Tell us about your top U.S. Supreme Court or federal circuit court victory over the past year and how you and your team achieved the win. In Impression Products v. Lexmark, the Supreme Court granted review and reversed a 10-2 ruling by the en banc Federal Circuit on two questions regarding the patent exhaustion doctrine. Our strategy had two parts. First, dig deeply into precedent to show that more than 150 years of cases supported our position on one question; and that the second question was effectively controlled by a recent Supreme Court decision on copyright exhaustion. Second, explain that a ruling for our opponents would have dramatically expanded the market power of patent owners and undermined competition in secondary markets for repair and resale of patented goods.
How did your firm approach appellate success over the past year? Start with analysis of text, history, cases, etc. Then ask: What legal rule enables our client to prevail, leads to sensible results in cases with different facts, is consistent with the relevant authorities and related legal principles, and produces sensible practical results?
What practice advice would you give your younger self? 1. Be open to unexpected opportunities; happenstance led to some of my most rewarding jobs and cases. (Luckily, my wife gave my younger self this advice when I needed it.) 2. Take some depositions; put on some witnesses. Even for an appellate lawyer, those experiences are invaluable.
Responses submitted by Andrew Pincus, a partner at Mayer Brown.