patent litigation in a rocket docket after markman ii: after liftoff – no turning back ocean tomo...

Patent Litigation In A Rocket Docket After Markman II:After Liftoff – No Turning Back

Ocean Tomo AuctionOctober 28-30, 2008Chicago, Illinois

Joseph T. [email protected]

Marshall J. Schmitt [email protected]

mailto:[email protected]

mailto:[email protected]

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After Liftoff – No Turning Back

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Agenda

What is a rocket docket?

Where are the rocket dockets?

How did we end up with rocket dockets?

How are the rocket dockets different?

How do you litigate in a rocket docket?

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What Is A Rocket Docket?

A rocket docket is a Federal Court or agency

that disposes of its cases much faster when

compared with other Federal Courts or

agencies.

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Rocket Dockets – The Need for Speed

Special rules for handling patent cases

Trial dates within a year of filing the complaint

Little tolerance for discovery disputes

Willingness to resolve cases on summary judgment

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Where Are the Rocket Dockets?

Eastern District of Texas (E.D. of Texas)

Western District of Wisconsin (W.D. of Wisconsin)

Eastern District of Virginia (E.D. of Virginia)

International Trade Commission (ITC, based in Washington, D.C.)

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How Did We End Up With Rocket Dockets?

Two Events:

1. Explosion in patent litigation

2. Markman decision

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Markman – U.S. Supreme Court put district court judges in charge of “claim construction”

“Claim Construction” – Defining the terms used in the patent claims


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Before 1996, practices varied

After Markman, judge’s role became central

Patent litigation is driven by Markman

Judge now controls the pace and course of a patent case


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Single most influential event on the outcome of a case

“Navigating Scylla and Charybdis,” (Judge Barbara Crabb, W.D. Wisc.)


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Each Rocket Docket Has Its Own Personality And Story

E.D. of Texas - Current Hotbed of Patent Litigation

W.D. of Wisconsin - Fastest of the Fast-tracks

E.D. of Virginia - Longest Tradition

International Trade Commission - Different Animal

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Eastern District of Texas

Mother Ship

From P.I. to I.P.

Texas Tort Reform

Well Dried Up

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The Tipping Point - Judge T. John Ward

Appointed – 1999

Civil litigator in E.D. of Texas

Intrigued by patent cases

Defended Hyundai Electronics

Sought out patent cases


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Judge Leonard Davis

Patent-savvy

Jury pool – FOPO – friend of patent owners

“Here in the Eastern District of Texas, we own guns, we love our property rights, and we’ll use our guns to protect our property rights.”

Oil rights and patent rights conceptually similar


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Singleton v. Volkswagen of America, Inc.

More patent cases might be transferred

True impact unclear – PI case

Judge Clarke

Application of e-Bay

Eastern District of Texas – Developments

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Western District of Wisconsin

The Tipping Point – Judge John C. Shabaz

Appointed to bench in 1981

Maintained tight control of docket from start

Trial dates within 9 months of filing

No-nonsense judge

Senior status in early 2008

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Judge Barbara Crabb

Appointed in 1979

Ran docket efficiently from start

Not quite as fast as Shabaz

Trial date within 14 months of filing

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PriceWaterhouseCoopers Rank

2007 Most patent plaintiff-friendly venue Plaintiff wins most often on summary judgment and at trial

2008 Fifth most patent plaintiff-friendly venue Still first for plaintiff success on summary judgment


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Second fastest time to trial – 10.4 months (2007)

Fastest time to disposition – 4.6 months (2007)

Recently slowed down somewhat in February 2008

Speed expected to return

More patent cases last ten years


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Complex jury pool – Diverse group

University of Wisconsin – Highly educated jurors


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Lowest claim construction reversal rate

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Eastern District of Virginia, Alexandria Division

The Tipping Point – Judge Albert V. Bryan

40 years ago

“The old joke used to be that in front of Judge Bryan, the only grounds for a delay were a death in the family – your own.”

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International Trade Commission

Government agency

Prevent infringing products from entering the U.S.

Injunctions only

No monetary damages

Very fast

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How Do You Litigate in the Rocket Docket?

Each venue unique

Local Rules – Appendices

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Highlights – E.D. of Texas

Local counsel critical

Local patent rules (Appendix M)

Infringement contentions not later than 10 days before Initial Case Management Conference

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Highlights – W.D. of Wisconsin

No local patent rules

Judges have specific procedures for patent cases

Infringement contentions within five weeks of first scheduling conference

Failure to serve sufficiently detailed infringement contentions has resulted in sanctions

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Highlights – W.D. of Wisconsin

Judges Crabb and Crocker

Markman hearings before summary judgment

Judge Crabb – Explanation how construction impacts outcome

Judge Shabaz

Claim construction with summary judgment

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Highlights – E.D. of Virginia

No local rules specific to patent cases

All cases proceed fast

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Highlights – International Trade Commission

Goal – protect U.S. industry from unfair competition

Investigation instituted and case assigned to ALJ

Must convince the ITC to initiate investigation

FAST

Liberal and fast discovery

Discovery responses due within ten days

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Trial-like hearing before ALJ

No jury

ALJ issues Initial Determination

Initial Determination may be reviewed by the ITC

If Exclusion Order issued, presidential review period

Decisions reviewed by the Federal Circuit

Highlights – International Trade Commission

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Moral

A safe landing and a successful mission in a rocket

docket require extensive preparation before you take

off because the ride is usually fast and wild and there

is no time to catch up.

APPENDICES 1. Checklists For Plaintiffs And Defendants In A Rocket Docket 2. E.D. Of Texas Local Rules 3. E.D. Of Texas Local Rules for Patent Cases 4. W.D. Of Wisconsin Local Rules 5. E.D. Of Virginia Local Rules 6. N.D. Of California Local Rules For Patent Cases

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Checklist for Plaintiffs in a Rocket Docket

1. Study the judges in the potential venues

What types of claim construction orders have they made?

How have they handled other issues that might be relevant in your case?

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2. Study the local bar if your lead counsel does not have a presence in the venue

3. Have your case ready to go before filing the complaint

Conduct detailed studies of patent, its file history, and any known prior art; identify and assess any weaknesses before filing


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3. Have your case ready to go before filing the complaint (continued)

Gather and review all documents and have documents ready for production to opponent before filing complaint

Ensures there are no ticking bombs in the documents

Allows for time to further investigate any potentially problematic issues arising from the documents

Having your documents ready for production enables you to put enormous pressure on you adversary to rapidly produce their documents


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4. Prepare claim constructions and supporting arguments before filing the complaint

Claim construction is the single most important event in a patent case

Having claim constructions prepared before filing enables you to more fully assess the defendant’s invalidity and noninfringement arguments as they are made


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5. Locate and interview the patent inventors

Often the inventors are no longer employed by the plaintiff

Consider retaining the inventors as consulting experts, which generally makes them more cooperative if they are no longer current employees

Risk exists as the defendant will attempt to portray this as paying the inventors for their testimony


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5. Locate and interview the patent inventors (continued)

Stress that payment to the inventors is not in exchange for their testimony and instead compensation for their specific expertise to the subject matter of the case. Hourly rate must be reasonable and in accord with the expert normally charges

Assess whether the inventors have an “axe to grind” with the current patent owner

6. Consider what patent infringement counterclaims the target defendant might bring


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7. Locate and hire technical expert witness

The technical witness is often the most important witness at the summary judgment and trial stages

Locating a technical expert can be a long, difficult process, especially in highly specialized fields

Request assistance from the patent owner in locating candidates

Typically it is a good idea to retain an expert search firm, which operate similar to executive headhunter firms


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7. Locate and hire technical expert witness (continued)

The “perfect” expert must have superior technical skills and have a personality that will appeal to the jury

A blend of both academic and industry experience is typically preferred

Study the expert’s credentials and prior publications

Could be a landmine later on if not fully investigated

Assess any relationships the expert candidate has with the plaintiff or defendants


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8. Locate and hire damages experts

Typically easier to locate damages experts than to locate technical experts, but equally important

Preparation of damages models is time-consuming and will involve input from the technical expert and patent owner’s business people


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Moral – Be ready before filing the complaint Choice of forum Substance of case Discovery


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Checklist for Defendants in a Rocket Docket

1. Call patent litigators right away, as time is critical

2. Determine if there is any way to have the case transferred from the rocket docket venue

More difficult in the W.D. of Wisconsin and E.D. of Texas when compared to the E.D. of Virginia

Volkswagen from the Fifth Circuit might change the rules

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3. Determine whether patent infringement counterclaims can be asserted against the plaintiff

Can provide significant leverage to settle the case

Potential of catching the plaintiff off guard with a substantial counterclaim

Can create a “mutually assured destruction” scenario for the plaintiff

4. Consider bringing reexamination proceedings


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5. If there are other defendants in the case, collaborate with them to share expenses and prepare a unified defense if at all possible

6. Locate technical and damages expert witnesses right away

7. Scour the earth for “prior art” to invalidate the patents

Search for “on-sale” bar activities, as these can be a “silver bullet” to knock out the patent


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Moral – Try To Change The Rules Of The Game Transfer Counterclaim Reexamination


patent litigation in a rocket docket after markman ii: after liftoff – no turning back ocean tomo...

Documents

patent rights

rocket dockets different

markman decision slide

patent claims

markman judge

summary judgment slide

central patent litigation

district court judges