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Litigation Update - Summer 2005
In this issue:
Significant Rulings of Interest to the Business Community from the Supreme Court’s 2004-2005 Term
By Beth S. Brinkmann
The Supreme Court issued landmark decisions this past Term in the fields of intellectual property, governmental takings of
private property, federal securities fraud and corporate investigations, among others, that will be of great significance
to the business community. Amidst the prominent social issues involving government displays of the Ten Commandments and the death penalty for juveniles,
the Court also was presented with an epicurean docket of wine and beef cases that will affect interstate commerce and federal
regulation of businesses. The following is a brief look at some of those business highlights of the Term.
Click here to read the entire article.
High Court Practice
At a panel discussion this past Term sponsored by the National Association of Women Lawyers, Justice O’Connor and Justice
Ginsburg made an unusual joint appearance on a panel to discuss Oral Argument in the Supreme Court. Morrison & Foerster partner
Beth Brinkmann, who has argued 20 cases before the Supreme Court, was also a member of the panel.
The panelists made clear that preparation is the necessary foundation for every good argument. Perhaps the clearest message
that was conveyed, however, is to be mindful of the questions posed by the Justices and answer them directly. Indeed, Justice
O’Connor is well known for posing the most direct questions to advocates before the Court and, often, at the outset of argument
in a manner that helped to define the limits of the legal issue that was ultimately decided by the Court.
The panel also discussed the significance of briefs filed by amici curiae. The Justices explained that they do not have time to read all of the amicus briefs filed and that they focus their time and attention on those briefs that do something other than merely indicate that
an amicus agrees with one party or the other. Justice O’Connor specifically cited cases involving new areas of law, such as intellectual
property, as examples of where amicus briefs are most helpful.
The discussion also touched on the important role played by the Office of the Solicitor General (SG) before the Court. As
representative of the United States in all matters before the Supreme Court, the SG’s participation as amicus curiae in a case can play a significant role. Contact with the SG’s office can serve the interests of both a party and the government.
Although the SG’s office does not often enter a non-government case at the certiorari stage absent an invitation from the Court, early discussion with a party can often make the difference or set the stage for
the SG’s participation at the merits phase if review is granted.
A Quick Look at the Court’s Numbers
2004-2005 Term (Oct. ’04 Through June ’05)
- 74 signed opinions from the Court after argument (deciding 85 cases)
- 2 cases dismissed as improvidently granted after argument
- 4 cases summarily reversed without argument
Upcoming 2005-2006 Term (Oct. ’05 Through June ’06)
- 37 arguments set for scheduling thus far (covering 41 cases)
Q & A with Drew Days, Former U.S. Solicitor General
Recently, Morrison & Foerster’s Drew S. Days, III, who served as Solicitor General of the United States from 1993 to 1996, shared his thoughts on a myriad of today’s hottest
topics including: the Court in transition; Justice Sandra Day O’Connor; and China’s challenge in developing a legal structure
to support economic growth.
Click here to read the entire article.
Morrison & Foerster Case Granted Review
One of the 37 arguments that the Supreme Court already is scheduled to hear next Term is a case in which Morrison & Foerster
filed the certiorari petition seeking Supreme Court review and is now involved in the briefing and preparation for review this Fall. The case, Goodmanv.Georgia, No. 04-1203, was brought against the Georgia State Prison by a prisoner who must use a wheelchair. The suit is an effort
to recover damages and have the prison provide a handrail so that the prisoner can transfer safely from his wheelchair to
his toilet and bed, and so that the prison will remove his bed from his small cell during the day so that he can move his
wheelchair around inside the cell. Seth M. Galanter, is leading the firm’s efforts in the case. The question presented is
whether, and to what extent, Title II of the Americans with Disabilities Act of 1990, 42 U.S.C. § 12131 et seq., validly abrogates state sovereign immunity for suits by prisoners with disabilities challenging discrimination by state-operated
prisons. The case is scheduled for oral argument on November 9, 2005.
Seth M. Galanter has argued more than 40 cases in the federal courts of appeals. You can reach Mr. Galanter at sgalanter@mofo.com.
Business Cases to Watch for Next Term
There already are several significant business cases on the Supreme Court’s docket for next Term, which will begin on the
first Monday in October 2005. Listed below are the questions presented by some of those cases and the dates that the Court will hear oral argument. There also undoubtedly will be more business cases added to the docket after the Court returns at the end of September from
its summer recess and rules on all of the certiorari petitions that are filed over the course of the summer.
Click here to read the entire article.
Two Patent Trial Wins for Morrison & Foerster
Amado v. Microsoft. Morrison & Foerster represented Mr. Carlos Amado in a patent infringement case against Microsoft. Mr. Amado is the inventor
of a software program that uses a "live link" to integrate Microsoft’s Excel program with its Access database application.
He developed the program in 1990 and then approached Microsoft in 1992 to sell them the program, which they declined to purchase.
Mr. Amado received his patent in 1994. Microsoft incorporated the patented invention beginning with the 1995 versions of their
software programs. The jury agreed that Mr. Amado’s patent was valid and infringed, and awarded $8.96 million to Mr. Amado
for sales of the software between March 1997 and July 2003. The Morrison & Foerster team from our Los Angeles office included Vince Belusko, Charles Barquist, Hector Gallegos and Nicole Smith.
Nichols v. Scantibodies. Following a month-long jury trial in U.S. District Court for the Southern District of California, attorneys in our San Diego office obtained a jury verdict in favor of our client Scantibodies Clinical Laboratory, Inc., in a patent infringement action
brought against Scantibodies by Nichols Institute Diagnostics, Inc. Scantibodies manufactures and sells diagnostic assays
and provides testing services to physicians who seek to measure the level of parathyroid hormone in patients’ blood, which
is critical in the treatment of patients suffering from kidney disease. In late 2001, Nichols Institute obtained a license
to U.S. Patent No. 6,030,790, and then filed an action against Scantibodies in January 2002 in the Southern District of California
alleging that Scantibodies infringed the ‘790 patent based on Scantibodies’ manufacture and use of Scantibodies third-generation
parathyroid hormone assays. After deliberating for five days, the jury found that that the ‘790 patent was invalid on the
grounds of failure to disclose the best mode, lack of written description and lack of enablement. The Morrison & Foerster
team included San Diego partners David Doyle and Eric Acker.
What’s in a name?
Trademark law is all about consumers identifying, by virtue of a trademark, the source of the goods they buy. If they recognize
the name, they know the quality of the product. Professor J. Thomas McCarthy, Of Counsel to Morrison & Foerster, incontestable
trademark expert, and author of the leading treatise in the field, McCarthy on Trademarks and Unfair Competition, had his own fanciful trademark moment in the Supreme Court this Term.
Professor McCarthy was part of the team that drafted the brief for the trademark holder in KP Permanent Make-up v. Lasting Impression I, Inc., on the statutory fair use defense. He traveled to Washington, D.C., to attend the oral argument in the case that was presented by Morrison & Foerster partner
Beth S. Brinkmann. Professor McCarthy had the honor of hearing himself cited by a Justice of the Supreme Court during oral argument. During questioning of opposing counsel, Justice Ginsburg invoked "McCarthy" and pointed out to counsel that his position
was in disagreement with that treatise. Needless to say, Professor McCarthy was honored to have had his work invoked and was further satisfied when the Court remanded
the case, allowing the trademark holder to rely on evidence of consumer confusion to challenge a fair use defense.
