Judicial Perspectives on Patent Law - A Report from the APLI:SV, Part 6

By TAP Guest Blogger

Posted on January 6, 2016


This is the sixth report in a 7-part series from The 16th Annual Advanced Patent Law Institute: Silicon Valley.

The report is written by Kevin Hickey, Microsoft Research Fellow, Berkeley Center for Law & Technology at Berkeley Law School.


The Judges’ Panel is always a highlight of the Advanced Patent Law Institute: Silicon Valley (APLI:SV), held in Palo Alto on December 10 and 11. This year’s session was moderated by Karen Boyd and featured three esteemed federal district court judges with extensive patent experience: the Hon. Richard G. Andrews (D. Del.), the Hon. James Donato (N.D. Cal.), and the Hon. Rebecca R. Pallmeyer (N.D. Ill.). Each offered a unique perspective on managing patent cases in a changing legal environment.


After Mayo and Alice, the timing for motions challenging patent eligibility on subject matter grounds has created conflict in the district courts. All three judges agreed that patentable subject matter is a threshold issue that should be raised early, preferably as a Rule 12(b)(6) motion to dismiss. There are exceptions to this rule when claim construction is critical (in which case the issue may need to wait until after the Markman hearing), or then factual proof is needed to establish whether the inventive concept is more than an “ordinary” or routine application (Mayo step 2).


All of the judges extolled case management conferences as a critical tool for both the parties and the judge in focusing complex patent litigation. These conferences can be very useful for litigants to learn how the judge wants to approach and structure the case, and to impose reasonable limits on discovery, such as limiting the number of asserted claims or disputed terms in claim construction. Judge Pallmeyer typically holds a conference even when there are no disputed issues in the joint Rule 26 report, and usually requires continual “check-in” conferences every 60–90 days thereafter. Judge Donato favors an early technical tutorial (by non-lawyers) to gain a better understanding of the patented technology. Although their respective jurisdictions have quite different local rules for patent cases, the judges agreed that no one set of rules was superior, but are merely different ways of accomplishing similar ends.


Perhaps the most useful part of the discussion for practitioners came when the judges shared their “pet peeves” about patent litigants. Judge Pallmeyer weighed in against the use of unhelpful acronyms in briefs and arguments—it is generally better to use the full terms if possible to avoid confusion. Judge Andrews criticized overuse of impeachment using prior statements that are only trivially inconsistent with the current testimony. Judge Donato disfavors the “shotgun” strategy of litigation, wherein a party relies on dozens of alternate arguments. Much better to pick your best two or three arguments and focus your energy on them. All of the judges took a dim view of most patent expert witnesses, who are too often transparent extensions of the party’s litigation team and—worse—completely ineffective at communicating technical concepts to a lay audience. Much of this (often quite expensive) testimony simply goes over the head of both judge and jury.


Read more on the Advanced Patent Law Institute: Silicon Valley


This conference summary was written by Kevin Hickey. Mr. Hickey is the Microsoft Research Fellow, Berkeley Center for Law & Technology at Berkeley Law School.