Inside the U.S. Supreme Court’s Patent Fascination


In August of 2012, I had the opportunity to sit down on the record with Seth Waxman of WilmerHale. Waxman is an accomplished attorney by any measure.  Perhaps most notably, he served as Solicitor General of the United States, which is the #3 position at the Department of Justice, during the second Clinton Administration. The Solicitor General, as most know, is responsible for advocating the U.S. government’s position before the United States Supreme Court.

While many appointments within the government are political in nature, the Solicitor General’s office has been occupied by some of the best and brightest minds the legal profession has to offer. Waxman is no exception.  Indeed, he is extraordinarily well regarded within the legal community, and specifically within the patent community. To those who are familiar with the Supreme Court and patents, Waxman is the ultimate rockstar.  He is the attorney who successfully prevailed in i4i v. Microsoft, the case where Microsoft and legions of amici wanted to reduce or eliminate the presumption of validity for a patent, lowering the standard required to find patent claims invalid.

Waxman prevailed at the Supreme Court against what seemed to be very long odds.  The U.S. Supreme Court is not known for taking pro-patent positions, and frequently when they take a Federal Circuit case, it is for the purpose of making a change.  While the Supreme Court does not always alter the ultimate outcome (for example the Bilski invention was unpatentable at the Federal Circuit and unpatentable for a different reason in the view of the Supreme Court) the Supreme Court doesn’t typically take cases from the Federal Circuit to hand out “atta boy” compliments.   Yet Waxman convinced the court to take the most important pro-patent position imaginable. It is unbelievable that we came that close to having a patent system where there is no real, strong presumption of validity after applicants spend all that time and money going through the patent process.

My discussion with Waxman was long, over 90 minutes.  I published virtually all of the discussion in 4 parts on  See:

  1. Exclusive with Seth Waxman, Supreme Court Patent Superstar
  2. Seth Waxman Discusses Advocacy in the Supreme Court
  3. Why is the Supreme Court Interested in Patent Cases?
  4. Mechanics of a Supreme Court Decision to Grant Cert.

For those who prefer highlights, what follows are a few of the best, most juicy tidbits.

I asked Waxman why the Supreme Court is so interested in patent cases. After explaining the role of the Supreme Court to oversee the lower courts, even with a specialized court where there will be no circuit split, Waxman explained:

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.

And I think the final reason for the increase in the cases is maybe the same reason that I’m attracted to doing cases like this, which is they are just darn interesting as an intellectual matter.  You get to learn about a technology that you don’t know as much about as you need to to decide a case.  And you get to learn and scrutinize and question the contours of substantive legal doctrine that you’re not otherwise familiar with.  I don’t know how comforting that is to the Patent Bar.

When we discussed advocating at the Supreme Court and why it is that seasoned attorneys seem to get deference and more time to answer questions, Waxman talked about making sure that you are not wasting the Court’s time and presenting so that the Judges see what you are saying as useful information that will assist them in making a decision.  He then talked about staying away from being clever.  Waxman said:

WAXMAN: Smart law students tend to be clever.  When they begin practice, they tend to gravitate toward answers that tend to make them look smart rather than focusing on answers that will most help a judge decide the best way to resolve an issue.  Moving from the former to the latter  requires time and experience, and sometimes  a lot of tread wear.  But it’s the most important transition an advocate can make.  Clever answers provide transient gratification to the speaker, but judges are looking for wisdom, and it is vitally important for advocates not to mistake the former for the latter.

QUINN: Too clever by half, almost.

WAXMAN: Or just clever, period.  Don’t ever aspire to be the kind of lawyer judges consider merely clever.

One of the things I found particularly interesting is that Waxman was at the Justice Department at the time when the Supreme Court first started showing more steady interest in patent cases.  Although he did not argue a patent case while Solicitor General, he was not shy about appealing cases or addressing patent issues before the Court.  Waxman explained:

WAXMAN: Larry Wallace was the long-serving Deputy Solicitor General principally responsible for the intellectual property docket.  Some cases we had lost in the Federal Circuit came to my attention, and my instinct really was, this is just fundamentally wrong and we should seek review and correction in the Supreme Court.   Larry came in, with his gentle manner, and explained that I needed to understand that the Supreme Court is not much interested in the Federal Circuit’s docket and would generally let the Federal Circuit have the final say in patent matters.   I just couldn’t abide that.  It seemed to me totally inappropriate, and I thought that perhaps it just reflected a longstanding assumption by patent practitioners, inside and outside government.  So we petitioned in a couple of Federal Circuit cases.  They were granted, and we won.  I’ve wondered several times since what we perhaps unleashed.

QUINN: So you’re the one that’s responsible for getting the Supreme Court interested in our territory?

WAXMAN: I hope not, but the experience taught me two things.  To an extent much greater than with trademark law, many of the doctrines and terminology  were obscure.  And the technology can sometimes be daunting for those, like me, with no technical training  But intellectually, the cases were really interesting.  And the outcomes and the shape of the doctrine are incredibly important for a nation’s economy  that increasingly produces intellectual property.  So this seemed like an area of litigation well worth attention.

Perhaps the most fascinating piece of the interview was the final segment about the mechanics of the Supreme Court granting certiorari.  Although anyone on the outside can never know what goes on internally at the Court, the process the Court frequently follows will include asking for the views of the Solicitor General, known as a Call for the Views of the Solicitor General, or CVSG. Although this entire segment of the interview is truly excellent, and one of the reasons I specifically wanted to get Waxman on the record, one thing that came up was both interesting and a bit humorous.  It went like this:

WAXMAN: When the Supreme Court of the United States feels that it wants the views of the Solicitor General in order to help it, the Supreme Court, decide how to exercise its discretionary jurisdiction, it will ask.  And the practice is known as CVSG, calling for the views of the Solicitor General, or it is also referred to as the invitation practice.  But when a petition is ready for conference, and is conferenced by the court, one option for the court is to issue an order to the Solicitor General which says the Solicitor General is invited to express the views of the United States.

QUINN: Now that’s not really an invitation in the way most people understand it.

WAXMAN: Let’s put it this way.  As a practical matter you cannot RSVP your regrets.

QUINN: No, you always accept the invitation.  [Laughter]

WAXMAN: It’s an odd thing because it’s styled an order but the text of it is an invitation and in theory there’s no reason why the Solicitor General couldn’t say, I’m sorry but I’ve already committed that evening.  You know, I would have loved to come, but I have a long-standing prior engagement.



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