Over the past few years, Congress, appellate, and district courts have made significant strides to improve patent law and litigation practice. Congress is now considering making more changes, to supplement ongoing tailoring by the courts. Dialog between the patent bench, patent bar, and lawmakers is crucial for informing these efforts. To support this dialog, we developed, in consultation with judges and company lawyers in spring of 2013, a list of questions to probe the experiences, opinions, and suggestions of lawyers. We asked survey takers to rate, on a range from ineffective to very effective, certain existing and proposed practices and interventions, and converted these scores into numerical ratings (of up to a highest possible effectiveness score of 100%). Based on over 500 responses, about a quarter from in-house counsel mostly at large technology companies and the remainder from outside (law firm) counsel, we probed a number of topics, and made a number of findings.
For example, the highest rated intervention of any on this survey was timely decisions on summary judgment motions (85%) followed by timely decision on transfer motions (72%). Early claim construction also rated highly (around 68%). Among recent reforms, the FCAC e-Discovery model order ranked the highest in effectiveness among inside and outside counsel (43%). However among many recent reforms, commentators said, too much variance in court uptake and implementations, due to the discretion given to judges, undermined their effectiveness. Among proposed legislative reforms, fee-shifting and sanctions for prevailing parties and for discovery abuses rated most favorably (~65%). Based on about one hundred outside counsel responses, discovery abuses, followed by frivolous claims/defenses, were in the greatest need of sanction or shifting. Respondents also identified abuses that tended to be particular to plaintiffs: evasive discovery responses, overly burdensome or excessive discovery requests, frivolous/meritless claims, and unreasonable claim construction positions; as well as to defendants: stalling or failing to provide requested information, hiding non-infringement positions, and unreasonably delaying or asking for late trial dates. 86% of in-house counsel reported that their company’s customers had received PAE demands based on the use or implementation or the company’s products. With respect to trends in patent monetization, there was a split in responses – slightly more than half of respondents indicated that the company had not experienced greater pressure to monetize, while slightly less than half indicated that their company had either monetized (23%) or were thinking of doing so (28%).
Colleen Chien, Nicole Shanahan, Daniel Dobkin, Wesley Helmholz, Coryn Millslagle, and Christopher Patrick Tosetti,
Santa Clara Law Best Practices in Patent Litigation Survey
Available at: https://digitalcommons.law.scu.edu/facpubs/805