Judicial Panel: Best Practices in IP Litigation (Part 1)
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.
