit judges in the position of having to uphold differing claim constructions for the same term.

"As a judge, you worry that a claim term is getting twisted like a nose of wax in the sense that it can mean two different things in two different proceedings," he said, before throwing his support behind the PTAB's recent alignment to the standard used by district courts.

He added that when the PTAB decides to use a claim construction different than the ones advocated for by the parties, he should give them the opportunity to submit supplemental briefing before issuing a final written decision.

Judge Chen said both courts and the PTAB are issuing "quality work" determining whether patents are valid, with district courts focusing a bit more on case law and the PTAB focusing more on prior art.

"We're seeing some careful, well-thought-out opinions, providing a lot of reasoning and a lot of exploration of the evidence," he said of both forums.

Among his other advice, Judge Chen encouraged patent attorneys to get to know administrative law really well, noting that the judges on his court are always thinking about it given the type of agency work that comes before them.

"Today, to be someone that is working in patent board proceedings and then appeals from patent board proceedings to the Federal Circuit, I think you have to be great at patent law. But you also have to be great at admin law," he said. "You need to think of yourself as an administrative law expert as well."

He also encouraged attorneys to be creative in their arguments by not limiting themselves to patent law and to pay attention to what's happening at the admin-law heavy D.C. Circuit

--Editing by Michael Watanabe.

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