Thursday, September 21, 2006

IPL&B highlights role of James Dabney in KSR v. Teleflex

The case KSR v. Teleflex now before the Supreme Court is about the motivation requirement used by the Federal Circuit in deciding obviousness cases. Its purpose is to protect against hindsight reconstruction, and if functions to make patent invalidity through obviousness HARDER to demonstrate (thus, it is pro-patentee). However, the theory of patent law is not the only thing at issue in KSR v. Teleflex. The theory of patent litigation is also at issue.

IP Law & Business wrote: James Dabney and some others argue that a Supreme Court specialist isn't quite the answer. "The trade-off is how well people know the Court versus how well they know the subject matter," says Stanford Law School professor Mark Lemley, one of 24 law professors who filed an amicus curiae brief on behalf of KSR. "In several high-profile cases over the last four years, very well-known oral advocates have blown the answers to really important questions," he added, though he declined to provide specifics.

In the Festo case, a certain Supreme Court specialist was "out to sea" when asked about a patent-law specific question. However, his opponent, a patent law specialist, referred to Justice Stevens, as Justice Stevenson. Mr. Dabney will make neither type of mistake. IPL&B quotes Dabney: "It's hard for me to imagine there is someone who could be more effective than me."

IPL&B notes that Dabney will be facing a "Supreme Court specialist": Dabney will face off against Supreme Court specialist Thomas Goldstein, a partner in Akin Gump Strauss Hauer & Feld. It's Goldstein's 17th high court argument, but his first patent trial. So he's turning to two patent lawyers -- Robert Sterne and Kenneth Bass, of Sterne, Kessler, Goldstein, Fox -- for IP questions. Steven Susser, a partner at Southfield, Michigan litigation boutique Young & Susser, had represented Teleflex at trial and on appeal. "While we consider ourselves to be trial specialists, we believe this has become an issue that is best handled by a Supreme Court specialist," he says.

Pennie & Edmonds gets a mention in the IPL&B article: Dabney took on the KSR case a year later, while he was still a partner at now-defunct Pennie & Edmonds. Robert Kalec, a general litigator with Troy, Michigan's Dean & Fulkerson, had handled the litigation when it began in 2001, but KSR approached Pennie in 2003 to review the case, and decided to hire the firm.


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