All posts by David

About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

CNN on 10 Cool Inventions

Ethics

The story is here.  The music device from Neil Young et al intrigues me because I *hate* the sound of CDs and MP3s, particularly when playing music that I know well from my youth and “audiophile” stereo.  Ah, those were the days…

Patent Agent and Criminal Defense Lawyer? Not.

Ethics

In re Campbell was a recent default judgment taken by the OED against a patent agent.  Among other things, the default states that the patent agent took money without doing the prosecution work he’d promised to do. But he also showed up in Colorado state court to defend a criminal case, and basically represented to the judge that he was an attorney… licensed by the PTO.  That didn’t sit well with the judge, the Colorado bar, or the OED.

I’m filing this under:  “I hope that this is prohibited is not news to you.”

Judge Rader on Judge Rader’s Retirement

Ethics, Patent

You can read his email to a journalist here, which is similar to what I’ve heard privately.

I’ve had journalists, friends, lawyers, and others contact me for my thoughts.  Here are my thoughts:

I loved clerking for Chief (sorry, he’ll always be that).  The man is wicked smart, kind, full of life, and funny.  He cares passionately about the court and patent law.

His plan to move on now doesn’t surprise me, since I know he loved to teach (had the privilege of teaching one class for him at GW while I was up there) and he loves to travel (I’ve never seen someone bound off an airplane after 20 hours of flight with more energy than him).

The best is all I can wish for him, along with a good ticket to the next Stones tour.

Biosimilars, Ethics, and my Takeaways

Ethics

If you haven’t notice, I do a lot of CLE speeches.  In part, of course, it’s to promote Mercer, my school.  In part it’s service. In part I enjoy it (though the travel sucks).  Primarily it’s to stay in some contact with what matters to practitioners (I don’t remember the last time I read a law review article).  Anyhow, yesterday I sat through 4 hours on biosimilars.  Fascinating stuff, and a mess.

My powerpoint is here (2014 biosimilar hricik part). It makes pretty much all the point the paper does, and some more.  If you’re doing the information exchange under the BCPIA, you need to have an agreement.  This ppt points out some of the glaring problems with the statute.

I also listened to how disruptive Myriad (and the 101 guidelines) have been for this field — cutting edge of technology and a huge part of the future.  I also learned a few people actually read m Alito blog post (below).

Anyhow, it was an excellent program, and I got to see some friends, too!

Court Affirms Rule 11 Sanctions for Frivolous Claim Construction, Infringement Position

Ethics

Source Vagabond Sys. Ltd v. Pearl Cohen Zedek Latzer LLP (Fed. Cir. June 5, 2014) is here.  Judge Wallach (with KM and JR (not EW)) affirmed imposition of Rule 11 sanctions against the firm that had represented the patentee.  Not a lot of new law, but it does make it clear that you’d better do a reasonable pre-suit investigation (claim charts not required always, but a good idea…) before you file a suit.

Ego, Law, and Justice Alito’s Opinion

Ethics

On the main page, they’re talking about how Justice Alito wrongly criticized the Federal Circuit for “fundamentally” misunderstanding what infringement requires, but in doing so ignored the Federal Circuit’s own opinion, on review, on that subject in Limelight.

I’ve written a lot about how, in my humble view, the Supreme Court doesn’t understand patent law.  I observed this first hand in watching oral argument in Gunn v. Minton.  I experienced it first-hand as a clerk in assisting the court during the CLS Bank appeal, when the Federal Circuit clearly struggled with following the statute, following the cases, and giving a comprehensible framework for the patent community.  I’ve seen it in reading Justice Scalia’s joinder in Myriad, where he basically said that he had no idea what the science was, and in seeing that, in fact, the Court completely botched that case.  I’ve seen it in the silliness that was Biosig.  Where are we now?

What we need is judicial restraint by the Supreme Court.  They do not understand the technology, the law, or implications of what they do, and this is particularly true in 101 jurisprudence, where they simply can’t seem to read the statute or harmonize their own cases (no one can).

Rant over.

 

Oregon Supreme Court Permits Patent Firm to Claim Privilege Over Communications with Internal Counsel

Ethics,

Given the conversation in posts below about interpreting statutes, this case is interesting for reasons beyond the issue involved.  In Crimson Trace Corp. v. Davis Wright Tremaine LLP (Or. May 30, 2014), the court held that a law firm could claim privilege over communications between a lawyer who was concerned about litigating a patent case where one of the firm’s own lawyers was accused of inequitable conduct and the firm’s in-house lawyers.

The court noted that some courts had recognized a “fiduciary exception” to privilege, which basically bars a lawyer who owes a fiduciary duty to a client to assert privilege against it.  However, the court noted that those courts that had recognized this exception were in common law jurisdictions, not ones, like Oregon, where the scope of privilege and its exceptions were set by the legislature.  Given that the legislature had spoken on the subject, the Oregon court held that it was not free to make-up additional exceptions.

Of course, CLS bank will be just like it in that regard. ha, ha.

The OED as Troll Hunter?

Ethics

First, if you haven’t watched this wonderful movie, Troll Hunter, you should:

trollhunter

 

Second, what about this:

Some “bad trolls” are owned or controlled by lawyers who are registered to practice before the PTO.

The OED takes the position that it has jurisdiction to discipline practitioners who take frivolous positions in litigation (even unrelated to patent litigation).  I don’t agree with that, but I know they believe that to be true.

So… why not report “bad trolls” to the OED?

I can’t take credit for this idea, as someone came up to me in Colorado and told me he had called the OED and they said they would look at this type of complaint….

OED… Troll Hunters.

An Open Question: Can Counsel be Liable Under 285?

Ethics

My RA found a non-prec case from the CAFC where the district court found a case exceptional under 285 and imposed those fees on counsel, jointly and severally with its client.  (It also imposed fees on counsel under 1927.)  The panel affirmed the exceptional case finding, but reversed the imposition on counsel, but in doing so, made it clear that it might be an open question:

In addition, we vacate the district court’s holding of joint and several liability by Phonometrics and its counsel for the aggregate award of fees and costs. Section 285 is a fee shifting statute that in exceptional cases may require the losing party to reimburse the prevailing party its attorney fees. Sheraton has provided us with no legal basis for entering a fee award against the losing party’s attorney under § 285. Section 1927, on the other hand, is limited to an award of fees against an attorney. Sheraton has provided us with no legal basis for holding the attorney’s client liable for fees under § 1927. Thus, Phonometrics is not liable for fees awarded under § 1927; it can only be liable for fees awarded under § 285. Counsel for Phonometrics is not liable for fees awarded under § 285; it can only be liable for excess fees awarded under § 1927.

Phonometrics, Inc. v. ITT Sheraton Corp., 64 Fed. Appx. 219 (Fed. Cir. June 12, 2003).

The panel read 285 in pari materia with 1927, reasoning that because one shifted fees onto counsel, the other could not. I’m not so sure that makes sense….  I know 285 came into being, in an earlier form, only in 1946….

I wonder if there is any legislative history?

Further, if the purpose of 285 is to “punish” bad patent suits, how often, back in 1946, was the client the one responsible for that?  Interesting story to unfold….

Motions Panel Denies Writ to Overturn Disqualification of Firm

Ethics

The CAFC issued an order today denying a petition for writ of mandamus to direct a district court to vacate its disqualification order in a patent suit.  The order In re Atoptech, Inc., in is here.

Pretty standard stuff:

The district court stated that if a substantial relation- ship was shown between the current and former representations, a conclusive presumption arises that confidential material information was transmitted to the attorneys. ATopTech does not disagree with this statement of Ninth Circuit law, but instead disputes that Synopsys made a showing of a substantial relationship. The district court found that Synopsys met this heavy burden because it made “a sufficient showing that the ’941 patent was discussed or the probability of it having been discussed.” The district court also found that there was “a relevant overlap in the products that were at issue in the former case and now will be at issue again,” and stated that because of “the long relationship that [OMM] had with Magma and the thoroughness…of [OMM’s] work, in general,” disqualification of OMM was appropriate. We determine that the district court had a sound basis for disqualifying OMM. Therefore, mandamus relief is not warranted.

The district court properly rejected what looks like a belated effort to “screen” the conflicted lawyers.

The real issue is how you determine substantial relationship.  Our book points out that courts are all over the place both in how they describe, and how they implement, that test.

(hat tip:  Ned)