Pilot Program to Improve Patent Litigation

by on January 23, 2009 · 8 comments

judgeTech policy aficionados should by now be familiar with efforts to reform the patent system. Issues range from fixing the poor quality of granted patents to instituting post-grant review procedural reforms. What you don’t hear much about are efforts to educate judges on patents. Because no matter how much patent law is reformed to increase patent quality on the front-end, we’re still going to see patents being litigated in court.

That’s why I’m happy to see today’s reintroduction of Rep. Adam Schiff’s and Rep. Darrell Issa’s bill, HR 628. The bill creates a pilot program to educate participating judges on patent law and the technical matters underlying patent claims in Federal District Courts (HR 628 is the same as last session’s bill HR 5418). Here’s my  analysis of the bill from when it was introduced last session.

Judges have considerable power to affect a trial. They make procedural and evidentiary decisions, and often a judge’s decision at trial can only be overturned on appeal if there was an abuse of discretion (a high burden for an appellant to meet).

HR 5418 is a targeted pilot program and its effect could be substantial, if not immediate. Better informed judges can weed out frivolous claims more quickly while focusing on cases with legitimate claims. As a result, anticipated and actual costs of enforcing and defending lawsuits decrease, reducing the burden on all parties but particularly the budgets of small firms. Less money for lawyers means more money for innovating, so firms can increase their research budgets and returns on investment.

  • danielperry

    As a practicing attorney and former state court trial judge experienced in technology and electronic discovery matters, I can tell you that we must improve judicial education of technology issues.

    But this program, while important, is only just a good start. Though it has its significant proponents. Chief Judge James Holderman, Northern District of Illinois, likes the pilot program and describes it as “… a viable solution among several complementing remedies that can accomplish an overall change …” [See 2007 Univ. of Illinois Jnl of Law, Technology & Policy 1]. Judge Holderman likes HR 628's self-designation focus as it will encourage those judges with an interest to rise to the occasion.

    I agree that self-designation is appropriate (if not crucial to the viability of this legislation). But as I see it, the only real enticement for judges to self-designate is the availability of “… law clerks with expertise in technical matters arising in patent and plant variety protection cases …”

    But Judge Holderman cautions there will need to be other modifications to the current patent litigation. First, he states PTO needs to establish a post-grant review providing third parties opposed to the grant of the patent a specified window of time to challenge the patent. A 2005 Post-Grant Review bill never made it past the House Subcommittee on Courts, the Internet, and Intellectual Property. It needs to be revived.

    Judge Holderman argues that the Federal Circuit provide greater deference and guidance to the district judges' patent claim term determinations. The Federal Circuit should move away from a de novo review – which only encourages expensive appeals – and embrace a standard of review closer to clear error. The Federal Circuit should overturn a finding only if firmly convinced that a mistake was made. There is plenty of support for recognition of underlying fact-based issues involved in claim construction. But this will also require significant momentum.

    Finally, Judge Holderman urges that district judges increase the use of special masters to assist in better understanding the technology involved in the specific patent cases. A special master is a court-appointed attorney or professor “authorized under our Federal Rule of Civil Procedure 53 to assist judges in various pretrial proceedings, such as discovery, settlement, recommendations for findings of law and fact, the formulation of remedies, or the calculation of damages.”

    Will HR 628's language of funds for law clerks include the use of such special masters? There will be only a limited pool of law clerks with the requisite skill and experience. There is a broader available base of competent and technically proficient special masters.

  • bradencox

    Daniel, thanks for your detailed comment. I agree that the Pilot Program is just one piece to the overall patent reform puzzle. I'm not too familiar with the rules concerning special masters (only the controversy that can be sparked by certain high profile cases) but the idea sounds intriguing.

  • bradencox

    Daniel, thanks for your detailed comment. I agree that the Pilot Program is just one piece to the overall patent reform puzzle. I'm not too familiar with the rules concerning special masters (only the controversy that can be sparked by certain high profile cases) but the idea sounds intriguing.

  • bradencox

    Daniel, thanks for your detailed comment. I agree that the Pilot Program is just one piece to the overall patent reform puzzle. I'm not too familiar with the rules concerning special masters (only the controversy that can be sparked by certain high profile cases) but the idea sounds intriguing.

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