As of late April, the U.S. Court of Appeals for the Federal Circuit had put IP litigator Matthew Wolf halfway toward winning both ends of a rare legal doubleheader. On January 11, Wolf–a Howery partner at the time who is now at Arnold & Porter–had to argue two cases before the Federal Circuit back-to-back. In one, he defended a federal district court win bu Boston Scientific Corporation over Johnson & Johnson in a stent patent suit. In the other, he argued for Hologic, Inc., to reverse a lower court loss to SenoRx Inc., in a patent suit over radiation therapy technology. On February 24, the coucourt ruled for Hologic. Here Wolf discusses the events surrounding his very busy day.
Each day in the Weeks beforehand, I set out a block of time for each case, increasing it as the days went on — from 10 a.m. to 2 p.m., I’d focus on Case A; from 3 p.m. to 6 or 7 p.m., I’d focus on Case B. We set up a war room with one side entirely dedicated to one case and the other side dedicated to the other. One of my lieutenants, John Nilsson [also at Arnold & Porter now], was my right-hand man on both cases, with separate teams under him working on one or the other.
In the last ten days or so before the hearings, I was spending roughly five to six hours on each case, so ten to 12 hours a day cumulatively. We had mock arguments for each case. We brought in outside people to serve as mock panels. For important cases — and these were both important cases — you’re literally doing days of mock argument. Needless to say, I didn’t have a lot of fun from Christmas to New Year’s — and I didn’t watch a lot of football. I spent the time in a bunker of binders. The record in the Boston Scientific case alone was tens of thousands of pages long.
There’s a logistical challenge to this. For a typical day at the Federal Circuit, you prepare with the client the night before, you meet that morning, then you all have lunch, and everyone parts ways. Here, we had to make sure that the clients were taken care of, that everyone felt that they were the centerpiece of the day. One of the clients asked me on at least two occasions during the last month before the hearing to confirm who was the most important client. And, of course, every client is the most important client.
On the day in question, I got to the office about 6 a.m., took out my iPhone, and set the stopwatch for 30-minute intervals. I went through the argument and worked on my opening. John peppered me with questions. When the alarm went off, I switched to the other case and went through the drill again. I walked over to the Federal Circuit at 9 a.m. My most significant nonsubstantive concern was that I would slip up and say the wrong name of the opposing counsel.
When we got to the court, I went to the clerk’s office and signed in for the first case. When the clerk walked away, I said, “No, I have to sign in for another case,” and the clerk was surprised. We introduced ourselves to opposing counsel, and there were a number of representatives there from Boston Scientific and J&J. We walked in. I had John and the contingent that was working on the case with me. Meanwhile, another of my colleagues was meeting the other client back at the office.
Then we had the argument, which I hope went well. It lasted about 40 minutes. Certainly opposing counsel did a fine job. They were teasing me in a friendly way. David Pritikin at Sidley was on the other side in that first argument. He said he would hold it against me if I called him by the other lawyer’s name.
Usually, you pack up your things, and head out to the hall, and everyone does a postmortem on how they thought the hearing went. In this instance, we didn’t have time for a postmortem. I left my asso­ciates to pack up, left the courtroom, shook hands with opposing counsel, and told my clients that I’d meet them back at the office.
Then I went to the other courtroom and immediately sat in the back. It very much had the feel of when you had to take multiple exams in the same day, in that as soon as you finished the exam, you forget everything about it. You just have to shift gears and start fresh with the new issues.
I went from courtroom 402 to courtroom 201 and walked in in the middle of an argument where a taxpayer was demanding a $30,000 refund from the Internal Revenue Service. I have to imagine the legal fees ultimately will be more than whatever refund that taxpayer may get.
The second argument was the one in which we were the appellant, and thus, I spoke first. One thing that every trial lawyer knows is that when you’re getting ready for an opening argument or an appellate argument, you get an adrenaline rush, and that as soon as it’s over, you have that crash. This time, I immediately had to get right back up. The other thing about an appellate argument is that you don’t know which of dozens of different issues the judges might fix on. You have to be prepared for all of them. You have tens of thousands of pages of record you have to be familiar with. To go back to the analogy to college exams, the amount I had to memorize was daunting. Understanding the argument, the themes, the theses. The difficulty was keeping in your head all the tangential issues, the collateral issues that might interest the court, and making sure that you’re conversant in those issues.
That the cases were so different also made it difficult. One involved details of molecular biology and complicated rules of written description and enablement. The other involved a claim construction related to radiation therapy. There were different technologies, different areas of law, different courts, different subject matter. The tone, tenor, and detail of the arguments differed as well.
Knocking on wood, I was happy with how it all went. I felt opposing counsel did a terrific job, and that the panels were both focused on the issues that mattered. There is nothing I would have done differently in terms of preparation.
I don’t think it will happen again anytime soon. I hope it doesn’t. I’m honored that my clients trusted me to handle these appeals. I don’t wish the amount of work and stress that was created on anyone.
The thing I did right? Dedicating time on a formal organized basis to both cases, to keep them separate in my mind as best as I could. The thing I did wrong? Maybe not planning well enough the logistics of the day itself. I’m glad to say that I did it, though, and it makes a terrific war story.