Ladies and Gentlemen…
On March 14, 2019, the at-capacity crowd in the ceremonial Federal Courtroom at the Dirksen U.S. Courthouse in Chicago, IL, buzzed with anticipatory excitement. The audience gathered for this evening’s presentation of arguments was not the typical smattering of members of the public, interested parties, and news reporters. Rather, the audience sitting in the gallery consisted of attorney members of the Richard Linn American Inn of Court, an organization committed to the principles of professionalism, civility, and ethics in the practice of intellectual property law. The attorney members and guests, such as myself, were in attendance for the Annual Oral Advocacy Challenge. This event involves Inn participants in oral arguments regarding current IP issues for which there is no settled law before a panel of actual judges that simulates proceedings before appellate court judges.
Who is presiding?
The officiating judges amped up the event’s tenor. The Honorable Richard Linn, Circuit Judge of the Court of Appeals for the Federal Circuit, and namesake of the Inn, was a guest of honor who has attended every Oral Advocacy Challenge. Joining Judge Linn were The Honorable Thomas M. Durkin, The Honorable Virginia M. Kendall, and The Honorable Rebecca R. Pallmeyer, U.S. District Court Judges for the Northern District of Illinois. A distinguished bench of three federal district court judges and a judge from the sole federal appellate court for patent cases awaited the litigants.
Who is arguing before the judges?
If you assumed that the litigants would be seasoned attorneys with extensive prior experience, you would be wrong. Rather, four law students argued a case on appeal. However, no jitters were on display.
What’s the issue?
The problem centered on drilling rigs and questions of the extent to which U.S. patent laws should apply when some activity relevant to making the patented drill rig happened outside the US. As opposed to a contest over a factual issue, the dispute was over what the law meant. In particular, the legal issues related to whether a U.S.-based firm was liable for infringement of a patent where the rig was constructed outside of the United States, albeit based on instructions given in the US.
The hypothetical controversy allowed two pairs of Inn pupils to showcase their preparation. One of the purposes of the Linn Inn of Court is mentoring. To achieve this developmental goal in part, the Linn Inn runs a mentor/protégé program organized around pupilage groups. The four student advocates worked with attorneys from their group to understand the problem, articulate pertinent legal concepts, and hone presentation skills. When the Linn Inn of Court was called to order, all attention turned to the representatives of Loyola University Chicago, John Marshall, Chicago-Kent, and Notre Dame law schools.
In this corner, hailing from Loyola University in Chicago’s Gold Coast
The oral arguments were organized in a standard format: the appellant’s counsel presented argument on the first issue for nine minutes, the appellee’s counsel countered for ten minutes, and the appellant delivered a one-minute rebuttal. The second issue followed the same format.
The choreography of the legal pugilists, to lean on a favorite descriptive analogy for courtroom sparring, unfolded with deliberate steps. The apt comparison was most readily apparent when the judges delivered challenging questions on the second issue that felt like an unexpected left hook.
Molly Hunsinger, a third-year law student and Linn Inn pupil, represented the appellee on the second issue. As written, the facts of the problem were undisputed. All parties agreed that her client provided written instructions for building the drill rig, software, and an engineer. The legal question focused on whether this was enough for her client to directly infringe given that the rig was built entirely outside the United States.
Hunsinger presented two arguments. First, she argued that there was no sale, or offer to sell, in the United States under 35 U.S.C. § 271(a). This argument was that the law explicitly applied to acts in the United States, such that the extraterritorial nature of the dispute created an impermissible conflict between U.S. patent policy and the laws of foreign nations. Her second argument was that the relevant statute for infringement based on supply of items to be combined in a product that would infringe abroad (35 U.S.C. § 271(f)) requires the supplying of components. Her position was that the written instructions provided were not components. She proceeded to erect a logical argument that this particular statute was a unique carve- out in patent infringement cases, as it related to extraterritorial liability (patent infringement outside of the United States). As she articulately explained, there is a general US presumption against extraterritoriality, such that a narrow interpretation of the meaning of the term component is warranted.
Judge Pallmeyer delivered a series of crisp inquiries, probing the extraterritorial aspect and addressing counsel’s characterization of the statute as a loophole. Nearly at the same moment, Judge Durkin asked for the applicable standard of review. Hunsinger steadied herself, took a deep breath, and delivered clear responses.
The Final Bell
The panel of judges did not deliver its opinion in regard to the matter before it, humorously opting to provide its written determination at a later time. The clear result is that all in attendance won. How? Let’s hear from Molly herself:
“It was a rewarding experience and such a confidence boost to know that even though I was a music major not a science major in undergrad, I was able to sufficiently learn about patents and successfully give an oral argument in front of a large portion of the IP Chicago community. It can be nerve-racking, but the key is to keep thinking, continue answering the questions using facts and law, and to never stop fighting.”
The 2019 Richard Linn American Inn of Court Annual Advocacy Challenge exemplified the American Inn of Court’s commitment to improving legal skills, professionalism, and ethics.
In his closing remarks summarizing the evening’s event, Judge Linn employed the boxing metaphor himself, commending the students for taking hits, getting knocked down, and pressing forward with poise. I was fortunate to have a ringside seat and observe IP advocacy excellence by one of Loyola’s finest.
Loyola University Chicago School of Law, JD 2020