Friday, February 18, 2011

Federal Circuit Opinion on Limiting the Number of Asserted Patent Claims

Today the Federal Circuit issued an opinion approving a method for limiting the number of asserted patent claims.  In re Katz Interactive Call Processing Litigation.  To my knowledge, this is the first published CAFC case approving such a procedure.

Katz is a well-known non-practicing entity.  He filed 25 actions in which he "asserted a total of 1,975 claims from 31 patents against 165 defendants in 50 groups of related corporate entities (“defendant groups”)."  It is obviously not practical for a trial court to decide whether 1,975 patent claims are each valid and infringed, and if so, what are the appropriate damages. 

The district court adopted the following procedure for dealing with this morass:

Choosing a middle ground between the two proposals, the district court ordered Katz initially to select no more than 40 claims per defendant group, and after discovery to narrow the number of selected claims to 16 per defendant group. The court further directed that the total number of claims to be asserted against all defendants could not exceed 64 (eight claims for each unique specification including four specifications not at issue in this appeal). However, the court added a proviso that the limitations on the numbers of claims were not immutable. The proviso permitted Katz to add new claims if they “raise[d] issues of infringement/validity that [were] not duplicative” of previously selected claims. Katz added new claims to exceed a total of 64 across all the actions, but the number of claims did not exceed 16 per defendant group.

Instead of selecting additional claims and seeking to show that those claims raised non-duplicative issues of infringement or validity, Katz moved the court to sever and stay the non-selected claims. Katz contended that the court’s requirement that it select particular claims violated its due process rights because the court’s order could result in decisions having a preclusive effect on non-selected claims regardless of whether those claims pre-sented distinct issues of invalidity or infringement. The court denied Katz’s motion. The court held that Katz’s rights under the unselected claims were protected by the proviso that Katz could add new claims if it could show that the new claims raised non-duplicative issues of validity or infringement.

The Federal Circuit rejected Katz's appeal on the due process argument and affirmed the district court's procedure:

In approving the district court’s procedure, we do not suggest that a district court’s claim selection decisions in a complex case such as this one are unreviewable. Katz could have sought to demonstrate that some of its unselected claims presented unique issues as to liability or damages. If, notwithstanding such a showing, the district court had refused to permit Katz to add those specified claims, that decision would be subject to review and reversal. As noted, however, the problem with Katz’s position is that Katz made no effort to make such a showing with respect to any of the unselected claims. Instead, Katz chose to make the "all or nothing" argument that the entire claim selection process was flawed from the start and that it is impermissible to give the judgments effect as to the unselected claims regardless of Katz’s failure to make any showing as to the uniqueness of any of those claims. That sort of global claim of impropriety is unpersuasive. In complex cases, and particularly in multidistrict litigation cases, the district court "needs to have broad discretion to administer the proceeding." In re Phenylpropanolamine (PPA) Prods. Liab. Litig., 460 F.3d 1217, 1232 (9th Cir. 2006). Given the district court’s need to manage the cases before it and the "strong public interest in the finality of judgments in patent litigation," Cardinal Chem. Co. v. Morton Int’l, Inc. 508 U.S. 83, 100 (1993), we cannot adopt Katz’s broad proposition. And, not having made a record reflecting that the court erred in its disposition of particular claims, Katz cannot point to specific errors by the court in the administration of the claim selection scheme that the court adopted.

This will be useful in dealing with non-practicing entities that practice abusive litigation tactics.  In the particular case, most of the claims were invalidated or not infringed; the CAFC remanded the case to the district court on some of the issues.

Wednesday, February 16, 2011

Mark Lemley's New Article: "Is the Sky Falling on the Content Industries?"

Mark Lemley has published a new article, "Is the Sky Falling on the Content Industries?"  The article discusses how content industries have had a "Chicken Little" problem over new technologies:  For over a century, when new technologies come out, content industries claim that massive copyright infringement will occur, and the new technologies must be stopped.  Examples given are John Philip Sousa and the gramophone, the radio, the photocopier, the VCR, MP3 players, and others.  Only problem is, once these new technologies come out, they lead to more sales of copyrighted content, not less.

The article is published in the Journal of Telecommunications and High Technology Law, 9 J. on Telecomm. and High Tech. L. 125 (2011).

Tuesday, February 15, 2011

Friday, February 4, 2011

Opening Round Briefs in Microsoft v. i4i

In two previous posts (here and here), I discussed the Microsoft v. i4i case presently pending before the U.S. Supreme Court.  I'm not going to repeat those lengthy posts, but in summary, Microsoft is asking the Court to make it easier to invalidate U.S. patents.  Microsoft seeks to lower the standard of proving invalidity from "clear and convincing evidence" to "preponderance of the evidence."  The case will be argued in April 2011, and likely decided by June 2011.

The opening round briefs have now been filed.  Microsoft filed its brief, along with 20 amicus briefs supporting Microsoft and an additional 5 briefs "supporting neither party."  Microsoft's brief discusses all the issues and gives a detailed explanation of the case.  The amicus briefs tend to focus on different points -- here's what a few of them say:
  • I co-authored the EFF brief (joined by Public Knowledge and the Apache Software Foundation).  This brief discusses how the existing clear and convincing standard harms open source software developers and small software innovators.  It explains how the existing standard results in an unfair playing field in software patent litigation.
  • The CTIA brief has an interesting discussion of the empirical effects of the clear and convincing standard.  It discusses how the existing standard results in excessive deference to the Patent and Trademark Office (PTO) and how the standard affects licensing negotiations.
  • The CCIA brief discusses a number of the deficiencies in the patent examination process.  Because the PTO is far from perfect, this means that there is no justification for excessive deference to the PTO's decision to grant a patent by making the standard of proving invalidity one of clear and convincing evidence.
  • The brief by 37 law and economics professors also discusses constraints on the PTO's decision making process.
  • A brief by Internet Retailers contained an interesting 40-page appendix of federal statutes that explicitly require "clear and convincing" proof.  Since the section of the Patent Act in question -- 35 U.S.C. §282 -- doesn't contain such a standard, the plain inference is that Congress didn't intend §282 to require clear and convincing evidence.

(I might add to this list after I read more of the briefs.)

Here are links to all of the briefs:

Microsoft's Opening Brief (backup location)

Briefs supporting Microsoft:
1. Apotex, Inc. by Roy Englert,  Mark Stancil, and Daniel Lerman at Robbins Russell
2. Apple Inc. and Intel Corporation by Deanne Maynard, Seth Galanter, and Marc Hearron at Morrison Foerster
3. Business Software Alliance by Andrew Pinchus and Paul Hughes at Mayer Brown
4. Cisco Systems,  Ebay Inc., Netflix, Inc., Office Depot, Inc., Toyota Motor Corporation,  and Trimble Navigation Limited by John Vandenberg and Joseph Jakubek at Klarquist Sparkman
5. Computer & Communications Industry Association (CCIA) by Jonathan Band of Jonathan Band PLLC
6. CTIA -- The Wireless Association by Michael Kellogg and Greg Rapawy of Kellogg Huber
7. Electronic Frontier Foundation, Public Knowledge and the Apache Software Foundation by Michael Barclay, Julie Samuels, Corynne McSherry and James Tyre of EFF (backup location)
8. EMC Corporation by Paul Dacier of EMC Corporation
9. Google Inc., Verizon Communications Inc., Consumer Electronics Association, Comcast Corp., Dell Computer Corp., Hewlett-Packard Co., HTC Corp., Intuit Inc., L-3 Communications Corp., Linkedin Corp., Lockheed Martin Corp., Mastercard Worldwide, The New York Times Company, Rackspace Hosting Inc., Red Hat,  Inc., Shutterfly,  Inc., Software & Information Industry Association, Time Warner Inc., Wal-Mart Stores, Inc., and Zynga Inc by Paul Clement,  Daryl Joseffer,  and Adam Conradat of King & Spalding
10. Hercules Open Source Project by Joshua Rosenkrantz and Mark Davies at Orrick
11. Internet Retailers by Peter Brann, David Swetnam-Burland,  and Stacy Stitham at Brann & Isaacson
12. 37 Law, Business, and Economics Professors by Mark A. Lemley at Stanford.
13. Professor Lee A. Hollaar by David Bennion at Parsons Behle
14. SAP America,  Inc., Acushnet Company, Facebook, Inc., General Motors LLC, Pregis Corporation,  Symantec Corporation, Terex Corporation,  and Yahoo! Inc by James Dabney and John Duffy at Fried Frank
15. Securities Industry and Financial Markets Association and The Clearing House Association by John Squires at Chadbourne & Parke
16. Synerx Pharma, LLC by Christopher Ohly and Douglass Hochstetler at Schiff Hardin
17. Teva Pharmaceuticals USA Inc. by Henry Dinger and Elaine Herrmann Blais at Goodwin Procter
18. The Public Patent Foundation by Daniel Ravicher at PubPat Cardozo School of Law
19. Timex Group USA, Inc., Macdermid, Inc., Gem Manufacturing, Inc., Perfect 10 Antenna Company,  Inc.,  Carson Optical, Inc. by John Horvack and Fatima Lahnin at Carmody & Torrance
20. William Mitchell College of Law IP Institute by Carl Moy and Jay Erstling of William Mitchell

Briefs supporting neither party:
DC Bar Association
Professor Roberta Morris
     Of these briefs, the AIPLA and IBM briefs argue for affirmance and the existing clear and convincing standard -- it's not clear why these briefs were filed now, instead of in March when the amicus briefs supporting i4i are due.

The EFF post on the amicus brief filing is here.  Patently-O's discussion is here.

Sarah Palin Applies for Trademark Protection on . . . "Sarah Palin"

Yep, Sarah Palin has filed a federal trademark application for "Sarah Palin."  (And Bristol Palin has applied for "Bristol Palin.")  The Sarah Palin application is here.

I'm not sure whether to label this under "Trademarks" or "Humor" . . . so I'll do BOTH!