Justice Stephen Breyer on Capitol Hill in 2011. Credit: Diego M. Radzinschi/ National Law Journal

Patent disputes are not the easiest cases for non-IP lawyers and the public to get their heads around, and most U.S. Supreme Court justices don’t count themselves as IP experts. They are generalists.

So they depend on clear and understandable briefing by the parties. They apparently got all that and more from Goodwin Procter partner William Jay and Kannon Shanmugam of Williams & Connolly in the case Helsinn Healthcare v. Teva Pharmaceuticals.

It is rare for justices to compliment the lawyers before them for the quality of their briefs, but Justice Stephen Breyer did just that during oral argument in the case Dec. 4.

Breyer was exasperated he could not come up with a good analogy that would help him understand the contested wording of the America Invents Act and would clarify what happens when an inventor puts an invention on sale or makes it “otherwise available to the public” before seeking a patent.

The meaning of the word “otherwise” was the main focus of the hour-long argument.

“It’s possible among these excellent briefs—I thought the bar really earned its pay on both sides—but, I mean … I couldn’t come up with a good English example there. So I thought maybe—maybe you have,” Breyer said to Jay, who argued for Teva Pharmaceuticals Industries Ltd.

Jay began his answer, then paused to say, “Thank you, your honor.”

Justice Elena Kagan soon joined the praise-fest. She asked Jay about “Mr. Shanmugam’s excellent brief.” (Here’s a link to it.) Jay rose to the occasion, referencing “both of his excellent briefs.”

In his rebuttal, Shanmugam returned the favor, mentioning Jay’s “excellent brief.” (You can read it here.) Breyer later chimed in again that “everybody’s is excellent.”

All this effusiveness may have been too much for Chief Justice John Roberts Jr., who had the last word as the argument ended: “Thank you, counsel. The case is submitted. I am sure we’ll come up with an excellent opinion.”


Here’s the transcript in Helsinn Healthcare v. Teva Pharmaceuticals:




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