BEEM PATENT LAW FIRM, CHICAGO, IL, USA, TEL. 312-201-0011

Appeals...matters worth considering in choosing counsel

Appeals historically occur in about ½ of 1% of all patent cases.  Our experience has revealed that the case that is prepared for trial and appeal usually settles, but the case that is prepared half-heartedly for settlement often must be tried and appealed.  In the twists and turns of a patent case, we find it useful to keep the goal in mind.  We continually ask ourselves, “If we advance a certain argument at this stage of our client’s case, will it help the case both now and on appeal?”  This way of thinking helps to “move the ball” both immediately and in the long run.

Ability to deliver… each client's patent issues are unique, but in each case we bring to bear our successful experience in numerous appeals in the Federal Circuit, Seventh Circuit, D.C. Circuit and U.S. Supreme Court.  For practical purposes, the Federal Circuit is the "Supreme Court" in patent cases, because each year hundreds of appeals from patent decisions of the Patent Office and federal district courts nationwide are taken to the Federal Circuit, while only one or two of those patent appeals are accepted for review by the U.S. Supreme Court.  Mr. Beem was a member of the winning appellate team in Phillips Petroleum v. U.S. Steel and Shell Oil, the culmination of a record-setting 30 years of patent interferences and litigation over the Nobel-prize winning invention of crystalline polypropylene.  The Phillips Petroleum appeal established the validity, enforceability and infringement of the Phillips patent, thereby affirming the right to collect millions of dollars in royalties from the entire plastics industry.  Critical for success on appeal was the need to tell the story of the invention of polypropylene and the ensuing years of litigation, requiring explanation of both technical and legal issues.  Mr. Beem is intimately familiar with the Federal Circuit and the appellate process, because he served for two years as Law Clerk to the Honorable Edward S. Smith of the Federal Circuit, where Mr. Beem assisted in the review and disposition of numerous patent appeals.  Mr. Beem currently serves as co-chair of the ABA/IPL Committee on Amicus Curiae Briefs, in which capacity Mr. Beem receives, analyzes and takes action on requests for the ABA to appear as a friend of the court in Federal Circuit and Supreme Court appeals. 

What really counts…is capitalizing on the trial court record.  We have been brought into a case as late as one day before a petition for rehearing was due in the Federal Circuit.  Mentor v. Cox-Uphoff.   After combing the record for a few hours, we identified a strong issue which had been mentioned obliquely on appeal but had not been addressed by the panel decision.  We brought the issue sharply into focus, cited the record in detail, and obtained the votes of four appellate judges in favor of rehearing en banc before we filed a petition for certiorari on the same issue in the U.S. Supreme Court.  By capitalizing on the trial record, we forced a favorable settlement, saved our client from liquidation, and earned a special commendation from the U.S. Bankruptcy Court.

Focus on pivotal issue…the most difficult discipline in appeals is to identify and focus on the winning issue.  For example, in Mentor v. Cox-Uphoff, the strongest issue was whether the client was entitled to a new trial.  By stating the issue succinctly and citing the record, we established our credibility and advanced our client’s case.

Ability to tell a story…the Federal Circuit knows nothing about a case except what is presented by the lawyers in their briefs and the joint appendix.  Rambling briefs and an uncharted record are a disservice both to the client and to the Court.  A core competency of the Beem Patent Law Firm, evident at all levels of practice including appeals, is the ability to "marshal the facts" into a  compelling story in plain, understandable English.  In this respect, we are unabashed imitators of the famed plains lawyer Abraham Lincoln, who presented many more appeals to the Illinois Supreme Court than any lawyer up to the present day.  Consider Lincoln’s approach:

His logical mind marshaled facts in such orderly sequence, and he interpreted them in such simple language, that a child could follow him through the most complicated cause, and his mere recital of the issues had the force of argument.

Many people suppose that there is only one way of telling the truth, and that, given honesty, no art is required to make a frank and fair statement of matters in dispute; but this is a popular delusion. * * * [N]ot one [person] in a thousand can make facts speak for themselves. Certainly the average practitioner does not master his material. He is controlled by it, and presents his cause in such a manner as to necessitate contradiction, invite confusion, or challenge belief.

Id. at 208-09.

See Beem, The Abraham Lincoln School of Patent Litigation: Plain English, Simple Exhibits & Uncommon Humor (as presented to the American Intellectual Property Law Association in Washington D.C.)

If it was hard to present cases in Lincoln's day, it is even more so in today's patent cases.  Our approach is neither to "dumb down" the case nor to exalt the relevant technology.  Instead, we believe that the greatest respect that can be paid to the decision maker is to make an understandable presentation of the relevant facts.  The benefit to the client is a greater likelihood of success at all stages, including appeals.

Half-hearted arguments on secondary issues are doomed to failure…but it is common practice for lawyers to multiply the issues on appeal.  For an illustration of an appellate court’s response to unduly multiplied issues, see E.I. Du Pont v. Berkley, 620 F.2d 1247, 1256-57 (8^th Cir. 1980) (complaining bitterly about the presentation of 25 issues and subissues).  One of our key goals on appeal is to eliminate secondary issues.

Take a fresh look…it might be tempting for a client to “ride the same horse” that handled a case at trial, but often a fresh look is essential for success on appeal.  It is natural for trial counsel to become steeped in pet issues and pet peeves against opposing counsel and the trial judge.  But the Federal Circuit is interested only in the presence or absence of harmful error in the record.  As experienced appellate advocates, we often are brought in to handle appeals.  We start and end our task with a thorough review of the record.