One of the most haunting moments of the season finale of the original Twin Peaks in 1992 was Jimmy Scott singing Under the Sycamore Trees as things got really, really weird. I think of this song whenever I read opinions in Sycamore IP Holdings v. AT&T, which gave us more to consider recently. Actually, much, much more.
Since their initial adoption by the Northern District of California in the late 1990’s the concept of early, firm contentions – both for infringement and invalidity – has been a characteristic of patent local rules across the country. They represent a deliberate decision by the adopting courts to require parties in patent cases to take positions earlier than would be required under FRCP 26, and to require in most cases an order finding “good cause” to amend those contentions (certain amendments after Markman rulings don’t require an order but do require a certain showing). Judges that adopt such proceedings often claim that without them such complex cases would be unmanageable. Judge Ward, for example, asserted early during his tenure on the bench that patent cases needed such structure to be efficiently managed – and explained that as the reason why he adopted the N.D. Cal.’s patent rules for patent cases filed in his court.
Where a party doesn’t use one of the available mechanisms to amend its contentions, instead purporting to amend via email, interrogatory responses, smoke signals, or what have you – the outcome may be suboptimal, as this case shows. The case also shows that delay in moving to amend can have serious consequences.
One of the EDTX cases being handled by Judge William C. Bryson of the Federal Circuit has an upcoming hearing on whether the defendant should be held in contempt for not making ordered royalty payments as to certain products following a jury verdict of trade secret misappropriation (later affirmed on appeal and cert denied). Judge Bryson recently issued a couple of orders in connection with that hearing that readers might find of interest.
Earlier this year a Marshall jury in visiting CAFC Judge Bill Bryson’s court rendered a $20 million verdict in favor of the plaintiff against defendant Eli Lilly. Several weeks ago Judge Bryson followed up with an order explaining his reasons for several decisions during trial.
Judge Bryson’s order is an example of what I referred to in my talk about JMOLs week before last at Horseshoe Bay as a “whale fall” – the sort of order that can take weeks to fully digest, but if you’re interested in the subject of getting a JMOL on a plaintiff’s claims of willful infringement or on when certain jury instructions are appropriate or how prejudgment interest is calculated it’s worth it.
Our story begins with the defense counsel rising at trial to assert a JMOL as to the plaintiff’s claim of willful infringement…
I am a few days late getting Friday’s verdict in Uropep v. Lilly by a Marshall jury in visiting Federal Circuit Judge Bryson’s court up, but I have a good excuse – we were chaperoning our 8th grade twins’ class trip to DC where they had their picture taken outside the Federal Circuit’s building (hey, it’s technically true).
The jury found induced infringement, that none of the invalidity claims were proved by clear and convincing evidence, and set damages at $20 million. (More gratuitous shots of my kids to illustrate only remotely related legal concepts to follow).
The Marshall cases in trial before juries this week are actually an antitrust, an employment, and a patent case. The patent case before Judge Bryson came back with a verdict for the plaintiff of $20 million Friday evening, breaking the 3-3 tie we’ve had thus far this year in patent verdicts. Congratulations to the plaintiff’s local counsel, and … well defendant didn’t have any local counsel I can send out sympathies to. The case is one that I’ve posted on a couple of times, involving
With trial only a few weeks away in this case, the Court ruled on Defendant’s corrected motion to exclude portions of the plaintiff’s damages and technical experts, which arguing that their opinions are insufficiently reliable under FRE 702. The Court’s ruling on the motions sets out the relevant considerations for experts, and explains its rulings in some detail. They also include, candidly, interesting holdings on what constitutes expert versus lay testimony, and when a defendant’s gross sales numbers might be admissible.
Erfindergemeinschaft UroPep GbR v. Lilly is closing in on trial, and on Monday visiting Judge William C. Bryson of the Federal Circuit, who as readers know, maintains an active docket of district court patent cases in Marshall and is formally invested as an honorary trial judge in the EDTX with a certificate and everything, recently issued a 13 page order ruling on the parties’ motions in limine. (Ed. note: “Erfindergemeinschaft” does not, as you might think, mean “find the mine shaft”, but instead roughly translates to “inventor’s association”, which makes sense since the company was founded by research scientists at Hannover Medical School. No clue what “Uropep” means in this case involving a drug used to treat erectile dysfunction, but I’ll keep looking). The holding that has the attention is the last paragraph, in which Judge Bryson decided to exclude UroPep from referring to the “presumption of validity”. He notes that there are cases going both ways on this point, and concludes that that simply means that prohibiting the use of the phrase would not be error. Having looked both ways, he explains his ruling: “In the Court’s judgment, the use of the phrase “presumption of validity” would add little to the jury’s understanding of the burden of proof on the validity issues. Moreover, the phrase might be confusing to the jury, to the extent that the jury is required to consider both that phrase and the Court’s instructions on the burden of proof. At minimum, the use of the term “presumption” would require a further definitional instruction by the Court, without leading to any greater insight on the jury’s part as to the nature of the burden of proof on the validity issues. Accordingly, the Court will exclude the use of the phrase “presumption of validity” and instead will address the burden of proof in its instructions to the jury.” 237 – Uropep
Requests for stays pending CBM review aren’t as frequent as they once were, but they’re still a crucial issue when they arise. The applicable standards for stays in this context was set forth well in a recent pair of orders by an EDTX court, as analyzed below.
As readers know, Federal Circuit Judge William Bryson handles patent cases in Marshall on a regular basis, coming down as needed for hearings and trials. “As needed” is the key, because he recently declined to come down for an abbreviated claim construction hearing, and denied a motion seeking to force the parties to travel from across the country to watch the defendant’s PowerPoint presentation.
The defendant in this case filed an opposed motion to hold an “in-court” hearing as opposed to one by telephone, claiming as the primary basis that they could “more effectively present their argument” because “the in-court format would more readily allow the parties to use demonstrative exhibits” (meaning Power Point slides).
Judge Bryson disagreed, “for several reasons.”
“First, the Court almost never finds such demonstratives or other visual presentations to be useful in Markman hearings or hearings on other issues and typically instructs attorneys not to use such demonstratives. The Court prefers to have the attorneys argue to the Court and to use documents in the record (which are fully available to the Court) in the course of their presentation.”
Don’t you just hate it when the judge wants you to use documents in the record instead of your slides? Next thing you know he’ll start talking about “evidence” like it’s something special.
“Second, the claim construction issue in this case is a very simple one involving a single claim limitation that has been the subject of a previous claim construction order. The Court has fully familiarized itself with the arguments of the parties and does not feel the need for basic instruction as to the technology or the legal issue in question. The plaintiff has suggested that the Markman hearing would last about one hour. The defendants estimate that it would last two hours. The Court believes that even one hour is likely to be more than enough to fully explore the issue presented.”
And this second issue leads to the third:
“Third, the Court is keenly aware of the costs that parties incur in complex civil litigation and is interested in minimizing those costs to the extent possible. Although the defendants have represented, in effect, that they are willing to incur the extra costs that would be involved in conducting an in-court hearing, they do not speak for the plaintiff. The plaintiff has opposed the motion and has represented to defendants’ counsel that plaintiff would prefer not to incur those costs. Dkt. No. 102-1, at 2. In addition to the out-of-pocket costs to the clients, an in-court hearing would impose additional scheduling burdens on the attorneys who are forced to attend. A telephone conference can fairly easily be fit into a day of other productive work. An appearance in court in another city cannot.”