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A gaggle of analysts and competitors grabbed ringside seats in Judge Elizabeth Laporte’s federal courtroom in San Francisco not long ago as two semiconductor companies began sparring over the scope of a handful of patents. ASM International claimed Genus Inc. was infringing its technology for making computer chips. Millions of dollars in potential licensing fees depended on how broadly Laporte interpreted the claims in the patents. The case was standard fare for the U.S. District Court for the Northern District of California, which handled close to 200 patent disputes last year. But one factor made the case stand out among the others: A magistrate judge was presiding over the dispute. Unlike district judges with lifetime presidential appointments, federal magistrate judges are hired by courts for specified terms. While those sitting in the Northern District are routinely assigned to civil cases, both parties must consent to the assignment. In costly patent litigation, lawyers generally opt for a full-fledged judge who typically has more trial experience. That’s beginning to change, however, as more lawyers have been agreeing to magistrate judges during the past couple of years. “It’s still not the norm to accept a magistrate judge but it’s happening more often,” says Karl Kramer, a partner at Morrison & Foerster’s who currently has a patent case before Magistrate Judge Joseph Spero. Although patent cases make up a small percentage of the Northern District’s docket — 167 patent cases were filed in 2001, 2.5 percent of all civil filings — they generate more work for the court. “Any patent case is equivalent to 10 other cases in the number of motions and hours of court time it involves,” says Laporte. With federal judges increasingly buried under heavy caseloads, magistrates have stepped up their chances at overseeing high-stakes patent cases. And with some developing their own track record in such cases, more lawyers have been willing to entrust their cases to them. The advantage for the parties is that magistrates can often move a case along at a more rapid clip because they have one-third the civil caseload of federal judges. Even so, many litigators are still reluctant to forgo a U.S. district judge. “Sometimes, clients don’t want to be second-guessed later as to whether they made the right choice in picking something that they may believe is out of the ordinary,” says Edward Reines, a partner at Weil, Gotshal & Manges who represented Genus in its dispute with ASM. But he adds that magistrates in the Northern District are particularly qualified for patent cases. For their part, many magistrates are eager to get patent cases because they are generally more complex and costly than other civil disputes. “I find them challenging and interesting, and I appreciate what is often outstanding lawyering and testimony,” says Laporte. “I welcome the cases.” “The cases always have an unusual abundance of legal complexity, often complexity on which you can’t predict how the Federal Circuit would rule,” adds Spero. “They go through so many interesting twists and turns. It’s a delightful challenge to figure out how to manage the case to reach a just and effective conclusion.” Magistrate judges have long had a role in patent cases, handling pretrial discovery disputes and settlement conferences. District judges also have had the option to pass their cases over to a magistrate if the parties agree to the move. Magistrates took on a more prominent role when the Northern District changed its assignment system in 1996 to include them on the “wheel” for civil cases. At the time, judges were overwhelmed by burgeoning dockets, and the magistrates were eager to help out. “With the Silicon Valley boom the Northern District, especially San Jose, was really challenged by the number of IP cases and business-related cases,” says Chief Magistrate Judge Patricia Trumbull. Looking to give district judges more breathing room, the federal court in San Jose launched a pilot program assigning a certain percentage of cases to magistrates. Trumbull, who oversaw the project with Magistrate Judge Edward Infante, says the court was inspired by the federal district court in Oregon, where magistrate judges had long handled trial work. Under the system, which was adopted throughout the Northern District, magistrates are on rotation for 30 percent of the court’s civil filings. Few federal courts assign cases to magistrate judges. While the court does not keep statistics on how frequently parties agree to a magistrates, there is a general consensus that consent has been increasing. Lawyers, however, remain wary when it comes to having magistrates handle patent disputes. “For patent cases parties have been a little slower in their willingness to consent because of the high value of the cases,” says Northern District Judge Ronald Whyte. “But the more litigants work with magistrate judges, the more willing they are to consent.” Indeed, several Bay Area patent litigators now advocate the use of magistrates to their clients. “I have tried to make it a practice to stipulate to magistrate judges in all my cases,” says Claude Stern, an intellectual property partner at Quinn Emanuel Urquhart Oliver & Hedges. Magistrates have a reputation for handling discovery, which prompts some people to think that they are less equipped to handle more complex aspects of litigation, according to Stern. But “in discovery disputes you get to see the sophistication of the judge. . . . I think they have capability, integrity, decisiveness, all the skills necessary to be fine judges in a patent case.” Henry Bunsow, a partner at Howrey Simon Arnold & White who represented ASM in the patent dispute with Genus, says one side or the other tend to object to a magistrate in about half of the cases he handles. Bunsow says local lawyers who know the magistrate are more likely to keep the judge on the case, while those outside the Bay Area are usually uncomfortable with the assignment. “That’s probably because they don’t have enough information” about the judge, he says. While magistrates may be able to spend more time on a case and push it through the court faster, lawyers say there are some disadvantages in having them take a case. For one thing, magistrates have fewer clerks to help on a case than do federal judges, says Kramer, the Morrison & Foerster partner. And some “are not particularly familiar with patent law,” although he thinks that’s changing. Kramer has consented to a magistrate judge in a few of his cases. In the case now before Spero, the University of Illinois is suing Kramer’s client, Fujitsu Ltd., for infringement. Morgan Chu, a partner at Irell & Manella’s Century City office, is representing the university. Kramer’s colleague, Rachel Krevans, the managing partner of MoFo’s San Francisco office, says she has never had a patent case where the parties kept the magistrate judge. “Often clients in a patent case are much more confident if they can know the track record of judges in patent cases,” including how many they have handled, how they have ruled on validity and what kind of record they have when it comes to appeals before the Federal Circuit, says Krevans. “You can tell them the magistrate judge is very highly thought of, but they can have qualms because of the magistrate judge’s experience, including in circumstances where everything we’ve said to a client about a magistrate judge is very, very good.” Magistrate Judge Bernard Zimmerman, who joined the bench in 1995, says the reputation of the federal judges in the Northern District also limits the number of cases that fall to magistrate judges. “The district court bench in this district is so strong that it’s probably hard to persuade a client that they are better off to go with a magistrate judge,” says Zimmerman. But federal judges say magistrates already handle a slew of settlement conferences in patent cases so it’s not a big step to have them take on the case from the outset. “If I were a patent litigator I would opt for a magistrate,” says U.S. District Judge Charles Breyer. Cases are generally resolved by magistrate judges more quickly, he says, since they have one-quarter to one-third of a district judge’s caseload, which allows them to give parties “individualized attention.” While only a trickle of patent cases are now going to magistrate judges, many lawyers and judges expect the tide will shift as barriers break down. “The parties need to adjust to the idea that they can get as good a product as with a district judge,” says Spero. Adds Laporte: “It’s a bit of a chicken-and-egg thing. Until [litigants and lawyers] have experience with you they don’t know what to expect.”

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