Every other week, BCLT Executive Director Wayne Stacy conducts interviews with a Morrison & Foerster team member to discuss the Federal Circuit's recent patent decisions. We all know the basic holdings. The key, however, lies in the nuances of how the Federal Circuit reached its decision. If you want to know more—with an eye toward predicting the future—we have the nuanced information for you.

This week, we interview Brian Matsui:Opening the floodgates with SRI? Did the Federal Circuit return willfulness tactics back to 20 years ago?  And more Fintiv fallout? The Federal Circuit addresses a possible workaround to what some see as the Fintiv problem.  

 

SPEAKERS

Brian Matsui, Wayne Stacy

 

Wayne Stacy  00:00

Welcome, everyone to the Berkeley Center for Law and Technology's Expert Series podcast. I'm your host, Wayne Stacy, the Executive Director for BCLT. And today we're here to talk about the Federal Circuit and the recent rulings that are precedential. We have with us one of the nation's leading appellate experts and Brian Matsui from MoFo. Brian also helps drive MoFo's frequent if not weekly blog on Federal Circuit activity. But today, rather than focus on repeating what was in the blog, we want to have a discussion about two particular cases and what they might mean for the future. The first one is the SRI case, which is an incredibly old old case, it's been dragging around since 2013 and we're getting closer to final resolution, not quite there yet. But Brian, tell us why patent litigators should care about SRI.

 

Brian Matsui  01:03

Well, thanks a lot when I'm very happy to be doing this. Sri is a pretty interesting case, both from a process perspective. And from a legal perspective, I think one of the reasons why I thought this case was interesting is it's a comeback case. And you don't see that all that often. It's a case that basically was decided once by the Federal Circuit, and then it went back down, and then it came back up again. And then it was decided again, and you sort of have to feel for the district court in this case. Now there were actually were two District Court judges in there. But the district court basically got vacated or reverse twice in a row on this. And I think the second time the one we're the one we're going to talk about, it may feel not entirely fair that it did actually get reversed.Wayne you mentioned this case, was way back from 2013 when the complaint was filed. The case really is about willfulness now. I mean, I think the thing to talk about is, is the issue of willfulness. This is a obviously it's a patent infringement action that SRI is the patent owner, and they sued Cisco as the defendant. And about five years or so ago, a jury found that Cisco directly and indirectly infringed SRI's patents, and the infringement was willful and awarded $23 million in damages. And then the district court enhanced the damages it doubled them that set up this this first appeal. And the panel was judges Laurie O'Malley and Stoll and judge Stoll wrote the opinion. Now it's a 2019 and in examining the willfulness issue. The panel said that the Supreme Court said in Halo, the sort of contact conduct warranting enhanced damages has been variously described in our cases as willful, wanton, malicious, bad faith deliberate, you know, the characteristics of a pirate. And then looking at the evidence, the court said, they said the evidence wasn't sufficient because Cisco's conduct didn't rise to the level of wanton, malicious and bad faith behavior. And so then it basically sent it back for the district court to decide whether or not it met this standard. So that's what basically was the setup of the case. And then it came back to the