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)

Some Thoughts on 285 Post-Octane

Ethics

We all know, if we’re geeks, that in Octane the Supreme Court significantly relaxed the standards under which fees can be shifted in exceptional cases to the prevailing party.  Legally, as I pointed out months ago on this blog, that’s the right result.  We also know the Senate has dropped, for now, patent “reform” which would have included easier fee shifting, especially against “trolls.”

Is a relaxed standard under 285 enough?  (I don’t mean on everything on patent reform, just this narrower issue).  The main criticism I’ve heard relates to collectibility:  even if the defendant prevails, the award will be meaningless because the troll has no assets, particularly if it’s a shell LLC.  Fair enough.

But why doesn’t 285 allow the prevailing party to go after the patentee’s attorneys?  The statute only says who wins the fees, not who must pay them:  “The court in exceptional cases may award reasonable attorney fees to the prevailing party.”  Several points.

First, in my view, it often would not make any sense, or be equitable (a key concern underlying this statute), for the patentee to pay fees to the other side.  Suppose the patentee doesn’t know that its lawyers are making wild accusations of infringement: it’s been told the arguments are reasonable.  It may be unfair to penalize the client, under those circumstances, rather than the lawyer.

Further to that point, if the lawyers are at fault,  Rule 11 would generally prohibit awarding fees against the client.  When it’s a frivolous legal argument, the client can’t be punished.  That makes sense and doesn’t seem to lose any force in the context of interpreting 285.

So, under some circumstances the award almost has to be against the patentee’s lawyer or it would be unfair to the patentee.

Looking at this from the prevailing defendant’s side, if the patentee is asset-less, and particularly if it was made to be so by the lawyer to avoid being able to pay any fee award, it would obviously be inequitable to award a meaningless judgment to the defendant.  Joint and several liability may be proper, too.

So, in many circumstances, I can see strong arguments that the award ought to be made against the attorney, not the patentee, or at least against them jointly.

What I don’t know is whether that interpretation of 285 is foreclosed.  The plain text sure doesn’t do that…  Hmmm… maybe there’s my next law review article.  Note that what this means is that any time a patent owner loses the lawyer may need to carefully analyze whether he has a conflict of interest with his client — lawyer will want to shift blame to patentee, patentee will want to shift it to lawyer… oh, and vice versa!

DLA Piper Email Issue

Ethics

I was quoted (well, sort of roughly paraphrased) in an article about these nasty (vile?  juvenile?) emails privately sent from a DLA Piper partner to a client.  It was not-work related, but it has language that my 16 year old stepsons might use when their mom is not around… might…  The article is here (subscription required) or abovethelaw’s take is here (free).