The Catholic University of America

Hon. Paul R. Michel (right) retired chief judge of the U.S. Court of Appeals for the Federal Circuit,
moderated a discussion by attorneys from both sides of a complex and important case in patent law.


Students are Treated to a Postgame Debrief in Significant IP Case


Much of law school is devoted to getting students as practice-ready as possible. The learning curve shortens a bit when they receive the rare opportunity to hear directly from practicing attorneys about what it’s like to prep and argue a huge case—only hours after the action unfolded in the courtroom.
Catholic University law students got such a beneficial opportunity on Nov. 9 when they listened to counsel for both sides of Therasensev. Becton, Dickinson describe the experience of their involvement in a case that could fundamentally shift intellectual property and patent law in the United States.
Sponsored by The Catholic University of America Columbus School of Law and the Federal Circuit Bar Association Charitable & Educational Fund, the 90-minute panel discussion was conducted in Slowinski Courtroom (and webcast live) mere hours after the case was actually argued before the U.S. Court of Appeals for the Federal Circuit.
Therasense v. Becton, Dickinson involved the crucial definition of “inequitable conduct” before the United States Patent and Trademark Office in the context of failure to disclose information during prosecution, and what must be proven before such conduct can render a patent unenforceable. The body of case law remains ambiguous regarding the intent of the party failing to disclose material information.
The post-court panel debriefing at CUA Law was moderated by the Hon. Paul R. Michel, retired chief judge of the U.S. Court of Appeals for the Federal Circuit. Discussants included Raymond T. Chen, solicitor, United States Patent and Trademark Office;  Rohit Singla, of Munger, Tolles and Olson, LLP; counsel for plaintiffs, Rachel Krevans, of Morrison and Foerster, counsel for defendant;  Jim Badke, of Ropes & Gray, counsel for defendant; and John M. Whelan, associate dean for Intellectual Property Law at George Washington University Law School.
The attorneys did not spend their time rehashing the merits of their respective sides of the case.
More interesting from the students’ point of view, they shared insights about advocacy strategies, and discussed whether any questions from the nine-member en banc panel had caught them off-guard.
Whelan, who watched the arguments before the court, said he was struck by the wide areas of agreement in the case, no matter which side one represented.
“A lot of people want to fix this [area of patent law],” said Whelan. “A lot of this area isn’t the subject of disagreement; it’s the subject of questions from the judges.”
As moderator, Michel also veered away from the particulars of the Therasense case, concentrating instead on the high degree of professionalism with which the whole matter was handled in court.
“It was a highly intelligent discussion among 13 smart lawyers,” Michel told the student audience. “That is a great oral argument in my opinion.”
Michel also complimented the attorneys for directly answering the questions put to them by the bench, while not getting carried away with windy oration.
“This is a lesson for students. You’re not required to write 14,000 words for every brief. You don’t get paid by the word, I don’t think,” he smiled.