Law School Providing Expert Preparation for Landmark IP SCOTUS Case

Washington University School of Law will host a special moot court program on January 29 to help St. Louis attorney Rudy Telscher prepare for a landmark intellectual property case, Octane Fitness LLC v. Icon Health & Fitness Inc., which the Supreme Court of the United States will hear next month. Law school alumnus Steve Holtshouser, JD ’83, a colleague of Telscher at Harness, Dickey & Pierce PLC, was instrumental in bringing the moot court session to the law school. 

“We are honored to have been asked to help Harness, Dickey & Pierce prepare to argue this important case before the U.S. Supreme Court,” says Daniel Keating, dean and the Tyrrell Williams Professor of Law. “It demonstrates the law school’s expertise in both intellectual property issues and the workings of the country’s highest court.” 

Seven law school faculty members will lend their expertise by serving on the panel of judges: Scott Baker, professor of law and professor of economics; Charles Burson, senior lecturer in law; Pauline Kim, the Charles Nagel Professor of Law; Bruce La Pierre, professor of law and director of the Appellate Clinic; Greg Magarian, professor of law; Mary Perry, lecturer in law and director of the Semester-in-Practice Externship Program; and Neil Richards, professor of law. 

Burson, La Pierre, and Perry all have experience arguing cases before the Supreme Court. Additionally, Magarian clerked for Supreme Court Justice John Paul Stevens, and Richards clerked for Chief Justice William Rehnquist. Baker and Kim both clerked for appellate court judges. Additionally, Telscher and his firm prepared their brief with the assistance of Richards, whose expertise includes Supreme Court practice as well as technology law. Richards also worked with Harness Dickey in a landmark case a few years ago that is widely considered to have saved the independent fantasy sports industry.

Intellectual property law expert Kevin Collins, professor of law, will offer a brief introduction and present a short rebuttal during the moot. Collins notes that the moot court session will both help prepare Telscher for his argument and offer a unique educational opportunity to law students in the audience. 

“Students frequently read appellate and Supreme Court cases in their casebooks without understanding the series of contingencies involved in a case getting to the Supreme Court and the Supreme Court deciding the case,” says Collins, who directs the law school’s Intellectual Property & Technology Law Program.  

“Yet, successfully navigating those contingencies is precisely what good lawyers do,” he continues. “Thanks to this opportunity, we are able not only to expose students to statutory, precedential, and policy issues at stake, but also we get to pull back the curtain and see what the process of presenting a case to the Supreme Court entails.” 

Collins will open the session at noon with his brief presentation for the audience, Patent Troll 101, to provide background and context for the key issue in the case.  

“The ‘patent troll’ problem arises when a company that does not manufacture any technology acquires a patent and sues a number of technology-producing companies,” Collins explains. “Frequently, the defendants in these cases have strong legal arguments and believe that they would prevail at the end of the litigation because they do not infringe the patent or because the patent is invalid.” 

Unfortunately, patent litigation is expensive, Collins adds. Knowing this, the patent trolls often offer the defendants licenses that are a fraction of the costs of litigating the case in court. A rational defendant may choose to take the license despite the high probability of prevailing in court.    

“When this happens, the patent regime, via the nuisance troll, is imposing a tax of sorts on technology producers that cannot be justified by the incentive-to-invent rationale that underpins patent protection,” Collins says. “We want technology users who are using technologies actually covered by valid patents to pay licenses. However, when technology producers end up paying licenses even when they are not using a patented technology, the patent regime is slowing innovation down, not promoting it.” 

Octane Fitness represents a “patch” to mitigate the problem of patent trolls, Collins notes. “Patent law already contains a statutory provision that can force a patent-owning plaintiff to pay the attorney’s fees of a defendant if the patent owner’s allegation of patent infringement is deemed to be frivolous.” Collins says.  

“This statutory provision narrows the set of potential defendants for nuisance patent trolls to sue, as it deters patent owners from filing infringement suits when there is no reasonable basis for infringement,” he explains. “However, the Federal Circuit Court of Appeals—a very influential court in patent law—has interpreted this statutory fee shifting provision narrowly.” 

The petitioner in the case, Octane Fitness, is asking the Supreme Court to expand the circumstances under which infringement allegations are frivolous, thus augmenting the deterrent effect of fee shifting for patent trolls. 

“The sticky aspect of this request from a policy perspective, of course, is that going too far is problematic, too,” Collins says. “Labeling too many infringement allegations as frivolous claims might start to deter patent owners from bringing suits against companies who are actually using patented technologies and who should be paying royalties to compensate innovators for their investments in innovation.” 

Law school students, faculty, and staff are welcome to attend the event, which begins at noon in the Bryan Cave Moot Courtroom (AB Hall, No. 310). Attendees will be asked to show an ID and sign a confidentiality agreement. Telscher will present his case following Collins’s introduction. Collins will then provide a brief rebuttal argument. The session will end with a Q & A for the audience led by Holtshouser. 

  • Petitioner’s Brief [view] 
  • Respondent’s Brief [view] 
  • U.S. Solicitor General's Amicus Brief [view] 
  • Event Flyer [view]