Parties to an IP case generally do not want to end up in the United States Supreme Court. They almost always want a favorable and final resolution long before that stage. So it may seem odd to think about a possible Supreme Court strategy early in a matter. Usually, the “strategy” is simply to get nowhere near the Court.
But a party may find itself in a situation where Supreme Court review is the only remaining way to achieve its objective. At that point, decisions made earlier in the case can have a profound effect on the viability of a petition for certiorari. Accordingly, though the lens may be hazy and the horizon distant, an early strategy for Supreme Court review may later prove invaluable.
Of course, a party will be in a position to seek Supreme Court review only if it has received an unfavorable ruling below. And even with the Court’s recent increase in attention to patent law, grants of review are rare. A Supreme Court strategy is thus like an insurance policy that is statistically unlikely to pay out even when needed. Whether it makes sense to invest in such a strategy depends in part on the cost of the premiums. A key question is to what extent potential Supreme Court issues can be cultivated without jeopardizing an overall strategy of swift success. This question raises a number of important issues, three of which are discussed here.
The pros and cons of challenging precedent
The path to the Supreme Court may involve more than just challenging the decision in the case at hand. It may also involve challenging an established Court of Appeals or Supreme Court precedent that was used to support the adverse decision. Such a challenge may need to be preserved by raising the issue before lower courts that are not empowered to alter the challenged precedent. This can create a dilemma. The primary approach is typically to distinguish the precedent or argue that it otherwise does not apply to the case. While challenges to precedent are usually framed in the alternative, they may be perceived as crediting the notion that the precedent is stacked against the challenging party.
Accordingly, the party must weigh potential long-term advantages of the challenge against potential disadvantages before it decides whether to begin staking out that path to possible Supreme Court review.
The perils and promise of circuit splits
Splits of authority among the federal Courts of Appeals are one of the primary bases for granting Supreme Court review. Because of the Federal Circuit’s role in patent cases, circuit splits generally do not figure into grants of review of patent-law issues. But in copyright and trademark cases, circuit splits can be a prominent factor. Deciding how much to emphasize potential circuit splits during the lower court proceedings may also involve strategic balancing. There is often room for reasonable debate: is the split real, or do the different facts and circumstances of the cases render the alleged split illusory? The way in which a party characterizes the law of different circuits, as well as the relevant issues in the case at hand, may affect the party’s ability to demonstrate a split of authority in a later petition for certiorari. Likewise, a party who later wants to show that a split of authority is illusory may be constrained by its earlier arguments in the case. These considerations can be especially important in cases where there is no controlling authority on the issue in the Court of Appeals with jurisdiction over the case. Deciding on the best approach is far from an exact science. But awareness of the longer-term implications of decisions made earlier in the case may increase the chances of ultimate success.
Dusting off the oldies
Some Supreme Court cases arise from the revival of older Supreme Court precedents that may have gotten somewhat lost beneath subsequent developments in the law. This scenario has been especially evident in some of the Court’s recent patent decisions. Older cases, while not technically overruled, may appear obsolete because later cases have gone in a different direction. A party may face decisions about how much to rely on older precedents and how much to try to harmonize later developments with those precedents. These decisions can be yet another balancing act. Heavy reliance on older precedents at the apparent expense of later developments may be perceived as a sign that the party’s position under later law is weak. But taking a more unvarnished view of the older precedents may lay the groundwork for an overdue course correction from the Supreme Court.
Strategies are increasingly relevant in IP cases
All of these decisions, of course, are made against the backdrop of the great rarity of Supreme Court review. Only a small percentage of IP cases travel so far as a final appellate decision. Of those, only a tiny percentage are reviewed by the Supreme Court. However, the Court’s increased attention to patent law makes it more likely that potential Supreme Court issues may be embedded in a given case. Further, some believe that Justice Sonia Sotomayor’s background in copyright and trademark cases will prompt increased activity in those areas. Even if a case is not one of the few chosen for Supreme Court review, it may well be affected by other cases that are decided. And a party’s ability to take advantage or mitigate the damage of a change in the law may be shaped by positions taken earlier in the case. Accordingly, an eye on the Supreme Court can be important to a case even when the Court seems nowhere near.
For more information, please contact Stan Panikowski.