In late January, I had the opportunity to attend Michigan’s 40th Annual Intellectual Property Law Summer Institute on Michigan’s Mackinac Island (a great location). As with every time I have attended Michigan’s IP Summer Institute, it was an excellent conference. One particularly interesting session was a judge’s panel including Hon. Robert Holmes Bell of the Western District of Michigan and Chief Judge Gerald E. Rosen of the Eastern District of Michigan. The panel was moderated by Professor David C. Berry, of the Thomas M. Cooley Law School who asked probing questions about how the judges perceive patent litigation and pointers for patent litigators. Here are my notes from the session:
1. How can IP litigators advocate better?
Bell: Get to know a personal injury lawyer and watch what they do in court; have them critique you.
Rosen: Echoes Bell’s point, and adds that you should also look to criminal lawyers — prosecutors or defense lawyers. They are universally good at organizing a trial around a story/theme.
Bell: Tell a story in a brief (take four or five pages, if necessary) and in argument. We are all used to stories and they help the court follow you “deep” into arguments.
Rosen: Lawsuits are like jigsaw puzzles. Evidence developed during discovery are the pieces of the puzzle and counsel’s job is to fit the evidence together to make a picture. The only difference is that you do not have a box with the picture on it to match the pieces to.
Bell: Abbreviations (particularly meaningless acronyms) are okay, but only if used sparingly.
Bell: Use demonstratives. Often seeing the device live can make a case gel as part of a tutorial or at other points in the case.
2. How do litigators balance need for making the record for the Federal Circuit & telling the story?
Bell: You should be able to do both. The record should revolve around the story.
Bell: One problem is the terminology of the patent, pointing to use of “hingedness” which is not a word in the claims of a patent before him. Patents should use King’s english, not made up words.
Rosen: The Federal Circuit is, more than any other court, a court of specialists. Rosen respects the judges, but it is a uniquely difficult court for district judges because they engage in both legal analysis and factual analysis/review. But if you are trying your case for appeal, more often than not you will be disappointed. Try your case for the jury and make your record as you go.
3. Seventh Circuit Judge Wood’s article arguing that the Federal Circuit is a failed experiment, good idea or bad?
Rosen: It is a good idea. Patent cases should be returned to the regional circuits.
Bell: Bell is not as sure. At least some patent cases should be heard by specialists.
4. How can litigants better handle troll cases to resolve the problem?
Rosen: About 60% of cases are said to be troll cases. The judge has to be educated on that. It is not unlike the class action arena where there are “bottom feeders” that are seeking to get quick settlements. Courts are good at identifying those cases.
Bell: A quick trial date is key — time is not on anyone’s side. Bell gets to trial in 12-18 months. He will give extensions, but only with good reasons, that are explained to the court.
5. What about scheduling early Markman?
Bell: Early Markman is valuable.
6. How about heightened pleading standards (claim charts, specifically)?
Rosen: Twombly/Iqbal should be the key to this. He considers it Fed. R. Civ. P. 8.5 (between heightened Rule 9 pleading and Rule 8 notice pleadings). The appellate courts should have held patent cases to Twombly/Iqbal standard, not form 18. With removal of the Forms from the FRCP, Twiqbal will likely be held to apply to patent cases.
Rosen: Sixth Circuit Judge Boggs wrote a unanimous decision last year that even where evidence is wholly within defendant’s control, plaintiff must still plead to the Twiqbal plausibility standards and you cannot meet that by amendment after receiving discovery. So, patent filings should not be fishing expeditions.
7. Any consideration of local patent rules?
Bell: It is a “dead issue” in the W.D. Michigan.
Rosen: The E.D. Michigan bench is pretty uniformly uninterested in specialized patent rules.
8. Are post-issuance patent review proceedings valuable to the process
Rosen: He is not surprised that the overwhelming number of claims considered by the PTAB are overturned.
Bell: District judges are best equipped to deal with infringement issues, but Bell is happy to leave the invalidity/prior art analysis with the Patent Office specialists. Bell is concerned that the PTO is issuing so many patents that it subsequently overturns.
Rosen: He thinks the PTAB overturning claims makes sense from the perspective of the PTAB being the technology experts, and because patent prosecution is not adversarial. So, it makes sense that more patents get through that are later overturned.
9. Should egregious NPE cases be penalized?
Rosen: He would prefer to have more discretion to penalize egregious cases.
Bell: Agrees that there should be more ability to penalize improperly filed or prosecuted suits.