Guest Post: Technical Detail in Senate PATENT Act Could Have Major Impact in Eastern District of Texas Patent Litigation

Guest Post by Christian E. Mammen.  Dr. Mammen is a litigation partner in the San Francisco office of Hogan Lovells.

The recently-introduced PATENT Act (S. 1137) tracks, in substantial part, many of the reforms proposed in the House’s Innovation Act (H.R. 9). However, the PATENT Act differs in several ways from the Innovation Act. Many of the differences between the two bills have been discussed elsewhere at length.   This article focuses on just one feature of the PATENT Act, which has some potentially far-reaching implications for patent litigation in the Eastern District of Texas, the nation’s most popular patent litigation forum.[1]

Discovery is one of the most costly and time-consuming phases of patent litigation. In patent litigation brought by NPEs, the burdens of discovery are asymmetrical, with the burden falling more heavily on the accused infringer. Particularly where the NPE-plaintiff acquired the patent on the secondary market, it will have few or no documents to produce relating to the invention process, patent-related products, or the like. The cost of discovery, which falls disproportionately on accused infringers, can motivate those accused infringers to settle patent litigation for valuations based on the cost of avoiding further litigation, rather than on the value of the patented technology.

To address this issue, the Innovation Act initially proposed that discovery be stayed until the court issues a claim construction ruling. However, this proposal was in tension with widely accepted practices concerning discovery prior to claim construction. For example, a 2008 Federal Judicial Center report indicated that most courts surveyed held claim construction after at least some fact discovery, and Berkeley Law Professor Peter Menell’s Patent Case Management Judicial Guide (2d ed. 2012), explains, “it is only by knowing the details of the accused product and the relevant prior art that the parties are able to determine which claim terms need construction.” Further, many courts have now adopted Patent Local Rules that require early production of infringement contentions and related documents, and invalidity contentions and related documents, and it is not clear whether those disclosures would also be stayed under the Innovation Act.[2]

Presumably in order to balance these competing concerns, the PATENT Act also includes the idea of a discovery stay in early phases of patent cases, but changes the triggering event. Rather than staying discovery until claim construction, the PATENT Act would stay discovery only while any one of three pre-answer motions is pending: (1) motions to dismiss, (2) motions to transfer venue, or (3) motions to sever accused infringers.

At first glance, this proposed scheme is a bit puzzling, since all three types of motions are typically filed – and resolved – early in the case, generally before discovery even starts.[3] Under the Federal Rules of Civil Procedure, discovery is stayed until the parties have held an initial conference concerning case management under Fed. R. Civ. P. 26(f). The Rule 26(f) conference generally happens about 3-4 months after the case is filed.

However, on closer examination, the PATENT Act’s proposed discovery stay has the potential to disrupt the status quo in one important circumstance. While there is a general preference that motions to transfer venue be brought as quickly as possible (generally before the answer is filed—indeed, the PATENT Act would only stay discovery when such motions are “filed prior to the first responsive pleading”), some courts delay resolution of these motions, and the PATENT Act’s stay of discovery would remain in place until the court rules on the motion. Furthermore, if the motion to transfer venue were filed sequentially after a motion to dismiss—a not implausible scenario under plausible readings of the PATENT Act—the filing date of the venue transfer motion could approach the date of the Rule 26(f) conference, thus extending the discovery stay well into the case’s discovery period. And if the court delays ruling on the motion, the commencement of discovery could be significantly delayed as well.

Famously, the Eastern District of Texas has gained a reputation for deferring rulings on venue transfer motions until the case is substantially advanced. As the Federal Circuit observed in one recent case challenging the Eastern District of Texas’ ruling on a transfer motion, “This case is a prime example of the importance of addressing motions to transfer at the outset of litigation … Congress’ intent to prevent the waste of time, energy and money and to protect litigants, witnesses and the public against unnecessary inconvenience and expense may be thwarted where, as here, defendants must partake in years of litigation prior to a determination on a transfer motion.” In re EMC Corp., 501 Fed. Appx. 973, 975-976 (Fed. Cir. 2013) (citations omitted).

Data recently obtained from Lex Machina indicates that, on average, when motions to transfer cases out of the Eastern District of Texas are granted, the ruling comes in 143 days, or about 4½ months. But when such motions are denied (meaning the case remains in the Eastern District of Texas), the ruling languishes for an average of 225 days, or 7½ months. According to Lex Machina, there were 33 cases in the Eastern District of Texas between January 1, 2010 and May 1, 2015 in which a venue transfer motion was pending for over a year before being ruled on – and only five of those longest-pending motions were ultimately granted in whole or in part. [4]

Particularly for Eastern District of Texas cases in which transfer is denied, the PATENT Act’s proposed discovery stay would prevent the start of discovery for up to 7-10 months from filing. This could have several effects. Without any other changes to the status quo, it could significantly clog the docket with discovery-stayed cases. Additionally, it will provide defendants with a strong incentive to file venue transfer motions, probably as late as possible before the start of discovery, in order to maximize the discovery-stay effect. Alternatively, the court could respond by substantially speeding up its rulings on venue transfer motions.

It is difficult at this time to say whether the drafters of the PATENT Act intended this particular scenario. But if they did, it is very clever indeed, and it will be interesting to watch it play out.

UPDATE: On June 10, Rep. Goodlatte introduced a Manager’s Amendment to the Innovation Act that scales back its proposed discovery stay. Like the PATENT Act, it would stay discovery during the pendency of pre-answer motions[5] to transfer venue or to sever claims or dismiss parties (but it does not provide for a stay pending motions to dismiss).[6] Additionally, the Manager’s Amendment would require the court to rule on any such motion before the court issues a case management order under Federal Rule of Civil Procedure 16. In view of the deadlines specified in the Federal Rules of Civil Procedure, the discovery stay in the Manager’s Amendment would normally only last for a maximum of three to four weeks (from the Rule 26(f) conference until the case management order issues). But it would also (albeit in a roundabout way) require courts to provide timely rulings on venue motions.

[1] In 2014, an estimated 32% of all patent infringement cases, and 48% of all NPE patent cases, were filed in the Eastern District of Texas.

[2] The Innovation Act is silent on whether early Patent Local Rule disclosures would be blocked by such a stay. However, the PATENT Act explicitly exempts from its proposed discovery stay early exchanges of infringement and invalidity contentions (whether by local rule or interrogatory).

[3] “Motions to dismiss” presumably refers primarily to pre-answer motions brought pursuant to Rule 12(b) of the Federal Rules of Civil Procedure, including motions based on lack of jurisdiction, failure to state a claim, improper venue or improper service. Such motions must be brought within 21 days of service of the summons and complaint, and are frequently resolved substantially before the Rule 26(f) conference. Actually, though, “motion to dismiss” is ambiguous, and could also refer to other procedures, such as a motion to dismiss brought by a plaintiff pursuant to Rule 41(a)(2). It is not immediately clear, however, what purpose would be served by staying discovery pending a plaintiff’s Rule 41 motion to dismiss.

“Motions to sever accused infringers” evidently refers to motions to sever a claim or drop a party for misjoinder under Rule 21. While such motions should ordinarily be brought as soon as practicable, on its face, Rule 21 motion permits the court to provide such remedies “at any time, on just terms.” Although not fully analyzed here, motions to sever could potentially provide leeway for the same kind of procedural gamesmanship described in this article in relation to venue transfer motions.

[4] Complete data on file with the author.

[5] During the committee markup on June 11, the committee approved a further amendment, permitting stays to be triggered by such motions if they are filed “within 90 days of service of the complaint” rather than “before a responsive pleading is due.”

[6] The Manager’s Amendment remains silent on the status of early disclosures under Patent Local Rules.

104 thoughts on “Guest Post: Technical Detail in Senate PATENT Act Could Have Major Impact in Eastern District of Texas Patent Litigation

  1. 13

    Of course, sometimes the ED Texas turns out to be more like the Federal Circuit than the plaintiff might have hoped:

    link to

    Judge William Bryson, presiding over the case, granted Safeway’s motion for summary judgment and said the patent covered ineligible subject matter.

    According to Safeway, the patent was invalid because “using a computer to apply the ancient idea of incentivising a customer to buy more products does not turn a basic business method into patentable subject matter”.

    In his judgment, Bryson agreed.

    Citing the US Supreme Court’s decision in Alice v CLS Bank, Bryson said: “The use of incentive award programs in marketing is indistinguishable in principle from the kinds of financial or business operations that were at issue in Alice.

    “Although Kroy emphasises the importance of use of computers in its invention, the fact that the claimed system and methods employ computers or a network such as the internet is clearly insufficient to make the claims patent eligible,” he added.

    Take it to the bank, folks. More of this to come. And it should have happened a long, long time ago. Congrats to Safeway for not caving in to these lowlifes.

    1. 13.1

      The lawsuit was filed in ’12 pre-Alice. It’s likely a majority of these Defs settled prior to ’14. I wonder what Safeway spent in litigation costs.

      1. 13.1.1

        I wonder what Safeway spent in litigation costs.

        Bryson awarded fees to Safeway so that’s probably something that can be found out.


          I believe that was, so far, just a normal award of chargeable “costs” to the prevailing party, not any sanctions which would give some clue as to the far more significant Safeway attorney fee costs?
          [Of more interest, re the business model, even if such sanctions were or will be awarded, would it equal the total recoveries from all the other defendants in this case that paid to get their suits settled and thus avoided such further litigation?]


          “Bryson awarded fees to Safeway ”

          No…he didn’t. What kind of a hack are you?

    2. 13.2

      MM, it does look like many if not all Federal Circuit Judges now “get it.” I was looking at CLS Bank (May 2013) to see who dissented. It was Rader, Linn, Moore, O’Malley and Newman. Rader is gone. We have not heard from Newman that I know of. Nor do I recall Moore, O’Malley or Linn participating in any recent 101 case.

      Judge Taranto did not participate in the CLS bank even though he was on the court at the time.

      Judge Bryson assumed senior status on January 7, 2013. But clearly he is on board. Ditto Senior Judge Mayer.

      There still is potential for trouble, but we seem to have finally clawed our way out of the Judge Rich rough back onto the fairway.

      1. 13.2.1

        You’ve heard from – and presented a link to – O’Malley.

        But it was a classic case of presenting something that actually does not fit your Windmill Curse-ades and ends up being a giant Oops for you.

        You keep on “celebrating” the thing O’Malley warned against.

      2. 13.2.2

        Linn was on the panel for today’s 101 opinion, and his concurrence can probably give you a good idea of where he stands.

        O’Malley was on the Ultramercial panel (did not write opinion)

        Moore was on the Digitech panel (did not write opinion)

        Taranto wrote Buysafe and joined the opinion in Content Extraction.


          Linn clearly is not on board. His concurrence is really a dissent. We can expect future trouble from this direction, especially if Newman is on the same panel.


          It isn’t hard to figure out the judges.
          a) Science ignorant appointed on the bequest of Google–great supporters of Alice.

          b) Science literate in EE and can see that Alice is ridiculous and could only be written by science illiterate boz0s.

          c) There are the old smelly arts judges that seem to harbor great resentment towards EE/CS. I think it is because in their science what EE/CS does is what they do in their mind and share. So, they are so old and ignorant that they don’t get that this is about building machines that perform information processing. I think Lourie is the prototypical judge like this. The sooner that ignorant judicial activist is out of the Fed. Cir. the better.

          Thanks Obama. Noam has you down. A mediocre opportunist.


            If you want to read more stellar insights like that offered by Night Writer, go visit Patent Docs to read Michael “I’m Soooo Confused!” Borella’s “analysis” of OIP v. Google. And don’t’ forget to read the comments! Man, that blog went downhill in a hurry after Mayo v. Prometheus. Nobody could have predicted …



              How is your battle of transperancies (with your army of sockpuppets) coming along?


      3. 13.2.3

        Chen holds the Rader/Newman position if we can learn anything from the DDR Holdings case.

        Farnendez is a software patent specialist, so her specialty would mostly evaporate if Alice were taken seriously. But she could be a judge of great integrity and resist the temptation to cheat.

        That leaves us with this lineup:

        For overturning Alice:

        Against overturning Alice:

        Mixed results so far:

        Senior status and can’t vote in general:

        Lourie is a special case in that he always argues that Alice is wrong but sometimes agrees that Supreme Court precedent is more important than his own judgement.

        So that’s roughly 6.5-5.5 in favor of overturning Alice when the court next meets en banc. I don’t see much future for §101 in that spread.

        *Maybe — there is reason to doubt the value of this guess.


          Moore has made public comments that (paraphrasing) she absolutely disagrees with Alice but she will follow the Supreme Court.


            Moore has made public comments that (paraphrasing) she absolutely disagrees with Alice but she will follow the Supreme Court.

            Like many other people who have difficulty distinguishing between patent claims, on one hand, and real-world objects falling within the scope of those patent claims, Moore has also never been forced to defend her beliefs in the face of serious questions about where those beliefs lead.

            I’d love to see that happen or, if it has in fact happened, I’d love to read a transcript of the exchange.

            If a jurist can’t wrap his/her head around the fact that claims involving old information processing machines (like calculators) used for their intended purposes present unique subject matter issues, then the jurist should consider retiring because the law has passed them by.


              also never been forced to defend her beliefs in the face of serious questions about where those beliefs lead.

              Just like Malcolm…



                I’m 100% certain that the opposite is true, “anon.”

                But leave it to you to pretend otherwise.

                Too funny.

                1. The joke is on you Malcolm, seeing as you refuse to answer simple questions honestly, and routinely only employ empty ad hominem.

                  Even your attempted spin of “leave it to me” is but a pale reflection of your own well worn Accuse Others Of That Which Malcolm Does


          Against overturning Alice:

          None of them have a science background and Taranto, Hughes, and Renya are known as the Google judges appointed in return for Google bucks.


            None of them have a science background

            I’m not sure what “science” has to do with using an old programmable computer to shove an ad in a person’s face or, even further removed, trying to use the patent system to claim ownership of that idea or many similar ones.

            Maybe you can explain that to everyone. Try to remember that it’s 2015 and not 1915. Elementary schoolkids were programming computers thirty years ago but your favorite jurists apparently like to pretend that computers were invented yesterday.

            Grow up.


              How nice the paid blogger doesn’t think that fed. cir. judges should have a science background. And you also think that any function that can be written down can easily be done on a computer–this one would make any Ph.D. laugh hysterically.

              So, a guy whose goal is to abstract away all the invention doesn’t think that judges should have to understand or know anything about science for the special purpose court about science. How nice.


                Let everybody when you something to offer except your usual paranoid fabricated nonsense, Night Writer. In the meantime, sitting back and laughing at you is always the best option.


          Thanks for the batting lineup, but that is not the name of the game.
          This cannot be “for ‘overturning’ Alice,” which the Fed. Cir. obviously cannot do.
          How about, more accurately, “likely to try to ignore (or to generate alleged distinctions from) the controlling authority of their superior court they resent? [Until they get yet another Sup. Ct. reversal.]”

          [It would be nice if instead they concentrated in their decisions on providing some workable examples of the so far completely undefined term “abstract.”]


            @curmudgeon ‘‘overturning’ Alice,” which the Fed. Cir. obviously cannot do’

            Oh, no. You will find that it is you who are mistaken, about a great many things.

            “How long will it take the Federal Circuit to overrule this inexplicable nonsense? The novice reader may find that question to be ignorant, since the Supreme Court is the highest court of the United States. Those well acquainted with the industry know that the Supreme Court is not the final word on patentability,” -One gen erous scholar

            The way precedent works is that inferior courts get overruled if they refuse to follow the dictates of higher courts. But that works only with courts of general jurisdiction.

            When a specialized court like the CAFC gives its judges personal incentives for prestige, power, and enrichment if they ignore Supreme precedent, the judges can simply ignore or work around so-called precedent and do what personally benefits the judges. That means expanding the influence of the patent system, of course. And the laws or the Supreme Court can’t really do anything about it.

            So of course the CAFC can overrule Alice. All they have to do is continue to push the line of DDR and Alice will be done.

            (A search on the gen erous quote reveals a fine and well thought out argument that I admire and respect.)


              A search on the quote leads to Gene Quinn. It also leads to this interesting article by Eli Dourado, “The True Story of How the Patent Bar Captured a Court and Shrank the Intellectual Comnons,” Cato Unbound, September 8, 2014 link to

              Of course, the article identifies the Federal Circuit as the primary culprit in all the problems that vex the modern patent system, particularly the troll problem.

              Of course, Mr. Dourado is correct.


                In your haste to apply a “6-is-an-Einstein-because-he-agrees-with-me” you rather miss the fact that the gentlemen is applying the SAME “commons” approach that you found so distasteful in your IPR curse-ade.

                You might want to read some more of the author’s stuff and (absolutely meager tech) background. He is nothing more than an Econ-PolySci weenie.


            How about, more accurately, “likely to try to ignore (or to generate alleged distinctions from) the controlling authority of their superior court they resent? [Until they get yet another Sup. Ct. reversal.]”

            Or until they leave the bench in disgrace and take that high paying consulting job blowing sunshine up the behinds of folks who crave that special kind of “expertise” you can only get from a True Believer in the unique, magical power of broad, functionally descriptive patents for promoting progress in …. logic and the art of communicating information.


              ^^^ America’s leading source of empty ad hominem and certainly not patent law.

              Nice ecosystem we have here, eh Prof. Crouch?

  2. 12

    OT but the CAFC opinion in Ariosa v. Sequenom was published today.

    Held: District Court was correct in finding Ariosa’s claimed fetal DNA detection method ineligible under 101.

    It is undisputed that the existence of cffDNA in maternal blood is a natural phenomenon. Sequenom does not contend that Drs. Lo and Wainscoat created or altered any of the genetic information encoded in the cffDNA, and it is undisputed
    that the location of the nucleic acids existed in nature before Drs. Lo and Wainscoat found them. The method ends with paternally inherited cffDNA, which is also a natural phenomenon. The method therefore begins and ends with a natural phenomenon. Thus, the claims are directed to matter that is naturally occurring.

    …Because the claims at issue are directed to naturally occurring phenomena, we turn to the second step of Mayo’s framework. In the second step, we examine the
    elements of the claim to determine whether the claim contains an inventive concept sufficient to “transform” the claimed naturally occurring phenomenon into a patent eligible application. We conclude that the practice of the method claims does not result in an inventive concept that transforms the natural phenomenon
    of cffDNA into a patentable invention….

    Using methods like PCR to amplify and detect cffDNA was well-understood, routine, and conventional activity in 1997. The method at issue here amounts to a general instruction to doctors to apply routine, conventional techniques when seeking to detect cffDNA. Because the method steps were well-understood,
    conventional and routine, the method of detecting paternally inherited cffDNA is not new and useful. The only subject matter new and useful as of the date of the application was the discovery of the presence of cffDNA in maternal plasma or serum.

    Where claims of a method patent are directed to an application that starts and ends with a naturally occurring phenomenon, the patent fails to disclose patent eligible subject matter if the methods themselves are conventional, routine and well understood applications in the art.

    In a nutshell, you can’t identify a “new” natural phenomenon using conventional methods (e.g., PCR) and then claim the use of those conventional methods to study the phenomenon. This makes perfect sense and it’s consistent with the Mayo framework and the proscription against using the patent system to claim ownership (effectively or directly) of natural phenomenon.

    In addition, the Federal Circuit makes an important point about pre-emption. Here it is for the folks who missed it the first five hundred times I said it:

    While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility. Where a
    patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot.

    In other words, it’s the protection of some (not all) ineligible subject matter by the claim that creates the 101 failure.

    1. 12.1

      Seems like the right decision under the current law. However, in a purely economical sense, decisions like these have to curb future innovation in this type of technological area. Investors aren’t going to put money forward if the product/test isn’t patent eligible.

      1. 12.1.1

        in a purely economical sense, decisions like these have to curb future innovation in this type of technological area

        Not true.

        First, discoveries of this type (i.e., natural phenomenon) are most typically made by basic researchers and that’s been the case for a long time. Second, in a “purely economical sense”, these “investors” you speak of include our own government, which is run by the people and for the people. Want more discoveries like this one? Invest in basic research. Vote for people who support solid, government-funded scientific research.

        The fundamental problem with using the patent system to protect discoveries like the existence of ftl DNA in mtnl bl00d is that easy access to widely desired information — information obtainable using well-known conventional and old technology — ends up in private hands which is the last place most people want to see it. Obviously if you’ve got tons of money to spend (like the typical “investor”) such concerns are irrelevant and, apparently, very difficult to even comprehend.

        Perhaps most importantly, there is no question that investors with tons of money still have plenty of opportunities to invest in new technologies for obtaining information about people’s bodies and millions of other aspects of the universe we all live in. They’d be wise to search for those opportunities and we’d all be better off if they stopped giving money to the “innovators” out there pretending to have invented commerce itself.


          Just fabricated nonsense. Your green blinded vision of reality is certainly not the reality the rest of us live in.


            the rest of us

            Please define “the rest of us”, NW.

            I’m literally surrounded by hundreds, if not thousands, of people within a stones throw who all agree with me.

            Perhaps in your magical, Hummer-lined, quail-guzzling gated community of the shiny future things are totally different.


              How about like start-ups and big technology companies. You know the ones that innovate. That is my we. The people that actually do all the work.

              Are you paid bloggers now in cubicles?


          Are you saying that the people who applied for the patent in this case were “pretending to have invented commerce itself”?

          How does voting “for people who support solid, government-funded scientific research” lead to innovations in the area of testing for diseases? Can you name an innovation in the area of testing for diseases that came out of government funding?

          If companies do not see a benefit to perform tests such as this, why do you think the government would step in to do this? And if the gov’t did step in and created such a test, who would manufacture and distribute the test? Does the gov’t have a distribution system? And do we want the gov’t having such a system?


            Are you saying that the people who applied for the patent in this case were “pretending to have invented commerce itself”?

            No. I was referring to all the Scotty Horsehockey’s out there with their reams of junky “do it on the Internet” patents.

            How does voting “for people who support solid, government-funded scientific research” lead to innovations in the area of testing for diseases?

            That question is so silly I won’t bother to answer it. Grow up and get a clue.


            PB Can you name an innovation in the area of testing for diseases that came out of government funding?

            Using your definition of “innovation” I could name millions of them. They’re happening all the time. See, e.g., link to; link to; etc etc etc etc

            Does the gov’t have a distribution system?

            Serious question: how old are you?

      2. 12.1.2

        Imagine the gold rush if it became a principle of international law that the first discoverer of a new product of nature could own it for a limited time?

        Extend the principle to the planets and the stars. The first to land, stake a claim, and thereafter occupy and develop would own the land.

        Elon Musk is talking about his own Mars mission. Imagine if he could own all that he settled. Imagine if his colonists could own their land. Private enterprise would brush aside NASA and be there long before they, or the Chinese or whomever woke up from their afternoon nap.


        It is the idea that we all own things in common that is the problem here.


          If Elon Musk gets to Mars first, why can’t he claim it for himself? The US completely claimed the land that makes up the US even though others lived here first.


            PB The US completely claimed the land that makes up the US even though others lived here first.

            Ah yes. That was different because it was clearly part of God’s great plan for super advanced white people.


              What the H Prof Crouch – you letting this “White People” C R P stand?

              That’s just plain offensive – there should be ZERO tolerance for this (even for Malcolm)


            PB, An Italian named Americus Vespucci (Columbus was Italian as well) was on board a Portuguese ship circa 1499 when it discovered South America. His reports were read in Europe. Cartographers began calling the continents America after Vespucci.

            link to

            As to who owned America — South America was divided between Brazil and Spain, the Spanish had Mexico all the way to California, the British above California, the French all of Canada and down the Mississippi until a lot of it was taken by the British. Spain held Florida, the Dutch New York, and the Brits the 13 colonies, until it took Canada from the French.

            Just a little more complicated than suggested.

            It would be interesting if Musk could lay a legitimate claim to the whole of Mars if he could set up the first colony.

    2. 12.2

      “In other words, it’s the protection of some (not all) ineligible subject matter by the claim that creates the 101 failure.”

      Been saying it for years. You can’t preempt even a little bit.

    3. 12.3

      Regarding Linn’s “dissent,” he focuses heavily on “post solution” activity as if that was actually claimed. I didn’t see anything in the claims required anything to happen after detection of the paternal DNA.

      Had the claims actually required some specific activity to occur after the detection, I think the claims may have fallen into the rule of the Diehr case which Linn thought should be the rule in this case but for Mayo. However he seems to ignore that the problem with the claims in Mayo is that they did not require any post solution activity as well. Mayo and this case, Ariosa, are both more like Flook, where the calculation simply ended a number with no specific application. It is the absence of a specific application here that doomed the claims.

      All the claims required was conventional detection techniques for paternal DNA in maternal plasma. The only thing new in the claim was what was being looked for and that was a product of nature. Apply the detection of the paternal DNA in some fashion, in some specific fashion, and we get into the realm of patentable subject matter.

      The use of the knowledge of paternal DNA was also conventional at the time. Therefore, adding a list of uses to the detection claim would not be an inventive application because those applications were known.

      Where does this leave us? The application itself has to be at least “new” or “improved” over known techniques.

  3. 11

    Jason, I think you’re missing an opportunity to evaluate WHY these amendments are coming now. The history is somewhat fascinating. As many observers of patent reform will recall, there were venue reforms proposed way back in 2007 and 2008 to deal with the spike in E.D. Texas case filings. Those provisions got yanked from the bill that later became the AIA because the Federal Circuit started (for the first time) granting mandamus petitions against districts like E.D. Texas, beginning in late 2008 with TS Tech. People thought the problem would take care of itself, but obviously, they were wrong.

    But here we are, almost seven years later, and close to 40% of all new patent litigations — that’s right, 40% of ALL patent litigations filed in the entire United States — are being filed in E.D. Texas. The vast majority of these cases are high-technology cases, and no one can argue that E.D. Texas has any significant high-tech industry (unless you count litigation). The situation in Texas represents one of the most long-standing, widespread, and frankly egregious, examples of rampant forum shopping in the history of civil litigation in this country. This makes the forum shopping in the asbestos, Dalkon shield, toxic tort, etc., era seem like a joke.

    You say that the amendment staying discovery will “clog the docket with discovery-stayed cases.” But that’s only the case if district judges pocket veto transfer motions, which judges in E.D. Texas routinely do. I am not sure what else Congress can do. I don’t think the intention was to delay the cases, but rather, to eliminate the incentive to sit on these motions.

    It’s always possible that a defendant could file a bogus transfer motion to delay a case, but Jason, you obviously know nothing about how civil litigation works. If it turns out that a defendant filed a bogus transfer motion, once that motion is denied, nothing stops the district judge from imposing a more aggressive schedule and setting an earlier trial once discovery is opened. District judges can shorten the discovery period at their discretion, as districts like E.D. Virginia do (in that case, they give you four or five months of fact discovery–that’s it). District judges have plenty of case management tools, sanctions, etc., to punish defendants who abuse the system with frivolous transfer motions. There are plenty of avenues to counterbalance bad incentives here.

    But the same cannot be said for district judges — there are no meaningful tools available to prevent them from pocket vetoing meritorious transfer motions to give one side a benefit, and impose costs on the defendant until it finally settles (which so many in E.D. Texas do). The only tool available is the writ of mandamus, which is an extraordinary remedy that is rarely imposed, and is not effective to cure district judge abuse.

    1. 11.2

      So Lode_Runner, what should be done (or can be done)? Do you think the proposed amendments will work?

      I agree there is a problem with all these cases in E.D. Texas.

    2. 11.3

      Lode_Runner, apparently Daryl Issa offered an amendment to effectively restore the patent venue statute and overrule VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574 (Fed. Cir. 1990). link to

  4. 10

    What has me goofed up with respect to Dr. Mammon’s excellent article is how does one understand the proposed new discovery restrictions/procedures/timing outside the context of the new pleading requirements?

    The problem here is Form 18 of FRCivP. It is the form complaint for patent infringement actions and requires the P to plead only three facts: 1) date patent issued; 2) that D has/is infringing; 3) that statutory patent notice was attached to the infringed products. This form may be fairly characterized as i-diocy nonpareil, notwithstanding the federal bare-bones pleading paradigm, aka “notice pleading.”

    Even if it is not mandatory, Form 18 sets the stage for abusive lawsuits where the D doesn’t know W-T-F has hit him even after reading the complaint. Twice. This forces D into almost immediate and expensive discovery – a patent litigator’s wildest dream come true.

    In discussing the timing of discovery under the new paradigm, I think Dr. Mammon would have been well advised to have pointed out that Section 3 of both the Senate and House bills cancels both Form 18 and the niggardly, non-informative pleading preferred by NPE’s. Section 3 requires the P to spell out precisely what the problem is – right down to the last element of each claim alleged to have been infringed.

    Looks to me like a lot of the D’s initial discovery requirements will be virtually satisfied just by reading the complaint. How much more info could possibly be needed in order to resolve demurrer, venue, and severance of defendants?

    And if the court delays ruling on the [venue] motion, the commencement of discovery could be significantly delayed as well.

    While this may technically be correct, the fact that so much discovery info is to be packaged in the complaint makes the criticism less compelling. Delaying discovery within the context of the proposed legislation is a whole different kettle of fish than the present procedures and should be criticized with respect to that kettle and those fish.

    I think we can safely predict that with these heightened pleading requirements a lot more infringement cases will bite the east Texas dirt on motions to dismiss before the Rule 26(f) conference even gets scheduled. And that’s what really has the litigators’ panties in a twist.

    1. 10.1

      In your view, should “Notice Pleading” as a whole be done away with?

      If not good for patent cases, what type of cases is such a “loose” and prone to abuse protocol “good” for?

      (One may note the “law of the horse” tone to these questions, and realize that certain issues are not patent law issues, but are rather more systemic)

      1. 10.1.1

        what type of cases is such a “loose” and prone to abuse protocol “good” for?

        Maybe the type of case where the law the defendant is accused of breaking wasn’t written by a patent attorney who benefits from fuzzy boundaries of the “property” because it increases the expenses of the accused.

        Just a thought. Most people appreciate that patents are “different”.

      2. 10.1.2

        I think that notice pleading the sufficiently puts someone on notice about the claims is fine. In my experience, patent infringement complaints in the technology space, a huge amount of time can be spent even trying to figure out what is claimed to infringe.

        If it takes someone more than 1 reading of a complaint to discern a product or functionality that is accused of infringement, there’s a problem. I’d be in favor of sanctioning plaintiffs who file those types of complaints.

      3. 10.1.3

        anon: should “Notice Pleading” as a whole be done away with?

        Now, it’s funny you should ask, anon. I have been giving this pleading vs discovery matter considerable thought lately in the context of SLAPP suits.

        What Congress is doing with the Patent Act is returning patent litigation procedure to David Dudley Field’s code-pleading procedures of the 19th century in which a plaintiff was required to plead facts that supported each element of a tort. (Carrying around a name like “David Dudley” all his life, the guy obviously had a deep-seated, unfocused Freudian animus, and he took it out on plaintiffs by forcing them to come into a suit with all the necessary facts in hand. His mother’s given name was “Submit,” so Dudley’s id and ego were no where nearly as messed up as hers.)

        The procedural pendulum swung back toward the Ps with the 1938 FRCivP, which initiated notice pleading that required only a bare-bones assertion of the case and left all the factual mumbo-jumbo for discovery. See Rule 7 & 8.

        Consequently, even the most outrageous suit can cripple a D financially by the time the discovery is completed and the facts are “developed” enough to convince the judge there is no case. Even if the D wins on summary judgment, it’s pretty much a Pyrrhic prelude to bankruptcy. I think this was the impetus for the epithet: “the process is the punishment” – a mantra that is inked on the derriere of every torll’s lawyer, if you’ve ever noticed.

        With the present Patent Act, Congress is pushing the pendulum back toward the Ds by forcing Ps to, essentially, Dudley-plead, thereby opening the door for early dismissal without a lot of yada yada and costly discovery.

        I don’t have a problem with that. And the reason I say it is that sufficient facts to plead the details of infringement are pretty much out there from the git-go. You got the patent claim; you got the infringing device; you’re good to go. Furthermore, I think it’s an excellent idea to force the P’s claim construction right from the very first pleading. This is going to make the Markman just a whole lot easier for everyone. And if it’s a valid case, that’s going to be obvious and the D’s should roll over even before filing the answer.

        I think there are other areas of civil law where Dudley’s code-pleading is not a bad idea. The SLAPP suit context is similar in a lot of ways to patent litigation abuse. Most SLAPP suits are phony defamation suits instituted to punish a D’s free speech by exposing them to costly legal proceedings, even if the suit is dismissed short of trial. Think: Oprah getting sued by a pack of chip-kicking Texas cattlemen for “defamation of perishable food” for saying she’d never eat a hamburger again. As in a lot of patent litigation, it’s the onerous discovery process being used as a bludgeon.

        Some states – notably CA and WA – have passed anti-SLAPP statutes that allow Ds to cut the suit off prior to discovery and move for dismissal based on pleadings and affidavits. But WA’s very strong anti-SLAPP law just got shut down by the state’s supreme court because it violated the P’s constitutional right to jury with respect to the penalties the courts could slap on the errant SLAPP plaintiffs.

        I think if the WA legislature would do what Congress is doing and force defamation Ps to plead facts supporting each and every element of defamation, libel, slander, whatever, it would go a long way toward eliminating SLAPP suits being filed.


          Babel, you make it seem like Congress should look into notice pleading as an essential denial of justice because of the shear expense of discovery. The assumption of notice pleading is that all complaints are legitimate. It requires of all litigants a certain self regulation. But while most humans have a sense of right and wrong, most litigators only have a sense of what is legal or not legal. Unless restrained by the law, they will use anything that can be abused to their advantage. That is the human nature of litigators.



            I hope your comment is expressing your understanding of the motives behind Rules 7 & 8 and not your naivete. Specifically:

            1. The assumption of notice pleading is that all complaints are legitimate.
            2. But while most humans have a sense of right and wrong, most litigators only have a sense of what is legal or not legal.

            As to #1: One’s assumption that all complaints are legit would suggest to me severe dementia. Just think about that assertion. Perhaps that was some pollyana’s assumption in 1938, but anyone who holds it today should not be wandering in public alone without an electronic ankle bracelet.

            Isn’t it the illegitimate complaints of the torlls that is the entire issue here? Isn’t it the illegitimate complaints in SLAPP suits that is driving states to pass anti-SLAPP laws?

            But if by “legitimate” you mean “legal,” and if by “legal” you mean “in compliance with FRCivP,” then I see what you are saying. And the way to remedy the problem would be to make it illegal to file bare-bones complaints in infringement cases, which is what Section 3 of this legislation does.

            As to #2: First, I don’t subscribe to your impression that most litigators don’t know right from wrong. Of course they do. None of them kick their dogs. Ever. If they were incapable of knowing right from wrong, they’d either be subject to involuntary confinement in a mental hospital or on a police force in Baltimore or NYC.

            Second, the pleading requirements of Section 3 of this legislation makes what is legal better aligned with what is right.

            I do agree with your assertion: “Unless restrained by the law, they will use anything that can be abused to their advantage.”

            Since notice pleading, more than any other procedural rule, is abused by litigious raat bags, I presume you mean that statement to be a concurrence of the idea that moving back toward code-pleading may not be such a bad idea in some areas of civil law.


              Babel, I think you got me right. I was suggesting that the people in 1938 that brought us notice pleading were acting on the assumption that the parties would more often than not be acting in good faith and not be using the high cost of litigation itself as a tool the force settlements.

              After reading your post, I began to wonder what Kool-Aid people were thinking back in the day, 1938, when they allowed such easy access to the federal courts.

              Regarding litigators, they do not seem to have any moral compunction when they take advantage of every opportunity to harass the other side in any way possible. Almost every litigation I’ve been involved in devolved into petty disputes and acrimony between counsel on each side because of this.

              I do not doubt that patent owners use the discovery process to pile on costs to the defendant in order to force them to settle. I do not doubt that the defendants do the same thing if possible. This is why defendants file as many motions as possible simply the drive up the costs of the patent owner in a similar effort to force a favorable settlement. In all of this, of course, the litigators who are being paid an hourly wage have an interest in maximizing litigation expense. These typically are on the side of the accused infringer.

              Those judges who try to limit discovery and law and motion, for example by requiring permission to file a motion, are really trying to control litigation costs and expenses. I think we should applaud them rather than denounce them as some have done here in this thread.



                As to your 1938 Kool Aid question, in a comment I posted this morning but was removed, I set forth my understanding that notice pleading Rules 7 & 8 were an attempt to remedy problems Ps were having w/ code-pleading. Collecting the facts to plead to every element of a tort and drafting the complex complaint were taking so much time that SoLs were vaporizing their causes of action before they could get to the court house. The idea of the bare bones complaint was that it makes it easier to beat the SoL, then develop the facts.

                As an alternative approach to Congress’ back-stepping to 1937, I suggested a hybrid process. Infringement P files bare-bones complaint like Form 18, which acts like a provisional patent application and tolls the SoL. Then the D moves for a more definite complaint demanding all of the details of infringement that Section 3 of the present bill now requires. P would have 6 months to respond.

                1. Babel, sounds like a reasonable compromise.

                  Do you know of Congress has considered whether a counterclaim of infringement has to have the same level of detail as an initial complaint? The 20 days to answer or to file a counterclaim seems too short to develop a full and sufficient complaint under the proposed statute. Here is where your compromise position would make a lot of sense.

                2. Very good point.

                  Infringer files complaint for DJ. According to the new Section 3, the detailed pleading requirements apply to counter-claims, so the patentee is not going to have much time to gather the facts and draft the onerous counter-complaint for infringement. Grossly unfair. I hope I’ve missed something in the new Patent Act.

                  Another good reason to file first. Another good reason not to be sending out any C&D letters.

                  If patentee is drawn into a DJ action, one would like to see the patentee be able to meet the response deadline with an answer and bare-bones counter-claim and then be given sufficient time to properly plead under the enhanced pleading requirements.


          Thanks Babel – it was a pleasure to read your response (I really do appreciate your focus on the actual question I asked).

          Follow up then: why is there a much emphasis (not to mention, cost) involved with discovery itself? If you are moving from a skeleton of “bare notice” to a point of merit to proceed, where is the cost being so heavily generated? If, as I may be so bold as to lead, the cost is so easy for the patent holder to bear in getting to a pint of “merit,” what is actually driving the disparity for the one being accused of infringement? If there even was a way to meet “half-way,” what would that even mean?

          (This is not a “trap” question – you’ve obviously given the subject some deep thought and I am interested in your viewpoint)


            anon, I put up a lengthy response to your interesting question at 11:41 am, comment

            Seems to have been removed.

    2. 10.2

      “I think Dr. Mammon would have been well advised to have pointed out that Section 3 of both the Senate and House bills cancels . . . Form 18 . . . .”

      As do the SCOTUS amendments to the Fed. R. Civ. P., which will take effect this year even absent Congressional action.

  5. 9

    Even though I think this article makes some dubious assumptions about how and when D.C. judges deal with preliminary motions that are actually attempting to get cases decided with much lower costs to the parties, at least it is substantively addressing one of the many new proposed patent law changes in the pending Senate and House patent legislation. In contrast, I have yet to see anything but unhelpful completely non-substantive rants in any comments on any of these blogs to date.

    1. 9.1

      Hopefully you have figured out by now that you are always welcome to write an article or even a lengthy comment expressing your own thoughtful, helpful and well-considered opinions about any proposed change(s) in patent law.

      Just pick a fresh Federal Circuit case, for instance, and run with it. It’s good exercise for your brain.

  6. 8

    How many actual patent cases are affected with this particular jurisdictional concern?

    How many active patents are there now?

    How many active patent claims are there now?

    How many non-active patent claims for which past damages may still be available are there now?

    What is the value of the fraction of the answer to the first question divided by the answer to any of the other questions?

    Flea’s tail

    1. 8.1


      According to the (very rough) data here: link to and, comparing that information to US census data, the number of patents in force per person in the United States appears to have approximately doubled in the past 15 or so years?

      That’s pretty insane.

      That context is probably more relevant than an abstract inquiry into the total numbers of claims in existence.

      1. 8.1.1

        >>That’s pretty insane.

        What is insane is your posts. The innovation in this country has doubled in the last 15-20 years at least.

        And, besides whatever the numbers a fixed number of patents per person is not a metric that should be used or that should held up to illustrate the failure of the patent system.

        It flows out of this blog like a fire hose.


          The innovation in this country has doubled in the last 15-20 years at least.

          Well, the number of ads that are being shoved in my face has gone up probably 30 times. Promote the progress!


            You do realize that that IS progress (and money, lots and lots of money) to Google and that such is exactly why Google is threatened with ANY future invention in that arena which would disrupt its prodigious cash flow, right Malcolm?


              You do realize that that IS progress

              Sure it is, “anon.”

              Keep telling yourself that.


                You really do seem unable or unwilling to grasp a simple point that happens not to be on your short ad hominem list, Malcolm.

      2. 8.1.2

        Respectfully Go, you are being an arse with your passive/aggressive attempt to “say” (in quotes, because you rather skirt a direct statement) that my view of a proper normative factor of the population of possible drivers for any (subtlety denigrated) court action is somehow in your view not meaningful.

        I reject your contention wholesale and reject your “polite” manner even more so as the “politeness” is a facade.

  7. 7

    Reality: You have missed taking this in context. This bill also continues to make the IPRs more and more like district court cases so that by the time a litigant is at the district court you can be sure there is a valid patent. So, —WHY—do we need all this “reform” ?

    The presumption that the patent is valid if the D when through one or more layers of IPRs should be very strong. Maybe the reform should be to remove all the defense of invalidity and make it all about infringement.

    (Now comes all the spin by the paid bloggers.)

    (Seriously DC, do you really think at this point that it is not apparent that this blog has become a forum for the large international corporations bloggers? They have bought the voice.)

  8. 6

    EDTexas will be able to come up with new shenanigans faster than Congress can counter them with legislation. I’m not sure what the counter-shenanigan to this legislation would be (if it passes) — maybe one-line orders saying “denied” with reasons to follow. Or maybe something along the lines of MM’s comment #1 on this thread — standing orders requiring parties to ask permission to file motions to transfer venue.

    Congress should take the exterminator approach rather than the whack-a-mole approach: just amend the venue statute to take patent cases out of the Eastern District of Texas entirely.

    1. 6.1

      Right, because there are these imagined problems that we must fix by making the patent system only for the large international corporations who will only use our court system when really needed.

  9. 5

    MM, You and I would agree that the patent office has done a poor job examining patents regardless of their statistics about process quality. The linked letter from Microsoft and its allies, link to, makes the same point. But they say this, “As a result, invalid patent claims are easy to get, easy to enforce and hard to invalidate in the courts.” They blame the cost of litigation and the burden of proof in court as the reason for the latter.

    Then they go on to say, “Unlike litigation abuses that have long persisted in the courts…” That floored me.

    The letter concludes, “In sum, the high number of invalid patents in this country contributes significantly to the abuse that is running rampant in the U. S. patent system.… [S]trong IPR procedures weed out bad patents and reduce abusive patent litigation.” There it is again, abusive patent litigation. What frack are they talking about? Discovery?

    However, MM, we need to prevent bad patents from ever issuing in the first place. The patent office must revise its procedures, not to benefit applicant, but to assure that the examiner has adequate time, resources and office actions in order to deal adequately with a patent application. The whole concept of compact prosecution may be “user friendly,” but it is woefully inadequate in getting the job done from the point of view of quality of the issued patent.

    But we also need is a “pre-grant” opposition just would prevent bad patents from issuing in the first place. People who make prosecution decisions will be less likely to try to sneak one by if the result will be an expensive opposition.

    The postgrant opposition we now have today suffers from the same constitutional problems as IPRs. The patent office really has no constitutional jurisdiction to cancel an issued patent. That is why the oppositions must be pre-grant. An effective way of doing this would be to officially issue the patent only after the period of opposition has expired. This should not be unduly harmful the patent owners to have only an additional nine months of delay before they can enforce their patents.

    1. 5.1

      Ned, before 1978 the UK did have pre-issue opposition, for all the reasons you espouse.

      But it was recognised when writing the EPC in 1973 that it was unfair to Inventors. So it was not included in the EPC.

      You see, it was routine, that BigCorp would file an opposition and keep it running for years, to delay issue indefinitely.

      How do you avoid that unfairness, inherent in pre-issue opposition? If by issuing the patent immediately the opposition period ends, and allowing enforcement, regardless whether or not an opposition has been filed, what benefit does your proposal bring?

      1. 5.1.1

        Max, we need, as a general matter, to extend term for any opposition or post grant proceeding. Patents are practically not enforceable while these proceedings are pending even if they are legally enforceable.

        Also, one could require any opposition to take no more that 1 year, start to finish. IPRs do that.


          “Require”? You can “require” the USPTO to finish international examination under the PCT within 28 months. In fact, you did. But it didn’t do any good. We in Europe saw it routinely, that the USPTO failed to make the cut.

          Back in 1978, when the EPO started up, it was easy to get through an opposition in a year. Look how long it takes now though. To “require” that an opposition be finished within a year seems to me as absurd as to “require” that the judge runs a mile in under 4 minutes. What is the sanction, if the thing is not done within 12 months?

          How about the imperative of doing justice, if patents under opposition are (as you assert) in practice not enforceable? Owners of good patents, the victims of vexatious oppositions, are to be denied an injunction in the USA until the outcome of the opposition at the USPTO is final? Outrageous! Compare Europe. Infringers are routinely enjoined even while opposition proceedings at the EPO are wending their way. Why not?

          anon throws up. This time the incontestibility notion from trademark law. But patents and trademarks are chalk and cheese. Trademark registrations can go on for ever. If you want not to infringe one, just choose another mark. Utility patents with broad claims issued in error by the PTO are different. Why should competitors be forever denied access to technology defined in a duly issued but in fact bad patent claim?


            Well, Max, we need the EPO to tell us how they would fix their own oppositions so that they can be less expensive and faster. Actually, requirement for speed alone reduces cost. But the EPO is in the best position to tells us what to do to make things faster and cheaper.

            For example, the opposition could be limited only to independent claims, and with no more than two grounds for each. In other words, the opposer would have to go in with their best case.

            As to a remedy for missing a mandatory time limit, if the opposition is not complete, it could simply terminate without a decision as a matter of law and the patent could be deemed granted — that is, unless he reason for missing he deadline was something the patent owner did or did not do. But that would have to be decided before the time limited was exhausted.


              Thanks Ned but I think much of what you want fixing is fixed already. Opposition at the EPO is inherently cheap and quick. The EPO considers “Requests” not “Claims” so already looks only at the independent claims. Under the EPC, there are only three grounds of opposition. If you don’t get your “best case” in before the 9 month window closes, you can’t get it in later, unless you have special circumstances, so Opponents these days do put in the best case they can, before the window shuts. If the opposition as filed is defective it is found inadmissible and dismissed.

              So why the delays? The biggest factor is the current Stand-Off between the EPO President and the independent Appeals Directorate. The President declines to put to the Administrative Council (ie the EPC Member States) for ratification the names of people waiting in line for appointment by the AC as EPO Judges. There should be 160 of them in post. Currently there are just over a hundred.

              We don’t “need” to kick the EPO. Instead we “need” to persuade the States to remind the EPO President where his duty lies. But that is a “Belling the Cat” problem. No Member State is willing, on its own, to face down the President.

              Do you know the name Sepp Blatter? Compare his machinations at FIFA with those of EPO President Benoit Battistelli. You might be surprised. Battistelli presides over a huge amount of money too. He divides it up amongst the Member States. But which one gets how much is his little secret.

              Blatter’s FIFA was exposed only with intervention by the USA. I think with Battistelli and his independent Free State of Eponia, it is much the same problem, but without the US solution.


                Max, thanks.

                Regarding the EPO president, is that post filled? Appointed? Elected? And by whom?

                There seems to be institutional structural problem if a person can maintain power indefinitely by corruption.

                1. Ned, I give you below a Link to the IPKat coverage of the “Spy Scandal” at the EPO currently being picked up by the media in Germany. President Battistelli has surrounded himself with his own hand-picked management team and recently tasked an outside firm “Control Risks” to monitor use of the EPO computer terminals that are used, inter alia, by members of the Administrative Council (AC) and by patent attorneys when on the premises (for example when they are representing clients at “oral proceedings”). It seems that one of the EPO judges used one of these terminals to send an email that was critical of EPO management and this act enraged M. Battistelli. Afterwards, that judge was escorted off the premises and remains to this day banned from re-entering the building.

                  I would encourage you to dip into the IPKat coverage of the scandal:

                  link to

                  How is the EPO President appointed? By the Administrative Council. See Art 11 of the EPC.

                  What is the Administrative Council? See Art 4 EPC.

                  The trouble is, the AC seems to be powerless to do anything.

                  Now recall once again the case of FIFA President Sepp Blatter. Despite the years-long uproar he was very recently resoundingly re-elected. How come? Because so many of the voters who elect the President approve of the way he manages the cash flow. At the EPO, Battistelli has promised to hold down costs, thereby to increase dividends to shareholders ie AC Members. Rumour has it, that a whopping cash bonus awaits him at the end of his fixed term appointment, if he has succeeded in bringing down the costs of running the EPO in line with the intimations he gave to the AC members, when asking them to vote for him.

                  Battistelli went to business school in France and fancies himself as CEO. I understand that he has Napoleonic stature and that he is rumoured to suffer outbreaks of towering rage. He is a tireless traveller and evidently enjoys his meetings with the Heads of other Patent Offices. They of course are under the control of a national Government while he alone is not. Indeed, some would say he is out of control altogether.

                  Morale at the EPO is at rock bottom. You “need” to understand that EPO employees are outside the reach of employment law of any EPO Member State. In the State of Eponia it is a case of “L’Etat; c’est moi, Benoit Battistelli”

    2. 5.2

      Ned, I think something that could be helpful would be a required damages estimate in the complaint, with teeth if the estimate is wildly off the mark. Some may say instantly that discovery is required to estimate damages, but estimates can be made independently of unit numbers, profit margins, etc. and when they simply can’t be made, there would be a test to identify that situation.

      In a royalty negotiation, even a hypothetical one, there is a buyer and a seller, and forcing the buyer to establish some price range on their wares in advance cannot but help to have a major clarifying effect on litigation.

      If a prospective plaintiff can’t even estimate the smallest salable unit or come up with some theory of what a defendant may owe prior to the suit- based on scaling assumptions, investment made, market sizes and trajectory, etc. what does that say about the quality of a patent, strength of a litigation position, etc. ?

      Example: coffee shops using Wi-Fi. What can it be worth? 10 cents per customer, for the whole thing ? 1 cent?

      Then, if such an estimate falls below a certain threshold (say $50-$100K), an alternative set of procedures could be used which include only judgment as a matter of law on infringement and invalidity.

      Only actual damages, if any, would require a jury finding. You could allow patentees whose claims were invalidated to commence an IPR themselves in order to regain them, and likewise, a defendant found liable (but not yet in front of a jury for damages) could convert the action to a standard-procedure patent case if they wish to risk the costs of that choice.

      All parties thus retain the right to a jury on the amount of liability, as well as access to an appellate procedure, which must remain cornerstone features of due process in our civil justice system.

      On the matter at hand in this thread, it seems the most meaningful recent change in motions to dismiss orbit around Alice and Section 101, which may be where the language in the proposed bill was really aiming, rather than Eastern Texas, since the bills contain additional language about venue as well as discovery.

      In this scheme, patents that represent major innovation or dollar value would be protected by the system in place today, but would be less subject to abuse against inappropriate defendants.

      What we have now, where any patentee holds what amounts to a nuclear option against everyone but the largest defendants, cannot be sustained.

      1. 5.2.1

        Martin, it is interesting the focus of the pleading reforms is infringement, not damages.

        I similarly would like an answer to be specific when invalidity is a defense — tell us what the art is, and how it discloses each and every limitation.

        Damages? We were talking about that the other day in another thread. It depends on what is claimed. The problem is the Federal Circuit will allow an improvement in a carburetor to be claimed as an improved car. This practice was permitted in Application of Bernhart where the CCPA overturned the Supreme Court case of Lincoln Engineering.

        We have seen a lot of this kind of behavior from the CCPA and Federal Circuit over the years. We were just discussing how the Federal Circuit deliberately misconstrued an amendment to the general venue statute to essential repeal the patent venue statute, something Rep. Goodlatte was incensed about when he learned of it.

      2. 5.2.2

        Martin, you seem to assume that you have a right to use whatever tech you want. Your problem arose because you didn’t respect our legal system. You wrote your software and didn’t care about patents. Had you cared you would have found out that merely publicly documenting your system would have provided enormous protection to you.

        Now you are bitter. It is also funny that you seem to think whatever there is out there should all be yours for the taking ’cause it is easy and yet you can’t even figure out how to design around that oh so easy invention.

        As the paid troll would say, beyond parody.


          So many strawmen in two short paragraphs. Go to RPX and read the filings in our case. Then come back and babble some more about what you think you know about it.

  10. 4

    The cost of discovery, which falls disproportionately on accused infringers, can motivate those accused infringers to settle patent litigation for valuations based on the cost of avoiding further litigation, rather than on the value of the patented technology.

    There’s something obscene about this statement. If you read the litigation counsel advice to big companies on how to deal with accusations of infringement by NPE’s, the SOP is “do not settle.” But this posture itself forces the lawsuit. And then the advice given by litigation counsel is “settle” to avoid further litigation?

    1. 4.1

      Ned: the SOP is “do not settle.” But this posture itself forces the lawsuit.

      People accused of infringing invalid patents are not “forcing lawsuits.”

      As far as I can tell, the relentless trolls out there who blanket the country with letters threatening to sue peopel with their junky patents are looking for something like $50,000 for a non-exclusive license. A more realistic number is about $500 but even that kind of request is “forcing a lawsuit” on a principled person who can tell a pile of garbage from a valid patent.

      Remember: the people who brought us this mess would prefer a country where everybody just “accepts” that patent litigation is a way of life if you are engaging in any kind of commerce in the US. How do we know that? They told us so. They can’t help themselves.

      1. 4.1.1

        MM, well those kind of ambulance chasers have no intention of ever suing, do they.

        But, I am talking about large companies where suit makes economic sense to the patentee.

  11. 3

    MM, is not unusual for courts to require leave to file a motion. In fact, it is standard procedure in IPRs.

    1. 3.1

      The PTAB is not a “court.” Requiring parties who haven’t missed deadlines or abused procedures to file a “motion for leave to file a motion” is somewhat arrogant.

    2. 3.2

      “Not unusual” does not mean it is allowed. See Brown v. Crawford County, 960 F. 2d 1002, 1006-10 (11th Cir. 1992) (finding the “letter briefing” requirement prior to summary judgment contrary to the Federal Rules and thus violative of both substantive and procedural rights).

    3. 3.3

      is not unusual for courts to require leave to file a motion.

      Pretty sure that depends on the circumstances. Maybe Gilstrap has some awesome, compelling reason for making defendants jump through this additional hoop. I’m not aware that he’s published one.

      As the CAFC recently noted: one of the features of 101 is that it, in many cases, it’s an easy and inexpensive to way to end litigation of the worst patents out there. For some mysterious reason, Gilstrap wants to make it less easy. Golly, I wonder why.

  12. 2

    Berkeley Law Professor Peter Menell’s Patent Case Management Judicial Guide (2d ed. 2012), explains, “it is only by knowing the details of the accused product and the relevant prior art that the parties are able to determine which claim terms need construction.”

    The patentee needs to know the details of the accused product before it can tell the public what it believes about the definite meaning of the terms in its claim? Seriously?

    And yet until very recently patentees were routinely filing dozens of lawsuits against distinct companies, alleged infringement of the same patent, and dragging those companies into Marshall Texas, home of 25,000 people and 500,000 c0ckr0aches. All this without having a fixed belief about the meaning of terms in their own claims? Fascinating.

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      MM, I think it is important for accused infringer to know what the preliminary infringement contentions are before they are forced to take a hard and fast position on which terms are dispositive and therefore must be construed. Ditto patent owners – they must know the preliminary invalidity contentions of the accused infringer.

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        Ned: I think it is important for accused infringer to know what the preliminary infringement contentions are before they are forced to take a hard and fast position on which terms are dispositive and therefore must be construed.

        No doubt because otherwise it can be impossible understand why the patentee believes its claims are infringed.

        Ditto patent owners – they must know the preliminary invalidity contentions of the accused infringer.

        Before they define the terms in their own patent? Absolute nonsense.

        The patentee brought the lawsuit. If the patentee can’t define the terms in its own claim, then the patentee is frivolously waving a piece of paper around.


          MM, they implicitly define the terms with their preliminary infringement contentions.

          What is important is to know how the infringer is construing the terms for validity purposes.

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    Speaking of everybody’s favorite banana republic and its endless, transparent efforts to keep the patent troll fun machine churning at full tilt:

    link to

    Recently Gilstrap [who hears more patent cases than any other judge in the country] published an order saying any defendant who wants to file an early motion under Section 101 “may do so only upon a grant of leave from the Court after a showing of good cause, which shall be presented through the letter briefing process.”

    Contrast with:

    Addressing 35 U.S.C. § 101 at the outset not only conserves scarce judicial resources and spares litigants the staggering costs associated with discovery
    and protracted claim construction litigation, it also works to stem the tide of vexatious suits brought by the owners of vague and overbroad business method patents. Accordingly, where, as here, asserted claims are plainly directed to a patent ineligible abstract idea, we have repeatedly sanctioned a district court’s decision to dispose of them on the pleadings.

    Maybe the hole Rodney Gilstrap is digging himself into will be deeper than the hole Randy Rader dug himself into. I wouldn’t have thought that was possible a few months ago but I’m starting to have my doubts now. Of course, we know those super serious guys in Texas are pretty good at crying in the courtroom when they get busted. Maybe we’re in for some more of that priceless entertainment that you really can’t find anywhere else.

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      Except reality: a D can now file endless IPRs and have the litigation stayed. There is no “patent troll” problem according to the most reliable source the OMB. And, except, Alice is a know it when I see it where judges can make any decision they feel like making absent any evidence or even knowledge of technology or patent law.

      But we know you have an agenda to push…and plenty of time to push it.

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