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The 1994 Supreme Court decision Digital Equipment Corp. v. Desktop Direct is complex, obscure and easily forgotten. But stealthlike, it has entered the growing body of John Roberts Jr. folklore as analysts and advocates pore over his record in advance of Supreme Court confirmation hearings later this summer. Digital v. Desktop has been mentioned often, though never by name, because it is the case that Roberts, as a private attorney for Hogan & Hartson, lost unanimously. Numerous stories about Roberts in the last week have noted that when Roberts was asked why he lost 9-0, he replied, “Well, there are only nine justices.” The remark neatly capsulized Roberts’ humility and sense of humor. “Even in loss, his quick wit remained,” said longtime Roberts friend R. Ted Cruz, solicitor general of Texas, in a National Review column that mentioned the quote. So what was the case and why did Roberts lose so soundly? It stemmed from a nasty trademark dispute between Digital and Desktop Direct in the earlier days of the computer age. Desktop, a young upstart company, claimed that the larger Digital stole its trademark by marketing a computer with the name Desktop Direct. DEC claimed it was an innocent mistake but settled the litigation with a substantial payment to Desktop. When Desktop later learned the trademark violation was not so innocent, however, it sought to set aside the settlement so it could renew its suit against Digital. A district court judge vacated the settlement, but Digital argued to the 10th U.S. Circuit Court of Appeals that the settlement protected it from having to face trial. That gambit failed when the 10th Circuit said the district court’s order setting aside the settlement was unappealable under rules governing collateral orders. Digital hired Roberts to appeal to the Supreme Court to protect it from further litigation, framing the case as a technical issue of civil procedure. In a 1994 summary of the case for the American Bar Association publication Preview, University of Texas School of Law professor Linda Mullenix said the issue was “one of the most boring but nonetheless crucially important aspects of appellate procedure.” At oral argument Feb. 22, 1994, Roberts’s adversary was the late Rex Lee, a former solicitor general whose credibility with the Court was probably unmatched at the time. Aiding Lee was Gene Schaerr, now chair of the appellate practice at Winston & Strawn. Schaerr recalls his adversary Roberts’ handling of the case with a laugh. “He did a terrific job with a case that was a dead loser.” The 10th Circuit’s ruling was a “rogue decision that was clearly wrong,” says Schaerr, and it was evident that the justices took the case to reverse it. Schaerr does not recall the questioning of Roberts as unusually hostile, but says he answered with his usual calm manner. “He parried the questions well,” says Schaerr, a friend of Roberts’ since their days in the Justice Department. “And his briefs were terrific.” But neither the briefs nor the arguments budged the Court in Digital’s direction. On June 6, Justice David Souter issued the opinion siding with Desktop and ruling for a unanimous Court that the district court’s order setting aside the settlement was not immediately appealable. Souter asserted at one point that Digital’s position is “neither an accurate distillation of our case law nor an appealing prospect for adding to it.” But Souter did not disparage Roberts’ argument entirely, writing, “While Digital’s argument may exert some pull on a narrow analysis, it does not hold up under the broad scrutiny to which all claims of immediate appealability … must be subjected.” Looking back, says Schaerr, Roberts “did a great job in a situation that is a test of the quality of an advocate.” Schaerr explains, “When you have a case like that, the best you can do is to make the justices at least wonder about the decision they are about to make. He succeeded in making them wonder, but they came back to where they started.”

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