Late last month, I attended the 11th Annual Rocky Mountain Intellectual Property & Technology Institute.   I have attended and spoken at the Institute for the last three years.  In part because the excellent team running the Institute finds ways to reinvent it each year, it remains one of the top two legal CLE conferences in the country.  I hope to see you there next year.

One of the constants at the Institutes is the judicial panel.  And this year’s panel did not disappoint, continuing the tradition of frank discussion by prominent jurists.  This year the discussion centered around trying IP cases to judges and juries.  Here are the key take-aways from each of the four federal judges:

Chief Judge Marcia Krieger (D. Col.)

  • Your case will be decided by a jury in every instance, the only question is whether it is a jury of twelve, ten, eight or one.
  • Patent litigation has three focal points to choose from:  1) trial outcome — the result at the trial level; 2) cost, inconvenience and delay; or 3) appellate outcome.
    •  The decision between a jury of twelve or one may changed based upon your focal point.
    • If you are looking at trial outcome, you may choose the judge because you want a rational outcome.  But Judge Krieger’s experience is that juries come to rational outcomes as well, particularly where judges and juries help them get there.
    • The cost and expense of trying a case to a jury of twelve is often greater than trying to a jury of one.  There are no shortcuts with a jury.  There can be with a judge — reading transcripts, post-trial briefing, trying cases on non-consecutive days around other schedules, etc.
    • For appeal purposes, it is far more difficult to get a jury verdict overturned than to overturn a judge’s verdict.  With a jury verdict, the focus on appeal is finding judicial error that infected the jury’s verdict.  That is a difficult standard.  Fed. R. Civ. P. 52(a) requires a judge hearing a case to make specific findings of fact delineated from its conclusions of law.  The Federal Circuit can then review legal findings de novo and factual findings for clear error.
  • The idea that one or more jurors take over the decision-making process does not bear out in practice.  They tend to work collaboratively.

Chief Judge Gregory M. Sleet (D. Del.)

  • Judge Sleet largely agrees with Chief Judge Krieger’s analysis of the jury of twelve versus the jury of one, and the three focal points.
    • Judge Sleet has only had a very few cases in which he disagreed with a jury verdict in a patent case.
    • It is a relatively recent change that patents are tried to juries instead of to the bench.
  • It is dangerous to challenge invalidity, but juries do find patents invalid.
  • Judge Sleet agreed with Judge Grewal that the jury is still out on whether the PTO will finish the new PTO review procedures in the twelve to eighteen month period.  If they do, it will likely increase the percentage of stays that are granted.  Judge Sleet also noted that the Federal Circuit’s Chief Judge Rader recently also raised doubts about whether the examinations will be completed in the planned timeframes.
  • Judge Sleet agreed that jurors tend to all be actively involved in deliberations and that, from his post-trial jury discussions and looking at juror notebooks post-trial, juries tend not to be led by a single strong-willed juror.

Judge Paul S. Grewal (N.D. Cal.)

  • Judge Grewal is an MIT grad.  Does the judge versus jury change when you have a judge with technical expertise?
    • It is the rare case where you have a judge with a technical background and that judge’s technical background squarely fits your case.
    • Judge Grewal tried his first patent case to verdict last year and took the verdict away from the jury.  He agrees that juries try hard to get the facts and law right, but IP trials put extra strains and demands on juries.
    • There is a power in collective deliberation.  A group of nine or ten usually gets things more correct than a group of one, regardless of the relative experience and background of the two groups.
  • Do the new PTO review procedures (many with time limits) change your views on stays pending examinations?  “It depends.”  Extensions are available and there has not been time yet to see if they really get done in twelve to eighteen months.  Judges are currently skeptical, but if they really get done in that period, it may increase the percentage of stays granted.

Judge Craig Schaffer (D. Col.)

  • In Colorado over the last 11 years, there have been only 21 IP cases tried to juries.  Plaintiff won 19 out of 21 times.  That is less than .1% of IP cases being tried to juries, but when they do plaintiffs win 90% of the time.
    • [My side note:  This incredible win percentage could explain the recent increase in patent litigation filings in the District of Colorado.]
  • Only about 50% of D. Colorado jurors have a technical job or degree.
  • Plaintiff has a powerful opening position just by opening with the presumption of having been granted a legal right.  Defendants must look to how to neutralize that advantage.
    • If your defense strategy is to win on invalidity, a defendant has to “hit it out of the park.”  There could be a “significant blowback factor” because a failed invalidity challenge could be viewed by a jury as an unfair attack on a government granted right.
  • In light of the extreme success rate in Colorado and the theory regarding the power of the patent grant, there is a good argument to be made for seeking review before the PTO or other administrative proceedings.