When it comes to appellate practice, giving credit where it’s due can be complicated.
It’s the nature of the practice. World-changing precedents rarely are the work of a single law firm. As we scrutinized the achievements of the dozens of firms nominated for this, our first Appellate Hot List, that quickly became clear. Cases important enough to land before the U.S. Supreme Court or other appellate venues tend to attract lots of interested parties-ones either directly interested or with broader concerns about how the outcome will shape the law. Great firms work in concert to achieve their goals.
We asked our readers to nominate firms that scored at least one significant appellate win since January 2007, plus an impressive track record overall. A “significant win” meant prevailing before the U.S. Supreme Court, a U.S. circuit court of appeals or a state court of last resort when the financial stakes were high or an important legal principle was at stake. Government attorneys were not eligible (so the California attorney general’s office, for example, unfortunately gets no credit here for its role in sustaining the big tobacco settlement against an antitrust claim). We also examined the records of dozens of cases.
The firms on this list all played roles in the most important appeals of the year, drafting the main briefs or offering the main oral arguments, or else chiming in as friends of the court. We looked for evidence that amicus briefs contributed to an outcome (by offering arguments referenced in the ruling, for example). For each firm, we list a number of cases that we felt illustrated the skills the organization had to offer. Unfortunately, space did not allow us to list each firm that contributed to a specific outcome. Also unfortunately, some fine appellate firms did not make this list. The ones that did get credit for unqualified excellence.
Fish & Richardson
Fish & Richardson can boast a century’s appellate experience, mostly at the cutting edge of intellectual property law. It can deploy more than 425 attorneys, including some 35 attorneys in the appellate practice under Robert Hillman, Frank Porcelli and John Dragseth. The firm encourages litigation partners to handle their own appeals, and appellate practitioners to take trials from time to time.
Morrow v. Microsoft Corp., 499 F.3d 1332 (Fed. Cir. 2007). Lead attorneys Frank E. Scherkenbach, Kurt L. Glitzenstein, Craig R. Smith and Charles H. Sanders. Patent law trumped the principles of bankruptcy and trusts in this dispute over a patent related to Internet hyperlinks. The Federal Circuit said that a trustee in the bankruptcy of At Home Corp. lost standing to sue Microsoft Corp. for infringement of the patent. Of three trusts, the one granted the right to sue for infringement was not the trust given ownership of the patent, and the one given ownership lacked the right to sue.
Paice LLC v. Toyota Motor Corp., 504 F.3d 1293 (Fed. Cir. 2007). Lead counsel Ruffin B. Cordell, Ahmed J. Davis and Robert E. Hillman. Expanding on eBay Inc. v. MercExchange LLC, 547 U.S. 388 (2006), the Federal Circuit ruled that if a court forces a patent holder to grant a compulsory license, it must say why the royalty it sets is appropriate. The case involved gas/electric hybrid motors being marketed by Toyota, the firm’s client.
SRI Int’l Inc. v. Internet Sec. Sys. Inc., 511 F.3d 1186 (Fed. Cir. 2008). Lead attorneys Frank E. Scherkenbach, Robert E. Hillman, Joshua Bleet, Michael J. Kane and Michael M. Rosen. The firm scored a reversal of summary judgment in a patent case that hinged on the definition of prior art. The Federal Circuit said it would not presume that technical specifications posted on a File Transfer Protocol server as part of a peer-review process was publicly accessible. The answer would depend, the court said, on whether anyone could actually find the specifications-and that would be a matter for a jury.