Robert Van Nest, Keker, Van Nest & Peters
(Photo by Jason Doiy)

After winning the rematch of the “World Series of IP cases” for Google over Oracle last year, Robert Van Nest of Keker, Van Nest & Peters scored another defense win for a technology company accused of copyright infringement: Arista Networks Inc.

Larger computer networking rival Cisco Systems Inc. accused Arista of illegally copying the command line interface, or CLI, for its system for interacting with network switches that serve as the spine for large computer networks.

Where Van Nest wielded fair use to land Google’s defense win, he scored Arista’s copyright defense verdict under the lesser known “scènes à faire” doctrine, which allows for copying in instances where outside forces essentially leave no way to express an idea besides the copyrighted expression. Van Nest recently spoke with The Recorder about the defense and how he and his team approach big IP cases.

What do these two cases show us about your firm’s ability to handle complex IP trials? I think they showcase three things we do well. One is they were both highly technical and required a lot of learning by the lawyers and a lot of translation for the jurors. It was critical in both of those cases to win the tutorial part of the case. Both with your opening, your closing, your witnesses, your experts, and right on through. And we had some very good technical presentations in both cases that I think taught the jurors to the extent we could and fed into our bigger picture.

The second thing that they both required was that because they were highly technical, you needed to develop and present what I call the “business story.” What is the reason for this lawsuit? And why is Oracle suing Google over something that’s open and free. Why is Cisco suing Arista over something that Cisco says is an industry standard? And I think that in both cases, we did a very good job.

This starts at the staff level, the associate lawyers developing the facts and the witnesses, on up. We presented the business picture in both cases: Oracle, the story was very clear that Larry Ellison wanted into the smartphone business, couldn’t get in on his own, couldn’t develop his way in and so tried to sue his way in and that didn’t work.

And Cisco v. Arista is a story that’s unfortunately been repeated many times around here: A legacy company that gets old, fat, lazy. And poor technology is vulnerable to the very smart, nimble, intelligent start-ups that often have a better idea. And there reaction is often a lawsuit. And that’s exactly what happened in Cisco, and that’s the story we presented to the jurors and I think they understood.

Tell me a bit about the scènes à faire which you wielded to score a defense win in the Arista case. I think folks are pretty familiar with the fair use doctrine, which was the sources of your Oracle v. Google win, but scènes à faire was a new one to me. The scènes à faire doctrine has been around for a long time in copyright. It started probably in literature where there two scenes that are often played or customarily played: The jealous husband, the nagging wife, the various tropes from literature.

But in the tech world, and particularly here in the Ninth Circuit, it means phrases that are customary, common, come from standards. It was very clear to us that Cisco had gotten their command-line interfaces, which is what the case was about, by looking at the industry protocols that described functionality.

“IP routing” is a phrase that comes from an IP standard in the industry. And although the standard doesn’t dictate what you call it, the standard calls it IP routing. And we were able to show, primarily through the examination of their witnesses and experts that virtually every word that they had incorporated into their command-line interface came directly from an industry protocol document in which the industry had come together approved a certain functionality, agreed on how it should work, and called it by certain names and used a bunch of phrases.

I think by examining primarily their expert, but also their engineers, it became pretty clear to the jurors that these were—even if copyrightable—so customary and common and so necessary to use if you’re going to have this functionality, that they shouldn’t be owned by one company. And we presented that argument along with several others to jurors, and that’s the one that prevailed at trial.

I think that now that we’re on appeal, Cisco is claiming this is a novel or unusual defense. But in fact, there’s a lot of case law on scènes à faire and the use of scènes à faire in the computer and software area. The jury instruction Judge Freeman gave is very simple, very plain and the instruction is not being challenged on appeal. 

It’s a situation where we had a defense that had been around that fit our facts, and was absolutely consistent with what had gone on in the market. And I think jurors appreciated that because the deliberations in Cisco were not very long. The trial was two-weeks-plus and the deliberations I think were one afternoon and a morning or something like that.

In both the Arista and Google cases, you had a client who was an accused infringer. But in both cases, you tried to tell a story painting your client as the true innovator. Is that something you try to do in every intellectual property case where you have someone facing infringement claims? No. You take the facts that you have and determine what is the most persuasive way to present them. I think in the case of Arista, it was very apparent to everybody what was happening.

Cisco had been around, was losing market share, was fighting to hold off Arista. Arista had a much better product, a much better approach, kind of a game-changing approach. Although we didn’t prevail on fair use, it really was a transformative product. That fact pattern availed itself to the sort of presentation that we made.