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Patent Practice Professional Liability Reporter

Your Pacific Northwest Law Firm

“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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How a “Plague” of Inequitable Conduct Charges Curiously Became a “Scourge” and Why We Should Guard Against the Use of Pejorative Patent Terminology

Posted in Inequitable Conduct


Infectious disease terminology serves as the reigning metaphor in Federal Circuit cases decrying the rampant assertion of inequitable conduct defenses in patent litigation. The Federal Circuit’s first use of the word plague in this context can be traced back to Burlington Indus., Inc. v. Dayco Corp., 849 F.2d 1418, 1422 (Fed. Cir.1988), when the court stated that “the habit of charging inequitable conduct in almost every major patent case has become an absolute plague.” (Emphasis added.)

“Inequitable conduct” charges at one time were more commonly labeled as “fraud on the Patent Office” claims. Because the latter label was deemed “pejorative,” it was dropped. But as the Dayco panel observed, “the change of name does make the thing itself smell any sweeter.” Id., at 1422.

Judge Pauline Newman is a frequent dissenter in Federal Circuit cases affirming the unenforceability of a patent based on an inventor’s or patent attorney’s alleged inequitable conduct. She describes the seeming proliferation of inequitable conduct defenses in patent litigation as follows:

“Inequitable conduct” in patent practice means misconduct by the patent applicant in dealings with the patent examiner, whereby the applicant or its attorney is found to have engaged in practices intended to deceive or mislead the examiner into granting the patent. It is a serious charge, and the effect is that an otherwise valid and invariably valuable patent is rendered unenforceable, for the charge arises only as a defense to patent infringement.

As this litigation-driven issue evolved, the law came to demand a perfection that few could attain in the complexities of patent practice. The result was not simply the elimination of fraudulently obtained patents, when such situations existed. The consequences were disproportionally pernicious, for they went far beyond punishing improper practice. The defense was grossly misused, and with inequitable conduct charged in almost every case in litigation, judges came to believe that every inventor and every patent attorney wallowed in sharp practice.

Ferring B.V. v. Barr Laboratories, Inc. 437 F.3d 1181, 1195 (Fed. Cir. 2006)(dissenting opinion).

The Federal Circuit’s en banc decision in Kingsdown Medical Consultants, Ltd. v. Hollister, Inc., 863 F.2d 867 (Fed.Cir. 1988) was intended to curb the patent litigator’s seemingly ravenous appetite for willy-nilly assertions of inequitable conduct. That case held that the intent element of inequitable conduct must be established by clear and convincing evidence of deceptive intent. Gross negligence is not supposed to suffice and “does not of itself justify an inference of an intent to deceive.” Id., at 872.


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The Sangamon River as Abe Lincoln’s Mother of Invention

Posted in Inventor Witness, Patent Litigation

“Then, I said, let us begin and create in idea a State; and yet the true creator is necessity, who is the mother of our invention.”

In tracing the lineage of perhaps the most popular bromide about the inventive process, I discovered (somewhat to my surprise) that the saying “necessity is the mother of invention” finds its origins in a Socratic dialogue in Plato’s The Republic about the nature of an ideal state.

What started out as a discussion about political structures has become a catch-all description for what often motivates the inventive process.

Like this transmogrified quotation from Plato’s The Republic, much of United States’ patent history in the late 18th and 19th centuries is recounted in nostalgic, patriotic terms. The fondness of our earliest American presidents for our patent system (especially Thomas Jefferson and James Madison) is often duly emphasized.

President Lincoln’s love of inventions is emblematic.  His experiences in navigating to and from his homestead on the Sangamon River in Illinois led directly to the inventive work forming the basis for U.S. Patent No. 6,469, entitled “Buoying Vessels Over Shoals.”

He states, “Be it known that I, Abraham Lincoln . . . have invented a new and improved manner of combining adjustable buoyant air chambers with a steamboat or other vessel for the purpose of enabling their draught of water to be readily lessened to enable them to pass over bars, or through shallow water, without discharging their cargoes . . . .”

Should patent practitioners care about what potential jurors can (or cannot) call to mind about our collective American history of patenting in previous centuries?  Or is it just dusty, musty history, best forgotten?

This post examines some of the “mythology” of patents and inventors and how those ideas may subtly impact a jury’s expectations about inventors and inventions.  Patent litigators, especially, ignore the inherited mindset of jurors at their peril.

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Have You Been “Hired,” But Not “Retained”? and Other Life Lessons from Davis v. Brouse McDowell

Posted in Expert Witness, Legal Malpractice, Patent Prosecution, Proximate Causation

Davis v. Brouse McDowell (pdf) is the Federal Circuit’s first precedential patent legal malpractice decision issued in 2010. It offers yet another cautionary tale for both plaintiffs and defendants in their pursuit and defense of patent legal malpractice claims.

Most will read and analyze the Davis case for its ultimate holding, i.e., conclusory expert witness testimony regarding the patentability of a “lost” or foregone patent right is insufficient to support the “case-within-a-case” causation element of a legal malpractice claim.

While that take-away point is crucially important, the underlying district court record also discloses a paradigm example of how client relationships can unravel at their outset.  Some real life lessons of the case are revealed by the halting interactions between the seemingly prospective client and counsel in their early dealings with each other.  One of the key factual issues becomes “When was an attorney-client relationship formed?”

The salient facts are these.  In late 2003, Heather Davis contacted Daniel Thomson, then a partner in the Brouse McDowell law firm “to find out just some general questions about intellectual property.”  (The quoted material is from the district court’s summary judgment decision (pdf).) 

The two spoke over the phone. Davis explained that she was interested in finding an attorney she could “eventually” work with in connection with her alleged invention of an “IP-Exchange” where intellectual property could be bought and sold.  Davis stated that she was particularly interested in pursuing international coverage for her inventions.  (More after the jump.)

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Jury Notes and Special Verdicts in Patent Cases: A Case Study in Jury Comprehension

Posted in Jury Instructions, Patent Litigation, Patent Pleadings

It is commonplace to bemoan the lack of juror comprehension in patent cases and to describe jury deliberations as a “black box” resisting analysis.

The Federal Circuit favors the use of special jury verdicts to alleviate such criticisms. Special verdicts can focus jury attention on the facts that may or may not support key patent findings such as those relating to infringement under the doctrine of equivalents, obviousness or other invalidity determinations, and damage and reasonable royalty calculations.

Whether special verdicts achieve “better” overall results than general verdicts, however, is a debatable proposition in light of social science research into how juries think and reason.

The underlying record in a recent Federal Circuit decision, Therasense v. Becton Dickinson and Co. (pdf), provides a good working example for evaluating jury comprehension issues when both jury notes and a special verdict are utilized at trial.

Case Background and Result. The Therasense case involves an ’890 patent directed to electrochemical sensors for measuring glucose levels in blood. The plaintiff alleged that BD Test Strips manufactured and sold by the defendants infringed two claims of the subject patent.

After a trial taking place over four weeks, the jury returned a special verdict (pdf) finding infringement pursuant to the doctrine of equivalents, but in response to the very next special jury verdict question found that the ’890 patent was invalid based on anticipation or obviousness grounds.

The bulk of the Federal Circuit’s decision focuses on the jury’s answer to the following special verdict question: ” Have defendants proven by clear and convincing evidence that Claims 11 and 12 of the ’890 patent are invalid by reason of anticipation or obviousness. Yes  √   No ___.”

More after the jump.


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Tracking Down the Elusive Obviousness Special Verdict Form

Posted in Jury Instructions, Patent Litigation

Judges and legal commentators have long cautioned patent practitioners about the pitfalls of “obviousness” jury determinations that pose only the ultimate question: Has defendant proven by clear and convincing evidence [or that it is highly probable] that Claim X of the ‘123 Patent is obvious? Yes ____ No ____.

Whether the answer is yes or no, this type of jury determination is difficult to review in depth even if a Rule 50 JMOL motion is filed before the case is submitted to the jury.

As patent litigators know, the ultimate question of obviousness is a legal issue reviewed de novo on appeal, while the underlying findings of fact regarding obviousness are reviewed for substantial evidence. When a general obviousness verdict is rendered by a jury, a presumption arises that all factual disputes regarding obviousness were resolved in favor of the verdict.

In contrast to readily available model patent jury instructions incorporating KSR and Graham factors, detailed templates for obviousness special verdict forms are harder to find, especially in a pinch.

The best template we’ve found is the special verdict form included in the Northern District of California’s Model Patent Jury Instructions (November 2007)(pdf). It drills down on each of the factors discussed in KSR and Graham, although it may need more work with respect to “obvious to try” consideration that KSR reinvigorated, a subject sure to prompt more debate.

Despite the Federal Circuit’s repeated clamoring for more detailed special verdict forms with respect to a variety of patent sub-issues, the issue of obviousness is nevertheless regularly presented to juries in ultimate form, such as in the recent jury verdict form used in Cerner Corporation v Visicu, Inc. (pdf). As the oldest English proverb still widely used today states: You can lead a horse to water, but you can’t make it drink.

Judge Whyte’s observation regarding obviousness special verdict forms in Hynix Semiconductor Inc. v. Rambus Inc., 2009 WL 112834 (N.D. Cal. 2009) could be applied in any number of cases: “[The defendant] gambled by proposing a condensed interrogatory on obviousness. It was not compelled to do this by the existing law; in fact, it was discouraged from doing so. Perhaps it did not want the jury to think too hard about secondary considerations. Maybe it wanted to foreclose appellate review had it won. Nonetheless, [the defendant] took its chances, and it lost.”

[Note to animal trackers: the photograph of bear paw prints was taken on an island in Sitka Sound.]

Twin Challenges in Drafting a Viable Patent Legal Malpractice Complaint

Posted in Federal Jurisdiction, Legal Malpractice, Patent Litigation, Patent Pleadings

Drafting a short and plain statement of a patent legal malpractice claim used to be a relatively straightforward matter under the now discredited Conley v. Gibson “no set of facts” standard. That pleading landscape dramatically changed in 2007.

In the wake of the Supreme Court’s Twombly and Iqbal decisions, federal court judges are now routinely called upon to apply their judicial experience and common sense in determining whether patent infringement complaint allegations cross a line separating merely “conceivable” claims from actually “plausible” ones.

Parties that cannot “nudge” their patent claims across this conceivable vs. plausible pleading line will find themselves on the losing side of a dismissal motion.

Patent legal malpractice claims pose a peculiar twin burden under the relatively new Twombly/Iqbal pleading paradigm. The federal court’s exclusive jurisdiction over these “case-within-a-case” state law claims adds another layer of pleading complexity.

While sometimes overlooked, Federal Rule of Civil Procedure 8(a)(1) also requires a short and plain statement of the grounds for a federal court’s limited jurisdiction.

A federal court’s dismissal of a patent legal malpractice claim in the Rockwood Retaining Wall  case (pdf) neatly exposes these twin pleading challenges.  A discussion of the case follows the jump.

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Exclusive Federal Court Jurisdiction Over Patent Legal Malpractice Claims: Where Are We?

Posted in Federal Jurisdiction, Patent Litigation

Have the twin Air Measurement and Immunocept decisions succeeded in establishing an exclusively federal forum for patent legal malpractice claims?

The answer is: NOT YET. That inconclusive answer makes crafting your claim theories and drafting a well pleaded complaint or answer critical, if your goal is to have a federal court decide the merits of your case.

A jurisdictional storm front is gathering during the two years since the Federal Circuit published two opinions holding that federal courts have exclusive jurisdiction over legal malpractice claims when the merits of those claims require the resolution of a substantial question of federal patent law.

One emerging line of cases rejects the expansion of federal jurisdiction over what is classically a state cause of action. Some courts have ruled that the Federal Circuit’s Air Measurement and Immunocept cases are non-binding authority.

Two recent cases are illustrative, which are provided after the jump.

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The Ethics of Patent Litigation Forum Shopping

Posted in Rules of Professional Responsibility, Venue Selection

Forum-shopping for favorable jurisdictions in which to try or defend a case is second nature to patent litigators. This post analyzes the dissonance between how that practice is sometimes disparaged legislatively and judicially and how such conduct is evaluated through the ethical lens of the Rules of Professional Conduct.

Patent legislative history and cases refer to forum-shopping pejoratively. In fact, one of the earliest cases of any kind to decry forum-shopping is a patent case. In Helene Curtis Industries v. Sales Affiliates, Inc., 105 F. Supp. 886 (S.D.N.Y.), aff’d, 199 F.2d 732 (2d Cir. 1952), Judge Irving Kaufman criticized a party’s forum-shopping tactics stating that the defendant “ . . . is forum shopping with a vengeance. I discern no other rational which can adequately explain the stratagems which it has employed throughout this controversy. Our courts are not meant for such use.” Id., at 902 (emphasis added).

The Federal Courts Improvement Act of 1982—the Act leading to the creation of the Federal Circuit—echoes Judge Kaufman’s judicial distaste for forum-shopping. Passage of the Act was driven in part by legislative intent to “reduce the forum-shopping that is common to patent litigation.”

The patent consultants to Huskra Commission (instrumental in promoting passage of the Act) concluded that “forum shopping on the scale that occurs in patent law increases the cost of litigation and ‘demeans the entire judicial process and the patent system as well.’”

Despite the “back-of-the-hand” treatment accorded to forum-shopping over the years in dicta and legislative commentary, the practice is obviously still alive and well in patent litigation. The creation of the Federal Circuit alleviated regional circuit forum-shopping; however, the practice of singling out favorable district court venues in which to file a patent infringement lawsuit continues with abandon.

The prevalence of patent infringement claims being filed in the Eastern District of Texas is a case in point. Despite the absence of any significant number of inventors or patentees residing in the judicial district, Marshall, Texas is now an epicenter of patent litigation.

Case statistics bear out its reputation as a favorable patent owner’s forum. From 1995-2007, the Eastern District of Texas ranked third in the nation with its plaintiff success rate at trial of 71.9%.

After combining summary judgment and trial decisions, Texas is still the second most successful district for plaintiffs among those districts with a minimum of 15 patent cases. The Eastern District of Texas awarded three of the top ten highest patent jury verdicts in 2005 and 2006, each of the three totaling over $70 million.

The very existence of the Eastern District of Texas as a favorable plaintiff’s forum in patent cases raises an interesting ethical issue: What are your ethical obligations in advising a prospective plaintiff client about where to file a patent infringement claim?

For example, do you have a responsibility to recommend use of the Eastern District of Texas as a preferred venue if you represent a patent owner seeking to enforce its patent rights?

The answer is a qualified YES, although the analysis of where actually to file suit is of course highly dependent on individual case facts.

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The Ethical Obligation to Self-Report Patent Legal Malpractice

Posted in Insurance Claims, Legal Malpractice, Rules of Professional Responsibility

Self-reporting your errors in prosecuting a patent application or litigating a patent claim is surely not on any lawyer’s “to-do” wish list.

Many errors are correctable, stem from legitimate differences of opinion, or are of only minor moment. Part of the art of lawyering is perceiving and correcting errors before they become material impediments to the legal work being performed on a client’s behalf.

What should a lawyer do, however, when the error is substantial and perhaps noncurable? According to the Restatement (Third) of the Law Governing Lawyers,

If the lawyer’s conduct of a matter gives the client a substantial malpractice claim against the lawyer, the lawyer must disclose that to the client.

This self-reporting disclosure duty stems from ethical obligations to communicate with clients and to avoid conflicts of interest. I recommend reading Benajmin Cooper’s “The Lawyer’s Duty to Inform His Client of His Own Malpractice,” (PDF) which is an excellent article discussing the derivation of a lawyer’s self-reporting duty at length.

Before you hyperventilate at the ignominious prospect of being a snitch or a tattletale (on yourself, no less), it is a better use of efforts to consider the following basic operating principles that guide your ethical duties vis-à-vis a potentially aggrieved client.

See my list of basic operating principles to guide your ethical duties after the jump.

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