Patently-O Bits and Bytes No 52

  • PatentLawPic379Judge Ward to BSC Counsel: “The court has never had counsel so recklessly disregard its orders before this trial” [Smith Discusses]
  • David Donoghue directs us to Victoria Pynchon’s article on ‘negotiating by e-mail.’ Bottom line: e-mail negotiations increase hostility. [Article][Donoghue]
  • I’m looking for a legal analysis of the potential pitfalls of outsourcing of patent proseuction. Anyone? dcrouch@patentlyo.com.
  • Paul Caron’s Law Prof Blog Ranking puts Patently-O tied for 5th in the nation based on web site visits in the past year.

21 thoughts on “Patently-O Bits and Bytes No 52

  1. Alun “one person with a US reg. no. signing them all. If they can’t find time to know what they are signing it is obviously a violation of the ethics rules, but if they are outside the US they may not worry about the OED very much.”

    How is being outside the US relevant?

  2. “BSC shouldn’t sue Attorney for malpractice because … ?”

    Perhaps BSC instructed Attorney to ignore the judge because their case was doo-doo either way. They might have better grounds to appeal now than if the attorney had not disobeyed the judge.

  3. I would suppose that technically you could outsource to anyone, as long as it is signed by someone with a reg. number. The only limitation appears to be export controls, and those apparently apply even inside the US, to those of us who are not US citizens, but only in certain arts.

    Come to think of it, I prepared and filed one application that related to guns. Perhaps that was an export control violation when the US citizen inventor communicated with me, a non US citizen, albeit I’m a US patent agent residing in the US? If it was, it would certainly never have occurred to either of us that it could be.

    As for the language barrier, there are many people registered and practicing here whose first language is not English (mine is, however, just to be clear about that). What difference is there between them and their compatriots back home? Not necessarily citizenship, although those who are US citizens can go back home and stay registered here. When it appears that a majority of the examiners don’t have English as a first language it begins to look like a minor quibble, although the examiners don’t usually draft claims, barring the occasional examiner’s amendment.

    One scenario that I have heard of, but can’t verify, is where prosecution is outsourced to somewhere overseas with a very large number of people writing amendments and one person with a US reg. no. signing them all. If they can’t find time to know what they are signing it is obviously a violation of the ethics rules, but if they are outside the US they may not worry about the OED very much. OTOH, nobody has any proof that this has actually happened AFAIK. Maybe it is just something that people worry might happen?

  4. I’m curious as to the conversation BSC and Attorney must have had after trial. Judge counsels the attorneys on the procedure, highly experienced Attorney does it wrong. Judge stops trial, removes jury, reprimands Attorney, and counsels the lawyers a second time. Rinse and repeat at least once more. Finally, judge stops trial, removes jury, reprimands Attorney, and warns Attorney that jury will be informed of pattern of misconduct if it happens again. Attorney does it again. Judge informs jury. Allegedly, jury is now prejudiced against BSC and finds against them, awarding hundreds of millions in damages to plaintiff.

    And BSC shouldn’t sue Attorney for malpractice because … ?

  5. Sorry Ms. Pynchon, but anyone who so liberally cites “TechDirt” I would have to consider to be an anti-patent shill. It is no secret that TechDirt is neatly in the pocket of RIM.

  6. How come in this one instance the most infamous “court” in the country is presumed to be correct, while a reputable patent shop is automatically made up of “evil attorneys?”

    I find it difficult to believe anything that is coming out of T. John Ward’s mouth (or pen), and I doubt Boston Scientific would hire (and continue to hire) a poor attorney to represent them in high profile patent disputes.

  7. How come it is always so hard to find out who these evil attorneys are. No one seems to report that. You typically have to go to the opinion and I can’t find Ward’s opinion.

  8. Dennis,

    Thanks for the link; you have no idea (maybe you do) how a link from you increases other blogger’s traffic. Much appreciated.

    Also, this article on email has struck a chord in the legal community. I’ve had several attorneys call or write me to tell me that they didn’t send a letter or an email at a critical juncture in the litigation because they’d just read my article and thought better of it.

    The rewards of blogging don’t get any better than that.

    Because the IP ADR Blog will be hosting Blawg Review soon, it’s particularly great that you’ve introduced a small sliver of your enormous readersip to us.

    Many thanks for that and, of course, for keeping me up to date on everything patent to help me serve my IP litigator clients better.

    All best,

    Vickie Pynchon

  9. “Without rules and punishments for breaking the rules, what is “justice”?”

    With decisions based on conduct and not the merits, where is justice? If the counsel’s conduct was so bad as to prejudice the trial, the Judge should have declared a mistrial with an appropriate order for costs. Instead he took a path where we will never know how much of the Jury’s ultimate decision was based on the merits of the parties’ positions and how much was based on the Judge’s ad hominem attack on counsel.

  10. “Full command of the English lanaguge is critical in drafting any application.”

    I agree. And yet many Americans continue to draft applications. The wonders never cease to amaze me.

  11. “The jury is not there to judge the counsel’s conduct, but the facts of the case they present. Procedure misconduct should be punished by simply halting the improper procedure, dismissing an offending attorney if need be, but not by influencing the jury’s decision out of spite.”

    But the “procedure misconduct” apparently involved repeatedly presenting evidence, to the jury, that the judge had at least temporarily disallowed. If the misbehaving attorney is improperly influencing the jury, is it not appropriate for the judge to call the jury’s attention to that? That’s not spite, is it?

  12. “without rules and punishments for breaking teh rules, what is ‘justice’?”
    The jury is not there to judge the counsel’s conduct, but the facts of the case they present. Procedure misconduct should be punished by simply halting the improper procedure, dismissing an offending attorney if need be, but not by influencing the jury’s decision out of spite.

  13. Up until recently, awards of costs in EPO proceedings have been as rare as hens teeth. But, just recently, more and more requests to issue costs orders are being granted, signifying that those tribunals are currently quicker to see an “abuse of the process”. This is coming as an unpleasant shock to some EPO attorneys. I surmise that macho clients rather dislike having to get the chequebook out and write a cheque to the industry competitor who just beat them in the EPO. It’s a small globalised world. Is it the attorneys getting more abusive, or the judges, or the Examiners, or everybody involved. And bloggers. We don’t have juries in Europe but, I wonder, are jury members getting more abusive? And what about university professors. I think we should be told.

  14. “It appears the Judge made a decision to make highly prejudicial remarks to a jury for the express purpose of punishing the lawyer.”

    Without rules and punishments for breaking the rules, what is “justice”?

  15. “[t]he court had no choice but to instruct the jury that BSC violated the court’s orders to put an end to the misconduct.”

    The Court had a choice. It appears the Judge made a decision to make highly prejudicial remarks to a jury for the express purpose of punishing the lawyer. The lawyer should not be practicing in that court but neither should the judge.

  16. Outsourcing……Don’t do it.

    No article needed. Language barrier is always going to be a problem when you are nit picky language parser. Full command of the English lanaguge is critical in drafting any application.

    If you are outsourcing research, then that may be ok.

    Regards,

  17. Malcom, I agree with you on this. Is it me, or have there been quite a few “scoldings” (we will leave it at that for now) of patent litigators of late by various District Court Judges around the country? This is the 3rd one of late that comes to mind, although the others came with very serious monetary penalties for the “scolded” patent litigators.

  18. “Judge Ward to BSC Counsel: “The court has never had counsel so recklessly disregard its orders before this trial””

    That was an entertaining read. Obnoxious lawyers + desperate client = laugh riot. Hundred bucks says neither the lawyer or client learns a darn thing from Judge Ward’s missive.

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