Intellectual Property

Supreme Solicitors

The supreme solicitor club may be a small one, but like the Supreme Court itself, their reach is both deep and wide in the patent space.

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As we approach the end of the 2010s, one of the defining features of the decade for patent lawyers has been the increased willingness of the Supreme Court to hear and decide patent cases. In contrast to the first decade of this century, where seven out of 10 years saw one or fewer Supreme Court patent decisions, most years this decade have seen three or more patent decisions by the Supreme Court. Which is an important development, because while some of the Court’s recent patent decisions have been more impactful than others, it is indisputable that there are significant ramifications for IP owners whenever the Supreme Court speaks. 

Considering that on balance the Supreme Court’s pronouncements have been perceived as negative for patent holders, it is hard to ignore the Court’s arguable contribution to the well-documented decline in patent values over the past decade. A decline particularly exacerbated in the minds of many by the Court’s Alice and Oil States decisions, on the issues of patent eligibility and IPR constitutionality, respectively. Or TC Heartland for that matter, which has erased venue-based advantages previously enjoyed by patent owners, by limiting patent enforcement to venues where the alleged infringers are incorporated or have a physical presence. Taken together, the Court’s recent jurisprudence has shifted the patent litigation landscape on a number of critical fronts. Ask any patent lawyer or patent owner if you need confirmation.

In light of the Court’s increased attention to patent issues, it is fair to ask what factors may be behind the phenomenon. Increased division of opinion at the Federal Circuit is one likely contributor, as has been the need to resolve issues arising out of the passage and implementation of the America Invents Act. A recent Iowa Law Review article by Boston University’s Paul R. Gugliuzza suggests another interesting factor at work as well. In his view, “[E]lite lawyers’ remarkable success in obtaining certiorari may help explain why the number of patent cases heard by the Supreme Court has increased so substantially over the past decade.” While I agree with his thesis, we must first clarify what he is getting at with his reference to “elite lawyers.”

Professor Gugliuzza defines an “elite Supreme Court lawyer as someone who has presented oral argument at the Court in five or more cases in the current and ten preceding Terms, combined.” As you can imagine, that is rarefied company. And that small cadre of elite lawyers handled around half of all Supreme Court oral arguments in one recent term. Moreover, that small group of lawyers has increasingly found clients interested in hiring them for patent matters, whether to argue Federal Circuit appeals or to file cert petitions in the Supreme Court. The latter activity has more than doubled this decade as compared to last, perhaps as clients have seen better results when using an “elite lawyer” to petition the Supreme Court. With more patent-based petitions being filed by top-drawer Supreme Court practitioners, it is not surprising that we have seen more uptake of patent cases by the Court. 

Likewise, the increased participation of Supreme Court expert advocates at the Federal Circuit level may also contribute to better positioning of cases in terms of attracting Supreme Court interest. One consequence of this shift from patent specialists to appellate luminaries for handling patent appeals, as noted by Professor Gugliuzza, is that ”patent law — particularly at the appellate level — is being shaped by the most notable generalist litigators at the country’s most prestigious law firms.” Whether or not that is a good thing is up for debate.

For Professor Gugliuzza, one important benefit of the increased activity amongst “elite lawyers” in patent cases is in helping to provoke necessary Supreme Court oversight over the Federal Circuit. In his view, “elite advocates can pick and choose specific legal issues on which settled Federal Circuit law is particularly in need of reform and that the Supreme Court might be willing to disrupt.” Adding to the Court’s comfort in dealing with such important issues is its confidence that “elite lawyers” will handle such difficult cases with aplomb. 

At the same time, there is also the danger that both non-patent specialist “elite lawyers” and the Court will focus more on those patent law questions that center on procedural or statutory issues, rather than important technological elements, such as questions of validity. As noted in the article, “the Court’s agenda in patent law doesn’t always focus on the core issues that are most salient to the day-to-day administration of the patent system. Indeed, it took more than a decade and numerous unsuccessful cert. petitions before the Court finally tackled (and overturned) perhaps the most important and controversial ruling the Federal Circuit ever made: that patent claim construction is a pure question of law subject to de novo review on appeal.” Put another way, when the Supreme Court’s patent agenda is being shaped in part by elite generalist lawyers, there is always the danger that key issues take longer to receive necessary attention.

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Ultimately, Professor Gugliuzza’s article is a fantastic example of academic scholarship that practitioners and their clients should be reading and thinking about. For one, much has been made of the impact of lobbying by industry interests on Congress when it comes to patent law changes in the past decade. At the same time, the increased role of “elite lawyers” in patent matters can be viewed as a subtle type of judicial lobbying by the clients with the good sense and resources to hire those advocates for their appellate patent needs. The consequences of this shift towards “elite lawyers” thereby resonates down to the entire patent ecosystem. The supreme solicitor club may be a small one, but like the Court itself, their reach is both deep and wide in the patent space.

Please feel free to send comments or questions to me at gkroub@kskiplaw.com or via Twitter: @gkroub. Any topic suggestions or thoughts are most welcome.

Gaston Kroub lives in Brooklyn and is a founding partner of Kroub, Silbersher & Kolmykov PLLC, an intellectual property litigation boutique, and Markman Advisors LLC, a leading consultancy on patent issues for the investment community. Gaston’s practice focuses on intellectual property litigation and related counseling, with a strong focus on patent matters. You can reach him at gkroub@kskiplaw.com or follow him on Twitter: @gkroub.

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