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Patent litigator Edward Reines isn’t a typical lobbyist A partner at Weil Gotshal & Manges’ Redwood Shores, Calif., office, he had never chatted with congressional staffers about legislation until this year. But a U.S. Supreme Court ruling in June 2002 got him so riled he took his complaints to the powerbrokers on Capitol Hill. Reines is among a group of patent lawyers pushing for legislation to reverse a Supreme Court ruling that limits the reach of the U.S. Court of Appeals for the Federal Circuit over patent disputes. Specifically, Holmes Group v. Vornado Air Circulation Systems, 01-408, concluded that regional circuit courts of appeal have the right to hear non-patent suits in which patent infringement is raised as a counterclaim. The decision stunned patent lawyers, who say it undermines Congress’ intent to have one court decide patent issues. Congress passed legislation in 1982 creating the Federal Circuit and giving it the primary task of deciding appeals in patent and trademark disputes. Patent lawyers fear that patent rulings will be inconsistent if regional circuits and state courts decide such cases. “Within the intellectual property bar I think everyone generally agrees this doesn’t make sense,” Reines said. After the Supreme Court’s ruling, the Federal Circuit Bar Association set up a six-member committee to examine the ruling and come up with a possible fix. The group, which is chaired by Reines, recently published a report in the Federal Circuit Bar Journal recommending that Congress revise the statute on court jurisdiction to give the Federal Circuit authority over appeals of cases involving patents, plant variety protection, copyrights and trademarks. While Reines didn’t get anyone on the Senate Judiciary Committee to take up this proposal, he said it’s only a matter of time before such legislation is introduced. “Until pain is felt from the problem it’s difficult to get the wheels to move legislatively,” Reines said. “Someone’s ox will have to be gored” before it becomes a priority. University of California, Berkeley’s Boalt Hall School of Law professor Mark Lemley, who is also a member of the Federal Circuit Bar Association committee that drafted the proposal, agrees that legislation will eventually be adopted. “The real question is whether and how many bad decisions it will take for Congress to do something about it,” he said. Reines and Lemley point to a ruling by the Indiana Supreme Court last year as an example of how the Holmes decision has changed the decades-old system of patent law. In that case, Green v. Hendrickson Publishers Inc., 770 N.E.2d 784, the court ruled that state courts have jurisdiction in copyright and patent disputes. “When was the last time you heard of a patent lawyer going to state court?” Reines asked. “It just doesn’t happen.” While the patent bar is fairly unanimous in its opposition to Holmes, antitrust lawyers generally think the ruling is beneficial for them. They have been critical of the Federal Circuit’s reach beyond patent law and what many see as its tendency to have intellectual property law trump antitrust restrictions. One issue that has been contentious among patent and antitrust lawyers is whether a company’s refusal to license a patent can be considered an antitrust violation. The Federal Circuit has made broad antitrust rulings “some of which are not related to patent law,” said antitrust lawyer James Kobak Jr., a partner at New York’s Hughes Hubbard & Reed. “It seems to us these issues should stay with the regional circuits.” Some IP lawyers are less concerned about the impact Holmes will have on patent law. “This is not a case where the sky is falling as a result of the decision,” said Joseph Miller, an IP professor at Lewis & Clark Law School in Portland. “On balance it would be good for Congress to change [the law] back to the way it was, but if they don’t, we’ll all muddle through just fine.” But Reines said that as regional circuit courts and state courts issue rulings the potential for forum shopping will increase. “There will be more opportunities for patent litigators to engage in gamesmanship and manipulation to find the friendliest jurisdiction,” he said.

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