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WITH NO LETUP IN PATENT LITIGATION AFTER 2011’S LEAHY-SMITH AMERICA Invents Act (Pub. L. No. 112-29) started taking effect in early 2013, reforming patent law and procedure is back on the congressional agenda. And legislative reform remains a goal of many patent attorneys—especially those who represent defendants. But others are saying the next step should be allowing trial and appellate courts to interpret existing laws. For an update on the practice area, we met with six leading IP litigators: Mike Bettinger of K&L Gates; Yar Chaikovsky of McDermott Will & Emery; Thomas Friel of Cooley; Richard Hung of Morrison & Foerster; Matthew D. Powers of Tensegrity Law Group; and Ashok Ramani of Keker & Van Nest. Mediator Jeff Kichaven moderated the conversation with Laura Impellizzeri of California Lawyer.
JEFF KICHAVEN: Let’s start by discussing recent efforts to
address non-practicing entities. Where do you think reform
efforts ought to go? Do you think the Inventions Act is going to help, be window dressing, or be counterproductive?
YAR CHAIKOVSKY: On the fee-shifting side, we had Kilopass, where the Federal Circuit has generally said they’d like to do things through judicial interpretation, not congressional reform. Plus, you have Octane (Octane Fitness LLC v. Icon Health & Fitness Inc., No. 12-1184; decision below, 701 F.3d 1351 (Fed. Cir. 2012)) pending before the U.S. Supreme Court. So by the time we get to June we will have the Supreme Court stating something on the standard so that what’s pending before the Senate could become irrelevant—or, at best, will be marginalized. Highmark (Highmark Inc. v.
Allcare Health Mgt. Sys. Inc., No. 12-1163) also is before
the Supreme Court on that issue.
On discovery, we already have limits going into the
FRCP shortly. I don’t know that you need a separate patent
bill on discovery. On the pleading side, you have DirecTV v. K-Tech, No. 13-618 (see F.3d 12777 (Fed. Cir. 2013)) in which the Supreme Court will consider the proper pleading standard. Whether it’s coincidence or whether it’s intentional doesn’t matter; having the rulings pending will slow up the passing of any bill.
CHAIKOVSKY: You have Alice Corp. v. CLS Bank International (No. 13-298; decision below, 717 F.3d 1269 (Fed.Cir. 2013)) coming up before the Supreme Court. Just as in Bilski (Bilski v. Kappos (130 S.Ct. 3218 (2010)), we will have an answer that is really only helpful for this particular case and whether that specific patent should be patentable or not, and nothing more.
KICHAVEN: Isn’t it a matter of having these cases before the right district court judges, who are experienced and can make these judgment calls?
CHAIKOVSKY: On the attorneys fees side, you’re likely to see activity, and whether that’s a positive or a negative depends on the wording of the cases. You’ve seen that action from the Federal Circuit in Kilopass, and I think you’ll see some in Octane