I attended the 14th annual Rocky Mountain IP & Technology Institute at the beginning of June. As usual, one of the highlights of the Institute was the judges panel. This year’s panel was a group of federal magistrate judges discussing IP litigation. As usual, it was a lively panel that delved deep into the issues they discussed. The judges were:

  • Judge Hildebrand (D. Minn.)
  • Judge Wang (D. Col.)
  • Judge Payne (E.D. Tex.)

The judges covered a number of topics, including:

  • 101 motions
    • 101 challenges have similar win rates whether they are filed early (as Rule 12 motions) or later (as summary judgment motions).
    • Judge Wang
      • District of Colorado judges are unlikely to stay discovery pending an early 101 motion. So, you may get an earlier decision, but you will not delay the beginning of discovery.
      • The Court will want to know whether discovery and/or claim construction are necessary to decide the motion. To the extent you can get a stay, the best way to do that is to come to the scheduling conference with a concrete explanation and plan about what is needed for the motion and how it will impact the case.
    • Judge Payne
      • He jokes that the data presented regarding 101 win rates suggests that there are fewer unpatentable patents asserted in Eastern Texas.
      • 101 motions tend to start from the conclusion that the claims are abstract and then seek to justify that.
      • When Judge Payne gets an early 101 motion, he starts from a presumption that the patient patent is valid and is asked to invalidate it based solely upon attorney argument. He is more able to understand the intricacies of the claims and the technology at or after claim construction when he has been aided by party experts and the Court’s appointed technical advisor. In light of that, he is more able to decide 101 motions on summary judgment.
      • He points to the E.D. of Texas’s rule requiring the parties to meet and confer regarding whether claim construction is required to decide the motion.
      • After Alice, the E.D. Texas created a requirement for a letter brief requesting an early 101 motion, anticipating a flood of those motions. The Court has abandoned that requirement in favor of the meet and confer regarding claim construction.
    • Judge Hildebrand
      • The District of Minnesota has seen a drop off in patent cases and, therefore, does not have a statistically significant sample of 101 motions to draw conclusions from.
      • The judges are, however, open to creative scheduling to allow for cost-savings and early decisions.
    • 2015 Federal Rules Amendments
      • Proportional discovery rule
        • Judge Hildebrand
          • Proportional discovery is a two-way street.
          • Parties need to throw out/revisit boiler plate discovery objections and discovery requests.
          • The more discovery requests/discovery disputes clearly reflect that the parties have had a collaborative discussion about the scope and rationality of discovery, the better the court is able to resolve disputes and issues.
          • The “art of the meet and confer is sadly neglected.” It is routinely evident from the papers that the right people never sat down and conferred. “More often than not” Judge Hildebrand sends parties back for further meeting and conferring, sometime with further guidance but often without.
          • Parties need to explain the value of the discovery they want to the case. It cannot just be a demand for boilerplate discovery.
          • She uses a scheduled monthly status hearing in many cases.
        • Judge Wang
          • The proportionality rule will significantly impact discovery. In Colorado, informal pre-motion discovery conferences are required. Often, it is clear that that conference is the first live discussion the parties are really having.
          • It is important to have a meaningful meet and confer.
          • Have a real, detailed discussion about electronic discovery during the Rule 26 process before the case begins. Doing it six months into a case is much more difficult and leads to more disputes.
          • She will set monthly calls with parties in some cases to discuss discovery issues and keep the case moving.
          • Do not wait to bring discovery issues to the court until they are emergencies.
          • She needs more than attorney argument about burden or what has to be done for e-discovery. She needs specific facts and details regarding burdens, procedures, etc.
          • Discovery requests should be as specific and narrow as possible. If you make specific, narrow requests and later show you do not have everything that you need, she will let you get additional discovery with a good explanation.
        • Judge Payne
          • Understand precisely what you want before filing discovery motions. It is not enough to recite your opponent’s bad acts and then ask the court to stop it.
          • The court needs specific information about what is needed/missing, what the burden is and a proposed resolution. And both parties need to provide that.
          • He has not seen a huge change yet based upon proportionality, but it is good that a discussion about why discovery is relevant to the claims and defenses as pled is required.
          • In terms of awarding fees, it is very hard to determine what appropriate fees/costs are for discovery.
          • In court, it is easier to defend the path of doing something than it is to defend doing nothing.
          • Defendants have “pretty much won the battle” as to where source code is produced. There are now more fights over the conditions under which it is produced – hours of access, the number of lines copied, whether the producing party can know what is copied and when they get that information.
      • New pleading standards
        • Judge Payne
          • The standards are not “heightened.” The Advisory Committee notes make that clear.
          • Regardless, the Eastern District’s contentions resolve any issues regarding specificity and detail in short order.