Patent Litigation: Views from the Bar and Bench

Contributed by FindLaw Staff

Ronald Schutz, Chairman of the Intellectual Property Litigation Department at Robins, Kaplan, Miller & Ciresi L.L.P., engaged the audience in a lively panel on Patent Litigation: Views from the Bar and Bench on Strategy, Tactics, Trends and Concerns, together with Judge Saris of the Massachusetts District Court and Matthew Lowrie, Chair of the Litigation Practice Group at Wolf, Greenfield & Sacks, P.C. Mr. Schutz, speaking directly to Judge Saris' concerns with the high costs, delays, and uncertainty inherent in patent litigation, advised in-house counsel faced with a patent infringement action against their client to make an early assessment of the client's potential liability, and to explore ways to resolve the problem short of a trial.

Schutz next addressed the critical issue of venue selection. From the defense perspective, Schutz noted, "the first question I always ask is: 'Do we want to be here?'" Then, having drawn your judge, "research the judge, look at the judge's judicial opinions, call local lawyers, and research the court: what the jury pool looks like, how they tend to rule." Even with all of this research, Schutz acknowledged, it might not be possible to change venue. "But if . . . you really don't want to be there . . . either you argue venue's improper, or bring a forum non conveniens motion." If neither of those options is viable, Schutz advised considering a counterclaim. Next, Schutz explained, the choice is "whether in that very venue, to even things out, or to file a separate action, affirmatively, in a venue more favorable to you. "

For a plaintiff, Schutz emphasized, "I think venue can often be case dispositive. When I'm a plaintiff, I spend a lot of time picking my venue . . . it makes a huge difference where the case is . . . because some of these claim construction rulings are close–people can reasonably differ on how things might fall, and if it falls one way, all of a sudden you have a significant advantage at trial, and if it falls the other way, you don't."

On discovery, Schutz commented: "Generally as a plaintiff I like to have the shortest possible path between filing and trial, because I like to get to the courthouse as quickly as possible. If there's going to be a favorable resolution, it's going to either happen by going to trial and winning, or getting a settlement . . . oftentimes, settlements don't come until you're on the courthouse steps or you've done a substantial amount of discovery. I start thinking about that at the scheduling order time . . . I make a lot of suggestions, including specific limitations on all the forms of discovery–the number of interrogatories, the number of document requests, and especially the number of depositions and the time and length of depositions. Generally it's the defendants that need more depositions, especially if there's third party prior art. From a plaintiff's perspective, you can usually get what you need in discovery using 30(b)(6) depositions."

As to why patent cases often don't settle, Schutz explained that there's a disincentive to settle due to the lack of finality: "there's no certainty at trial–everyone gets two trials in a patent case–they get their trial in the district court and they get their 15 minute trial at the Federal Circuit."