This is the final installment in my follow-up interview with Chief Judge Paul Michel, who retired from the United States Court of Appeals for the Federal Circuit effective June 1, 2010. In some ways this might be the most interesting of all of the interview segments for those practicing in the patent arena, or those who have any reason to appear in front of the Federal Circuit. In this final installment Chief Judge Michel speaks with me about what, in his opinion, makes for effective appellate advocacy, both in terms of written briefs and in terms of oral presentation.
It has been a privilege to provide my two different interviews with Chief Judge Michel, and to be invited to his recent retirement party. Chief Judge Michel has always been gracious and giving of his time, and is truly committed to working for a better patent system now that he is a private citizen. Despite his extraordinary accomplishments he is always exceptionally humble and truly a nice guy, proving the old adage that nice guys finish last is not always true.
Without further ado, the last segment of my second interview with Chief Judge Paul Michel.
QUINN: Earlier you were talking about going out to CLEs and meeting with attorneys and learning from them. And one of the things that I think that a lot of attorneys like to hear, because we just don’t get this kind of feedback, is what is that we do that works and what is it that we do that doesn’t work. So I was wondering if maybe we could break this into two parts. One like in writing, and then two orally. So in writing, what do you think that you saw that particularly worked well, or things that didn’t work so well?
MICHEL: Basically, judges know the law. Usually very thoroughly. And most brief writers waste a huge amount of time treating the judge as if he’s a first year law student who has to be told what the definition of “obviousness” is, and what the basic case law of obviousness is. I think that’s a total waste of time. It’s actually a little bit irritating. What the judges don’t know much about are the facts of the case, and the findings below, and the evidence below. And how the district judge handled the motions on the key points. So it seems to me the brief should concentrate on teaching the judges what they don’t know, which is all the factual and historical stuff, and don’t waste a lot of time teaching the judges what they do know, which is what the law is. In terms of issues, most attorneys in my opinion try to argue way too many issues, and it dilutes the impact of any one of the issues. I think an attorney is always better off with, let’s say, three arguments instead of six. And when you’re talking about nine or twelve, it’s totally counterproductive. So selection and judgment and confidence and guts are required of the brief writer is to maximize the client’s case, not to mention help the court.
In oral argument I think there is a huge misunderstanding the point of oral argument. The point of oral argument is not to tell the judges about the or give a speech or persuade anybody about anything. The point of the oral argument is to answer questions about particular points where based on reading the voluminous briefs and record the judges have questions. So the key thing about oral argument is answer the questions. The majority of the time the lawyer never answers the question that was actually asked. They’ll maybe answer a related question or they’ll change the subject. And again, that’s very counterproductive for the client as well as the court. So in oral argument the key thing is think through what are the questions that the judges are likely to ask. I think you can predict about three-quarters of them and come prepared to answer the questions in a clear, candid fashion and very concisely, because the time is so short. I think these things are very basic. We don’t see a lot of problems with fine points. Almost all the things we see done that we say, oh, that was great, or oh, that was terrible, are very basic. Very basic points of appellate advocacy would be true in any appellate court, state or federal, in any kind of case. I’m told that part of the problem with brief writing is just the economics of larger law firms. So much of the writing is done by very young lawyers with maybe very little supervision, and then at the last minute it’s too hard to make changes, or start all over again. I’ve said publically many times, I would rather have a hand-written brief on a yellow pad about five to ten pages long actually written word for word by the senior lawyer on the case, than have the typical 14000 word committee product mostly written by very young ill-supervised people. But you can’t get that. And another thing I’ve often said, which I very firmly believe is that lawyers often complain that oral arguments are too short. And I say, “yes, that’s true, and the briefs are too long.” So I’ll make a bargain with you, “if you’ll agree to cut the briefs in half, I’ll agree to double the oral argument time.” And I’ve never had a taker, not one lawyer has ever agreed to that.
QUINN: Really? See, I think I would take that because–
MICHEL: Well, you’re smart.
QUINN: I think because you’ve got to see the oral argument as your opportunity, one-on-one to persuade, you know, to address the issues. Particularly with a court that’s typically–. And I think it’s fairly characterized, the Federal Circuit is typically hot court.
MICHEL: Oh, sure.
QUINN: Is it fair to say that you guys come to the bench having pretty well prepped the case?
MICHEL: Absolutely. I mean, I used to get up and reread the briefs the day of the argument at 4:00 in the morning to try to make sure I had it all firmly in mind. And we read carefully the key parts of the record. We read the briefS. We have a very strong tradition of good preparation. So not only do the judges ask a lot of questions, but they know the case quite thoroughly before they walk into the room. There’s almost a competition, I think it’s a very healthy competition, among the judges to see who can be best prepared, and ask the most piercing questions.
QUINN: See, it’s interesting you say that because I do think that there is this perception. And I’ve heard it with, not with respect to you, but with respect to particularly one of the judges on the court, that they try and show just how much they know. And that is in some corners a criticism. And to me, I’m thinking to myself, how could you criticize a judge that comes to the court, to the bench that is so prepared that they know the case inside and out? I mean, isn’t that what you want?
MICHEL: Well, I think that deep preparation is very, very good. It’s helpful to everybody, the court, and the clients, and the lawyers, and the whole system. On the other hand, I think it’s important for judges to be self-disciplined. I was talking earlier about how judges have to be careful not to write too broadly and create problems. But the same thing can happen in oral argument. If one judge uses up all the air time, and the lawyer hardly gets a chance to say anything, and the other judges don’t get a chance to say much, I don’t think that’s so good. Or if one judge tries to show off, or if one judge is trying to show how clever he is and make remarks that will make everybody in the audience laugh.
QUINN: I’ve seen that from the Supreme Court, but I haven’t seen that from the Federal Circuit.
MICHEL: I don’t think that’s very good. This isn’t entertainment, this isn’t comedy, this isn’t a chance to try to crack up the audience. This is serious business to try to get the last loose ends of the case under tight control. So I think the preparation and the competition on that is great. I think most of the questioning by our judges is very good. But every judge, including me, always has to be careful to resist the temptation to talk too much, ask too many questions, go on too long, be too rhetorical, make smart remarks. And I think most of the judges are very good about that almost all the time.
QUINN: Yes. And I almost thing sometimes in watching some of these, it seems as if the attorneys never stop to think what are the questions going to be. And when I was teaching in law schools I coached a number of moot court teams over the years. And we did [unintelligible-1:06:00] I coached several national championships and several semi-finalists. And that was the lion’s share of what we did was try an–okay, let’s get all the questions down on the table and figure out how we’re going to handle these questions knowing that we have to actually answer the questions.
MICHEL: I think that’s the perfect preparation for oral argument. Try to anticipate the questions, try to frame answer that are well-grounded in the record and in the law, that are clear, concise, candid, convincing. That’s what people ought to do. You don’t need to write the Gettysburg Address. You don’t need to memorize every line in your brief, or every quote in the case law. What you really need to be able to do is to handle the questions that you’re inevitably going to get from the panel.
QUINN: Did it shock you, because I’ll tell you it shocked me during the Bilski hearing, where it seemed none of the attorneys had anticipated the question, what does concrete, tangible, useful result mean? Or was it useful, concrete, tangible result, what does useful, concrete, tangible result mean?
QUINN: Because to me that was the whole case, right? I mean, because if State Street’s going to survive, that which seemed to be the root cause of certain things that we probably all would say, maybe Judge Richard didn’t have in mind, needed to have some kind of a clarification. Right?
MICHEL: Yes. I get discouraged reading the transcripts of some of the Supreme Court arguments. Discouraged sometimes with justices and sometimes with lawyers. Look, patent law is arcane. It’s difficult. It’s complicated. It’s subtle. It’s partly statutory, it’s partly case law. There’s a lot of tradition. There’s a lot of interplay among different sections. And I think it’s hard for lawyers who are not in this field to argue effectively. Some manage to do it anyway, but I think it’s very difficult. I think it’s very difficult for judges who aren’t in this field on a regular basis to handle it. I don’t envy the Supreme Court justices when they have to take a patent case. It’s very hard to do well.
QUINN: But that even came up when it was down at the Federal Circuit level, as well. And I think it was you in particular were trying to probe about the meaning of the test. And it just–I don’t know, you know, sometimes when I was coaching these moot court teams, the judges would say, that you guys are more prepared, or better than, you know, 80% of the attorneys that we see. And for a long time I always thought that that was just the judge making nice and trying to make the law students feel better. But now I almost feel like that’s probably true.
MICHEL: Look, Gene, I think specialization is the defining characteristic of the modern world. And the idea that any lawyer or any litigator can argue a case in the Supreme Court or even in the Federal Circuit and do it well, I think is a total fiction. Appellate work is a kind of a specialty in the same vein as patent cases are a specialty. They’re very different from other kinds of commercial litigation. Not to mention other areas of law, criminal and quasi-criminal and so forth. So I think it’s true that sometimes students do a better job than the average practitioner. But if you look at the practitioners who are in our court all the time, most of them are extremely good.
MICHEL: But it comes from exposure, and developing a specialty. The worst arguments usually come from people who are there only for the first time, or maybe been there once before in ten years. So it’s all a question of exposure and familiarity and specialization, I think.
QUINN: Would it be an appellate subset specialty or an appellate with a patent background that would tend to produce the better arguments in your experience?
MICHEL: Well, I think there’s some advocates who are great appellate advocates who know very little about patent law and do an absolutely great job. There are some other advocates who know tons of patent law but not very much about appellate work, and they don’t do so well. I guess, in general, it’s hard to generalize, but I guess in general the ideal combination is somebody who has a deep knowledge of patent law, some technical background, and a specialization in appellate work. That’s sort of the trifecta, that guy usually is superb.
QUINN: All right. I have just a couple–
MICHEL: Don Dunner is a good example of somebody like that. Chemical engineer, lifetime patent lawyer, appellate specialist, wrote a treatise about the Federal Circuit. Covers all the bases. Argues in the court very, very, very frequently, and has for decades. He’s an example of a superstar advocate in my opinion. And he’s got all of those bases covered.
QUINN: Okay, so if you’re going to the Federal Circuit somebody like that is probably going to give you your best chance.
MICHEL: Particularly if you lost below. If you’re in the appellant, I think it makes great sense to strongly consider changing counsel. I wouldn’t do it in every case, not necessary. But one thing you see very often is the lawyer who tried the case is so emotionally connected to the arguments he made, even if they failed below that he just can’t reengineer the case. And usually cases that were lost below need to be reengineered on appeal, and it’s often much easier for somebody coming to it fresh and not emotionally involved to do that.
QUINN: Yes. When I was writing my thesis on patent litigation, one of the things that I came across was in a lot of startup companies the person who writes the patent then winds up later on becoming general counsel. And then that’s the exact wrong person to be advising the CEO on what to do in the patent litigation because they do have that vested interest.
MICHEL: Right, right.
QUINN: Okay. I have just a couple last questions.
QUINN: And if you remember last time, I had started over the summer this trend of asking the last person I interviewed. And I’ve got a couple good questions here. Recently I interviewed Todd Dickinson, and one of the questions that he wanted me to pass on and add to the list was about mentorship, and the role of mentorship. And his question is this. What is the importance of mentorship, and who was a particular mentor for you, and how did they help?
MICHEL: Well, I think that what I’ll call apprenticeship is the absolute best way of learning any profession. And so I think mentoring is very important. Of course, an appellate judge is constantly mentoring every law clerk. That’s just in the nature of the job. And I had very great luck all the way through my career in having one terrific mentor after another after another after another. I learned a lot in law school. I went to Virginia, the faculty was very good, the coursework was good. But I probably learned 100 times more from mentors than I learned in a very good law school education. And it continued at every single stage of my career. Obviously, Senator Specter was a main mentor to me. He was my first boss, and then he was my boss again later. But I worked for a series of people who were absolutely fantastic, including Attorney General Civiletti, Deputy Attorney General Renfrew, Assistant Attorney General Dick Thornberg, Lloyd Cutler, the White House counsel in the Carter Administration. Richard Sprague a fabulous trail lawyer in Philadelphia. Bill Colman, Secretary of Transportation in the Ford Administration, has been a mentor to me off and on over a 44 year period. So I’ve had a whole series of often overlapping older, highly experienced, highly distinguished lawyers who took an interest in me and my work, and I just learned so much from them. And sometimes immediate bosses or peers are very great teachers, too. When I was on the Church Committee staff, I worked with an absolutely superb lawyer who later was a managing partner at Cravath named Fritz Schwarz. He was a fabulous guy to work with and learn from. At the same time as an adversary I locked horns with Mitch Rogovin who’s now deceased who was the CIA’s special counsel. And I learned a lot from him. So sometimes opponents, sometimes peers, and sometimes literally mentor type people. I was so lucky because I just kept learning 100 miles an hour every year because I had such good influences. I’m worried now is that we’re cannibalizing the legal profession. So many lawyers are so devoted to making money and rainmaking that they don’t take the time to nurture younger lawyers. Plus, most younger lawyers never get in court because litigation is so expensive, and the clients are so nervous they don’t want younger people doing anything. If you don’t have white hair or a bald head, you’re not allowed to speak in court, it seems. And again, that’s going to kill the future generation of lawyers and litigators. So I’m very concerned about the absence of the kind of mentoring that I benefited from right from the day I left law school until I went on the court in 1988. Some of it goes on, and Inns of Court help, and so forth. And I don’t think there’s nearly as much mentoring as there needs to be. And I think it would be in everybody’s interest, including the mentor, if people devoted less time to just making extra bucks and more time to mentoring younger lawyers.
QUINN: I also recently interviewed Professor Mark Lemley from Stanford. And we got on to sort of a science fiction kick, talking about science fiction visionaries and Isaac Asimov and his writing and what they meant. And so his question has a sci-fi theme to it. What invention from science fiction, whether a book or television show or movie, would you most like to have in the real world?
MICHEL: Well, actually, this isn’t maybe too responsive an answer, but I happen to have as a kid read the Dick Tracy comic strip in the Sunday newspapers. And was totally fascinated by the wristwatch that was a communications device. So now everybody’s cell phone, it’s not quite as small as the wristwatch, but it’s very small, and look at all the things that it can do. Take photographs, tap into the internet, send email, work as a telephone, on and on and on. So that’s not science fiction, that’s real life, that’s our life today. But when the comic strips were drawn by that guy back in the late 40s and early 50s it was science fiction then and it came to be reality.
QUINN: Yes. The one that I’ve always liked, and my son just told me this the other day, and it was interesting to hear it coming from him. I’ve always wanted to have a transporter like from Star Trek, because travel is just such a mess any more, you know, with delays at the airport, and then weather, and then getting through security.
QUINN: If you could transport yourself from point A to point B that would I think be about as neat as you could. And to hear him, and he’s now almost 14, to come out and say that I thought was kind of interesting.
MICHEL: That is interesting. Well, you know, with the quality of video conferencing technology now we’re getting pretty close to maybe you don’t need to get on the plane and go to California to be in a conference with four other people. Maybe you all just do it by screens and microphones and speakers and so forth because the quality now is so good. It’s very close. It’s not the same, there is a lot of value to be in the room with humans in any human endeavor. But there are a lot of more routine meetings that I think now can be done adequately with the equipment we have, and it’s a relatively rare meeting where you really have to be in the room with the other people.
QUINN: Well, I would say any meeting in California is one that you have to go to, personally. I really enjoy California, particularly Southern California. That’s one place I don’t mind traveling to.
MICHEL: Well, I’m glad to hear it because that’s one of the longer trips for me.
QUINN: It is one of the longer trips, but it’s in my mind for the mental R&R it provides it’s worth it. Well, that’s really all that I have. I really appreciate you taking the time to chat with me.
MICHEL: Good. Happy to do it.
QUINN: Thank you.
MICHEL: I have unvarnished opinions now that I’m no longer muzzled, so it’s a lot of fun to be able to talk to somebody and be able to say what I really think, which I haven’t been allowed to say for the past 22 years.
QUINN: Well, any time you want to talk, I’m more than happy to.
MICHEL: Good. Great. Thank you.