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.

Court Strikes Answer of Accused Infringer Which, Among Other Things, Said it had not been a Real Party in Interest to an IPR Proceeding (to avoid estoppel) But Was Seemingly One

Ethics

On a follow up to the post below about this issue, a district judge struck the answer of a defendant after concluding that the defendant had misrepresented its involvement in an IPR proceeding that had turned out favorably to the patentee, in order to avoid the estoppel effect.  The decision in Bortex Indus. Co. Ltd. v. Fiber Optic Designs Inc. is here.

An Aside: The Relationship Between Negligent Misrepresentation and the Economic Loss Doctrine

Ethics

This issue drives me nuts:  section 552 of the Restatement was designed to impose tort liability under narrow circumstances for economic loss caused by negligent misrepresentation and, by its terms, applies even when there is privity of contract between plaintiff and defendant.  (Indeed, some states hold there HAS to be privity for a 552 claim!).  Yet, some courts say that a 552 claim is barred by the economic loss doctrine, which is intended to police the boundary between contract and tort law.

The problem with this is that (a) 552 and (b) fraud and (c) other torts are narrowly crafted to be, in a sense, exceptions to ELD.  If ELD bars a 552 claim, it bars a fraudulent inducement claim.  That, of course, is silly, but why this issue persists, I don't know.  I wrote a paper about this years ago, never published. I wish I would have..

Rant done.

Interesting Malicious Prosecution Suit Based on Suit Over Filing of ANDA

Ethics

I love stuff like this…

Watson files an ANDA; Bayer sues, triggering an automatic 30 month stay of the ANDA.  Judge grants judgment on the pleadings to Watson, which is affirmed on appeal.  District judge later denies request by Watson for "exceptional case" under 285.

Later, Watson sues Bayer in state court, alleging malicious prosecution and other state law claims.  Boiled down, it asserts Bayer filed the infringement suit for an improper purpose — to trigger the 30 month stay.  Bayer removes the case to federal court.  Judge denies the motion to remand, though honestly I'm not quite sure why!

 

Apple, Nokia Propose Severe Sanctions Against Samsung, Quinn Emanuel for Alleged Breach of Protective Order

Ethics

Down below I recounted how Samsung executives had allegedly received and used outside-counsel-eyes-only documents relating to licensing terms between Apple and Noka.  Today, Apple and Nokia submitted proposed orders on how much and how to sanction Samsung and QE.  An article containing links to the court papers is here.

It is interesting to me that QE continues to represent Samsung in the case; I wonder if the firm's and client's interests may be at odds, or QE might be materially limited in its ability to represent Samsung. 

 

The Interplay Between the Rules of Civil Procedure and Section 282

Ethics

As you know, you have an obligation to timely answer, and to supplement, responses to discovery, including interrogatories.  You also have an obligation under 35 USC 282 to provide a list of references to be used to invalidate a patent, and to do so at least 30 days before trial.  What if you comply with 282, but not the federal rules?

You lose.  The court in Woods v. DeAngelo Marin Exhaust, Inc., 692 F.3d 1272 (Fed. Cir. 2012) explained that "Section 282 does not eliminate the defendant's obligation" to supplement.

This could be a nice trap…

Some more thoughts about Section 285

Ethics

I've written below that I believe the Federal Circuit really messed up the interpretation of Section 285 in Brooks Furniture and other cases.  In updating my book, I remembered another aspect:  courts also sometimes follow dicta in Brooks Furniture that an assertion of infringement is presumed in good faith.  Brooks Furn., 393 F.3d at 1382.  E.g., MTS Sys. Corp. v. Hysitron Inc., 639 F. Supp.2d 996 (D. Minn. 2009). 

If you read the cases cited by Brooks Furniture, they don't have anything to do with presuming infringement claims are made in good faith; the cases hold, only, that belief in validity is presumed in good faith (because of the presumption of validity).  This has raised the bar too high.

On a much more interesting note, the Chiefs are giving the Broncos a good game! (I am a Cowboys fan, lifetime. No flames allowed!).

FLH Summarizes Senator Hatch’s Anti-Troll Bill

Ethics

Frommer Lawrence & Haug has a nice little summary here, including Chief Judge Rader's observations.  (Chief has long-standing ties to Senator Hatch.)

My own view is 285 is — easily — broad enough to do the job, and (a) defining a property owner's rights by what they do is silly and (b) if the CAFC would just clear up the law (if the Supreme Court doesn't do it for them) on the meaning of 285), this would be a non-issue.

California appellate court permits narrow exception to rule against non-assignability of legal malpractice claims

Ethics

Not sure how much this matters in California, but this rule is usually iron-clad.  The first few sentences explain:

There is a general rule in California barring the assignment of a cause of action for legal malpractice. In this case, we recognize a narrow exception to that rule. Specifically, a cause of action for legal malpractice is transferable when (as here): (1) the assignment of the legal malpractice claim is only a small, incidental part of a larger commercial transfer between insurance companies; (2) the larger transfer is of assets, rights, obligations, and liabilities and does not treat the legal malpractice claim as a distinct commodity; (3) the transfer is not to a former adversary; (4) the legal malpractice claim arose under circumstances where the original client insurance company retained the attorney to represent and defend an insured; and (5) the communications between the attorney and the original client insurance company were conducted via a third party claims administrator. 

White Mountains Reinsurance Co. of Am. v. Borton Petrini, LLP, C071365, 2013 WL 6181126 (Cal. Ct. App. Nov. 26, 2013)

Can hitting “reply to all” violate Rule 4.2’s prohibition against ex part contacts?

Ethics

Opposing counsel sends you an e-mail, copying his client on it.  Can you "reply to all" without violating rule 4.2, which prohibits communications with a person a lawyer knows to be represented by counsel in a matter without the consent of the opposing lawyer?

Maybe.  That's what the New York City Bar Association reasoned in opinion 2009-1, available here.  Even if it is appropriate to "reply to all," the opinion warns that implied consent beyond that time and subject matter likely should not be implied.

I've seen other cases which reject implied consent under Rule 4.2, so be careful out there!

Working on Second Edition of Ethical Issues in Patent Litigation

Ethics

Mercedes Meyer and I finished the 2d edition of patent ethics – prosecution a few months back.  My solo volume is coming along.  (I hate second editions, or any updates.)

I've been working on the sections on ex parte contacts, and it's just fascinating what happens out there.  My favorite case so far is this:  expert signs on to be adverse to IBM, and when IBM personnel find out, they revoke his special pass to attend some (geeky, I am sure) seminar.  He asks why, and they say because he's an expert.  He then offers up some description of what he's to testify about, and eventually the lawyers who retained him piece it all together and move to disqualify IBM's lawyers.

Motion denied, because, even though the effort to revoke his pass and all were run by IBM's lawyers, they didn't script any conversation or direct the IBM people to talk to him….

Ethics, Civil Procedure, and the Rules Enabling Act

Ethics

I teach civ pro, and ethics, and patent law, so I'm in heaven with this letter from the Judicial Conference to Congress stating its concern that the provisions of the Goodlatte bill requiring the judiciary to amend the FRCP to address patent actions violates the Rules Enabling Act.

On first read, I think the Judicial Conference's concerns are quite valid.  I also don't personally like the "one size fits all" assumption underlying a lot of "patent reform" directed toward "trolls."  A case-by-case approach — under a properly interpreted Section 285 (see my post below) — ought to do the trick.

Keep those files handy: OED’s 10-year statute of limitations on discipline

Ethics

In accordance with the AIA, the PTO about a year ago adopted a 10-year statute of limitations for discipline.  Now, a disciplinary proceeding must be commenced before the earlier of (a) 10 years after the date on which the misconduct forming the basis for the proceeding occurred, or (b) one year after the date on which the misconduct forming the basis for the proceeding is made known to an officer or employee of the Office.  There's a short piece from the PTO on this change here.

I hope everyone has large hard drives, cloud storage, and file cabinets… 

My second (belated) post about 101.

Ethics,

I don't believe 101 is a defense to infringement (as y'all know), but let's assume that it is.

Let’s start with the types of subject matter, which seems to be misunderstood by alot of people.  There are three categories of "ineligible subject matter," two of which are intangible, one tangible:  intangible abstract ideas and laws of nature (probably overlapping to some extent?) and tangible “natural phenomenon.”  To make this clearer, I’ll call that third category “natural products.”  (There are enormous definitional problems here:  why is the rate at which the body metabolizes a synthetic drug a “law of nature” being a glaring one, but let’s keep going.)

You know the basic types of claims or you wouldn’t be reading this.

With that framework, here is what the Supreme Court cases teach:  if a method claim is deemed to embrace intangible subject matter, or if a product claim embraces a natural product, the claim is at least suspect.  There’s a lot in that which we’ll get to in a moment, but that formula predicts the outcome of every Supreme Court case since 1952, plus Funk Brothers (which I have doubts survived the 1952 amendments to the Patent Act but that's for another day):

Case

Product claim?

Process claim?

Any ineligible subject matter, and if so what type?

Result

Comments

Funk

X

 

Natural product

No invention

 

 

          

 

          

Gottschalk

 

X

Intangible

No invention

 

Parker

 

X

Intangible

No invention

 

Diehr

 

X

Intangible

Invention

Because the process was tied to a particular application (not machine, but process), the subject matter was eligible.  Court almost looked at is like a product-by-process claim

Chakrabarty

X

 

 

Invention

Not natural product; but notice that if it had been…

Bilski

 

X

Intangible

No invention

 

Prometheus

 

X

Intangible

No invention

 

Myriad

X

 

To an extent, natural product

To extent natural product, no invention.

In dicta emphasized that a method claim would have been fine.

 Thus, there is a correlation between the use of a method claim and an intangible.  The reason for this correlation between claim type and the tangibility of the ineligible subject matter is, I suspect, that, absent unusual circumstances, a process claim using a natural product isn’t precluding all uses of the natural product, but a product claim on the natural product itself does so.  Vice versa with process claims claiming intangibles.

I hear the objections.  Some say that focusing on claim type will lead to clever drafting.  But, a method claim covering a use a tangible natural product won’t get the same coverage as a product claim, and vice versa. Clever drafting will only get you so far and what’s wrong with clever drafting, anyway?  But, I hear the objection. I’ll overrule it.

Now, so far, I think, this is relatively simple.  But it led me to what, I think, is an important insight:  a method claim to an intangible is the mirror image of a product claim to a natural product. That, I think, helps us to deal with some questions about how much is “enough” in the context of a method claim to an intangible—a serious and messy question.  (And, in my view as noted above, an unnecessary and unauthorized one, and a stupid one – how much is “enough” is 103!)

Let’s see what we can see.  A product claim on a new mineral found in nature is ineligible. The product claim is coextensive with the natural product, which is old, even if newly discovered. There’s plenty of dicta on that point, and Myriad so holds.  The legislative history of the 1952 act also shows that Congress wanted to bar these claims (though it expressly made clear that it wanted to permit claims to methods using “old” natural products). 

The converse of the foregoing is that a method claim coextensive with even a newly discovered intangible law or idea should not be eligible.  Let’s ignore the fact that that conclusion flies in the face of the statutory language that was added to overcome limitations on what was a “process” (“including a process, art or method which includes a new use of a known process, composition, manufacture, machine, or material….”).   Since the Supreme Court hasn’t seemed to notice that problem, we’ll skip past it, too.

 So we have some easy observations:  a product claim coextensive with a natural product is ineligible, as is a method claim coextensive with the abstract law or idea.

 Now, let’s deal with the other end of each spectrum.  The dicta in Myriad was that someone who discovers a natural product should go get method claims on it.  That would be fine.  So, a process claim is fine even though it mentions a natural product.  No news there.

What if someone discovers (which means “invent” under the 1952 act) an old intangible, including a natural product?  There’s no ready analog I can think of to a method claim mentioning a natural product:  it would be a product claim mentioning an abstract idea.  Although I’m sure they exist, they would seem to be a product-by-process claim (much like Diehr was analyzed, in my view).  So, a product by process claim should be fine even though it mentions an old intangible.

Now, let’s dig a little deeper into the muddy middle of these spectrums. Suppose my new mineral has a name (“Hricikite”), and a chemical structure.  If I merely claimed Hricikite in terms of its chemical structure, that fails.  The analog, I suggest, would be to try to claim an abstract idea by simply laying out its steps.  This was, perhaps, CLS Bank:  the claim basically broke down the abstract idea of an escrow into its constituent parts, much like the claim to the chemical structure did so with Hricikite.

 But in each case, this is “bad’ clever claim drafting.  Putting it aside, and I think we would agree, that beyond those efforts to use more words to claim the ineligible subject matter, it doesn’t take much to make a method claim mentioning a natural product eligible.  A new use for an old product is enough.  The statute says the same thing about processes. My key point:  If these symmetries hold true, that means that it also should not take much to make a method claim to an intangible eligible. 

I am probably missing a lot.  What do you think?

Lawyer Can’t Quote Judicial Opinions Praising His Lawyering… so says New Jersey

Ethics, Web/Tech

A few judges wrote very glowing things about a lawyer:

 

"Mr. Dwyer is, I think, an exceptional lawyer, one of the most exceptional lawyers I've had the pleasure of appearing before me. He is tenacious, professional in his presentation to the Court, a bit too exuberant at times, certainly passionate about his position, but no one can fault his zeal and his loyalty to his client, and no one can question his intellect . . . ." Hon. Jose L. Fuentes, J.S.C., in an unpublished judicial opinion concerning a fee application made in an employment discrimination case brought under the New Jersey Law Against Discrimination.

"The inescapable conclusion is . . . that plaintiffs achieved a spectacular result when the file was in the hands of Mr. Dwyer. . . . Mr. Dwyer was a fierce, if sometimes not disinterested advocate for his clients, and through an offensive and defensive motion practice and through other discovery methods molded the case to the point where it could be successfully resolved." Hon. William L. Wertheimer, J.S.C., in an unpublished judicial opinion concerning a fee application made in an employment discrimination case brought under the New Jersey Law Against Discrimination.

"Based upon my observations of him in court there's no question in my mind that he is in the upper echelon of employment lawyers in this state . . .” Hon. Douglas H. Hurd, in an unpublished judicial opinion concerning a fee application under the New Jersey Conscientious Employee Protection Act. 

Lawyer puts these on his web page.  Result?  New Jersey adopts a guideline prohibiting this.  The federal district court opinion denying the lawyer's motion to enjoin implementation of the regulaton, Dwyer v. Cappell, is here.