Just a quick shout-out to thank Wes Hill and Jennifer Ainsworth for putting up with me on our panel "Local Rules & the Local Rules Process. When & Why Did ED Texas Adopt the Patent Rules of ND California?" at the recent ED Texas bench/bar conference.
As you can tell, Wes did most of the talking. Jennifer and I just smiled for the camera.
I was telling someone the other day that Google was on the winning side of two patent verdicts in Marshall this summer, as well as another last year. I forgot to mention that in another Marshall case Google also obtained a case-dispositive claim construction of indefiniteness that resulted in dismissal of plaintiff's claims.
Well, I can stop feeling bad about that because yesterday the Federal Circuit reversed the dismissal, holding that the Eastern District court had erred in adopting a construction that resulted in a dismissal of the plaintiff's claims as indefinite. So yes, it just has the three jury verdicts now sans the dismissal for indefiniteness.
I am celebrating my 19th wedding anniversary sitting in the audience at the Center for American and International Law in Plano watching the 53rd Annual Conference on Intellectual Property Law. (Mrs. Smith has chosen to celebrate by not sitting in on the conference).
Particularly enjoying the panel on current trends in patent litigation by Ted Stevenson, Jeff Bragalone and Philip Philbin. They see ... wait for it ... not a lot of certainty.
Oh wait, they're starting on damages. Maybe it'll get better.
Also wanted to start putting up examples from judges who have encouraged this sort of participation by young lawyers. At left is a recent order by Judge Alsup from the Northern District of California. I'll be following up with some language from recent hearing transcripts in the Eastern District of Texas once that comes in.
As local practitioners know, ED Tex judges are well-known for coming up with new procedures to handle recurring issues in cases. From the 1991 CJRA Plan to patent rules to local rules, we frequently see different tools tried to assist chambers in handling recurring issues more efficiently.
Nor is this limited to local rules and procedures - the new discovery rule amendments that take effect next month include a suggested "best practices" provision for court conferences preceding the filing of discovery motions (anticipating judges' long-felt desire to get involved in more discovery disputes, no doubt). In preparing my seminar papers discussing the rule changes this initially struck me as odd until I realized that it was not substantively different from the "letter briefing" requirement that some ED Tex judges have borrowed from other districts to help winnow through certain prospective motions to determine which are appropriate for full briefing.
Which prospective motions? It depends on the judge and the timing - some judges use it for summary judgment motions, some for Daubert motions, and some have used it for 101 motions (patentable subject matter) filed at the early stages of patent cases. Candidly, which motions are subject to it changes as judges decide which motions are best suited for letter briefing, as opposed to, say, page limitations or numbers of motions, or other tools (trial by combat has not been used with any frequency, but magic 8 balls are on the upswing in some courts, I hear). As an aside, I keep reading people say that judges aren't allowing filing of motions raising 101 grounds without "permission", which is not correct - that provision was only for prospective motions raised until shortly before the Markman hearing, and permitted letter briefing so that the merits of the prospective motion were before the court - "permission" was a ruling on the merits of the letter brief.
Earlier today, Judge Gilstrap apparently celebrated Veteran's Day by issuing a new standing order that tries out a different mouse trap on the issue of pre-Markman 101 motions. In it, he states that "this Court recognizes that claim construction may be appropriate in properly deciding issues under 35 U.S.C. § 101 in certain cases and such may not be appropriate in other cases" and therefore "the Court, in seeking to efficiently manage its docket, believes such efficiency is enhanced by early input as to the propriety or lack thereof regarding claim construction prior to consideration of such motions."
New Certification Requirement
Accordingly, he now requires parties filing pre-Markman hearing dispositive motions under 35 U.S.C. § 101 (that is: prior to entry of the Court’s claim construction order) to include, as a part of such motions, the following certification:
CERTIFICATE OF COMPLIANCE WITH THE COURT’S 35 U.S.C. § 101 MOTION PRACTICE ORDER
The parties agree that prior claim construction is not needed to inform the Court’s analysis as to patentability. _____
The parties disagree on whether prior claim construction is not needed to inform the Court’s analysis as to patentability. _____
/S/ Lead Counsel for Movant
The meet and confer process required in advance of properly making the above certification to the Court is a little different in that requires one-on-one communication by lead counsel only (hence the "one on one" moniker). To answer the question that's on everyone's mind, no, the conference doesn't need to be in person - phone will do. To the extent such certification reflects disagreement, the parties are directed to submit a joint letter containing not more than two (2) pages from each side (four pages total) to the Court within ten (10) days from the filing of the § 101 motion, setting forth their respective specifics surrounding such disagreement, including, in particular, any claim terms that the respondent believes need to be construed, why such is needed, and what intrinsic references support such position.
No Requirement of Leave to File 101 Motions
The Court states that it will exercise its inherent power to manage its docket by considering the parties’ positions in this regard as it schedules and takes up such § 101 motions. But it clarifies that the order does not require advance leave of court to file such § 101 motions, and that the new order supersedes the provisions of current docket control orders which had required leave of court to file a § 101 motion in advance of claim construction.
I have been fortunate in recent weeks to be working with Natalie Bennett
of McDermott, Will & Emery's Washington office and others with the Federal Circuit Bar Association on a program, tentatively entitled “Training the Next Generation of Lawyers,” which will discuss (1) the role of more junior attorneys - such as the exemplar Texarkana Young Lawyers Association pictured above - in arguing before the Court (i.e., developing more/better opportunities for junior attorneys to speak during proceedings) and (2) diversity in the courtroom—especially during trial. (Actually, there probably should be limits on Texarkana young lawyers in courtrooms, but that's really more of a local issue. They look like they're having entirely too much fun there on the courthouse steps).
The FCBA intends to target a national audience for this event and is working to promote the event within the North Texas legal and corporate community. The hope is that by having corporate counsel, law firm leaders, judges, etc. come together to endorse greater attorney inclusion and participation in hearings and trials, decision-makers both within and outside of law firms will be willing to adjust courtroom strategies to create meaningful opportunities for junior attorneys, attorneys of color, and female attorneys.
I am in particular looking forward to providing a forum for judges that local practitioners know have encouraged this participation both formally and informally in practice to tell us why they do so, as well as hear what clients and firm leaders think on this subject.
The agenda and speakers list have not been finalized yet, but we expect judges from the Federal Circuit and both the Eastern District and the Northern District of Texas all playing a part during the day.
I will follow up with more details as I receive them. If you know someone that might have something useful to say on this subject, please let me know - we are still looking at potential speakers and panelists.