By Lisa Shuchman
IP Law & Business/December 2007

Reprints & Permissions

The alumni group of former clerks of the U.S. Court of Appeals for the Federal Circuit, the court of appeals for all patent cases nationally, held its annual reunion this fall as usual at the Dolly Madison House, a charming eighteenth-century building adjoining the court on historic Lafayette Square in Washington, D.C. After the official party, many of the former clerks retired to the bar of the nearby Sofitel for more conversation. Sprinkled in the crowd were the chief patent counsel of a unit of medical device maker Medtronic, Inc. and a key staffer at the Senate Judiciary Committee, as well as many partners and associates of top IP law firms. One happy attendee was John Dragseth, a graduate of the University of Minnesota Law School and a partner at Fish & Richardson. "Clerking at the Federal Circuit has opened more doors for me than Harvard Law School would have," Dragseth says.

The legal training that clerks receive working for a Federal Circuit judge is rigorous and impressive. Less obvious but also invaluable is the network established among former clerks. That set of connections leads to jobs, higher salaries, and many new cases and clients. Former clerks maintain close ties to one another and form a community that serves as a source of knowledge and power in the intellectual property world.

The intense bond among former Federal Circuit clerks stems from the court's unique role. Clerks at other federal district and appellate courts around the United States form friendships with each other and with the judges, but after their clerkship they tend to go their different professional ways, specializing in everything from antitrust to criminal law. The Federal Circuit, created by Congress in 1982, differs from other courts: Its jurisdiction is based entirely on subject matter, not geography. More than 30 percent of its cases are patent-related, providing an intense crucible for young lawyers who are headed for work in IP. A clerk for a Federal Circuit judge may not enjoy the same prestige as a clerk at the U.S. Supreme Court, but in the world of patent law, clerking for a judge on the Federal Circuit is as good as it gets. In fact, until the Supreme Court started taking an interest in IP in the last few years, "the Federal Circuit was pretty much the Supreme Court of patent law," says William Atkinson, a partner at Alston & Bird who clerked for Judge Glenn Archer between 1988 and 1990.

Each of the court's 12 judges used to employ two "term" clerks (as opposed to permanent clerks) at any given time, but today they all have three--a move prompted in part by the increased number and complexity of cases on the Federal Circuit docket. Some term clerks serve for two years, others for one--depending on the needs of the individual judge. Term clerks now earn, depending on qualifications and experience, between $55,706 to $93,822 a year.

Neil Jones, a partner at Nelson Mullins Riley & Scarborough, clerked for Judge Jean Galloway Bissell from 1988 to 1990. During those two years, he reviewed the written briefs and oral arguments of some of the best attorneys in the field. And he built strong bonds with "some of the smartest lawyers around," he says.

Judges help foster the network. Alston & Bird's Atkinson says that when he clerked for Archer, the judge took his clerks to his vacation home in Colorado for a ski trip. Judge Helen Nies invited all the clerks to her beach house. And when he needed to wear a bow tie to a special event, Atkinson says he asked Judge Daniel Friedman, who always wore one, to teach him how to tie it. "Off we went to the judge's private chambers--like a father and son," Atkinson says. "It's really like a family."

That spirit dates back to the establishment of the court, according to Chief Judge Paul Michel, who has served on the Federal Circuit since 1988 and has been chief judge since 2004. Judges make a point of getting to know their clerks' spouses and children. The first group of Federal Circuit clerks formed a softball team, and the first chief judge, Howard Markey, attended every one of their games. "Each successive chief judge has tried to carry that spirit forward," says Michel, who hosts a reunion in his chambers every year for all his former clerks.

Judge Haldane Robert Mayer, who has sat on the Federal Circuit since 1988, hosts an annual dinner for all the clerks he's ever had. "That's 20 years' worth of clerks, and I've probably met most of them," says Ashley Summer, an assoÂciate at Nelson Mullins who clerked for Mayer for two years, until this past summer.

If the bond between clerk and judge is strong, the clerk-to-clerk connection is even stronger. For instance, when John Gartman, a partner at Fish & Richardson who clerked for Federal Circuit judge Giles Rich from 1988 to 1990, had his first child, he asked Neil Jones, who clerked in the same years, to be his son's godfather.

Gartman says that during his stint on the court the clerks even created an elaborate--and somewhat clandestine--fantasy football league that involved a full-scale draft, dispute resolution, and even lawsuits and appeals. "We were like a club," he says. The sense of community is not solely based on play, however. The clerks work together and learn together, Michel says. They discuss and debate cases with the judges. They write memos and draft parts of decisions. "They learn how decision making occurs on the court and how the law works in practice," Michel says. "They get inside our brains."

And that, says ePals Inc. CEO Edmund Fish, who from 1987 to 1989 clerked for then-chief judge Markey, is why he seeks out other former clerks when he needs outside counsel for IP matters. Fish, whose company creates international online communities for children and classrooms, has hired a former coclerk, Jones Day partner Mark Paulson, to handle licensing issues and strategic IP. And he has used Jones at Nelson Mullins, whose clerkship overlapped with his, to do patent prosecution work. "What drives the clerk network is that you've worked with these people and you understand how thorough, how detail-oriented, and how strategic they can be," he says.

John Donofrio agrees. Now senior vice president and general counsel for global auto supplier Visteon Corp., Donofrio clerked for Judge Archer between 1987 and 1989. He has sent a lot of work to Atkinson and to Frank Angileri, another former Archer clerk who is a partner at Brooks Kushman--both in his current role and in his previous job as vice president and general counsel of Honeywell Aerospace. "Above all else, working at the Federal Circuit teaches you good judgment," he says. "When giving work to outside counsel, a lot of money is attached to the decisions they'll make."

Jones and Mark Dukes, another Nelson Mullins partner, say that other former clerks have referred work to them, and vice versa. Atkinson says that because of his clerk experience, he's often brought in to work with lawyers who argued a case at the district court to craft an appeal or sit on a mock panel and act as a judge or coach. Giovanna Cinelli, a Patton Boggs partner who clerked for Judge Philip Nichols from 1987 to 1988, says she, too, first looks for former clerks when seeking cocounsel or referring work elsewhere. "The network is incredible," Jones says. "When you're looking for cocounsel or local counsel in a different city, you can pick up the phone and call someone you know there, or you can just look someone up, knowing that if they clerked for the Federal Circuit, they're probably very good."

The network extends to hiring as well. Eight years ago, Patton Boggs partner Michael Schaengold, who clerked for Judge Mayer from 1987 to 1988, lured former coclerk Cinelli away from Reed Smith, where she'd been a partner for years. "The only reason I joined Patton Boggs was Mike Schaengold," she says. Cinelli's husband, Kenneth Nunnenkamp, who clerked for Judge Phillip Baldwin from 1988 to 1989, is now of counsel to Patton Boggs, joining his wife after having run his own IP practice. "We work right next door to each other," Cinelli says.

There are lots of examples of clerks luring clerks. After his clerkship, Jones, a South Carolina native, set off for Dallas, where he worked for Hughes and Luce. Less than a year later, he got a call from Dukes, who had been one of his coclerks and who was working for Dority & Manning--an IP boutique firm in Greenville that was looking to hire more attorneys. "I told him it was time to come home," Dukes said. Jones and Dukes worked together at Dority for ten years, and in 2000 they left together to form the IP section at Nelson Mullins.

They're now extending their network to a younger generation. Summer, the associate who completed his clerkship this past summer, started working at Nelson Mullins in 2004, after graduating from law school at the University of South Carolina. When Jones and Dukes heard he was interested in clerking, they encouraged him to apply to the Federal Circuit. He was offered the two-year clerkship, and left the firm for Washington, D.C., taking a pay cut of more than $15,000 a year.

Summer's background is not unusual. Most clerks used to be hired straight out of law school, but today Federal Circuit judges prefer people who have either clerked for a district judge or have trained in a law firm for a year or two. Not fixated on Ivy League pedigrees, the judges rely instead on recommendations from prominent IP practitioners, and sometimes from former clerks.

Candidates who have a technical background have an edge, says Michel, who estimates that two-thirds of the clerks have advanced science degrees. Some have worked in the Patent and Trademark Office. "The jackpot law clerk has a Ph.D. in biochemistry, has worked in a lab, then has clerked for a district court and then worked for a law firm before clerking for the Federal Circuit," Michel says. It's no wonder, then, that large law firms with big IP practices work hard to recruit Federal Circuit clerks, often paying signing bonuses of as much as $70,000.

Finnegan, Henderson, Farabow, Garrett & Dunner and fellow IP specialty firm Fish & Richardson each have over 30 former clerks on hand. Having that brain trust at a firm can be a valuable resource. When working on a case, for example, F&R's Gartman likes to learn about his potential adversaries. Putting out feelers about opposing counsel can simply involve sending an e-mail to all of the attorneys in the firm. "Often former clerks will message back that they clerked with a lawyer on my list," Gartman says.

He also relies on former clerks for input. "If I want an independent read on the persuasiveness of a brief, I'll float it by a former clerk who knows nothing about the case but who will look at the arguments and be able to tell me what their reaction would have been as a judge's clerk," he says.

Most former clerks enjoy going back to the Federal Circuit, whether for the annual reception or to argue a case. Kimberly Moore, who clerked for Judge Archer from 1995 to 1997, has returned in style. She is the most recent appointee to the Federal Circuit--and at age 39, the youngest federal appellate judge in the nation. Prior to her appointment to the court, Moore was a professor of patent law at George Mason University Law School.

Former clerks say they don't feel they are treated differently from other lawyers when they appear before the Federal Circuit, and they can't tailor their work to any specific judge because they are not told which three judges will be on their panel until the day they arrive at court to argue their case. But most do feel they are at a slight advantage because they have insight into what is effective in Federal Circuit briefs and oral arguments, and they understand how the institution works. "There's a level of comfort," says Mark Abate, a partner at Goodwin Procter who clerked for former Chief Judge Markey between 1988 and 1990. "When I'm in the Federal Circuit I feel I have home court advantage."

That advantage may not always result in a win. But former Federal Circuit clerks say the experience of arguing before the court is special. "When you leave the court, you're not really leaving, because the clerkship stays with you," says Alston & Bird's Atkinson. "And when you go back, it's like going home."