Introduction
The closest comparator for the ice hockey referee is the federal trial court judge. I am not a judge but I thought this would be a fun little article about what being an ice hockey referee and a patent litigator might have in common. I am a USA Hockey Level 3 ice hockey referee and thus officiate games from the youngest ages to college-levels. I watch ice hockey related movies and TV shows. Recently I watched the 2022 movie “Hockeyland”, which is a documentary about some Minnesota high school ice hockey teams. It included snips of hockey games of course. When a referee watches a serious hockey show, it’s inevitable that we second-guess what we see on the screen. Ice hockey is one of fastest, competitive, physical, and rules-based sport around. The USA Hockey rulebook has 100+ written rules, which also includes many more hundreds of rule interpretations in the casebook. Each year, I must take re-certification exams and every 4 years the rulebook changes, which means learning the new rules and new interpretations.
Against this backdrop of being an official and adapting to new rule changes, many of us experienced hockey referees still cling to the “old” way of officiating based on when we played competitive hockey decades ago. For example, many experienced referees will let “the kids play” by not calling every rule infraction under the philosophy that as long it’s safe, letting them play keeps the game going and on-time. The challenge here is that the game could get out of control very soon and it’s hard for the officials to take back control by now calling penalties and blowing whistles to stop the play. And being a very physical sport, severe injuries can result in an out-of-control game.
As a patent litigator, I am also a “regular” lawyer who went to law school, learned a bunch of rules and laws, and took many different State bar exams. I then took the USPTO’s patent bar exam, which itself had its own rule book and interpretations written in the Manual of Patent Examining Procedures (MPEP). So I have learned a lot of rules and regulations. As such, being a patent litigator is not just about the substantive patent law knowledge but also how to litigate a case, either as the plaintiff or defendant.
The closest comparator for the ice hockey referee is the federal trial court judge. I am not a judge but I thought this would be a fun little article about what being an ice hockey referee and a patent litigator might have in common.
Knowing the Basic Rules is a Basic Requirement
A referee is required to know the rules, especially the basic rules that affect the very nature of the game. When the basic rules are not followed or enforced, then the game can spiral out of control. First, an official should never permit lack of enforcement to affect the game’s outcome. That is, the teams should play for the outcome. Blown calls can affect the game. And when the stakes are high, the bad officiating can lead to poor outcomes, affect the game play, and may cause injuries. No official wants a tournament championship game to be decided by blown calls. Yet officials know when players/coaches know the rules. We can hear a coach talking to the players. Players demonstrate rules knowledge by the actions taken. For example, a savvy player knows that his skate must touch the blue line on ice (versus hovering over the blue line) in order to avoid an offside call.
Patent litigation is also rules based and patent litigators are the team players, not the trial court judge. But knowledge of the basic rules can be important. When one litigation team is more knowledgeable about the basic rules of litigation (e.g., the Federal Rules of Civil Procedure and local judge’s rules), that team can strategically move the case in its favor. The knowledgeable lawyer can inform the judge (who may not know the precise rule) about the impropriety of actions based on rules, without sounding like a whiny opponent. Plus the knowledgeable lawyer gains credibility when its arguments are rules-based, versus sounding petulant. The less knowledgeable lawyer can be outmaneuvered simply based on the rules. And when rule breaches result in mandatory actions, the consequences could be disastrous. I am reminded of a time when one party in a patent litigation was represented by a non-patent litigator. That lawyer made a couple of errors. First, the lawyer didn’t know that many district courts have patent-specific local rules and the lawyer’s filings violated many of them. That’s a horrible way to start a case. Second, the lawyer didn’t know ultimately about claim charts, proposed claim terms, and other case management, which technically are not part of the Civil Procedure Rules, but were part of the local rules. Finally, the lawyer didn’t know about the patent law specifics about filing defenses (35 USC sec. 282) before trial.
Fundamentally, some lawyers eschew rules-based wins because somehow it is better to win on the merits. But rules exist and if the rule violation helps the case, the lawyer is not being sneaky or otherwise underhanded in using a rules violation to either narrow or win the case.
Knowing Advanced Rules Is A Basic Requirement
The Federal Rules of Civil Procedure are chock full of basic rules, but also advanced ones (admittedly none of the rules are labeled as basic or advanced). Sure all lawyers have been schooled on the rules, but let’s face it, there are some rules used every day and some that rarely occur. But when those situational ones occur, sometimes immediate action can win the day. Successful lawyers know when a rule’s action is mandatory or permissive. They also know how cases have interpreted the Rule. As a practice note, savvy lawyers will refer to the annotated rules of civil procedure versus just the plain rule. This shortcuts the legal research process. Often times a judge may not know the rule’s intricacies and thus the party may try to take advantage of the situation to its benefit. This is because a judge’s experience with a rule is usually based on the issue percolation to the judge by a party.
For example, we often see that defendants may plead patent invalidity or fraud as a defense. But Rule 9(b) requires that fraud be pled with particularity, which in the patent law context requires pleading the full details of the inequitable conduct. The Federal Rules also allow for summary judgment, but we know that some district courts just plainly do not allow for summary judgment or will routinely deny permission to file summary judgment motions under a particular local rule. Knowing when the rule can be enforced is crucial. In discovery, many litigants treat Rule 36 Requests to Admit as a tool for authenticating documents or dates. Sophisticated litigants use well-crafted Rule 36 Requests to Admit to pin down the other party on precise facts, and opponents often routinely deny the RTA, without recognizing that Rule 36 works in tandem with Rule 37(c). First, if the opponent simply fails to respond in time, then the RTA is deemed admitted. If the opponent improperly denies it, then the moving party can seek costs related to the ultimate proof. Recognizing that a Rule 36 RTA works in tandem with Rule 37(c), it is a hard burden on the non-moving party to overcome the admitted fact or to escape paying costs. A patent litigation could turn on its head under Rule 36/Rule 37.
A trial court judge again cannot be expected to know each Rule of Civil Procedure and how case law in that district (or circuit) has interpreted that rule. But a trial judge knowing how the intricate rules play out can either warn parties that the litigation is spiraling out of control and the judge will reign it in; or when confronted with a mandatory requirement may enforce the rule mandatorily. A trial judge can set the tenor of the pending case by managing the schedule, the discovery disputes, and perhaps hammering down on the parties to get control of the case.
An ice hockey official is expected to know all rules, whether basic or advanced. This is because the speed of the game is so fast that the unique situation may arise in seconds. And fast reaction is required. Further, the referee must know what happened, how to interpret what happened, what rule applied, how the USAH situational case book advises, and what penalty should apply (if any). The referee must essentially know the Rule and its caselaw precedent instantly. And naturally given the teams’ views, the coaches may attempt to influence the call as if the coaches knew the rules better. Imagine a situation where the sudden infraction called for one or more penalties, or perhaps, even severe sanctions to be assessed, like a game misconduct or match penalty, but was not done because the coach convinced the referee otherwise. The lack of assessment can unfairly prejudice the game. An otherwise ejected player gets to continue playing. Teams may get angry for the call (or lack of call) and become more belligerent, thus resulting in an out-of-control game and injuries. The referee that knows the advanced rules exudes confidence in the call and can put the teams’ coaches into place. Coaches and players that know the hockey rules result in a better game.
Enforcing the Rules Robotically Or Discretion
An ice hockey official can grind the game to a slow pace if every conceivable violation was called. Players get upset if an official called every minor rule infraction that had no conceivable effect on the game play. Officials, therefore, tend to use judgment as to whether call the play dead. There are lots of areas where the official can avoid the call using official’s discretion. For example, when a team shoots the puck out of its end down the ice but gets close to the same team’s player, the official can choose to avoid an icing call by discretionarily suggesting the down ice player had a reasonable opportunity to play the puck. Another example is where two players battle for the puck and one falls down. Is that really an illegal body-check or interference; or is it just competitive contact? Further, for every missed infraction, should the coaches or players continuously chirp at the official about a missed call. After all, this can only antagonize the referee. In my experience as a referee, I now know certain tendencies of certain coaches, their verbal abuses of a referee, etc. And that coach has an unfavorable reputation with us. And for that coach and team, we tend to enforce rules scrupulously and non-discretionarily against that team. Yes, that may seem unfair, but as officials we come to every game without any predisposition as to the outcome or enforcement. We want the teams to play good quality hockey, to have fun, to stay on-time, and really have a great game without drama or injuries. The coach or players can create the unfavorable predisposition, which can only hurt.
The opposite is also true. Some officials tend to not call anything except the most egregious violations. Clear offsides are not called, icing is waved off, or some roughing/tripping/checking penalties are not called. Players learn very quickly that the game is pretty much “anything goes” and the game begins the downward spiral into nastiness and injuries. Then the officials get to the point that everything is now called to recover control over the game. Players are blindsided now with penalties for the exact action that previously was OK. With selective rule enforcement, the balance and predictability of the game are gone. And it’s puzzling to the players when the control is reasserted.
In patent litigation, there is a tendency for some lawyers to call out everything that happens, ostensibly to either show off or create a record. Most patent litigators are collegial and sophisticated. They don’t whine about everything, such as missed deadlines, incomplete responses, or inadequate responses. Yes, the Rules may require compliance with deadlines and full responses, but is it necessary for parties to threaten a rule violation by tattling to a judge? I have experienced situations where an opposing lawyer starts the communication with some statement like, “We received the document production, but there are gaps in the production. Please explain the gaps in the next two days or we will escalate this to the judge, and therefore require a meet and confer.” Now, the document production could have had 1000’s of documents in it and is it likely that the missing documents would have an impact on the case immediately such that the tattling to the judge is necessary? Rather, it seems that discretion is more apt here. Rather than point out a rule violation and then threaten action, the party could simply call the other side, inform of the infraction, and work it out. Patent litigators should ask the question, “is this really something we need to escalate to the judge?” Antagonizing a judge with minutiae or inconsequential dealings could result in an unfavorable reputation. Judges learn that certain parties or legal teams are whiners and escalate everything. Those lawyers may think they are simply setting the record straight, but they don’t curry favor with the judge later.
For Judges, the question of Rules enforcement is more delicate. Many Rules are mandatory and thus judges don’t have discretion. After all, the issue is before the judge because a party likely escalated it. And once escalated, the judge cannot ignore the issue. Judges cannot use discretion when rules mandate action. Otherwise parties do not get Rules-based certainty in this or later cases. How can patent litigation be predictable or certain if mandatory actions become discretionary. But if the Rule permits discretion, the judge cannot be faulted for exercising discretion. Judges can also lose control of a case by not enforcing rules (whether mandatory or discretionary) because parties can inundate the court with letters and filings. And if the judge tries to reassert control, the parties are left wondering if the reassertion is only temporary or long-term.
Mentoring The Young
As an experienced ice hockey referee, we are often matched with newer referees. It is our duty to mentor them. Yes, they took age and experience appropriate tests, but the on-ice experience is equally valuable. Prior to the game start, we talk about the upcoming game, the teams, the coaches, and any special situations. We talk about making calls, being confident, and ensuring that the younger referee can ask me questions. I tell them they are not alone and that we are a team of officials. We support each other. For example, on-ice, if the other referee missed a call, I will mentor him/her about what to watch out for the next time. Similarly, if the other referee is making a call but unsure how the penalty is assessed or the face-off location is questioned, I will support the referee with the right call. But I don’t overrule the other referee or criticize the referee in front of the coaches or team players. Rather, it’s important to support the referee without embarrassment. Mentoring is not just for the young. I referee with other highly experienced referees and each game I ask the other referee for feedback, what went right or wrong, did I miss something, did I not know a rule, etc.
We also mentor coaches and players on-ice too. For example, if we are stopping play for an uncommon rule infraction or conducting the face-off at a different face-off dot, then its incumbent on us to “teach” the players and/or coach what we are doing and why. We can give warnings to player or coaches that a penalty may result the next time. Some experienced referees refuse to explain actions to the player or referee under the thought that a referee need not justify actions taken because players and coaches are expected to know the rules. I don’t believe that but I don’t make it a habit to talk to players and coaches each time either.
Patent litigation is often staffed with teams of lawyers of different experience levels. And many times younger associates are running the day to day of the case with senior attorneys supervising. I have seen many communications sent from younger attorneys that are downright hostile, non-collegial, or attempt to generate a shouting match. The motive may be show-off to the partners on his/her side or to bully the other side. Because I am senior attorney managing the case, I may call the opposing side partner and ask what’s the basis for the communication. Naturally that partner can’t tell me that the associate was out of line. But what we hope is that the partner will mentor the young associate on collegiality and civility. I have done this in the past. It’s incumbent on experienced lawyers to remember that originally, lawyer training was an apprenticeship program. The mentorship was critical to the training. I find that in our patent litigation practice, we deal with many law firms and clients. And 99.9% of the interactions are respectful. We are lucky that our patent litigation colleagues are zealous advocates but collegial and respectful. I think that it’s a testament to mentoring.
Reputation is important for both hockey referees and lawyers. Naturally, an official that is known as a stickler for rules, enforces the rules evenly, has no agenda, etc., is known to coaches and players. Officials that “let the kids play” and will only call egregious infractions have that reputation too. For lawyers, reputation matters amongst the small patent litigation bar. Judges begin to know who shoots straight and those is who are not as straight. Recall that for many discovery disputes, the letter or motion is often accompanied by the email string in which the who-said-what-and-when is laid out. Any nastiness or attacks are laid out for the judge.
For judges, mentoring can still exist, though not formally. Judges can issue local rules and guidelines to assist lawyers in what that judge wants. Judges can also encourage senior level attorneys to allow younger ones to present arguments and will enlarge the time allotment if junior attorneys present. One judge stated that for discovery dispute hearings, they will be done telephonically if handled by senior attorneys, but by video or in-person if handled by junior attorneys. Many courts have such programs in place and courts should encourage this.
I hope you found this article a little fun but also informative.
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