Mark Ferguson of Bartlit Beck Herman Palenchar & Scott; Jennifer Doan of Haltom & Doan; and David Dolkas of McDermott Will & Emery.

Anybody up for playing a game of “You know it’s a big win if …”?

You know it’s a big win if … your opponent puts out a press release after trial saying, essentially, “Boy, did we get shellacked.”

You know it’s a big win if … that same opponent saw its market cap drop by 40 percent after the verdict.

You know it’s a big win if … other companies licensed the patent-in-suit to the tune of $116 million, but your client is paying nothing.

And you know it’s a big win if … the supposed death squad at the Patent Trial and Appeal Board repeatedly found the patent-in-suit valid, but you persuaded an Eastern District of Texas jury that it would have been obvious to persons skilled in the art.

How did HP Enterprises pull off this win? My colleague Ben Hancock explains how three outside firms killed a patent that many others had shot at and missed. In the meantime, congratulations to Mark Ferguson of Bartlit Beck Herman Palenchar & Scott; Jennifer Doan of Haltom & Doan; and David Dolkas of McDermott Will & Emery.

Federal Circuit Gets Its Blur On

 

For years, the Supreme Court and the Federal Circuit have been duking it out over their approaches to patent litigation. CAFC develops bright-line rules, the Supreme Court blurs them up. Having read Wednesday’s opinion on venue waivers In re Micron Technology, I can only conclude that the Supreme Court Borg have now assimilated Judge Richard Taranto.

Taranto starts out In re Micron the way any Federal Circuit judge would. Noting the “widespread disagreement” among district judges, he decisively declares that the Supreme Court “changed the controlling law when it decided TC Heartland in May 2017.” Therefore, Micron did not waive the defense under Federal Rule 12(h)(1)(A) when it failed to plead it in August 2016.

So Micron wins its motion to transfer? This is when Judge Taranto starts morphing into Justice Taranto. Based on another recent Supreme Court decision, he concludes that district judges also have inherent power apart from the Federal Rules that could be used to find waiver of a venue objection.

How broad would that power be? Well, it requires “respecting, and not ‘circumvent[ing],’ relevant rights granted by statute or Rule.” It “may” rest on “sound determinations of untimeliness or consent.” The court will leave for future cases ”what other considerations, if any, might be relevant.” There is “at least an obvious starting point”—a defendant who delays raising venue for tactical reasons. But “we do not here say how such a claim of forfeiture ultimately should be analyzed.”

All right, can you at least tell us which circuit law will govern? “We also do not address here whether this court’s law or the relevant regional circuit’s law governs forfeiture standards not tied to the patent-specific venue statute.”

As I reported earlier this week, practitioners like Ropes & Gray counsel Matthew Rizzolo say it’s really not that hard to decode all this, especially when you combine Micron with a subsequent non-precedential order from the same Federal Circuit panel. District judges will take into account how intensively a defendant was litigating a case, whether venue objections were delayed for strategic reasons, the nearness of trial and prejudice to the plaintiff, Rizzolo says.

He’s probably right. But it sure sounds like district judges are getting a lot of discretion to keep on taking their separate approaches. Just the way the Supreme Court likes it.

Within hours of the Federal Circuit ruling, the trial judge presiding over the Micron case, William Young of Massachusetts, scheduled a new hearing. For this coming Tuesday. I suppose Judge Young might be eager to extend his apologies for mis-applying Rule 12(h)(1)(A). But I have a feeling it’s got more to do with his new inherent power.

I Will Not Be Assimilated

 

Speaking of the Supreme Court, we’re just 10 days from the PTABocalypse  Oil States arguments. Do you feel like me that the case for patent owner Oil States Energy Services has been losing some momentum? I notice that six of the seven attorneys Gene Quinn polled on IP Watchdog think IPRs will be found constitutional. Small sample, but still noteworthy.

Quinn himself thinks Oil States can pull off the upset. He makes two very good points: 1) Never underestimate the Supreme Court’s capacity to create patent chaos and 2) If the Supreme Court doesn’t rip up IPRs, then SAS Institute, the other PTAB case to be argued Nov. 27, “becomes a very, very important case.”

MARK YOUR CALENDARS: I’ll be at the court and reporting on both arguments. Then at noon Eastern on Tuesday 11/28 I’ll be sharing additional thoughts on a conference call available to Skilled in the Art subscribers. Orrick partner Mark Davies, who knows a lot about the Supreme Court and about patent appeals, has agreed to join me on the call and share his far-more-expert impressions. For more info and to listen in, click here.

A Judge Who Can Hit a Curve

 

Suppose I told you that a federal district judge wrote the following this week: “Two identical lenses, however, will always have identical Petzval surfaces — always. An overlay of Petzval surfaces proves nothing in this case.” Could you guess the judge?

Ten points if you said William Alsup of San Francisco. That’s how ND-Cal’s resident scientist Daubert-ed Waymo expert Lambertus Hesselink on Tuesdayfrom its upcoming trial with Uber over automated driving technology.

If you like Skilled in the Art, check out the other premium briefings from Law.com writers. Sign up here for a complimentary trial subscription.

Ho-Hum, a PTO Fee Increase

 

I’m not sensing much pushback on the USPTO’s final fee schedule, announced Tuesday. What do you all think—are people just happy that some of the increases turned out to be less than anticipated? Because the big sticker shock was limited to IPRs and other post-grant proceedings? Or because the fee hikes overall seem reasonable? Send me some feedback if you’ve got some.

Mayer Brown IP partner Brian Nolan says that even with the filing fee jumping from $23,000 to $30,500, IPRs will remain a popular choice, whether it’s big companies facing a patent infringement suit, smaller companies trying to clear a path to market entry, or even nonprofits challenging pharmaceutical patents. The favorable evidentiary and claim construction standards, the PTAB’s speed to final decision, and the ability to file without a case or controversy will keep IPRs an appealing option, even with the additional $7,500 tacked on, Nolan says.

That’s assuming, of course, that we still have IPRs six months from now.

Crowell Gobbles Up Another IP Litigator 

 

Veteran IP litigator Gabriel Ramsey has joined Crowell & Moring from Orrick, Herrington & Sutcliffe. Ramsey will join the litigation and privacy/cybersecurity practice groups in Crowell’s San Francisco office.

“Gabe is well known among technology companies for litigating matters of great consequence across a range of IP and licensing issues,” Philip Inglima, chair of the firm’s executive committee, said in a written statement.

Crowell has been on an IP hiring spree in California, adding litigators Arthur Beeman and Joel Muchmore from Arent Fox last month and Kent Goss and Valerie Goo from Orrick in June.

A Very Good Year for Keker, Van Nest & Peters

Back Left to Right: Rachael Meny, Bob Van Nest, Michael Celio, John Keker, Ashok Ramani, Adam LauridsenFront (seated) Left to Right: Brian Ferrall, Laurie Mims, Cody Harris, Michelle Ybarra

The Recorder honored its Litigation Departments of the Year last night, and IP cases played a big role in the balloting. Keker, Van Nest & Peters won top honors in large part on the strength of blockbuster trial wins in Oracle v. Google and Cisco v. Arista. You can listen to John Keker and Bob Van Nest talk about the cases and building a trial-centric firm with S.F. Bureau Chief Ross Todd here. A full list of the winners can be found here. (Kudos also to the in-house IP lawyers at Square and Pure Storage who were recognized for their outstanding patent strategies.)

And a Good Week for Two Others

 

As long as I’m singling out California IP lawyers, congratulations to Weil Gotshal & Manges partner Ed Reines for persevering through five years of appeals to a win this week in Promega v. Life Technologies. And kudos to O’Melveny & Myers partner Dan Petrocelli for preserving Fox Broadcasting’s “Empire” at the Ninth Circuit.

In closing, let me say that we’re only just beginning. Thanks for reading. This could be the start of a beautiful friendship.