Familiar names dominate Lex Machina’s list of federal judges who decided the most patent cases on the merits in 2016: J. Rodney Gilstrap of the Eastern District of Texas, Delaware Chief Judge Leonard Stark and Southern California patent veteran James Selna, among others.
But one name on that top 10 list has been hearing patent cases for only three years. U.S. District Judge Beth Labson Freeman decided infringement, validity or enforceability nine times in 2016. That included five jury trials, two of which were arguably Silicon Valley’s biggest IP showdowns of the year.
Patent lawyers say Freeman is quickly joining the conversation about top district judges for litigating patent disputes. They describe her as a quick study on complex technology who acts decisively but without shooting from the hip. And she’s comfortable putting patent cases in front of a jury.
Freeman’s 2016 included Gilead Sciences’ clash with Merck & Co. over hepatitis C medications and Cisco’s with rival Arista Networks Inc. She began 2017 by joining the Northern District of California’s influential patent local rules committee.
“She’s just really, really smart and you could see it in the very first substantive hearing,” said Dentons partner Robert Kramer, who tried an optical networking case involving complex physics before Freeman.
Kramer’s case turned on the ethereal question of whether “focusing” spatially separated wavelength signals requires convergence in one or two dimensions. “She was not afraid to take on the complex technology issues that are necessary to manage this type of case,” said Kramer, who obtained a defense verdict for Nistica Inc. in the dispute with Finisar Corp. When Freeman did need help understanding something, she spoke up. “Some judges won’t say anything and then they may or may not understand it,” he said.
Freeman said the science part of patent litigation does not come naturally. “I have no technical background. I have a degree in economics and it was a long time ago,” the 63-year-old jurist said in an interview last month.
Instead, she relies on the lawyers in her cases to educate her. “I always accept their offer for a tutorial. At the claim construction hearing, it’s really as much about construing claims as continuing to teach me about how the technology works.”
But the 2014 Barack Obama appointee is clearly in her element when hearing motions and presiding over trials. Freeman had plenty of experience doing both during 13 years as a San Mateo County Superior Court judge. U.S. District Judge Vince Chhabria, also appointed to the Northern District in 2014, calls Freeman “a real trial judge” and says her approach to jury selection has influenced his own.
Freeman’s work ethic has made an impression too. During trial she’s known to email counsel in the early morning hours and on weekends to iron out any disputes. The goal, Freeman said, is smoother presentation of evidence. “A trial is not about objections,” she said.
The extra work contributes to the sense that Freeman has a firm hand on trials without being overly intrusive. “I think that gets right to how effective she is,” said Weil Gotshal & Manges partner Jared Bobrow, who has been in trial before Freeman. “Judges who have really good command of a courtroom don’t need to say a lot.”
On a January morning, lawyers from Gibson, Dunn & Crutcher and Susman Godfrey debated a typical Silicon Valley tech issue: whether patents supporting Fitbit Inc.’s wearable heart monitors claimed ineligible abstract ideas under Section 101 of the Patent Act. The challenge was brought by Fitbit rival Jawbone.
Freeman questioned the parties in detail about Federal Circuit case law, whether Fitbit’s patents pre-empted all other competing devices, and a U.S. Patent and Trademark Office examiner’s decision to allow a claim once Fitbit narrowed it somewhat. “That’s a little bit of a red light to me,” she told Jawbone’s attorney. “You’re really asking me to declare that the examiner was just wrong.”
On March 2, Freeman decided Jawbone’s motion in a comprehensive, 37-page opinion. She analyzed and distilled 15 Section 101 precedents from the U.S. Court of Appeals for the Federal Circuit, dutifully following its admonition to scrutinize each element of the patent claims “microscopically.”
In the end, she found all challenged claims in two Fitbit patents ineligible because they’re based on the abstract idea of monitoring and reporting activity metrics. “Indeed, humans have been doing this for decades on scoreboards and log sheets,” she wrote. She preserved a third patent because it included the inventive step of monitoring heart rate only when triggered by a distinct user gesture.
And the patent examiner indeed was wrong, Freeman concluded, or at least did not have the benefit of recent Federal Circuit case law. “The court finds it particularly fitting to depart from the examiner’s reasoning, as it pre-dates BASCOM and AmDocs, both of which provide a more exacting view of what qualifies as an ‘inventive concept,’” she wrote.
If Freeman was sticking her neck out a bit, it’s far from the first time. Last year she wiped out a $200 million jury verdict for Merck and Ionis Pharmaceuticals Inc. based on the obscure equitable doctrine of “unclean hands.”
Following a bench trial, Freeman issued a 65-page opinion that found a former Merck in-house patent prosecutor gave false testimony and that Merck “directed, advised, guided and covered up” his misconduct. Merck is appealing to the Federal Circuit, saying Freeman’s ruling “defies centuries of law.”
Freeman will have to make another tough decision in the coming days. A jury in her courtroom found that Arista Networks infringed Cisco’s copyright on its command line interface, but that the infringement is not actionable under “scenes-a-faire,” a legal doctrine even more obscure than unclean hands. Cisco is arguing in posttrial motions that the trial evidence “overwhelmingly negates any such defense.”
A Lexis-Nexis search yielded no reported decisions yet from the Federal Circuit reviewing Freeman’s patent cases. She has been affirmed in nine unpublished decisions from the Ninth Circuit. The only nick so far is a partial reversal in a prison rights case.
“She is willing to make tough calls and smart calls,” said Dentons’ Kramer.
Freeman says oral advocacy can have an impact on her decision-making. While she no longer gives tentative orders as in state court, she likes to tell counsel “where I’m leaning so they can persuade me otherwise. Sometimes I do go the other way because I get so much from the hearing.”
LETTING LAWYERS HAVE THEIR SAY
Growing up near Washington, D.C., Freeman aspired to a career in politics. After her family moved to the San Francisco Bay Area, she ran unsuccessfully for a seat in the California Assembly at age 18. By her 20th birthday she had served as a delegate at the Democratic National Convention in Miami.
Freeman enrolled in Harvard Law School with politics in mind, but eventually chose practice. After stints in D.C. at Fried, Frank, Harris, Shriver & Jacobson and in San Francisco at Lasky, Haas, Cohler & Munter, she began a 17-year career at the San Mateo County counsel’s office. Gov. Gray Davis appointed her to that county’s superior court in 2001. She served as presiding judge in 2011-12.
Freeman met her husband, Bill, in law school. He recently retired from Jones Day, where he practiced securities litigation. He now volunteers with the American Civil Liberties Union, Freeman said.
Fridays are when jurors first arrive in Freeman’s courtroom. By that point she and counsel have worked out a questionnaire designed to surface potential red flags. In an IP case, that might include whether would-be jurors have asserted their own patents or been sued over one. “In Silicon Valley you’ve got a lot of people who say, ‘Oh yeah, that’s happened to me,’” Freeman said.
Over the weekend some jurors are excused for bias or hardship. Monday morning, with a more compact group, the attorneys complete the voir dire, usually in an hour or less. “I actually believe [trial counsel] should have a strong hand in selecting the jury,” Freeman says. “They have good insight. Within the bounds of the rules I defer to lawyers’ questioning over my own.”
Chhabria said newer members of the court such as himself have taken notice. He said Freeman’s method tends to yield jurors who are both engaged and fair, as opposed to simply noncontroversial.
“We sometimes notice that jurors are sworn who’ve never opened their mouths during voir dire,” Freeman said. “When we have the questionnaire, everyone’s answering those questions. Even if they don’t speak in the courtroom, we have a lot of information on them.”
Jurors are not allowed to ask questions once trial is underway, which Freeman says may put her in the judicial minority. “I have not been persuaded that it improves the quality of decision-making,” she said. Jurors can get preoccupied by drawing up questions, she said. Plus she wants to respect trial lawyers “who have planned their cases. Let them put it on.”
U.S. District Judge Ronald Whyte’s retirement last fall left a void on the Northern District’s committee for local patent rules. Freeman and Judge Jon Tigar have been added to the committee for 2017. Asked if she wanted the assignment, Freeman gives an uncharacteristically indirect answer. “I had five patent trials in a year—I guess I’ve been using them,” she said. “I may as well give back a little.”
More seriously, Freeman nods to the Northern District’s leadership in developing patent case management rules. It’s important, she said, “that this court demonstrate commitment to handling these cases on a high level, and I think our court distinguishes itself that way.”
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Scott Graham writes about intellectual property and the U.S. Court of Appeals for the Federal Circuit. Contact him at email@example.com. On Twitter: @scottkgraham.