IP Litigation Blog

Flying Coach

Philip Mann — Wed, 09 Feb 2011 15:30:55 -0800

Or, "Those Who Live By The Sword..."

Here's an amusing little class action case filed in Seattle this week. Seems Coach, Inc., well known purveyors of high end handbags and such, in their never-ending zeal to protect innocent consumers from inferior (and, more reasonably priced) "knock off" goods, unleashed their New York lawyers to crack down on one Ms. Gina Kim -- a Seattle woman who had the unmitigated nerve to list a supposed "Coach" handbag for sale on her eBay account.

Showing little mercy and no tolerance for those who scoff at trademarks and the God-given right of consumers not to be deceived, Coach demanded removal of the listing, cancellation of Ms. Kim's eBay account, surrender of the offending bag to Coach, and a monetary payment sufficient to make her think twice about ever trying such a stunt again. Civic-minded eBay, demonstrating its own true mettle, cracked down harshly on Ms. Kim by canceling the listing and terminating her account. It's satisfying outcomes such as these that warm the hearts of the brave corporate warriors who protect us from such outrageous crimes.

Only one slight problem...

Turns out Ms. Kim was listing a genuine Coach bag that she owned legally and had every right (at least for now) to sell on the secondary or used market.

In her action, Ms. Kim is suing Coach for, among other things, defamation, misrepresentation of trademark infringement, violation of Washington's Consumer Protection Act and tortious interference with business expectancy. And she is doing it as a class-action case on behalf of other Washington residents who have been similarly harassed. Apparently there is good reason to think she is not alone.

My reaction? You Go, Girl!! Best of luck, and go get 'em!

Now obviously I am slightly biased and have a bit of an ax to grind. After all, I, along with others in my noble calling, am frequently accused of "misusing" the patent system and IP rights to take advantage of poor, defenseless, multi-billion dollar corporations who would never dream of using another's property for free. So when I see these same companies use their powers to crack down on the savage individuals who threaten civilization by selling their own property to make ends meet, it makes me shake my head in sadness. When I see them try this and screw up royally in the process, it brings a smile to my face.

Anyway, this is one to keep an eye on.

Who's Driving Up The Costs of Litigation? (Or, "Maybe The Recession's Worse Than We Think!")

Philip Mann — Fri, 12 Feb 2010 12:40:32 -0800

As contingent-fee lawyers and supposed "patent trolls" to boot, my colleagues and I are blamed for many of the ills that plague society. It is we -- who do not get paid unless we are successful -- who file merit-less cases, prolong litigation, waste resources, and cause innocent defendants to pay their lawyers upwards of two million dollars on average to defend themselves. It's a wonder we sleep at night.

These thoughts brought an admittedly self-congratulatory smirk to my face as I received the recent decision of the Federal Circuit affirming the District Court's denial of fees in a case we handled that never should have gone on as long as it did.

Now in fairness, we lost the case on the merits, the District Court held the patent invalid, and we took our lumps as we knew we might when we went in. No complaint there.

Not content with their victory, our opponents moved for fees. Again, no complaint as it is their right to ask.

What I do find amusing is that our opponents chose to reject our early offer of a "walk away" settlement, chose to file a hopeless appeal of the District Court's denial of fees and -- most amusingly -- traveled 3000 miles each way to deliver a futile 15 minute oral argument against an opponent who wasn't even there. (We, being the wastrels we are, elected to waive oral argument and rest on our brief.)

So there you have it. An hourly-based firm will happily spend thousands of dollars of its client's money to travel 3000 miles to argue against an empty chair, but it's the contingent fee guys who are driving up the costs of litigation.

Yeah, somebody really ought to do something about us.

And the beat goes on...

Philip Mann — Wed, 11 Feb 2009 07:13:53 -0800

A few years back I wrote about what I saw as a developing "War on Juries" in patent cases. A couple of recent incidents suggest that the war continues.

Last week we lost a hard-fought case on summary judgment. That happens, it's part of the game, and the lawyer who never loses most likely never accepts a real challenge either. But what's humorous about it is that the decision came four days after trial was originally scheduled to have begun. Given that the whole idea of summary judgment is to increase efficiency and resolve one-sided cases early on, the fact that the case could have been tried to a verdict in less time than needed for summary judgment leaves me scratching my head.

This week, the Federal Circuit (surprise, surprise) overturned yet another lower court decision in favor of a patentee. In that case, the judges concluded that the invention was "obvious" based on some sort of "common sense" inventive standard. (Guess that's kind of up there with the "we know it when we see it" standard.)

What strikes me about both developments is all the judicial lip service paid about what "the trier of fact" could and could not reasonably conclude. Rather than simply present the evidence to the actual trier of fact, i.e., a jury, the courts prefer to spend more time, effort and money guessing about what a jury could find rather than simply presenting the evidence and finding out for real.

The elephant in the room is that juries play little, if any, real role in patent litigation today. Courts still seat them (if you get that far) as some sort of quaint hold-over from the past, but as far as their decisions actually carrying any weight, well, given that virtually every important question is now an issue of law, and hence reviewable de novo by the CAFC, the sad truth is that you will win only if the handful of judges there decide to let you win.

Hope I'm wrong about this, but the handwriting is on the wall. And it doesn't look encouraging.

That Unsettling Feeling

Philip Mann — Thu, 29 Jan 2009 14:55:39 -0800

The overwhelming majority of cases settle. What varies is when, how and on what terms they do. Maybe it has to do with a weakening economy, but we're seeing a definite trend for defendants (or more likely their lawyers) to dig in their heels and fight, rather than take the sensible approach of reaching a deal.

I am not really surprised, given that every day I read of another major firm laying off 50 lawyers or, worse yet, shutting its doors. Money spent on lawyers is one of the first things cut when cash is tight, and with fewer big ticket litigation matters available to pay the rent, big firm lawyers have a powerful incentive to turn every case into something major.

How do I know?

I used to be a big firm partner working mostly the defense side and know how it goes.

The standard speech always includes an appeal to "principle" and the need to send a strong message that "we will not be pushed around." As if any plaintiff's lawyer actually takes that into consideration.

There are a lot of questions we consider before taking a case and certainly before filing a complaint. Most important is, does the case have merit? Second, are potential damages sufficient to make it worthwhile? Very important is whether the defendant can actually pay if judgment is obtained? However, one question that NEVER gives us any pause whatsoever is, "will the defendants put up a fight?" Of course they will. That is ALWAYS a possibility, and a company's reputation for defending cases vigorously simply does not enter into the calculation. Facing defense counsel and their defenses is just part of the game.

Having now been on the plaintiff's side for quite some time, I feel somewhat foolish recalling the principled speeches I once gave corporate clients regarding the need to stand up and send a strong message to the plaintiff's bar. In reality, my opponents did not care about reputations, "messages" or the perceived nastiness of defense counsel.

I understand a big firm lawyer's need to hit his numbers and bring in the cash. And fighting cases is what we lawyers do, on both sides. But rational business decisions by clients should be based on more than silly claims about "messages" and "principle" and so forth. You'd think that people smart enough to get rich in the first place would know when their lawyers are blowing smoke.

Again, the overwhelming majority of cases settle, and they usually do so when when clients wake up to where their true interests actually lie.

Houston, We Have A Problem...*

Philip Mann — Fri, 09 Jan 2009 14:20:56 -0800

Count me among the latest to question whether the Eastern District of Texas is still THE venue for bringing plaintiff's patent cases. A "Rocket Docket" it ain't.

We've filed a fair number of cases in the Eastern District over the years. Although things used to move with dispatch, in one of our latest, the first available date for a Markman hearing was June 2010. In another case, we are awaiting a Markman ruling following a hearing in April 2007.

And check out this apparently routine order we just received. Basically, it requires asking for permission before filing a whole host of motions and on its face plainly states the measures are needed "Due to the large number of patent cases pending on the Court's docket."

This is all no doubt due to the Eastern District's well deserved reputation as a fair and friendly forum for hearing patent cases. But I suppose there can be too much of a good thing. The backlogs were probably inevitable.

*Yes, I am aware Houston is not actually in the Eastern District. Just couldn't resist the cheap humor.

Signs of things to come?

Philip Mann — Sun, 24 Aug 2008 18:01:38 -0800

Just when it appears things can’t get much worse for patent plaintiffs, the Federal Circuit surprises us with a modest string of decisions actually finding in favor of patent holders.

Just one week after Muniauction, Inc. (pdf) took it on the chin by having its $77 Million jury verdict reversed (that’s reversed as in “you get zip, nada, nothing”), the boys in DC actually decided one in favor of the patentee. (pdf) What’s more they did it by upholding a summary judgment finding of infringement. Hmmm, haven’t seen that in quite a while.

On August 1 of this year, they truly outdid themselves by not only reversing summary judgment findings (pdf) of invalidity, noninfringement, and inequitable conduct (with fees thrown in to boot), but directing that the case be reassigned to a different judge on remand as well. I had to pinch myself to make sure I wasn’t dreaming. I wasn’t – six days later they did it again (pdf) (well, almost – no reassignment to a new judge this time).

Then in short order they (1) reined in a potential infringer who filed an early DJ action, (2) partially upheld a jury verdict in favor of an individual patent holder, and (3) vacated a lower court’s summary judgment finding of no infringement and no liability for damages. What’s truly amazing is that in the second of these (Voda v. Cordis), they actually upheld the jury’s finding of infringement under the doctrine of equivalents – THE DOCTRINE OF EQUIVALENTS of all things! (For you youngsters who’ve never heard of it, just ask anyone in practice before 2002. He might even be able to tell you about phlogiston too.)

Speaking of ancient history, the Eight Circuit at one time was so anti-patent they had an unbroken string of 18 or 19 decisions, each finding the subject patents invalid. Finally, and no doubt recognizing that this had not gone unnoticed by the bar, they upheld some obscure patent, probably just to get one in the “win” column for a change.

While the cynical side of me says the Federal Circuit is simply doing the same thing here, (after all, even the tightest casinos have to let someone win on occasion) I’d like to think maybe the pendulum is swinging back in favor of patentees once again.

On a serious note, what I’d truly like to think is that the work former Judges Markey, Rich and others did to deliver patent law from an arcane backwater to the forefront of law has not been wasted. There is no doubt in my mind that the law has shifted away from protecting individual inventors in recent years and that some on the Court have an agenda in that direction. Whether they will win out is unclear.

Perhaps this minor string of cases upholding patent rights signals a real change back to strong patents. Perhaps they are only a minor aberration. Or perhaps the real aberration has been the first twenty years of the Federal Circuit’s existence and that what we are witnessing now is merely a reversion of the law back to what it has been all along. I’d like to think not, but the truth is that for most of the Twentieth Century patents weren’t worth much, if anything. We’ve lived through that before and it could easily happen again. Are we heading that direction? Guess time will tell.

Mann Law Group Wins $1.3 Million Jury Verdict in Favor Of Seattle Professional Photographer

Philip Mann — Thu, 27 Sep 2007 20:19:44 -0800

Today a Seattle jury awarded Seattle professional photographer Lloyd Shugart a $1.3 Million verdict following a three day jury trial. Philip P. Mann of the Mann Law Group was lead trial counsel for Mr. Shugart.

The case arose when Mr. Shugart discovered that his client, Propet USA, Inc., a wholesale supplier of shoes, had been using Mr. Shugart's photographs beyond the scope of the license he granted. When he complained, Propet responded by filing a declaratory judgment suit seeking (1) a declaration that Mr. Shugart had no rights in the photographs he took and supplied to Propet and (2) an injunction against Mr. Shugart's attempts to sell his images.

Mr. Shugart filed counterclaims for (1) copyright infringement, (2) violation of the Digital Millennium Copyright Act and (3) loss of and/or failure to return Mr. Shugart's original images.

After finding that Propet (1) infringed Mr. Shugart’s copyrights, (2) willfully removed his copyright management information from his images, and (3) failed to return his original images, the Jury awarded Mr. Shugart $303,000 for loss of Mr. Shugart's images, $500,000 in statutory damages for copyright infringement, and $500,000 in damages for violation of the Digital Millennium Copyright Act.

John Whitaker of the Whitaker Law Group and Ms. Eryn Deblois of the Mann Law Group ably assisted at trial.

The case is Propet USA, Inc., v. Lloyd Shugart, U.S. District Court for the Western District of Washington at Seattle, Case No. C06-186 MAT.

The Ultimate Monopoly

Philip Mann — Sun, 01 Oct 2006 11:19:42 -0800

Competition in an open market is a good thing, or so we've been told. And, in an admittedly counter-intuitive way, the patent system itself promotes competition and choice by enabling small players with better ideas to compete effectively with the big boys. So why, then, shouldn't healthy competition be brought to the realm of jurisprudence? Particularly at the appellate level? Even more particularly, how about at the level of, say, the Court of Appeals for the Federal Circuit? Hmmm....

Actually, this isn't a crazy idea or even an original one with me. Recent articles such as this one and this, have questioned whether the Federal Circuit's dominance over patent law has been as beneficial as originally hoped and whether the system might benefit from additional or alternate views from sister circuits.

Personally, I have been a bit disillusioned and disappointed with the Federal Circuit in recent years. After a promising start under former Chief Judge Markey, the Court seems to have lost its way, at least insofar as developing a coherent, predictable body of law is concerned. Seriously, does anyone really know how to construe a patent claim anymore? (Oh, I know, you just apply the clear guidance of Phillips v. AWH Corporation.) Are you confident enough in your analysis to advise a client clearly and directly when millions or even billions are at stake? Can you do so without saying "however"? Or what about the "written description" requirement -- a subject near and dear to my heart after experiencing the joys of LizardTech v. ERM? Can anyone really claim to understand this stuff? (And if so, can you tell me how an originally-filed claim that was allowed and issued without amendment can somehow fail to satisfy the written description requirement, particularly in light of the supposedly binding precedent of In re Gardner, 475 F.2d 1389 (CCPA 1973)?) Do you understand it well enough to see and avoid the next twist in the "written description" requirement even before the Federal Circuit does? How about abstracts? How many of you once comfortably drafted your "Abstract of the Disclosure" secure in the knowledge that what you said in the Abstract would never be held against you in construing the claims? Think you're likely to fall for that again?

We now effectively have a system wherein twelve lifetime judges decide the outcome of virtually any patent case important enough for the parties to take that far. While I do not think any of the Federal Circuit judges is intentionally shirking his duties, Lord Acton's famous dictum does come to mind. And lack of competition does tend to make one lazy.

While the idea of "competition" among circuits might seem strange and even mildly amusing, the concept is not entirely without precedent. My understanding is that certain venues, such as Chicago, are actively competing for bankruptcy cases, much to the worry of Delaware and New York. Even in our own chosen field, certain venues are favored for patent litigation, at least among plaintiffs. And it wasn't all that long ago that the notorious Eighth Circuit was favored among defendants. Cities and states have long competed for tourists' dollars, political conventions and sporting events. Why not a bit of competition for the excitement of patent appeals as well?

On a serious level, there's much to be said for having a few hundred appellate judges bring their collective wisdom to patent cases rather than only twelve. And this is coming from someone who once enthusiastically supported the Federal Circuit and the idea behind it. With a quarter-century of experience now behind us, it's appropriate to ask whether the reality has met the promise. There's no question the advent of the Federal Circuit has been great for the patent system and those of us who've devoted our professional lives to it. But has it really lived up to its promise? I'm not sure. After a promising start toward building an understandable, predictable and largely just body of law, recent decisions read more like law review articles than accessible expositions of law meant to be understood by ordinary businesspeople and lawyers alike.

In the final analysis, most businesspeople simply want to know what they can and cannot do, and the lawyer's job is largely to tell them just that. For a while, we were heading in that direction. Then along came Markman, Festo, Cybor, Phillips and others. The mental gymnastics are certainly fun and never boring, and you can make a fine living doing this. But if the system isn't of real value to those who ultimately foot the bill, are we in danger of cutting our own throats? How long will businesses continue to pay for bright young lawyers to research and brief the minutiae of needlessly complex procedure that no one understands and the courts don't follow anyway? How long will they continue to pay for patents while the ground rules change in fundamental ways every few years?

Not that long ago, the patent system faced possible extinction because no one took it seriously. The Federal Circuit fixed that and we should all be grateful. Today, however, the principal problem is that people take it way too seriously. Perhaps it is time to take a step back and reflect on whether a single court of appeals for patent cases is the way to go. Twenty years ago I thought it was. Today, I'm not so sure. In all seriousness, this is an important question that deserves serious thought.

We Dodged a Bullet!

Philip Mann — Thu, 22 Jun 2006 11:55:41 -0800

Today the Supreme Court decided NOT to hear the LabCorp v. Metabolite case after all.

Good thing!

Patent law is confused enough already without the Good Justices weighing in on matters scientific.

A question that's always baffled me is why courts and legislatures are so quick and eager to protect copyright holders, while patents, and the unfortunates who own them, get slapped down right and left.

My admittedly untested and no-doubt biased theory is that most judges and lawyers identify far more with "writers" and "artists" than with lowly engineers, scientists and other techno-nerds who often couldn't get dates in high school (including me, alas). It's only natural, I suppose, that they still see the average book, play, Brittany Spears CD, or whatever, as a greater and more deserving creative achievement than, say, the log-periodic antenna.

The dissent in Metabolite demonstrates again that most judges have absolutely no idea of what technology actually is, how basic science actually figures in, or how technical advancements are actually made. Once again we hear the tired platitudes that Einstein's famous equation and Newton's Law of Gravity cannot be patented. But what do these statements even mean? What, precisely, would it mean to "patent" the Law of Gravity? Would it prohibit people from making selling or using it? (And, if so, how does one go about making, importing, selling or offering for sale a scientific law?) Somebody please explain.

Naturally, of course, it's only when someone makes practical use of an idea, such as Einstein's matter/energy equivalence, that patentable subject matter -- at least as defined by Section 101 -- first comes into existence. Once that occurs, why shouldn't those specific applications and uses be patentable, assuming they are new, useful and unobvious?

Turning to the facts of Metabolite and the muddled thinking of the dissenting justices, we're lucky the Court elected not to bless us with their wisdom in this case. The majority thankfully said simply that the original writ of certiorari was "improvidently granted." The dissent, however, elected to demonstrate why federal judges are rarely recruited as research scientists after leaving the bench.

In Metabolite, the inventors discovered a correlation between elevated levels of total homocysteine (whatever that is) and deficiencies of cobolamin or folate in warm-blooded animals (whatever those are -- the chemicals, not the animals). The subject claim recites a "method for detecting a deficiency of cobalamin or folate in warm-blooded animals" by looking for "an elevated level of total homocysteine." In layman's terms, this is similar to assessing someone's health by checking his temperature -- an ancient technique that is based on the natural phenomenon that there is a correlation between elevated temperature and infection. Unless I'm missing something, the basic concept in the Metabolite case is analogous and based on the newly discovered correlation between homocysteine and cobalamin or folate.

According to the dissent, this correlation is simply a "natural phenomenon." I'll accept that. What I don't accept is their nonsensical conclusion that the claimed, specific method based on this phenomenon is "unpatentable" subject matter because it uses this "natural phenomenon."

Huh?

Virtually every invention uses -- and indeed relies on -- the laws of nature and other "natural phenomena." If they didn't, their benefits wouldn't be reproducible by others and no need for a patent would exist in the first place. What's the point of patenting something if the results aren't predictable and repeatable?

And check out the other reason the dissent gives for denying a patent: "the reason for exclusion is that sometimes too much patent protection can impede rather than 'promote the Progress of Science and useful Arts.'" Got it? Your crime, Mr. Inventor, is that you invented "too much." Heretofore, most patents were denied because the inventor invented too little. But now patents should also be denied if the inventor invents "too much." Hmmmm. Guess we better add Goldilocks to the engineering staff so she can tell us what's "just right." (And while we're on the subject of fairy tales, the Court apparently thinks there is no such thing as "too much" protection when it comes to a by now geriatric cartoon rodent. But I'll leave it to someone else to figure that one out.)

Judges often have a romantic view that "inventors" (preferably mad ones!) are some sort of creative geniuses -- artists, if you will -- while real world engineers and scientists who do the actual inventing, are just overgrown grease monkeys. You see this in the "flash of creative genius," "inventive fire," "synergy" and other nonsense the Supreme Court has from time-to-time come up with to justify denying a true inventor his proper reward. (Incidentally, this is why as a plaintiff's lawyer you are well-advised to describe your client to the jury as an "inventor" or "entrepreneur" rather than merely an engineer, scientist or other such "boring" type. Jurors tend to share this bias too.)

While I thank the dissent for entertaining reading, I'm glad the full court did not get their hands on this case. I have quite enough to do keeping up with imaginary claim limitations, disappearing precedents and other mundane problems that crop up in modern patent practice without having also to worry about bull-in-the-china-shop inventors who boorishly invent "too much" and pigishly contribute more than they have any right to to human knowledge and our understanding of the natural world.

Promote the Progress?

Philip Mann — Thu, 25 May 2006 16:46:46 -0800

A recent blog entry at Patently-O discusses the economics of so-called "patent thickets" (which, I gather, is the new name for what used to be called "a crowded art"). There's quite a bit of detailed and fascinating discussion concerning, among other things, the recent ebay decision and how patent owners in such a "thicket" will act, given that injunctions are (supposedly) no longer a foregone conclusion.

As I understand it, the question is whether an extensive "patent thicket" might result in more or less patent litigation and whether the ebay case will reduce or even increase patent litigation where such a thicket exits. While I don't purport to know or understand all the economic theory behind the competing views, I was struck by what I think is a misguided emphasis among the commentators. Why all the theorizing over what effect this will have on litigation and the propensity of patent owners to sue? Why all the concern whether this will encourage or discourage so-called "patent trolls"? Is the goal of the patent system simply to make life easier for lawyers and judges? Is it to let large companies steal technology with impunity? And (to be fair all around) is it simply to provide lucrative opportunities for contingent-fee patent trial lawyers like me?

The constitutional justification for the patent system is, of course, to "promote the progress of science and useful arts" -- not to provide patent lawyers with a comfortable living or to make life easier for federal judges. The question I have (and I really don't know) is whether the patent system is or is not fulfilling its mission of promoting the progress of science and useful arts. Has anyone actually done a scientific study of whether patents do promote scientific progress and whether the profound changes in the patent system over the past twenty four years have been effective in actually achieving that goal?

There's no question that the explosion in patent and IP growth has been great for lawyers. It's also been good for companies (both large and small) and even individuals able to exploit their patents. But again, the question is whether progress in science and useful arts has actually been promoted by what has gone on and what is presently going on. Frankly, I'm not sure anyone actually cares about this anymore.

Citation To "Non-Precedential" Opinions To Be Permitted. It's About Time.

Philip Mann — Fri, 14 Apr 2006 08:52:39 -0800

One of my pet peeves has been the rule against even mentioning so-called "non-precedential" or "unpublished" opinions in briefs filed with federal appellate courts. Dennis Crouch and Law.com are both reporting that the Supreme Court has now voted to change long-standing rule and allow citation to such previously off-limits decisions. It's about time.

This whole business of "non-precedential" decisions has always struck me as both silly and dishonest. It's like saying certain historical facts and events are "non-citable" and hence off-limits for inclusion in the history books. Either something happened or it didn't. Either the court decided something or it didn't. If we are going to pay heed to the idea of stare decisis -- and there are serious questions whether we even should -- it's intellectually dishonest to gut the principle by simply pretending certain inconvenient cases were never decided.

Surprisingly, Judge Kozinski of the Ninth Circuit -- a judge whom I respect and usually agree with -- opposes the rule change and supports keeping things the way they are. In his words, "When the people making the sausage tell you it's not safe for human consumption, it seems strange indeed to have a committee in Washington tell people to go ahead and eat it anyway." True. But the real problem lies not with the committee but with the faulty sausage itself. If future litigants shouldn't have to consume the "sausage" of an ill-considered decision, why should the parties to that particular case have to eat it either?

As also reported in the Law.Com article, "Judge Alex Kozinski, the leading opponent of the rule change, said unpublished opinions were so designated for a reason: They are drafted 'entirely' by law clerks and staff attorneys." Thanks for the explanation, Judge. I'm sure that brings great comfort to whoever lost big as a result. (Personally, I suspect this procedure is also true for even the published opinions, but that's a matter for another day.)

Fundamentally, however, the problem is not with who writes the decisions and in what level of detail. The real question is whether all cases, or just some, are going to be decided on the basis of the law and facts by the people entrusted, not to mention paid, by society to do so. Or are we going to tolerate cutting corners and sweeping the problem under the rug by designating the more embarrassing results "non-precedential"? If it's ultimately a matter of overburdened courts -- and it may well be -- then we either have to provide the resources to do the job right or perhaps rethink, and cut back on, what matters should even be delegated to the courts in the first place.

Mr. Bolt Speaks His Mind

Philip Mann — Thu, 05 Jan 2006 20:02:21 -0800

Hmmm, here's an interesting comment I received today from concerned reader, john.bolt@gmail.com:

"And how does your view relate to the millions you spent of LizardTech's money on patent litigation, which was unjustified to begin with and a complete loss anyway? Can you spell hypocrisy?"

Well, I can spell a number of words, but I don't think that's Mr. Bolt's real question.

The truth of the matter is that I handled LizardTech's most recent appeal on a contingency and didn't make a dime on it. (When the company was paying, I was part of another firm and the decisions to proceed were made by others.) I took the case because I believed and continue to believe that the underlying findings of non-infringement and invalidity are wrong. I don't see the need to spell hypocrisy. I put my time, effort and money where my mouth is and came away with nothing. I'm a big boy and those are the risks in this business. But please don't accuse me of ripping-off a client.

As to the merits of the case, I don't see that the case was "unjustified," particularly in light of the fact that the Federal Circuit went LizardTech's way in the first appeal three years ago. Appellate courts don't usually rule in your favor in completely "unjustified" cases.

As to today's decision not to re-hear the case en banc, I still think the Federal Circuit is wrong and failed to follow its own precedent. But that happens. Most lawyers with experience can tell you stories of cases where courts sidestep issues and more-or-less make up facts to support the decision they want to reach. But no one has to take my word for it. The briefs are public record, and anyone who's interested can read them and decide for himself -- assuming he needs a cure for insomnia.

Anyone else...

Philip Mann — Tue, 29 Nov 2005 19:52:53 -0800

getting the sense that the patent system is facing serious problems these days?

When I got into this game in 1983, the then-newly-formed Federal Circuit was supposed to bring uniformity, predictability and even respectability to the patent system. And it did -- for a while.

Under former Chief Judge Markey, the Federal Circuit's decisions made sense. They applied and relied on written statutes -- you know, the kind actually passed by Congress and signed by the President and all. They addressed important issues of patent law and provided clear, practical answers that could be understood and applied in the future. (I didn't always agree with them, but at least you could understand and apply them.) And, most importantly, the decisions appeared to be part of a genuine effort to build a consistent, workable and fair body of law that would resolve disputes justly and promote innovation as intended by the Constitution.

Over the last several years, however, I've wondered whether we are going forward or backward. Is it just me, or is anyone else going crazy trying to figure out what the Federal Circuit is doing?

The good news is that the Supreme Court has taken up the eBay case and granted cert. The question, as I understand it, is whether courts should automatically grant permanent injunctions when infringement is found. Personally, I think they should -- exclusive use is the essence of any property right. But the real significance is the Supreme Court's willingness to provide oversight over the Federal Circuit.

Recently, too, a petition for cert was filed in the Phillips case. Dennis Crouch has a copy of the petition at his Patently-O blog. It's interesting reading. I sincerely hope the Supreme Court takes the case. The reality that any three judge panel of the Federal Circuit can effectively overrule the factual findings of a lower court without any showing of clear error and simply because the panel wants a different result, runs counter to the idea that we are a nation of laws. The petition, in what I see as a courageous move, actually notes that, having appropriated for itself the sole power ultimately to decide what patent claims mean, the Federal Circuit is unlikely on its own to give up that power -- hence the need for Supreme Court intervention. (I love it when other people have the courage to say what the rest of us are thinking!) The idea that claim construction is solely a matter of law devoid of factual underpinnings is a farce and a fraud and should be discarded. (In my view, it also runs counter to the Seventh Amendment but that's another matter. And yes, I'm aware that the Supreme Court in Markman said otherwise.)

Finally, in my own small way, I am, on behalf of one of clients, seeking en banc reconsideration [Download file] of an adverse ruling I received from the Federal Circuit last month. In that case, the Federal Circuit shot down one of our patent claims as lacking written description, even though the claim elements themselves were all indisputably described and the claim itself was an originally filed claim that was allowed and issued without amendment. I'm admittedly biased, but honestly think the Federal Circuit's ruling simply can't be reconciled with prior CCPA precedent holding that originally filed claims automatically satisfy the written description requirement and that "nothing more is necessary." See In re Gardner, 475 F.2d 1389, 1391 (CCPA 1973). The good news is that the petition has not been denied summarily as usually happens. The Federal Circuit has requested and received a response from my worthy opponents. So far, there's been no decision yet on whether to grant the petition. Given that the current law regarding the "written description" requirement is, to put it politely, confused, I am hopeful the Court will soon take the matter up en banc, preferably in my case, but if not, in another.

In Defense of Contingent Fee Patent Lawyers

Philip Mann — Wed, 14 Sep 2005 15:22:14 -0800

Many thanks to Steve Nipper, who, on today's "rethink(ip)" blog, posts a link to Joseph Hosteny's recent "Litigators Corner" article in the August, 2005 issue of IP Today. Many thanks also to Mr. Hosteny for airing some perhaps unpleasant truths about what goes on inside large law firms.

In case anyone wonders why patent litigation is so expensive, Mr. Hosteny provides some truthful and amusing insights. I chuckle because I know all too well the games that are played, having once been a large firm lawyer myself.

Big firms love patent cases (provided the client is loaded) because they are a license to print money. The opportunities for procedural shenanigans are almost limitless, what with Markman hearings, bifurcation of damages, requests for reexamination and all. And of course, it's absolutely critical to make sure you get all 50 identical copies of the same document as requested, not just the 49 actually provided. (You never know when a crucial admission might be penciled on the margin of the missing copy.) Sure there is a lot of overlap, and it might be hard for laypeople to see what these efforts have to do with anything important, but hey, what's money at a time like this?

What I've always enjoyed about contingent work is that it is lawyering in the purest form -- you don't do something unless it will realistically advance your case. Critics accuse contingent-fee lawyers of driving up legal expenses but I've never seen how that is the case -- even when I was on the other side and billing by the hour. (On the contrary, and more than once, I thought I really owed my contingent-fee opponents at least a case of wine or scotch for having helped me hit my hours for the year -- and then some.)

The truth is, today, with advanced technology, legal fees should be going down, not up. Most courts permit out-of-town lawyers to appear by phone for routine hearings. Depositions can be conducted via video to avoid travel time and minimize expense. PACER and other on-line resources make it easy to access well-researched briefs and memoranda on issues that come up over and over again. Still other on-line services make the expense and burden of a paper-based legal library obsolete too. Finally, is it really necessary that law firms be housed in the most expensive downtown real estate available? (It is, if what the firm is really selling is CYA insurance to nervous in-house counsel who will have a lot of explaining to do if a case goes south.)

The big problem for new contingent-fee lawyers is knowing which battles are, and which are not, worth fighting. It takes a bit of nerve and confidence not to waste time and effort on discovery battles or procedural matters that don't really affect the outcome of a case.

Mr. Hosteny's article is a good education for those just entering the contingent-fee field. Efficiency and economy are vital. It's also educational for those who may be on the receiving end of huge legal bills and wonder how they happen, assuming they care.

Thoughts on Lemelson

Philip Mann — Sun, 11 Sep 2005 14:06:19 -0800

So the Federal Circuit has spoken. The late Jerome Lemelson gets his comeuppance. And companies around the country breathe a sigh of relief.

Whether Mr. Lemelson goes down in history as a modern day Thomas Edison (and I've sometimes had my doubts about Tom) or as just a shrewd manipulator of the legal system, remains to be seen. But whatever your views, last week's decision in Symbol Technologies v. Lemelson is significant and may well mark the end of an era.

If you haven't already done so, I strongly recommend spending some time at the Squire Sanders lemelsoninfo.com site and poking around the history of this fascinating case. One blog entry cannot begin to cover what's available or address the issues raised. But I'll share what I think are some highlights.

The trial transcripts -- all twenty-seven days' worth -- are instructive. First, it's genuinely refreshing to run across a judge who, in open court, says things like "I really don't give a damn what his knowledge was at the time of the deposition" and "Mr. Fey, what in the hell is going on here?" (Transcript Day 9 p. 20, lines 3-4, and p. 66, line 20.) Admittedly, this was a bench trial, but I think we need a bit more of that. (I like a judge who has the nerve to say what the rest of us are thinking.)

Lemelson attorney Gerry Hosier is one of the best in the business and has a reputation for great cross-examinations. I wasn't disappointed, and thought his cross of Plaintiff's patent expert, Martin Adelman, was pretty humorous. (Transcript Day 19 pages 131-138.) Guess the lessons for experts are: (1) avoid comparing yourself to God, and (2) be careful who you accuse of being a bank robber.

On a more serious note, this case raises important issues of patent law that, frankly, I'm not sure how should be resolved. Lemelson is correct that nothing in the statutory law limits the right to file continuing applications. He is right that procedurally he has done nothing wrong. If his original disclosure supports his later filed claims, the mere passage of time should not render those claims unenforceable (at least under the pre-1995 scheme). If his originally filed specification does not support those claims, that is a defense the accused infringers should prove with clear and convincing evidence.

And yet, there is something inherently strange about introducing claims 39 years after an application is filed. While it's hard to find anything in the statutory law that Mr. Lemelson violated, most observers will sympathize with his opponents here. I wonder if that might be the reason the Federal Circuit, in my opinion, drafted its decision to address the limited, and probably unique, circumstances of the particular case. With patent terms now limited to 20 years from the date of first filing, it's likely we will never see the Lemelson situation again. Perhaps that is what the Federal Circuit is banking on.

Another issue I find significant is Lemelson's objection to the Federal Circuit's practice of prohibiting citation to or consideration of unpublished decisions. He argues persuasively that prohibiting citation to unpublished opinions runs contrary to the idea that similarly situtated litigants should be treated the same and is inherently wrong and unconstitutional. I agree. This business of pretending that unpublished decisions never happened is a dirty little secret and has no place in a nation of laws and open courts. Precedent is precedent, and you can't avoid creating history by saying in advance, "This doesn't count."

Finally, I think Lemelson's arguments against the participation of numerous supposed amici were well taken. Basically, Lemelson argued that, far from being "friends" of the court, the amici were in fact well-coordinated participants in a coalition to defeat the Lemelson patents and that their participation was a thinly-disguised way of beating the page limitation that ordinarily applies to appellate briefs. Although I agree that a weak argument is not likely to get stronger simply by being repeated a dozen times, I do think that Lemelson's objections to the participation of so many "outsiders" had significant merit.

Again, the entire Lemelson saga is something that is probably unique and may well never be seen again, at least not in the same form. Still, I can't help asking whether last week's decision was, in fact, based on sound law. Or whether, collectively, the courts simply decided that, "Well, Jerry, you may be right but we're going to rule against you anyway, because we just don't like what you're doing." Kind of brings us face-to-face with the question of whether we truly do believe in the rule of law, or whether we pick and choose depending on who is involved.

Reform, Reform, Reform

Philip Mann — Tue, 16 Aug 2005 15:01:46 -0800

Yet another article on "Patent Reform" today. To listen to some of these guys, you'd think the Microsofts, Intels, Googles and IBMs of the world are at risk of being bankrupted by small patent holders.

In case you missed it the first time, let's try this again.

A patent right is a property right. The essence of a property right is the right to exclude others. "Owning" my home means I can keep strangers and others I don't want from living there. Having a "legal" ownership right means I can call on the legal system for help (e.g. if the strangers in my house are considerably larger than I am). Similarly, if I take a chance and buy a house in a less established area, and a few years later that area gets "hot" and I can now sell it for several times what I paid, is there anything inherently wrong with doing that? (This is, after all, America...) Should the law step in and force me to "rent" my home to any stranger who wants it or, worse yet, simply breaks in and takes it? Should the law step in and force me to do so at reduced rates when that stranger is a billionaire and can easily afford what I'm asking? Why should things be different when the property is a patent rather than a home?

I don't know which of the proposed "reforms" I find most distasteful. (There are so many good choices!) At present, I think the attack on injunctions is what galls me most. If you can't keep people off your property, what makes it either "yours" or "property"?

The author of the subject article asks "why you should care." You should, but perhaps not for the reasons he thinks.

When I was an engineer, I had no intention of spending my life with a huge company. Like most of my contemporaries, I had dreams of just learning the ropes with an established company and then forming my own business around a new idea. Law school and some other things sort of sidetracked that for a while, but I'd like to think today's youngsters still share that dream. If they do, I hope they realize that strong patents, and more importantly a legal system that will enforce them even against powerful business interests, are some of the few things that might give them an even break. If so, they should be fighting these supposed "patent reforms" tooth and nail.

Time will tell.

Have We Made Ourselves Clear?

Philip Mann — Tue, 12 Jul 2005 22:48:55 -0800

Who says claim construction is difficult? Who says it's unpredictable? Nonsense! Claim construction is easy! Anyone can do it. You simply follow the clear guidelines set out by the Federal Circuit.

And where do you find those?

That's easy too. The Federal Circuit has helpfully set them out in today's en banc decision in Phillips v. AWH Corporation. Just read it -- all fifty-six pages of it.

Start with the majority opinion by Judges Bryson, Michel, Clevenger, Rader, Schall, Gajarsa, Linn, Dyk and Prost. And check out the additional views of Judge Lourie, who joins with respect to parts I, II, III, V and VI, and those of Judge Newman who joins with respect to parts I, II, III, and V. But don't forget Judge Lourie's dissent-in-part in which Judge Newman joins. And then there's the dissent from Judge Mayer, in which Judge Newman joins. But trust me, it makes sense. It really does. I'm so grateful the court has made things clear.

Seriously, I have not had a chance to do much more than skim the opinion, but my first reaction is, "you've got to be kidding." Although the shorthand description of the holding might well be that "the specification takes precedence over dictionaries when interpreting claims," if the court thinks it has somehow clarified the muddled body of law governing claim construction, it is greatly mistaken. With thirty-eight pages of "clarity" in the majority opinion alone, any moderately creative litigator can find ample support for just about any claim construction argument he'd like to advance. And at the end of the day, even though a majority of the judges claimed to agree on the law of construction, they still parted ways as to how the underlying case should ultimately be decided.

Personally, I think the dissenting opinion of Judges Mayer states far more eloquently than I can what is wrong here. In his words, "Now more than ever I am convinced of the futility, indeed the absurdity, of this court's persistence in adhering to the falsehood that claim construction is a matter of law devoid of any factual component." In a rare moment of judicial honesty, he recognizes that, "any attempt to fashion a coherent standard under this regime is pointless, as illustrated by our many failed attempts to do so."

The judges haven't asked me for advice on how to straighten out this mess, but I'll offer some anyway. How about going back to basics, as Judge Markey did so effectively in the early days of the court's existence? How about defining the scope of the patent by focusing on the words of the claims, not obscure statements in the specification? How about remembering that the Seventh Amendment still exists and once again letting juries decide the factual questions of what a patent actually discloses, what the inventor actually invented, and what his claims actually cover?

It's wishful thinking, of course, to believe the court will ever voluntarily give up its self-created power to make the ultimate decision in every patent case. Judge Mayer's dissent points out in stark terms the reality of modern patent litigation: "But after proposing no fewer than seven questions, receiving more than thirty amici curiae briefs, and whipping the bar into a frenzy of expectation, we say nothing new but merely restate what has become the practice over the last ten years -- that we will decide cases according to whatever mode or method results in the outcome we desire, or at least allows us a seemingly plausible way out of the case."

After a promising start, the Federal Circuit has lost its way in bringing stability and predictability to patent jurisprudence. Today's decision confirms that things are likely to get worse before they get better.

The Empire Strikes Back?

Philip Mann — Wed, 06 Jul 2005 17:05:55 -0800

Well, things have been quite busy around here the last month or so, with an oral argument before the Federal Circuit last month and a case going to trial in a couple of weeks. Although I haven't posted in a while, I still find time to keep up with the so-called "patent reform" efforts currently underway before Congress.

An article from the Boston Globe today indicates that there is indeed a serious effort being made by very powerful interests to undermine the effectiveness of patents for individuals and small businesses. Nothing really new here -- just the same old stuff about patent trolls and the basic unfairness of expecting big business to obey the patent laws too. The twist here is that, according to the major software companies, the semi-recent Eolas decision will have the "unintended consequence of sending more tech jobs outside the US."

Funny, I alway thought it was big companies looking for ever cheaper labor who sent tech jobs outside the US.

Understandable Patents?

Philip Mann — Thu, 02 Jun 2005 16:49:47 -0800

Dennis Crouch asks why so many patents seem indecipherable and what can be done about it? Good questions, indeed.

Always willing to speak the truth, however unpleasant it may be, I'm here to provide my answers.

In reality, this is just a variation on the ancient question why supposedly silver-tongued lawyers write in the convoluted, asinine way they do. The answer is, bitter experience demands it.

Consider: You write a simple contract wherein Bob Jones agrees to sell his house and Fred Smith agrees to buy it. All's well until Bob claims that "house" doesn't include the unattached garage -- and the court agrees. (Hmmm, better spell that out clearly next time...) Later, someone else says that "house" and "garage" don't include the tree-house in the back yard -- and again the court agrees. You get the idea. Nothing changes when patents are involved -- prudence and bitter experience suggest you better spell things out in detail.

Until that, too, trips you up.

The dirty little secret of patent prosecution is that clear statements in a patent application are anathema and the clear sign of a rookie drafter. The rules of thumb are legion: "Never use the word 'invention.'" "Never say 'is.'" "Don't call a resistor a resistor -- call it 'an impedance means' instead." The ironic joke is that the language used in patents is supposed to be that of persons "skilled in the art," but I have never once heard a real engineer ask for "an impedance means" or suggest replacing the "active element that preferably, but not necessarily, takes the form of a three-terminal semi-conductor or similar device."

But the real blame for this lies not with patent prosecutors but with a judiciary that, on the one hand, claims it is fully capable of deciding highly technical cases, but on the other refuses to develop the skills needed to do so. As long as courts can be bamboozled into thinking that manganese and magnesium are the same, and that adding 2 plus 3 is somehow completely and materially different from adding 3 plus 2, some lawyers, with the full encouragement of their clients, will continue doing so. And those who have learned the hard way what can happen when they naively assume common sense will prevail, soon learn not to make the same mistake twice. The result is the ineffable twaddle that now passes for the "full, clear, concise, and exact terms" required by law. The courts simply don't require clarity and they punish it when it appears.

On a related subject, why do we still follow the nonsensical rule that a patent claim must be a single sentence? (And yes, I'm aware that it's supposed to be the object of a sentence beginning, "I claim...") Wouldn't it be a lot better for a patentee simply to say in paragraph form, "My invention is this. It includes this. It doesn't include that. It differs from the prior art in that it has this. I consider these to be equivalents."? Why the Patent Office insists on an obscure rule that probably stopped making sense shortly after it was adopted has always left me baffled.

"Do as I say, not as I do."

Philip Mann — Tue, 10 May 2005 18:10:51 -0800

Well, well, well. After calling for "patent reform" and denouncing those who license patents without actually making a product, it seems Microsoft is hedging its bets. At least that's how it appears to a cynic like me.

Oh, I get it. This is different. They are "providing technology," while those who enforce patents without actually making a product are just "trolls." Or is it that they're "outsourcing [their] IP to those better equipped to exploit the relevant technologies" while little guys are just "abusing the patent system"? (I just can't keep this straight.) Anyway, Mr. Gates didn't get rich by being stupid. And any smart gambler looks for a hedge when he can get one. We'll see how this plays out in Congress.

(Years ago, I was a partner in a very successful firm that made sure it supported BOTH candidates in each gubernatorial election. They weren't idiots either.)