The Sunset

In Hatch-Waxman cases, where is the act of infringement committed, and who commits it?  Allison Schmitt (BCLT) and Seth Lloyd (MoFo) discuss the Celgene v. Mylan decision (17 F.4th 1111 (Fed. Cir. 2021)). 

Featuring Seth Lloyd.

 

SPEAKERS

Seth Lloyd, Allison Schmitt

 

Allison Schmitt  00:00

Hello all and welcome to the Berkeley Center for Law and Technology's Expert Series podcast. My name is Allison Schmitt and I'm the director of the Life Sciences Program at BCLT. So today Seth Lloyd from Morrison and Foerster is joining us for our podcast series Beyond the Holding a nuanced look at the Federal Circuit's patents decisions. Thanks so much for joining us, Seth. Happy to have you back.

 

Seth Lloyd  00:20

Yeah, thanks. Awesome.

 

Allison Schmitt  00:22

So today we're going to discuss the November 5th Celgene v. Mylan decision that came down from the Federal Circuit. There's a number of issues to unpack here related to venue and pleading standards. And Seth is going to walk us through all of it. But before we dig into the substance of the decision itself, Celgene discusses a type of case that's different from most of the other cases that we've previously discussed on the podcast. So Celgene arose under the Hatch Waxman Act, which is a complex statutory framework created by Congress, with the goal of streamlining approval of generic drug products in the United States, and creating a framework for the patent challenges to the brand side company's patents prior to marketing the generic drug. So Seth, can you walk us through the background of how these Hatch Waxman cases work so that our listeners can get a sense of how these might be different from the typical patent cases that they're thinking about?

 

Seth Lloyd  01:10

Yeah, I'll give it my best shot. You weren't exaggerating when you said complex, it is a complex statutory framework. But I think there are a few key points to understand for today's case. So in general, as you said, when a completely new drug is coming to market, the party files a new drug application or an NDA, with the Food and Drug Administration. And to get an NDA approved, there's a long process. The parties have to go through clinical studies and and go through several rounds, usually with the FDA to get approval, that tends to be a very lengthy and costly process. And so the Hatch Waxman Act was designed to allow quicker approval for kind of the follow on, so parties who want to market a generic form. So basically the same pharmaceutical formula. But without going through that lengthy process. And what the Hatch Waxman Act allows them to do is to submit an abbreviated new drug application, or an ANDA, as people in the industry call it. And with the ANDA they don't have to submit all the do new clinical trials and submit new data from clinical studies. Instead, they can simply show prove to the FDA that their drug is bio equivalent to an approved drug, it's the same formula, and they can get approval much quicker and with less cost. The part that's going to be relevant to our case today is how does this all work with patents because often, if somebody's come up with a new drug, they've patented the formula or they've patented a new method for using that drug. And so the new drug applicant, that NDA filer will also tell the FDA about any of those patents that covered the drug, or methods of using it, and they'll list those patents in what's called the orange book. Now, later, the company that wants to market the generic version comes along, they have to tell the FDA, what they intend to do with regard to any patents listed in the orange book. They have

Local, state, national, and international—everyone is getting in on the privacy game. But what does the future hold for harmonization? And where does the new USMCA (the new NAFTA) fit in?

More on Stuart Brotman.

 

SPEAKERS

Wayne Stacy, Stuart Brotman

 

Wayne Stacy  00:00

Welcome, everyone to the Berkeley Center for Law and Technology's Expert Series Podcast. I'm the Executive Director of BCLT, and your host Wayne Stacey. Today, we have the second part of a discussion with Professor Stuart Brotman. If you recall, Professor Brotman is a professor of Media Management law at the University of Tennessee, and is pioneering a new model for addressing privacy issues. Today, we're going to actually focus on something a little different than the model we discussed last time that the carrot and stick and really start addressing some of the competition between different jurisdictions on how they're trying to regulate privacy and related issues. So Stuart, let me start with just the first question is, why is federal preemption such a contentious issue in the development of federal digital privacy legislation?

 

Stuart Brotman  00:53

Thanks, Wayne, it's a pleasure to be here. Well, federal preemption remains a sticking point, I think, particularly because it is a sticking point in the federal discussion, which means on one side of the aisle, you have the Republicans and the other, the Democrats and to the extent that they do not want to move closer to enacting legislation, preemption gives an obvious point of division between the two parties. Generally, you can characterize the Democrats as being favorable to preemption. And you can characterize the Republicans as not being favorable to preemption based on states rights and the ability of states to handle things. But we have a really interesting moving mix of players here, particularly because California in enacting the California Privacy Rights Act. And then, of course, before that the California Legislature enacting the California Consumer Privacy Act. So So there we have, essentially, particularly with the CPRA, which was enacted as a ballot proposition, we have the voters who have now essentially said, this is the type of privacy legislation that we want. And it's the only legislation so far that essentially has faced voters at the ballot box. And as you know, California has about 40 million people not that many voted, but certainly it represents us, the largest state in the union. And of course, two of the critical players are the Speaker of the House, Nancy Pelosi represents a congressional district in the San Francisco area. And, of course, Vice President and Kamala Harris, who of course, was the attorney general, when CCPA, the California Consumer Protection Act was adopted and obviously was a strong proponent of that. So even though they are Democrats, they also have the interests of California. And those interests, obviously, are to make the California laws as workable as possible, and not have the federal government come in, and essentially preempt them prematurely. And of course, then we have other states who have been added to the mix. So we have both Virginia and Colorado, which now have laws which have been enacted by the legislature and signed by the governor. And if you look a little bit at the political makeup of those states, Virginia, as you know, is what's characterized now as a purple state. And in the recent gubernatorial election, we saw it flipped pretty dramatically from the Democrats to Republicans. And so it's a very interesting state is a bellwether, but clearly in Virginia, there was enough popular support and a Democratic legislature, which passed this. So there are two Democratic legislators California and Virginia, which have favore

Has the Federal Circuit abandoned all judicial restraint when reviewing Judge Albright's orders?

The Federal Circuit is now issuing opinions on Judge Albright's venue decisions that are not even on appeal.  What can we expect next? And moving beyond venue, last week's rulings provide important lessons on both summary judgment practice and expert reports.

 

SPEAKERS

Wayne Stacy, Michael Smith

 

Wayne Stacy  00:00

Welcome, everyone to the Berkeley Center for Law and Technology's Last Week in Texas podcast. I'm your host, Wayne Stacey. And once again, we're here with the famous Michael Smith. So Michael, what happened last week that we need to know?

 

Michael Smith  00:16

Well, Wayne, we got a lot of interesting things that happened last week. Let me start with the Eastern District, we've got a couple of interesting opinions out of there. We have the J-mals in the Solus versus Samsung litigation. And as readers of my blog know, I'm a big fan of rule 15 motions, because it's the best way to see all the issues that come up in a case and what matters and what the standards are. And in that case, Judge Gilstrap was passing on the J-mals in a case that resulted in a $62 million verdict against Samsung back in March. Now he denied all the issues and also denied the defendants motion for new trial. But again, that's a really helpful opinion, to know the sorts of issues that come up in a case and what courts do with it.

 

Wayne Stacy  01:06

You sell that opinion a little bit short, it's it's a long opinion, that really, if you're newer attorney or just want to get a set of lessons on on J malpractice, that opinion really seemed to be helpful. So it's one I'd recommend people take a look at.

 

Michael Smith  01:22

It really is and because it discusses all the issues and explains what happened at trial, and now the complaint is that there wasn't sufficient evidence to support... A reasonable jury couldn't have decided the way that it did. Well, here's the evidence. And yes, there was sufficient evidence from which they could do that J-mals, I find I've kind of got J-mals on the brain this month from our trial a couple of weeks ago, because I was trying to herd those for the 50A motion at the end of the evidence. And a lot of times people just don't don't realize the significance procedurally of it. But at the back end of the J-mal procedure, you get this great opinion, that tells you so much about what goes on during trial.

 

Wayne Stacy  02:06

Michael, there's is another case at the Eastern District that I gotta tell you, I was smiling as I read this. You absolutely have to lose this. But this is the most creative entertaining argument I have seen in a while, you know, kudos to you for creativity and making me smile. You want to give us the background on that Lyft case?  Yeah, this is an improper venue case, that Magistrate Judge Payne here in Marshall ruled on. And in that case, what he was looking at is the plaintiff was saying venues proper in the Eastern District, in a case against Lyft, and they had three different arguments for why venue was appropriate. And he went through each one and said, Okay, argument one doesn't work, because that's not a regular place of business. Argument two doesn't work. And this was the one that I thought was interesting. The argument was that, well, they've got cars and cars are a regular established place of business. And he said, Well, looking carefully at what the court said in In Rae Cray. Yes, it's a physical place, but it's transient, not established. And then he found that pickup locations where it either Well, I was talking about this case with my wife last night, and I said, he

The Senate turns a harsh gaze toward Texas. Will recent heat from Washington result in more cases being transferred out of Texas? Or will the Federal Circuit's continued tinkering with venue make a difference?

 

SPEAKERS

Wayne Stacy, Michael Smith

 

Wayne Stacy 0:00 Welcome, everyone to the Berkeley Center for Law and technologies last week in Texas podcast. I'm your host, the Executive Director of BCLT, Wayne Stacey. And once again, we are here with Michael Smith. And as you know, if it happened in Texas, and if it matters, Michael knows about it. So Michael, tell us what we need to know about the last couple of weeks.

Michael Smith 0:22 Well, the last couple of weeks, the main thing is we've seen a bunch of letters, we had letters coming out of the clerk's office in Eastern District, and we had letters coming out of the United States Senate and Washington. And that got a lot of attention over the last week.

Wayne Stacy 0:35 Well, the ones that are coming out of the clerk's office look like an administrative nightmare to kind of get all of this cleaned up or in compliance with the exact letter of the rule.

Michael Smith 0:47 Yeah, what what appears to have happened is the Eastern District clerk's office is sending letters out to everybody who was ever involved in a case that Judge Gilstrap ever had since he's been on the bench in which his family had a trust, in which a trust that a family member had an interest in owned a stock of one of the parties. So I know I saw it in I don't know, a dozen or so maybe a little less than that cases, all of which are closed. Presumably, if it's an open case, there would be a recusal, and that would then require appointment under the local rules of the other judge in the division, and then he would continue with the case. Coincidentally, I had one of those situations come up three weeks ago, where a party raised had nothing to stock ownership had to do with a case Judge Gilstrap had worked on before he came on the bench, and they raised it and he recused that afternoon. So we got to see how quickly the thing went through the process. Within 24 hours, another judge was appointed that judge had asked a magistrate to go ahead and go forward with a case. But what will happen with these letters is clerk's office wrote and said, "Here's the situation: Judge's family member had an interest in the stock of one of the parties. If you want to raise any issues in connection with this, please do so in the next 30 days and another judge will take a look at him." So presumably people will be looking at that. Again, that's a universe of about 130 cases. I think so we'll know. In the next couple of weeks. How many of those actually generate a request.

Wayne Stacy 2:19 Just to be clear, there's absolutely no accusation that Judge Gilstrap ever did anything wrong, that he was biased in any way, this is really an administrative issue related to a family trust.

Michael Smith 2:33 Right, right. No, no accusation I've seen from anybody. It's simply a situation where the judge has said publicly, he didn't believe he needed to recuse, apparently, they've made the determination that they're going to go ahead and invite people to file any motions they think are necessary as a result of it. And any pending cases will move to another judge. Now, because we know the judges involved, as soon as I got the notices, they went and trashed because it's not something that I think had anything to do with anything. And again, if it was a defendant, they already knew who held their stock. So the only way this would come up is if there is a plaintiff, who felt like they can make the argument that the stock ownership had something to do with them losing the case. And I just -- I know most of the people that filed claims cases around here, and I'm not aware of anybody that thinks that has anyth

Using Europe as the model, privacy regulations worldwide are taking a strong turn toward punishment-based regulatory models. But is that the way that American privacy laws should go? What about offering a little carrot instead of all stick?  

 

More on Stuart Brotman.

 

SPEAKERS

Wayne Stacy, Stuart Brotman

 

Wayne Stacy  00:00

Welcome, everyone to the Berkeley Center for Law and Technology's Expert Series Podcast. I'm the Executive Director of BCLT, Wayne Stacy. Recently, there's been significant criticism of tech companies and a lot of call for government regulation, especially in the area of data privacy. Depending on who you ask, tech companies are either out of control, or they're being unfairly blamed for the behavior of their users. So the question is, where's tech policy going and what is a healthy way to analyze these options? To guide us through this important discussion today, we have one of the nation's leading experts on tech policy development. Stewart Brotman, He's professor of Media Management and law at the University of Tennessee, a Distinguished Fellow at the Media Institute, and not a prerequisite for being on the BCLT podcast, but definitely a nice add. He's a Berkeley Law grad. So Stewart, thank you for joining us.

 

Stuart Brotman  01:00

Thanks, Wayne. It's a pleasure to be here.

 

Wayne Stacy  01:03

Well, Stuart, I want to just start at the highest level possible. You know, a lot of times when we talk about tech policy and tech regulation, people just immediately jump into the minutiae. But at a 30,000 foot level, tell us how effective the tech industry has been in helping to shape the digital privacy policy at the national level?

 

Stuart Brotman  01:26

Well, I think a lot of it has been reactive, it'd be somewhat critical, I would say. And this is not different than virtually every other industry that operates in Washington. Typically, it operates reflexively, meaning that it waits for Congress to take a lead in the area and then offer some pushback. I think the tech area is quite different, just because it's so dynamic. And developments happen so quickly, that Congress clearly is not in the position to have an overall framework for tech policy, and often it needs to be educated and guided by the industry first. So I think there needs to be a much better interplay if we wanted to think of it as being proactive versus reactive, I would say at the 30,000 foot level, my perception is that I think the tech policy area has been quite reactive. And certainly the industry has great lobbying resources. But I think most of them have been directed at how to react to specific developments as opposed to this much larger area. Here's why it's important from a political standpoint, as we all saw the election returns from this week, and where the tea leaves seem to be guiding us, and looks highly likely that we are going to not have a unified White House, House and Senate under democratic control, beginning in 2023. And obviously, 2022 is an election year. What that means is that I think many of the themes and perspectives can change quite dramatically. And if I were to have one 30 thousand foot recommendation for the tech policy community, it's to begin to think of strategic areas of development in the new Congress in the 118th Congress. At this point, I think it's safe to say there probably is not going to be any federal privacy legislation that will be enacted in the 117th  Congress, and it doesn't look like the Biden administration is going to be pushing any specific legislation. So that means that we're going to be deferring this for at least another

This week, we interview Brian Matsui:

Is the USPTO bonus system for APJs still vulnerable if challenged by a factually-armed patent owner? And how much clearer can the Federal Circuit be—District Court judges have significant discretion on inequitable conduct.

 

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.

 

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 Wayne Stacy, the Executive Director for BCLT. And today, Brian Matsui from Morrison Foerster will walk us through a few of the recent interesting rulings from the Federal Circuit. Brian, thanks for joining us again.

 

Brian Matsui  00:20

Thanks a lot, Wayne.

 

Wayne Stacy  00:21

Well, Brian the last two weeks have been lied at the Federal Circuit on on precedential decisions. But we did get two interesting cases. So I'd love to start with the Mobility Workx case, which is another constitutional challenge to the PTAB structure. As we maybe haven't had enough yet. We get another one that's fairly unique. So you want to tell us about this one?

 

Brian Matsui  00:45

Yeah, I mean, this is sort of like the ghost of Arthrex, or something like that, since we're right around the time of Halloween right now. This is another IPR appeal, and the patent owners claims were cancelled. So again, since it's a constitutional challenge, we don't ever get to the merits of the actual IPR decision on what happened to the claims themselves. There were a couple of constitutional issues here. The patent owner requested to remand under the Supreme Court's Arthrex decision, you know, which, of course everybody knows, found an appointment clause violation. But actually, rather than just remanding the case and being done with it, the Federal Circuit first addressed a couple other constitutional challenges that the patent owner made. And I think that's probably the reason why we have a precedential opinion here, rather than just a straight remand, the Federal Circuit was able to sort of address these two issues and potentially, you know, foreclose them or make them more difficult for future litigants that want to raise them.

 

Wayne Stacy  01:46

So Brian, one of the issues that that came up earlier in this case, and that seems to be coming up frequently is the government forfeiture arguments. You want to explain why the government keeps raising and losing this one?

 

Brian Matsui  01:59

That's a good question. I mean, I think to take a step back, we should just look at why the government's involved in this case, because you know, it's an IPR dispute. And, of course, you know, the government can defend and does defend the final written decisions, but they're not usually in these IPR decisions. And whenever you raise a constitutional challenge to a federal law on appeal, you have to tell the Court of Appeals that you're doing so, so the court can tell the attorney general, and then the Department of Justice typically comes in and intervenes to defend the law. And that's what happened here. And what the government has been doing in these types of constitutional challenges to IPRs,

With the SEC evaluating new disclosure regulations and companies already being held responsible for sloppy ESG statements, in-house attorneys cannot afford to look past their environmental and ESG statements. What does the future hold? And what traps are already waiting for you?

 

More on Jonathan Brightbill and Jennifer Porter!

 

SPEAKERS

Jennifer Porter, Wayne Stacy, Jonathan Brightbill

 

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 environmental issues in particular, environmental issues and how they impact tech companies. So we know that innovators and emerging tech companies like to see themselves as doing good things, helping out the environment. But is that always true? And if it's not true, when do they need to call outside experts, when do issues need to be raised up the chain within an organization? So to guide us through that discussion today, we have two leading experts from Winston Strawn. We have Jonathan Brightbill and Jenny Porter. Thank you both for joining us.

 

Jonathan Brightbill  00:52

Thanks Wayne.

 

Wayne Stacy  00:55

So let me just just start with the highest level question. Can you describe some of the environmental issues that those in the tech sector need to be thinking about, need to be looking out for basically, this is almost a law school issue spotting question, what should they issue spot?

 

Jonathan Brightbill  01:14

Well, sure. So some of the things they want to be thinking about is, of course, energy is an important attribute of the tech sector, and how they make things and the fact that then that their products are being used by consumers downstream. So the tech sector is an important contributor to ultimately or can be a contributor to energy output, and therefore to carbon emissions. So it's one sector that has been identified by policy regulators in the environmental space as one where more scrutiny needs to be applied. And in particular, on the disclosure and the reporting side, the so called ESG. There are a number of innovators in the tech space who are looking at new technologies to bring energy to the those who need it, to the public, and even to themselves. Looking at solar panels, wind power, other things. And while those types of technologies are carbon free, or largely carbon free in their production, they can have other environmental impacts over their lifecycle. There are waste impacts, there can be impacts on wildlife and other things. Another key area is in the area of toxics and chemicals. Obviously, a lot of tech is built using batteries, using heavy metals, rare earths other things, and there are disposal concerns on the backside. And another area is that while a lot of tech companies don't really think of themselves as having a significant environmental footprint on the manufacturing side, because a lot of their manufacturing is occurring overseas, in Asia, and oftentimes in China. There is a a growing and developing Chinese environmental regulatory system that has really changed in the course of the last five years to become much more rigorous, and much more consequential such that companies and entrepreneurs and developers here in the United States that haven't kind of historically thought of themselves as having a significant manufacturing environmental footprint, may begin to see those things.

 

Wayne Stacy

Would anyone tolerate Federal judges being paid based on the number of cases they dispose of? Probably not—it looks bad and erodes faith in the system. With faith in the USPTO at a low point, why then does the USPTO compensate PTAB judges using a bonus system that appears biased? Judge Newman elegantly points out that the appearance of propriety is critical to build faith in any adjudicative process—including those at the PTAB.  

More on Sarah Guske and Eliot Williams, Baker Botts.

 

SPEAKERS

Sarah Guske, Wayne Stacy, Eliot Williams

 

Wayne Stacy  00:00

Welcome, everyone to the Berkeley Center for Law and Technology's Expert Series podcast. I'm your host, Wayne Stacey, the Executive Director of BCLT. And today we're talking about the USPTO. And a few issues that the next director might want to look into quickly. Two issues in particular, were recently raised by Judge Newman, the bias and appearance of bias and the director review ability of institution decisions. So both of these came up in a wonderful dissent written by Judge Newman in the mobility works case. To talk about these issues today. We have two experts from Baker Botts, Sarah Guske and Eliot Williams. Thank you both for joining us today.

 

Sarah Guske  00:41

Thanks for having us.

 

Eliot Williams  00:42

Good to be here, Wayne.

 

Wayne Stacy  00:43

So I want to talk about the the bias issue first, this case had a really interesting section in the majority opinion about how PTAB judges are bonused. And how bias may or may not arise from those bonuses. So Eliot, I wanted to kick it to you first, you want to give a little background on how PTAB judges are paid and why somebody might perceive a bias.

 

Eliot Williams  01:09

Yeah, this is definitely an interesting issue that comes out of out of this this opinion. And, you know, here the patent owner obtained some information through the Freedom of Information Act, although I think generally most practitioners knew this was how PTAB judges are paid. But essentially, the way they're evaluated, they're obviously several components that go into that. But one of them is sort of how many decisions they write. And for PTAB judges, those come in a couple from a couple different places. One is the institution decision, which I'm sure we'll talk more about in this conversation, which is kind of the beginning of an PTAB trial proceeding. And it's the first the first step in deciding whether the petitioner has made enough of a showing that patents may be invalid to sort of begin the trial. The second phase is in the final written decision, which is of course, the decision that comes at the very end of the trial. The third thing that PTAB judges can do, however, is to write decisions in ex parte appeals, which has nothing to do with these sort of IPRS and PTAB trials, but has to do with just regular prosecution coming up from the examiner core. And, so in this particular case, what the petitioner noted is, the patent owner should say noted is that because the PTAB judges are paid based on the number of decisions they write, or that goes into their bonus calculations, they have an incentive to institute, because they know that if they write the institution decision, they would then have the chance to get another, you know, piece of work product out at the end of the process when they write the final written decision. So that essentially, as I understand it, was the argument that was being made

Two trials and two patent owner losses. Who said Texas was a plaintiff's dream? Could 101 be the most powerful invalidity attack in front of the jury? And a venue argument that was too much for Judge Albright.

 

SPEAKERS

Wayne Stacy, Michael Smith

 

Wayne Stacy  00:00

Welcome, everyone to the Berkeley Center for Law and Technology's Last Week in Texas podcast. I'm your host, Wayne Stacey, and we're here again with the famous Michael Smith. Michael, you want to kick us off with what happened in Texas last week?

 

Michael Smith  00:17

Well, sure, Wayne. I think the biggest news in Texas was last year, our annual Eastern District of Texas bench bar resumed in Plano. We had to cancel it last year because of the pandemic, but we were able to have it in person this year. And it was really great seeing everyone. We had almost 570 registered, and our previous high was in the high 400s. So we were very excited at the registrations. That really wasn't unexpected because we had over 100 people that flew to Texas for the planning meeting back in August. So we knew we'd have a lot of people there, but people were just very glad to be out. We didn't do the second night dinner at the Cowboys Stadium this year, we went to the Texas Rangers new ballpark in Arlington Global Life Gield. Of course, this being Texas, they'd already taken up the baseball diamond and put down the football field, because they'll be hosting the Army Air Force game on November the sixth. So we couldn't go on the field because they were still setting it up for football. But we went around, we went and had a line where attendees could practice in the Rangers batting cages, they fired balls at us. Everybody was wanting to know what the speed was. And I said and they told us it was 45, which I understand is a little slow. But I'm not a baseball guy. But we got to eat all the ballpark food, they have areas where you can go through a buffet and it has every food that is in the ballpark in one place. So it was incredibly unhealthy. But we got tours of everything. And it was just a great chance for everybody to socialize and visit and tell stories because obviously baseball is important to a lot of the people that are there, and they enjoyed visiting about it. So a great conference, very excited to get to do it.

 

Wayne Stacy  02:02

It's good to start hearing about people getting together again. You and I have talked about the practice of law can be pretty isolating. And then practice of litigation can set up a lot of adversarial situations. Dinner beer hot dog at the ballpark helps make litigations go a little bit easier. And people reach some some reasonable resolutions on things.

 

Michael Smith  02:22

Oh, it absolutely does. I talked to a number of people that are that are opposite me in cases right now. And it was a great to visit to visit with them. And oh yeah, it's good to be working with you again on such and such case. And the next day when I got back to the office, I could already tell if the problem came up, I was going to be able to email people realize that we were both trying to come to a reasonable solution on something. It really was great for that reason. And of course we get to hear a lot of great lawyers and a lot of good judges talking to us about what works and what doesn't work. A lot of in House Counsel, I learned things, a lot of things that I didn't know.

 

Wayne Stacy  02:57

Well, Michael, I saw the panel that you are moderating incredibly important everywhere but especially for people from the Eastern District  and Western District because it's drawing so much media attention these days. You know, everybody's coming to that docket looking for st

This week, we interview Seth Lloyd:

Alternative rationales, attorney fees, and NDAs stretched too far.

Can parties contract away their rights to file an IPR? And what can a party expect when it fails to appeal an alternative rationale?

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.

 

SPEAKERS

Seth Lloyd, Wayne Stacy

 

Wayne Stacy  00:00

Welcome, everyone to the Berkeley Center for Law and Technology's Federal Circuit podcast. I'm your host, Wayne Stacey, the Executive Director for BCLT. And we're here again to talk about some of the nuances from recent Federal Circuit decisions. We have today with us again, one of the experts from Morrison and Forester, Seth Lloyd specializes in appellate litigation, including appellate litigation at the Federal Circuit. So thank you for joining us today.

 

Seth Lloyd  00:28

Thanks for having me. Wayne, really great to be here.

 

Wayne Stacy  00:31

So there were two cases that popped out in the last two weeks that they can be glossed over when you when you look at some of the reporters that come out, but that really deserve a little bit of extra attention. The first is the Kannuu case. And you flag that one, because it really seems to tell us something about NDAs and this idea of pre litigation discussions. So would you walk us through kind of how it got to the Federal Circuit?

 

Seth Lloyd  01:02

Yeah, sure. I think it's a little bit of a hot topic right now in the interplay between NDAs or arbitration agreements and the availability of review at the patent office. So IPR is in PTAB. So that's kind of this case, really, right in the center of all that, I thought was interesting, because it actually drew amicus briefing during the initial appeal briefing. So sometimes, at the Federal Circuit, it's not uncommon to see amicus briefing once there's a petition for rehearing but but this one actually had amicus briefing on both sides of the issue at the kind of initial appeal stage. And the cases, just kind of the background facts are, you have Kannuu, who's the plaintiff and patent owner. They're an Australian startup company focused on media related products. So kind of navigation of smart TVs. And several years ago, Samsung contacted Kannuu expressing apparently some interest in in technology. And before the parties got too far along, they entered into a standard kind of non disclosure agreement so that they could speak freely about their respective technologies and businesses. The agreement contained a fairly common forum selection clause. And the clause stated that any legal action suit or proceeding, and this is kind of that the key language arising out of or relating to this agreement, or the transactions contemplated here by, must be instituted exclusively in a court of competent jurisdiction in Manhattan in New York. So that was the forum selection clause. The parties talked for a bit more than a year, but basically failed to reach any agreement. nothing came of it, at least initially, but about six years after the initial discussions Kannuu sued Samsung in District Court in New York, alleging patent infringement and breach of the NDA agreement, and Samsung responded as many defendants now do by filing several petitions for IPR, for intra parties reviews at the patent off