In June, 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 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 second and final installment of the highlights from that panel. Last week, I provided highlights from Judge Philip Brimmer (D. Col.) and retired Judge James Rosenbaum (D. Minn.).  What follows is the highlights of the thoughts from the two other panelists, Magistrate Judge Boland (D. Col.) and retired Judge McKelvie (D. Del.), with a focus on issues that matter to retailers and their supply chain.

Hon. Boyd Boland (D. Col.):

  • Until appellate courts resolve the issue, whether Twombly/Iqbal apply to answers and affirmative defenses will be judge specific.
  • Average time to trial in D. Col. is 23 months, and that is with a mindset of swift trial. Bifurcating discovery with claim construction discovery going first would significantly delay time to trial and therefore is unlikely to occur.
  • Not unusual to get a motion to amend a complaint with 800 pages of exhibits, and it is worse for complex or case dispositive motions. Judges do not have resources to read the 800 pages. You should always have in mind that you need to prepare the most compact argument possible.
  • With many magistrates the audience is only the judge because the clerk may be solely focused upon pro se prisoner matters.
  • You should always keep in the back of your mind that almost all cases settle, so you should keep that in mind in all that you do.
  • Boland tracks settlements in D. Col. Over the last several years, plaintiffs have won a slight majority of the relatively small number of IP trials in Colorado with significant verdicts. In contrast, patent settlements have averaged $130,000, with trademark and copyright significantly less. So, there is significant upside to settlement for defendants, and plaintiffs if they fall within the averages.
  • Tips for making settlements effective: Do paid up, upfront licenses. The litigation between the parties usually suggests that they do not get along well or trust each other. Ongoing obligations are a recipe for disaster.
  • Motions to stay pending reexam are disfavored, but a motion to administratively close a case with the ability to reopen for good cause after the reexam as necessary could be successful because it takes the case off of the court’s docket.

Hon. Roderick McKelvie (D. Del. Ret.):

  • Suspects plaintiffs and defendants are avoiding many Fed. R. Civ. P. 12(b)(6) motions because defendants know if they file one their answers will get one in response. Also, there is a tension with Rule 11, where plaintiff has to have done their pre-suit investigation.
  • Prefers Markman to be done along with summary judgment because it focuses his attention.
  • Began asking lawyers to submit videos of the technology. It helped with law clerk transitions (easy tool for teaching new law clerks about an ongoing case). Valued tutorials, but the parties resisted because of expense of the videos.
  • When you write briefs you have two audiences: 1) the clerks and 2) the judge. For the law clerk, you want to provide everything they need to write the opinion — technology, facts, law, key cases and supporting cases. For judge, you are showing the themes and who should win on a somewhat higher level.
  • Pay attention to the law clerk cycle: September they arrive; October their heads are spinning; by April they have hit their stride. That is the time for complex motions to be considered or for trial dates, if possible because the judge is not busy training the clerks.
  • Think about having your brief stand out by: 1) being well-written; 2) avoiding cliches; and 3) being appropriately unique.
  • One concern with multi defendant cases is the cost of the joint defense group. Also, he believes the Federal Circuit is waiting for a mandamus case on motions to transfer.
  • There is a provision of the Patent Reform Act being considered in the House right now that would prohibit multi-defendant cases where the defendants and their products are unrelated.

This post was based upon a post from my Chicago IP Litigation, revised to focus more directly on the interest of retailers and their supply chain.