FAA Preempts Challenges to Unethical Arbitration Clauses

This is a non-precedential Third Circuit decision, Smith v. Lindemann (3rd Cir. No. 16-3357 (Sept. 21, 2017), and it’s dicta, but it is worth noting because I have blogged about arbitration and awards that violate public policy, as set forth in lawyer ethical rules, before.

In this case, the client sought an order from the district court that her legal malpractice claim was not subject to arbitration because New Jersey prohibited agreements requiring arbitration of malpractice claims and, even if it were sometimes permitted, the client had to give informed consent.

The court quickly rejected the first argument because there was no case law that supported it.  But then in dicta, the court stated that even if state law did prohibit agreements requiring arbitration of malpractice claims, or even if the clause did not meet the requirements of applicable ethical rules, that law and those rules were preempted by the FAA.

In pertinent part, the court stated:

The Supreme Court has held that the FAA requires courts to put arbitration agreements “on equal footing with all other contracts” and that they may not interpret state law differently in the context of arbitration. See DIRECTV, Inc. v. Imburgia, 136 S. Ct. 463, 470 (2015) (quoting Buckeye Check Cashing, Inc. v. Cardegna, 546 U.S. 440, 443 (2006)). So, to the extent Smith seeks a more searching review of the advice attorneys provide new clients when an agreement to arbitrate is at issue, her argument is foreclosed by the FAA. See id. We need not decide that question, however, because she fails to explain why a written or oral warning that explicitly uses the word “malpractice” is necessary as a matter of New Jersey law.

The case raises some serious federalism issues, and probably actually is inconsistent with the Supreme Court’s holdings, which permit challenges to arbitration clauses based upon statutes and, in some circuits, other public policies.  Given the limited review of arbitral awards, and — at least in this panel’s view — the limited ability of courts to rely upon ethical rules to refuse motions to compel arbitration, clients should be careful about agreeing to arbitration awards and lawyers should probably consider beefing up disclosures about them.

Apple: Patent Owner’s Former CEO’s Ex Parte Letters to PTAB & Commerce Secretary Ross are Sanctionable

Apple has filed a motion with the PTAB, here, asserting that letters from the former CEO of a patent owner to an original panel, a substitute panel, and Commerce Secretary Wilbur Ross constituted improper ex parte communications that warrant reversing the PTAB’s findings in favor of the patentee and, instead, either entering judgment in Apple’s favor or at least granting a new trial.

Boiled down, Apple argues that after the decision to institute was granted, the former CEO (and still “advisor” to the patentee) sent letters to the panel that had granted institution, and those letters were not made of record.  That panel was replaced, without explanation to Apple (or anyone from what I can tell), and a substitute panel then took over the matter.

The former CEO then sent more letters — to both the PTAB chief judge and to the substitute panel which, again, were not made of record. (It’s not clear to me that Apple or the patentee knew of the letters at this time.). Other letters to the chief judge, the substitute panel, and even the Secretary of Commerce followed and the letters were not made of record and Apple was not notified (and, again, neither was the patentee, from what I can tell).

Then on September 18, the patentee posted the letters — calling them “independent” — on its web page. Then there were more letters.

The substitute panel in late November in its final written decision and found Apple had not established the claims were unpatentable.

A month later, Apple filed this motion, stating the facts and asserting that its due process rights had been violated, and more.  Interestingly, Apple relies among other things, on the APA, arguing “the ex parte communications violate the APA, which prohibits an ‘interested person outside the agency’ from making, or knowingly causing to be made, an ex parte communication relevant to the merits of the proceeding with a member of the adjudicatory body.” (citing 5 U.S.C. § 557(d)(1)(A)).

Apple’s motion makes a few inferential leaps that, I think, undermine its credibility. For example, Apple spins the fact that the CEO said he had talked to the patentee’s lawyers into an assertion that the patentee’s lawyers knew of and helped the CEO write the letters — violating the cardinal rule that if you’re going to accuse someone of an ethical violation, don’t stretch.  (It may be the lawyers did assist: my point is, that’s not what the letters say.)

Apple also admitted that it had known that, in May, that the former CEO had sent a copy of one of his letters to the court handling the pending litigation involving the patent, because the clerk of that district court had entered the letter on the docket.  But, oddly, Apple said it had done nothing because it did not know the letter would influence the PTAB (again, inferring that the letter did influence the PTAB).  Further, apparently Apple knew of (what it now says is) an improper ex parte contact but did nothing — even though after it learned of that letter the panel was changed — and it only did something after it lost the IPR.

It will be interesting to learn why the PTAB judges did not inform everyone of the letters (assuming they even received them, and that disclosure did not occur), but it looks like Apple knew in May of (what it now says is) a clear ethics violation, but did nothing, and at least as of September, the patentee knew of (what are allegedly) the improper ex parte communications, and did nothing.

So, let’s see how this gets sorted out.

Claims that Defendant Infringed Patent Issued Years after Suit Filed Found Subject To Claim Preclusion

Normally, claim preclusion only bars later assertion of a claim only if (a) the plaintiff could have brought that claim when it filed an earlier suit and (b) the later-asserted claim is the “same” as a claim in the first case (courts take different approaches to how closely related the later claim must be to the first, but the federal rule is to look at whether the later-asserted claim arises out of the same operative facts as the earlier claim).  So, normally, if a patent issues to the plaintiff after the first suit is filed, claim preclusion wouldn’t apply because of the first step:  you can’t sue for infringement until the patent issues (with the narrow exception of seeking “provisional damages” for infringement under Section 154).

But, in a recent case, a district court held that the plaintiff had a “duty to seek to amend” its complaint to add a later-issued patent, and to the extent the defendant can show that its infringement arose out of the same set of facts as the earlier case, claim preclusion will (and does) apply. The case, XY, LLC v. Trans Ova Genetics, LC (D. Colo. 2018), is here.  One of the two patents issued after the complaint had been filed, and a second actually issued after judgment in the first case had been entered!  (The district court also took what may prove to be a very unworkable approach to determining the second step.)

So, be careful out there: this creates a real mess because now you’re going to have to assert every possible patent for infringement, and if a new one issues, you better move to amend and hope the judge grants the motion, or doesn’t, because then you’ll be starting all over again with discovery, claim differentiation issues, and so on…  If you’re a defendant, maybe you should consider seeking a declaration as to patents the plaintiff owns, but hasn’t asserted, and just make a mess that way.

Federal Circuit Reminds Us: “Will Assign” isn’t an Assignment

I love this case because it has lessons for ethics, drafting, and civil procedure.

The holding is pretty simple:  an inventor who signs an employment agreement that provides (a) she “will assign” rights to inventions doesn’t then assign them; (b) that she “holds in trust” those rights doesn’t mean she assigns them; and (c) that she “quit claims” those rights doesn’t mean she assigns them.  Two judges so held (O’Malley and Reyna), and Judge Newman dissented relying on the “intent” of the contract.  The case is Advanced Video Tech. LLC v. HTC Corp. (Fed. Cir. Jan. 11, 2018), here.

So, lesson for ethics and drafting:  verbs matter and due diligence matters! (Related note: watch out for spouses of inventors — there’s an argument in community property states that spouses own inventions that I’ve blogged about somewhere and which almost worked in one CAFC case, where the accused infringer was able to get a license from an ex-spouse!)

The civil procedure issue concerns Judge O’Malley’s concurring opinion. She argues that a co-owner who refuses to join is an indispensable party under Rule 19, and that a prior panel decision holding otherwise was wrongly decided, but binding.  I very much enjoyed working with Judge O’Malley (I clerked for then-CJ Rader a couple years ago), and she’s a civ pro wiz, but I have some doubts on that interpretation of Rule 19.  The examples of when someone is an indispensable party are few, and forcing someone to be a plaintiff in a patent suit when they don’t want to be subjects them to all sorts of potential liability (285, for example) that they may not want to incur.

Moreover, even if an en banc court agrees with her, I’m not sure it will eliminate every problem of the recalcitrant co-owner. For example, in this case, suppose the court en banc decides Judge O’Malley is right and Rule 19 requires joinder, and that the co-owner can be joined (i.e., there is personal jurisdiction over her and, arguably, venue is proper (Rule 19 is very weird)). As a result, the co-owner is joined involuntarily but then pleads:  “the defendant doesn’t infringe.”  Now there is no case or controversy between that co-owner and the defendant, and so no subject matter jurisdiction.  “Claim” dismissed?

I wonder if there’s a Rule 14 way to bring in a co-owner if there is a counterclaim for, say, inequitable conduct by that co-owner/inventor?  I teach and have written a book on civil procedure and that might work, but I’m not sure Rule 19 will.  I bet we will see an effort to use it.

My Recent Article on the Need for Speed in Patenting

I don’t like writing long law review articles any more, but I was persuaded to by the kids at Vanderbilt, and then they made me make it even longer by forcing me to explain things that we all know: patents ain’t what they used to be.

And, in doing it, I learned a lot.  The article — here — with the brilliant title of Will Patenting Make As Much Sense in the New Regime of Weakened Patent Rights and Shorter Product Life Cycles, and featuring some 294 footnotes — describes those changes (by the Supreme Court, Congress, and even the states), the changes in technological speed (and 3D printing) and what that means for the utility of getting a patent, and then talks about ways to speed prosecution and/or obtain damages before issuance. The abstract eloquently states:

After its founding in 1982, the US Court of Appeals for the Federal Circuit strengthened patent protection. During that time, businesses—which acquire 90 percent of all patents—increasingly applied for and enforced patents. Clearly, the benefit of having a patent outweighed the cost of doing so.

This Article shows that a central benefit of applying for a patent is that it permits its owner to exclude others from making the patented invention. A patent owner can use the coercive power of a patent to exclude others from making the invention, or to permit others to make the patented invention, but only if they pay money to do so. Two forces have reduced the power of that benefit.

First, patent rights have been weakened through changes in the law. The US Supreme Court has, almost without exception, reversed decisions of the Federal Circuit and adopted an approach that is less favorable to patent owners. Compared to today, in the year 2000, more inventions were eligible for patenting, more inventions were not obvious, more claims were definite, “equivalents” more likely infringed, infringement included more overseas conduct, patent rights were less easily exhausted, patentees could subject defendants to suits in districts more favorable to them, a losing patentee would almost never pay attorneys’ fees, and an injunction was the general rule that benefited a successful patent infringement plaintiff. More recently, Congress created administrative proceedings in the US Patent and Trademark Office that made it easier to challenge existing patents. In litigation, because of the statutory presumption of validity, patent claims are construed narrowly and, when possible, to avoid invalidity, and invalidity must be shown by clear and convincing evidence. In these new proceedings, the presumption does not apply, patent claims are construed more broadly, and only preponderant evidence is required to challenge a claim. Further, if a patent owner sues in court, courts will often stay the litigation in favor of allowing the Patent Office proceeding to finish. This effectively eliminates the presumption of validity. Other changes including heightened pleading requirements and state statutes also reduce the coercive benefit that patents confer.

After examining the available data as to whether these legal changes have already significantly altered the incentive to patent, the Article turns to the second force that reduces the benefit of the coercive power of patents: the fact that a greater number of products have shorter life cycles. Because patents take twenty-four months to issue, and the coercive power of a patent can only be utilized once it issues, the pace of change means that fewer patents will exist in time for their coercive power to be meaningfully applied. Further, that rapid pace of innovation has already created 3D printing, a technology that permits rapid and dispersed copying of new products, which further reduces the coercive benefit of patent rights.

This Article concludes by providing practical advice to patent practitioners as to how to manage the impact of these two forces. These include using established procedures to speed up prosecution, using claim drafting techniques that may help address 3D printing, and considering alternatives such as trade secret protection in lieu of patenting.


Thinking Ahead: Join Owners of Patent Owner for 285 Liability?

You get sued and you’re thinking you’ll ultimately win big.  Exceptional case.  Fees shifted.  And you do, and you get an award of $3 million in your favor.  But, the patentee is basically a shell and so after a year of trying, you decide to go after its owners, allegedly its alter ego.

Federal courts have power to assist in executing judgments, but state law must authorize the procedures used, and not all states allow for joinder of non-parties after final judgment.  In Vehicle Interface Tech., LLC v. Jaguar Land Rover North Am., LLC (D. Del. Dec. 14, 2017), the court held that the defendant failed to show that Delaware law permitted joinder under those circumstances, and so the $3 million judgment seems, it seems, worthless.  The case is here.

So, although it seems weird, perhaps you need to join owners of patent owners….

New ABA Opinion of Particular Interest

A lawyer may be adverse to a former client, but not in the same matter in which she represented the client, or in one which is “substantially related” to the representation of the former client.  Generally, this requires determining whether it is reasonably likely that in the representation, the lawyer likely learned confidential information that likely can be used against the former client now.

One part of that analysis can require determining what information “counts.”  This varies by jurisdiction: some, for example, do not include information known to the new client, or “playbook” information (e.g., how a client approaches IPRs), and so on.  And, some do not count information if it has become “generally known.”

In the context of prosecution, for example, does the fact that an application has published mean it is “generally known” and so no longer counts?

The ABA just released an opinion on this point, ABA Formal Eth. Op. 479 (Dec. 15, 2017), here.   The abstract explains:

The “generally known” exception to the duty of former – client confidentiality is limited. It applies (1) only to the use, and not the disclosure or revelation, of former – client information; and (2) only if the information has become (a) widely recognized by members of the public in the relevant geographic area; or (b) widely recognized in the former client’s industry, profession, or trade. Information is not “generally known” simply because it has been discussed in open court, or is available in court records, in libraries, or in other public repositories of information.


Need 3 hours of Ethics CLE? (Self-promotion warning).

I do a lot of speaking on ethics, mostly on ethical issues in patent prosecution and litigation.  I’ve worked with cleonline.com for decades now (they were I think the first on-line provider), and I put together what I think is a cool presentation on the impact of technology on practice.  You can take it here.  (California, Texas, and perhaps other states are pre-aproved but read the fine print.)

Their ad is below…  (My article about how innovation affects patenting is coming out soon, they say, all 294 footnotes of it.)

** available on demand any time of day and in time increments convenient to you **

CLEonline.com is pleased to present a special online legal ethics program in which Professor David Hricikaddresses the myriad of practical ways that technology creates ethical issues for practicing lawyers. Professor Hricik discusses both the potential major trends — artificial intelligence changing daily legal practice, and technological developments like driverless cars potentially reducing car accidents which could affect entire practice areas — as well as the more immediate concerns. The latter includes the risks of communicating with clients while they are at work, inadvertent transmission of email, metadata (“hidden” confidential information in things like Word documents), cloud storage, and dealing with negative on-line reviews. This presentation mixes humor, fear, and practical tips to give 3 solid hours of Legal Ethics that matter and are immediately relevant to your law practice. The course features streaming video and audio (as well as downloadable MP3 audio) presentations.

Some of the subjects for this course include:

  • Exponential Change and Impact
  • A Future Full of Legal Disruption?
  • What Will Ethically, Successful Lawyering Require?
  • Hackers, Passwords, and Lawful v. Unlawful Interception
  • Invisible Confidential Information: “Metadata” and Related Issues
  • Confidentiality: How Many Vulnerabilities?
  • Due Diligence and Cloud Storage
  • Responding to Unhappy Clients
  • Litigation-Specific Technology Ethics
  • Evidence Everywhere … Wearable Devices
  • Social Media: Practical Tips and Pitfalls
  • The Law You Really Must be Prepared for Will Happen Before It’s Written About

*** CLEonline.com Course Link ***

The speaker for this course is Professor David Hricik, of Mercer University School of Law in Macon, Georgia. Professor Hricik was elected to the American Law Institute in 2016. He has authored the only treatise on ethical issues in patent litigation, and co-authored the only treatise on ethical issues in patent prosecution. In addition to serving leadership positions on ethics committees with the AIPLA and ABA and serving as an expert witness, he has written dozens of articles and given well over 100 presentations on issues at the intersection of ethics and patents. His articles and testimony have been adopted by both state and federal courts.
This course is approved for credit by the MCLE Committees of the STATE BAR OF TEXAS and the STATE BAR OF CALIFORNIA (MCLE Provider #8648). These are not self-study credits, but rather ‘participatory’ credits as you would receive for attending a traditional, live CLE seminar.

In addition, regular CLE credits for this seminar may also be available in a number of other states through CLE Reciprocity, such as FLORIDA, or as an “Approved Jurisdiction”, such as TENNESSEE.  Please check with the Tennessee State Bar for accreditation information.

Technology and Ethics: Lex Machina

So, I signed up for training on Lex Machina for its public interest use. I was thrilled  They set up a conference call to train me and a bunch of other people. Free access for research purposes, but you have to go through the training (it looked pretty simple).

Someone signed on, but is (literally now) having a call with, I think a client, broadcasting this conversation on the training session.  Not only that, they had the training call muted, so this person couldn’t hear the poor trainer trying to get his attention to stop broadcasting confidential information.  She cancelled the call as a result, perhaps saving this fool from a disciplinary violation.

Just thought I’d share a reminder that we all should recall from Donald Trump and open mics.


Interesting Legal Malpractice Claim Based on Failure to Assert Exceptional Case

The facts of the case are sparsely set out in the appellate court decision in Smith, Gambrell & Russell, LLP v. Telecomm. Sys., Inc., 63 N.Y.S.2d 384 (N.Y. Sup. Ct. App. Div. Nov. 14, 2017), but are set out in more detail in the trial court’s decision, here.

Apparently, the firm represented the patentee, and won at trial.  It did not argue fees should be shifted under 285 (after Octane), but instead filed a motion for sanctions arguing inherent power. (That, of course, is a much more difficult hurdle than 285.)

The firm sued for fees owed, and the patentee counterclaimed, asserting the firm had missed the deadline for filing the motion, which is the later of 14 days after judgment is entered or post-judgment motions are resolved.  The evidence showed, however, that the motion had been filed within the latter time limit, but it was never ruled on (the underlying patent case settled).  Accordingly, the counterclaim for malpractice was dismissed.

The appellate court affirmed but also addressed an alternative argument made for the first time on appeal, which was that instead of filing for sanctions, the lawyers should have relied on 285 and Octane.  The appellate court stated that choosing inherent power over 285 was a judgment call, and so was not actionable, and also stated that the complaint failed to allege facts that showed the case was exceptional. (You would think those would be in the motion for sanctions that was filed.)

Interesting case for a couple of reasons: (1) if you sue for fees you likely will face a counterclaim for malpractice (it’s not always but it is often); and (2) remember that because of Gunn v. Minton, malpractice cases based upon mishandled patent litigation or prosecution will be decided by state courts. I’ve testified in state courts on patent matters and it is a different world out there.

USPTO Adopts Rule Adopting Patent Agent-Client Privilege

The adoption of the final rule, which relates to admissibility in post-grant proceedings, is here, and the substance is:

§ 42.57 Privilege for patent practitioners.

(a) Privileged communications. A communication between a client and a USPTO patent practitioner or a foreign jurisdiction patent practitioner that is reasonably necessary and incident to the scope of the practitioner’s authority shall receive the same protections of privilege under Federal law as if that communication were between a client and an attorney authorized to practice in the United States, including all limitations and exceptions.

(b) Definitions. The term ‘‘USPTO patent practitioner’’ means a person who has fulfilled the requirements to practice patent matters before the United States Patent and Trademark Office under § 11.7 of this chapter. ‘‘Foreign jurisdiction patent practitioner’’ means a person who is authorized to provide legal advice on patent matters in a foreign jurisdiction, provided that the jurisdiction establishes professional qualifications and the practitioner satisfies them. For foreign jurisdiction practitioners, this rule applies regardless of whether that jurisdiction provides privilege or an equivalent under its laws.

(c) Scope of coverage. USPTO patent practitioners and foreign jurisdiction patent practitioners shall receive the same treatment as attorneys on all issues affecting privilege or waiver, such as communications with employees or assistants of the practitioner and communications between multiple practitioners.

In-House Lawyer Fired for Complaining that Application Filing Quota Caused Ethics Violation Able to Sue

The Third Circuit reversed the grant of the dismissal of a lawsuit by in-house counsel who sued because, he alleged, he was forced to choose between complying with an application filing quota or complying with his ethical obligations to the USPTO.  The case, Trzaska v. L’Oreal USA, INc., (3rd Cir. July 25, 2017), is here.

The claim was based upon New Jersey’s whistle blower statute, the New Jersey Conscientious Employee Protection Act (“CEPA”), N.J. Stat. Ann. § 34:19-1 et seq.  The complaint alleged that complying with the quota meant filing “frivolous” patent applications.  In a two-one panel decision, the Third Circuit held the complaint stated a claim.

Judge Finds McKool Smith Violated Prosecution Bar

This one is fun for me, since I teach civil procedure, patents, and ethics, and have written about prosecution bars way too much.

Prosecution bars are used when a court concludes that, although the usual rule is that lawyers will abide by provisions in a protective order that say “don’t use information disclosed in this suit for any other purpose,” there’s a risk that a lawyer will, perhaps even inadvertently, misuse the opposing party’s information disclosed in discovery because of work the lawyer does for his client.  Here, in a case Eolas (represented by McKool) filed for its client against Amazon (and others), it seems that as part of the protective order, McKool agreed that its lawyers were in such a position — they were prosecuting patents for Eolas in similar technologies, presumably, to what was involved in the suit — and so the protective order provided that no McKool lawyer who received certain categories of confidential information from Amazon would prosecute patents for Eolas in those fields, for a time.

And there is the issue: how long? The protective order stated (in part — I’d want to see the entire thing to really understand this), that the bar expired “one (1) year following the entry of a final non-appealable judgment…”

Eolas lost at trial, and the Federal Circuit affirmed and entered judgment on July 22, 2013.

If the one year date runs from there — which I so far think it does — then it expired on July 22, 2014.  And it was only after that date that McKool lawyers allegedly violated the prosecution bar.

However, Eolas could have petitioned for cert for the 90 days after July 22, 2013. If you use the expiration of those 90 days as the date for “entry” of the final judgment, then the “entry of a final non-appellable final judgment” occurred in October, and one -year later puts you in October, 2014.  Eolas didn’t seek cert, however. (I don’t think that matters, but I’ll come back to that.)

And of course, it was after July and before October 2014 that McKool allegedly started the work that violated the protective order. When Amazon saw a patent issue which, it seems, resulted from McKools’ pre-October 2014 work, Amazon moved for sanctions, asserting (among other things) that the patent should be unenforceable.

The judge ruled that entry of final judgment occurred in October 2013 and so there was a violation.  McKool has filed a motion to reconsider.

I honestly don’t think this is a close case: the judge got it wrong.  First, it says “entry.” That occurred in July.  It says “non-appealable”  A judgment from a circuit court, including the CAFC, isn’t appealable to any court: you can file a petition for cert, but that’s not an appeal. Finally, it could have said (and some protective orders do) “until everything at the Supreme Court is over and done,” but it seemingly didn’t do that.  I also have grave doubts that under Aptix and other cases from the Federal Circuit that Amazon’s request that the patent be held unenforceable as a result of litigation misconduct will fail, but, again, I think we never get there.

So, what’s this mean for your practice?

First off, suppose there isn’t an appeal in a district court case.  You go to trial, you get judgment on July 22, 2013, and nothing happens.  On July 22, 2014, can you start work?  Well, there’s 30 days after entry of final judgment that the other side could appeal, so don’t you have to wait until August 22, 2014 (or 21, whichever)?

If there is an appeal to the CAFC, do you need to add 90 days to the date of entry of judgment even though they don’t apply for cert, and even if it doesn’t say “and we’re done at the supreme court?”

I think this one is clear.  Do you?

Another Client Loses Privilege Because Employer Policies Allowed Monitoring

I’ve written about this a few times but, sadly, no one listens to me!

Here’s the fact pattern:  your client is emailing you from their work email account, or your client is using a computer that its employer owns.  (Your client is not the employer, but an individual.)  Whether your client is in litigation with its employer — or someone else! — if the employer has policies in place and in use that allow it to monitor employee email or the computer itself, there likely is no reasonable expectation of privacy in those emails or in the files on the computer and, if so, no privilege.

Another case, this one from New York and involving an employer’s laptop and a suit with the company, applied the leading test to determine whether the employee knew that monitoring was allowed, and in fact occurred, and found the employee– former general counsel —  could not withhold more than 106 files that he had created after he had been fired by the company on its laptop.  Miller v. Zara USA, Inc., (N.Y. App. Div. June 6, 2017).  The appellate court remanded the case to the trial court to determine if any of the documents were, although not privileged, nonetheless protected by work product.

Realize this: even if the dispute is between your client and some third party, that third party can also rely on the lack of a reasonable expectation of confidentiality and show there is no privilege.  And, finally, if you draft these policies, your client’s employees may not realize that this isn’t just “gee my employer can review my emails if I get in a fight with it,” it’s “if you get in a fight with anyone, you’re not going to have privilege.”  I bet your clients would like it if you made that really clear, since that’s not intuitive.

New York City Bar Cautions Lawyers to Use Care if U.S. Customs Asks to Review Electronically-Stored Information

New York City Bar Opinion 2017-5 (July 2017), here, provides some interesting information about the care lawyers must take before allowing a lawful search of an attorneys’ smartphone, laptop, or the like.  The opinion is obviously important given the international nature of intellectual property practice and the growing frequency (still small, though) with which Customs officials ask for passwords that could reveal client confidences.

The opinion states in part that lawyers should consider whether they should not carry electronic devices that could permit disclosure to sensitive client information when traveling abroad, and, if asked upon return to provide access to the device, the opinion states:

At the border, if government agents seek to search the attorney’s electronic device pursuant to a claim of lawful authority, and the device contains clients’ confidential information, the attorney may not comply unless “reasonably necessary” under Rule 1.6(b)(6), which permits disclosure of clients’ confidential information to comply with “law or court order.”  Under the Rule, the attorney first must take reasonable measures to prevent disclosure of confidential information, which would include informing the border agent that the device or files in question contain privileged or confidential materials, requesting that such materials not be searched or copied, asking to speak to a superior officer and making any other lawful requests to protect the confidential information from disclosure. To demonstrate that the device contains attorney-client materials, the attorney should carry proof of bar membership, such as an attorney ID card, when crossing a U.S. border.

Finally, if the attorney discloses clients’ confidential information to a third party during a border search, the attorney must inform affected clients about such disclosures pursuant to Rule 1.4.

I’ve never been asked to provide a password, or to handover an electronic device, but the opinion provides some useful reminders of precautions that may be necessary in today’s world.

Machine Aided Patent Drafting: A Second Look

Back in June, I wrote about a service that augments patent drafting by allowing a practitioner to submit claims, and receive back the rest of a draft specification.  That post is here.  I pointed out then that the terms of service revealed that the business, Specifio, had seemingly thought through a lot of the ethical issues that I could see.

A month later, I posted here about how faster speed-to-market, and shorter product life cycles, mean that for a greater number of products, patents make less sense: having a right to exclude spring into existence after the product has come and gone isn’t very valuable.  Of course, there are other reasons to have patents, and a patent may still be useful even if technology has marched on, to prevent others from following that lead.  But, using Track 1 and other means to speed up issuance may be needed more often. (I have an article coming out soon with a billion footnotes, and I’ll let you know about it.)

Since then, I’ve been researching the ethical issues arising from artificial intelligence, machine learning, and related developments.  These things are here, now.  Early adopters obviously have to be careful, but late adopters may be left in the dust.

In light of all of the above, if you take into account the increasing need for speedier issuance (and the need to file first under the AIA), the need for speedier drafting is obvious.  The capacity of AI to satisfy that need is here, and its role will increase. (I’ve read about memo drafting services that area already in operation, for example. That’s coming on fast, too.)

In light of all of this, I had a conversation with one of Specifio’s founders and was given the opportunity to see how it worked. (They offer a free trial, too.)  So, I took a claim from a published application and submitted it by email to their system. The actual patent application is here, and the first draft back from Specifio is here.

Take a look.  And I missed the fact that the draft spec did include drawings, here.

As for me, I was surprised and impressed.  Now remember, the draft spec was drafted by automation entirely off of the single claim I submitted — nothing else — and that process took about 5 minutes of my time (less if I had formatted the claim the way it told me to.)

5 minutes of lawyer time for a first draft.

Second, obviously the specs are different.  One key reason is that I only submitted Claim 1, so there’s obviously more in the actual spec than the one from Specifio.    I would hope that the initial draft of the actual patent was also significantly different from what you see in the filed version. I also know that no one would take a draft spec from a young lawyer and file it.  But take a look.  (The fact that a computer would draft differently is an interesting thing, and I’ll return to that below.)

Second, on top of the speed discussed above, automation like this has the potential to free practitioners from the time of preparing at least the initial draft of the spec.  (The boring part.)  This has obvious benefits to lawyers and clients: fees can be reduced, time can be better leveraged, and lawyers can do more interesting work.  In that regard, Specifio’s lawyers use the system to draft its own specs.  They report that rather than taking 15 to 20 hours to write a case, so two full days of attorney time, a lawyer can draft five cases in a day.

Think about that for a minute.

There are some other things.  The system will obviously write specs the way it “likes” to.  It will have its own approach.  That is good, and bad. Things will need to be “fixed,” no doubt.  Substantive errors will need to be spotted.  And, idiosyncratic things — suppose you don’t like “wherein” but like “in which” — will need to be changed, too.  But the consistency will allow lawyers to create macros to quickly deal with such things.

I’m curious what you all think.

Inequitable Conduct and Regeneron Pharmaceuticals, Inc. v. Merus N.V.: Trouble Waiting to Happen

Dennis wrote up the facts of this case on the main page, here.  Boiled down, a district court held a bench trial and held that people substantively involved in prosecution of the ‘018 Patent knew of but-for material references, which were not disclosed.  Although the district court had intended to hold a separate trial on intent to deceive, instead it held that the patentee’s discovery abuses (and other apparent misconduct) warranted an adverse inference of intent to deceive.  The discovery abuses were related to the inequitable conduct issue.  Accordingly, it held the patent unenforceable for inequitable conduct.

The panel split (Judge Newman dissenting), but affirmed 2-1, holding that the withheld art was in fact but-for material and that the district court had not abused its discretion by, under regional circuit law, imposing an adverse inference (more on that, the key and troublesome issue, below).

Before getting into the repercussions too much, one thing jumped out at me:  a few days before receiving a notice of allowance for the ‘018 Patent, a third-party submitted the later-withheld references in the parent application of the ‘018 Patent.  Rather than submit those references to the examiner (either by way of an RCE or otherwise), the patentee let the ‘018 Patent go to allowance, but then submitted those references in related applications that remained pending.  That fact jumped out at me because this is a recurring problem — learning of art at the last minute. I know there are ways to at least submit the art, but it won’t be considered (not sure if that procedure was available when the ‘018 was prosecuted).  Anyhow, the fact that the art was later disclosed in related cases obviously makes it harder to argue it was cumulative of art in the ‘018 prosecution, but also obviously, not disclosing the art later, in the other cases, would have created its own difficulties.

Let’s be clear what was decided:  the panel majority held that the district court had not abused its discretion under regional circuit law by imposing an adverse inference of specific intent to deceive because of litigation misconduct during efforts to enforce the ‘018 patent.  That inference is what allowed the district court to hold the ‘018 Patent unenforceable.

This case creates some complexities and lessons for trial counsel.

First off, according to the panel-majority, mere negligence by litigation counsel is enough to justify an adverse inference under the law of this regional circuit.  Here, much of the discovery fight seems to have been over the scope of what is the “same subject” when privilege has been waived by disclosure of some documents on a subject.  Determining the breadth of waiver — what is the “same subject — is not always a simple issue, and reasonable people can disagree about scope of waiver. From the panel-majority’s opinion, the patentee’s positions did not seem tenable, but the lesson for trial counsel is to be very careful because aggressively arguing for narrow scope can be found to be “negligent” and that can result in loss of a patent right.

Second, it seems to me odd that the Federal Circuit would rely on regional circuit law where, as here, the adverse inference goes to an issue of patent law — intent to deceive under Therasense, which interprets “unenforceability” as a defense listed specifically in the Patent Act.

Third, and related to that, an adverse inference instruction where the issue is intent to deceive is, effectively, even more draconian than terminating sanctions (e.g., striking a complaint or an answer).  The impact of the adverse inference here went far beyond making one party the winner in a specific case: it took away a presumptively valid property right, and, of course, will result potentially at least in fee-shifting under Section 285.

Finally, two broader points.

First, the approach of the panel-majority of relying upon an inference is going to lead to satellite litigation and erosion of Therasense.  Why bother trying to show clear and convincing evidence that the single most reasonable inference is is deceptive intent when you can try the trial lawyers?

Second, when the OED becomes aware of a judicial finding of inequitable conduct by an practitioner, it investigates.  I’m not sure the OED would here — where the adverse inference instruction is what led to the holding of inequitable conduct — but if the OED does do so, will prosecution counsel have a claim against litigation counsel for “negligently” litigating so that this inference arose?  What about the patentee suing the litigators?

Don’t misunderstand me:  I have no idea if the lawyers “deserved” this adverse inference instruction.  The panel-majority’s conclusion that the district court did not abuse its discretion is not a holding that they did deserve it.  But this one, well, she’s a doozy.

Exergen, Therasense, and the Amended Rules of Civil Procedure

I teach civil procedure, patent law, and ethics, and so this opinion granting a motion to modify a scheduling order, and to allow an amended pleading, to plead inequitable conduct jumped out at me because someone successfully navigated the pleading issues created by a combination of case law and the amended rules limiting discovery to claims or defenses plead.

The problem that lawyers face is this:  the combination of Exergen and Therasense require (generally) pleading that a person substantively involved in prosecution knew of but-for material information, knew the information was material, but withheld it with an intent to deceive (or engaged in “affirmative egregious misconduct) and — according to Exergen (which I think was wrongly decided, in an article I wrote before it was decided, and available here) — do so under the rigorous pleading standards of Rule 9(b).  Before pleading fraud with particularity, the lawyer of course has to have a Rule 11 basis to make the allegations.

Therein comes the limitation on discovery in the 2015 amendments to the rules of civil procedure:  even with good cause, there can be no discovery into issues that are not relevant to a claim or defense.  So, how do you get discovery needed to plead inequitable conduct when you can’t plead it without discovery (usually)?

I know some courts have dealt with this problem by local rule or order, allowing discovery into knowledge of prior art, for example, even when it ordinarily isn’t relevant to validity that an inventor knew, or didn’t know, of particularly prior art (derivation being an obvious exception).  Even, however, if you can get the discovery, you then face the problem that, ordinarily, the cut-off to amend pleadings in most scheduling orders occurs long before fact discovery closes.

So, now you know why I found this case, Marical Inc. v. Cooke Aquaculture Inc. (D. Maine, July 31 2017) interesting.  On the last day of fact discovery, the accused infringer took the 30(b)(6) deposition of the inventor, who testified (basically) that he knew information that was but-for material but wasn’t disclosed to the USPTO during prosecution.  The patentee opposed the motion to amend the accused infringer’s pleading to assert inequitable conduct, arguing (a) there was no good cause to modify the cut-off date for amending pleadings, long past and (b) even if there were, the amendment was futile because it could not meet the Exergen/Therasense standard.

The magistrate held there was good cause (it said that the accused infringes was justified in waiting to assert inequitable conduct until after it deposed the inventor), and that the amendment was not futile because it met the Exergen/Therasense standard.

There’s a lot here to think on. One is to make sure that, if you have a local rule or case management order, that you follow it to make sure you plead inequitable conduct timely.  Another is, if there is no such order or rule, to be diligent and to perhaps put the other side on notice, early and before depositions, that you’re going to seek information relating to inequitable conduct even though you haven’t pled it, because you can’t plead it until you have discovery.

With Speedier Time-to-Market and Shorter Product Life Cycles: Diligent Prosecution and Beyond

I just finished a long article that attempted to look at what the past changes in the law, combined with ever-increasing changes in technology, means about patents.  I didn’t try to add a whole lot to the literature about the cases — you know that almost every case the Supreme Court has decided this century has in some way negatively affected the strength of patents, making them harder to get (e.g., KSR, Nautilus), easier to invalidate (same and of course Alice, Myriad), and riskier to enforce (e.g., Octane Fitness).  I also didn’t try to add a whole lot to the literature on how IPRs (and CBMs) have likewise negatively affected the strength of patents.

What I did try to do was look at what is happening, ever increasingly, which is that in many areas of technology time-to-market has become shorter, and, likewise, product life cycles have become shorter.  We get new products more often, and so obviously they’re coming and going more quickly. In many instances, and in a growing number, the product can get to market long before a patent issues after the (average) 25 month pendency, and it may not be on the market long enough to recoup investment. There was some interesting analysis of those last two points.

Where we are increasingly at is a place where economics may not justify applying for a patent.  Not everywhere, but more often, practitioners will find themselves in that place.

I have no idea the degree to which that is the case now, or the extent to which it will become the case more in the future. It is no doubt patent and industry specific.  But if you combine the negative legal landscape with market realities, you see less need for patenting. The direction is clear; the degree, no idea.

Add to that mix the rise of 3D printing, and you can see that infringement will also be occurring in a diffused manner, by individual consumers, and in circumstances often hard to detect.  (CADster should be a great domain name; grab it now.)

Competent practitioners should consider several things.  One is to recognize that diligent prosecution is becoming more important for clients.  Another is that examining whether to discuss with clients the use of Track One, PPH, or the pilot program (or the program — forget its name — that allows for accelerated examination when there’s an older inventor named).

Another is an odd provision in Section 154(d) that allows recovery of damages accruing after a defendant knows of a published patent application, to the extent that it “infringed” those published claims. Mailing copies of published applications to those who may infringe upon issuance may be good practice in some areas.

Anyhow, I’m about to head on vacation for two weeks, and thought I’d leave you with some broader thoughts.