Howard Shipley of Foley & Lardner Defends Technical Cert. Petition as Loyalty to Client

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By Tony Dutra

Feb. 20 — A patent attorney was caught between “the competing demands of the duty of loyalty that he owed to his client and the duty that he owed” to the Supreme Court when he submitted a petition for writ of certiorari with minimal modification to the highly technical jargon written by a patent owner.

Howard N. Shipley of Foley & Lardner LLP, Washington, was responding Feb. 19 to the high court's order asking him to show cause “why he should not be sanctioned for his conduct as a member of the Bar of this Court in connection with the petition.”

The Dec. 8 order accompanied the court's decision to deny Sigram Schindler's petition contesting a patent obviousness judgment by the Patent and Trademark Office, affirmed by the Federal Circuit.

Shipley's response, submitted by former Solicitor General Paul D. Clement now at Bancroft PLLC, Washington, admitted that the petition was “unorthodox,” but said that it “clearly and faithfully reflects the views of the client, right down to the client's favored locutions and acronyms employed in his other writings about the patent system.”

Schindler had filed and been denied review of a prior cert. petition, also submitted by Shipley and in the same basic style. The high court had also received at least three similarly written amicus briefs from Schindler, submitted by attorneys at Sughrue Mion PLLC, Washington.

Those briefs included two that generally supported the court's ultimate decisions—in Nautilus v. Biosig and Alice v. CLS Bank. Indeed, this journal characterized the petition at issue here as, in general, a complaint that the Federal Circuit and PTO have only paid lip service to a line of the high court's rulings ending with those cases.

Shipley's reply recounts multiple attempts to adapt the writing style to make a better case for Schindler's appeal, but Schindler was said to be insistent that his technical jargon—such as the acronym “ET CIs” for “emerging technology claim(ed invention)s”—be maintained, even in the questions presented to the court.

Shipley acknowledged that he could have withdrawn, but said that “doing so likely would have prejudiced his client's ability to pursue the last legal option available to save his patent from invalidation.”

One specific Supreme Court guideline to lawyers preparing petitions says that others should not “be credited with having contributed to the preparation of the petition,” and Shipley clearly did so in a footnote. However, he said in the reply, that reference was “a mitigating measure, to truthfully explain to the court why the briefs were written in a somewhat unusual style.”

“The proper remedy for filing an unconventional or difficult-to-follow certiorari petition should be denial of the petition (or rejection of the filing), not disciplining the lawyer who filed it,” Shipley said.

To contact the reporter on this story: Tony Dutra in Washington at adutra@bna.com

To contact the editor responsible for this story: Tom P. Taylor at ttaylor@bna.com

Full text at http://pub.bna.com/ptcj/Shipley_Response.pdf.