EDITOR’S NOTE: Welcome to a sample issue of Skilled in the Art, a twice-weekly email briefing by Law.com IP reporter Scott Graham. Skilled in the Art is all about IP, and this issue had so much news relevant to California IP litigators that we wanted to share it beyond the usual email audience. In fact, consider today’s briefing a public service announcement: If you’re litigating a patent case in U.S. District Judge Vince Chhabria‘s San Francisco courtroom, do not assume that the common norms of patent practice apply.
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Don’t Get Too Confidential on Judge Chhabria – or Else
Yep, there’s Judge Vince Chhabria‘s photo again. I just wrote last week about his sanctions order against a company and its law firm for bringing a frivolous patent infringement suit. Today Judge Chhabria is hearing summary judgment motions in another patent case, Nevro v. Boston Scientific.
I couldn’t be at the hearing, but I think it’s worth catching up on some activity from Nevro earlier this year. Guess what? It involves sanctions. Against a law firm. It’s a theme in Chhabria’s patent cases. The judge is clearly trying to shake up some of the business-as-usual in patent litigation.
This time it was accused infringers who bore the brunt. Boston Scientific tried to file documents under seal, including an email in which one of its executives complained that the company is “not innovative in nature” and that “that is why we will need to copy or acquire approaches developed by others (Nevro, Spinal Modulation, Neuorsigma, etc.)”
Chhabria refused the request, saying that while embarrassing to the company, there was no legitimate basis for shielding the email from the public. Boston Scientific and its Arnold & Porter Kaye Scholer counsel then moved for reconsideration, describing the email as “highly confidential and trade secret information.” That led to a painful hearing before Chhabria in April.
“These frivolous sealing motions impose a tremendous burden on us and our law clerks,” Chhabria told A&P partner Edward Han, according to a transcript. “The sealing request is almost always grossly over-broad, if not completely frivolous, and that is time that we judges and our law clerks should be spending on actually making a contribution to the community.”
Chhabria said he was sympathetic to a point, “because you are representing your clients,” and “probably most of your clients think that anything they say about internal business operations is a state secret, right?”
But he said it’s time for counsel to start pushing back. “Is there anything else I can do other than start sanctioning you people regularly for that, or your clients, or both?”
Han said “there is a lot of merit to what you’re saying,” but that “a lot of courts don’t undertake that much of a burden. If it is, you know, sort of an internal corporate document, there’s sort of a presumption that it is entitled to protections.”
Chhabria questioned that notion. “You’re talking as if I’m the only one who cares about this, and I don’t think that’s true at all,” he said.
(My own two cents: Most of Chhabria’s colleagues in the Northern District of California may be scrupulous about redactions, but in many other jurisdictions sealed filings are routine, with appropriately redacted versions not following till months later—or ever. The Federal Circuit has been cracking down on such abuse at the appellate level.)
Han maintained that he and his client sought to protect information only where they “perceive a good-faith basis” for doing so. If Chhabria were to impose sanctions, he asked that it be against him only. “No one else at the firm had anything to do with this,” he told the judge.
But, Chhabria said, “There’s one way in which your firm has something to do with this, and that is, your firm, like probably every other firm, does not do a good enough job of training its lawyers to stop abusing the sealing process.”
In May, Chhabria issued his order: Rule 11 sanctions of $500 per lawyer for a total of $2,500. While Han’s taking responsibility was “admirable,” Chhabria imposed the sanction on the entire Arnold & Porter firm, rather than individual lawyers.
“It is incumbent upon law firms to prevent their lawyers and clients from filing these frivolous sealing requests,” Chhabria wrote. “Next time,” he added, “the sanction will be far heavier.”
Next week is a calendar week at the Federal Circuit. I mentioned Tuesday that WARF v. Apple is the big case of the week. Here are a few others I have an eye on:
➤ Google v. Personal Audio. Google usually gets what it wants at the Patent Trial and Appeal Board. Not so in this case. NPE Personal Audio holds a patent on a method of clicking on an audio device to go back to the beginning of a song that’s currently playing, or to the previous track if within the first few seconds of the song. The PTAB confirmed that is patentable (which is maybe why Apple and others settled out). But Google is forging ahead to the Federal Circuit. It doubts “such trivial details could warrant patent protection,” but says that even if they do, the claims are obvious. Dan Bagatell, the chair of Perkins Coie’s Federal Circuit practice, will argue Google’s appeal, while Victor Hardy of Hardy, Parrish, Yang represents Personal Audio.
➤ Intellectual Ventures v. T-Mobile and Ericsson. This dispute is over extremely complex technology for “optimizing” the quality-of-service requirements for a network that serves multiple applications simultaneously. The key question appears to be whether a MAC layer must take into account “which IP packets are associated with which types of end user applications operating at layer 7.” This is all way over my head, but T-Mobile notes that Chief Judge Leonard Stark of Delaware gave IV three opportunities to brief the issue before ruling against them. My money would be on Stark. Dechert litigation chief Martin Black will argue for IV, while Baker Botts partner Doug Kubehl reps T-Mobile and Ericsson.
➤ Real Foods v. Frito-Lay America. Australia-based Real Foods Pty wants to register CORN THINS and RICE THINS for its thinner versions of rice and popcorn cakes. Snack giant Frito-Lay opposes. The Trademark Trial and Appeal Board ruled that the marks are “highly descriptive.” Nor have they acquired distinctiveness in the U.S. market, despite Real Foods’ protest that it has “a loyal following of thousands” on its Facebook page. Frito-Lay argues the TTAB should have gone further and declared the marks generic, noting similar uses such as Wheat Thins, Vegetable Thins and its own Rold Gold Pretzel Thins. Both parties argue that the Federal Circuit’s recent Coke Zero decision helps them. Norris McLaughlin & Marcus partner Jeanne Hamburg will argue for Real Foods while Pirkey Barber’s Bill Barber will take the lectern for the snack giant.
Adobe’s Dana Rao on Diversity
Dana Rao has made the jump from VP of IP and litigation to general counsel at Adobe Systems. My Law.com colleague Caroline Spiezio had a Q&A with him on Thursday.
Rao said he plans to continue his predecessor Mike Dillon‘s emphasis on diversity. “I’m an Indian American, and I’m from Philadelphia. I experienced the opposite of diversity and inclusion in my childhood,” he told Spiezio. “It’s important that we have people of every color, men, women, LGBTQ people, on our team and to have their voices heard.”
Ninth Circuit Tries Again on Laches
Does anybody outside of the Ninth and Federal circuits think that laches should be a defense in IP disputes? Six years ago it was a Ninth Circuit panel that ruled against an heir to the co-author of the Raging Bull screenplays, saying she could not sit on her hands for 18 years and then bring a copyright suit against MGM. The Supreme Court disagreed. The Federal Circuit then ruled that surely laches still applies in patent infringement, which doesn’t have a statute of limitations per se. Again, the Supreme Court disagreed.
Now Ninth Circuit Judge Jay Bybee has issued an opinion stating that laches still applies in trademark cases.
And you know what? He’s probably right, given that the Lanham Act specifically says that “in all inter partes proceedings equitable principles of laches, estoppel, and acquiescence, where applicable may be considered and applied.”
But I wouldn’t bet the house on it.
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