Guest post by Peter S. Menell, Koret Professor of Law; Director, Berkeley Center for Law & Technology; Faculty Director, Berkeley Judicial Institute; University of California at Berkeley School of Law
Prior to the mid-1990s, patent litigation took place in district court silos. District judges managed these cases based on their general litigation background, which rarely extended to patent cases. Experienced patent litigators, many of whom also prosecuted patents, brought their technical and litigation experience to the table. As a result, each patent case reinvented the patent litigation wheel to a significant extent.
With the growth of high technology patent litigation in the 1980s and early 1990s, a new breed of general litigators entered the fray. They saw advantages to trying patent cases to juries. In addition, the newly established Federal Circuit was getting its sea legs and began to focus on the disarray. With the Markman decisions of the mid 1990s, the Federal Circuit and the Supreme Court triggered a new patent litigation era. Pre-trial “Markman” hearings to construe claims became the norm, and with that, the development of the Northern District of California’s Patent Local Rules for managing patent cases led by Judge Ronald Whyte. Although initially put forth as a voluntary case management model, practitioners quickly embraced these rules. Busy federal judges were all too happy to see the patent bar following these rules, thereby reducing the case management challenges.
It was around this time, in 1997, that I reached out to the Federal Judicial Center to offer the Berkeley Center for Law & Technology’s assistance in training federal judges in the intricacies of intellectual property law and case management. That led to a 25 year collaboration leading annual week-long training programs, panels at FJC regional and national events, webinars, and the development of the Patent Case Management Judicial Guide (“PCMJG”). These programs have educated much of the federal judiciary—including a substantial portion of district judges, magistrate judges, and bankruptcy judges—as well as involved Federal Circuit judges. At the urging of former Federal Circuit Chief Judge Paul Michel, I developed programs and orchestrated a patent investigation guide for the International Trade Commission. These efforts helped to persuade ITC administrative law judges to implement Markman hearings.
These efforts spread the wisdom of a new civil procedure framework for patent litigation. Numerous districts followed the Northern District of California’s lead, adopting patent local rules and standing orders. I also found myself working with judges in the District of New Jersey on a new branch of patent case management rules for pharmaceutical cases, which are predominantly pursued there and in Delaware. The advantages of standardized and coordinated patent case management became apparent and have revolutionized patent case management.
These programs and publications brought together leading practitioners and judges from the most active districts to discuss patent case management. The Patent Case Management Judicial Guide, now in its third edition and published by the Federal Judicial Center for judges and available for free via SSRN, has been widely used and cited. Dennis Crouch referred to it as the Bible for patent litigators. It is now commonly assigned for teaching patent litigation and is among the most important resources for newly appointed federal judges and clerks dealing with patent litigation.
Patent Case Management Goes International
I was delighted to be invited in the summer of 2020 to assist the World Intellectual Property Organization (WIPO) in developing an International Patent Case Management Judicial Guide. In conjunction with Eun-Joo Min, Director of the WIPO Judicial Institute, and Judge (ret.) Jeremy Fogel, Executive Director of the Berkeley Judicial Institute, I have worked over the past two years with leading judges from eight of the most significant industrial nations (Australia, Brazil, China, Germany, India, Japan, Republic of Korea, and the United Kingdom) to develop an international version of the Patent Case Management Judicial Guide. Judge (ret.) Kathleen O’Malley, who served as both a district judge and Federal Circuit judge, has also advised WIPO’s efforts. My colleague Allison Schmitt, Director of BCLT’s Life Sciences and Innovation Project, and I have developed the U.S. chapter. WIPO anticipates publishing the International Patent Case Management Judicial Guide by December 2022. This volume promises to promote the advantages of nuanced patent case management on a global scale, enhance the capacity of litigators and in-house counsel to assess international patent litigation, and harmonize patent systems and policies.
Patent Case Management Goes Cross-Institutional
When I agreed to collaborate on the International Patent Case Management Judicial Guide, I mistakenly thought that producing the U.S. chapter would be relatively straightforward. After all, the PCMJG was the model for the project. But as discussions with the other participants revealed, the U.S. patent system is far more extensive and complex than district court litigation. Other nations employ a variety of specialized tribunals and several treat invalidity challenges in separate tribunals. The U.S. has moved in that direction with the establishment of the Patent Trial and Appeal Board’s Inter Partes Review and Post-Grant Review authority. It was time to integrate PTAB case management into U.S. patent case management. The project illuminated the U.S.’s distinctive approaches to dealing with border control (the ITC’s Section 337 authority) and pharmaceutical patents (Hatch Waxman and the BPCIA). It also highlighted the growing importance of SEP/FRAND issues. Thus, the WIPO project has spurred better appreciation of the many dimensions of U.S. patent case management and highlighted lessons for improving the U.S. system.
As a way of harmonizing the presentation of patent case management regimes across the broad array of patent systems, WIPO developed the following template:
- OVERVIEW OF THE PATENT SYSTEM
- PATENT INSTITUTIONS AND ADMINISTRATIVE REVIEW PROCEEDINGS
- JUDICIAL INSTITUTIONS
- PATENT INVALIDITY
- PATENT INFRINGEMENT
- JUDICIAL PATENT PROCEEDINGS AND CASE MANAGEMENT
- REMEDIES
- THREATS ACTIONS
- CRIMINAL PROCEEDINGS
- ENFORCEMENT
- APPELLATE REVIEW
- BORDER MEASURES
- SELECTED TOPICS
- KEY CHALLENGES AND EFFORTS TO IMPROVE PATENT CASE MANAGEMENT
We developed a summary of PTAB case management in Chapter 2, ITC Section 337 patent investigation management in Chapter 12, and SEP/FRAND enforcement and pharmaceutical patent case management in Chapter 13. The appendix contains a chart comparing district court patent adjudication, ITC patent investigations, and PTAB Inter Partes review. The draft of the U.S. chapter can be downloaded by clicking on this link: WIPO International Patent Case Management Judicial Guide: United States.
This draft is undergoing review. We welcome comments from the Patently-O community on any aspects. Please send these comments to pmenell@law.berkeley.edu and aaschmitt@berkeley.edu.
The Future of Patent Case Management (and IP Case Management More Generally)
We are heartened to see growing interest in the study of patent (and IP) case management. Allison and I are developing a comprehensive patent case management guide that is geared for the U.S. patent system. We hope to finish that more extensive project by late 2022. I am also working with other teams of practitioners and scholars on copyright, trade secret, and trademark analogs. The trade secret project is close to fruition and we hope to release a draft this summer.
These projects help to demystify and improve the functioning of intellectual property systems, which is especially important in the United States where such matters are tried to generalist judges and lay juries. They also enable judges, practitioners, scholars, and law students to delve more deeply into the ways in which the legal system can more effectively and efficiently resolve disputes. We are grateful to BCLT, BJI, the Federal Judicial Center, and WIPO for supporting our efforts, as well as the many practitioners and judges who have shared their experience and insights.