Intellectual Property Law

As part of its tireless attempt to stay on top of what is going on in the IP world, the Blawg recently attended a round table discussion on current patent issues presented by several judges from the United States District Court for the Northern District of California. Patent practitioners enjoy debating such issues as the meaning of court decisions and the best way to conduct patent litigation, but it is the judges who actually have to apply the rules and move cases forward to a resolution. Therefore, it is always useful to hear judges? views on how they cope with the many issues that arise in a typical patent case.

We have reported on many of the hot-button patent issues the Federal Circuit and the Supreme Court have decided over the past few months. Not surprisingly, District Court judges are wrestling with many of the same issues. Perhaps the most vexing of these is claim construction. Although the Federal Circuit?s decision in Phillips v. AWH Corporation clarified that courts are to rely primarily on a patent?s specification in construing claim terms and only secondarily on extrinsic evidence such as dictionaries, trial courts still find claim construction to be a challenge ? largely because they find the technology underlying the patent claims they must construe to be a challenge. Judges are also perplexed that the Federal Circuit persists in characterizing claim construction as strictly a question of law to be reviewed de novo, when it so clearly requires the resolution of factual issues. However, they recognize, based on the court?s statements in Phillips, that the Federal Circuit?s approach is unlikely to change soon.

Another topic that judges have to deal with every day is whether and under what circumstances an injunction should be issued in patent cases. It has long been the practice that a patent owner is ?presumed? to have suffered irreparable harm from infringement, which makes the issuance of an injunction almost automatic once infringement and validity are established. The judges commented that in other kinds of cases they seem perfectly capable of exercising their judgment as to whether or not an injunction would be justified and cannot understand why the standard is different in patent cases. The Supreme Court has taken up this very issue in eBay v. MercExchange, and the consensus seems to be that the Court will bring the rule regarding injunctions in patent cases more in line with the rule applied in other types of cases.

A third hot issue, one that has received a substantial amount of publicity because of the BlackBerry litigation, involves questions of infringement and damages where part of the allegedly infringing conduct occurs outside of the U.S. The judges acknowledged the nettlesome legal problems this situation raises, but stated that they had not yet encountered the issue.

It is important to remember how difficult patent cases are for most judges and it is encouraging to hear how diligently they work to deal with these difficult cases. We will continue to report on judges handle these and other subjects.

Today's Blogger:  Bob Sloss