Law Professors Opposed to Amendments to FRCP; Defense Counsel In Favor

Ethics

I need to digest this further, but I think I agree with the law profs.  Among the change are, as you know, to eliminate the use of the simple forms (including patent infringement), to eliminate the discretion of a judge to allow discovery into matters that are relevant to the subject matter, but not to a claim or defense (which has huge repercussions given the CAFC’s holding (wrong, imho) that FRCP 9(b) applies to inequitable conduct claims, narrow the scope of discovery generally and with respect to specific forms, and more.

The law profs’ letter is here.

I’ve not been heavily involved in discovery in a long time, but apart from ESI issues, troll issues, and a few odd things, haven’t heard a whole lot of carping…

Patents as Community Property?

Ethics

H and W are married. W invents something, and gets a patent.  They divorce.  W sues  accused infringer on the patent.  In response, accused infringer takes a license from H for a buck-fifty.  Result?

From what I’ve seen over the years, a patent practitioner would say, “the invention is entirely W’s.”  Also from what I’ve seen over the years, a divorce attorney in a community property state would say exactly the opposite. (Washington state has (or at least had) some even more interesting statutes about ownership of stuff developed by couples in business together.)

Y’all have fun with this draft article on an issue I should publish on but haven’t gotten around to that relates to competency in prosecution.  Somehow, someway, we all think W should own all of the invention, but I’m not sure a state court would say so….

Nice piece reminding us on privilege when ownership of entities changes.

Ethics

The article by folks at Burns & Levinson is here.  It’s short, and the key takeaway is:  “it behooves in-house counsel to let their business clients know that if they are considering relinquishing control of the company, they likely will lose the right to keep communications with in-house or outside counsel confidential unless they contract to retain that right in the transaction documents.”

OED’s jurisdictional reach: 1985 versus 2014

Ethics

Back in 1985, when the PTO was for the first time going to adopt ethics rules specific to prosecution, a lot of people wrote comments concerned that the PTO was going to try to regulate practice beyond that before the Office.  In response, the PTO did several things, all of which made it clear that it was not seeking to regulate practice not before the Office and to eliminate any doubt to the contrary.

First, it adopted 37 CFR 10.1.  In part, that provision states:  “This part governs solely the practice of patent, trademark, and other law before the Patent and Trademark Office.”

Second, in response to concerns that it was trying to regulate conduct not before the Office it said (several times, but here are two):

  • “The PTO’s intent to regulate only conduct related or relevant to practice before the PTO.”
  • “The preamble of § 10.1 indicates that Subpart 10 governs solely the practice of patent, trademark, and other law before the PTO.”

Third, in response to (many, many) comments saying “you should put ‘with respect to practice before the Office’ in specific rules,” that the PTO didn’t need to do so in light of its addition of 10.1.

So, it was clear that the PTO did not intend to regulate, and was not intending to regulate, conduct not before the Office.  The PTO made that abundantly clear (I could put up a string cite of similar quotes from the notice & comment to the 1985 rules’ adoption.)

In recent speeches by OED Director Covey, he took this position:  “Practitioners are subject to discipline for not complying with USPTO regulations, regardless of whether their conduct was related to practice before the Office.”  (Copies of these slides are here.)

I know that the OED has taken an extremely broad view of its jurisdiction. The slides themselves point to some cases. (Note:  I’m not talking about reciprocal discipline — e.g., Texas disbars me; the PTO can, too.  I’m talking about a practitioner who does something in federal court, say, and he gets sanctioned; the PTO can discipline that lawyer for that.  This has zero to do with reciprocal discipline and the protections afforded by states in disciplinary proceedings.)

Someone help me reconcile these two positions.  No statute changed between 1985 and 2014, so you don’t get an easy answer.

 

Legislation to curb abuse of post-grant proceedings?

Ethics

There’s an article here, and it refers to an article in the Columbia Science & Tech L.J., here, about perceived abuse.  The article cites to a survey it conducted that shows 25% of lawyers know of abuse.

The other side of the coin.

On a larger scale, it is quite odd to have the PTO saying, over and over again, that it got it wrong by issuing a patent.

Speaking in Arizona on February 6 on Ethics

Ethics

 

Intellectual Property Section CLE Program – Real Ethical Issues in Patent Prosecution and Litigation
SPEAKER: Professor David Hricik, Mercer University School of Law, Macon, GA This 2-hour seminar will focus on issues of interest to all in the patent field, including areas of particular interest to litigators and prosecutors. – This seminar is taking place live in Phoenix – You can attend the live seminar in Phoenix, the group viewing of the live webcast in Tucson, or register for the webcast and view the seminar whereever you have an internet connection.
12:00 p.m. to 2:00 p.m.
Location:  Snell & Wilmer LLP, Phoenix and Tucson, Snell & Wilmer LLP, One Arizona Center, 400 East Van Buren St., Suite 1900, Phoenix and Snell & Wilmer LLP, One South Church Ave., Suite 1500, Tucson
Contact:   Betty Flores or Wendell Chin – 602.340.7307 or 520.623.9944

OED Director’s recent comments on customer number practice

Ethics,

I was speaking last month at the PTO, and the OED director gave a talk on several issues that surprised me. I’ll be posting about them in the coming days.

One was the suggestion that customer number practice can result in greater instances of inequitable conduct.  Although he mentioned imputation, I don’t think that’s what he meant:  if three lawyers are on a customer number, then each might be deemed, for that reason alone, to be substantively involved in prosecution and, so, their knowledge would “count.”  So, even though only one lawyer is actually doing any work on the file, if another lawyer on the customer number “withheld” information, that could be an omission.

I don’t know how you can possibly get, absent unusual facts, intent to deceive by the lawyer who didn’t know his information mattered, but I also think it elevates form over substance to say that everyone listed on the same CN is involved.

But, he suggested that firms rethink the structure of their customer number practice….

Medtronic: Much ado about nothing in light of Frolow and “Marking Admission”

Ethics,

Here’s my Monday morning rant… Unless you’ve been under a rock (or yoga mat — see below), you know that the Supreme Court held that in a dec action for non-infringement by a licensee, the patentee still bears the burden of proof. You may not have noticed a case a while back called Frolow v. Wilson Sporting Goods, from the Federal Circuit, and available here and summarized previously by Dennis on the main page here.  Boiled down, under quite divided and unclear rationales, a divided three-judge panel held that marking by a licensee, or paying a royalty on products, is “circumstantial evidence” of infringement.  In the particular case, as to some rackets, although the licensee had marked them, there was no evidence they actually met every limitation of any asserted claim. Nonetheless, the court held there was some evidence of infringement — marking and royalties — and so a question for the jury.  It viewed marking as an admission, just as if a corporate representative admitted infringement in deposition… Ignoring the fact that, imho, that’s quite wrong analytically and as a practical matter (long story, but licensing and royalties don’t generally work like the court thinks they do, or at least not in my experience), a licensee who sues for non-infringement of a product that it has either (a) marked or (b) paid a royalty on will have to try the case, even though the patentee has the burden of proof, and even if the licensee shows that those products do not literally come within any claim. Odd.  Also odd is, although it said it was not adopting marking estoppel, in practical effect, it did…

Quinn Firm Sanctioned, but not Samsung, for Disclosure of Apple Licensing Info

Ethics

Earlier I wrote about Judge Grewal’s order concerning the disclosure of an unredacted expert report in the Apple v. Samsung suit.  Yesterday, the judge held that Quinn should reimburse Apple for its expenses, and imposed some other remedies, but largely declined the sanctions sought by Apple.  The order is here.

In my own view, the remedies might be right if all that had happened was a mistake, but, and as the judge wrote, what happened here was a mistake followed by what, in his view, was a failure to correct it.

 

A trap for the unwary: Indemnity obligations may create privity for purposes of IPR

Ethics

There’s a great post by Oblon here discussing Atlanta Gas Light Company v. Bennett Regulator Guards Inc., (IPR2013-00453, Paper 31, January 22, 2014).  The PTAB did not hold that privity existed solely because of an indemnity obligation (and didn’t need to under the particular facts), but (a) it recognized that “in privity” must mean more than “real party in interest,” and (b) at least implies that an indemnity obligation might fit within the scope.

Philadelphia Ethics Opinion on Departed Partner’s Email

Ethics

I’ve advised a lot of lawyers over the years who are pondering leaving one firm for another, or for a solo career.  There are a lot of “do’s and don’ts” that are pretty common, and a nice summary, under Illinois law, is here.

Philadelphia’s bar association recently addressed whether the firm from which a lawyer had left could, or must, monitor the departed lawyer’s email or, instead, had to set it up so that emails automatically bounced.   Opinion 2013-4 (Sept. 2013) is here.  Boiled down, it says that the firm has to monitor but also has to watch out for email that it needs to forward to the lawyer, or otherwise take action on.

Yoga Patent & Patent Quality

Ethics

If you've been living under a rock, you've missed the discussion of this patent,  Claiming priority way back to… 2010… it claims a way of recording yoga classes set up so you can see the instructor and the participants.  I am not making that up.  From the file history, it seems the point of novelty is the height of the camera.

Seriously?

Scalia scolds newbie advocate….

Ethics

Okay, so it's not really ethics, but it's interesting.  The story is here but basically Scalia interrupted an apparently obviously nervous advocate who was reading from his notes, which made him stop until another Justice said "it's all right," and then everything went great.  Folks are fighting over whether Scalia was decent, or not.

I've watched a few oral arguments there and everyone seemed nervous. Understandably!

Patent Troll to FTC: We complied with Rule 11, and so we’re suing you.

Ethics

Dennis has something on the main page, but this complaint by MPHJ Technologies v. FTC presents an interesting issue — if the holder of a presumptively valid patent enforces it, and (allegedly) complies with Rule 11 before doing so, can it violate any federal law?  

Obviously the facts matter a lot, but if, as is alleged, they did all they reasonably could before sending infringement letters and their conclusion of infringement wasn't in bad faith, sanctions or liability would be in appropriate.  The new edition of my book on ethical issues in patent litigation (which should be in print soon!) has chapters on both Rule 11 pre-suit investigations of infringement (and invalidity), as well as the protections afforded by the Constitution to sending C&D letters and the like.  This complaint alleges, to me, facts that cannot be the basis of liability by the patentee.

But stay tuned…

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?