Posts Tagged: "Seth Waxman"

The absolute truth known to everyone in the innovation community is that pioneering innovations become commonplace. What was revolutionary at the time the invention was made becomes taken from granted. In hindsight pioneering innovations look insignificant because they have become ubiquitous. The public, judges and critics find it difficult (assuming they try) to determine whether that which is commonplace today was really, truly obvious decades earlier as of the critical date. Even when an honest and fair obviousness inquiry is undertake it can be exceptionally difficult to put yourself back to before the invention was made in order to determine what was known and what was obvious at the time. But let’s dispense with the ridiculousness, shall we? The overwhelming majority of the world was not at all knowledgeable about or clued into the World Wide Web at the time this innovation was first made. So let’s dispense with the histrionics.

The Supreme Court on November 5, 2013, heard oral argument on whether the burden of proof in an action for a declaratory judgment of non-infringement falls on the plaintiff licensee or on the defendant patentee. The debate centered around whether a patentee/defendant sued for a declaratory judgment of non-infringement is required to prove a case of infringement that was neither alleged nor arguably possible where the DJ plaintiff is a licensee. The Petitioner argued that the burden that would be on the patentee as infringement plaintiff does not change when it is a DJ defendant. The Respondent argued that, because the patentee cannot assert an infringement counterclaim against its licensee in good standing, the normal default rule places the burden on the party that initiates the action.

Earlier today the United States Court of Appeals for the Federal Circuit issued it latest decision in Soverain Software LLC v. Newegg, Inc. (Fed. Cir., September 4, 2013). This latest decision was necessitated by the limited grant of rehearing ordered on June 13, 2013. The rehearing was granted for the purpose of clarifying the status of claims 34 and 35 of Patent No. 5,715,314. Before jumping into the substance of this case, the first thing I noticed was that Seth Waxman of Wilmer Cutler Pickering Hale and Dorr was listed as the lead attorney for Soverain Software in both the petition for rehearing and the ensuing briefs. It is hard to imagine that Soverain has brought in Seth Waxman at this late stage if they are not contemplating an appeal to the Supreme Court.

While one can never know for certain how the Supreme Court will rule, even a casual observer has to conclude that the Supreme Court seems poised rule in favor of Monsanto. Seconds after Bowman’s attorney started Chief Justice Roberts interrupted asking why anyone would ever patent anything if Bowman were to prevail. Shortly thereafter Justice Breyer openly concluded that Bowman infringed in a matter of fact way. It later may have seemed Breyer was probing for a response he didn’t get more so than announcing his view of the case. Nevertheless, if Bowman loses Breyer he has no chance.

There are two stages of litigation in the Supreme Court.  There’s what’s called the petition stage and the merit stage.  This is a phenomenon that doesn’t exist in the Federal Courts of Appeals, which are courts of mandatory jurisdiction.  There’s no doubt that if you lose a patent trial you have a right to appeal to the Federal Circuit.  You don’t have to come hat in hand begging the Federal Circuit to take your case or making it appear so sexy that they’re smitten and they take it.  But the Supreme Court of the United States has very, very little mandatory jurisdiction.  It’s almost all discretionary jurisdiction.  It gets 10,000 petitions a year and it currently grants review in about 75 cases a year.  And so there is a whole level of advocacy that begins with the filing of a petition for a writ of certiorari and then it’s followed by a brief in opposition by the winning party below and then a reply brief.  And whatever amicus briefs are filed by friends of the petitioner or the respondent in 10,000 cases in which the court is picking a few for plenary review.

The other thing I think that’s at play here, and maybe it’s the principal reason is a point that I made earlier which is our economy depends utterly on intellectual property. That is in fostering innovation and inventiveness in the manner in which the framers of the Constitution understood needed to be fostered. That is within appropriately countered system of protections for discoveries and inventions and novel expression. But that doesn’t smother innovation by competitors and by others. And because our economy is so utterly tied to intellectual property the Supreme Court correctly understands that this is a substantive area in which it is very, very important for the correct balance to be struck.

Waxman on the advantage of not being a “Patent Specialist”: Perhaps paradoxically, it seems to me, the advantage in litigation with respect to esoteric areas of the law and technology goes to the generalist. All too often, experts apply all sorts of mental shortcuts in explaining why their view is correct. It’s difficult for anyone with expertise to put herself in the mindset of someone who isn’t, and is approaching the issue as a generalist adjudicator. Even Federal Circuit judges with technical training lack expertise with respect to the vast majority of the kinds of innovation that comes before that court.

All of these accomplishments would be more than enough to fill out a lifetime spent in the law, but upon leaving the Department of Justice, Waxman has become nationally recognized and highly sought after as one of the preeminent appellate attorneys in America. He has also developed a particular niche in the area of patent law and litigation. Simply stated, if you have a patent case before the Supreme Court and you want to win, Waxman will be on your short list of attorneys to call. In fact, he should be right at the top.

The discussion was lively, perhaps even explosive. You could nearly see sparks fly when Chief Judge Rader continued to pepper Seth Waxman with question after question about his opinion on the propriety of parties lobbying the White House in order to obtain a favorable amici brief from the Department of Justice. Rader zeroed in on the slippery slope and obviously is not pleased with the mixing of law and politics, saying: “this is a cause for concern… Politics and law have a divide.” It is indeed troubling that the White House under both President Bush and President Obama have allowed lobbying by parties who seek a favorable DOJ amici brief. Interpretations of the law shouldn’t be for sale, or appear to be for sale to the largest donors.