Philip Brooks' Patent Infringement Updates

Patent Pending

The following is excerpted from an article by Rachel M. Zahorsky that appeared in the January 2010 print issue of the ABA Journal:

A plan to help some federal judges wade deeper into the pool of patent cases is awaiting U.S. Senate approval—just like it has for two congressional sessions.

H.R. 628 was reintroduced by Rep. Darrell Issa, R-Calif., and Rep. Adam Schiff, D-Calif., in January 2009, and the House has passed it twice. It now sits in the Senate Judiciary Committee, where it has been since March.

The bill would authorize $5 million annually to establish a 10-year pilot program in at least five U.S. district courts that deal with the largest number of patent cases.

Read the full article and reader comments here.

See also an article titled, "Should The United States Designate Specialist Patent Trial Judges? An Empirical Analysis of H.R. 628 In Light of the English Experience and the Work of Professor Moore" by Donna M. Gitter in the May 15, 2009 issue of The Columbia Science and Technology Law Review. "This Article concludes that designation of specialist patent trial judges among the federal district court judiciary is likely to reduce the high appellate claim construction reversal rate, based upon an empirical analysis of the appellate claim construction reversal rate in England, which has specialized patent tribunals."

Complex Patent Suits: The Use of Special Masters for Claim Construction

The following is excerpted from the above-titled article by Neil A. Smith (partner with Sheppard, Mullin, Richter & Hampton LLP) from the September/October 2009 print edition of the American Bar Association's Section of Intellectual Property Law's Landslide:

When a complex patent infringement case arises, it can be in the client’s or the court’s best interest to bring in an expert on patent law and technology—as a special master—to assist the judge. Special masters can provide value to all parties in complex patent litigation by contributing in the area of most complexity and importance: claim construction. Even though claim construction is reviewed de novo on appeal by the Federal Circuit, a recent study commissioned by the Federal Judicial Center has shown that claim constructions in complex patent cases stand up better on appeal when a special master was involved in the process.

The use of a special master in patent litigation is now an established practice. Since the founding of our government, U.S. courts have had an inherent authority to appoint special masters. Federal courts, where patent cases are exclusively held, enjoy statutory authority, under Federal Rule of Civil Procedure 53, to appoint a special master—though the question of whether recent changes to Rule 53 supersede a court’s inherent authority to appoint a special master is debated. Rule 53 empowers a judge to appoint a special master (1) upon consent of the parties; (2) to hold a trial proceeding and make or recommend factual findings on issues to be decided without a jury under “some exceptional conditions”; or (3) to address pretrial and post-trial matters that an available judge or magistrate judge could not effectively and timely address. However, courts prefer to assign a special master only when the parties agree, particularly because the parties may bear and share the special master’s cost.

Who are the special masters, and what experience and education do they have? Some persons serve as special masters occasionally and others serve more regularly. The recent study commissioned by the Federal Judicial Center suggested that nearly all individuals serving as special masters were attorneys possessing strong technical and legal training who often had previously served as law clerks to judges on the Federal Circuit. Special masters also possess substantial professional experience, having, on average, spent about years after law school in a variety of highly enriching legal contexts relating to patent and technology, and many have advanced degrees in law.30 Special masters, as a result, can add great value to a complex patent infringement case.

The full article is available to Section members here (or by subscription or purchase of this individual issue of Landslide for non-members).

Judge Emphatically Denies Motion to Continue Markman Hearing in Hydro-Quebec v. Valence Case

Judge Sparks in the Hydro-Quebec v. Valence Technology, Inc. case (No. A-06-CA-111-SS) in the US District Court for the Western District of Texas, Austin Division issued the following order on October 14, 2009:

BE IT REMEMBERED on this day the Court reviewed the eight volumes of pleadings in the above-styled cause, and further noting that a stack of pleadings consisting of thousands of pages and arising over 14 inches above the undersigned's desk, received a Motion to Continue the Claim Construction Hearing Before the Special Master [#137] on November 2-3, 2009, and thereafter, enters the following:

The Motion to Continue is DENIED. This lawsuit was filed on February 14, 2006, almost three years ago. As a result of agreed extensions to answer different types of negotiations between the parties and the plaintiffs bringing in new parties, it was not possible to set an order scheduling a Markman hearing until September 9, 2006, when one was entered setting the Markman hearing for February 27, 2007. However, on January 10, 2007, this Court entered an order staying proceedings until July 10, 2007, at the request of all parties as there was a reconsideration of some of the patents involved in this lawsuit by the Patents Office. The stay was continued by order of July 18, 2007, at the request of the then-existing parties. Then after an exhaustive onslaught of pleadings, motions to dismiss, motions for summary judgment, and motions for partial summary judgment was filed and determined, ultimately, another order was entered for the Markman hearing for June 23, 2009. However, as a result of an agreement between the parties, it was reset for July 29, 2009. Thereafter, by agreement of all the parties, it was reset until November 2, 2009. The order setting the Markman hearing for this date was entered on July 28, 2009, over three months in advance of the hearing date. Now counsel for the plaintiffs requests another continuance because of scheduling commitments, and the answer is an emphatic "No."

The undersigned is blessed with one of the heaviest civil dockets in the country, including other patent cases. This case will proceed and will proceed with the Markman hearing on November 2-3, 2009. If counsel cannot arrange to attend, then the plaintiffs must obtain new counsel.

Thanks to the reader who provided the order (Download 144).

Intel v. Wi-LAN

Wi-LAN provided the following September 4, 2009 litigation update on the above patent infringement case in the Northern District of California:

Intel files its Opposition to Wi-LAN’s Motion for Certification of Interlocutory Appeal of the June 4, 2009 Order of U.S. District Judge Ware, returnable for a hearing before Judge Ware on September 28, 2009. Intel opposition to Wi-LAN motion for interlocutory appeal 

U.S. District Judge Ware issues the First Patent Scheduling Order and a Notice of Intent to Appoint a Special Master to assist in the management of this lawsuit. The Order sets out the following deadlines:

1. Parties to file a stipulation regarding third party disclosures in Wi-LAN, Inc. v. Acer, Inc., et al., No. 2:07-CV-473 (E.D. Tex.) on or before September 11, 2009

2. Parties to file any objection to the appointment of Tom Denver as Special Master on or before September 14, 2009

3. Wi-LAN to deliver infringement contentions to Intel as to certain patents by February 1, 2010

4. Intel to deliver invalidity contentions to Wi-LAN as to certain patents by March 8, 2010

5. Parties to present a Case Tutorial to U.S. District Judge Ware on February 19, 2010 at 9:00 a.m.

Obtain the First Patent Scheduling Order and other documents here.

Example of Special Master Assignment

By Order of the Court, Blank Law & Technology was appointed Special Master to interview both Plaintiffs and Defendants to determine whether Defendants’ destruction of file servers containing project data in a patent infringement case was willful and whether such destruction prejudiced Plaintiffs’ case.  Blank Law & Technology established willfulness through the recovery of instant messages concerning the destruction, and rebuilt the servers so that data could be retrieved, thus avoiding irreparable prejudice to plaintiffs. 

Approximate Cost = $250,000.  See more examples here.

Special Masters and E-Discovery: The Intersection of Two Recent Revisions to the Federal Rules of Civil Procedure

The above-titled article by The Honorable Shira A. Scheindlin and Jonathan M. Redgrave appeared in the November 2008 issue of Yeshiva University's Cardozo Law Review.

This article will address the fortuity of two recent revisions to the Federal Rules of Civil Procedure. The first, which occurred in 2003, was the much-needed update of Rule 53, governing the appointment of special masters. This rule revision was undoubtedly intended to expand the use of masters in new directions in order to assist courts in coping with ever-increasing caseloads and in addressing difficult issues that require disproportionate judicial attention and expertise not otherwise available to the court. The second revision, which took effect in late 2006, updated the discovery rules (Rules 26 through 37 and Rule 45) to take account of the digital revolution that has resulted in the overwhelming majority of records being created and maintained in an electronic format. These rule changes can and should have a synergistic effect. In this article, we will first address the revisions of both Rule 53 and the discovery rules, we will then survey the use of special masters in the burgeoning world of e-discovery, and we will conclude by suggesting the appropriate uses for such masters with particular reference to both legal and technical issues. We firmly believe that court adjuncts in this field are both necessary and desirable, particularly when used in thoughtful ways.

Read the full article here.

Special Master Declares Reverse Payment Legal

Diane Bartz reporting for Reuters on February 4, 2009 writes:

Schering-Plough Corp (SGP.N) and Upsher-Smith Laboratories won a battle in a class action fight over K-Dur 20 on Wednesday when a special master recommended that a class action lawsuit against the two be dismissed.

The special master recommended that the U.S. District Court for the District of New Jersey dismiss the fight over the potassium supplement on summary judgment.

The battle is focused on whether it was legal for Schering to settle patent litigation with Upsher and ESI Lederle, which had sought to bring out generic versions of K-Dur before Schering's patent expired. Under the settlement, Upsher and ESI delayed entry into the generic market, the plaintiffs contended.

Read the full article here.

In U.S., Expert Witnesses Are Partisan

I received an email yesterday from the Expert Witnesses Committee of the American Bar Association that mentioned an August 11, 2008 article published in the New York Times by Adam Liptak titled, "In U.S., Expert Witnesses Are Partisan."  The article suggested that partisan experts may not be the best way to resolve issues at trial.  The article identified two alternatives:  a) empowering the judge to select a neutral, independent expert to testify; or b) allowing the partisan experts to testify together and to respond directly to each other (so-called "hot-tubbing").

The following are excerpted from Mr. Liptak's article:

Judge Denver D. Dillard was trying to decide whether a slow-witted Iowa man accused of acting as a drug mule was competent to stand trial. But the conclusions of the two psychologists who gave expert testimony in the case, Judge Dillard said, were “polar opposites.”

“The two sides have canceled each other out,” the judge wrote in 2005, refusing either expert’s conclusion and complaining that “no funding mechanism” existed for him to appoint an expert.

In most of the rest of the world, expert witnesses are selected by judges and are meant to be neutral and independent. Many foreign lawyers have long questioned the American practice of allowing the parties to present testimony from experts they have chosen and paid.

...a new way of hearing expert testimony that Australian lawyers call hot tubbing.

In that procedure, also called concurrent evidence, experts are still chosen by the parties, but they testify together at trial — discussing the case, asking each other questions, responding to inquiries from the judge and the lawyers, finding common ground and sharpening the open issues.

England has also recently instituted what Adrian Zuckerman, the author of a 2006 treatise there, called “radical measures” to address “the culture of confrontation that permeated the use of experts in litigation.” The measures included placing experts under the complete control of the court, requiring a single expert in many cases and encouraging cooperation among experts when the parties retain more than one. Experts are required to sign a statement saying their duty is to the court and not to the party paying their bills.

American judges are generally free to appoint their own experts, but they seldom do.

Read the full article here.

Use of a Special Master for Patent Claim Construction

Don W. Martens of Knobbe, Martens, Olson & Bear, LLP cites Judge John Shepard Wiley, Jr. from "Taming Patent: Six Steps for Surviving Scary Patent Cases":

When a patent infringement case is of monstrous scale, able parties gear up to meet the challenge.  District judges should consider doing the same.  One option is a patent special master: an experienced litigator who can supplement the regular court staff for a particularly demanding case.  The parties fund this attorney, who ideally should have the savvy and work ethic to help a beleaguered district judge pacify an unruly beast.  The rubric of "special master" is a means to this end.  Judges have an undoubted power to seek consent for such special master proposals, and parties commonly go along with bench suggestions about special masters.  The patent special master idea thus is promising and practical.  In the right case, it is worth a try.

Mr. Martens writes:

1. The special master is experienced in construing claims and trained in technology generally, even though not necessarily in the specific technology involved;
2. The parties usually are involved in selection of the special master;
3. The parties have much greater control over where and when the hearing will be held, and how long it will last;
4. The parties, or the court, can specify the date by which a decision must be made; and
5. Generally, an experienced patent lawyer is more likely to come to the right decision, and be upheld on appeal.

Read the full article here.  What is your experience as or with special masters?  Please provide your comments.

Ohio Experiments With Business-Only Courts

The following is excerpted from a September 17, 2008 editorial of The InterMountain:

Beginning next year, two judges in each of five very populous counties in Ohio will become specialists in business cases. Their courts will exist as business-only venues for four years, during a pilot program authorized by the General Assembly. After legislators have evaluated the trial run, they can decide whether to make the system permanent.

Business-only courts would deal solely with disputes among companies and involving commercial issues such as patent infringement, insurance disputes, etc. Such matters can be quite complex, and that is one reason why specialty courts have been suggested. Their judges could be educated more intensively in business law and, by handling it exclusively, would develop more expertise than is available from all-purpose courts. Another advantage of business-only courts is that they can speed up litigation and other resolution of disputes.

It will be interesting to see whether these courts also employ special masters.  Read the full editorial here.