The first point of difference between the judges concerned pre-hearing tutorials, in a discussion at the American Conference Institute’s April 29 event on paragraph IV disputes at the Conrad in New York City.
Renee Marie Bumb, New Jersey district judge, is a big fan of pre-hearing tutorials. Each side presents their tutorial and opening statements, and Bumb has the opportunity to tell them which claims she wants testimony on. Talking to experts in this preliminary hearing is helpful because “nobody benefits if I don’t understand the case,” she said. “Being able to ask questions helps, and I can't do that with an affidavit”.
Her fellow New Jersey district judge, Stanley Chesler, on the other hand, said he thinks that preliminary hearings are a waste of time: “If I want education,” he said, “I’ll simply have oral arguments”.
Another topic they disagreed on is having a limit on the number of claims to allow. Chesler has a strict limit on the number he’ll consider, in order to “smoke out what the significance of the dispute is”. Bumb countered that strict limits are “not fair” and that the appropriate number depends on context.
Functionally, Bumb said that she limits the number by playing “good cop, bad cop”: “If they want 300 claims construed,” Bumb explained, “the magistrate judge will tell them there’s no way the judge will allow that”.
Rubén Castillo, chief judge for the northern district of Illinois, added that local rules work well “because they provide certainty.” One of the most important rules in Chicago is its 10-claim limit, Castillo said, because it is “geared toward getting to a Markman hearing as soon as possible”.
According to Bumb, 60% of district courts stay cases when there are parallel inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB). She is among the majority, choosing to stay cases when IPRs are granted because “I’d rather work hard in the 29th month than try a case I don’t have to try. It would just be duplicative of resources”.
Chesler disagreed. “Assuming the IPR is started by the generic, the only way I would consider granting a stay is where the generic is willing to hold the case while the IPR is proceeding.” Castillo added that “stays are more attractive” to district court judges since the PTAB harmonised its claim construction rules with district courts.
The three judges’ views are similarly misaligned when it comes to summary judgment. In the middle of the road, Castillo said that in Chicago, summary judgment is “possible” and that “filing the brief is the best way to convince me”. If it’s too factual, he warned, “I’ll deny it and go to trial”. Bumb loves to get to trial, so her policy is not to allow summary judgment. Only on one occasion has Bumb been convinced by a three-page letter describing why it was necessary. On the other end of the spectrum, Chesler said that he takes advantage of summary judgments often, disposing of a large number of Hatch-Waxman cases this way.
In Chicago, Castillo explained that they process Hatch-Waxman cases on a slower timeline than in New Jersey. “Our process is not so interactive,” he said. “You’d need to request oral argument and explain why you need it,” because in general, the process is “much more paper-oriented”.
Celebrating the 10-year anniversary of its patent pilot programme, the northern district of Illinois recently revamped its local rules. The most notable change, according to Castillo, is the addition of a new disclosure requirement. It states that any party opposing a patent infringement claim must produce a statement of gross sales revenue from the accused product for a six-year period preceding the complaint, or the issuance date of the patent, if shorter. The new rule incentivises settling earlier, which Castillo said could cause a “wrinkle” for Abbreviated New Drug Application (ANDA) cases in Chicago.
Rare harmony
Views on local counsel was a rare point of harmonisation for the judges. Chesler said that local counsel are hugely valuable to out-of-town lawyers “because different courts have different traditions. Local counsel can inform them on what type of conduct will endear themselves to us, and steer them away from engaging in conflict which would incur the displeasure of the court.”
Bumb said that she has a policy requiring local counsel to be present “because they know our court’s procedures … I very rarely waive that”. Castillo compared judges’ personalised policies to “a big shopping centre where every store has a different return policy”.
All three judges lamented that the next generation of patent litigators are not getting the same trial experience that used to be available, and expressed a commitment to supporting those opportunities where they exist. In Chicago, Castillo said, “we waive all kinds of rules” to give young litigators a chance in court.
Chesler noted a trend: “Trials may be dying,” he said, “but over the years I’m seeing that more and more patent litigators are litigators first, and patent lawyers second. They are becoming more adept at acting as teachers both for juries and for judges”.
Bumb pointed out that some clients don’t want junior attorneys to represent them. However, she said: “They need to understand that they’re the ones doing all the work – they can answer every question.” Bumb said that she strongly encourages young attorneys’ participation. “You’ve worked hard,” she said, “so c’mon!”
Turning back to the population of patent litigators as a whole, Castillo shared some gentle reminders: “Credibility is everything, so pick your fights wisely.” He also recommended keeping in mind that judges are busy jumping from civil to criminal cases, so managing time well and updating the court on the 30-month timeframe is more than welcome.
Specifically, Castillo advised to “come prepared with an agenda. Put together a roadmap of what you want” for judges to follow. He added that rules could even be customised, particularly in ANDA cases.
Bumb concluded on an optimistic note: “I love trying patent cases. I don’t have any pet peeves. Keep up the good work.”
