Appellate Elites Learn to Love Patents

Appellate Elites Learn to Love Patents Neal Katyal, Hogan Lovells partner

SAN FRANCISCO — Carter Phillips remembers how his patent litigator friends reacted when he asked the U.S. Supreme Court to do away with automatic injunctions upon findings of patent infringement.

“The look of horror and dismay in their faces was startling, because ‘it’s always been that way at the Federal Circuit,’ ” the Sidley Austin partner recalled.

But the Supreme Court shocked the patent bar in 2006 by ruling in eBay v. Merc Exchange that traditional rules of equity apply. Phillips believes his perspective from “outside the fraternity” of patent lawyers helped win the case.

Phillips is closer to that fraternity today than he was then. After the Supreme Court, the U.S. Court of Appeals for the Federal Circuit has become something of a second home. He’s argued more than 25 cases there, and now appears at 717 Madison Place with greater frequency than any regional appellate circuit.

Historically, the Federal Circuit’s patent docket has been handled primarily by tech-savvy patent specialists. But over the past several years, big name appellate generalists such as Phillips, Orrick’s E. Joshua Rosenkranz; Wilmer Cutler Pickering Hale and Dorr’s Seth Waxman and Hogan Lovells’ Neal Katyal have made inroads.

The mainstreaming of patent law, with more cases going up to the Supreme Court, has given appellate lawyers with Supreme Court practices the opportunity to show they can negotiate patent issues. The ever increasing sums of money at stake are also driving elite Supreme Court advocates to step into a field of appellate practice that was once seen as arcane. “It’s a very pronounced and definite trend,” Katyal said. “As the economy moves, so moves appellate law. Much of the economy is heading to IP law, and especially patents.”

The appellate lawyers interviewed for this story emphasized that the patent attorneys at their firms are indispensible partners when they bring a case to the Federal Circuit. But appeals in any area of law can benefit from an outsider’s broad perspective, they argue—even at a narrowly specialized court.

“I feel very strongly that you need to start at ground zero with any court and explain to them the technology and explain why the rules that you’re advocating make sense,” Orrick’s Rosenkranz said.

“Ignorance,” he said, “is strength.”

To Federal Circuit Chief Judge Randall Rader, it was something of a milestone for the court when Kenneth Starr, the solicitor general under George H.W. Bush, made an appearance before the court about 15 years ago. Over the past five years, he said, it’s become much more common to see former S.G.s and other high-profile appellate lawyers.

“I’ve been impressed, in general, that they know the record as well as anybody else,” Rader said. “I think they’ve added depth and strength to our jurisprudence.”

EARLY ADOPTERs

A decade ago, Rosenkranz left the Brennan Center for Justice to launch a general appellate practice at Heller Ehrman . Within a couple of years, Rosenkranz decided to “credentialize” himself as a patent litigator.

Heller had an active IP practice and had just merged with Venture Law Group, so there was no shortage of technology clients with patent issues. “The more I was watching practice before the Federal Circuit, the more I developed a sense that a generalist who didn’t come of age as a patent litigator could provide real value,” he said.

Rosenkranz points out that Federal Circuit judges bring different areas of expertise, with only about half having specialized in patent law before taking the bench. “On the one hand, you have to write a brief that is geared toward the judge that is not an expert,” he said. “On the other hand, you have to be aware there is a decent chance you will get a judge who is more expert on the technology or the law in the case than you are.”

Complicating the process is the fact that the Federal Circuit, unlike most other federal appellate courts, doesn’t reveal the makeup of a three-judge panel until the very morning of argument. Rosenkranz brings a grid with all the judges’ biographies, areas of expertise and rulings on pertinent cases. He’ll sometimes reorder his points or shift emphasis right up to the hour of argument. “There’s a lot of adjusting in real time,” he said.

Rosenkranz has become a key player in the smartphone patent wars at the Federal Circuit. He scored a big win for Apple against Motorola Mobility last fall, and appears poised for another this year. The court also appeared to be leaning his way in Oracle’s copyright case against Google.

But no win ever comes easy—particularly in such highly technical cases, he said. “Every single case, there’s a moment I think to myself, ‘I’m so dumb. I’m so dumb. This is the case that’s going to break me,’ ” he said. Eventually there’s an epiphany. “ The skies part, and all of the pieces fall into place.”

As acting solicitor general, Hogan’s Katyal argued high-profile cases on climate change, terrorism and the Voting Rights Act before the U.S. Supreme Court. But at virtually every interview for private practice, he said, law firms wanted to hear first about a case he argued to the Federal Circuit in 2011: Association of Molecular Pathology v. Myriad Genetics, on the patentability of human DNA.

The Federal Circuit may be increasingly where big business goes to court. However, it’s not as if important policy issues get left behind, Katyal said. “The truth is even the dry and technical cases have a really important public policy impact,” he said. In the Myriad case, he points out, it was the American Civil Liberties Union that filed suit.

Katyal jokes that his family wanted him to become a doctor, but he opted for law after failing organic chemistry. Years later he would be hashing out the science of DNA nucleotide sequences with Nobel Prize winners from the National Institutes of Health. Katyal did not win at the Federal Circuit, but his position ultimately prevailed at the high court.

“It’s the same thing in the private sector—you get some experts and you sit down, and you read and read and read, and you have to be unafraid to ask the stupidest questions,” said Katyal, who argued twice before the Federal Circuit in 2013. Given that patent holders are turning to blue-chip litigators like John Desmarais and Matthew Powers, it’s not surprising that companies accused of infringement are lining up top appellate talent in response, often partnering with the patent litigators from trial. “I won’t argue without a true patent attorney at my side,” Katyal said.

Like Katyal, Deanne Maynard got a chance to boost her patent profile during a stint at the solicitor general’s office, where she argued MedImmune v. Genentech before the U.S. Supreme Court.

A couple of years later, Maynard joined Morrison & Foerster as chair of its appellate and Supreme Court practice. With the support of MoFo’s robust IP group, she’s since argued patent cases for Yahoo, International Game Technology and drug maker Sandoz before the Federal Circuit.

“It’s somewhat in the nature of being an appellate lawyer that we’re always jumping into new issues,” Maynard said. “I always have the benefit of my IP colleagues, who know all the ins and outs of patent law, the particular technology at issue.”

In contrast to Rosenkranz, Maynard disclaimed tailoring her Federal Circuit arguments toward any individual judges. “As in any appellate court, you want to know your record really well, know what the hardest questions are for your side and why those questions aren’t problems,” she said. That’s true “regardless of which three judges turn out to be on your panel on any given day.”

A CASE OF CONVERGENCE

About 15 years ago, Haldane Mayer, then the chief judge of the Federal Circuit, invited Sidley’s Phillips to moderate a panel discussion among the judges. “The reason he asked me to do it is because I’d never argued a case before the Federal Circuit,” Phillips said.

Today he’s a regular presence. Phillips ticks off several reasons attorneys like him are appearing there more often.

One is the greater interest the Supreme Court has taken in patent law in the past decade. Those cases have given Supreme Court practitioners the chance to build a track record on patent issues.

Two is the amount of money at stake in big patent cases, which make it worth getting “a fresh look and a broader perspective.” Although there’s no standard rate, he estimates that Federal Circuit appeals on average generate about 50 percent more in fees than appeals to other circuits, because of the preparation time that’s required.

Phillips also credits the growth of IP practices within mainstream law firms, which lets appellate lawyers “marry up” with technology experts under their own roof. “If you’re dealing with a partner at another law firm, it’s much harder to say, ‘I don’t understand how this works.’ “

Finally, there’s something of a self-perpetuating cycle at work, where one side brings in an appellate heavy hitter and the other side responds in kind. Phillips noted he’s currently opposite WilmerHale’s Waxman in a Federal Circuit case. “As soon as Seth’s name came up, mine was added a week later,” Phillips said. “That’s not a coincidence.”

Contact the reporter at sgraham@alm.com.

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