A Conversation with Donald R. Dunner
(Appeared in Washington Lawyer, November 2009)
In 50-plus years in the legal profession, attorney Donald R. Dunner has come to be regarded as one of the world’s leading experts on patents. Dunner, a partner at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP—the world’s largest intellectual property law firm—has worked in every aspect of patent law and argued more cases before the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) than any other litigator in the country. Dunner also was involved in the early years of the Federal Circuit, having served as chair of the Advisory Committee to the court during its first 10 years and participated in drafting the court’s rules.
Over the course of his career, Dunner also has been involved in numerous legal associations such as the American Academy of Appellate Lawyers, American Bar Association (ABA), American Patent Law Association (which later became the American Intellectual Property Law Association), Bar Association of the District of Columbia, District of Columbia Bar, and National Council of Patent Law Associations. He has coauthored several books and teaches a course on federal circuit practice at The George Washington University Law School.
D.C. Bar staff writer Kathryn Alfisi talked with Dunner about his childhood, including his love of the Brooklyn Dodgers, his journey into patent law, and the relevance of the Federal Circuit.
Tell me about your childhood. Where did you grow up? I grew up in Brooklyn, New York; I spent the first 17 years of my life there.
I lived with my mother and sister, and we did not have a ton of money. We had no cars, and the only thing I knew about the geography of Brooklyn was where the subway and elevated trains stopped in the New York City transit system. I only knew that if you took a train, you would end up in Coney Island or at some other location in the city. I managed to be born at a perfect time, 1931, which meant I was too young for the second World War, and I was in college during the Korean War. I went into the Army about five days after the Korean Armistice Agreement was signed.
I have many memories of my childhood in Brooklyn. Since my parents were divorced, we did not take many vacations, but I did manage summer stays at the Atlantic seashore with paternal grandparents and in the upstate New York mountains with an aunt’s family. Beyond that, it was attending school, playing stickball or other games in the Brooklyn streets, and occasionally getting into softball or football games on the school playground. Since I was not a very good athlete, it was often necessary for me to bring the softball or football to assure my participation.
Coming from Brooklyn as I did, there was much interest in the Brooklyn Dodgers as they were then called. Visits to Ebbets Field were a big treat, and I spent much time reading the morning paper and boning up on the latest Dodger statistics. Indeed, I have vivid memories of various events (mostly negative) in Dodgers history, such as when Mickey Owen, the Dodgers catcher, dropped a third strike that would have favorably ended a World Series game for the Dodgers. But the game ultimately was won by the then hated New York Yankees—although I have since mellowed in my attitude toward the Yankees now that the Dodgers have fled to Los Angeles. I also will never forget Bobby Thomson’s home run against the Brooklyn Dodgers that won the pennant for the New York Giants.
Since my parents were divorced and my mother worked full time, I spent considerable time with my older sister, who not only acted as a surrogate mother when my mother was not around, but who used me as an effective decoy when she wanted to sneak off with her favorite boyfriend, whom she ultimately married.
I was a child during World War II. Though I do not have many detailed recollections about the war years, I can remember exactly where I was when we declared war on Germany, and I can well recall that we had a victory garden. It was a custom at that time to grow a garden to supplement your family’s food supply. The garden was in our tiny, postage-sized backyard, and my entire crop consisted of four radishes. Today, I have a tiny, 33-plus acre farm on the Eastern Shore of Maryland where I grow corn and soybeans. I thoroughly enjoy watching the corn and soybeans grow even though I do not make very much money on it. However, it brings back fond memories of the four radishes.
My most vivid recollection of the war years was knowing where I was and the time of day when I received news of the death of President Franklin D. Roosevelt, the only president I knew of during my entire childhood. His death came as a complete shock to me, as it did to others in Brooklyn and the rest of the country.
What about your schooling?
I went to public schools all the way up through junior high school. When I was ready to go to high school, I took an examination to get into a specialty school, Stuyvesant High School, which was science-orientated and one of the best high schools in New York City, with no geographical limits on students who were admitted. Stuyvesant is still a very well-known school, which includes among its alumni [U.S. Attorney General] Eric H. Holder Jr. (Class of ’69), [Senior Advisor to President Barack Obama] David Axelrod (Class of ’73), several Nobel Prize winners, and other nationally renown figures such as Bob Weinberg, former partner at Williams & Connolly LLP, who was first in our class of more than 600. I saw a recent alumni magazine with a photo of a young Eric Holder and a young David Axelrod, which I found rather amusing. Holder looked exactly like he looks now but younger, and Axelrod had long hair all the way down to his shoulders, very different from what he looks like now.
Stuyvesant at the time had about 5,000 or 6,000 students in a single brick building, much like Georgetown University Law Center, which I attended in the mid- to late 1950s. As a result, Stuyvesant students went there in shifts: first- and second-year students attended in the afternoon, and third- and fourth-year students attended in the morning. To make money, I worked afternoons as a “runner” on Wall Street during my third and fourth years. During that same period, I ended up editing the Stuyvesant yearbook.
Attending Stuyvesant ultimately led me to Purdue University, where I majored in chemical engineering. Purdue was a very good time in my life. I joined a fraternity early on and eventually became president of it. I was also very active in student government. I ran for freshman class president; I did not get elected, but I persevered and was successful in my run for sophomore class president. I also ran successfully for student body president. These ventures into student government gave me considerable practice and experience in public speaking, which, in turn, led to my interest in the legal profession.
Though I studied engineering and spent a few months after graduation as an engineer-in-training with The Inland Steel Company in Chicago, I knew pretty quickly that I did not want to do that as a career. The work I had done in student government convinced me that law would suit my talents and interests, and since I had an engineering background, patent law became the logical choice for me. Before I went to law school, though, I spent two years in the Army where I was stationed at Fort Dix in New Jersey and helped orient new trainees coming into camp.
As soon as I got out of the Army, I applied to Georgetown because I knew I wanted to be in Washington, D.C., and work in the U.S. Patent and Trademark Office. I, accordingly, attended Georgetown at night and worked as an examiner at the Patent Office during the day. After working in the Patent Office for one year, I heard that there was a clerkship open at the U.S. Court of Customs and Patent Appeals (which later merged with the U.S. Court of Claims and became the U.S. Court of Appeals for the Federal Circuit), and I applied for the opening. Noble Johnson, who was the chief judge [of the Court of Customs and Patent Appeals] at the time, was a former Indiana congressman, and I think he liked the fact that I went to Purdue, which is located in West Lafayette, Indiana. Like other judges of the court at that time, Judge Johnson hired law students as clerks, and I spent my last two years of law school clerking at the court. Since the Court of Customs and Patent Appeals handled all appeals from the Patent Office, I received a very liberal education and assisted in drafting opinions for the judge. The court clerkship, supplemented by the superb training I had received at the Patent Office, was probably as instrumental as any other experience I had up to that time in shaping my career. It also led me to some very good job opportunities.
What kind of relationship did you have with Judge Johnson?
By the time Judge Johnson had become chief judge, he had reached the point where he relied very heavily on his law clerks, though he obviously had the ultimate decision-making power. Since the Court of Customs and Patent Appeals judges sat en banc as a five-judge court, Judge Johnson participated in all cases before the court, which included not only patent and trademark cases from the Patent Office but customs cases from the U.S. Customs Court (now the U.S. Court of International Trade) as well. Our modus operandi was for me to brief Judge Johnson about each case before argument and then, after oral argument, he would tell me what the tentative decision was and ask me to draft an opinion. Occasionally, I disagreed with the decision that had been reached, and I would try to convince Judge Johnson that the opinion should go a different way. With two exceptions, I was able to do that, and in those two cases he wound up writing a dissent.
What did you do after graduating from law school and finishing
I went to work at a very small firm in the District of Columbia called Strauch, Nolan and Neale, primarily because I got to know a former law clerk of Judge Johnson who worked there, and he was instrumental in hiring me.
The very first case I was ever given at my new firm had to do with a will and nothing to do with patent law. The only thing I knew about wills was what I learned at Georgetown, which hardly made me an expert on the subject. The case turned out to be an impossible assignment, especially for someone with my particular background. I remember spending more hours than I can count, and that most of that time was nonbillable. But that was the only time I did anything like that, the rest of my work dealt with patent and trademark law issues. Needless to say, my law clerk experience led me into a considerable amount of brief writing, which paid handsome dividends later on in what became an extensive appellate practice.
I worked at that firm from 1958 to about 1960 and was then offered a job at Diggins & LeBlanc where Bob LeBlanc, another former Judge Johnson clerk, worked. There were only about six lawyers at the firm, but they had wonderful work—a lot of appellate work, a lot of litigation—and I loved that. It was my first real entreé into appellate work and the world of patent appeals, in which I am now heavily involved. At this point, I have argued more patent appeals—more than 130—than any other lawyer in the country.
What about the appellate work appeals to you?
Appellate work is extraordinarily challenging and interesting. The issues presented, legal and otherwise, are extremely varied and often of tremendous significance both to the clients and the profession in general.
Beyond that, it is a very civilized practice. It is very different from litigation, which I also like but in a different way. When you are involved in litigation, you work 18- or 19-hour days and hardly sleep during a trial. On the other hand, in appellate work, while you can work long days, you can still find time for sleep. You do not get the same highs and lows in appellate practice that you get in litigation, which can be like a roller coaster. In appellate work, the cases take a matter of months rather than years, you end up working hard to prepare and make an oral argument, and you get your highs in 15-minute doses.
How long did you work at Diggins & LeBlanc, and what did you
do after you left?
I worked at Diggins from about 1960 to about 1962, when the firm folded because Diggins and LeBlanc parted ways. I vividly recall walking through downtown Washington, in the rain on the day I learned of the firm’s collapse, wondering how I was going to support a wife and two small children. The answer came shortly thereafter when I was asked to join two colleagues of mine who had a two-person firm called Lane & Aitken. My colleagues had more work than they thought they could handle so they offered to take me in as a partner, and renamed the firm Lane, Aitken & Dunner (later renamed Lane, Aitken, Dunner & Ziems). When I went to that firm, however, all of the clients I worked for at Diggins & LeBlanc came with me, and I ended up doing work for all my own clients.
At that point in my career, I started to get heavily involved in bar association work and in writing and speech making. I developed a friendship with Jim Gambrell, a professor at New York University School of Law who I met at a speaking engagement at John Marshall Law School in Chicago. Professor Gambrell introduced me, in turn, to another professor named Irving Kayton, who was head of the patent law program at George Washington.
Irving Kayton was a larger-than-life type of guy who was very bright and had all kinds of imaginative ideas on how to teach patent law, not only in a law school setting but outside of law school. He knew I was interested in the Court of Customs and Patent Appeals, so he asked me if I would put on a two-day program at George Washington about practice before the court. I said I would, but he told me that to do this I had to write a book, so I wound up writing a two-volume treatise on Court of Customs and Patent Appeals practice. I remember working on it nights, weekends, and holidays for a little more than a year. I got some help from the Clerk of the Court of Customs and Patent Appeals, who collected forms for me for use in the treatise. I collected copies of U.S. Patents Quarterly dating to 1929 and went through every single digest to collect notes on practice issues that had been decided by the court. I had decided that this was going to be a book that covered everything, and I accordingly collected every single Court of Customs and Patent Appeals practice decision from 1929 to the time I wrote the book, which was the late 1960s. That book was ultimately published by Matthew Bender and, after the Federal Circuit was established, published as a revised text on practice before that court.
Not long after that, Professor Kayton started an organization called the Patent Resources Group, Inc., which presented courses on patent law issues. Professor Kayton had a knack for rounding up a lot of bright young lawyers to teach these courses, paying them little but promising that the exposure would lead the world of clients to their doors at some undefinable time in the future. Those promises and the location of the programs in sunny vacation spots induced many a young lawyer to participate, including me. Not long after, I began teaching an appellate practice course at George Washington, using my two-volume treatise as the course book, which I am still teaching.
In the late 1960s and early 1970s Gambrell and Kayton decided they wanted to publish a monthly review of all the meaningful patent law decisions in the United States, which at that time consisted mostly of Court of Customs and Patent Appeals cases and cases from the regional circuit courts of appeals. I joined them in working on the publication, which was picked up by Matthew Bender and ultimately became six hard-back volumes titled Patent Law Perspectives. It was a ton of work. I was convinced my two daughters would go into any career but patent law after watching me spend so much time working, but interestingly enough, they both went into intellectual property law—one is a trademark–copyright lawyer, and the other is a patent lawyer.
During that same period, I continued to give speeches, be active in bar association work, and teach at George Washington. I also started to litigate a lot in the district courts around the country and handled some appellate work.
Tell me about the events leading up to the creation of the U.S.
Court of Appeals for the Federal Circuit.
The events that led to the creation of the Court of Appeals for the Federal Circuit, and which also ended up heavily shaping my life, started much earlier than when I became involved. The idea of a specialized patent court has been around for 100 years, but there has been tremendous hostility toward it.
In the mid-1960s a well-known district court judge, Simon Rifkind, had been appointed cochair of President Lyndon B. Johnson’s Commission on the Patent System, which was asked to look at the patent system and see if it needed to be reformed and, if so, how it could be done. Judge Rifkind’s view was that specialized courts were no good because judges wound up using specialized jargon that only they understood and were not exposed to other areas of the law. As a result, the commission recommended against a specialized patent court.
Then, in the early 1970s, the Commission on Revision of the Federal Court Appellate System, chaired by Senator Roman L. Hruska (R-Neb.), was formed to look at the federal court appellate system, the concern being that the U.S. Supreme Court could only review a limited number of cases and needed some relief. There was a question as to whether there should be a court in between the Supreme Court and the Federal Circuit, sort of a mini-Supreme Court, which would filter cases from the federal appellate courts, including many that otherwise would receive no Supreme Court review.
Professor Gambrell was asked by the executive director of the Hruska Commission to do a patent study and see if there was any need for reform in the patent area, particularly as to whether there should be a specialized court of patent appeals. Professor Gambrell asked me to join him in this effort, and we became the patent consultants for the commission. We conducted a survey of litigating patent lawyers to find out if they wanted to have a specialized court of patent appeals. Since they were split right down the middle on the question, we ended up recommending against a specialized patent court. We also noted, however, that there was a problem in the patent field in that all the patent infringement cases went on appeal from the district courts to their respective circuit courts of appeals. Some of the circuit courts were very friendly to patents while others were hostile, so the patent owners would want to go to the circuits that were friendly, like the Fifth Circuit and the Seventh Circuit, while the accused infringers would want to go to courts where the appellate review was hostile to patents, like the Eighth Circuit.
President Jimmy Carter formed a commission to conduct a comprehensive review of domestic policies related to industrial innovation to deal with the great concern that inventions were not being made and commercialized, and that the United States was not adequately exporting technology overseas. One of the subgroups formed by the Carter Commission was the Advisory Committee on Patents. Since I was, at that time, on the ladder to the presidency of what was then known as the American Patent Law Association, I was asked to participate as a member of this subgroup of the Carter Commission.
At about the same time, Daniel J. Meador, a professor from the University of Virginia School of Law, was assigned to the U.S. Department of Justice as head of the Office for Improvements in the Administration of Justice where he came up with the brilliant idea of merging the Court of Claims with the Court of Customs and Patent Appeals to form a new court dealing with patent and other issues. Together, the two courts had 12 judges sitting en banc (seven in the Court of Claims, five in the Court of Customs and Patent Appeals), both handled patent cases, and both were located in the same courthouse. If the two were combined, they would not need more money, they would not need new judges or a new courthouse. And instead of being a specialized patent court, the court would have jurisdiction over a lot of other legal areas—customs, merit system protection, patents, veterans’ claims, and the like. The genius behind this idea was, of course, a possible answer to 100 years’ worth of criticism of specialized courts. The thinking of Professor Meador was that that criticism could not be lodged against a court whose judges were exposed to many different areas of the law and who would not, as a result, suffer from the concerns of critics such as Judge Rifkind about specialized courts.
The Carter Commission picked up on Professor Meador’s idea and recommended the creation of a new court, to be named the U.S. Court of Appeals for the Federal Circuit. That recommendation, however, did not immediately result in the formation of the new court. On the contrary, it was met with both support and opposition from the organized bar, with organizations such as the American Intellectual Property Law Association, of which I was then president, supporting it but with vigorous opposition from the ABA and the Seventh Circuit Bar, which just happened to be one of the circuits most hospitable to patent owners and the site of a large and vocal segment of the patent bar. After many congressional hearings, some at which I testified, legislation was passed and signed into law by President Ronald Reagan. The doors of the new court opened on October 1, 1982.
I had gotten to know the new chief judge of the Federal Circuit, Howard T. Markey, in his former capacity as chief judge of one of the predecessor courts, the U.S. Court of Customs and Patent Appeals. He appointed me as the first chair of the court’s Advisory Committee, in which capacity I remained for the next 10 years while contributing to the formation and periodic amendment of the court’s rules.
Would you say the Federal Circuit has been a success?
It is my view and the view of many others that the court has been successful in achieving the goals of its earlier supporters. The judges appointed to the court have been extraordinarily bright and have done much to resolve conflicts and create uniformity in the patent law. The court also has been a prime contributor to bringing patent law into the mainstream and inducing many major law firms into establishing patent groups.
There are, however, some dissenters who feel the court has become too pro-patent and created new conflicts in the patent law. Those in disagreement rely on, in part, the fact that the Supreme Court, which was largely out of sight in the early years of the court, has become very interested in it, reviewed lots of Federal Circuit holdings, and reversed most of those that it has taken. But while the court is not perfect, as no court is, I am a big defender of the court and am delighted that it exists.
Aside from the presidency of the American Patent Law Association,
have you been active in bar activities?
Among one of the great pleasures I have derived from the legal profession were the opportunities to participate in bar activities. I started out locally in the late 1950s and early 1960s in what was then the Patent, Trademark and Copyright Law Section of the Bar Association of the District of Columbia (BADC) and later on in the D.C. Bar’s Patent Division. I ultimately rose to chair each and spent a year on BADC’s board of directors.
Thereafter, I became active in both the American Patent Law Association and the ABA Section of Intellectual Property Law. As I noted, I was elected president of the American Patent Law Association and later on was chosen to chair the ABA Intellectual Property Law Section. I have also served in the ABA House of Delegates for about seven years, which has been the highlight of my involvement with the ABA.
When did you join your current firm, Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP?
I was invited to join my current firm in 1978. We had 30 lawyers at that time and have grown to more than 300, having achieved the status of being the largest law firm in the world that deals exclusively with intellectual property law.
What are some cases that stand out in your career?
There have been a few that have been very rewarding. One of them involved Mattel, Inc., which had an $85 million judgment against it on its Hot Wheels product; we got that reversed. I had another $85 million case for a German firm that I got reversed, the end result of which was a fully paid weeklong trip to Munich for me and my wife. And a number of oral arguments I participated in went so well that they resulted in settlements culminating in more than half a billion in benefits to my clients.
Of course, when you argue 130 cases, you also have your share of losses. Unfortunately, the wins stay with you for perhaps a few weeks, but the losses seem to linger on for years.
Do you still find patent law interesting?
It is more interesting now than it ever has been. As I noted earlier, when the Federal Circuit was born, it increased enormously the popularity of, and interest in, patent law, and general law firms started to get into the mix. A lot of patent law firms have merged into general law firms, so now almost all the big firms handle patent cases. It has become a very attractive field, and the variety and importance of cases have increased dramatically. It is now a mainstream practice, and I feel fortunate to have spent the past 54 years in it. I am still involved as a full-time practitioner, and I expect to spend many more years in the field.