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.

N.D. Cal. Holds its Model Protective Order Covers IPR Proceedings

Ethics

Magistrate Judge Grewal in Software Rightrs Archive, LLC v. Facebook, Inc. (N.D. Cal. Jan. 15, 2014),  held that the Northern District's Model Protective order applied to IPR proceedings (which were adopted long after the model order was), because they cover patent prosecution, including "directly or indirectly drafting, amending, advising, or otherwise affecting the scope or maintenance of patent claims."  The court also held it applied to expired patents.  The case also discusses burdens of proof in light of the adoption of the model order.  (At time of posting, the court's web page seems to be down, but it's here, and hopefully the order will be there.)

Random Thought about Fresenius, Races to Judgment, and Choice of Law

Ethics,

There's a great short piece here about how the loser in a patent case in a district court has a strong incentive to go to inter partes review and, if lucky, to win the race between the IPR proceeding and the CAFC deciding the case, because in Fresenius, the CAFC held that a judgment on appeal was not "final."

One thing that really bugs me about Fresenius is this:  the judgment came out of the Ninth Circuit, but no where does the Fresenius court apply Ninth Circuit law to the question of whether the judgment is final.  I don't think that whether a judgment is "final" or not is a question unique to patent law…

Anyhow, back to prepping for class I go.

 

Lawyer fails to correct Rule 131 Dec; Patent held unenforceable; lawyer agrees to discipline

Ethics

Thanks to a reader..

This OED decision from January 8, 2014 disciplinary order is interesting.  Briefly, a very senior patent attorney (with a low reg number) was suspended for filing a Rule 131 declaration antedating a prior art reference, and then failing to correct the prosecution record after the declarant admitted to the patent attorney, during prosecution, that the Rule 131 declaration was false.  The patent that issued from that application was subsequently litigated and held to be unenforceable due to inequitable conduct predicated in part on a finding that the Rule 131 declaration was false.  

 Two thoughts:  one, why would a reasonable practitioner continue to prosecute?  For the fees?  (If the client had given the practitioner an interest in the application, I can see the financial interest, but otherwise…?).  Second, think of the costs that, I bet, are coming downstream:  the accused infringer ought to move for fees under 285, and, if so, those fees ought (in my view under these allegations) be paid by the lawyer.  So, back to the first thought: why?

Federal Circuit in Kilopass: Section 285 is not as rigid as Brooks Furniture Suggests

Ethics

Kilopass  is an important case, given the pending case on 285 before the Supreme Court, and in my view is a big step toward a proper interpretation of Section 285.  However, what drives me nuts is that the majority opinion, by Judge O'Malley who I respect enormously, talks about "chaning the standard" for imposing fees.  The Court can't do that:  Only Congress can.  The question should be:  what standard did Congress set in 1952?  For the reasons that follow, I believe Chief Judge Rader's concurrence is ultimately correct.  (Disclaimer:  I clerked for Chief until a few months ago.)

 

Down in the comments I explain there is no constitutional right implicated by fee shifting, so the PRE standard is irrelevant, and the statute means what it says.  Here is a clip from a California case, quoted in a comment below:

 

Hundreds of California statutes provide for an award of attorney fees to the prevailing party. (See Pearl, Cal. Attorney Fee Awards (Cont.Ed.Bar 2d ed. 2001) § 2.1, p. 12; see also id., ch. 17 [charting many such statutes].) Fee shifting simply requires the party that creates the costs to bear them. (Premier Elec. Const. Co. v. N.E.C.A., Inc. (7th Cir. 1987) 814 F.2d 358, 373.) It does not make a party “liable” for filing a lawsuit. This distinguishes Professional Real Estate Investors, supra, 508 U.S. 49, Equilon’s central authority, which concerns not fee shifting but the scope of antitrust liability for engaging in litigation. There, when movie studios challenging the rental of videodiscs to hotel guests brought a copyright infringement action against certain hotel operators, the operators filed counterclaims alleging the studios’ action was intended illegally to restrain trade. The high court held that one who initiates litigation is immune from antitrust liability for doing so unless the litigation is a “sham.” (Id. at pp. 60-61.) The case did not involve a fee-shifting provision nor did the court anywhere suggest that its “sham” litigation rationale might apply in the fee-shifting context. Equilon cites no case in which a fee-shifting provision has been held unconstitutional under Professional Real Estate Investors or its rationale. (See generally Alyeska Pipeline Co. v. Wilderness Society (1975) 421 U.S. 240, 262, 44 L. Ed. 2d 141, 95 S. Ct. 1612 [finding it "apparent that the circumstances under which attorneys' fees are to be awarded and the range of discretion of the courts in making those awards are matters for Congress to determine"].)

 

Another Fight Over The Procedure for 103: Galderma v. Tolmar

Ethics

This isn't ethics, except that you need as a litigator to be ready for the continuing disagreement at the Federal Circuit over how to address 103 in the context of litigation.  Judge Prost, and others, are advocating the view that the same analysis that applies in prosecution applies in litigation:  if the accused infringer shows a "prima facie case" of obviousness, the burden of production — not persuasion — shifts to the patentee to come forward with objective evidence of non-obviousness, or what judges who don't like patents call "secondary considerations."  Today's split decision is here.

To me, this approach — "well, it would have been obvious, if you just look at the art, to make this" — inherently uses hindsight, becuase "to make this" is part of the equation.  This could matter a lot in summary judgment or, here, bench trials…

More of my Rant about the CAFC’s Interpretation of Section 285

Ethics

Y'all know I think that requiring subjective/objective bad faith to get fees is not a correct interpretation of 285.

I've been updating my book, reading about the liability standards the CAFC has imposed for, e.g., making frivolous claims to a customer of X that X's products infringe and so the customer needs a license.

The standard?  Objective and subjective baselessness, because of the right to petition.  This one they've got right.  See Hunter Douglas, Inc. v. Harmonic Design, Inc., 153 F.3d 1318, 1336–37 (Fed. Cir. 1998), overruled on other grounds, Midwest Industries, Inc. v. Karavan Trailers, Inc., 175 F.3d 1356 (Fed. Cir. 1999) (requiring plaintiff to plead and prove bad faith to prevail on state law tort claims based upon statements of infringement in the marketplace); In re Innovatio IP Ventures, LLC Patent Litig., 921 F. Supp.2d 903 (N.D. Ill. 2013) (same and providing a lengthy discussion); Clearplay, Inc. v. Nissim Corp., 2011 WL 3878363 (S.D. Fla. Sept. 2, 2011) (same); Contech Stormwater Solutions, Inc. v. Baysaver Tech., Inc.,534 F. Supp. 2d 616(D. Md. 2008) (requiring bad faith and other elements of state law tort claims for pre-suit letters);Zenith Electronics Corp. v. Exzec, Inc., 182 F.3d 1340, 1353–54 (Fed. Cir. 1999) (adopting the bad-faith requirement for Lanham Act claims).

But does it make one whit of sense to intepret a fee shifting statute to require the same proof that the First Amendment requires before imposing liability for suing?  If that is a correct reading of the First Amendment, then NO fee shifting statute is constitutional unless it meets this objective/subjective requirement.

Okay, back to the book.  The IP Ventures case is, by the way, really interesting.

Ethics and Using Undercover Investigators to Ferret Out IP Infringement

Ethics

There's a wonderful little body of law trying to harmonize the ethical rules — which say a lawyer can't use someone to (a) have an ex parte contact with a person who is "represented by counsel" (which is WAY broader than you might think; (b) have contact with a person who is not "represented by counsel" by appearing disinterested when he is not; or (c) engaging in deceit — with the use of undercover investigators to find out, e.g., if the target sells knock-off goods.

Boiled down, the rule seems to be developing that, if the contact is made pre-suit and without knowing that the person is "represented by counsel" (again, very broad counter-intuitive meaning), and if the private investigator only acts like an ordinary consumer, then the contact is okay.  A recent case so holding is Turfgrass Group, Inc. v. Northeast La. Turf Farms, LLC 2013 WL 6145294 (W.D. La. Nov. 20, 2013).