Exclusive with Seth Waxman, Supreme Court Patent Superstar

Seth Waxman is not your ordinary appellate attorney.  He has an undergraduate degree from Harvard, a law school degree from Yale and early in his life he spent a year in Africa doing humanitarian work.  Indeed, Waxman is committed to the cause of pro bono representation, which is far more than a polite nicety or done to score political points with the bar.  One of America’s “super lawyers” devotes as much as 20% of his practice life to pro bono causes.

Waxman rose from law clerk to the Honorable Gerhard A. Gessell, to be a successful attorney in private practice for 17 years.  Ultimately Waxman would be invited to work at the Department of Justice, where he became Associate Deputy Attorney General and finally Solicitor General during President Bill Clinton’s second term.

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.

When the weight of the Supreme Court fist seemed poised to come down upon the presumption of validity enjoyed by patents it was Waxman who argued the case and prevailed. Such a victory was no small feat. This case presented a substantial uphill battle given the presumption of validity was so universally applied by the Federal Circuit. The only reason the Supreme Court would have taken the case would be to change the law, but thankfully that did not happen.

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.

I have wanted to sit down on the record with Waxman for some time, but due to scheduling conflicts things kept getting pushed back. We had the interview scheduled for April 2012, but my personal life wouldn’t allow it.  We finally got together for an interview on Friday, August 3, 2012, which took place at his offices in downtown Washington, DC.

We pick up the interview starting with Waxman telling how he began his career in the law.

[Patent-Litigation]

The path to becoming Solicitor General of the United States

WAXMAN: Following law school, I clerked for an amazing district judge who was a mentor and role model for the rest of his life.  When I finished my clerkship year, I went in search for a work environment in which I could ascertain reasonably quickly – with the benefit of good supervision and great role models — whether I could try cases.  I found that environment in a wonder litigation boutique, Miller, Cassidy, Larroca & Lewin, where I practiced for 17 years.

I always had very much in mind both  to devote a significant amount of my private practice to pro bono matters that reflected my own vision of how the world could be a better place, and to combine a professional  career in the private sector with one in public advocacy.  I considered several  appealing government jobs right after my clerkship, but decided that I needed first to learn how to be a trial lawyer in private practice so that at least in theory I could hang out my shingle and be comfortable.

QUINN: So whether or not the game plan would be successful?

WAXMAN: Whether or not the game plan was even feasible.  Over my first 17 years in practice, I received  a number of offers to take various government jobs.  I was always very tempted, but it never seemed to be the right time – often  because of some pro bono matter I was up to my eyeballs in that I just felt I needed to see through.   Finallyan opportunity presented itself to work in a senior policy position for  my nearly lifelong friend and partner Jamie Gorelick, who had just became Deputy Attorney General under Janet Reno.   I agonized and agonized about leaving my partners, my clients, and my ample paycheck.  I decided the opportunity was just too good to pass up, and I’m so glad I did.   I spent two years as an Associate Deputy Attorney General with responsibilities largely on  the civil side of the Justice Department.  It was incredibly interesting,  time consuming, exciting, and eye-opening.  I became involved with almost every agency in the U.S. government.  There was lots of interaction with, and testimony before  Congress.  I was at the White House at least three days a week, sometimes more to participate in meetings with the White House Counsel, OMB, and as the Justice representative on the National Security Council, the Domestic Policy Council, or the National Economic Council.

The exoeriences were simply marvelous, but after two years, I began worrying that it was time to return to my practice – and frankly to replenish my coffers.  But I found it hard to walk away.  Then, Solicitor General Drew Days announced that he planned to return to Yale Law School, andthe Attorney General asked Walter Dellinger  to serve as acting Solicitor General.  The SG’s office has one other noncareer position, and Walter, who by then had become a close professional colleague and friend, asked me to serve as his  Principal Deputy.  It was impossible to consider the prospect of leaving government when I had the chance to brief and argue cases in the Supreme Court, and of course to work with Walter, who I one of a kind in the very best sense of the word.  We spent almost a year working together, and what a year that was!  When the Supreme Court term ended,  the President asked whether I would like to be nominated to be  Solicitor General.  And after getting over the shock –

QUINN: Was this a request from President Clinton?

WAXMAN: Yes.

I mean, I’d had some intimations about this, including from Walter, who I know was advocating for me.  But I was far from the most logical candidate to be Solicitor General.  It had been decades since anyone who hadn’t been a judge or law professor had been nominated and confirmed for this position.  There were many eminent, supremely qualified people who I’m sure wanted the position and would have been terrific.  I guess I had the advantage of having spent a lot of time working with senior staff at the White House, and on occasion with the President himself, on many of the most important issues for the Administration.  And of course, I’d just spent a year as the principal deputy, whichis pretty good training.

So I got nominated, I got confirmed, and I served until about an hour after George W. Bush took the oath of office.  Along with Janet Reno, I left my letter of resignation on my desk and walked out of the Justice Department to a new, uncertain professional life.

QUINN: What sparked your interest or involvement in patent litigation?

WAXMAN: To a considerable extent it was the result of my experience as Solicitor General.  During my 17 years in private practice before joining the Department  Justice, I had no idea even which  title of the U.S. Code contained the patent or copyright laws.   As a young associate, I had tried a trademark case, which fun.The client contacted me directly, so it was my own case.  People told me that trademark law was really “specialized,” so  unless you knew the secret handshake and all the correct acronyms you couldn’t be successful.  That turned out to be the opposite of the truth.    Sure,  there’s a lot of inside baseball and doctrines unfamiliar to the uninitiated.  But you’re trying these cases to generalist judges.  And — surpise —they don’t know the secret handshake either.    So it was a wonderful eye-opening experience.  Nonetheless, my practice just didn’t really lead in that direction.  Prior to joining the Solicitor General’s office, I never handled either a patent or  copyright case.

Once I became Solicitor General, I became responsible for approving all appeals, approving and supervising amicus briefs, and deciding which cases among the many that the United States loses in the courts of appeals warranted a petition for a writ of certiorari from the Supreme Court — including, of course, cases decided by the Federal Circuit.   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 to 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 economy  that increasingly produces intellectual property.  So this seemed like an area of litigation well worth attention.

I didn’t argue a patent case while I was Solicitor General.  There weren’t that many opportunities, and those cases that did come up didn’t seem sufficiently consequential to merit an argument by the Solicitor General himself.    But when I returned to private practice nine months after I left government service, I started getting telephone calls soliciting my involvement in patent cases in the Federal Circuit, and I took the bait.

My first client in this space was the Monsanto Company, whose then-new general counsel, Charles Burson,  had served as Vice President Al Gore’s chief of staff (and before that had been the Attorney General of Tennessee) .  I continue proudly to represent Monsanto in a number of very interesting patent appeals, largely in the Federal Circuit.  In pretty short order, though, my patent-litigation practice  evolved into the Supreme Court.  At the time, there were very few litigations experienced both in patent litigation  and  Supreme Court advocacy.   As the Supreme Court got more and more interested in reviewing what the Federal Circuit was doing,  my own practice was developing  in the same way.

CONTINUE READING

• Part II — Advocacy in the Supreme Court
• Part III — Why is the Supreme Court Interested in Patent Cases
• Part IV — Mechanics of a Supreme Court Decision to Grant Certiorai