Photo illustration: Jason Doiy/ALM

As my former ALM colleague Ginny LaRoe pointed out many years agoU.S. District Judge William Alsup is a courtroom scientist who especially enjoys making bold experiments in patent cases. On Monday I learned about his latest innovation.

Alsup calls it the shootout. He instructs the patentee to pick its strongest asserted claim and the accused infringer to pick the weakest. The judge then conducts summary judgment and trial—if necessary—on an expedited schedule. This was the procedure that led to Friday’s defense verdict for Juniper Networks in a cybersecurity dispute with Finjan.

Alsup has been conducting shootouts since at least 2017, but the Finjan case provides the judge’s rationale in his own words. As Alsup explained back in February, few patent cases are close calls that require a jury trial. In two out of three, it turns out that one side is “way off base,” Alsup said, according to a transcript.


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Under the shootout, if the accused infringer defeats the patent owner’s strongest claim, the accused infringer might get sanctions. “And they will have to pay that right off the bat. Could be hundreds of thousands of dollars for having brought a bogus claim.”

Conversely, if the patent owner prevails, “it’s injunction city,” Alsup said. “You don’t have to wait until the end of the case. Whamo, the product goes off the shelf.”

“So this is why it’s called a shoot-out,” the judge explained. “It’s like the shoot-out at the OK Corral in Tombstone, Arizona. Where the lawyers go in there and they just shoot it out and one of them comes out alive.”

Alsup then thought better of that. “That’s a terrible example to use these days so I’m going to take that back. Maybe I’ll call it something else.”

One other benefit, according to the judge: Once accused infringers start targeting the weakest claims, patent owners often start dropping them from the case, which simplifies things, Alsup said. “This gets to the heart of the matter so quickly and so cleanly, instead of you all treating me like your early neutral evaluation judge and two years later I’m still trying to figure out which end is up,” the judge said.

“So that’s the way we’re going to proceed,” Alsup concluded. “Go back and tell your clients that the day of reckoning is close at hand.”


We hope you enjoyed this excerpt from Skilled in the Art, where Scott Graham digests the latest developments on everything IP and helps make sense of the trends, data, and politics around patents.  Not a subscriber yet? Sign up for a free trial.