Doing my best to get it right
As you may know, IPWatchdog Live 2025 was held last week. The program was a huge success. The conversations were great. The panels were great, and everyone enjoyed themselves. While the program is called “LIVE” as we do not record the panels or broadcast them, we did have a few keynote presentations recorded for use in IPWatchdog Unleashed. One of the segments that was recorded was my fireside conversation with Judge John Holcomb of United States Federal District Court of Central District of California on March 4, 2025. And it is this conversation with Judge Holcomb that we share this week for our latest episode of IPWatchdog Unleashed.
Judge John Holcomb is one of us. He was a professional patent litigator before he joined federal judiciary. He was appointed to the federal judiciary by President Donald J. Trump in his first term. He is based in Santa Ana and serves the Central District of California. We began our conversation by telling the story of how John Holcomb, the patent litigator, went from private practice to become Judge John Holcomb of U.S. Federal District Court of California for the Central District of California. I asked: How does one go from being a prominent litigator to getting on the radar screen to be nominated, then become nominated and ultimately confirmed?
“Well, it almost didn’t happen many, many times,” Judge Holcomb explained. “It is a rollercoaster ride to be confirmed as a Article III judge… You have to receive a presidential nomination but also the approval of two Senators from your home state. In my case, it was 2019 and the late Senator Dianne Feinstein was followed by Senator Kamala Haris. So, as you can imagine, it’s not real easy to get an up check from those two senators and the Trump administration.
“If you’re at the top of the Trump list, you’re not going to get the approval of those two Democratic Senators and vice versa. I think that they had already eliminated the people at the top of their list and were left with the bottom of the barrel. I was in the barrel,” Holcomb said in a self-deprecating way to the laughter of the audience. I was in the barrel,” Holcomb said in a self-deprecating way to the laughter of the audience.
Ultimately, Holcomb was confirmed on September 18, 2020, by a vote of 83 to 12, literally getting in under the wire because a few days later, Justice Ginsburg died and judicial nominations and confirmations completely shut down, with focus entirely shifting onto filling the new Supreme Court vacancy.
As we pivot from the nomination and confirmation process, I asked Judge Holcomb: Does it surprise you what you are seeing as a district court judge, or were you prepared for the wide array of different issues?
“I don’t think anybody can be prepared for the wide array of issues that a district judge sees,” Holcomb explained. “You show up, you get confirmed, you get sworn in. In my court in the Central District of California they give you ten days before they start to give you cases. And they’re your cases for all purposes.”
And then we pivot to discussing patent litigation. I said: “I assume that as a former litigator you enjoy patent cases.” Judge Holcomb responded, “Oh, yes.” I love them.”
I then asked: “Is there anything that surprises you?” You were most familiar with patent cases as a litigator. Now that you are a judge you will be on the other side. Is there anything in patent cases that surprised you that you weren’t prepared for, you didn’t understand or didn’t appreciate when you were an attorney?”
“Probably the biggest thing would be how few resources I have,” Judge Holcomb explained. “For my cases, a judicial clerk and two law assistants are assigned to me. We also divide the cases into odd numbers. One of my law assistants is a little patent-trained, but she comes from a STEM background. She gets all the cases. This is true every year. The point is that when you file with me a large patent case, and there’s an Markman hearing, with a pile of documents such as this to look through, with claim charts, patents, file histories, declarations, and everything else, it’s only me and one law clerk who are going through all of that. The volume and lack of resources. In a law office, like Knobbe Martens and I’m sure it’s the case for most of you, a team of attorneys will be working on a large case. I don’t work with a team. The court has 28 full-time district court judges and although Judge Holcomb has been on the court for just 4.5 years, he is right in the middle of the pack in terms of seniority. 13 judges joined the Court after he was confirmed. The court has 28 full-time district court judges and although Judge Holcomb has been on the court for just 4.5 years, he is right in the middle of the pack in terms of seniority, with 13 judges having joined the court after he was confirmed.
With a former patent litigator on the court, it is probably not a surprise that other judges might look to Judge Holcomb with questions, and this happened recently during a judicial conference of the judges and magistrates in the Central District of California.
“I was on a panel to present just to my colleagues, the district judges and the magistrate judges. Holcomb explained that they wanted the few of us with more patent training to speak to the other district court judges about patent cases, answer questions and provide tips. “They wanted the absolute basic. When I began to talk about claim construction hearings, I noticed that some of my colleagues were glazed over. So I went back to the basics, the Markman Case… and explained what the holding was in Markman and why it was so important. Therefore that’s why there are so-called Markman Hearings–claim Construction Hearings. Here’s what happens. What does it mean to “construe” a claim? I used the word adjacent as an example. I said that your claim might have the word adjacent… Does this mean they need to be touching to be infringed? Does it mean that they must be relatively close together? Does it mean that they can be very far apart, but there is no structure in between? Could be any of these things. How do you know? I’ve just said that they needed it. Judges who do not have a patent training will not know these things. Don’t assume they know. You’ll have judges who will undoubtedly not understand these concepts. So you need to help them along. We discussed the role and time allocation of the jury, how Judge Holcomb divides the trial time, and the number of patents or claims that are best suited to a single trial. We also discussed Judge Holcomb’s practice in relation to summary judgment motions. As our conversation wound down, we ended on the topic of his judicial philosophy, and to make the point Judge Holcomb told the story of three umpires.
“There’s a story about the three baseball umpires and they’re sitting around after a game talking about the art of calling balls and strikes. The first umpire said, “I call them as I see them.” The second umpire said, “oh no, that’s not what I do. I call them as they are.” And the third umpire said, “nah, they’re nothing until I call them.” I love this story because it shows three different views of reality. When the pitch comes in there is an objective truth. This pitch is objectively either a ball or strike. It’s up to the umpire to make this judgment call. This umpire says, “I call them as I see them.” I do everything I can to determine that there is objective truth and do my best to perceiving it. The second umpire says, “I call them as they are.” There is an objective truth, but he denies any perception error. The third umpire has a cynical viewpoint. “They ain’t nothing until they call them.” And he is kind of right, because if a pitch comes in that’s outside the strike zone but he calls a strike it will go down in the scorebook. If I apply that to the law, then I like the first Umpire. I believe that there is an objective truth. I believe there is an objectively correct answer to the motion under the laws and statutes given to us by the Supreme Court, the Federal Circuit or in my case, the Ninth Circuit. And I’m doing my very best to get it right.”
To listen to my entire conversation with U.S. District Court Judge John Holcomb, please visit IPWatchdog Unleashed on Buzzsprout, or download the podcast from wherever you listen to podcasts.
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