A law firm built for results.
November 19, 2009
Aaron Myers, Nicholas Boebel, and Misti Okerlund were selected as 2010 “Rising Stars” in the area of intellectual property litigation. Rising Stars must be under the age of 40 or in practice for 10 years or less. Approximately 2.5 percent of Minnesota lawyers are recognized as Rising Stars.
Congratulations to Aaron, Misti, and Nick. You can read our full news release here.
October 20, 2009
The Intellectual Property Owners Association reports the latest news on patent reform efforts in Congress, which include the possibility of amending patent laws to give application priority based on which inventor first files a patent application, rather than the inventor who first invents the invention. The United States remains the only country who awards priority based on first-to-invent, rather than first-to-file. Most critics of the proposed change point out, given the expense and other barriers to getting early patent applications on file, the change would primarily benefit large companies and hurt small companies and independent inventors.
September 24, 2009
According to this article in the American Bar Association Journal, at least one large law firm is changing its stripes and purportedly moving to a fixed-fee billing arrangement for certain “high-end legal services.” According to the article, the law firm in question “depended heavily on high charge hours levels by associates, counsel and partners to offset the impact of discounted rates and increased write-offs of expenses and time.” We hate to say we told you so, but, well, we told you so. Myers Boebel & MacLeod has considered fixed-fee billing and other “alternate” fee arrangements since we founded the firm. In fact, we founded the firm precisely because we wanted to provide our clients an alternative to inflexible, unreasonable billing practices. It’s probable that many law firms will, at least in theory, test the market for the types of fee arrangements we have offered since day one. But, we’re wondering: What took them so long?
September 2, 2009
Patent owners thinking about initiating patent infringement actions in the District of Delaware might want to consider a recent Memorandum Order entered by Judge Sue L. Robinson. In StreamServe v. Exstream Software, Judge Robinson held that “I have determined that bifurcation is appropriate, if not necessary, in all but exceptional patent cases.” Judge Robinson is one of three District Court Judges in the District of Delaware and the District’s former Chief Judge. It appears likely that bifurcation of patent infringement cases into a liability trial and, if necessary, a damages trial will now be the norm in the District of Delaware. Patent owners who believe that trying their damages case with their liability case in effect pays a certain degree of homage to their patent’s strength, may want to consider filing their case in another District without similar bifurcation laws.
August 3, 2009
Minneapolis-based Medtronic, Inc. announced a global settlement of all intellectual property litigation with Abbott Laboratories on July 28. Aside from the 400+ million dollar payment, perhaps the most interesting aspect of the resolution was an agreement between the two companies not to sue each other again in the area of coronary stent and stent delivery systems for at least 10 years, subject to certain restrictions. This agreement is especially notable since Medtronic and Abbot had engaged in patent litigation for over a decade, in at least a dozen cases stretching across the United States and Europe.
The patents related to the design of stents, their manufacture and use, and the systems that help physicians insert them into the patient’s body. The stents became the fastest-selling medical devices in recent history after being introduced in 2003.
July 23, 2009
In an unusual move, a district court decided to restyle the Plaintiff and Defendant in a patent infringement case. In Gemtron Corp. v. Saint Gobain Corp., Saint-Gobain filed suit against Gemtron, seeking a declaratory judgment of noninfringement and invalidity of two patents. Gemtron then counterclaimed for infringement, and the district court “realigned the parties” to make Gemtron the plaintiff.
While thinking of the patentee as the plaintiff and the alleged infringer as the defendant might be a little easier, this change bestows significant tactical advantages on the plaintiff for the remainder of the case. Initially, the very fact that it easier to think of the parties in terms of the party who was wronged and seeking to vindicate its rights against the party who allegedly harmed the first party may provide an advantage for the plaintiff in the mind of a jury. And while the now-defendant presumably acted in good faith by taking proactive and costly measures to make sure it was not infringing the now-plaintiff’s patents, some of that good will may be ameliorated by virtue of its new status as the defendant. The new-plaintiff gets to reap rewards that it never fully earned simply based on being the plaintiff.
Not surprisingly, the new-plaintiff won in the district court and on appeal.
July 1, 2009
In what may be the largest patent infringement verdict in U.S. history, a jury in the Eastern District of Texas found against Abbott and in favor of Centocor with $1.67 billion in damages. The jury found Abbott Laboratories infringed Centocor’s patent, Patent No. 7,070,775, to produce the arthritis drug Humira. The breakdown includes an award of $1,168,466,000 in lost profits and $504,128,000 in reasonable royalty damages.
March 26, 2009
The Federal Circuit recently issued an interesting opinion holding a patent holder’s appellate attorneys jointly and severally liable for one defendant’s fees and costs related to the appeal.
We consider this appeal, as it relates to PalmSource, frivolous. Although there is a host of reasons that collectively support our reaching this conclusion, we focus our discussion on two. First, E-Pass “fail[s] to explain how the trial court erred or to present cogent or clear arguments for reversal.” See id. at 1345; see also Refac Int’l, Ltd. v. Hitachi, Ltd., 921 F.2d 1247, 1256 (Fed. Cir. 1990) (sanctioning party that failed to point to any basis for reversal in the lower court’s decision). Second, E-Pass has made significant misrepresentations of the record and the law to the court. See Abbs, 237 F.3d at 1345; see also Romala Corp. v. United States, 927 F.2d 1219, 1224 (Fed. Cir. 1991) (sanctioning party for, among other things, distorting the lower court’s decision).
While the Federal Circuit’s decision is certainly a cautionary tale, what really caught our attention was the malpractice lawsuit E-Pass filed against its former litigation counsel at Moses & Singer and Squire Sanders. According to E-Pass’s malpractice counsel, litigation counsel for E-Pass collectively billed their client 7.6 million dollars in attorneys’ fees during the case. Whether or not there was malpractice or other malfeasance, 7.6 million is a truly eye-popping number. The Federal Circuit’s decision provides at least some clue as to what was going on:
But litigation misconduct is a central issue—the district court specifically concluded that E-Pass had engaged in repeated litigation misconduct, including, in particular, its shifting legal theories. See, e.g., Decision at 29 (“E-Pass’s allegations of inducing infringement against PalmSource have also changed over time.”); id. at 33 (“Throughout the litigation, defendants were forced to expend resources merely to attempt to have E-Pass clearly define its claims.”).
It is important for a litigant to have its infringement theories nailed down before filing a case, and to continually monitor its chances of success as the case progresses. That, and watch your bills.
February 26, 2009
Quite a bit if you’re wealthy, American, don’t like paying your taxes, and have used the Swiss Bank UBS to avoid them. A number of UBS’s American clients have filed a lawsuit in Switzerland to prevent the disclosure of their names in connection with a tax-evasion investigation by the IRS. Since the whole point of the lawsuit is to prevent the disclosure of their identities, the plaintiffs in the case have, unsurprisingly, not been idenitifed.
February 23, 2009
The Intellectual Property Owners Association recently weighed in with “suggestions” on the draft model patent jury instructions released for public comment by the National Jury Instruction Project in December 2008. Accused infringers are likely to approve of much of the IPO’s commentary.