What would you ask a District Judge?

By Jason Rantanen

On Friday, October 3, I will be moderating a panel of three district court judges at the Iowa Intellectual Property Law Association annual conference.  This gives me a great opportunity to seek the collective wisdom of the new, higher quality commenting section!  So if there’s a question that you’re dying to pose to a typical district court judge about intellectual property law, or even practice before the court generally, I’d love to hear it.

Other speakers at the conference include: Tom Irving of Finnegan on Section 101 and 112 issues, Chris McKee of Banner and Witcoff on inter partes review, Alan Datri of the Office of the Deputy Director General at WIPO on the International Design System, Jim Voegeli, Assistant Chief Intellectual Property Counsel at 3M on trademark policing programs, and John White of PLI and Berepato & White on post-AIA Sections 102 and 103 at the PTAB.

More information available here: http://www.iipla.com/announcements/2014-annual-conference-registration

47 thoughts on “What would you ask a District Judge?

  1. 22

    “Which aspects, if any, of a trial judge’s claim construction orders do you think warrant deferential review at the Federal Circuit?”

    Of course, I wouldn’t ask a sitting judge this question right now for at least two reasons.

  2. 20

    1) Patent cases have increased scrutiny/attention on several levels (e.g. public/media visibility, legislative activity, Supreme Court). Has this impacted how the courts handle these cases?
    i.e. more/wider case law research, expertise, settlement attitudes, broader view of individual cases?

    2) “How about that East District of Texas”? We’d love to know what other districts think/feel given the dramatic disparity of case numbers but we don’t bate our breath. Maybe they could talk about how meaningful decisions of the rocketeers are to their districts.

  3. 19


    I think you’re taking liberties with that alleged “stipulation”. From the transcript at http://www.supremecourt.gov (PDF format):

    Mark A. Perry, Esq., for the respondent:
    Of course, a patent that describes sufficiently how a computer does a new and useful thing, whether it’s data compression or any other technological solution to a business problem, a social problem, or a technological problem, would be within the realm of the patent laws. That is what the patent laws have always been for.

    This is not such a patent.

    [emphasis added]

    Firstly, he maintains that a valid patent has to describe how the computer does it’s “new and useful thing”, which implies a process, not a machine.

    Secondly, he maintains that the patent in Alice ain’t such a patent.

    If I have failed to identify the original text of the “stipulation” to which you refer, would you be so kind as to correct me?

  4. 18

    When an IPR final written decision from the PTAB comes back to one of your patent cases (it will eventually happen), what criteria will you use to decide the scope of staturory estoppel?

  5. 16

    (sorry for multiple posts — last one)

    6. What are your initial thoughts, priorities, and questions when you get a patent case? Is it “how do I get the parties to narrow the number of claims in dispute?” Is it “how do I keep this from sitting on my docket for 6 years?” Is it “how much is this case worth?” “how is likely is it to settle?” In other words, what’s going through the mind of a district judge when s/he finds out that a patent case has landed on the docket.

  6. 15

    5. (perhaps with some preface about how J. O’Malley is awesome) Do you have any sense of whether any significant number of district judges would be interested in serving on the Federal Circuit if nominated?

  7. 14

    4. (to the extent decorum allows) How sensitive are district judges to issues of appearing to be too chummy with local counsel?

  8. 13

    1. To what extent do you think the patent cases on your docket are meaningfully different from other commercial cases where the factual issues implicate complex science (e.g., medical malpractice, some ERISA cases implicating medical issues, antitrust, environmental regulations)?

    2. What is the Federal Circuit doing particularly well or particularly badly from the perspective of a district judge whose decisions are reviewed by that court?

    3. (a) How good or bad do you think juries are at patent cases, and (b) what can/do district judges do to make juries do their job as well as possible in patent cases?

  9. 12

    Many commenters and practitioners believe that Prometheus v. Mayo is one of the most important and far-reaching Supreme Court decisions in patent law in recent years.

    Given its importance, how comfortable are you with the basic holding and its application to claims reciting only old technology and an otherwise ineligible abstraction such as a mental step?

    This will be a wonderful teaching moment for you, Jason. Plus you’ll get these judges on the right track.

  10. 11

    Terrific questions so far. One thing thing to keep in mind: the judges on the panel are typical district court judges. As I discussed in a past blog post, the average judge receives about 2-3 patent infringement suits per year.

    For what it’s worth, one of the judges will be Judge John Jarvey, who volunteered to participate in the federal courts’ video pilot program. He has a video of a claim construction hearing available here: link to uscourts.gov.

  11. 10

    I would ask the judges why they don’t get better control of their (patent) dockets and limit the amount of discovery silliness that runs up the bills for both sides.

    1. 10.1

      It’s a pretty simple answer – that requires them to make decisions and file orders. It’s much easier to just tell the parties “work it out” and move on to the next case.

      It’s my personal opinion that the use of magistrates actually frustrates the whole process because their orders are always challenged to the district judge (in one way or another) which actually decreases the efficiency of the overall system instead of taking the discovery load off of the district judge.

  12. 9

    Why do courts give so much freedom to corporate entities to make court filings under seal so that the public cannot access them while, at the same time, regularly disclosing would-be private and damaging information regarding criminal defendants (who are actual people)? My solution would be to have open courts and only allow for secret proceedings in extreme circumstances.

    1. 9.1

      The best first step for truly open courts would be to outsource PACER to Google. They’d probably index the whole thing for free, as long as they could show ads off to the side.

      1. 9.2.1

        Flight 2-0-9’er cleared for vector 324.

        We have clearance, Clarence.

        Roger, Roger. What’s our vector, Victor?

    1. 8.1

      Recognizing that patent claims are themselves always an abstraction from the physical invention, what is the level of abstraction that crosses the threshold of non-patentability?

      1. 8.1.1

        ^^^ I seriously think that such “recognition” is not only not achieved, but flies directly in the face of both those that believe that claims are only valid if claimed with only structural terms and those that do not understand the equivalence (note this is expressly NOT ‘the same as’ or ‘identical’ neither of which is the appropriate quantum in the patent law context).

      1. 8.2.1

        Well, we can be nearly 100% confident of one answer: the recitation of new distinct objectively recited physical structure that distinguishes the claimed invention from machines in the prior art.

        Neither the Supreme Court nor any other court has come close to rendering such a claim ineligible as pre-empting an abstraction. If you can think of a claim that meets those criteria and a non-ridiculous argument for finding that claim ineligible, I’d love to hear it. So would a great many potential defendants.

        If there’s some intermediate level of “significance” that qualifies as “appropriate”, we’ve yet to hear you or anyone else articulate what that intermediate level might be and why it’s “appropriate”.

        And I’m not holding my breath waiting for that to happen.


          You do remember that both parties stipulated that the claim in Alice did meet the new machine prong of 101, right?

  13. 7

    When faced with a question of subject matter eligibility for a process how do you reconciles the Supreme Courts “Integration Analysis” as expressed in Mayo and referenced back to Diehr, with the view of dissecting claims into eligible and ineligible subject matter and ignoring the ineligible subject matter in the concluding analysis?

  14. 6

    Q.6: Especially since a key source of the patent troll economic model is the millions of dollars it can cost defendants to fully litigate and respond to discovery demands if they do not settle, while litigation costs are vastly less for PAE patent owners, why cannot more Markman hearings be held earlier, so that many more patent suits can be quickly and inexpensively disposed of on associated motions for summary judgment for non-infringement?

    1. 6.2

      Especially since a key source of the infringer economic model is to ignore inventors (and those whom the inventors have had to sell their patents to because they don’t have a million dollars) who come to them in good faith with their infringed patented inventions unless they’re sued, why cannot pre-suit and / or early-suit mediations / arbitrations be held so that many more patent suits can either be prevented or quickly and inexpensively disposed of?

      1. 6.2.1

        I’m sorry, but I don’t speak jive.

        Did this have something to do with the flipside of Paul’s question – how do we get willful infringers to pay out earlier instead of trying to bleed smaller patent owners?


          how do we get willful infringers to pay out earlier instead of trying to bleed smaller patent owners?

          Maybe we could do something like triple the cost of damages for willful infringement.


          Sorry for the somewhat oblique comment bja. Realized after I’d posted that it wasn’t a great flipside to Paul’s comment … and that I actually like Paul’s idea … tho’ I’d word it thusly; from the inventor’s standpoint:

          “Especially since a key source of the infringer economic model is to ignore inventors who come to them in good faith with their infringed patented inventions unless they’re sued, why cannot more Markman hearings be held earlier, so that many more patent suits can be quickly and inexpensively disposed of on associated motions for summary judgment of infringement?”

    2. 6.3

      Hear, Hear! Going into (and through) MSJ without any notion of the true meaning of contested claim terms is a truly miserable experience, not to mention wasteful of everyone’s time.

  15. 5

    1. “Your Honor, in your opinion would our patent jurisprudence be clearer and more useful if courts of appeals other than or in addition to the Federal Circuit had appellate jurisdiction in patent cases?”

    2. “As you understand these ideas generally, what is a question of law and what is a question of fact? And how would you characterize questions concerning infringement and validity?”

  16. 4

    To piggyback on what “A plurality of thresholding units” said, would you appoint a neutral expert witness in an IP case, and especially a patent case that involves a sophisticated technology, in order to help the jurors make more informed decisions? Why or why not?
    This is something that Richard Posner did when volunteering as a federal trial judge, and recommended other judges to do it too.

    1. 4.1

      This is a nice one, Igor. We should remember that it’s not a debate with a federal judge but a chance to learn from the unique challenges they face.

      Maybe the question could be about the costs and limits of appointing a special master and what the other judges will think of it and how they would interpret the special masters’ work and whether they expect the conclusions to be treated respectfully by the CAFC.

  17. 3

    Do you believe that juries are truly prepared to answer factual questions related to sophisticated technological inventions in patent infringement suits, and if not, is there any way to prevent these suits from becoming a contest of which side can hire the loudest expert witness?

    1. 3.1

      Are juries capable of answering factual questions related to sophisticated medical technologies and procedures when they have to decide a medical malpractice suit? Are they capable of answering factual questions related to, inter alia, securities, contracts, fraud, RICO cases, etc.?

      I honestly don’t know. But we have juries decide those cases all the time. Nothing special about patents that we shouldn’t have juries deciding them. IMO of course.

      1. 3.1.1

        I haven’t seen RICO or SEC actions, but I’ve seen medmal cases. The jury doesn’t make decisions about sophisticated medical tech. They get a recitation of the standard of care and they get to learn (both sides of) what the doc did or did not do.

        I do see a difference between high tech patent cases (be it “tech” tech or polymer chemistry) and, e.g., medmal cases when it comes to the question of whether or not the standard juror pool is capable of making good decisions.


          I don’t see it. In a medical malpractice suit both sides are going to trot out their expert. The doctor’s expert is going to explain what the doctor did and why it meets the “standard of care” and the patient’s expert is going to say the exact opposite. The idea that the average juror truly understands whether the doctor’s actions met the standard of care is dubious at best. They listen to the experts and decide based on lots of things other than just the evidence and the facts. They do the same in patent cases. They listen to the patentee’s expert and they listen to the accused infringer’s expert. And then they decide. Same as in just about every other type of case.

  18. 2

    How do you analyze claims in view of the recent Alice decision under 35 U.S.C. 101. Is it ok to distill claims down to the “gist” of the invention as to determine if the claims are abstract or not?

  19. 1

    What – if any – limitations are there on the ability to develop common law when there is statutory law in place? (one may use the example of statute 35 USC 283 as an example of the statute allowing judicial common law)

    Follow-up: does it matter if the statutory law has been expressly authorized by the Constituion?

    1. 1.1

      Bear in mind the panel are dc judges. As one fine dc judge once told me, “Those are really great arguments, and fairly persuasive, too. But I’ve thought long and hard about this and, dangit, I’m a District Court judge. District Court judges don’t make law. I wish you the best of luck at the Circuit”.

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