Elite Patent Law

• Author: Paul R. Gugliuzza
• Position: Associate Professor, Boston University School of Law
• Pages: 2481-2510

2481

Elite Patent Law

Paul R. Gugliuzza*

I. INTRODUCTION ........................................................................... 2481

II.THE SUPREME COURT BAR IN PATENT LITIGATION .................... 2484

A.THE ELITE SUPREME COURT BAR ........................................... 2484

B.ELITE LAWYERS IN SUPREME COURT PATENT CASES ................ 2486

C.ELITE LAWYERS AT THE FEDERAL CIRCUIT .............................. 2491

1.Background and Methodology................................... 2491

2.Results .......................................................................... 2493

III.ELITE PATENT LAW ..................................................................... 2497

A.BENEFITS OF ELITE LAWYERING IN PATENT APPEALS ............... 2497

B.POTENTIAL PITFALLS ............................................................ 2502

C.THE SOLICITOR GENERAL’S ROLE IN PATENT CASES ................ 2507

IV.CONCLUSION .............................................................................. 2510

I. INTRODUCTION

Patent law, the conventional wisdom goes, isn’t for everyone. It’s the legal

domain of scientists. Engineers. Chemists. Molecular biologists. Your J.D.

won’t even let you practice law at the Patent Office unless you also have a

bachelor’s degree (or an “equivalent” amount of academic credit) in certain

science or engineering fields.1 Judge Learned Hand, in a famous opinion

*

Associate Professor, Boston University School of Law. For comments and helpf ul

discussions, thanks to Stacey Dogan, Mike Meurer, Rachel Rebouché, and Greg Reilly, as well as

participants at the Junior IP Scholars Association Summer W orkshop at Northwestern University

School of Law, the IP Schola rs Confere nce at U.C . Berkeley School of Law, and Iowa Law Review’s

Administering Patent Law Symposium. Special thanks to David Schwartz and Kathy Zeiler for

advice on the quantitative aspects of this Essay and to Jason Rantanen for creating the Compendium

of Federal Circuit decisions, which was helpful in creating the dataset of Federal Circuit oral

arguments described below. Finally, thanks to Ally Faustin and Hillary Leffue for superb research

assistance. Any errors are mine alone.

1. OFFICE OF ENROLLMENT & DISCIPLINE, U.S. PATENT & TRADEMARK OFFICE, GENERAL

REQUIREMENTS BULLETIN FOR ADMISSION TO THE EXAMINATION FOR REGISTRATION TO PRACTICE

IN PATENT CASES BEFORE THE UNITED STATES PATENT AND TRADEMARK OFFICE 4–8 (2018),

https://www.uspto.gov/sites/default/files/documents/OED_GRB.pdf; see also William

2482 IOWA LAW REVIEW [Vol. 104:2481

assessing the patentability of purified adrenaline, eloquently lamented “the

extraordinary condition of the law which makes it possible for a man without

any knowledge of even the rudiments of chemistry to pass upon such

questions as these.”2 Judge Samuel Kent—who was later impeached and

imprisoned for lying to federal investigators about sexual harassment

allegations3—put it somewhat less eloquently when he derided the judges of

the patent-focused Federal Circuit as “people wearing propeller hats.”4

But perceptions of patent law as a specialized, esoteric area of practice

—and of patent lawyers as pocket protector-sporting aficionados of geeky

headwear—are increasingly wrong.5 Over the past two decades, the country’s

most prominent attorneys have begun to gravitate toward patent cases. In the

Supreme Court’s 2016 Term, for example, former Solicitor General Seth

Waxman argued a remarkable four of the six patent cases heard by the Court.

Other lawyers arguing patent cases that Term included four former Assistants

to the Solicitor General (William Jay, Deanne Maynard, Carter Phillips, and

Andrew Pincus) and the former dean of Stanford Law School (Kathleen

Sullivan). Combined, those six lawyers have presented oral argument to the

Justices over 200 times. Patent specialists, they are not.

That the Supreme Court would even hear six patent cases in a single Term

is noteworthy, too. As Figure 1 below indicates, from 1982 (the year the

Federal Circuit began operation) through 2000, the Supreme Court heard

more than one patent case in a single Term only once (in 1998), and it often

didn’t hear any.

Hubbard, Razing the Patent Bar, 59 ARIZ. L. REV. 383, 391–93, 400–19 (2017) (criticizing the

Patent Office’s technical education requirement).

2. Parke-Davis & Co. v. H.K. Mulford Co., 189 F. 95, 115 (C.C.S.D.N.Y. 1911), aff’d in part,

rev’d in part, 196 F. 496 (2d Cir. 1912).

3. House Impeaches Texas Judge Accused of Sex Crimes, CNN, http://edition.cnn.com/2009/

POLITICS/06/19/U.S.impeachment.judge/index.html (last updated June 19, 2009, 1:53 AM).

4. Kimberly A. Moore, Judges, Juries, and Patent Cases—An Empirical Peek Inside the Black Box,

99 MICH. L. REV. 365, 396 (2000) (quoting O.I. Corp. v. Tekmar Co., No. 95-CV-113 (S.D. Tex.

June 17, 1996), aff’d, 115 F.3d 1576 (Fed. Cir. 1997)).

5. See Lee Petherbridge & David L. Schwartz, The End of an Epithet? An Exploration of the Use

of Legal Scholarship in Intellectual Property Decisions, 50 HOUS. L. REV. 523, 552–53 (2012) (“Those

who teach patent law are aware that to this day there exist the remnants of a culture that preferred

attorneys with technical backgrounds to other attorneys. . . . Today that view seems archaic . . . .”).