The Boycott Has Been Lifted

As you recall, I called for a boycott of Sullivan & Ward's new Iowa Law Blog. I was protesting the fact that one of their most talented and erudite pundits had not yet taken the stage.

You will be glad to know that litigator and mediator extraordinare Larry McLellan has lifted the ban with great aplomb. In his first blog post ever, in gracious narrative, Larry examines the ins and outs of challenging jurors for cause. Explaining the tactics I have personally witnessed him use with a patent jury to great advantage, Larry explains the process of letting jurors help you give them the boot. Along the way, Larry dishes out hat tips to Harry Plotkin and Mike Coyle.

Check out Larry's insightful post, and be sure to leave him a comment (I have heard that if you get to know him, he might even take you out for sushi). If this post is any indication of posts to come, we definitely do not want this to be his swan song.

Brett Trout

litigation

Law Firm Suing Patent Office

The Plaintiff
GlaxoSmithKline (GSK) is boldly going where nearly every independent inventor wishes he or she could go - to court with the United States Patent and Trademark Office over the Office's new rules which take patent rights away from inventors. According to the complaint posted on Gene Quinn's IPWatchdog, on October 9, 2007 GSK sued the United States Patent and Trademark Office for, among other things, issuing new rules which restrict an inventor's ability to continue to prosecute a patent application as well as the number of patent claims an inventor is allowed to prosecute. GSK claims in their complaint that the PTO's Final Rules' restrictions on patent applications are Ultra Vires, which is legalese for "Who died and made you boss?"

The Claims
In addition to arguing that the PTO does not possess the power to even make the new rules, GSK argues the Final Rules are vague, arbitrary, capricious, an abuse of discretion, not otherwise in accordance with law and that they smell vaguely of elderberries (I might be reading between the lines a little on that last one). GSK has asked the court to enjoin the PTO from enforcing the rules as well as for a writ of mandamus compelling the PTO to "perform neglected or unlawfully performed duties." But how do they really feel?

Potential Resolution
In an effort to ease tensions, GSK Senior Vice President for Corporate Intellectual Property has asked for a sit down with the PTO's General Counsel. Although GSK filed the case in the Eastern District of Virgina's rocket docket, this case is likely to be resolved one way or the other well prior to even the E.D. VA's lightening fast 8 months to trial. According to Gene Quinn, if the rules take effect and are later overturned by the court, the PTO "would have to spend years getting things straight."

On behalf of inventors everywhere let's hope this gets resolved prior to the Final Rules effective date of November 1st.

Brett Trout

USPTO patent GlaxoSmithKline

Internet Jurisdiction - Introduction

What is jurisdiction and why should you care? Jurisdiction is whether a particular court has the power to hear a case. Jurisdiction is often an issue in Internet related cases, since the parties both want to have the case heard in their own back yard. Not only is “home field” advantage a factor, but the costs of not having to travel (or, more importantly, not having to have your lawyers travel) can give you the added resources to see a trial through to the end or leverage settlement negotiations.

There are two types of jurisdiction: personal jurisdiction and subject matter jurisdiction. While the parties have the power to waive personal jurisdiction, they cannot waive subject matter jurisdiction. Indeed, if the parties fail to timely assert a lack of personal jurisdiction at the outset of a case, they may be deemed to have waived the issue. Conversely, either party can raise the issue of subject matter jurisdiction at any time.

Because a lack of subject matter jurisdiction may wrest a case from a judge, even after years of work, judges are rightly fanatical about assuring subject matter jurisdiction exists before proceeding with any other matters. To avoid having your case tossed out of court, it is often advisable to provide the court with multiple reasons why it has subject matter jurisdiction. Therefore, even if the other side is able to kick out one of your reasons near the end of trial, the court still has justification for ruling on the case.

Brett Trout

Internet jurisdiction Cyberspace Lawyer Internet Litigation

Request to Mediate a Patent Case Shows Strength

Mediation is probably better suited and more underutilized in patent cases than in any other type of case. Legal expenses in patent cases that go to trial average $1,500,000.00 per side. Even if mediation is unsuccessful in finding a way to increase the size of the pie, it can at least be successful in ensuring the size of the pie eventually divided is not $3,000,000.00 smaller.

Patent litigation translates into a one hand all in poker game with the house taking its $3,000,000.00 cut. Legal fees are not even the worst of it. Damage awards and punitive damages typically exceed legal fees. In addition, the disruption to the company, in terms of monopolization of key personnel during discovery and trial can bring a company to a halt. Companies sometimes invest so much in patent litigation that they cannot back out. They end up staking the entire company on decision of a mercurial jury. What odds of winning do you have to have to make mediation an unattractive option? 80%? 90%? If you think you have a 90% chance of winning a patent case at the time you file suit, you may want to get a second opinion.


Most litigators do not want to admit it, but suggesting mediation shows strength. It takes a party with a very strong fall back position to suggest coming to the table. Think about it. If you have a terrible case would you suggest mediation? You might push hard for a settlement, but do you want to bring in an objective third party to decide your fate? No. You want to mediate a great case. Worst case scenario in a successful mediation, you do not get as much as you would have gotten at trial, but you saved your client seven figures in attorney fees and three years (five or more with appeals) of anguish.

I have been very lucky in litigating patent disputes. Even so, I cannot say that a 100% litigation win is preferable to a successful mediation. I typically advise clients that litigation is advisable only if they would be willing to cut off their toe to force the other side to cut off their foot. You are not going to "win" you just might be less unhappy.

95% of patent cases settle before trial. Once litigation has begun, most settlements occur after discovery, with each party already averaging $800,000.00. Odds are the parties will settle. The only question is whether the parties come to the table fresh-faced and eager, or battle worn and penniless.

In most situations the lawyers wield the control necessary to bring the clients to mediation. Many attorneys, not wanting to appear weak in front of their clients or opposing counsel, shy away from suggesting mediation. Similarly, many clients do not want a patent lawyer that appears to be shying away from a fight. Unfortunately, a self-conscious patent lawyer and a demanding client is not a recipe for success in any patent litigation.

While suggesting mediation might seem difficult, mediation provides both the patent lawyer and the client the latitude to showcase their creativity, negotiation skills, business acumen and experience. Regardless of the outcome, if the patent lawyer and client are both honest, skillful and reasonable, mediation will solidify the attorney-client relationship, bring about a greater understanding of the other side's position and leave the other side with a better understanding of your position. All of these things will help to reduce costs and streamline the patent litigation, even if a settlement is not reached.

And who knows? You might even settle.

Brett Trout

patent mediation patent lawyer patent litigation