Federal Circuit Judge Kathleen O'Malley to retire next March

The United States Court of Appeals for the Federal Circuit is seen in Washington, D.C., U.S., August 30, 2020. REUTERS/Andrew Kelly
  • O'Malley appointed by President Obama in 2010
  • Retirement creates second vacancy on Fed Circ during Biden administration

July 28 - U.S. Circuit Judge Kathleen O'Malley of the Court of Appeals for the Federal Circuit will retire next March, according to a list of future judicial vacancies on the U.S. Courts website.

O'Malley, 64, was appointed to the patent-heavy court by then-President Barack Obama in 2010, and was previously a judge at the U.S. District Court for the Northern District of Ohio after being appointed by then-President Bill Clinton in 1994.

Jeanne Gills, an IP partner at Foley & Lardner, said in an email that she was "a little surprised" at the news, considering O'Malley's relative youth and relatively short 11-year tenure.

O'Malley's retirement gives President Joe Biden the chance to choose a second judge for the court, and makes the Federal Circuit the first federal appeals court to have had two vacancies during his presidency.

Another Biden nominee, former Perkins Coie IP litigator Tiffany Cunningham, was confirmed by the Senate on July 19, and will be the first Black judge in the court's history.

The Federal Circuit is the only appellate court that hears patent cases. They make up over half of the court's docket, but it also has nationwide jurisdiction over fields including international trade, government contracts, and trademark law.

The court's clerk's office declined to comment on O'Malley's retirement.

Before becoming a judge, O'Malley was an assistant attorney general for the State of Ohio and practiced at Jones Day and Porter Wright Morris & Arthur, focusing on complex commercial and IP litigation. She also clerked for Circuit Judge Nathaniel Jones of the 6th U.S. Circuit Court of Appeals, and received her law degree from Case Western Reserve University and undergraduate degree from Kenyon College.

Shayon Ghosh, a patent attorney at Williams & Connolly who clerked for O'Malley, said in an email that O'Malley is "brilliant, hardworking, and astute," and "a gifted and prolific writer" who "has never been shy about speaking her mind."

O'Malley is the only active Federal Circuit judge with experience as a district court judge, which showed in her rulings, said Joe Matal, an IP partner at Haynes & Boone who has also served as the U.S. Patent and Trademark Office's Acting Director and Acting Solicitor.

"The Federal Circuit is so heavily dominated by patent cases and patent lawyers, -- it gets a little inbred," Matal said. "It's good to have a deep knowledge of those other legal principles, and it helps keep patent law aligned to have people on the court who are familiar with the breadth of the law."

O'Malley's most notable opinions include rulings for Oracle in a multi-billion dollar copyright dispute with Google, finding in 2014 that Oracle's Java API was copyrightable and in 2018 that Google didn't make fair use of it in the Android operating system. The U.S. Supreme Court overturned the latter ruling in April, finding Google made fair use of the software code.

Matal also cited an O'Malley opinion from earlier this month in a case involving Sony that laid out the requirements to plead a patent infringement case as "one of those opinions that's going to be, in the future, one of the go-to opinions" on the subject.

The U.S. Courts website says O'Malley will retire on March 11, 2022.

(Editor's Note: This story has been updated with comments from lawyers.)

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Blake Brittain reports on intellectual property law, including patents, trademarks, copyrights and trade secrets. Reach him at blake.brittain@thomsonreuters.com