By Robert Angle and Dabney Carr
This is the second in a series of posts following up on our recent article on patent litigation in the Eastern District of Virginia (found here). In this post, we talk about how the defendant-accused infringer should respond to a lawsuit to avoid putting itself behind the EDVA eight ball and turn the tide in its favor.
Continue Reading...As we posted here, Judge Spencer upheld CompX International’s $39 million jury verdict against Humanscale Corporation for patent infringement. In keeping with our motto that “We read the opinions so you don’t have to,” here’s a bullet-point summary of Judge Spencer’s 40-page opinion, which can be found here and is also at 2010 U.S. Dist. LEXIS 83881 (E.D. Va. Aug. 16, 2010):
The Court correctly held that the term “tilting” should be given its ordinary meaning and did not impermissibly allow the jury to define a disputed claim term in violation of O2 Micro Int’l. Ltd. v. Beyond Innovation Tech., Co., 521 F.3d 1351 (Fed. Cir. 2008).
Substantial evidence supported the jury’s conclusion that there was no motivation to combine previous models of CompX’s patented products to include features found in equipment supports for other types of equipment, such as sewing machines, typewriters and ironing boards.
Humanscale failed to prove that sales of patented products occurred before the critical date.
The Court’s most in-depth analysis concerned laches. CompX had brought suit on the same patents a decade earlier, but had dismissed the suit without prejudice nine years before re-filing. The Court held that CompX’s nine-year delay was inexcusable and unreasonable but held that Humanscale failed to prove prejudice.
In a separate ruling, found here, the Court denied CompX's claim for prejudgment interest because of the delay in filing suit, but that is a hollow victory given the size of the damage award.
If nothing else, the ruling illustrates just how difficult it is to prevail on a laches defense. Even with a nine-year delay, Humanscale could not persuade the Court that it had suffered evidentiary or economic prejudice. The case illustrates how hard it is to show evidentiary prejudice when a defendant does not know what evidence has been lost, and it’s even harder for a defendant to adamantly deny it infringes while also claiming that it suffered economic prejudice because it would have behaved differently if suit had been filed earlier.
The Court refused to reconsider its decision to grant judgment as a matter of law on these three defenses, illustrating, as was the case with laches, the heavy burden a defendant bears on these defenses.
As we noted here, Judge Robert E. Payne recently ruled on two summary judgment motions in WiAV Solutions LLC's patent suit against numerous mobile telephone companies. Our earlier post addressed the Court’s ruling on marking. In his second opinion, Judge Payne granted defendants summary judgment on WiAV’s claim of infringement under the doctrine of equivalents. The decision can be found here.
WiAV’s patent provides a method for monitoring the quality of a traffic channel for mobile phones by measuring the quality of a separate control channel. WiAV claimed that a "training sequence" and a "common pilot channel" used by the accused products were equivalent to a control channel. The defendants pointed out, however, that
WiAV, Judge Payne ruled, “offers a function, way and result divorced from the language of the claims.” For example, WiAV’s argument that the function of the patented process did not include a control channel was “belied by the claim terms themselves” which made clear that a control channel was required.
In the same opinion, Judge Payne denied summary judgment on literal infringement, and so WiAV's claims remain alive for trial, which is set for October.
In a 40 page opinion filed Monday, Chief Judge James R. Spencer of the U.S. District Court for the Eastern District of Virginia has denied several post-trial motions by the losing litigant, HumanScale, in a patent infringement case where CompX won a $19.3 million jury verdict on its counterclaims (case no. 3:09-CV-86).
For more information on the case, see our past blog entries here (after the jury verdict) and here (after denial of a permanent injunction to CompX).
Hat tip: Virginia Lawyers Weekly blog, which also offers a copy of the opinion for download.
In the ongoing patent battle between WiAV Solutions, LLC and a number of mobile technology companies (Motorola, Nokia, et al.), Judge Robert E. Payne has ruled in the last two days on two of defendants’ motions for summary judgment. One opinion’s interpretation of the patent marking statute has implications beyond this suit, and that opinion also offers both positive and negative procedural lessons of which practitioners should take note.
Continue Reading...By Dabney Carr and Robert Angle
As we noted in an earlier post, we will blog about several issues that space did not allow us to address in depth in our recent article, found here, on patent litigation in the Eastern District of Virginia. As our first follow-up post, we want to talk about some of the pre-filing concerns faced by a patentee planning to file an infringement suit in the EDVA.
The docket speed of the EDVA is a two-edged sword for the plaintiff-patentee. On the one hand, getting to trial in less than a year allows a patentee to enforce its rights swiftly. On the other hand, the court's system of randomly assigning patent cases to the three divisions creates some uncertainties (the differences between divisions and judges is discussed in more depth in the article). In addition, the fast schedule requires the plaintiff-patentee to do more pre-filing "due diligence" because there is no time to conduct a fact investigation during discovery. Among the tasks a plaintiff-patentee should complete before filing suit are:
The moral of the story for the plaintiff-patentee is "prepare as much as you can before filing suit." The more prepared the plaintiff-patentee is, the more it will be able to take advantage of the EDVA's "rocket docket."
Next time …. How the Defendant-Accused Infringer should respond to a new lawsuit to avoid putting itself behind the EDVA eight ball and even turn the tide in its favor.
In a July 22 opinion, Judge Payne disqualified Steptoe & Johnson as counsel for Sunbeam Products because a Steptoe associate had performed work involving one of the defendants’ accused products while employed at a prior firm. Sunbeam Products v. Hamilton Beach Brands, Inc., et al., Case No. 3:09CV791, 2010 U.S. Dist. LEXIS 74001 (E.D. Va. July 22, 2010). The opinion can be found here.
While at his prior firm, the associate had done extensive patent-related work with the accused products, including working on patent litigation involving the products, preparing utility and design patents, preparing a patentability opinion relating to the accused products and analyzing the prior art, some of which was being asserted by the defendant in the Sunbeam case. Steptoe had identified the potential conflict during its conflict check but determined that the Sunbeam litigation was not “substantially related” to the associate’s prior work because the associate had not done any work relating to the patents Sunbeam was asserting, and Sunbeam did not challenge the defendant’s patents on which the associate had worked.
The opinion is a straightforward application of Rule 1.9(a) of Virginia’s Rules of Professional Conduct, which bars a lawyer who has formerly represented a client in a matter from representing another client in the same or a substantially related matter, and Rule 1.10(a), which imputes a conflict involving one attorney to all other attorneys in the firm.
More importantly for practicioners in the EDVA, the opinion highlights the high level of scrutiny of potential conflicts in the Fourth Circuit. Judge Payne cited a long line of Fourth Circuit and Eastern District of Virginia authority holding that “ethical rules are not to be applied ‘with hair-splitting nicety,’” and that all doubts should be resolved in favor of disqualification. Judge Payne rejected Steptoe’s reliance on a number of cases from other circuits which “have parsed the issues in the prior and current representations finely so as to distinguish the two representations and declare them not to be substantially related.” Such authorities, Judge Payne held firmly, “neither control nor persuade the Court to engage in the sort of ‘hair-splitting’ which the Fourth Circuit expressly has said cannot be done.”
As a follow-up to our July 1, 2010, post regarding Walker Digital, LLC v. Capital One Services, LLC, Case No. 1:10cv212 (E.D. Va.) (see here), Magistrate Judge Anderson granted Capital One’s motion for summary judgment of non-infringement on
From Capital One’s perspective, the election of Magistrate Judge Anderson to oversee the case seems to have paid off, at least for now. The case appears destined for the Federal Circuit, so we will see how it fairs on appeal.
As reported by Virginia Lawyers’ Weekly here, the Administrative Office of the U.S. Courts’ Judicial Business 2009 report finds that the Eastern District of Virginia is – once again – the fastest in the country.
The Eastern District of Virginia's median time to trial of 10.2 months is less than half of many other popular intellectual property venues, such as the Eastern District of Texas (25 mos.), the Northern (24.5 mos.) and Central (19.0 mos.) Districts of California, the District of New Jersey (37.7 mos.) and the District of Delaware (34 mos.).
The Judicial Business Report further confirms the studies by Professor Mark Lemley and LegalMetric, which we blogged about here and here, which found the E.D. Va. to not only be fast, but also a favorable venue for patentees.
Yesterday, July 8th, Virginia patent company NTP, Inc. filed suit in the Richmond Division of the Eastern District of Virginia against pretty much every mobile technology heavyweight it had not yet sued, namely: Apple, Google, HTC, LG, Microsoft, and Motorola.
Continue Reading...Litigants in the Eastern District of Virginia can agree to magistrate judge jurisdiction, but in our experience, it is very rare that parties agree to use a magistrate judge to oversee a patent case. A recent exception is Walker Digital, LLC v. Capital One Services, LLC, Case No. 1:10CV212 (E.D. Va.) in which the parties consented to jurisdiction before Magistrate Judge Anderson in the Alexandria Division. As a result, Judge Anderson will hear both non-dispositive and dispositive motions in the case, and he will oversee the trial.
The parties’ decision is a significant one because Judge Anderson, though relatively new to the bench, spent a number of years litigating patent cases in private practice. Given that background, he is uniquely qualified to oversee patent litigation.
The Walker Digital case has moved swiftly under Judge Anderson’s watch. A Markman hearing was held on May 28, just eight weeks after the Initial Pretrial Conference, Judge Anderson issued his ruling on claim construction less than two weeks later (opinion here), and defendant’s Motion for Summary Judgment is set for hearing this Friday, July 2.
We will blog about the summary judgment ruling once it is issued.
In its long-awaited opinion in Bilksi v. Kappos, found here, the Supreme Court unanimously affirmed the Federal Circuit's judgment that the claims at issue were unpatentable but also held unanimously that the "machine or transformation" test of determining whether a claimed process is patentable is not the sole test for determining patentability. Beyond holding that the petitioners' claims were unpatentable abstract ideas, however, the majority did not go any further, merely stating that it "need not define further what constitutes a patentable 'process,' beyond pointing to the definition of that term provided in §100(b)" and its earlier precedents.
Kennedy wrote the majority opinion, which was joined in full by Roberts, Thomas and Alito. Scalia joined in all but two parts of Kennedy's opinion. Stevens wrote a concurrence joined by Ginsburg, Breyer and Sotomayor; and Breyer wrote an opinion concurring in the judgment, in which Scalia joined in part.
Chambers and Partners' 2010 Edition of Chambers USA gives Troutman Sanders a top-level ranking for Intellectual Property in Southern Virginia, stating that the group "continues to garner praise for its litigation expertise." Virginia IP Law bloggers Robert Angle, Rob Brooke and Dabney Carr are also ranked individually in intellectual property. A full list of Troutman Sanders' rankings can be found here.
Two of our bloggers, Dabney Carr and Robert Angle, have published an article this month in the Intellectual Property & Technology Law Journal titled “Litigating Patent Infringement Cases in the ‘Rocket Docket’ of the Eastern District of Virginia.” The article can be found here.
Among other topics, the article delves into pretrial scheduling, discovery, claim construction, motions practice and trial practice in all three divisions of the EDVA. We hope that you find it a helpful and useful guide for litigating in the “Rocket Docket.”
There were several issues that space did not allow us to address in the article to the depth we would like, including specific advice for both patentees and accused infringers. We plan to have an ongoing series of posts on the blog on these individual topics, so stay tuned.
As we recently posted here, TecSec v. IBM, which is pending before Judge Brinkema in the Alexandria Division, is an example of a recent trend in patent infringement litigation – a plaintiff suing multiple defendants selling different accused products. In many cases, the defendants are market competitors selling completely distinct products which have no connection to each other.
These cases resemble mass tort litigation, except that instead of multiple plaintiffs consolidating tort claims against a single defendant, in a “mass patent” case a single plaintiff consolidates multiple claims against a large group of defendants, perhaps all the defendants in the industry. For example, in TecSec the plaintiff asserted 13 patents against 11 separate groups of defendants selling widely different products.
Continue Reading...In a widely-followed appeal of an Eastern District of Virginia case which we previously blogged about here, the Federal Circuit held today that Solo Cup did not have the "intent to deceive the 
public" required for false marking liability. in Pequignot v. Solo Cup Co., No. 2009-1547 (Fed. Cir. June 10, 2010) (found here). The decision affirmed Judge Brinkema's ruling granting summary judgment in favor of Solo Cup, Pequignot v. Solo Cup Co., 646 F.Supp. 2d 790 (E.D. Va. 2009). Under the Federal Circuit’s decision, even if a patentee knowingly marks a product with an expired patent, it can avoid liability by showing by a preponderance of the evidence that it did not intend to deceive the public.
In short, Solo Cup marked certain plastic cold drink lids by stamping the lids with two patent numbers during the production process. After one of the patents expired, Solo sought advice of counsel about whether it needed to replace all of its stamping molds to remove the patent number. Based on the advice it received and the cost of replacing all of its molds, Solo developed a policy to wait to remove the expired patents when it replaced the molds. Solo’s outside counsel also advised Solo to include on its packaging the phrase “the product may be covered by one or more U.S. or foreign pending or issued patents. For details contact www.solocup.com.” Based on that advice, Solo placed the “may be covered” language on its packaging, even though it knew that some of the packaging was not patented.
Judge Brinkema granted summary judgment to Solo, finding that Solo had no intent to deceive the public. Solo’s knowledge of the falsity of the patent marking, she held, raised a rebuttable presumption of intent to deceive. Solo successfully rebutted that presumption, however, based on its good faith reliance on advice of counsel and its desire to reduce costs and avoid business disruption. Judge Brinkema likewise found that Solo had rebutted the presumption with respect to the “may be covered” language based on the advice of counsel and for logistical and financial reasons.
The Federal Circuit affirmed the finding of lack of intent to deceive.
Solo’s unrebutted evidence that it relied on the advice of counsel, its evidence that its true intent was to reduce costs and business disruption and its good faith step of implementing and following a policy to remove the patent numbers when molds were replaced were sufficient to rebut the presumption of deceptive intent.
As to the “may be covered” language, the Court held that “it is highly questionable” whether such a statement could be made for the purpose of deceiving the public. Regardless, the court affirmed Judge Brinkema’s decision that Solo’s evidence successfully rebutted the presumption.
The Federal Circuit did not agree with Solo on everything, however. It rejected Solo’s claim that the statute did not apply where products were previously covered by a patent. It also refused to reach Judge Brinkema’s alternative holding that even if Solo had an intent to deceive, it could have committed no more than three “offenses” within the meaning of the statute.
Late last week, Judge Norman K. Moon of the U.S. District Court for the Western District of Virginia, issued a 55-page opinion denying a motion for preliminary injunction in patent litigation regarding a medical device. See MicroAire Surgical Instruments, LLC v. Arthrex, Inc., case no. 3:09-cv-00078 (W.D. Va. June 3, 2010).
Continue Reading...
The Northern Virginia Chapter of the Federal Bar Association will hold its annual Patent Litigation Seminar on June 22 from 3:00 to 5:00 at the Eastern District of Virginia's Alexandria Courthouse. District Judge Lee and O'Grady and Magistrate Judges Jones and Anderson will speak on a panel moderated by Chip Molster and Caitlin Lhommedieu. This annual seminar is known for its valuable tips from the Eastern District Judges on practice in patent cases in the Alexandria Division. A flyer and registration form for the seminar can be found here.
In an order entered June 4 in TecSec v. IBM, et al, Case No. 1:10CV115, Judge Brinkema in Alexandria rejected an increasingly common tactic in patent cases – suing multiple unrelated defendants on numerous patents. While the practice apparently is allowed in the Eastern District of Texas, Judge Brinkema rebuffed it – ordering that the litigation proceed solely against IBM and staying the claims against the other defendants. The Court’s June 4 Order can be found here.
TecSec’s Complaint was massive and complex. It asserted 11 patents with a total of 380 claims in the very esoteric field of computer encryption technology against 13 separate defendant groups, including IBM, Oracle, SAP, Adobe, eBay and PayPal.
The defendants responded aggressively, filing an early motion to modify the Court’s normal pretrial schedule to extend the time for discovery and to require TecSec to issue its claim charts very early -- prior to the Rule 16(b) Pretrial Conference. The defendants emphasized the extraordinary nature of the case, pointing out that TecSec would not identify which of the 380 claims it was asserting and the massive amount of discovery that was expected – including an agreement to up to 800 hours of fact-witness depositions.
Judge Brinkema swiftly issued an order the day after defendants’ motion was filed ordering the parties to appear for a hearing the following Friday and indicating that she was considering limiting the litigation to one of the named defendants. At the hearing, Judge Brinkema granted the motion and moved the case schedule back by more than two months, which is almost unprecedented in the Eastern District of Virginia. The judge also ordered TecSec to file its finalized claim charts in two weeks. Judge Brinkema’s April 30 Order can be found here.
TecSec’s claim charts did little to narrow the case. It asserted 205 of the claims against a total of 61 accused products. TecSec asserted 196 claims against 29 IBM products and no fewer than 68 claims against each of the other Defendants. Moreover, TecSec accused a diverse range of products of infringement, ranging from mainframes, to programming languages, routers, database systems and PayPal’s online payment systems.
In response, all of the defendants except IBM moved to sever and to stay the claims against them. The moving defendants pointed out that they were competitors selling unique, proprietary products and argued that FRCP 18 and 20 do not permit the joinder of multiple defendants into a single lawsuit where the claims against the defendants are unrelated.
After a hearing on June 4, Judge Brinkema agreed with the moving defendants and entered an order directing that the litigation proceed solely against IBM and that the claims against all other defendants be stayed.
Judge Brinkema did not set forth the reasoning for her decision, but two factors made TecSec a good candidate for severance:
The broader issue is whether the Eastern District of Virginia judges would grant severance in other multiple defendant patent cases. On that issue, there appears a clear divide between the Eastern District of Virginia and the Eastern District of Texas. We plan to address the split between the courts in detail in a follow-up blog post soon.
We blogged earlier about Prof. Mark Lemley's conclusions that the Eastern District of Virginia was a top venue for patentee plaintiffs (and for fastest resolution). Another patent litigation report -- this time by LegalMetric, an intellectual property case law research and analysis company -- has now come to similar conclusions.
The exact rankings appear to differ a bit, and LegalMetric's full data/methodology is not explained online (although we gathered and reported a bit of information about LegalMetric's methodology in a prior post). The company recently ranked the Eastern District of Virginia among the top five districts in two categories:
The latter speed ranking comes as no surprise in the "Rocket Docket," but the continued ranking of the Eastern District among top patentee plaintiff venues may raise some eyebrows.
As Law360 recently reported (“Judges Go On Offensive Against Rash Of Weak Motions,” 5/26/2010), long-time District Judge William G. Young (D. Mass) recently began raising the possibility of sua sponte summary judgment as a means of keeping patent litigants in line and restraining the tendency to file multiple or weak summary judgment motions. The article, and the case that prompted Judge Young’s actions, provide an interesting contrast with life in the United States District Court for the Eastern District of Virginia.
Continue Reading...At the risk of focusing too much on Judge Ellis, whose opinions we recently addressed here and here, we’d like to comment on two lengthy opinions Judge Ellis issued in Netscape Comm’s Corp. v. ValueClick, Inc. on April 2 (found here and at 2010 U.S. Dist. LEXIS 32817) and April 15 (found here and at 2010 U.S. Dist. LEXIS 50234). We posted on Judge Ellis’ January 29 decision in the same case here. That opinion is also reported and can be found at 684 F.Supp.2d 699.
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Netscape involved U.S. Patent No. 5,774,670, commonly called “the cookie patent.”
In his January 29 decision, Judge Ellis granted summary judgment that claim 1 of the patent was invalid under the on-sale bar of 35 U.S.C. § 102(b) as applied in Pfaff v. Wells Electronics, Inc., 525 U.S. 55 (1998). On April 2, Judge Ellis denied Netscape’s motion for reconsideration and his ruling addressed a number of interesting issues for patent litigators in the EDVA, including:
On April 15, in another summary judgment ruling, the judge addressed some common sufficiency and hearsay issues relating to prior art references. Specifically, Judge Ellis ruled:
Netscape was set for trial to begin on April 26, but shortly after Judge Ellis’ rulings, the parties began settlement discussions, and the case was settled and dismissed on May 6.
In a recent trade secret case, Judge Ellis addressed an issue that often comes up in intellectual property litigation but is rarely litigated: Do out of state defendants have to come to Virginia for a deposition?
The last case that addressed this issue in Virginia was Armsey v. Medshares Mgmt., 184 F.R.D. 569 (W.D. Va. 1998), which is not only more than twelve years old, it is a magistrate’s decision, and so its precedential value was uncertain.
In Judge Ellis’ decision, In re: Outsidewall Tire Litigation, 2010 U.S. Dist. LEXIS 44019 (E.D. Va. May 4, 2010) (found here), the defendants, which were based in Dubai, allegedly conspired with a former employee of the plaintiff to steal plaintiff’s tire designs. The plaintiff sought to take the depositions of the defendants in Virginia by noticing Rule 30(a)(1) depositions of the defendants’ managing agents and a Rule 30(b)(6) deposition of three related corporate defendants. Notably, while the corporate defendants had been served, they had not filed counterclaims. If they had, they likely would have been subject to deposition in Virginia under E.D. Va. Local Rule 30(A).
Applying Armsey, Magistrate Judge Davis held that the witnesses had to travel to Virginia for a deposition because the witnesses frequently traveled for business (though not to Virginia) and because of the time difference between Virginia and Dubai.
Judge Ellis reversed, holding that courts have generally recognized that there is a presumption that depositions of a corporate defendant, whether under Rule 30(a)(1) or Rule 30(b)(6), should be taken at the corporation’s principal place of business. The presumption can be overcome only under special circumstances, such as:
Judge Ellis found that Armsey properly applied the presumption, but he overruled the magistrate judge’s order because:
Interestingly, Judge Ellis went on to state that it was appropriate for the defendants to pay the travel costs and attorneys’ fees for travel time for two of the plaintiff’s attorneys to travel to Dubai. Conversely, if the deposition had taken place in Virginia, the judge stated, the deponents travel costs would be borne by plaintiffs. While not stating a hard a fast rule, Judge Ellis’ comments about the shifting of costs could well be relevant to future cases.
Finally, the plaintiff claimed that holding the depositions in Virginia would facilitate service of process on one of the witnesses, who was named as a defendant individually. Judge Ellis rejected this argument, emphatically stating that “[f]acilitating service of process on managing agents of foreign corporations is not a legitimate reason to compel deponents to appear in Virginia.”
Earlier this week, Judge Ellis transferred a case from the EDVA to the Northern District of California under 28 U.S.C. 1404(a). Convergence Techs. (USA) LLC v. Microloops Corp., et al., 2010 U.S. Dist. LEXIS 46155 (May 11, 2010) (opinion found here). Venue transfer decisions are common in the EDVA and probably wouldn’t justify a blog post, but Judge Ellis’ decision included a discussion of the “stream of commerce” theory of personal jurisdiction in patent cases. Federal Circuit, not regional circuit, law applies to the issue of personal jurisdiction, and so Judge Ellis’ ruling should be of interest to Virginia litigators more familiar with the Fourth Circuit’s precedent.
The “stream of commerce” refers to a defendant’s placing a product in the “stream of commerce” that takes the product to the forum state. In Asahi Metal Indus. Co. v. Superior Court, 480 U.S. 102 (1987), the Supreme Court split over whether a foreign manufacturer of bicycle components which sold its products to another foreign manufacturer was subject to personal jurisdiction in California. In short, Justice O’Connor, writing for four justices, said no, and Justice Brennan, writing for four other justices, said yes. Justice Stevens couldn’t decide who to agree with, and so no theory commanded a majority and uncertainty remains as to what is necessary to establish personal jurisdiction under a stream of commerce theory.
The stream of commerce theory is important to any component part manufacturer or to any manufacturer which sells its products to only a limited number of customers or only through third-party retailers, especially internet retailers. If personal jurisdiction requires more than selling a product which ultimately is sold to a consumer in a forum state, such manufacturers can conceivably limit the number of states in which they can be sued.
As Judge Ellis points out, the Federal Circuit held several years ago that the stream of commerce theory applies in patent infringement suits, Beverly Hills Fan Co. v. Royal Sovereign Corp., 21 F. 3d 1558, 1565-68 (Fed. Cir. 1994). The difficulty is that the Federal Circuit has refused at least three times to endorse either Justice O’Connor’s or Justice Brennan’s view of the stream of commerce theory. In that sense, the Federal Circuit shares a kinship with Justice Stevens. Thus, it isn’t entirely clear what the Federal Circuit meant when it said the stream of commerce theory applies in patent cases.
Judge Ellis’ decision, however, clarified a few points:
A few other “stream of commerce” jurisdiction points:
On May 5, the Federal Circuit upheld a decision by EDVA District Judge Leonie Brinkema reversing a decision of the Board of Patent Appeals and Interferences (BPAI) in an interference proceeding that has taken eight years to work its way through the courts. Rolls-Royce, PLC v. United Technologies Corp., No. 2009-1307 (Fed. Cir. May 5, 2010) (found here).
For an EDVA case, the case has a long and unusual history, and it’s not over. United Technology Corp. (UTC) filed its Request for Interference in the BPAI in July, 2002, and Judge Brinkema conducted a bench trial on the appeal from the BPAI in December, 2005. For some reason, however, Judge Brinkema did not issue a decision until more than three years later, on March 31, 2009. Rolls-Royce didn’t waste any time once the Federal Circuit upheld Judge Brinkema’s decision in its favor, however. The same day of the decision, Rolls-Royce filed suit for infringement of the patent-at-issue in the EDVA (Complaint found here). Rolls-Royce, PLC v. United Technologies Corp., Case No. 1:10CV00457 (E. D. Va.). The infringement suit has also been assigned to Judge Brinkema. Because of the long delay, however, Rolls-Royce has potentially lost several years of recoverable damages.
The patents involved in the interference proceeding involve an improved design for jet engine fan blades to reduce the amount of shockwaves produced by the engine. The BPAI ruled in favor of UTC, holding that UTC’s application covered a fan blade that had a tip that swept either forward or rearward.
Judge Brinkema reversed the BPAI’s decision. She construed the UTC claim to cover only fan blades with tips that swept rearward, and so the UTC patent did not capture Rolls-Royce’s patent on a forward swept tip. Based on her claim construction, Judge Brinkema found that the Rolls-Royce patent was not obvious over the UTC claim.
UTC appealed, and the Federal Circuit upheld both Judge Brinkema’s construction and her finding of non-obviousness. The Federal Circuit rejected UTC’s argument that a forward sweep in the tip of the fan blade would have been an easily predictable and achievable variation in view of the disclosure of the rearward sweep in UTC’s earlier application. The invention was not obvious to try, the Court held, because of the broad selection of choices for further investigation that included any degree of sweep for the fan blade tip. Further, secondary considerations, which showed that an embodiment of Rolls-Royce’s invention had become the industry standard, reinforced the finding of non-obviousness.
In a brief Order (found here) on May 5, the Federal Circuit affirmed Limelight Network’s victory over Level 3 Communications in a jury trial before Judge Mark Davis in January, 2009. Level 3 Comm., Inc. v. Limelight Networks, Inc., Case No. 2:07CV589 (E.D. Va.). In the trial, which was the first patent trial overseen by Judge Davis, the jury found that Limelight did not infringe the two patents asserted by Level 3 but rejected Limelight’s claim that the patents were invalid. The patents at issue covered Internet content delivery technology which provides web site operators faster delivery for content such as video, games, music and software.
As reported on Dennis Crouch’s Patently-O (link here), Professor Mark A. Lemley of Stanford Law School has released a draft of his study on patent forum shopping, “Where to File Your Patent Case” (found here). The U.S. District Court for the Eastern District of Virginia gets a fair amount of attention in Professor Lemley’s study. Some of the take-away points about the Eastern District of Virginia include:
Thus, if statistics are any guide, the Eastern District of Virginia appears to be one of the best venues for patentee plaintiffs.
The results of Professor Lemley’s study are interesting. For example, he points out that the W.D. of Wisconsin, usually a top choice for plaintiffs, actually has among the lowest patentee win rates. Likewise, the Eastern District of Texas is not one of the five best districts for plaintiffs. While Professor Lemley includes a number of caveats and qualifications, his draft report (and Dennis Crouch’s summary thereof) are well worth a read.
As we posted here, on February 25 a jury awarded $19 million in damages to CompX International in its patent infringement lawsuit against Humanscale Corp. Humanscale Corp. v. CompX Inter., Inc., Case No. 3:09CV86 (E.D. Va.). In a Memorandum Opinion dated April 29, Judge Spencer has denied CompX’s post-trial motion for a permanent injunction enjoining the sale of the accused products.
CompX claimed that the parties were direct competitors and that it had lost market share and customer goodwill as a result of Humanscale’s infringement. In response, Judge Spencer held:
CompX also moved for entry of judgment on the jury’s verdict and for an award of pre-judgment and post-judgment interest. The Court took those motions under advisement because Humanscale’s post-trial motions, particularly its laches motion, had not yet been decided. Humanscale’s motions were filed April 16 and will not be fully briefed until late May.
Summary Judgment Granted of Noninfringment
By Megan Rahman
In a March 10, 2010, Judge Smith granted summary judgment of noninfringement in the case of American Piledriving Equipment, Inc. v. Geoquip, Inc., Civil Action No. 2:08cv547 (E.D. Virginia). Plaintiff American Piledriving Equipment (“APE”) claimed that the Defendant Geoquip infringed U.S. Patent No. 5,355,964 (the “964 Patent”), which involves an assembly for pile driving. The parties filed cross-motions for summary judgment – Geoquip filed a motion for summary judgment of noninfringment and invalidity of the ‘964 Patent and APE filed a motion for summary judgment of infringement.
Of the twenty-seven claims recited in the ‘964 Patent, APE claimed that Geoquip’s Model 250 and Model 500 vibratory pile driving devices infringed 16 of them. The court had conducted a Markman hearing in December and the parties had filed their summary judgment motions in January. With no dispute regarding the configuration of the accused devices or Geoquip’s use and rental of the devices, all involved agreed that the matter was ripe for summary judgment.
Relying on the claim construction, the court determined that the claims did not encompass either the Model 250 or the Model 500 either literally or under the doctrine of equivalents. As a result, the court found no infringement of the independent claims of the ‘964 Patent, granting Geoquip’s motion for summary judgment of noninfringment and denying APE’s summary judgment motion of infringement. Finally, the court exercised its discretion to dismiss Geoquip’s counterclaim of invalidity as moot in light of its holding of noninfringement, thereby denying Geoquip’s motion for summary judgment of invalidity.
One comment on this case is that despite holding a claim construction hearing some months prior to the summary judgment briefing, the court was still left to determine the meaning of at least one additional term not used within the claims of the ‘964 Patent but used within the specification in order to reach its ruling.
Free-Flow Packaging (FPI) probably felt like it won a victory when Judge Gerald Bruce Lee granted it partial summary judgment in a the declaratory judgment action brought by Pregis Corporation. Pregis Corp. v. Doll, et al., 2010 U.S. Dist. LEXIS 25582 (E.D. Va. March 16, 2010).
Free-Flow’s victory, however, was short-lived. On March 18 -- after twenty-two days of trial and deliberations -- the jury returned a verdict in favor of Pregis on all four of the FPI patents in suit.
FPI and Pregis are direct competitors in the business of making and selling machines used to make air-filled packing cushions (like bubble wrap). Pregis sought a declaratory judgment that it did not infringe four FPI patents and that the patents were invalid.
In his summary judgment opinion, Judge Lee ruled:
FPI’s victory, however, proved illusory. The jury found that Pregis did not infringe 22 of the 23 asserted claims and that all the asserted claims of three of the four patents at issue, including the one infringed claim, were obvious. The verdict form can be found here.
Two other comments on this case:
Our colleagues Al Jacobs, Trenton Ward, Jihan Jenkins and Puja Patel have written a detailed analysis of the Federal Circuit's highly anticipated en banc decision in Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., No. 2008-1248 (Fed. Cir. March 22, 2010), which can be found here.
In Ariad, "the Federal Circuit reaffirmed that patents must satisfy “two separate description requirements: a ‘written description’ [i] of the invention, and [ii] of the manner and process of making and using [the invention].” The Federal Circuit’s decision is in line with existing recent precedent, but raises questions about the ability of some inventors, particularly universities and research entities, to obtain patents on early stage research." To read more, click here.
In a string of recent cases addressing reasonable royalty damages, the Federal Circuit has put patent litigators and district courts on notice that they “must carefully tie proof of damages to the claimed invention’s footprint in the marketplace.” ResQNet.com, Inc. v. Lansa, Inc., 2010 U.S. App. LEXIS 2453 at *19 (Fed. Cir. Feb. 5, 2010).
First, in Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir. 2009), the Court sharply criticized evidence on damages and overturned an award of a lump sum royalty of $358 million.
Then, in ResQNet.com, decided last month, the Court overturned a district judge’s award of a 12.5% hypothetical royalty as speculative.
Just last week, Judge Rader, sitting in the district court for the Eastern District of Texas, applied Lucent and ResQNet and excluded the opinion of an expert witness for improperly relying on general royalty rates in the software industry rather than existing licenses to the patents-in-suit and improperly applying the “entire market value rule.” IP Innovation L.L.C. v. Red Hat, Inc., Case No. 2:07-cv-447 (E.D. Tex. March 2, 2010) (Rader, J.).
The one exception to this trend is the December, 2009 decision in i4i L.P. v. Microsoft Corp., 589 F.3d 1246 (Fed. Cir. 2009), in which the Court did not conduct the type of searching review of the evidence that characterizes Lucent and ResQNet. i4i, however, involved only the appeal of a motion to exclude an expert’s testimony because the defendant failed to make a pre-verdict motion for judgment as a matter of law (JMOL) challenging the sufficiency of the evidence of damages. A district court’s decision on a motion to exclude evidence is reviewed under a deferential abuse of discretion standard, and the Court expressly stated that it addressed only the reliability of the expert’s methodology, not his conclusions. The Court also stated that the result may have been different if the defendant had made a timely motion for JMOL and appeared to draw a distinction between the admissibility of an expert opinion and whether that opinion provided a sufficient basis for a damage award.
A full analysis of the opinions is beyond the scope of a blog post, but the cases contain several high-level lessons for patent litigators, including:
Continue Reading...As we blogged here, Judge Payne recently dismissed claims relating to seven of the nine patents asserted by WiAV Solutions against multiple defendants (including Nokia, Motorola and Palm) because the plaintiff did not have the exclusive right to license the patents. The Court has now certified WiAV’s appeal of that decision to the Federal Circuit. WiAV Solutions LLC v. Motorola, Inc. et al., 2010 U.S. Dist. LEXIS 21508 (E.D. Va. March 9, 2010).
In his opinion, Judge Payne rejected the defendants’ argument that the appeal should not be certified because most of the accused products are alleged to infringe both the dismissed patents and the two remaining patents. The judge also rejected the argument that certification of the appeal could result in a “two-trial scenario” that may subject the defendants to “double jeopardy on damages.” Judge Payne noted that the appeal would only involve the discrete issue of standing and that delaying certification could also result in two trials if the Federal Circuit overturns the standing decision after trial on the remaining patents.
Sen. Patrick Leahy announced last Thursday that agreement had been reached by a bipartisan group of Senators on a compromise bill providing for patent reform. The full text of the bill can be found here.
Undoubtedly, the blogosphere and legal publications will shortly become saturated with analysis of the compromise bill and speculation about its chances for passage. Last April, we blogged about a relatively minor provision of the bill -- the provisions addressing venue. As patent litigators in Virignia, we have a particular interest in venue, because the venue provisions of the bill will direcly affect the volume of patent cases filed here.
The compromise version of the bill includes the same provisions discussed in our earlier post, which can be found here. Here are the highlights (all of which are discussed in detail in the earlier post):
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On February 25, a jury found in favor of the patentee, CompX International, in the case of Humanscale Corp. v. CompX International, et al., Case No. 3:09cv86 (E.D. Va.), and awarded $19 million dollars in past damages and a reasonable royalty of 6% of future sales of infringing products. The jury’s verdict can be found here.
The patents-at-issue, U.S. Patent Nos. 5,037,054 and 5,257,767, cover adjustable platforms for computer keyboards. After an eight-day jury trial before Chief Judge Spencer in the Richmond Division of the EDVA, the jury found that Humanscale’s accused keyboards infringed three claims of the ‘054 patent and two claims of the ‘767 patent. The jury also found that the patents were valid and rejected Humanscale’s on-sale bar and laches defenses.
In a December 18 decision, the U.S. District Court in Richmond dismissed seven claims of patent infringement for lack of standing because the plaintiff did not have the exclusive right to license the patent.
In WiAV Solutions LLC v. Motorola, Inc., et al., Case No. 3:09CV447 (E.D. Va. Dec. 18, 2009), WiAV brought claims of infringement of nine patents involving wireless communication technology against multiple defendants. Seven of the patents (the “Mindspeed Patents”) had been assigned to Mindspeed Technologies, which was named in the case as defendant patent owner.
The defendants moved to dismiss the claims related to the Mindspeed patents for lack of standing. In a December 18, 2009 decision, Judge Robert E. Payne ruled that WiAV lacked constitutional standing because it was not an exclusive licensee of the patent. The key points from Judge Payne’s opinion:
The Mindspeed Patents had been transferred and licensed through a complicated series of agreements. At least four other parties retained the right to grant new licenses in the field of wireless handsets, defeating WiAV’s claim of exclusivity.
Judge Payne rejected WiAV’s request to adopt a new legal principle that, if a grantor retains a limited right to sublicense, it does not defeat exclusivity because WiAV could have alleviated the standing issue at the time it contracted for its rights and because WiAV’s request ran against well-accepted legal principles.
Last August, we raised here whether the Supreme Court’s decision in Ashcroft v. Iqbal, 129 S.Ct. 1937 (2009) foreshadowed enhanced pleading requirements in patent infringement cases. After several months, the answer from the district courts appears to be yes and no.
For claims of direct infringement, the district courts have followed the Federal Circuit’s decision in McZeal v. Sprint Nextel Corp., 501 F.3d 1354, 1357 (Fed. Cir. 2007), a pre-Iqbal decision in which the Court set a low bar for pleading direct infringement.
For claims of indirect infringement, however, the courts have required specific factual allegations showing knowledge and intent to induce or contribute to infringement by another.
Direct Infringement
Only two reported decisions, Elan Microelectronics Corp. v. Apple, Inc., 2009 U.S. Dist. LEXIS 83715 at *5 (N.D. Cal. Sept. 14, 2009), and Fifth Market, Inc. v. CME Group, Inc., 2009 U.S. Dist. LEXIS 108776 at *3-*4 (D.Del. May 14, 2009), have granted a motion to dismiss a complaint for failure to meet the pleading requirements of Fed.R.Civ. P. 8, and in Fifth Market, the defendant's victory was short-lived, as the Court held that an amended complaint was sufficient.
Form 18 of the Federal Rules of Civil Procedure contains a sample complaint for direct patent infringement, and a range of district courts have held that a Complaint asserting a claim for direct infringement is sufficient if it contains the minimal information listed in Form 18. While several courts have noted that it is difficult to reconcile Form 18 with the Supreme Court’s guidance in Iqbal and Twombley, it appears that a claim for direct infringement requires only the following:
See McZeal, 501 F.3d 1354, 1356-58;
Mark IV Indus. Corp. v. Transcore, L.P., 2009 U.S. Dist. LEXIS 112069 at *8-*10 (D.Del. Dec. 2, 2009);
Sharafabadi v. University of Idaho, 2009 U.S. Dist. LEXIS 110904 at *10-*11 (W.D. Wash. Nov. 27, 2009);
Mallinckrodt, Inc. v. E-Z-EM, Inc., 2009 U.S. Dist. LEXIS 108696 at *9-*10 (D.Del. Nov. 20, 2009);
Fifth Market, Inc. v. CME Group, Inc., 2009 U.S. Dist. LEXIS 108776 at *3-*4 (D. Del. May 14, 2009)
Indirect Infringement
There is no form complaint for indirect infringement analogous to Form 18. As a result, district courts have applied a higher standard for pleading claims of indirect infringement. One court, Elan, has even held that where a Complaint alleges that a defendant “directly and/or indirectly” infringed, a plaintiff cannot rely on Form 18 but must comply with the stricter standards in Iqbal and Bell Atlantic Corp. v. Twombley, 550 U.S. 544 (2007).
To satisfy Iqbal and Twombley, a claim of indirect infringement must include:
On January 29, 2010, Judge Ellis issued a comprehensive, 49-page opinion (available here) on the parties’ motions for summary judgment in Netscape Communs. Corp. v. Valueclick, Inc., et al., Civil Action No. 1:09cv225 (E.D. Virginia). Plaintiff Netscape claims that the Defendants willfully infringed U.S. Patent No. 5,774,670 (the ‘670 Patent), known as the “Internet cookie patent.” After several months of discovery, the parties filed for summary judgment on twelve separate issues. Specifically, the parties filed cross-motions on:
(1) invalidity based on the on-sale bar of 35 U.S.C. § 102(b); and
(2) whether plaintiff waived its right to enforce the ‘670 patent.
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In a February 5 decision, the Federal Circuit clarified that an accused infringer need not have actual knowledge of a patent to be liable for inducement of infringement. SEB S.A. v. Montgomery Ward & Co., Inc., 2010 U.S. App. LEXIS 2454 (Fed. Cir. Feb. 5, 2010).
A little over three years earlier, an en banc panel of the Court held in DSU Med. Corp. v. JMS Co., 471 F.3d 1293, 1304 (Fed. Cir. 2006) that “[t]he requirement that the alleged infringer knew or should have known his actions would induce actual infringement necessarily includes the requirement that he or she knew of the patent.”
The DSU decision would appear to require that an accused infringer have actual knowledge of a patent as a basis for inducement liability. The SEB panel held, though, that DSU did not set out the “metes and bounds” of the knowledge-of-the-patent requirement. Since the record showed that the accused infringer had actual knowledge of the patent in suit, the Court noted, the DSU Court never addressed the scope of knowledge required to prove intent.
The “knowledge” requirement, SEB holds, is met not only by actual knowledge but also by “deliberate indifference” to the existence of a patent. The basis for the Court’s conclusion, though, is unclear. The Court simply notes that inducement requires the specific intent to encourage another’s infringement, and that in other contexts, specific intent includes “deliberate indifference.” This reasoning assumes that the specific intent and knowledge of the patent are not separate elements of proof of inducement. Rather, the Court conflates knowledge of the patent within the requirement of specific intent and concludes that specific intent may be proven not only through actual knowledge but also through deliberate indifference.
The Court also clarified that “deliberate indifference” is not synonymous with a constructive knowledge. Deliberate indifference, unlike constructive knowledge, may require a subjective determination that a defendant knew of and disregarded a risk. Thus, “deliberate indifference” appears to be an intermediate standard, somewhere between constructive and actual knowledge. In fact, the Court held that deliberate indifference “is not different from actual knowledge, but is a form of actual knowledge.”
In SEB, there was no direct evidence of actual knowledge of the patent, but there was adequate evidence that the defendant deliberately disregarded a known risk that the plaintiff had patented its product based on the following factors:
The Court also left the door open to other ways of proving knowledge of a patent. For example, the Court suggested that constructive knowledge of a patent combined with “persuasive evidence of disregard for clear patent markings” may be sufficient.
On January 11, the Supreme Court declined certiorari in the case of Astellas Pharma, Inc. v. Lupin, et al., Case No. 09-335, upholding a June, 2007 decision by Judge Payne in the Eastern District of Virginia. Our earlier post on the Federal Circuit's Decision can be found here.
The Astellas case involves a generic version of the drug Omnicef (cefdinir), which is an antibiotic used to treat a number of common infections. The generic manufacturer, Lupin, alleged that Astellas’ patent on crystalline cefdinir only covered the Crystal A form of the drug, and Lupin alleged that its generic version of Omnicef only contained the Crystal B form.
In his claim construction opinion, Judge Payne ruled that Astellas’ patent was limited to the Crystal A form, effectively deciding the case in favor of Lupin. In short, the claims at issue were “product by process” claims, and Judge Payne ruled that each of the process steps in the claim were limitations on the invention. In an en banc decision, the Federal Circuit agreed, settling a long-standing split of authority on product by process claims.
In Heinz Kettler Gmbh v. Little Tikes Co., Civil Action No. 2:09cv500 (E.D. Va.), Judge Doumar denied Little Tikes’ motion to dismiss Kettler’s claims for patent infringement and awarded sanctions against Little Tikes for filing the motion to dismiss in the first place. The case against Little Tikes follows an earlier case that Kettler brought against Rand International and Little Tikes, Heinz Kellter GmbH v. Rand International, Case No. 1:08cv679 (E.D. Va.), for infringement of Kettler’s patents by certain tricycles sold by Rand International and Little Tikes. In that case, Kettler agreed to dismiss its claims against Little Tikes relating to the Ofrat Model No. 129H tricycle at issue based upon Little Tikes’ multiple representations, in discovery responses and correspondence from Little Tikes’ counsel, that Little Tikes and did not manufacture, sell or distribute the Ofrat Model No. 129H tricycles, and that Little Tikes was nothing more than a trademark licensor. Kettler later learned that these representations were, “at best, misinformation” (according to Judge Doumar), and brought suit against Little Tikes and its parent, MGA Entertainment, Inc., for patent infringement by Little Tikes’ Product No. 615221.
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In Pequignot v. Solo Cup Co., No 1:07cv897-LMB/TCB (E.D. Va.), which we discussed in April 2009 (see link), Judge Brinkema initially denied Solo Cup’s motion to dismiss, but later granted summary judgment to Solo Cups upon finding that Solo lacked an intent to deceive the public given its reasonable reliance on advice of counsel in deciding to replace patent-marking molds with non-marking molds in a gradual fashion. See Pequignot v. Solo Cup Co., 646 F. Supp.2d 790, 2009
LegalMetric, an intellectual property case law research and analysis company, recently released its list of district courts in which the most patent cases were filed in 2009. That the Central District of California and Eastern District of Texas came in first and second, respectively, probably won't surprise any IP litigators. Our own Eastern District of Virginia (the "Rocket Docket") placed tenth.
LegalMetric Director of Research Greg Upchurch, in a conversation with this author, stated that LegalMetric does a bulk download every quarter of every case identified in PACER as a patent case. The company's business focuses on analyzing IP decisions so as to enable litigators to evaluate how particular courts, judges, and issues may impact their case. Statistics like the 2009 patent filings list are a happy by-product of that business.
I think it's a great thing that there can be any degree of data mining from PACER and hope that the federal courts will continue to expand the ability to do queries and analysis. In our electronic world, the data is there; the challenge is finding, organizing, and making good use of it.
Those interested in more information about the opportunities and challenges of litigating patent cases in the Eastern District of Virginia can check out past publications on that topic by my colleagues Robert Angle and Dabney Carr (listed under "Publications" on each's page or accessible directly here and here) and contact one of this blog's authors.
Four times over the course of less than a year, the Federal Circuit has reversed a decision by the Eastern District of Texas (EDTex) denying a motion to transfer venue under 28 U.S.C. § 1404(a). Posts on the first two decisions, In re: TS Tech USA Corp., 551 F.3d 1315 (Fed. Cir. 2008) and In re: Genentech, 566 F. 3d 1338 (Fed. Cir. 2009), can be found here and here.
Last month, the Federal Circuit issued two more writs of mandamus reversing the EDTex for refusing to transfer a patent case to a different venue. See In re: Nintendo Co., Ltd., Misc. No. 914, 2009 U.S. App. LEXIS 27647 (Fed. Cir. Dec. 17, 2009); In re: Hoffman-La Roche Inc., Misc. No. 911, 2009 U.S. App. LEXIS 26244 (Fed. Cir. Dec. 2, 2009).
In Hoffman, the Court reversed a decision by EDTex Chief Judge Folsom denying transfer of a pharmaceutical patent case to the Eastern District of North Carolina.
In Nintendo, the Court used similarly strong language in reversing a denial of transfer by Judge Davis, holding that “in a case featuring most witnesses and evidence closer to the transferee venue with few or no convenience factors favoring the venue chosen by the plaintiff, the trial court should grant a motion to transfer.”
Despite the strong messages that the Federal Circuit continues to send regarding venue motions in the EDTex, it remains to be seen whether the district judges will listen. Hoffman-La Roche and Nintendo will be helpful to sole defendants sued in the EDTex, but transfer will continue to remain difficult where there are multiple defendants in different forums.
Hopefully you have already gotten a gift for that special IP litigant in your life this year. If you’re thinking ahead to a 2010 wish list and have a preliminary injunction in mind, you may have noticed last month’s opinion by U.S. District Judge Henry E. Hudson in PRE Holding, Inc. v. Monaghan Medical Corp., no. 3:09CV458, 2009 U.S. Dist. LEXIS 107222 (E.D. Va. Nov. 17, 2009) (page citations to this opinion are to the version freely available from PACER/ECF).
Other IP web news sources have questioned whether this opinion raises the bar for a preliminary injunction for patent litigants and whether it is consistent with case law from the U.S. Court of Appeals for the Federal Circuit. (Federal Circuit law governs the issuance of injunctive relief under 35 U.S.C § 283 because the question “involves substantive matters unique to patent law.” E.g., Hybritech, Inc. v. Abbott Labs, 849 F.2d 1446, 1451 n.12 (Fed. Cir. 1988). “[P]urely procedural questions . . . are controlled by the law of the appropriate regional circuit.” Id.
In the post below, I conclude that debate over the PRE Holding opinion reflects the difficulties with the preliminary injunction standard and the hazards of not being concise, and that the PRE Holding opinion does not represent a change in the law.
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Yesterday the Supreme Court of the United States heard oral arguments in Bilski v. Kappos (SCotUS case no. 08-964, on appeal from In re Bilski, 545 F.3d 943 (Fed. Cir. 2008)).
The Supreme Court’s website has the oral argument transcript. The Washington Post report shows a recognition of the high stakes and illustrations of skepticism in the justices’ hypotheticals. The New York Times also describes discomfort with the patent at issue and notes the unusual level of attention the case has received, with one GW professor labeling it “the case of the century for patent law.”
Continue Reading...This post continues a roundup of recent Eastern District of Virginia decisions in IP cases, covering a patent summary judgment opinion and a Markman opinion.
In Rutherford Controls Int’l Corp. v. Alarm Controls Corp., Civil Action No. 3:08-cv-369, 2009 U.S. Dist. LEXIS 98762 (E.D. Va. Oct. 23, 2009), District Judge Henry E. Hudson issued an opinion rendering a decision on several summary judgment motions pending before the Court in a patent infringement action consisting of several consolidated cases. Rutherford filed a complaint for infringement against defendants Vanguard Security Engineering Corporation Ltd. and Harco Enterprise, and Vanguard and Harco filed counterclaims against Rutherford seeking declaratory judgment.
In a parallel action, Rutherford filed suit against Security Door Controls, Inc. seeking both damages for infringement and declaratory judgment. Security Door filed a counterclaim seeking declaratory judgment and damages for infringement. At issue were three patents regarding electronic door locking and unlocking mechanisms, often used to control access to buildings or closed areas. Two of the patent belonged to Rutherford and one was assigned to Security Door.
Continue Reading...In a case appealed from the Eastern District of Virginia, the Federal Circuit has clarified how the doctrine of res judicata / claim preclusion applies to subsequent patent infringement actions.
On September 8, 2009, the Federal Circuit affirmed Nystrom v. Trex Co., 553 F. Supp. 2d 628 (E.D. Va. 2008) [Norfolk – Kelley, J.]. See Nystrom v. Trex Co., case no. 09-1026, 2009 U.S. App. LEXIS 20016 (Fed. Cir.). The opinion has been marked as precedential but not yet assigned an F.3d citation. The Federal Circuit affirmed on alternative grounds, however, reaching a different conclusion with respect to claim preclusion than the Eastern District of Virginia did.
This appeal was from Plaintiff Ron Nystrom’s second suit against several defendants, including Home Depot, alleging infringement of a particular patent related to certain types of boards for decking (“the ‘831 patent”). In the first suit, the judge construed the claims in the patent to apply to materials made of wood and manufactured with woodworking techniques and thus found no infringement in the challenged products because they were made of composite materials and not through woodworking techniques.
Although the Eastern District granted summary judgment against Nystrom, it rejected Defendants’ claim preclusion argument in the second suit. Relying primarily on Hallco Mfg. Co. v. Foster (“Hallco II”), 256 F.3d 1290, 1294 (Fed. Cir. 2001), and Del Mar Avionics, Inc. v. Quinton Instrument Co., 836 F.2d 1320 (Fed. Cir. 1987), Judge Kelley explained that claim preclusion did not apply because the allegedly infringing product in the second suit was materially different from the allegedly infringing product in the first suit and because the proper way to apply the “essentially the same” test from prior Federal Circuit cases was to “compare[ ] device to device,” rather than the device to the claim. See Nystrom, 553 F.Supp.2d at 632, 633.
Last week’s decision by the Federal Circuit regarding the pleading requirements for an inequitable conduct claim, Exergen Corp. v. Wal-Mart Stores, Inc., 2009 U.S. App. LEXIS 17311 (Fed. Cir. Aug. 4, 2009), and the Supreme Court’s decision earlier this summer in Ashcroft v. Iqbal, 129 S.Ct. 1937 (2009) may foreshadow additional enhanced pleading requirements in patent infringement cases.
Robert Matthews at Mathews Patent-Law Consulting has published a detailed analysis of Exergen that can be found here. In short, under Fed.R.Civ.P. 9, a claim of inequitable conduct must include specific identification of the who, what, when, where and how of the material misrepresentation committed before the PTO. As Matthews states, under Exergen, “an accused infringer must identify the exact information within a withheld prior art reference that it alleges is material, identify where that information can be found in the reference, identify the particular claim limitations or combination of claim limitations for which the withheld information is material, and then show how the prosecution record lacked that information.”
An accused infringer must also identify by name the specific individual who allegedly knew of the allegedly material information and withheld or misrepresented that information to the PTO. A party may plead “on information and belief” but only if essential information lies within another party’s control and only if the pleading sets forth specific facts upon which the belief is reasonably based. Thus, the mere fact that an applicant disclosed a reference while prosecuting one application but did not disclose the same reference while prosecuting a second application is insufficient to plead the requirement of deceptive intent.
Exergen echoes the Supreme Court’s decisions in Iqbal and Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) that under Fed.R.Civ. P. 8, a pleading offering “labels and conclusions” or a “formulaic recitation of a cause of action will not do.” As the Court stated in Iqbal, “While legal conclusions can provide the framework of a complaint, they must be supported by factual allegations.” Thus, a plaintiff must make “well-pleaded factual allegations” that “plausibly give rise to an entitlement to relief.”
Exergen takes Iqbal and Twombley a step further, requiring allegation of facts with a high degree of specificity and detail, and Exergen may presage stricter pleading requirements for other types of patent claims and defenses.
So far, though, the Federal Circuit has not required stricter pleading of patent infringement claims. Applying Twombly, the Federal Circuit has held that a claim for patent infringement must only assert that the plaintiff owns the patent and that the defendant infringed the patent, must describe, in general terms, “the means by which the patent was infringed” and must identify the specific parts of patent law that are implicated. McZeal v. Sprint Nextel Corp., 501 F.3d 1354, 1357 (Fed. Cir. 2007). A patentee “is not required to specifically include each element of the claims of the asserted patent." Thus, here in Virginia, Judge Payne has held that a plaintiff satisfies McZeal by identifying the infringing devices at issue. Taltwell, LLC v. Zonet USA Corp., 2007 U.S. Dist. LEXIS 93465 at *40 (E.D.Va. Dec. 20, 2007). Judge Dyk dissented in McZeal, arguing that a patentee should be required to specify which claims are infringed and the features of the accused device that correspond to the claim limitations, and Iqbal arguably supports Judge Dyk’s position. At this point, though, it appears that the Federal Circuit will not impose stricter requirements for pleading patent infringement, even though a plaintiff’s Rule 11 obligations requires a detailed infringement analysis before suit is filed and such information often must be provided in a claim chart filed early in the case.
As detailed in an earlier blog post found here, a group of intellectual property attorneys from around the Eastern District, including myself, Robert Angle, Maya Eckstein, Dave Finkelson, Dana McDaniel, Chip Molster, Steve Noona and Bob Barrett, have been working over the past several months to draft a local patent rule and model patent pretrial schedule and pretrial order to use in patent cases in the Eastern District of Virginia.
A draft of a proposed local rule was circulated to several statewide intellectual property bar groups, and comments were received from practicioners in all parts of the district. The comments were considered and many were adopted, and a revised proposed local rule, model scheduling order and model pretrial order have been submitted to Chief Judge Spencer. The judges will consider the proposal at their district-wide meeting, which occurs in October. The revised rule can be found here, and an executive summary of the rule is here.
As we’ve said before, the judges of the EDVA will obviously decide on their own whether to adopt any proposed changes to their Local Rules. That said, the support of practitioners and interested bar organizations cannot hurt and may well help. If you believe the proposed rules make sense, please express your support to the EDVA judges. If you have other comments, submit them on this blog, and we will pass them on to the judges.
A common concern in all patent litigation is how to maintain the confidentiality of proprietary and valuable business information produced in discovery. Before trial, standard protective orders provide an easy, straightforward solution. Even confidential documents submitted with pre-trial motions are routinely filed under seal – and requests to seal such exhibits are rarely challenged. It is less certain, though, whether exhibits shown to a jury at trial may be kept from becoming a part of the public record.
Judge Davis in the Norfolk Division recently addressed the confidentiality of trial exhibits in Level 3 Comm’s., LLC v. Limelight Networks, Inc., Case No. 2:07cv589, 2009 U.S. Dist. LEXIS 37775 (E.D.Va. April 30, 2009). In Level 3, a third party, Savvis, produced confidential information under a protective order. Two days before trial (on a Sunday), Level 3 informed Savvis that it intended to introduce some of Savvis’ documents as trial exhibits. In the evening after the first day of trial, Savvis responded by asking Level 3 to inform the Court that Savvis wanted the documents to remain under seal. Level 3 refused Savvis’ request, and Savvis took no further action until more than a month later (three weeks after the trial had ended), when it moved to seal the trial exhibits that contained its documents.
Judge Davis held that Savvis had waived the confidentiality of its documents by failing to object before the exhibits were introduced. Even if Savvis had objected, the judge ruled, the public’s First Amendment right of access to trial exhibits trumped Savvis’ confidentialiy interest because Savvis did not claim the documents contained trade secrets.
The main points in Judge Davis’ opinion are:
Judge Davis did not define what constitutes a “trade secret” and the term could potentially encompass a multitude of categories of confidential business information – not just formulas, designs or inventions but also costs, pricing and specific contractual terms. Thus, while Judge Davis ultimately (after 33 pages) sets forth a simple rule – only exhibits that contain trade secrets can potentially remain sealed at trial – he does not shed any light on how broadly the “trade secret” protection for trial exhibits extends.
Since I posted here on the shift of patent infringement case filings away from the Eastern District of Texas, the Federal Circuit has issued another decision reversing a denial of a motion to transfer venue in a patent case in the Eastern District of Texas (EDTex). See In re Genentech, Misc. Dock. No. 901, 2009 U.S. App. LEXIS 10882 (Fed. Cir. May 22, 2009).
Genentech rejects several grounds cited in recent EDTex decisions denying transfer.
In Genentech, fourteen witnesses lived in California, the proposed transferee forum, while the six inventors lived in Europe, a prior art witness lived in Iowa and four of the patent prosecuting attorneys lived on the East Coast. The Federal Circuit held that the District Court had placed too much emphasis on the additional distance that the European witnesses would have to travel to go to California rather than Texas.
Thus, the Court soundly rejected the rationale that “Texas must be more convenient because it’s in the middle of the country” found in several EDTex decisions. Rather, where material witnesses reside in the transferee forum and no witnesses reside in the EDTex, it is clear error to find that the convenience of witnesses weighs against transfer.
Two other holdings in Genentech will also weigh in favor of transfer in future cases.
One common basis for denying transfer post–TS Tech remains available – the presence of multiple defendants in different forums. In Genentech, both defendants were located in California (though they were in two different court districts). Where defendants are in multiple forums, or where there are relevant defense witnesses in multiple forums, transfer will remain difficult in the EDTex.
Below is a guest post from my colleague Merril Hirsh about a recent Federal Circuit decision on patent pools:
On April 20, 2009, the Federal Circuit issued a 2-1 decision in Princo Corp. v. Int’l Trade Comm’n, analyzing whether there was "patent abuse" in the operation of a patent pool used for compact discs. The majority held that patent pools that are "too deep" (because they include unnecessary patents) could constitute an abusive tying arrangement (but that this one did not); and that patent pool that are "too wide" (because they also restrict the development of potentially alternative technology) could constitute an abusive agreement not to compete (and this one might). Read more about this important decision here.
To start, I have to admit my bias in favor of having local patent rules for the U.S. District Court for the Eastern District of Virginia (the "EDVA") and was involved in the process of the proposal discussed below. With that disclosure, I urge you to consider and offer support for this proposal. Obviously, the judges of the EDVA will decide on their own whether to adopt any proposed changes to their Local Rules. That said, the support of practitioners and interested bar organizations cannot hurt and may well help. Below is the text from an email distributed to the members of the Virginia State Bar’s Intellectual Property Section:
Over the past several years, many U.S. district courts have adopted some form of local patent rules (see http://www.nyipla.org/public/PatentLocalRules.doc for a slightly out-of-date list of U.S. district courts that have adopted some form of local patent rules) to provide judges and parties with a roadmap for handling patent cases. There are no local rules for patent cases in the U.S. District Court for the Eastern District of Virginia (the "EDVA"), and, indeed, the manner in which Judges in the EDVA handle patent cases vary widely from district to district and judge to judge. Believing that the EDVA would benefit from the adoption of some local rules for patent cases, several members of this IP Section of the Virginia States Bar contacted Chief Judge James C. Spencer to gauge the judges' willingness to consider a proposal for some sort of local patent rules and to clarify the procedure for having such a proposal considered by the Court. At that time, Chief Judge Spencer expressed a willingness to consider local patent rules and described the procedure for getting such proposed local rules considered, which involves submitting them to a Local Rules subcommittee of judges for consideration over the summer so that they can be vetted and presented at the Court's annual conference in the Fall. Thus, he suggested that any proposal be submitted by late May or early June. By way of further guidance and advice, Chief Judge Spencer suggested that the proposed rules not be too long or intricate, and that they afford the judges substantial discretion in implementing the proposed rules or procedures in their own cases.
With this guidance and timeline in mind, a small working group (involving Dabney Carr, Maya Eckstein, Dave Finkelson, Dana McDaniel, Chip Molster, Steve Noona, Bob Barrett and Robert Angle) worked to craft a proposal that balances the various competing factors and interests in EDVA patent litigation, promotes consistency amongst the divisions, and saves the parties involved time and money. Attached is a draft proposed Local Rule and model Pretrial Order. Without explaining all of the back-and-forth that went into them, the proposed Local Rule and model Pretrial Order are drawn from practices and procedures already used by some of the judges in the EDVA, require parties to produce relevant disclosures and encourage resolution of claim terms early in the case to ameliorate the problem of late claim construction overlapping with expert witness disclosures, and leave much of the implementation to the discretion of the individual judges (which was deemed necessary to have any chance of adoption by the Court as a whole). The draft proposal has been reviewed with Chief Judge Spencer and a few other EDVA judges, all of whom have been generally favorable to the proposal. Before making a formal presentation of the proposed Local Rule and model Pretrial Order to the Court, however, the drafters of the proposed Local Rule and model Pretrial Order are seeking the review and support of this Section and other IP-related organizations in the state.
Please review the attached draft Local Patent Rule and model Pretrial Order and provide any questions or feedback you may have to Bob Barrett at rbarrett@hunton.com by May 15.
On March 27, 2009, Judge Brinkema ruled in Pequignot v. Solo Cup Company, 2009 U.S. Dist. LEXIS 26020 (E.D.Va. March 29, 2009), that 35 U.S.C. § 292 -- which prohibits false patent marking -- is "one of the few remaining qui tam statutes in American law." Matthew Pequignot, a licensed patent attorney, sued the Solo Cup Company ("Solo"), the well-known maker of many disposable cups, lids, plates, bowls and utensils, for falsely markings its products with two expired patents, U.S. Patent No. RE28, 797, entitled "Lid," and U.S. Patent No. 4,589,569, entitled "Lid for Drinking Cup," and for including the phrase "This product may be covered by one or more U.S. or foreign pending or issued patents" on products that were not protected by any patent or pending patent application. Solo moved to dismiss asserting that Pequignot lacked Article III standing because he failed to allege any actual or imminent injury. Solo also argued that Pequignot’s claims violated the constitutional separation of powers doctrine under Article II. Judge Brinkema rejected both arguments.
While agreeing that Pequignot lacked Article III standing as a traditional plaintiff, Judge Brinkema held that § 292(b) confers standing on him to sue as a qui tam relator. Section 292(a) provides that whoever falsely marks a product with either a patent number, the words "patent" or "patent pending," or other words or numbers implying that the product is protected by a current or pending patent when it is not, and does so with the intent of deceiving the public, "[s]hall be fined not more than $500 for every such offense." Significantly, § 292(b) provides that "Any person may sue for the penalty, in which event one-half shall go to the person suing and the other to the use of the United States." (Emphasis added). Judge Brinkema explained that § 292(b) meets five of the six elements of a qui tam statute:
It defines a wrong to the government as the false patent marking in violation of § 292(a). It imposes a statutory penalty of up to $500 per violation. It provides that "any person may sue for the penalty," regardless of whether or not such a person is personally harmed. Finally, it allows the suing person to receive half of the recovery from the suit, with the remainder going to the government.
Id. 2009 U.S. Dist. LEXIS 26020 at *18. Judge Brinkema also noted that "the Supreme Court and those courts that have adjudicated cases under § 292 have explicitly termed a § 292(b) a qui tam statute." Id. at *18-19 (citations omitted). Accordingly, "[t]hese factors are more than sufficient to conclude that § 292(b) is indeed a qui tam statute, and therefore, that Pequignot has Article III standing, as a partial assignee of the government’s claims, to sue Solo." Id. at *26.
Judge Brinkema swept aside Solo’s argument that such a construction of § 292(b) violates Article II by impermissibly undermining the Executive Branch’s ability to control qui tam litigation:
Enforcement of the substantive provisions of § 292 is not the type of executive function whose delegation to an authority not controlled by the Executive Branch would presumptively raise serious Article II questions.
Id. at *37. Judge Brinkema appeared to rue her decision to deny the motion to dismiss, describing the survival of § 292(b) as a qui tam statute as "likely an accident of history." "The only practical impact of the qui tam provisions of § 292(b) appears to be its potential to benefit individuals, such as the plaintiff in the case at bar, who have chosen to research expired or invalid patent markings and to file lawsuits in the hope of financial gain." Id. at *42. Judge Brinkema invited Solo and other potential defendants to seek revision of it in Congress as has been done with other qui tam statutes. Until then, however, Pequignot opens the door for other qui tam plaintiffs to get into the potentially lucrative game of suing product manufacturers who continue to mark their products with expired patents.
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The Federal Judicial Center has recently published a draft “Patent Case Management Judicial Guide” which is available on-line. The Patent Case Management Guide is described as a “comprehensive, user-friendly, and practical judicial guide for managing patent cases” that addresses the distinctive case management challenges of patent litigation.
The Guide is primarily intended to be a resource for district judges. Like past Federal Judicial Center publications, such as the Manual for Complex Litigation and the Reference Manual on Scientific Evidence, the Patent Case Management Guide is likely to become widely used by district judges as an authoritative source for best practices for patent case management.
The Patent Case Management Guide includes guidelines on
The Patent Case Management Guide is authored by Professor Peter Menell of the Berkeley Center of Law and Technology, Lynn Pasahow at Fenwick & West LLP, James Pooley at Morrison & Foerster LLP and Matthew Powers at Weil, Gotshal & Manges LLP. The Judicial Advisory Board for the Guide includes district judges from around the country, including Judge Payne of the Eastern District of Virginia, as well as three Federal Circuit Judges.
On April 2, the Senate Judiciary Committee passed a compromise version of S. 515, the Patent Reform Act (the “Act”). The original bill can be found here, and the amended bill is here. A few observations on the Act’s impact on litigation in Virginia:
Venue
• The original bill limited venue in most patent cases to districts where the defendant is incorporated, has its principal place of business or has a “regular and established physical facility . . . that constitutes a substantial portion of [its] operations.” This provision would have shifted cases from popular plaintiff’s forums like the Eastern District of Texas to the homes of high-tech companies such as California, Delaware and New Jersey/New York and perhaps Virginia, based on the high-tech presence in Northern Virginia.
• The amended bill replaced those venue provisions with a very short new subsection, 28 U.S.C. §1400(c), which provides that “for the convenience of the parties and witnesses, in the interest of justice,” a district court shall transfer a patent case “upon a showing that the transferee venue is "clearly more convenient” than the current venue. (emphasis added).
• The “clearly more convenient” language comes from In re Volkswagen, 545 F.3d 304, 315 (5th Cir. 2008) (en banc) and In re TS Tech, 551 F.3d 1315 (Fed. Cir. 2008). Some commentators have characterized the amendments as “codifying” TS Tech, but the true impact is likely to be more muddled. Since the Act does not alter 28 U.S.C. § 1404(a), courts may well continue to apply their existing venue transfer standards and ignore the “clearly more convenient” standard. More likely, courts will simply add the “clearly more convenient” standard to their existing analysis.
• In Virginia, a “clearly more convenient” standard may produce fewer venue transfers. In several post-TS Tech decisions, transfer has been denied as not “clearly more convenient” where parties, evidence or witnesses are located in several forums. See Novartis Vaccines & Diagnostics, Inc. v. Hoffman LaRoche, Inc., 2009 U.S. Dist. LEXIS 14656 (E.D. Tex. Feb. 3, 2009) (transfer denied where drug developed in North Carolina, manufactured in Colorado, processed in Michigan or Switzerland, packaged in New Jersey and sold nationwide). Under Virginia federal court precedent, by contrast, transfer is often granted if the parties are not located in Virginia and Virginia is not the “center of accused activity.” See GTE Wireless v. Qualcomm, 71 F.Supp. 2d 517, 519 (E.D.Va. 1999). Thus, a “clearly more convenient” standard may shift the focus from whether the case has ties to Virginia to whether the case has ties to a particular transferee district. That accused activity is occurring nationwide, for instance, would count against transfer rather than, as it presently does, in favor of transfer.
District Court Pilot Program
• The amended bill establishes a 10-year pilot program for patent cases in at least six U.S. District Courts. Courts included in the program must be among the 15 districts with the largest number of patent cases or that have adopted local patent rules. At least three of the courts must have more than 10 active judges (including three judges who have requested and been designated to hear patent cases), and at least three must have fewer than 10 active judges (including two designated patent judges). The pilot program includes $5 million a year for education of judges and hiring patent law clerks. Cases would still be randomly assigned to all judges, but non-patent judges could decline to accept patent cases.
Venue for Patent and Trademark Appeals
• A technical amendment in the Act moves venue for civil actions appealing various decisions of the PTO, BPAI and TTAB from the District Court in Washington, D.C. to the Eastern District of Virginia. Such actions include civil actions appealing decisions by the BPAI relating to patent rejections (35 USC 145) and interferences (35 USC 146), civil actions appealing decisions by the PTO relating to patent term adjustments (35 USC 154(b)(4)(A)), civil actions appealing decisions of the TTAB relating to registration of a trademark (15 USC 1071(b)(4)), and civil actions appealing suspensions or exclusions from practice before the PTO (35 USC 32). Though such actions are relatively rare, this change could increase the volume of patent practice in Virginia.
The Eastern District of Texas led the country in patent case filings in 2008 with 306, more than 100 cases more than the next two districts (the Central District of California with 198 and the Northern District of California with 171).
In two recent cases, though, the Fifth Circuit and the Federal Circuit overturned rulings from the Eastern District of Texas denying motions to transfer venue. In the Federal Circuit case, In re: TS Tech USA Corp., 551 F. 3d 1315 (Fed. Cir. 2008), decided on December 29, the Court held that the district judge had committed a “clear abuse of discretion” in refusing to transfer a case to Ohio when the relevant evidence and witnesses were located in Ohio, Michigan and Canada.
In the three months since TS Tech was decided, there have been 9 rulings on motions to transfer venue from the Eastern District of Texas. Five of those motions have been granted and four have been denied. Transfer has been denied where the relevant evidence or witnesses was not confined to a specific forum or region but are located around the country or in other countries, even if the case has no strong connection to Texas. Transfer has been granted where most of the parties, witnesses or evidence are located in one particular forum or where the plaintiff or the inventors are located outside of Texas.
Tellingly, since TS Tech, patent case filings in the Eastern District of Texas appear to be plummeting. So far in 2009, the Eastern District of Texas has fallen into fourth place, behind the Central District of California, the Northern District of California and the District of New Jersey. On average, filings in the Eastern District of Texas appear down approximately 40% off last year’s rate, while filings in the next three most popular districts appear on pace with last year. See Stanford IP Litigation Clearinghouse (registration required).
Here in Virginia, patent case filings are in line with average filings in 2008. The drop in filings in Texas, though, could mean that the Eastern District of Virginia, with its fast docket and the presence of a number of high technology companies in the district, may become even more popular for patent case filings.
In recent years, federal district courts around the country have enacted local rules governing patent cases. The Northern District of California was one of the first, and its local rules are now extensive and detailed. The Eastern District of Texas enacted local rules to speed up the litigation of patent cases, and it is now the most popular forums for the litigation of patent suits in the country. The volume of patent cases, however, has slowed the E.D. Texas docket considerably. Other districts have followed suit, including the Western District of Pennsylvania and, most recently, the District of Massachusetts, adopting local rules for patent cases. At least one result (and perhaps an underlying purpose) of those rules has been to encourage the filing of patent cases in those districts.
The Eastern District of Virginia is the original “Rocket Docket” having enacted local rules to speed up cases almost forty years ago. The E.D.Va. continues to be one of the fastest courts in the United States, with an average time to resolution of civil cases of only about six months. The E.D. Va. has also been a relatively popular forum for patent cases, ranking in the top ten of federal district courts for filing patent suits.
The E.D.Va., however, has no local rules for patent cases. Rather, the three divisions of the court, and even judges in the same division, follow different procedures for dealing with their cases and different ways of handling patent cases. As a result, there is little predictability in the E.D.Va. on issues such as whether tol extend the pre-trial period for patent cases to allow for the greater amount of preparation necessary in such cases, whether the Court will allot more trial days for a patent trial than the two or maybe three days it allows for most trials and whether the Court will incorporate patent-specific procedures, such as the filing of claim charts and the scheduling of a Markman hearing.
There are many potential benefits to adoption of local patent rules. Scheduling can be more uniform, and the litigation can be streamlined. Conducting claim construction early in the case can remove uncertainty and encourage earlier resolution of cases, decreasing the Court’s workload. Given the volume of patent cases filed in the E.D.Va., the Court should consider adopting limited local rules addressing the unique features of patent litigation. Such rules should be simple, and they should be permissive, so that individual judges can adapt them to each judge's docket and the needs of a specific case.
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