Around the water cooler

Each week we will pose these three questions to different lawyers in the legal community.

This week we profile Jeffrey W. Sarles, who has been practicing for 14 years, all at Mayer, Brown LLP. He handles appellate litigation and international arbitration.

Mayer Brown recently won an appeal for its client International Game Technology (IGT), and Jeff argued the case for IGT. In Aristocrat Technologies v. International Game Technology, No. 2007-1419 (Fed. Cir., March 28, 2008), the U.S. Court of Appeals for the Federal Circuit affirmed summary judgment in favor of IGT on patent infringement claims.

Aristocrat’s patent disclosed a means-plus-function claim directed to a novel type of slot machine. Aristocrat claimed that IGT’s slot machines infringed that patent. IGT argued on summary judgment that Aristocrat’s patent was too indefinite to be valid because its specification failed to disclose sufficient structure.

The District Court and now the appeals court accepted the argument that the Aristocrat’s failure to disclose an algorithm that would make its disclosed “microprocessor-based gaming machine with appropriate programming” more than a general-purpose computer was fatal to its claim. Jeff was assisted by IP associates Melissa Anyetei and Andrea Hutchison.

Here are Jeff’s answers to our three weekly questions:

• What do you find the most interesting about your practice?

My practice is half appellate and half international arbitration.

One thing I find interesting about both is the lack of binding precedent in most cases that come our way. Sure we cite plenty of prior decisions in drafting our briefs. But few clients would pay big-firm rates if a slam-dunk precedent could easily resolve the dispute.

In most cases, we are searching for a principle to produce a favorable result for our client based on the facts at hand that also would produce a just result in analogous cases going forward. Both appellate judges and international arbitrators want to know that our view of the law makes sense and won’t lead to anomalies. Helping to develop the law in this collaborative fashion, both in the domestic and international arenas, is inherently interesting.

• What makes a good lawyer?

Ability to master the details while not losing the forest for the trees. Every case rests on its facts, which often have to be coaxed out of busy clients and reluctant witnesses. But a good lawyer must periodically climb above the mass of facts and seek a big-picture perspective. Doing so can produce creative insights that sometimes enable you to overcome apparently insuperable obstacles.

Of course, superior legal analysis counts for little if you can’t communicate it to the decision maker. Judges and arbitrators tend to be too busy to give your work more than a speed-read or quick listen; so good lawyers work hard to ensure that their written and oral advocacy is clear, concise, and effective.

• What is the biggest legal news right now and what is its impact?

The media is full of important legal news, so I’ll respond by highlighting one development that hasn’t received as much attention as it deserves.

Traditionally, investors in foreign countries who were mistreated by host states had no effective recourse outside the host state’s courts. That situation has changed dramatically in the last couple decades. Today, over 2,400 bilateral investment treaties, as well as such multilateral investment treaties as NAFTA and the Energy Charter Treaty, cover the globe. These treaties provide substantive guarantees to foreign investors and authorize them to bring claims against host states before neutral arbiters with the authority to issue binding and enforceable awards.

For example, I’m currently representing Cargill in an arbitration against Mexico on claims that Mexico breached NAFTA by favoring its domestic sugar producers over U.S.-owned fructose producers. Any lawyer representing companies with operations abroad should keep this treaty framework in mind.