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.

Over on the main page…

Ethics

They’re having a, um, heated discussion about whether academics, particularly Mark Lemley, is qualified to talk about patent law and policy.

My own view is that I think teaching doesn’t qualify you to do what your subject matter relates to.  I would never hire a professor to draft a patent simply because he’s taught patent law for years (even if he were registered).  I’d never hire a professor to represent me in a personal injury case simply because he’s taught torts.  I’d hire an experienced patent prosecutor and PI attorney, respectively, to do those things.

But the sniping over there on the main page seems to suggest that by teaching patent law or teaching torts, one does not gain knowledge and insight to the subject matter.  There, I have to disagree, and strongly.  I’ll give a personal example to explain why.  As a lawyer (litigated complex commercial litigation, etc., for 15 years before starting to teach 11 years ago) I knew about federal subject matter jurisdiction, and for example dealt with far too many efforts by plaintiffs to fraudulently join defendants, etc.  I was “good” at procedure.

But I have no doubt that, in the twelve years of teaching that subject (and writing a book on it; you should buy Mastering Civil Procedure or recommend it to law students everywhere so I can retire!), I’ve learned far more about procedure than I would have as a lawyer in that same time.  I get hired sometimes in cases to simply fix procedural problems, which confirms my belief.

I think I know more about civil procedure than the vast majority of lawyers with 25 years of experience, in other words.  To say that one only learns about procedure by doing it, in other words, is way wide of the mark.

It also in my view shows that the criticisms of Mark are also off the mark.  I honestly don’t read even half of what he writes (sorry, Mark), but to say that because he is not registered to file an application means he can’t write about and have a valued opinion about patent law is silly.

Finally, I think it is beyond absurd to suggest — as Mr. Wegner does — that clerking at the CAFC makes you qualified to teach patent law.  That in my opinion simply doesn’t jibe with my own actual experience there last year, clerking for Chief.

Anyhow, a Thursday afternoon rant over. I’m going to get a beer and some wings with a fellow Arizona Wildcat alum.  We’ll talk about “next year,” like UA fans always do.

The PTO’s Role (none) in Defining the Elements of Unenforceability.

Ethics,

In a comment below, someone asserted that the PTO has tried to define the elements of inequitable conduct.  I wrote an article about this issue, with my (now fellow lawyer) Seth Trimble.  It is here (I hope already available).  Here’s the intro:

 

In 1992, the patent office amended a federal regulation known as Rule 1.56.[1] The amendment require less disclosure of patent applicants than had been required by the federal courts’ interpretation of the prior version of Rule 1.56, as well as less than had been required by courts in determining enforceability of a patent.  Thus, since 1992, the PTO has required less disclosure under Rule 1.56 than courts have long required to obtain an enforceable patent. This article addresses the tremendous and unnecessary confusion that has arisen from that amendment.

Although our analysis turns on principles of statutory construction and separation of powers, the impact of our conclusion is practical and important.  Those who prosecute applications need to disclose more broadly than is required by Rule 1.56 to best serve their clients. Those who litigate inequitable conduct claims should not rely on the narrow definition of materiality in Rule 1.56.  The two definitions of “materiality” are distinct: one applies during patent examination, and the other during litigation.   A change in the meaning of one does not mandate a change in the other and, most pertinent here, a regulatory change by the PTO cannot mandate a change in the substantive standard applied to determine enforceability.


[1]     37 C.F.R. 1.56.

Interesting Article Providing Data Analyzing Exergen/Therasense’s Impact

Ethics

The article by Robert Swanson, published in the Stanford Law Review, is here.  The abstract:

This Comment empirically investigates the doctrine of inequitable conduct in patent law. Inequitable conduct is a defense to patent infringement that accuses the patent holder of committing fraud on the U.S. Patent and Trademark Office to secure the patent. Before the Federal Circuit’s recent Exergen and Therasense decisions, the defense was seen as chronically overused. As a result, patent applicants cited more prior art in their applications to avoid later being charged, during litigation with fraudulent omissions. The Federal Circuit responded with Exergen and Therasense, which heightened the pleading standard and raised the legal proof required for inequitable conduct, respectively.

Many commentators, and especially members of the patent defense bar, now feel that the Federal Circuit has gone too far in restricting the inequitable conduct defense, to the point that it is essentially a dead doctrine. This Comment informs the debate by adding comprehensive data. To better comprehend the effects of the Exergen and Therasense cases, this Comment calculates the rates at which accused infringers plead and prove inequitable conduct—for every patent case over the periods in question. The results show that the inequitable conduct defense is used significantly less often than many assume, contradicting assertions by the Federal Circuit’s Therasense majority. Moreover, the data indicate that Exergen and Therasense have both contributed to an even further decline in accused infringers’ use of the inequitable conduct defense. Based on a full exploration of the data, the Comment concludes that the Federal Circuit went too far in Therasense (but not in Exergen). A better formulation of inequitable conduct doctrine would be the test advocated by the dissent in Therasense, which embraced the U.S. Patent and Trademark Office’s lower standard of materiality.

Patent Reform: It’s now or never?

Ethics

There’s an article here suggesting that, if the Senate doesn’t move now, this bill will die (because of the election and so on).  I’m not sure why the Senate would move on things like fee-shifting with Octane and all up there – I’m hopeful they’ll get this matter of statutory interpretation right; meaning, they’ll agree with me (see post below).

Judge Robinson Finds Patentee Violated Rule 11 for Asserting a Claim that Required “printed” Material Covered Amazon’s Kindle

Ethics

The order in Technology Innovations, LLC v. Amazon, Inc., 2014 WL 1292093 (D. Del. March 31, 2014) is here.  It’s a nice order addressing what appears to be a very overly aggressive claim construction position by the patentee, where it asserted that its patent covered Amazon’s Kindle.  This picture perhaps explains the result:

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The opinion points out that Amazon in its brief had cited the NYT Op-ed I co-wrote with Chief and Prof. Chief to support the argument that section 285 sanctions may be proper where a litigant “distorts a patent claim far beyond its plain meaning and precedent for the purpose of raising the legal costs of the defense.”

Interesting North Carolina opinion: Clients may be entitled to e-files in a preferred format

Ethics

Given the number of proprietary platforms used in prosecution, N.C. Opinion 2013-15 (January 24, 2014) is worth noting.  It joins several other opinions analyzing whether a lawyer must provide to a former client e-files and how far the lawyer must go in finding them. But, more than that, it answered this question:

When the representation terminates and the client requests the file, is the lawyer or law firm required to provide the records in the format (electronic or paper) requested by the client?

 With the following analysis:

Many clients, or successor counsel, will have the technical expertise and financial ability to receive client records in an electronic format without experiencing any problem or undue expense in opening, using, or reproducing the records. These clients will probably prefer to receive the records in an electronic format. However, there are clients, such as individuals or small businesses with limited financial means or technical expertise, that cannot afford to purchase expensive software or computer equipment simply to gain access to the records in their own legal files. There must be a weighing of the interests of the lawyer or law firm in producing the client’s file in an efficient and cost-effective manner against the client’s interest in receiving the records in a format that will be useful to the client or successor counsel.

Therefore, records that are stored on paper may be copied and produced to the client in paper format if that is the most convenient or least expensive method for reproducing these records for the client. If converting paper records to an electronic format would be a more convenient or less expensive way to provide the records to the client, this is permissible if the lawyer or law firm determines that the records will be readily accessible to the client in this format without undue expense. Similarly, electronic records may be copied and provided to the client in an electronic format (they do not have to be converted to paper) if the lawyer or law firm determines that the records will be readily accessible to the client in this format without undue expense. See 2002 FEO 5 (“in light of the widespread availability of computers,” emails may be provided to a departing client in an electronic format even if the client requests paper copies).

A lawyer should in most instances bear the reasonable costs of retrieving and producing electronic records for a departing client. However, a lawyer or law firm may charge a client the expense of providing electronic records if the client asks the lawyer or law firm to do any of the following: (1) convert electronic records from a format that is already accessible using widely used or inexpensive business software applications; (2) convert electronic records to a format that is not readily accessible using widely used or inexpensive business software applications; or (3) provide electronic records in a manner that is unduly expensive or burdensome.

Nevertheless, if the usefulness of an electronic record in a client file would be undermined if the document is provided to the client or successor counsel in a paper format, the record must be provided to the client in an electronic format unless the client requests otherwise. For example, providing a spreadsheet without the underlying formulas or providing a complex discovery database printed in streams of text on reams of paper would destroy the usefulness of such data to both the client and successor counsel. Similarly, a video recording cannot be reduced to a paper format and therefore must be provided to the client in its original format.

If you are not already dealing with this and related issues at the outset, consider doing so!

2d Edition of Ethical Issues in Patent Litigation now available!

Ethics,

Woo hoo!  You have no idea how much work it is to create something like this.  Very proud of the second edition and a huge thanks to the good folks at Oxford University Press, and then LexisNexis, for making it happen.  Buy (many copies of) it here.  The abstract:

Patent Ethics: Litigation (2014 Edition) by David Hricik, is a unique guide to the ethical issues arising in the course of the patent litigation process. By providing relevant rules and case law, it allows practitioners to identify ethical problems before they arise and to address them most effectively when they do. This treatise and its companion volume (Patent Ethics: Prosecution, by David Hricik and Mercedes Meyer) are the first of its kind to combine rules and patent-specific cases with author commentary, which distills the author’s experience and expertise into effective practice strategies. The 2014 Edition has been completely revised and includes discussion of ethical issues arising under new AIA post-grant proceedings, including prosecution bars. It also includes new chapters on ethical issues in alternative fee agreements and in settlement agreements, and expanded chapters on selection, compensation, and use of expert witnesses.

My paper on judicial ethics and social media, the Internet, etc., now available

Ethics

The abstract says it all, and brilliantly:

This paper was written for judges to assist them in understanding: their obligations concerning Facebook and other social networking sites, including “friending” lawyers; the confidentiality of email, texts, and other e-communications; the use of the Internet by lawyers to research jurors or potential jurors; the use of the Internet by judges to research the facts and law; and how to admonish jurors not to use the Internet to research the case before them or to discuss it prior to deliberations.

The full paper is here.  It’s pithy and just amazing, so so says me!

Client, Firm Lose 12(b)(6) Motion to Inventor who Claims Firm Stole his Trade Secrets

Ethics, Trade Secret,

Nicolo v. Patterson Belknap Webb & Tyler, LLP, is a suit brought by an inventor-patentee who claims that a Patterson attorney met with him under the guise of seeking to represent him in a suit against third-parties, while the real purpose was to obtain information for its client, Ethicon.  The judge recently denied the defendants’ 12(b)(6) motion, reasoning that Pennsylvania law protects against mere acquisition of trade secrets through improper means (subsequent use/disclosure need not be alleged, in other words).  The opinion doing so is here.

In addition to the obvious lessons, at the Emory conference I mentioned, one of the panelists asked how often large corporations take advantage of solo inventors. If the allegations here are true, this could be one such example.  “Troll” is a word that might have been applied to the inventor had he sued Ethicon, in other words.

Stay tuned.

New York State Bar Issues “Guidelines” on Lawyer Use of Social Media

Ethics

The opinion is here.  It discusses these points, and is worth a read:

  • Attorney Advertising
  • Furnishing of Legal Advice Through Social Media
  • Review and Use of Evidence from Social Media
  • Ethically Communicating with Clients
  • Researching Social Media Profiles or Posts of Prospective and Sitting Jurors and Reporting Juror Misconduct

I’ve written up a paper on judicial ethics and social media which I’ll post soon.  There’s a lot of gray out there…

California Opinion Enters the Fray on What is Puffing, What is Fact, in Negotiations

Ethics

California earlier this year issued for comment Cal. St. B. Standing Comm. on Prof’l Responsibility & Conduct Proposed Formal Op. 12-0007 (Jan. 24, 2014).  This is a mess of an area, but this doesn’t shed much light, imho.

Some background.  Rule 4.1 prohibits lawyers from making false statements of material fact.  However, everyone knows that during negotiations people say things that sure sound like facts, but which no one takes as such.  For example, “we won’t pay more than 3% for this license” is seldom taken as meaning that, in fact, you won’t pay 4%.  It’s bargaining.

The problem is that it’s hard to distinguish what is a “fact” from non-fact in this environment.  The comment to the Model Rule says that what’s a fact can “depend on the circumstances” and gives 3 examples of what are not facts… no example of what is a fact, and points lawyers to “generally accepted conventions” to figure out the difference.

The California opinion doesn’t break a lot of new ground.  It says:  (a) L can’t say a witness saw the defendant texting while driving when no such witness exists; (b) L can’t say the plaintiff’s income was $X when in fact it was $Y; (c) L can lie about the bottom line settlement number of its client; (d) L can’t misrepresent the extent of insurance coverage (that is, from my research, the most common factual misrepresentation); (e) L can’t say his client will file for bankruptcy if he knows his client doesn’t qualify and (f) L can’t hide the fact that his client got a new job if the parties have agreed to supplement information.

So… not much to learn, but it tries.

I’ve done a CLE on this topic for patent lawyers over the years, and even have it up on cleonline.com if you need CLE credit.  It includes cartoons!

New York Ethics Opinion: You can pay for physical evidence, but….

Ethics

The New York State Bar Association Committee on Professional Ethics in Opinion 997 (1/24/14) analyzed whether a lawyer could pay a store owner for a video tape from the store’s surveillance camera that was pertinent to a personal injury claim the lawyer had brought.  You can imagine that sort of issue arising in patent litigation.

The bar association recognized that Rule 3.4(b) (in all states I’m aware of) severely limits payments to witnesses, limiting for example payments to fact witnesses to reimburse for reasonable time and expenses.  The bar opinion said that payments to physical evidence were outside the scope of the rule, but had two central limitations:  falsification of evidence was obviously a concern when payment was demanded; payments can’t be masked witness payments that violated Rule 3.4(b).

On the other hand, the opinion suggested that there may even be an affirmative duty to buy the evidence!