December 21, 2007 by thomason.

From the time of my first patent trial in Wilmington, DE, around 1990, the standing order there was no “legal experts.”  It was a good rule then, and now, but now the CAFC and the Supreme Court have mixed legal rules with factual issues.   Still, in a bench trial, it is close to a professional affront to proffer a lawyer to give the Judge an opinion on the law, even the patent law.

It still is the unwritten rule in Delaware, as indicated in a short Dec. 20th Order in Vanderbilt Univ. v. ICOS Corp., (Civ. 05-506-SLR), where after having “reviewed the case law” the Judge “concluded that testimony to explain (or explain away) such law is neither needed or appropriate.”    I suppose that was cause to send that “legal expert” back to gather up his luggage at the DuPont Hotel and Metroliner back to wherever he rode into town from.

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December 7, 2007 by thomason.

What chance would you give a Rule 12(b) motion to dismiss a claim of willfulness?  That motion won in Abbott Labs. v. Sandoz, (N.D. Ill. 12/4/2007).  This suit was later-filed over infringement by a generic substitute.  In prior suits over the same patent, the Federal Circuit had vacated a preliminary injunction due to “substantial questions” about validity.

The later-filed suit against Sandoz included a count for willfulness, which prompted a motion to dismiss that count.  The District Court starts from the propositions that willfulness is a “question of fact” and that on motion to dismiss the allegations must be taken as true as against the moving party defendant.   To me, that cut off the chances to get a 12(b)(6) dismissal.

Wrong again Rumpole!  Based on the Seagate ruling by the CAFC, the standard for willful infringement is “objective” reasonableness about whether the conduct would infringe.  Sandoz pointed to the earlier opinion that vacated injunction based on validity concerns.  On that basis, Sandoz argued its launch of the generic was objectively reasonable, since the patent might prove invalid as had been contended.  The Judge agreed, and dismissed the case.

While “objective” suggests a matter that may be assessed by a Court more than proven thorough by evidence, for a fact question of reasonableness to be dismissed at the outset was a surprise.  No wonder trolls love this land.

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December 6, 2007 by thomason.

Before the turkey and dressing were still getting frequent re-heatings, the Second Circuit had another sitting with the class of authors who’d licensed their works for print publication but not for later digital archive publication.  After the final rulings in the Tasini case, suits were consolidated, a class was certified, and a settlement was approved.  The Second Circuit, on Nov. 29th, undid all of that, on jurisdictional grounds.

It held that the district court lacked jurisdiction over all claims and all class members, and so, its actions disposing of the case were vacated.  The sole basis was 17 U.S.C. 411(a).  Hornbooks instruct that to state a copyright claim, two things are needed, a copyright and a copy.  Section 411 provides that suit cannot be “instituted” until the author had pursued “registration” of a copyright.  Many of the authors and works lacked registration, and so as to those, the court lacked jurisdiction.

Two points seem odd.  First, cases often are settled while there is a pending motion to dismiss for lack of jurisdiction.  Those undecided motions do not divest the court of power to finalize, even later to enforce, settlements.  Maybe if such a motion was decided, there would have been a finding of no jurisdiction, but the case is allowed to settle.  To toss a settlement based on a threshold jurisdiction issue doesn’t do much to encourage settlements.  Second, the related arguments that having jurisdiction over the registered works was enough to argue for supplemental jurisdiction over the rest of the case sounded pretty good.  The Circuit Court rejected that, apparently because the defendants who argued that on appeal had argued there was no supplemental jurisdiction when they were in district court.  IMO, the maleability of the supplemental jurisdiction statute provides ample ground to keep all of a case involving related issues and parties.

Last, the statute may  plainly preclude the unregistered works from being adjudicated in federal court, but the caselaw that the Second Circuit relied on sounded weak.  Two Supreme Court cases were cited, which interpreted a statute on review of Social Security determinations.  Those cases held that review only of “final” decisions was jurisdictional.  The test of finality regards appellate jurisdiction.  That is rather different from original and supplemental jurisdiction.  Thus, those Social Security cases and statute sounded unconvincing.

On a sidebar, had the Tasini authors been able to settle, then the terms could have helped inform the striking screenwriters about what fairly they should receive for later versions of their works.  Since the Tasini authors now have lost their settlement, then the writers strike will continue longer than it might have.

The case is In re: Literary Works in Electronic Databases Copyright Litigation (2nd Cir. 05-5943).

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