Supreme Court Reminds Bar of Limits on Counsel's Duty to the Client

The dust has settled in Sigram Schindler Beteiligungsgesellschaft MBH v. Lee. In this patent case, the U.S. Supreme Court, in denying the petition for writ of certiorari, ordered the petitioner’s counsel to show cause why he should not be sanctioned for his conduct in connection with the filing. What had he done to warrant sanctions? The answer is found in reading the petition, which I tried to do. I got lost in the question presented:

Does the U.S. Constitution, in legal decisions based on 35 USC §§ 101/102/103/112, require instantly avoiding the inevitable legal errors in construing incomplete and vague classical claim constructions—especially for “emerging technology claim(ed invention)s, ET CIs”—by construing for them the complete/concise refined claim constructions of the Supreme Court’s KSR/Bilski/Mayo/Myriad/Biosig/Alice line of unanimous precedents framework, or does the U.S. Constitution for such decision entitle any public institution to refrain, for ET CIs, for a time it feels feasible, from proceeding as these Supreme Court precedents require—or meeting its requirements just by some lip-service—and in the meantime to construe incomplete classical claim constructions, notwithstanding their implied legal errors?

The body of the petition is equally incomprehensible. Moreover, a footnote above counsel’s signature line states “Prof. Sigram Schindler, the primary inventor of the ‘453 patent, should be recognized for significant contributions to this Petition.” The Supreme Court blogosphere speculated that the petition thus violated Supreme Court rules requiring that arguments be presented directly and concisely, and that nonlawyers should not be credited with having contributed to the petition.

In fact, as former Solicitor General Paul Clement acknowledged in his response on behalf of the errant practitioner, the petition was effectively written by Schindler. Clement called the petition “unorthodox . . . right down to the client’s favored locutions and acronyms employed in his other writings about the patent system. . . . It undoubtedly reflects his client’s wishes and instructions.” In sum, Schindler dictated the petition and counsel signed it.

In prior proceedings below, Schindler disapproved of an argument counsel included in the brief (which Schindler had not seen before it was filed) and instructed him to move for leave to file an amended brief that struck that argument and substituted Schindler’s own. Schindler signed a declaration appended to the motion that said as much. Clearly, when they got to the Supreme Court, counsel did not want to go through THAT again.

Clement argued that counsel was torn between two duties—one to the client, to faithfully represent his interests and dutifully make the arguments he wanted to make, and one to the Court, to submit a petition that satisfied the rules. Clement further argued that counsel could not have resigned the representation, as that would have prejudiced Schindler; there was no time to obtain substitute counsel. In fact, that begs the underlying question. Schindler had no right to submit an incoherent petition (and surely it was not persuasive)—and thus would not have been prejudiced by the failure to file it. Nonetheless, the Court was evidently satisfied with the extent of the mea culpa that Clement did offer, as it issued a brief order on March 23, 2015, discharging the order to show cause with this coda: “All Members of the Bar are reminded, however, that they are responsible—as Officers of the Court—for compliance with the requirement of Supreme Court Rule 14.3 that petitions for certiorari be stated ‘in plain terms’ and may not delegate that responsibility to the client.”

That seems to be the lesson that lawyers have drawn from this episode. I remain troubled, however, by the underlying facts: Schindler apparently did not retain his lawyer for legal counsel and guidance; rather, he used his lawyer as a scribe. He may have paid handsomely for that service, but it is not the practice of law. It is one thing to make, in good faith, an “unorthodox” argument on behalf of a client, but it is quite another to allow the client to override the lawyer’s professional judgment and duty to the court. With the financial pressures of business as acute as they are, the temptation to do so—in a substantial matter—is great. That should be the lesson learned.