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Patent Practice Professional Liability Reporter

Your Pacific Northwest Law Firm

The Dire Consequences of Misleading Patent Examiners and the Court During Patent Prosecution and Litigation

Posted in Expert Witness, Inequitable Conduct, Inventor Witness, Patent Litigation

As the summer winds down, vacations recede in the rear-view mirrors, and the “school” year begins, two recent cases offer a refresher course in the dire consequences awaiting  inventors who misrepresent prior art during patent examination proceedings, and for patent litigators who misreport the nature of potential witness testimony in federal district court trials.  The facts and outcomes of these two cases are extreme,  but noteworthy as cautionary tales.

The Apotex v. UCB Federal Circuit Case

On August 14, 2014, the Federal Circuit issued a precedential decision in a long running case regarding Apotex’s U.S. Patent No. 6,767,556.  It is entitled “Pharmaceutical Compositions Comprising Moexipril Magnesium” and was invented by Apotex’s founder, Dr. Bernard Sherman.  Apotex is the largest producer of generic pharmaceutical products in Canada.

The Federal Circuit affirmed the district court’s ruling that the ’556 patent is unenforceable due to the inequitable conduct of its inventor. Continue Reading

Credibility Challenges Posed by the Eccentric Inventor Witness

Posted in Inventor Witness, Patent Litigation, Pretrial Discovery

Eccentric inventors can be their own worst enemies at depositions and on the witness stand at trial.  General Electric Co. v. Wilkins  (Fed. Cir., May 8, 2014) is a recent case on point.  The General Electric case involved a single issue: whether Thomas Wilkins was an omitted co-inventor of certain patented wind turbine technology.

The judge presiding over the omitted inventorship trial described Wilkins as “one of the worst witnesses I have ever seen.”  Since judges are acute observers of human behavior, this statement is extraordinarily powerful. What prompted it?

Wilkins is a classic eccentric inventor.  He refused to take a deposition oath without imposing arcane qualifications that made sense only to himself.  He also concocted an artificial, schizophrenic distinction between his persona as a litigant—in which case he had to be addressed as “Thomas Alexander Wilkins”—versus his everyday identity as simply Thomas Wilkins.  Insisting on a dual witness identity is a sure sign of a deponent about to go off the rails and a witness you’d never want on your side at trial.

If the stakes in this case were not so significant—a very valuable patent being fought over by the likes of General Electric and Mitsubishi Heavy Industries—the resulting court decisions in the Wilkins case would be the stuff of legal comedy.

But Wilkins is neither the first nor last inventor to exhibit odd behavior.  Caricatures of inventors as mad scientists about in literature and real life.  For example, the foibles of the famed inventor Nikola Tesla are legendary; he preferred to do everything in sets of three and spent much of his time feeding pigeons.[1]  Such eccentricities, however, can turn otherwise competent inventors into laughingstocks on a witness stand, post-trial.

How to Lose a Case With Your Eccentricities

Imagine a deposition that begins as follows:

Reporter: Please raise your right hand.  Do you solemnly affirm to tell the truth, the whole truth and nothing but the truth?

Defendant [Mr. Wilkins]:  Without prejudice and a full reservation of rights, I will hold all parties here, all agents and groups of agents, in their full commercial liability, including you.  What is your name and who do you work for?

Reporter:  I’m not here to answer questions.  I’m just swearing you in, doing my job.[2]

The interchange becomes even stranger when Wilkins responds to opposing counsel’s attempt to ascertain his reservation of rights in answering deposition questions:

Mr. Hanlon [opposing counsel]:  Mr. Wilkins, you’re here to give a deposition pursuant to court orders.  I don’t have to make any agreements [with] you to proceed with [this] deposition, and I decline to do so.

Defendant [Mr. Wilkins]:  Are you referring to me?

Mr. Hanlon:  I am referring to you sir.  How would you like me to refer to you.

Defendant:  Thomas Alexander Wilkins.[3]

After a second attempt to administer the oath at the deposition, Wilkins continues with his out-of-left-field answers that appear to be the childhood equivalent of “crossing your fingers behind your back”:

Mr. Hanlon:  Mr. Wilkins, do you understand that you’re under oath?

Defendant:  Please define your term “understand.”

Mr. Hanlon:  Are you under oath to tell the truth, the whole truth, and nothing but the truth in this deposition?

Defendant:  Okay.  I am not Mr. Wilkins.  I’m Thomas Alexander Wilkins.  Offer right back to you.  As far as truth, the whole truth, and nothing but the truth, I’m stating, without prejudice and a full reservation of rights, I do.[4]

Wilkins’ squirrelly deposition answers had an immediate impact.  The court ruled that he could not offer testimony in opposition to the plaintiffs’ motion for a preliminary injunction.  Suffice to say, Wilkins lost that motion handily.

In a motion for reconsideration, Wilkins buried himself into an even deeper hole with the court.  In a supporting declaration, Wilkins criticized the presiding judge for making “an obtuse and overly assumptive statement about my intentions in reserving my rights” and the court’s “bizarre granting of [General Electric’s] request” for a preliminary injunction. Wilkins Decl.,§§ 5, 88.

Instead of supporting Wilkins’ criticisms, in fact the transcript of oral argument shows that the presiding judge evaluated Wilkins’ qualified oath and compared it to other cases involving similar issues.   Wilkins objected to being compared to other eccentric individuals who refused to take unqualified testimonial oaths, but he directly invited such comparisons.  The court granted Wilkins an opportunity to provide legal support for his position.  He couldn’t provide any justifying his peculiar spin on the normal deposition oath.

Wilkins’ credibility fared even worse during a six-day bench trial:

Mr. Wilkins further undermined his own credibility while testifying at trial.  First, the Court found many of Mr. Wilkins’ responses to basic questions purposefully evasive.  [Citations omitted.]  Second, Mr. Wilkins was repeatedly impeached during cross-examination, to the point where the veracity of even simple answers were called into question.  [Citations omitted.]  Third, having observed Mr. Wilkins’ demeanor during examination, the Court is left with the firm impression that Mr. Wilkins is a game player who was more concerned about gaining personal advantage than testifying truthfully.[5]

The court concluded that “Mr.Wilkins leaves this case with no credibility. He was a purchased witness/party, and whether or not that was the intent of Mitsubishi, clearly that was the result.  His bias is only paralleled by his attitude that this is all a game.  His definition of the truth seems to be that which personally will benefit him the most.”[6]

Wilkins could not “reinvent” himself as a credible witness, and his co-inventorship claim cratered as a result.

Eccentric Inventors Historically

A closer reading of Wilkins’ reconsideration declaration is illuminating.  He felt his arcane oath qualifications were necessary because of his belief that General Electric and its counsel were dishonorable characters.  The irony of Wilkins’ position is that his meaningless revised oath is what actually undermined his claim.  A stipulated protective order—as was later entered in the case—would have served his intellectual property protection purposes much better than a testimonial oath nobody really understood, but which served as a bulls-eye for undermining credibility.

Wilkins’ paranoia that others (especially corporations) would covet and steal his inventive work given any opportunity to do so is not an uncommon reaction to our complex legal system.  Indeed, it could be a common personality quirk of inventors, sociologically speaking.  Such beliefs find deep roots historically.  A Scientific American article—entitled “Eccentric Inventors”—echoes this same theme of inventor exploitation.  First published over 140 years ago (in 1873), the Scientific American article still rings true today:

As a class, they are looked upon as enthusiasts, fanatics, seekers after will-of-the-wisp theories, until some day the public wakes up to the fact that one out of a million has immortalized himself and conferred incalculable benefits on the human race.  Then, if it cannot crush him or deprive him of the results of his labors, it bows down to him, pours gold in his pocket and complacently absorbs his glory under the grand title of our national genius.  Meanwhile, the other nine hundred and odd thousand continue to be “visionary monomaniacs.”[7]

Wilkins justified his idiosyncratic testimonial oath as a means to preserve his inventor rights: “the truth is that I am an inventor of particular technologies.  *  *  * That is who I am.  It is who I was before this litigation.  To expect me to change now is unreasonable.”[8]

The moral of this short cautionary tale: just as a leopard cannot change its spots, it may be unreasonable to expect an eccentric inventor witness to change his or her personality in order to provide more suitable, credible deposition or trial testimony.

 


[1] The photograph included in the Lane Powell post of this article is of statue of Nikola Tesla in his hometown of Smiljan, Croatia.  He is a legendary eccentric inventor.  For example, “he preferred to dine alone, due to his meticulous compulsion to clean his plates and silverware with 18 (divisible by 3) napkins before a meal.”  See, e.g., http://io9.com/5648455/the-mad-scientist-hall-of-fame-nikola-tesla.

[2] General Electric Co. v. Wilkins, 2011 WL 220240 (E.D. Cal. Jan. 21, 2011), at 1.

[3] Id.

[4] Id.

[5] General Electric Co., et. al. v. Wilkins, et al., 2012 WL 5899349 (E.D. Cal. 2012), at 2.

[6] Id.

[7] “Eccentric Inventors,” Scientific American (April 12, 1873), p.225

[8] Wilkins Decl., § 75, pp. 20-21.

Playing Fast and Loose With Corroborating Evidence: Patent Advocacy Inequitable Conduct

Posted in Inequitable Conduct, Patent Litigation, Patent Prosecution, Rules of Professional Responsibility

Patent litigation often involves the assertion of prior art anticipation and obviousness defenses.   U.S. patents are presumed valid, so a defendant seeking to overcome this presumption must persuade the fact-finder of a patent’s invalidity with clear and convincing evidence.  Corroborative evidence of invalidity—e.g., contemporaneous documents, physical specimens and witness testimony—is generally necessary to satisfy this rigorous burden of proof.

When does advocating a patent’s validity or invalidity cross the boundary line separating ethical from inequitable conduct?  A recent Federal Circuit Court of Appeals decision, Ohio Willow Wood Co. v. Alps South, LLC (the “OWW” case), offers a vivid wake-up call to patent practitioners.  The case demonstrates how patent advocates can commit inequitable conduct by adopting litigation positions before patent tribunals that seek to minimize, ignore or discredit reasonable, corroborating evidence of a patent’s invalidity.

But wait.  How can this be?  Didn’t Therasense[1] make it much harder for litigants to assert claims of inequitable conduct by requiring clear and convincing proof that the patent applicant (1) misrepresented or omitted information material to patentability, and (2) did so with specific intent to mislead or deceive the USPTO?  How does this patent prosecution standard apply to advocacy in reexamination and tribunal review proceedings? Continue Reading

In re Beineke: Cultivating the Legal Boundary Between the Exploring and Patenting of Plant Life

Posted in Patent Applications, Patent Prosecution, Plant Patents

Plant breeders and plant explorers once captivated the imagination as our true American heroes in the late 19th and early 20th century.

Luther Burbank, our country’s most famous plant breeder, became known as the “Edison of the Garden” and the “Wizard of Santa Rosa.” His small office in his research gardens—where he used to meet with the likes of Thomas Edison and Henry Ford—is preserved at the historical Greenfield Village in Dearborn, Michigan.

One of our most intrepid plant explorers, John Muir, would walk from the Indiana border to Florida, surveying the flora of the post-Civil War landscape in 1867. This trek is recounted in Muir’s epic journal, A Thousand-Mile Walk to the Gulf.[1] Kentucky’s oak trees merited the highest praise from Muir: “Far grandest of all Kentucky plants are her noble oaks. They are the master existences of her exuberant forests. Here is the Eden, the paradise of oaks.”[2]

Despite their heroic reputations, the actual “discoveries” of plant explorers and plant breeders are treated quite differently under United States plant patent laws. Plant specimens found by explorers in uncultivated areas cannot be patented; whereas, plants grown by plant breeders in cultivated areas can constitute patentable subject matter. This article analyzes this vital distinction central to the holding of In re Beineke , 690 F.3d 1344 (Fed. Cir. 2012). Continue Reading

The Patent Legal Malpractice Implications of “Walker Process” Antitrust Claims

Posted in Conflicts of Interest, Inequitable Conduct, Insurance Claims, Legal Malpractice, Patent Litigation, Patent Prosecution, Proximate Causation, Rules of Professional Responsibility

As experienced trial lawyers know, successfully trying or defending a case is all about presenting a compelling, understandable theme and narrative that comports with a judge and jury’s common sense and experience.

Juries especially are prone to favor litigants and lawyers they like and case theories they easily understand.  That is human nature on display in the courtroom.

Certain types of patent claim theories and defenses possess greater “narrative allure” than others.  In patent litigation, the inventor’s journey of discovery is often a key trial narrative, including a recitation of the trials and tribulations incurred on his or her way to obtaining an official U.S. patent—together with its certified seal and blue ribbon.

For those accused of infringing patents—whether through being named as a defendant or identified as a culprit in a cease-and-desist letter writing campaign—the best choice for a compelling defense story is often less apparent.  Affirmative defenses, compulsory counterclaims or declaratory judgment causes of action are often asserted in blunderbuss fashion in order to preserve any and all claim or defense theories.

Patents and their dense, impenetrable prose and complicated technical and scientific jargon often make little sense to the uninitiated—i.e., to almost everyone other than inventors, patent prosecutors, expert witnesses, and patent litigators.  Advances in cognitive science are now showing that jurors will seek to avoid the mental strain associated with deciphering difficult trial testimony and jargon, and will instead rely on simpler, preconceived notions of how businesses and their executives operate in rendering their jury verdict decisions.[1]

By virtue of its relative simplicity and the seeming ease by which it can be understood by a lay jury, a “Walker Process” antitrust claim offers an appealing defensive/offensive claim theory for alleged patent infringers.  Named after a leading Supreme Court case[2] decided in 1965, a Walker Process claim stands for the proposition that “the enforcement of a patent procured by fraud on the Patent Office may be violative of § 2 of the Sherman Act provided that the other elements necessary to a § 2 [monopolization] claim are present.”[3]

The financial incentives for pursuing a Walker process claim are quite significant: a prevailing litigant may be able to recover treble damages and attorneys’ fees.  These claims most often appear as a compulsory counterclaim to an allegation of patent infringement.  However, they can also be asserted affirmatively, along with declaratory judgment claims for patent non-infringement, invalidity and unenforceability.

The jury appeal and potential monetary rewards of a Walker Process claim also raise corollary patent legal malpractice risks for both parties.  For the party prevailing on such a claim, the risks for the other side are obvious: a patent has been held unenforceable due to inequitable conduct and the client is facing a potentially huge monetary exposure or judgment for damages and the successful party’s attorneys’ fees and costs.  Even if the Walker Process claim is ultimately unsuccessful, the losing party may argue that the patent counsel’s prosecution conduct increased the litigation costs of enforcing a patent right and resulted in a weakened settlement position.

For the party who pursues and loses a Walker Process claim, the failure of the claim may well be due to an inability to meet one or more of the procedural and substantive requirements that accompany Walker Process claim litigation.  For example, if the client is not properly advised about these detailed requirements, or if proof was not appropriately marshalled and applied to various Walker Process claim elements, the failed claim may also subject the patent litigator to unwelcome malpractice exposure.

This article discusses both the potential jury appeal of and corollary patent legal malpractice risks associated one of the most alluring claims in the patent litigation pantheon. Continue Reading

Is it Time for Federal Courts to Stop Exercising Jurisdiction Over Patent Legal Malpractice Claims?

Posted in Conflicts of Interest, Expert Witness, Federal Jurisdiction, Legal Malpractice, Patent Litigation, Patent Prosecution, Rules of Professional Responsibility

During past month when many patent practitioners may have been distracted by the “laws of nature” meaning of the Mayo v. Prometheus decision, the Court of Appeals for the Federal Circuit issued four precedential rulings confirming the exclusive authority of federal courts to adjudicate patent legal malpractice claims.  Only the Supreme Court can alter this fixed jurisdictional landscape.  Is this issue finally cert-worthy?

The Federal Circuit first held that federal courts should exercise exclusive jurisdiction over patent legal malpractice claims in two separate panel decisions issued in October 2007.  In the view of a super-majority of Federal Circuit judges, exclusive jurisdiction is a done deal.  As Judge Dyk stated in his concurring opinion denying a rehearing in the Byrne v. Wood Herron case, “I see no reason to revisit this court’s repeated holdings that where the outcome of malpractice cases turns on federal patent law, federal jurisdiction exists.”

But some of members of the Federal Circuit beg to differ with this jurisdictional result.  Two impassioned dissents and two begrudging concurrences authored by Judge Kathleen O’Malley may well compel SCOTUS review.

Judge O’Malley’s dissent case in the Byrne case is blunt.  She rebukes the Federal Circuit for its supposed jurisdictional land grab: “It is time we stop exercising jurisdiction over state law malpractice claims.”  Per O’Malley, rather than “force the Supreme Court to correct our jurisdictional mistakes, we should take this opportunity to do so ourselves.”  She is not alone in her convictions.  Judge Evan Wallach, the appellate court’s newest member, joined in Judge O’Malley’s dissent.

In dissenting from a denial of a Memorylink v. Motorola rehearing some three weeks later, Judge O’Malley again opined that this “court’s routine extension of jurisdiction to purely state-law malpractice claims is improper and conflicts with governing Supreme Court precedent.”

Having already dissented twice, Judge O’Malley reluctantly concurred with the Federal Circuit’s dismissal of the state law claims implicating patent law in the USPPS v. Avery Dennison decision issued on April 17, because “our case law compels that we exercise subject matter jurisdiction over it.”  Although she conceded the import of the Federal Circuit’s holdings, Judge O’Malley added a stinging rejoinder that the “case exemplifies the mischief our jurisdictional over-reaching has caused in situations where a state law claim involves an underlying patent issue.”  Interestingly enough, Judge Mayer (a Federal Circuit judge since 1987) joined in this concurring opinion.

Finally, in a decision issued on April 23, 2012, Judge O’Malley concurred in the result of the Federal Circuit’s decision in Landmark Screens v. Morgan, Lewis & Bockius, but wrote separately because “our case law in this area treads unduly into matters which are—and should remain—governed by state law [and] I encourage our court to address the scope of our jurisdiction in these matters en banc.

With this kind of jurisdictional gauntlet being laid down, the filing of petitions for writs of certiorari appears imminent.  Will the Supreme Court seize on this opportunity to rein in an expansionist Federal Circuit?  Or will it deny any forthcoming cert petitions and implicitly bless the Federal Circuit’s exercise of authority over patent legal malpractice claims?  This brief article examines this question further in light of legislative history of the Federal Courts Improvement Act of 1982 and a review of Byrne, Memorylink, USPPS and Landmark Screens case facts. Continue Reading

The Perils of Patent Prosecution Delegation: A Cautionary Tale

Posted in Expert Witness, Legal Malpractice, Patent Prosecution, Rules of Professional Responsibility

What happens when a start-up company (Protostorm) retains a sole practitioner to prepare provisional patent applications, another solo lawyer to prepare the corresponding U.S. non-provisional application, and yet another firm to file the resulting Patent Cooperation Treaty (“PCT”) application?  This is getting complicated, right?

Add to this mix these salient facts: (1) neither Protostorm nor its counsel appears to ever proofread the completed PCT patent application after it is filed; (2) Protostorm fails to pay its patent attorneys and closes up shop; and then (3) some five years later, the start-up principals learn that Google might be infringing upon their patent right.

The answer to this delegation of patent prosecution question is an abandoned, misdesignated PCT patent application and a flurry of client and attorney fingers all pointing at each other.  In other words, a patent legal malpractice mess that is very hard to resolve through summary judgment proceedings.

This Protostorm cautionary tale takes place against the immutable backdrop of a statute prohibiting the unauthorized practice of patent law.  35 U.S.C. § 33 provides that “[w]hoever, not being recognized to practice before the Patent Office, holds himself out or permits himself to be held out as so recognized or as being qualified to prepare or prosecute applications for patent, shall be fined not more than $1000 for each offense.”

A violation of 35 U.S.C. § 33 and related USPTO rules can have a profound, reverberating effect leading to patent unenforceability, as one Protostorm ethics expert opines.

The facts giving rise to the Protostorm legal malpractice claim will seem commonplace enough in our information age.  Protostorm wants to obtain worldwide patent rights for an online computer game and related software.  Its regular corporate counsel does not engage in patent work, so it refers the company to a lawyer (Kathy Worthington) who is knowledgeable about intellectual property matters.  By her own admission, she is not registered to practice before the USPTO.  Worthington, in turn, introduces her new client to Antonelli, Terry, Stout & Kraus, LLP (“ATS&K”), a law firm specializing in patent work.

All goes well with the preparation filing of a first U.S. provisional application.  Worthington prepares it and an ATS&K attorney (admitted to practice before the USPTO) reviews, signs and files it.  Worthington’s bills are sent to Protostorm’s corporate counsel for payment.  Protostorm is advised that a non-provisional patent application must be filed within one year in order to take advantage of the provisional patent application’s filing priority date.

Then patent prosecution runs head-on into a § 33 roadblock.  Worthington prepares and files a second provisional application to address some additional invention developments.  The second provisional patent application is reviewed by the Protostorm’s corporate counsel, but is not reviewed nor supervised by patent counsel authorized to appear before the USPTO. Continue Reading

Emerging Fissures in Exercising Federal Jurisdiction Over Patent Legal Malpractice Cases

Posted in Federal Jurisdiction, Legal Malpractice

Over four years have elapsed since the Federal Circuit first held that federal courts possess exclusive jurisdiction over patent legal malpractice claims.  In Immunocept, LLC v. Fulbright & Jaworski, LLP, 504 F.3d 1281 (Fed. Cir. 2007), the court ruled that patent claim scope issues alleged in patent legal malpractice claim raise substantial federal issues.  Similarly, in Air Measurement Technologies, Inc. v. Akin Gump Strauss Hauer & Feld, L.L.P., 504 F.3d 1262 (Fed. Cir. 2007), the same Federal Circuit panel ruled that patent litigation malpractice allegations also raise substantial federal issues.

Alleged errors in patent prosecution and patent litigation both raise substantial federal issues because the “case-within-a-case” analytical structure of a legal malpractice claim generally requires an underlying analysis of patent law standards, proximate causation issues, and patent damages calculations.  In other words, the legal malpractice allegations cannot be determined without an analysis of the merits of the underlying patent right at issue.

The reasoning of the Immunocept/Air Measurement cases is increasingly under attack.  Even a Federal Circuit panel recently stated that “we believe this court should re-evaluate the question of whether federal jurisdiction exists to entertain a state law malpractice claim involving the validity of a hypothetical patent . . . .”  Byrne v. Wood, Herron & Evans, et al., 2011 WL 5600640 (Fed. Cir. 2011)(non-precedential decision).  Predictably, the losing appellant requested a rehearing of this case en banc.  That request is pending.

Federal Circuit jurisprudence presently does not make distinction about whether a hypothetical or issued patent claim is at issue for the federal jurisdictional purposes.  Both types of patent legal malpractice claims are subject to exclusive federal jurisdiction.  However, state and federal courts have seized on a distinction between hypothetical and issued patent claims as potentially dispositive of the jurisdictional determination. Continue Reading

The Jurisdictional Power of the “Case-Within-A-Case” Doctrine in Patent Legal Malpractice Litigation

Posted in Inequitable Conduct, Patent Litigation, Proximate Causation

 

The Federal Circuit’s recent precedential decision, Warrior Sports, Inc. v. Dickenson Wright, P.L.L.C. (issued on January 11, 2011), demonstrates (once again) the sheer power and ability of the “case-within-in-case” doctrine to jurisdictionally transform a state law malpractice claim into a case arising under federal patent law.

In an unusual twist, the Warrior Sports plaintiff and defendants agreed that the federal court could exercise federal question jurisdiction over the patent legal malpractice claim. But the federal court judge (the Hon. Gerald E. Rosen from the Eastern District of Michigan) was not convinced. He issued a show cause order requiring the plaintiff to establish why the state law claim should not be dismissed for lack of federal subject matter jurisdiction.

The state law malpractice claim arose out of alleged administrative and litigation errors that occurred with respect to a reissued patent for a “Scooped Lacrosse Head” (U.S. Patent No. RE 38,216). As recited in the district court’s order dismissing the case, plaintiff claimed that defendants “(1) failed to pay a maintenance fee resulting the lapse of Warrior’s patent, (2) forced Warrior to settle previous litigation on terms Warrior considers unfavorable, (3) failed to timely effectuate the reinstatement of Warrior’s patent, and (4) committed sundry other breaches of their professional duties, the precise contours of which breaches are not altogether clear from the Complaint.”

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“It’s Too Late Baby, Now It’s Too Late Though We Really Did Try to Make It”: The Perils of Missing Patent Litigation Deadlines

Posted in Patent Litigation

The recently concluded (and now appealed) Gardner v. Toyota Motor Corporation patent case offers yet another important lesson in the pitfalls of missing case schedule deadlines.  These deadlines inundate patent litigation, especially with the advent of many local patent rules.

Even the best substantive points and arguments can turn sour when they are brought by procedurally tardy litigants.  Arguing that “we really did try to make it” does not play well to a federal court audience, even if Carole King’s song “It’s Too Late” topped the Billboard record charts in 1971.

The plaintiff, Conrad Gardner, is the inventor of U.S. Patent No. 7,290,627, entitled “Extended Range Motor Vehicle Having Ambient Pollutant Processing.”  His case did not start out its life on a judge’s troublesome list, but it appears to have ended there.  If anything, Gardner’s patent claims had some very sympathetic hallmarks for a case venued in Seattle federal court.  Gardner is in his mid 70s.  In addition to being a former Boeing engineer, Gardner is a patent attorney and former patent examining attorney for the United States Patent and Trademark Office (USPTO).  Surely, he knows the ropes of patent prosecution.

The ’627 patent covers hybrid vehicle technology for automobiles.  More specifically, the patent “relates to the use of an internal combustion engine and separate electric motor for powering a hybrid vehicle.”   View Order    Gardner filed his patent lawsuit in 2008 claiming that Toyota’s Prius, Camry and two-wheel drive Highlander automobile models infringed the ’627 patent.

The numerical imbalance (2 vs. 6 attorneys) between plaintiff and defense counsel did not seem that overmatched when the case was first filed.  In addition to the plaintiff being a patent lawyer and former patent examiner, Gardner was represented by out-of-state patent counsel and a solo practitioner with extensive commercial litigation experience.  Five attorneys from the well-known Finnegen Henderson law firm entered appearances on behalf of Toyota, as well as a local counsel from a Seattle law firm.

So, how did the case unravel for Gardner?  A perplexing inability to meet case schedule deadlines provides an atmospheric explanation.  Much of Toyota’s consternation stemmed from Gardner’s tardy submissions with respect to simultaneous filings often required by local patent rules, e.g., proposed claim element terms for construction and disclosures of extrinsic evidence and responsive claim construction briefs.

Delays in filing simultaneous submissions can lead to a tactical advantage for the late filer—as Toyota would convincingly argue.  Gardner’s counsel appeared to make a habit of granting himself one more day to work on these “simultaneous” submissions.  It’s always nice—but certainly not fair—to know where the other side is coming from when preparing your so-called simultaneous submission.
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