Patent Appeals: The Elements of Effective Advocacy in the Federal Circuit

PatentLawPic374Book: Patent Appeals: The Elements of Effective Advocacy in the Federal Circuit
Author: Mark Davies
Publisher: Oxford University Press

Cost: $85.00 from Amazon

Mark Davies recently authored the user manual for Federal Circuit appeals.  From its 300 spiral-bound pages, you can tell that the book is designed to serve the appellate attorney during the process of crafting a brief. Davies argued dozens of appeals as a DOJ appellate attorney and is now doing the same at O’Melveny in DC.

The book is very easy to read and understand, and it does an especially good job of providing concrete advice on how to draft an effective and clearly written brief while staying within the rules.

Davies adapts Strunk & White’s Elements of Style into a top five list that would benefit any writing: (1) Omit needless words; (2) Make the paragraph the unit of composition; (3) Use parallel and consistent writing form; (4) Use the active voice; and (5) Use definite, specific, concrete language.

His biggest general piece of advice is in all caps: DO NOT USE A DISTRICT COURT BRIEF AS A SHELL!

If you have an appeal pending, you better use the book.

 

14 thoughts on “Patent Appeals: The Elements of Effective Advocacy in the Federal Circuit

  1. I have long felt that patentable subject matter is really a question of claim drafting. Drafting a claim that will pass the 101 test without surrendering the scope of protection to which the inventor is entitled. (I do not think an inventor is entitled to claim a method so broadly that all its steps can be performed “by hand”.) Consider this modification of the page rank claim:

    A computer implemented method of scoring a plurality of linked documents, comprising:
    [obtaining] downloading to a memory device from an online database a plurality of documents in electronic form, at least some of the documents being linked documents, at least some of the documents being linking documents, and at least some of the documents being both linked documents and linking documents, each of the linked documents being pointed to by a link in one or more of the linking documents;
    assigning a score to each of the linked documents in the memory device based on scores of the one or more linking documents in the memory device; and
    processing the linked documents in the memory device according to their scores.

    I believe this modified claim is directed to statutory subject matter because it recites a memory device and a downloading step and it does not surrender claim scope because almost any computer implemented method that performs the functions recited in the original claim is protected.

  2. Regardless of where they get their business from, the majority of advocates in CAFC patent cases do a poor job of it and could use some guidance. I hope this book fits the bill.

  3. Thomason, the professional backgrounds of those who appear before the CAFC vary more widely than at any other circuit, so I don’t really understand your question. Is your question limited to patent appeals?

    As for who/what you know, etc., the CAFC gets all types. You’ve got your Carter Phillips and Kathleen Sullivan on one end of the spectrum, and lots of Joe/Jane Schmoe trial lawyers on the other. Don’t get me wrong — lots of trial lawyers are also great appellate advocates, but in my experience, most have critical misunderstandings of appellate law.

  4. Dhuey are you still harboring beliefs that many of those who advocate to the CAFC get the assignment because of what they know, rather than who they are or who they know?

  5. Thomason, I haven’t read this yet, but it doesn’t surprise me that it would be 300 pages. Heaven knows, many of the advocates appearing at the CAFC could use lots of guidance.

  6. “You are a jealous child”

    I’m jealous? Of whom? What in the he11 are you talking about? The only thing that’s pitiful is your lack of understanding of english.

  7. John S.,

    Here, a shell just means “template” or “starting point.” In other words, the brief’s organization should be completely different at the Fed. Cir. than at trial.

  8. “Should it really take 300 pages to explain how to run an appeal through the CAFC? This suggests that the CAFC has complicated, often needlessly, the process of appellate review.”

    I can summarize it for you in far fewer than 300 pages, if you’re not interested in the “effective” part of the “Elements of Effective Advocacy.”

  9. Should it really take 300 pages to explain how to run an appeal through the CAFC? This suggests that the CAFC has complicated, often needlessly, the process of appellate review.

  10. Not being a lawyer but merely a chemical PHESITA – with the “E” being for “extrodinary” ;), could someone explain what “a shell” is in this context?

  11. Not being a lawyer but merely a chemical PHESITA – with the “E” being for “extrodinary” ;), could someone explain what “a shell” is in this context?

  12. e6k – You are a jealous child. Your unfulfilled dream of becoming a successful patent attorney has turned into a relentless animosity against those that were.

    How pitiful. I can feel your anguished emotional pain.

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