04 October 2004

For a Lawyer, "Devil's Advocate" Is Redundant

Over at Patently Obvious, there's an entry today on patent awareness for small businesses. In this legal environment, I think this advice is sound (although I'd quibble on the choice of the "right" book for nonlawyers to use as a guide). My problem is with the legal environment: I am not in favor of the "method" patent, and the very next entry shows one reason why. Not only does this sort of thing fail the laugh test, but it creates a true "race to file" problem. Frankly, most "method" patents concern "methods" under simultaneous development for purposes other than the value of the methods. They are, instead, "enablement" of more-important practices. Then there's the whole "intuitively obvious" question, which simply does not get adequate examination during the PTO's process.

The real problem with "method" patents, though, is that they are frequently used as an anticompetitive device, not as a means to "advance Science" (as required by the IP Clause)—or even have the result of advancing science! The nonsense concerning "one-click shopping" is an excellent example. Just as copyright doctrine has abolished the "sweat of the brow" doctrine, patent law should make much greater efforts to enforce its own "originality" requirement. Too often, "method" patents are proclaimed "original" because nobody has done the exact same thing before—usually because nobody bothered to formalize the method, not because nobody understood how to do it. That's exactly the problem with the "one-click shopping" patent, which when you come right down to it is really just a formal description of using of certain well-established authentication methods in combination. It's not that anyone hadn't thought of it before: It is conceptually indistinguishable from restricted-access query systems used in military personnel records since the 1970s.

Then, on the other hand, there's Larry Solum's interesting take on "holding or dictum?" over at the Legal Theory Blawg. I approach this from a slightly different point of view: I blame it on Lexis, Westlaw, and the refusal of Certain Law Schools to make legal research and writing a priority for first-year law students. Too often in practice, I see "soundbites" drawn from disparate cases assembled to make a point because their rhetoric, and not their meaning, is more suited to the advocate's position. Consider, for example, this assertion (reworded to protect the guilty):

On a summary judgment motion, the district court's findings of fact are reviewed for clear error. Starsky v. Williams et al., 512 F.2d 109, 111–12 (9th Cir. 1975).

This "conclusion" comes from the following soundbite:

This is why we apply the "clearly erroneous" rule, Fed. R. Civ. P. 52(a) in reviewing the judge's findings.

Id. at 111. There is, however, a tipoff right in this soundbite that something is not right. Rule 52 concerns bench trials, not summary judgment (which is Rule 54). The entire paragraph reads:

The regents attack the judgment on the merits by arguing that summary judgment is improper because the trial court resolved genuinely disputed issues of material fact. Although we do not agree with the regents that some issues that they identify were genuinely disputed, we assume arguendo that the judge did resolve at least one disputed material issue, namely, what was the regents' primary reason for discharging Starsky. Nonetheless, we do not reverse the judgment, for we agree with the trial judge that, under circumstances unique to this case, the parties had in effect submitted this case to the court for trial on an agreed statement of facts embodied in a limited written record. The judge therefore was free to decide all issues relating to Starsky's right to reinstatement and, in so deciding, to resolve factual issues. This is why we apply the "clearly erroneous" rule, Fed. R. Civ. P. 52(a) in reviewing the judge's findings.

Id. (citations omitted). Even more damaging, the Court explicitly stated that it was not using the summary judgment standards, because (despite the caption on the motions) the parties asked for and received in a bench trial on a written record, not summary judgment.

We are mindful that the mere fact that the parties make cross-motions for summary judgment does not necessarily mean that there are no disputed issues of material fact and does not necessarily permit the judge to render judgment in favor of one side or the other. However, in this case, the parties had in fact agreed that all of the underlying material facts were those reflected by the written record before the court. Given the unique procedural history of the litigation, which was drawn out over two and one-half years, the court was justified in concluding that the parties had in effect and in substance agreed to a trial of the reinstatement claim on the written record.

Id. at 112. Thus, the decision in Starsky had nothing to do in substance with summary judgment; and therefore could not, and should not, be cited for anything concerning summary judgment, except perhaps in showing how summary judgment could be converted to a bench trial on a written record.

I'll freely admit that this is the civil procedure nerd in me coming out. This makes a difference because the "real" rule is that in summary judgment, the judge makes no factual findings; if there is a dispute over the facts, the matter must be sent to trial, and whether the judge finds "facts" or not is a legal question reviewed de novo (that is, without any purported weight given to the trial judge's opinion). Sadly, it's not a unique circumstance; I've seen the same citation, for the same proposition, in three different matters, involving lawyers from a Certain Law School (not all at the same firm, either). The different burden was "outcome-determinative" in two of those three matters, and influenced the course of oral argument in the third.

There is no meaningful content without context; legal judgment, which is what we're supposed to begin to develop in law school, is supposed to determine how much context is relevant to a given statement in an opinion. In the Starsky example, it's pretty clear that the individuals who cite it for the proposition that factfinding on summary judgment are reviewed for clear error didn't read the whole case, or even the whole paragraph in which the soundbite appears. That indicates to me that their law school was defective in developing at least that aspect of their legal judgment. That is also where I disagree, at least a little bit, with Professor Solum's formulation. Perhaps this is only a matter of emphasis, or of terminology, or of explication; but it is nonetheless an issue that deserves further attention.