by Dennis Crouch

The Federal Circuit has been extremely active over the past few years in hearing mandamus petitions filed under the convenient venue provisions of 28 U.S.C. 1404(a).  Most often, these petitions have come from patent infringement defendants who were sued in Judge Albright’s Waco court.  To be clear, these are cases where venue is proper, but where the defendant argue that a different venue will be clearly more convenient:

For the convenience of parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or division where it might have been brought or to any district or division to which all parties have consented.

28 U.S.C. 1404(a).  Convenient venue is not a patent-specific doctrine and so the Federal Circuit follows the law of the regional circuits when deciding these cases.  For cases out of Texas, this is 5th Circuit law.   The 5th Circuit very rarely decides mandamus cases, so the Federal Circuit has actually been substantially developing the law in the interim.  But, the 5th Circuit recently issued a mandamus denial that  should tend to help Judge Albright (and other patent law loving district court judges) keep their patent cases.

In re Planned Parenthood Fedn. of Am., Inc., 52 F.4th 625 (5th Cir. 2022).

This case started as a qui tam false claims act against Planned Parenthood–alleging millions of dollars of false or fraudulent Medicaid claims.  The case was originally filed in Amarillo (N.D.Tex.), and Planned Parenthood moved for a transfer of venue to Austin (W.D.Tex) as a much more convenient forum.  The district court denied the motion and Planned Parenthood filed this mandamus petition.

The 5th Circuit has denied the petition on several grounds. Although all three members of the panel agreed to the denial, only one other judge joined Judge Elrod’s decision (Joined by Judge Graves; with Judge Ho concurring in judgment).

The opinion walks through several important elements of 5th Circuit venue-mandamus jurisprudence, but the opinion repeatedly returns to the broad discretion given to district courts in deciding convenient venue questions:

We reiterate that district courts have broad discretion in deciding motions to transfer; they need only grant such a motion where the evidence demonstrates that the destination venue is “clearly more convenient” than the chosen venue. We review that decision “only for clear abuses of discretion that produce patently erroneous results.” The district court carefully considered each of the private and public interest factors, ultimately concluding that they do not weigh in favor of transfer. The standard for reversing that holding is high.

Id.  These statements are all found in prior precedent, but the forceful new precedent may shift Federal Circuit’s doctrine.

The Federal Circuit has been reticent to give Judge Albright credit for his familiarity with technology and patent law (as well as that of his magistrate judge).  In Planned Parenthood, the Amarillo district court had noted his familiarity with the law as one factor for keeping the case.  On mandamus, the appellate panel found no abuse of discretion with that approach.

One common factor analyzed by the courts is location of the evidence.  Here, the appellate panel explained that factor can be important, but not where the “vast majority of the evidence [is] electronic, and therefore equally accessible in either forum.”  In its prior precedent of Volkswagen, the 5th Circuit had placed greater weight on this factor, but that was because the evidence was “physical in nature.”

The court also felt it was appropriate to take into account the low cost of staying in hotels and eating in Amarillo as compared to Austin.  Although Waco may be a bit more costly than Amarillo, it is so much cheaper than Silicon Valley or Delaware.  “[W]e cannot say that this analysis is based on incorrect legal principles or erroneous factual findings such that it would constitute an abuse of discretion.”

A key factor in this caw that weighed against transfer is that Planned Parenthood first made a 12(b)(6) motion to dismiss the case and then, after losing that motion, filed its motion to transfer. “inexcusable delay” can strongly weigh against transfer.

by Dennis Crouch

The USPTO Office of Enrollment & Discipline’s list of registered patent attorneys and agents includes 48,625 individuals. Since there are no annual dues, CLE requirement, or even check-in many folks continue to stay on the rolls even though they are not practicing patent law.  One example is my colleague Professor Royce Barondes who passed the patent bar exam prior to law school and then never practiced in the field. Instead, he practiced law at Cravath in NYC and now teaches business courses, contracts, and firearms law. I wanted to get a more accurate number of folks currently practicing in the patent prosecution area. Do do this, I downloaded and parsed through USPTO records for utility patent applications filed since mid 2018 and that have been made public. (Series codes 16 and 17).

The Totals: 26,756 practitioners are associated with at least one application filed over the past four years; with 23,793 associated with at least 10 different utility patent applications.  About 80% are attorneys with the remaining 20% being patent agents. The result here does not necessarily mean that all of these attorneys worked on patent prosecution because many firms use a comprehensive customer number that lists all registered attorneys in the firm’s patent group.  This leads to crazy situations like patent agent Maki Saitoh of Oblon being associated with 31,000+ laid open applications filed over the past 4 years.  In addition, we have some undercounting because some folks doing patent prosecution work are not listed in the customer number (e.g., often in house counsel will not be listed).

I mentioned Oblon above. Although Oblon is not in the top-25 of firms in terms of patent attorneys, they are the #1 filer of US patent applications followed closely by Sughrue.  They are able to file so many applications because most of their apps claim priority to a foreign or PCT filing — so they don’t need to write a new original application.  Some firms with lots of patent attorneys don’t do much patent prosecution work.  An extreme of this is Kirkland & Ellis that has over 100 patent attorneys but does not do any patent prosecution.

The following list ranks the top 25 firms with the most registered  patent law professionals.  All of these firms have 100+ patent attorneys/agents.  I also include a note following the firm with some information about how the numbers have changed since 2010.

1. Fish & Richardson (Steady)
2. Finnegan Henderson (Down 50+, Spin-off firms, including Bookoff McAndrews & McNeill Baur)
3. Wilson Sonsini (More than doubled, mostly new attorneys/agents)
4. Knobbe Martens (Steady)
5. Kilpatrick Townsend (Big growth from merger of firms)
6. Foley & Lardner (Steady)
7. Baker Botts (Steady)
8. IBM (Steady)
9. Perkins Coie (More than doubled)
10. Morrison & Foerster (Steady)
11. Cooley (More than doubled, mostly new attorneys/agents)
12. Sterne Kessler (Some growth)
13. Morgan Lewis (Some growth)
14. Jones Day (Some decline)
15. Schwegman Lundberg (Doubled)
16. Wolf Greenfield (Doubled)
17. Banner & Witcoff (Some growth)
18. Polsinelli PC (Huge growth, including folks from Novak Druce;  Dorsey; etc. and also new attorneys)
19. Johnson & Johnson (company)
20. Alston & Bird (Steady)
21. Kirkland & Ellis (Steady)
22. Haynes and Boone (Growth – mostly new attorneys)
23. Mintz Levin (Doubled – mostly new attorneys)
24. Qualcomm (Some growth)
25. Harness IP (Some decline)

Firms with the biggest losses of folks since 2010 include Kenyon & Kenyon (firm closed — 150 people); Brinks (down to 86 from 160, folks left to go to lots of different places); Woodcock (most joined BakerHostetler); Blakely Sokoloff (firm closed an many joined Womble Bond but also spin-off firms of Jaffery Watson; Nicholson De Vos); Connolly Bove (firm closed); Fitzpatrick Cella (Firm closed with many joining Venable); Ropes & Gray (lots of folks left to other firms, including spin-off Haley Guiliano); Novak Druce (lots of poaching, including by Polsinelli; Duane Morris, etc.).

The list has a some big caveats.  (1) The data comes from the USPTO register, and some attorneys are not good at updating their information. For example. Kenyon & Kenyon closed its doors in 2016, but 30+ registrations still list the firm.  (2) A number of folks use their home (or some other) address rather than firm address for the registration. (3) Retired folks often do not update their registration.

Does VLS have a free speech right to sell dog-toys with a "poop-themed" spoof of Jack Daniel's whisky? Supreme Court grants cert in this trademark case. pic.twitter.com/x4ouoZf1qy

— Dennis Crouch (@patentlyo) November 22, 2022

Link to the docket: https://www.supremecourt.gov/search.aspx?filename=/docket/docketfiles/html/public/22-148.html

Happy thanksgiving everyone.

by Dennis Crouch

Vidal v. Elster (2022)

Over the past decade, a number of traditional prudential limits on trademark coverage have been found to be unconstitutional limits on free speech. See, Matal v. Tam, 137 S. Ct. 1744 (2017) (disparaging marks) and Iancu v. Brunetti, 139 S. Ct. 2294 (2019) (immoral . . . or scandalous matter).  The most recent showdown involves Steve Elster’s attempt to register the mark TRUMP TOO SMALL.  The USPTO refused to register the mark based upon the statutory requirement barring registration of “a name, portrait, or signature identifying a particular living individual except by his written consent.”  Lanham Act Section 2(c).  On appeal, however, the Federal Circuit ruled that that the limit here is content-based and that the Government had not provided a compelling or even substantial government interest.

[T]he government does not have a privacy or publicity interest in restricting speech critical of government officials or public figures in the trademark context–at least absent actual malice, which is not alleged here.

In a new request-for-extension filing, the US Gov’t has indicated that it is considering petitioning the case to the U.S. Supreme Court as a step too far.  The request does not detail the potential question presented but simply that time is needed.

The Solicitor General has not yet determined whether to file a petition for a writ of certiorari in this case. Additional time is needed for further consultation within the Department of Justice and with the Department of Commerce and the USPTO regarding the potential legal and practical ramifications of the court of appeals’ decision.

The petition is now due December 29, 2022.

by Dennis Crouch

The NY IP Law Association (NYIPLA) recently filed an amicus brief in the pending  anonymous Supreme Court case captioned In re Grand Jury, 21-1397 (2022).  The case focuses on the scope of attorney client privilege, especially with regard to dual-purpose communications.

Petitioner is a law firm specializing in international tax and had provided tax law advice to an expatriation client and also prepared individual tax returns for the client.  Later, the US Gov’t began a criminal tax investigation of the client and subpoenaed the law firm to provide Grand Jury testimony and evidence.  The law firm resisted, but both the district court and Ninth Circuit Court of Appeals ordered compliance.  In prior precedent, the courts have ruled that preparation of a tax return is a non-legal function, and thus, communications for that purpose are not privileged.  However, advice regarding tax planning and tax controversies is legal advice and thus communications are privileged. The attorney-client communications in this case thus fall under the category of dual-purpose communications where some aspect of the communications are privileged and other aspects are not privileged.

The lower court approach was two-fold. First, the court concluded that dual-purpose communications are entirely protected only when the primary purpose of the communication involved seeking legal advice.  Using that test, the court found that some of the communications were not privileged because they were primarily associated with tax return prep.  Thus, the law firm was ordered to deliver the documents.  Still, the court did not run entirely roughshod over attorney-client privilege. Rather, the second part of the lower court approach that any portions of the communications that contain attorney-client privileged material can be redacted.  Still, the law firm doesn’t want to disclose the communications at all and suggests that communications should entirely protected when the legal advice was “one of [its] significant purposes.” The Supreme Court recently agreed to hear the case with oral arguments set for January 2023.

Question Presented: Whether a communication involving both legal and non-legal advice is protected by attorney-client privilege where obtaining or providing legal advice was one of the significant purposes behind the communication

[Petition]. In its responsive briefing, the U.S. Government reframed the question as follows:

Whether the district court permissibly denied petitioner’s general claim of attorney-client privilege over communications, related to the preparation of a tax return, that did not have obtaining legal advice as their primary purpose, while instructing that all legal advice contained in the communications be redacted

[Gov’t Opposition].  The “significant purpose” test comes from a 2014 D.C. Circuit decision by Judge Kavanaugh, who is now a member of the Supreme Court. In re Kellogg Brown & Root, 756 F.3d 754 (D.C. Cir. 2014).

In their Amicus Brief, NYIPLA argues that the situation faced by the tax lawyers here is also prevalent for IP attorneys because IP lawyers are often experts in both the law and in the relevant field of the IP. For example, many patent attorneys also hold advanced degrees in a particular technical field and regularly use that knowledge in providing advice.  Likewise, many patent attorneys (especially in-house counsel) develop extensive knowledge of the firm’s business activities and goals and integrates those into their analysis.  According to the briefs, the 9th circuit rule “which requires courts to balance the legal and nonlegal aspects of a communication to determine its predominant purpose, hamstrings IP attorneys and clients.”   Irena Royzman (Kramer Levin) is counsel of record for the NYIPLA brief.

by Dennis Crouch

The Federal Circuit’s decision in CUPP Computing v. Trend Micro includes a big discussion on treatment of disclaimers.  The patentee (CUPP) filed the appeal after the PTAB issued its final written IPR decisions finding the claims of three mobile device cybersecurity patents to be unpatentably obvious. IPR2019-00764, -00765, -00767.

In the IPR, CUPP was seeking a narrow construction of its claims in order help it skirt the prior art.  The claims all require a “security system processor” that is “different than” from the mobile device processor.  During prosecution, CUPP distinguished prior art that included both processors using the same motherboard as not “different.”  Later during the IPR, CUPP argued that this distinction meant that the two processors must be “separate and remote” from one another.  During the IPR, CUPP also expressly disavowed claim coverage where the security system processor is embedded in the mobile device.  Despite these arguments, the PTAB gave the claims a broad construction that allowed for both processors to be embedded next to one another.  This interpretation meant that the prior art killed the claims.

On appeal, the Federal Circuit has affirmed on this point.  First, as to the original prosecution.  The court concluded that the statements were not a clear disavowal of scope.  The court noted that the statements could be reasonably interpreted in more than one way and thus failed to meet the high burden of prosecution disclaimer.

The doctrine of prosecution disclaimer precludes patentees from recapturing through claim interpretation specific meanings disclaimed during prosecution. However, a patentee will only be bound to a disavowal that was both clear and unmistakable.

Slip Op. (quotation marks, alterations, and citations omitted).

As to disavowal during the IPR, the Federal Circuit has previously held the PTAB is not required to accept a disavowal of scope during an IPR.  However, that prior decision was non-precedential. VirnetX Inc. v. Mangrove Partners Master Fund,
Ltd., 778 F. App’x 897, 910 (Fed. Cir. 2019).  Here, the court makes the ruling binding:

The Board concluded that it could ignore this disavowal in construing the claims. We agree. . . . The Board is not required to accept a patent owner’s arguments as disclaimer when deciding the merits of those arguments. A rule permitting a patentee to tailor its claims in an IPR through argument alone would substantially undermine the IPR process. . . .

If patentees could shapeshift their claims through argument in an IPR, they would frustrate the Patent Office’s power to “revisit” the claims it granted, and require focus on claims the patentee now wishes it had secured.

Slip Op. (citations removed).

The court goes on to make a some what powerful extension of issue preclusion doctrine:

To be clear, a disclaimer in an IPR proceeding is binding in later proceedings, whether before the PTO or in court. We hold only that a disclaimer is not binding on the PTO in the very IPR proceeding in which it is made, just as a disclaimer in a district court proceeding would not bind the district court in that proceeding. This follows from the adjudicatory nature of IPR proceedings as contrasted with initial examination.

Id. Truthfully, it is difficulty to this aspect of the court’s decision as it relates to preclusion law in general.  But, perhaps the court is simply saying that if the disclaimer had been successful during the IPR, then it would be binding before a subsequent tribunal.

= = =

Also note that all this law of prosecution disclaimer is made-up law by the judges based upon their preferred policy arguments.  The statute does discuss disclaimer under Section 253, but this is disclaimer of a claim as a whole. “[A] patentee … may disclaim any complete claim . . . Such disclaimer shall be in writing and recorded.”

by Dennis Crouch

In re Apple, — F.4th — (Fed. Cir. Nov 8, 2022)

The Federal Circuit has again ordered Judge Albright to halt pending litigation until he decides Apple’s motion to transfer venue on grounds of inconvenience under 28 U.S.C. 1404(a).  In particular, the court (1) vacated the scheduling order; and (2) directed Judge Albright to postpone fact discovery and “any other substantive proceedings.”

Aire Technology sued Apple for infringement back in October 2021.  In April 2022, Apple filed its motion to transfer.  At that point, the parties conducted some amount of ‘venue discovery’ that was completed around the end of June 2022.  However, instead of ruling on the motion, Judge Albright  told the parties he would postponed ruling for another 7-8 months while fact discovery in the case was ongoing.  Apple then petitioned for writ of mandamus, arguing that delay created a critical injury to the tech giant’s convenience that deserved immediate remedy. And, the Federal Circuit has complied–ordering the district court to go ahead and decide the transfer motion.

In this situation, I have tremendous sympathy for Judge Albright’s ruling.  Albright had previously noted problems with Apple’s venue declarant, Mark Rollins who “frequently and repeatedly submitted unreliable and misleading declarations to this Court.”  Scramoge Tech. Ltd. v. Apple Inc., 2022 WL 1667561 (W.D. Tex. May 25, 2022) (finding Rollins to be not credible).  Even without these particular problems with a 30(b)(6) declarant, my experience is that the witnesses and evidence arguments made in the 1404(a) context at the pleading-stage are notoriously unreliable because they do not reflect the actual evidence/witness issues that become clear around the end of discovery.  Further, parties treat the Section 1404(a) factors as a scorecard or checklist in ways that are often divorced from the interests of justice.

This mandamus is particularly about delaying a transfer decision while the case is developed.  I see little harm in that delay.  Discovery in federal courts is a nationwide endeavor. Evidence is exchanged electronically; parties go to the location of witnesses to conduct discovery; and discovery disputes needing court intervention are ordinarily resolved over the phone (or Zoom).  Thus, there would not be much difference for the parties during this period in terms of litigating in N.D. Cal. vs W.D. Tex.–with the one exception that Judge Albright  remains the judge if the case stays in W.D. Tex.  It is clear that this final Albright-factor underlies Apple’s true purpose in filing these motions and mandamus actions: to escape from Judge Albright.  Of course, that true reason is not justified under the law and so is never mentioned.

One key benefit of an early transfer would be to permit the new district court to get up-to-speed on the issues in the case and begin exerting their own style of case management.  That said, N.D.Cal. judges ordinarily defer the whole discovery process to a magistrate judge and thus rarely become involved.  The Federal Circuit cited some precedent about how an early transfer avoids double-work by two district courts. However, it is not clear how that precedent is applicable in this situation.

In its decision, the Federal Circuit did not delve into the particular issues, but rather focused on prior precedent that “entitles parties to have their venue motions prioritized.”  Id.

by Dennis Crouch

As Jason Rantanen posted, the Supreme Court has granted certiorari in Amgen v. Sanofi, agreeing to hear its first patent case in two terms.  The case has the potential of shaking up disclosure doctrine in a big way.  In particular, Amgen argues that the Federal Circuit incorrectly created two separate requirements from overlapping textual portions of Section 112(a): Written Description and Enablement.  Truthfully, having two separate and distinct requirements reflects an incoherent textual analysis of the statute. Over the past several years, both of these doctrines have increasingly focused on a “full scope” disclosure that makes it virtually impossible to include broad claims, especially genus claims with functional limitations as Amgen did in this case.   More to come. . .

Google LLC v. Sonos, Inc., No. 20-cv-06754, 2022 U.S. Dist. LEXIS 197728 (N.D. Cal. Oct. 31, 2022) [GoogleSonosDiscovery]

Google sued back in 2020 seeking a declaratory judgment that several Sonos networked-speaker patents are invalid or not infringed.  Trial is set for May 2023.  The parties had a prior development agreement and in a recent discovery request, Google asked for a R.30(b)(6) corporate witness deposition regarding Sonos’ “understanding of the scope” of a prior agreement between the parties.  Sonos refused to provide the witness – arguing that the discovery request improperly sought Sonos legal theories (including contract interpretation) and trial strategy.  Google moved to compel discovery, but that request has been denied by Magistrate Judge Ryu.

Judge Ryu concluded that Sonos’ “understanding of” its contract implicated questions of law (since contract interpretation is a question of law rather than a question of fact).   Even though Google limited its request to discover “facts,”the request was also very much about Sonos’ interpretation of the contract.  The discovery request here seeking a party deponent is also different from an ordinary request for documents because a 30(b)(6) deposition allows 7 hours of questions that allows for more substantial development of legal theory as opposed to just sending over a set of responsive documents.  The court did not attempt to distinguish the deposition discovery here from interrogatories and requests for admission regarding legal contentions that are a regular practice in patent litigation.

In re PersonalWeb Techs., LLC Patent Litig., No. 18-md-02834-BLF, 2022 U.S. Dist. LEXIS 197706 (N.D. Cal. Oct. 31, 2022) [PersonalWebDiscoveryOrder]

Amazon won this litigation against PersonalWeb and also awarded more than $5 million in attorney fees to Amazon for 10,000 attorney hours.  Since 2021, Amazon has bene trying to get banking and investor records from PersonalWeb for enforcement purposes.

In this recent decision, Amazon is seeking discovery from PersonalWeb’s former attorneys, the Stubbs Alderton Law Firm. Of course, that information is likely privileged and/or work product. But, PersonalWeb apparently did not timely respond to the discovery requests directed to its counsel and so, according to Magistrate Judge Susan Van Keulen, has waived its privilege.

PersonalWeb’s failure respond to discovery directed to its counsel, followed by its failure to argue in the Joint Statement that it had not waived objections, cannot now save its privilege claims.

Id.