Hmmm, here’s an interesting comment I received today from concerned reader,

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

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

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

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

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

getting the sense that the patent system is facing serious problems these days? When I got into this game in 1983, the then-newly-formed Federal Circuit was supposed to bring uniformity, predictability and even respectability to the patent system. And it did — for a while. Under former Chief Judge Markey, the Federal Circuit’s decisions made sense. They applied and relied on written statutes — you know, the kind actually passed by Congress and signed by the President and all. They addressed important issues of patent law and provided clear, practical answers that could be understood and applied in the future. (I didn’t always agree with them, but at least you could understand and apply them.) And, most importantly, the decisions appeared to be part of a genuine effort to build a consistent, workable and fair body of law that would resolve disputes justly and promote innovation as intended by the Constitution. Over the last several years, however, I’ve wondered whether we are going forward or backward. Is it just me, or is anyone else going crazy trying to figure out what the Federal Circuit is doing? The good news is that the Supreme Court has taken up the eBay case and granted cert. The question, as I understand it, is whether courts should automatically grant permanent injunctions when infringement is found. Personally, I think they should — exclusive use is the essence of any property right. But the real significance is the Supreme Court’s willingness to provide oversight over the Federal Circuit. Recently, too, a petition for cert was filed in the Phillips case. Dennis Crouch has a copy of the petition at his Patently-O blog. It’s interesting reading. I sincerely hope the Supreme Court takes the case. The reality that any three judge panel of the Federal Circuit can effectively overrule the factual findings of a lower court without any showing of clear error and simply because the panel wants a different result, runs counter to the idea that we are a nation of laws. The petition, in what I see as a courageous move, actually notes that, having appropriated for itself the sole power ultimately to decide what patent claims mean, the Federal Circuit is unlikely on its own to give up that power — hence the need for Supreme Court intervention. (I love it when other people have the courage to say what the rest of us are thinking!) The idea that claim construction is solely a matter of law devoid of factual underpinnings is a farce and a fraud and should be discarded. (In my view, it also runs counter to the Seventh Amendment but that’s another matter. And yes, I’m aware that the Supreme Court in Markman said otherwise.) Finally, in my own small way, I am, on behalf of one of clients, seeking en banc reconsideration [Download file] of an adverse ruling I received from the Federal Circuit last month. In that case, the Federal Circuit shot down one of our patent claims as lacking written description, even though the claim elements themselves were all indisputably described and the claim itself was an originally filed claim that was allowed and issued without amendment. I’m admittedly biased, but honestly think the Federal Circuit’s ruling simply can’t be reconciled with prior CCPA precedent holding that originally filed claims automatically satisfy the written description requirement and that “nothing more is necessary.” See In re Gardner, 475 F.2d 1389, 1391 (CCPA 1973). The good news is that the petition has not been denied summarily as usually happens. The Federal Circuit has requested and received a response from my worthy opponents. So far, there’s been no decision yet on whether to grant the petition. Given that the current law regarding the “written description” requirement is, to put it politely, confused, I am hopeful the Court will soon take the matter up en banc, preferably in my case, but if not, in another.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

And where do you find those?

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

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

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

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

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

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

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

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

Dr. Nathan P. Myhrvold’s recent testimony before the Senate Subcommittee on patent reform makes a strong case for the rights of small inventors and businesses in the patent arena. Coming from a now-wealthy man who could easily join the forces of big business, it’s refreshing that Dr. Myhrvold has not rewritten history or otherwise forgotten where he came from.

(Many thanks to J. Matthew Buchanan, publisher of the “Promote the Progress” I.P. blog, for making this and other records of the Subcommittee hearings available at his site.) Continue Reading Let’s Hear it For Dr. Myhrvold!