On February 7, 2013, President Obama nominated Raymond T. Chen to the United States Court of Appeals for the Federal Circuit. Chen currently serves as the Deputy General Counsel for Intellectual Property Law and Solicitor for the United States Patent and Trademark Office (USPTO), a position he has held since 2008. President Obama has said that Raymond T. Chen has “displayed exceptional dedication to public service throughout [his] career,” stating that he is “honored to nominate [Chen] today to serve the American people on the United States Court of Appeals” and he is “confident that [Chen] will be [a] judicious and esteemed addition to the Federal Circuit. ”
Raymond T. Chen was born in New York City in 1968. He received his B.S. in electrical engineering from the University of California Los Angeles in 1990 and his J.D. from New York University School of Law in 1994. Chen served on the law review and the Urban Law Clinic.
Upon graduation, Chen worked as an associate at Knobbe, Martens, Olson & Bear in Irvine, CA, where he worked on a wide range of patent and trademark issues, including computer software, computer hardware, semiconductor devices, medical devices, and mechanical and electro-mechanical inventions.
In 1996, Chen joined the Senior Technical Assistant’s Office at the Federal Circuit, where he performed the functions of a staff attorney, including researching and reviewing drafts of court opinions for both legal and technical accuracy.
In 1998, Chen became an Associate Solicitor in the Office of the Solicitor at the United States Patent and Trademark Office. In 2008, he was promoted to Deputy General Counsel for Intellectual Property Law and Solicitor, the position he currently holds.
Chen’s legal career has primarily focused on patent and trademark litigation. As an Associate Solicitor, Chen defended the agency’s patent and trademark decisions, and presented approximately 20 arguments in the Federal Circuit. One of his most notable cases involved the successful defense of the denial of a patent application for the method of hedging risk in the field of commodities trading, heard en banc before the Federal Circuit. The Supreme Court upheld the Court of Appeals decision, concluding that the claims violated the abstract idea exception to Section 101 of the Patent Act, but rejected the idea that the machine-or-transformation test was the sole test for deciding whether an invention is a patent-eligible process.
Chen also defended the agency against litigation brought under the Administrative Procedure Act, served as a legal advisor on patent policy and legal issues within the agency, and prosecuted patent attorneys for violating the agency’s code of professional responsibility.
As Deputy General Counsel, Chen supervises the litigation work of the other lawyers in the Solicitor’s office. He was also influential in determining what positions the United States should take as anamicus in intellectual property cases before the Supreme Court and the Federal Circuit. In particular, Chen played a significant role in formulating the government’s position in Microsoft Corp. v. i4i Ltd. Partnership, which challenged the burden of proof required to overcome the presumption that a patent is valid. The Supreme Court decided in favor of the government’s position by holding that the party asserting patent invalidity as a defense to patent infringement must prove invalidity by clear and convincing evidence, rather than by the more deferential preponderance of the evidence standard.4
Professional and Community Activities
Chen was admitted to the California State Bar in 1994 and the District of Columbia Bar in 1997. Currently, he is admitted to practice before the Supreme Court of the United States (2009), the Court of Appeals for the District of Columbia Circuit (1997), the California Supreme Court (1994), and the U.S. Patent and Trademark Office (1996).
Chen is an executive advisor for the Patent Office’s Asian Pacific American Network (APANet). He has co-chaired the Patent and Trademark Office Committee of the Federal Circuit Bar Association and is a member of the Advisory Council for the United States Court of Appeals for the Federal Circuit. He is also a member of the Asian Pacific Bar Association, DC Chapter and a former member of the American Intellectual Property Law Association.
1 Press Release, The White House, President Obama Nominates Two to Serve on the US Court of Appeals for the Federal Circuit (Feb. 7, 2013), available at http://www.whitehouse.gov/the-press-office/2013/02/07/president-obama-nominates-two-serve-us-court-appeals-federal-circuit
2 In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc).
3 Bilski v. Kappos, 130 S.Ct. 3218 (2010).
4 Microsoft Corp. v. i4i Ltd. Partnership, 131 S.Ct. 2238 (2011).