Monthly Archives: June 2011

Earlier this month, I spent several days attending the 9th Annual Rocky Mountain IP & Technology Institute. In addition to two days of excellent continual legal education and meeting many interesting people, I also spoke with in-house counsel from Microsoft and Hewlett Packard about how to limit fees in intellectual property litigation (more on that panel soon). For those who are looking for some high quality continuing legal education, that is in a beautiful location, you should come to the 10th Annual Rocky Mountain IP & Technology Institute next June. It is one of the two best CLE programs I have ever attended.

One of the excellent sessions at the conference was Scott Alter’s (of Faegre & Benson) presentation about the state and history of joint and divided infringement.  Here are some of the highlights:

• BMC v. Paymentech (2007): This case involved method claims directed to separate parties — caller, debit processor & bank. The parties agreed that no single party performed each step. The Federal Circuit said Section 271 required one party to perform every step, unless one defendant played a "mastermind" role. BMC had argued that plaintiff just needed to show participation and combined actions. Court noted that patentee could have drafted the claims to apply to a single entity.
• Muniauction v. Thomson (2008): Relying upon BMC, the Federal Circuit required that a single party perform every step of a method for direct infringement. Again, the parties agreed that no signal party performed all steps. Thomson controlled access by bidders to its system and instructed bidders about how to use the system. The Federal Circuit held that one party must exercise "control and direction" over the other parties to complete all steps. It was not enough to give bidders instructions as Thomson did to the bidders in this case. Therefore, no joint infringement.
• Golden Hour v. emsCharts & Softtech (2009): emsCharts provided billing software and Softtech provided dispatch software. They partnered together and sold their software as a single unit. The district court found no control or direction of one party over the other. But there was no discussion of indirect infringement. Regardless of joint infringement issues, the joint product may have infringed the system claims, but the system claims were not put before the jury. So, the Federal Circuit did not decide the issue.
• Centillion v. Qwest (2011): The technology at issue was a system for collecting and sending service provider (telephone) information to a customer. The claims required a data processing means and a home computer. The district court held that no single party practiced each limitation of any asserted claims and there was insufficient control. The Federal Circuit overturned the district court, holding that to "use" a system a party must put the invention into service by controling the system and benefiting from it. Without customers’ actions (using their computers to interact with the Qwest system), the system would never be put into service. Qwest did not "use" because it did not put the system into service and could not do so without a personal computer. The Court also looked at vicarious liability, but Qwest’s customers were not agents.
• Akamai v. Limelight (2010): The patent was for a web content delivery method, embedded objects (pictures) were stored on a server and tagged so that when a user requested the page, the embedded objects could be found by their tag. Limelight instructed customers to tag. Limelight’s contract also obligated customers to tag. The Federal Circuit held that when a party is contractually obligated to perform a method step, joint infringement exists. The Court also required an agency relationship between the parties or a contractual requirement before joint infringement could be found.
• McKesson v. Epic Systems (2011): Epic did not "use," but licensed its accused MyChart software. Epic was charged with induced infringement, for allegedly inducing its licensee healthcare providers to infringe. The first step of the method claim requires "initiating a communication by [a user/patient]." Parties agreed healthcare providers did not initiate the communication. There was no direct infringement, unless there was joint infringement. The only issue was whether the relationship between Epic’s customers and patients was sufficient to create an agency relationship. The Federal Circuit said no. Patients chose whether to communicate and were not obligated to do so. The doctor-patient relationship did not create either agency or a contractual obligation. The Federal Circuit also held that indirect infringement addresses any concern about joint tortfeasors that are not jointly infringing. Judge Newman’s dissent said that the majority decision made joint infringement of the claim "impossible." Newman also argued that McKesson conflicted with pre-BMC decisions.
• Akamai and McKesson are both set for rehearing en banc.  The key issue on each appeal is whether if multiple entities perform the steps of a method, under what circumstances can they be liable for indirect infringement. A majority of the judges — all but Newman & Bryson, who see inconsistency in the cases, and O’Malley and Meara, who have not decided the issue — appear to believe that the pre and post-BMC case law is consistent. So, the en banc decisions may not change the current state of the law so much as clarify it.

I spent the last several days attending the 9th Annual Rocky Mountain IP & Technology Institute. In addition to two days of excellent continual legal education and meeting many interesting people, I also spoke with in-house counsel from Microsoft and Hewlett Packard about how to limit fees in intellectual property litigation (more on that panel soon). For those who are looking for some high quality continuing legal education, that is in a beautiful location, you should come to the 10th Annual Rocky Mountain IP & Technology Institute next June. It is one of the two best CLE programs I have ever attended.

One of the highlights of the Institute was a panel of sitting and retired federal judges sharing their views on intellectual property litigation, with a focus upon patent litigation. What follows is the beginning of the highlights. There was simply too much information to digest it in a single post. So, this post begins with the thoughts from Judge Philip Brimmer (D. Col.) and retired Judge James Rosenbaum (D. Minn.). In an upcoming post, I will provide the highlights of the thoughts from the two other panelists, Magistrate Judge Boland (D. Col.) and retired Judge McKelvie (D. Del.).

Hon. Philip Brimmer (D. Col.):

• Encourages pursuing motions to dismiss for failure to sufficiently plead patent claims, but if there is an easy amendment you should confer with plaintiff first.
• In a fairly technical case, Judge Brimmer values a technical presentation. And video is the best format because he can view it in chambers several times and let it sink in. Generally, each side submits a separate video. Occasionally, one is more polished, but that does not mean it is more instructive.
• Law clerks are the critical audience for briefs. They read, digest and analyze briefs all day.
• The trend is toward applying eBay v. MercExchange to all IP cases. The Second Circuit’s recent Catcher in the Rye case, regarding Salinger’s Catcher in the Rye copyright, highlights the trend. So, as a practitioner you should not be relying solely upon a presumption of irreparable harm.
• In Colorado, there is a bias against stays pending reexams because they delay cases.

Hon. James Rosenbaum (D. Minn. Ret.):

• It is not clear whether Iqbal & Twombly apply to answers and affirmative defenses. At least in D. Minn., there is a district split. Courts of appeal need to resolve the issue more clearly, or Federal Rules need to be adjusted.
• Markman was a case that went to trial and the court’s opinion was post-trial. Having said that, the Markman process should be completed before summary judgment. Otherwise, it is difficult for parties to seek summary judgment without knowing the law of the case. Whether Markman should be early or late sees a split of opinion with religious fervor on both sides.
• He did not use technology tutorials. One of the "dirty secrets" of patent litigation is that most of the cases are not about the technology as much as accusations of lying, cheating & stealing. Even when technology was key to the case and complex, lawyers’ explanation usually sufficed.
• Do not write at the page limits.
• Do not rely upon spell check alone.
• The problem of multi-defendant cases is not new to the federal judiciary, just to the patent bar. Judges have many tools to deal with multi-defendant cases — bellwether trials, splitting defendants into groups based upon characteristics, etc.
• Remember that the vast majority of patent trials are quickly followed by an appeal. So, the trial is rarely an end.
• When thinking about IP litigation generally and settlement specifically, remember the perspective of the client who is running a business. Lawyers are almost always a cost-center and litigation creates big uncertainties. So, settlement is usually very valuable to clients.
• Hard to tell whether eBay v. MercExchange will be applied to IP cases outside the patent space. Believes that presumptions are now fairly uniformly suspect in the federal courts, e.g. the Uniloc case and the 25% rule of thumb.
• He was not a fan of ediscovery sanctions. Most lawyers have figured out how to do ediscovery. Virtually everything is in an electric form. The problem now is that everything continues to exist in digital form, which makes winnowing the information very cost and time intensive. There will occasionally be sanctions and spoliation cases, but the big issue is in whether cost-shifting is required for really burdensome discovery.