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A gaggle of analysts and competitors grabbed ringside seats in Magistrate Judge Elizabeth Laporte’s courtroom 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. And 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 it stand out: A magistrate judge was in charge of the case. Unlike district judges with lifetime presidential appointments, magistrate judges are hired by the court for a specified term. They are routinely assigned to civil cases in the Northern District, but both parties must consent to the assignment, otherwise the case is put back on the “wheel” and reassigned to an Article III judge. And in costly patent litigation, lawyers generally opt for a judge who has more trial experience. That’s beginning to change, though. In the last couple of years more lawyers have been stipulating to magistrate judges. “It’s still not the norm to accept a magistrate judge but it’s happening more often,” said Karl Kramer, a partner in Morrison & Foerster’s Palo Alto, Calif., office 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,” Laporte said. As federal judges have been buried under a heavy caseload, magistrate judges have had a shot at directing high-stakes patent cases. And as they’ve gotten a few cases under their belt and developed a track record, more lawyers have been willing to entrust their cases to them. The advantage for the parties is that magistrate judges can often move a case along at a more rapid clip because they have one-third the civil caseload of federal judges. But 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,” said Edward Reines, a partner at Weil, Gotshal & Manges who represented Genus in its battle with ASM. But he added that magistrate judges in the Northern District are particularly qualified for patent cases. For their part, many magistrate judges 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,” Laporte said. “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,” Spero said. “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.” BOOM IN CASES Magistrate judges have long had a role in patent cases, handling discovery disputes and settlement conferences. District judges also have had the option to pass their cases onto a magistrate judge if the parties agree to the move. But 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 with an avalanche of work 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,” said 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 magistrate judges. Trumbull, who oversaw the project with Magistrate Judge Edward Infante, said the court was inspired by the district court in Oregon where magistrate judges had long handled trial work. Under the system, which was adopted throughout the Northern District, magistrate judges 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 have statistics on how frequently parties agree to a magistrate judge, federal and magistrate judges say consent has been increasing. However, they say lawyers are more reluctant to do so in patent disputes. “For patent cases parties have been a little slower in their willingness to consent because of the high value of the cases,” said Northern District Judge Ronald Whyte. “But the more litigants work with magistrate judges the more willing they are to consent.” Indeed, several San Francisco Bay Area patent litigators now advocate the use of magistrate judges to their clients. “I have tried to make it a practice to stipulate to magistrate judges in all my cases,” said Claude Stern, a partner at Quinn Emanuel Urquhart Oliver & Hedges. REPUTATION FOR DISCOVERY Magistrates have a reputation for handling discovery, so some people have a tendency to think they can’t handle more complex things, Stern said. 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, said in about half his cases one side or the other will object to a magistrate judge assignment. Bunsow said 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 said. 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. Magistrate judges have fewer clerks to help on a case than federal judges, MoFo’s Kramer said. And some “are not particularly familiar with patent law,” although he added 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 his 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, managing partner of MoFo’s San Francisco office, said she’s 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” — how many they’ve had, how they’ve ruled on validity and their record with the U.S. Court of Appeals for the Federal Circuit, Krevans said. “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, said 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,” Zimmerman said. But federal judges say magistrates already handle a slew of settlement conferences in patent cases — the judge overseeing a case has to hand it off to another district judge or magistrate for settlement negotiations — 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,” said U.S. District Court Judge Charles Breyer. Cases are resolved by magistrate judges more quickly since they have one-quarter to one-third of a district judge’s caseload and they can 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,” Spero said. “It’s a bit of a chicken-and-egg thing,” Laporte added. “Until they have experience with you they don’t know what to expect.”

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