Intellectual Property

Streamline... Or Else?

Sometimes it takes the strong hand of a judge to keep things moving.

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Patent litigation is a complex endeavor. For litigators and their clients, as well as judges and their clerks, it can seem like nothing is ever simple in a patent case. As an easy example, take claim construction. All you have to do is define a claim term in light of the patent’s intrinsic record. Simple task, right? Nope, super complex. This is true even when both sides agree on which terms should be construed and when the court has a clear preference for construing claims at a particular point in a case. Sure, the claim might be construed at some point. But then the losing side, or maybe even the winner, wants the construction clarified afterward. More work for everyone. You can even finish the case, only to have the Federal Circuit later find that the operative claim construction ruling was all wrong. A simple task, endless complexity.

Now there is nothing wrong with complexity. It is what keeps practicing patent law interesting. And there is no doubt that one of the patentees’ responses to the “easy” solutions offered to patent defendants in this age of Alice/IPR is to make cases more complex. Take IPR for example. It is hard enough to get a defendant to take a set of claims seriously until they have survived IPR. Asserting a single patent, where the defendant(s) could conceivably attack the claims from a variety of angles with multiple petitions? The patent equivalent of Pickett’s Charge. The response by patentees? Assert more claims and more patents. So while there may be fewer cases filed, the ones that are tend to involve more material for the parties and the courts to digest.

As much as a defendant does not want to see a swarm of patents being asserted, busy courts may want to see that even less. Even where a judge likes to hold an early Markman hearing, things are immediately much more complex when there are more claims and patents at play. At the same time, it is important to remember that one of the most sacrosanct (and almost always appeal-proof) legal issues is a court’s ability to control its own docket. It is no surprise, therefore, that this increased dynamic of “broader” patent cases — in the sense that more patents and claims are being asserted initially — has led to certain courts mandating that the parties streamline patent cases before trial.

As with most things patent law, two of the Districts that are at the forefront of this trend are the Eastern District of Texas and the District of Delaware. The former has long been known as a place where the patent rules — and local practice — result in an eventual streamlining of every patent case. And where recalcitrant parties are given a clear message that while the court can’t control how many patents are in the case to begin with, it will control how many patents eventually reach the jury. Since one of the hopes of any patentee filing in the Eastern District of Texas is that their case will be heard by a jury, this assertion of control by the local judges is not taken lightly. In fact, it is not unusual for cases that started with a host of patents (and multiple claims from those patents asserted) ends up going to the jury on one or two claims from one or two of the original patents.

What the experience of many patent litigators in East Texas has proven over the years is that diligent case management by engaged judges is perhaps the single most important factor in streamlining patent cases. Yes, every trial lawyer understands that a patent jury has a hard enough job dealing with a single claim from a single patent. And that it is often suicidal to give the jury more work than it can handle. At the same time, that inherent knowledge of keeping a case as simple as possible for a jury often loses the battle with the other treasured sentiment of trial lawyers — that keeping options open is paramount. Accordingly, it is the strong hand of a judge that may be necessary to tip the balance in favor of streamlining.

A recent case out of Delaware is instructive. The parties, Nuance Communications and an entity called MModal LLC, had submitted case streamlining proposals to the court. (And the case needed streamlining, with six asserted patents and at least 28 asserted claims from those patents.) In response, the court adopted a “two-phase procedure for the reduction in the number of asserted claims and invalidity arguments.” Meaning both sides had to eventually get to their best arguments, even as the defendant had previously raised seventy-five different prior art references to start with. Interestingly, the court noted that the “two phase approach is consistent with the case narrowing procedures of judicial officers of this court” and “that there may be further case scope narrowing required prior to trial.” In short, litigants and their counsel can expect active case management and being forced to streamline in Delaware.

Ultimately, there is no question that streamlining can and does need to happen at some point in nearly every patent case. And that if the parties don’t do it of their own volition, the court will force them to. Sophisticated litigants and their counsel, therefore, must be thoughtful about this issue, so that they can be proactive rather than reactive if and when the time comes to streamline their case. Yes, every litigator likes to keep their options open. But it is even more important sometimes to help a judge manage their docket efficiently. As trades go, the goodwill you can earn by being cooperative with streamlining efforts can far exceed the return on a keep-all-options-open-as-long-as-possible approach. As patent cases promise to become even more complex, preparation for the inevitable moment when simplification is demanded is all the more important. Just ask an experienced judge in Delaware or Texas if they agree.

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Please feel free to send comments or questions to me at gkroub@kskiplaw.com or via Twitter: @gkroub. Any topic suggestions or thoughts are most welcome.

Gaston Kroub lives in Brooklyn and is a founding partner of Kroub, Silbersher & Kolmykov PLLC, an intellectual property litigation boutique, and Markman Advisors LLC, a leading consultancy on patent issues for the investment community. Gaston’s practice focuses on intellectual property litigation and related counseling, with a strong focus on patent matters. You can reach him at gkroub@kskiplaw.com or follow him on Twitter: @gkroub.

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