I have been on the planning committees for two seminars that will take place the last week of October, the 38th Annual Page Keeton Civil Litigation Conference presented by UT Law CLE at the Four Seasons Hotel in Austin on October 23 – 24, 2014, and the annual Eastern District of Texas bench/bar, which will take place in Plano from October 22 – 24. Not for the first time, I am reminded of the saying that "[t]ime is the quality of nature that keeps things from happening all at once. Lately it doesn't seem to be working."
On both committees, I have been advocating looking into teaching attendees how judges use technology these days, including whether lawyers need to prepare their written materials differently for judges that will be viewing them in electronic format, rather than written. (The answer is yes - attend one of the two aforesaid conferences to find out why and how).
The issue is a timely one - in fact the Eastern District's rules were amended earlier this year to provide guidance for hyperlinking cases, so the idea of making online filings even more useful is a timely one. And the sight of local judges at seminars with iPads in hand issuing rulings commando, as it were, is growing more and more common. (I recall one day a few months back where I was reading emails instead of paying attention to a speaker at a seminar and another lawyer indicated that a certain judge wasn't going to be signing orders in our case till Monday because they were out of town at a seminar. I looked to my right and there the judge was, sitting next to me happily signing away on their iPad).
This morning, I saw a new article on the subject by Nicole Black in Above the Law, A Federal Judge And His iPad, which interviews Second Circuit judge Richard Wesley. Today's article explains how Judge Wesley uses technology and likes it - the second installment in two weeks will reveal what he doesn't like. I enjoyed today's, and look forward to September's when it comes out.
While my family and I were on vacation last month, I traded emails with Justin Rohrlich, a reporter for VICE News (shown at right discussing the issue of patent litigation trends with Mr. T) who was working on a story that eventually ended up as Trolling the Patent Troll Myth. The article provides good analysis on the issues discussed in the recent 2014 PricewaterhouseCoopers (PwC) study on patent litigation, As case volume leaps, damages continue general decline.
Those in the business will probably find Justin's article interesting - I apologize for the delay getting a post on it up. I know we've all been wondering what which fool Mr. T pities on this issue. (Those of you under 40 have no idea what I'm talking about, do you? Well, that's what the Internet is for - see here.)
A couple of weeks ago I posted on Judge Dyk's order denying a section 285 is exceptional case motion in Stragent, LLC v. Intel Corp.. This morning, David Donoghue's Retail Patent Litigation blog had a useful commentary on the opinion that is worth a look.
David starts by observing that this opinion is a good place to start when preparing an exceptional case brief (which it certainly is), and then notes a practical problem with the opinion's position that the defendant's argument that the plaintiffs infringement theory was "implausible" because defendant never sought summary judgment.
"This is an interesting and troubling position for retailers," David writes (and I would add for all parties). "While there is a significant advantage in seeking summary judgment whenever possible, there are often “implausible arguments” that are not amenable to summary judgment because of potential questions of material fact, or even the timing of the motion and the Court’s time to decision relative to the trial date. So, equating a lack of a summary judgment motion with a lack of confidence in a defendant’s arguments is an unfair link, even if it is sometimes true. Hopefully, district judges will make this distinction and this will not become a standard view across district courts."
I would add one more comment to David's, and that is to emphasize that if courts held that a failure to file a motion - either for summary judgment or on a discovery issue, to dig a little deeper into the opinion - equated to waiver of the ability to raise allegations or conduct later, it would encourage the decidedly unhelpful practice, from a docket management viewpoint, to say nothing of the fees parties would have to incur, of parties filing motions on every conceivable issue simply to "preserve" the issue for possible inclusion in a fees motion at the conclusion of the case. This would be the case even when – as David points out – the party knows that the summary judgment standard would likely preclude the motion being granted, or as I would point out – the party knows that the court would expect that the issue would be worked out without filing a motion, and in the absence of a preservation consideration it would be.
Of course perhaps the issues in Stragent were particularly hyperbolic arguments that were appropriately hoisted by their collective petards because they would have been appropriate subjects for summary judgment or discovery sanctions. (Not that I ever make over the top allegations in 285 motions, of course, but I have heard it may have happened a time or two). If that was the case, then the failure to file motions would undercut the credibility of the arguments and thus be a fair observation. And there is prior case law in the district on these points (perhaps more so on the discovery motions side of the question, now that I think about it). In any event, it will be interesting to see what guidance the Eastern District courts provide in coming months to practitioners as to the issues raised in the Stragent opinion.
No, not the heavy metal band - they just had a useful logo.
Multiple opinions from ED judges in recent weeks on the subject of indefinitness under the new standard set forth in Nautilus. As you might expect, the outcomes are dependent on the specific claims at issue. As I posted several weeks ago, one court has already found all the remaining asserted claims in a case indefinite (another has found some where, but others were not), while several others in both Marshall and Tyler have found that the asserted claims were not indefinite, even under the new standard.
In multiple cases the courts did so by rejecting the argument for indefiniteness, concluding that the terms at issue were fact "easily understood" by those skilled in the art. In others the judges rejected claims that an expert was somehow not applying the new standard correctly, or characterized the argument as simply disagreeing with an expert's opinion as to what a person of ordinary skill would understand. In yet others, the court invalidated claims indicating that even absent Nautilus the claims were likely indefinite under the old "insolubly ambiguous" standard.
Procedurally, it is not clear whether Nautilus means expert declarations are more necessary than in the past- but at least one case makes clear that if they are, the provisions in the local patent rules require that they be provided under the schedule set for in the local patent rules.
MCS1676; MCS5917; MCS165; MCS3219; MCS1718
As a reminder, if anyone has paralegals in the area that need CLE, I will be conducting my purportedly lip-biting seminar on personal productivity, managing a law office, going paper-less and updating attendees on practice in local federal tomorrow tomorrow at the Summit Club in Longview. The seminar brochure is attached. Download Fifty Shades of iPad seminar
Five solid hours of ... me. What more could you ask for?
Attached is a brochure Download NTAP - Smith seminar for a seminar I will be doing for the Northeast Texas Association of Paralegals (NTAP) on Saturday, August 9 at the Summit Club in Longview. Billed as Fifty Shades of iPad it promises a "lip-biting seminar for lawyers, paralegals and office staff on personal productivity, managing a law office, going paper-less, and tips for practicing in local federal courts." Ahem.
The seminar qualifies for 5.5 CLE hours towards continuing legal association credit, and I do not anticipate attendees will actually lose ethics credit by attending (although six consecutive hours of me is always fraught with risk of some sort or other - just ask my wife). Half of the proceeds will be donated to charity, which is, after all, the least we could do.
Regular readers know that I periodically note interesting articles in the Texas Bar Journal, in part because for the past four years I have served as chair of its editorial board. I will return to the editorial board this fall for my tenth year, but this time as a member, as we will have a new chair, John G. Browning of Dallas.
John has served on the TBJ board for a number of years now, writing articles and emceeing numerous issues on a broad variety of topics (social media comes to mind, mostly because I have lifted a ton of his work for a couple of papers). But the Bar Journal is just one very, very small corner of his writing career, as he is a published author and frequent contributor (including one this week to Texas Lawyer I noticed) for publications far too numerous to mention. John recently received the 2014 Burton Award for Distinguished Achievement in Legal Writing for “Keep Your ‘Friends’ Close and Your Enemies Closer: Walking the Ethical Tightrope in the Use of Social Media,” published in the St. Mary’s Journal of Legal Malpractice & Ethics in 2013. The article was one of five law review pieces John published last year. And it's his fourth Burton Award.
I have enjoyed working with John during his time on the board, and we have had some interesting experiences together, including getting to present to a class at SMU's Dedman School of Law School after one of our editorial board meetings - during which I discovered he was an adjunct professor there. As well as another Dallas-area law school. Makes me tired just typing it.
I wish John the best of luck in his new role, and know he'll not just continue but greatly improve on the good work the Bar Journal has been doing. Kudos to incoming SBOT president Trey Apffel for picking him - he's a definite upgrade at the position!
R. David Donoghue is a patent trial attorney and partner with Holland & Knight’s Intellectual Property Group in Chicago. He maintains both the Chicago IP Litigation Blog and the Retail Patent Litigation blog, which was was created to help retailers understand patent litigation and how to drive their cases to positive resolution.
Professors John Allison (University of Texas at Austin McCombs business school), Mark Lemley (Stanford), and David Schwartz (Chicago-Kent) have published an interesting article looking at empirical patent litigation data for cases filed in 2008 or 2009 as compared to similar data for cases filed in 1998-99 — Understanding the Realities of Modern Patent Litigation. It is not a perfect data set because, as the article notes, it does not include the most recent cases, those filed in or after 2010. But it does track decisions in the 2008-09 cases through 2013 which makes the data set more recent than it could be. And regardless of whether it includes the most recent data, it is valuable for retailers to show macro trends in patent litigation. Here are some highlights and related takeaways for retailers:
Anticipation is King. In 1998-99, decided invalidity challenges (won or lost) were “overwhelmingly” based upon obviousness, to the point that although obviousness had a very low win rate, the largest number of invalidations were still based upon obviousness. For the 2008-09 data set, there were as many anticipation challenges as obviousness challenges (154 v. 149). This suggests that defendants have become more sophisticated and more cost conscious. Knowing that obviousness challenges have a low win rate, defendants are focusing their prior art challenges on anticipation. And anticipation challenges are likely to continue rising as obviousness challenges drop based upon: 1) the low win rate for obviousness; and 2) the fact that the PTAB is a far better trier of fact for obviousness arguments. The Patent Office is accustomed to complex, multi-reference obviousness challenges and is willing to invalidate based upon obviousness, making the PTAB the faster, cheaper and most successful route for obviousness challenges.
The King is Dead. Long Live the King. Indefiniteness challenges, virtually non-existent in the 1998-99 data set, have overtaken anticipation and obviousness challenges with 176 motions. And that is before the Nautilus, Inc. v. Biosig Instr., Inc., No. 13-369, __ S.Ct. __ (2014), decision replacing the “insolubly ambiguous” standard with the arguably higher standard that the patent must inform one of ordinary skill as to the scope of the term with reasonable certainty. There is some dispute about whether the standard will result in increased indefiniteness, but whether or not it does it should at least generate more indefiniteness defenses and summary judgment motions while the district courts and eventually the Federal Circuit flesh out what the “reasonable certainty” standard means.
Invalidity SJ is a Long Shot. Or at least, the motions have low success rates. 20% success for anticipation motions, 20% for obviousness, and 17% for indefiniteness. The clear winner was 54% for Section 101 patentable subject matter motions. One of the reasons for the low success rates is likely over-filing of invalidity motions. I suspect defendants who file invalidity motions sparingly only when there really is no question of fact in a necessarily fact-intensive analysis have a much higher win percentage. As patentable subject matter motions become more widespread (as they already are), we will likely see a large increase in the number of motions and some drop off in the win rate.
Invalidity Is Also a Long Shot at Trial. Invalidity win rates at trial do improve, but not drastically: 31% for anticipation; 28% for obviousness; 17% for indefiniteness. This is not surprising because the patentee enjoys the presumption of validity and jurors tend to see the Patent Office as beyond reproach, which collectively requires a very strong invalidity case and presentation to overcome. These statistics are another indication that retailers should strongly consider Patent Office proceedings to challenge patent validity.
Patentees Lose Most of the Time. While invalidity decisions have relatively low success rates (at least for now), patentees only win 26% of rulings on the merits. This is because defendants win 54% of noninfringement motions, and if you include noninfringement stipulations after claim construction, the percentage raises to 57%. And of course, the patentee has to win every issue to succeed. So, the noninfringement and invalidity rulings are largely additive, with some limited overlap when a court decides motions together on multiple issues.
Forum Matters. The article analyzed win rates which suggest that, patentees fair best in E.D. Texas and D. Delaware (the two biggest patent districts), as well as S.D. New York. Conversely, patent defendants are most successful in C.D. California, N.D. California and N.D. Illinois.