Sources of Uncertainty in Patent Litigation
Santa Clara Law
September 25, 2009
1 p.m. – 6:15 p.m.
The Mission Room, Benson Center
Cosponsored by the High Tech Law Institute and the Federal Circuit Bar Association
Experts from academia, legal practice and the trial and appellate benches will examine sources of uncertainty in patent litigation today.
CLE: At least three hours of CLE will be available. Santa Clara Law is a State Bar of California approved MCLE provider.
1:00 – 1:15 p.m. – Welcome and Introduction
1:15 – 2:15 p.m. – Academics
Moderator: Colleen Chien, Santa Clara Law
Dennis Crouch, University of Missouri School of Law
John Duffy, George Washington University Law School
Peter Menell, U.C. Berkeley School of Law
Arti Rai, Duke University School of Law
2:15 – 3:15 p.m – Litigators
David Larson, McDermott Will & Emery
Daryl Joseffer, King & Spalding
Craig Kaufman, Orrick
Ed Reines, Weil Gotshal
Bill Rooklidge, Howrey LLP
3:15 – 3:30 p.m. – Break
3:30 – 4:30 p.m. – District Court Judges
Judge Jeremy Fogel, Northern District of California
Judge Andrew J. Guilford, Central District of California
Judge Ronald M. Whyte, Northern District of California
4:30 – 5:30 p.m. – Federal Circuit Court Judges
Judge Randall R. Rader
Judge Richard Linn
5:30 – 6:15 p.m. – Reception
Speaker Bios – Sources of Uncertainty in Patent Litigation:
Santa Clara Law
Colleen Chien is an Assistant Professor of Law at Santa Clara University School of Law. She teaches and researches in the areas of patent law and international intellectual property law, with an emphasis on empirical research. Her recent publications include in-depth empirical studies of patent litigation & NPEs and litigation at the International Trade Commission. She frequently speaks at national conferences on domestic patent law and policy issues. Prior to Professor Chien’s academic appointment, she prosecuted patents at Fenwick & West LLP in San Francisco, California, and was a Fellow at the Center for Law and the Biosciences at Stanford Law School. She worked as an investigative journalist at the Philippine Center for Investigative Journalism as a Fulbright Scholar.
University of Missouri School of La
Dennis Crouch is an associate professor at the University of Missouri School of Law where he teaches courses in intellectual property, electronic property, and real property. His research focuses almost exclusively on patent law policy and practice. He is also the author of the popular patent law blog: Patently-O. (www.patentlyo.com). Prior to joining the University of Missouri faculty, Professor Crouch practiced patent law in Chicago after graduating from the University of Chicago Law School with honors. While at the University of Chicago, he was a Microsoft, Merck, & Pfizer scholar and a member of the Olin program in law and economics. He received his BSE in mechanical engineering with honors from Princeton University where he also earned a certificate in engineering management systems. Prior to attending law school, Professor Crouch worked as a technical consultant for manufacturing firms in New England, as a research fellow at NASA’s Glenn Research Center, as a software developer at the Mayo Clinic’s department of biomedical imaging, and as a Peace Corps Volunteer in Ghana, West Africa. Dennis Crouch grew up on a farm near Pittsburg, Kansas.
George Washington University Law School
John F. Duffy is the Oswald Symister Colclough Research Professor of Law at the George Washington University Law School and Of Counsel at the law firm of Fried, Frank, Harris, Shriver & Jacobson LLP. Professor Duffy received an A.B. in physics from Harvard College in 1985 and a J.D. from the University of Chicago in 1989. Prior to entering academics, Professor Duffy clerked for Stephen Williams on the United States Court of Appeals for the D.C. Circuit and for Justice Scalia on the United States Supreme Court and served as an Attorney-Advisor in the Department of Justice’s Office of Legal Counsel.
Professor Duffy has co-authored a casebook on patent law, Patent Law and Policy (4th ed. 2007) (with Robert Patrick Merges) and has published articles on a wide range of regulatory and intellectual property issues in journals such as University of Chicago Law Review, Columbia Law Review, Texas Law Review, Northwestern University Law Review, NYU Law Review, University of Pennsylvania Law Review, George Washington Law Review, and the Supreme Court Review. In 2007, Professor Duffy was co-counsel for the prevailing petitioner in the Supreme Court case KSR v. Teleflex. In 2008, the United States Court of Appeals for the Federal Circuit invited him to present amicus curiae arguments in the en banc case In re Bilski concerning the scope of patentable subject matter. His recent article “Are Administrative Patent Judges Unconstitutional?” was covered in the New York Times and subsequently led to the enactment of legislation that restructured the appointment process for Administrative Patent Judges. In 2008, the Magazine Managing Intellectual Property listed him as one of the 50 most influential people in world on the subject of intellectual property. In 2009, the Legal Times selected him as one of its “Visionaries” of the Washington legal profession, and he was profiled in the Businessweek story entitled “A Scholar-Activist Challenges U.S. Patent Law.”
U.C. Berkeley School of Law
After graduating from law school, Peter Menell clerked for Judge Jon O. Newman of the U.S. Court of Appeals for the 2nd Circuit. He joined the Boalt faculty in 1990 and co-founded the Berkeley Center for Law & Technology in 1995, where he serves as a director. Menell has visited at the Georgetown University Law Center, Harvard Law School, and Stanford Law School; taught an annual course on U.S. intellectual property law at the ETH (Zurich) since 1997; and organized more than two dozen intellectual property education programs for the Federal Judicial Center since 1998.
Menell has authored Intellectual Property in the New Technological Age (with R. Merges and M. Lemley, 1997, 2nd ed. 2000, 3rd ed. 2003, 4th ed. 2006, 4th rev. ed. 2007); Software and Internet Law (with M. Lemley, R. Merges and P. Samuelson, 2000, 2nd ed. 2003, 3rd ed. 2006); Environmental Law (International Library of Essays in Law and Legal Theory (Second Series) 2002); Property Law and Policy (with J. Dwyer, 1998); and Environmental Law and Policy (with Richard Stewart, 1994). He founded and supervises the Annual Review of Law and Technology (now in its 11th year, published by the Berkeley Technology Law Journal) and founded the Annual Review of Environmental and Natural Resource Law (published by the Ecology Law Quarterly). Menell’s recent articles include: “Legal Realism in Action: Indirect Copyright Liability’s Continuing Tort Framework” and “Sony’s de facto Demise,” UCLA L. Rev. (forthcoming 2007) (with D. Nimmer); “The Property Rights Movement’s Embrace of Intellectual Property: True Love or Doomed Relationship?,” Ecology Law Quarterly (forthcoming 2007); “Unwinding Sony,” California Law Review (forthcoming 2007) (with D. Nimmer); “Bankruptcy Treatment of Intellectual Property Assets; An Economic Analysis,” Berkeley Technology Law Journal (forthcoming 2007); “A Method for Reforming the Patent System,” Michigan Telecommunications and Technology Law Review (forthcoming 2007); “Economic Aspects of Intellectual Property,” in Encyclopedia of Law and Society: American and Global Perspectives, Sage Publications (forthcoming 2007); “Intellectual Property Law,” chapter in Handbook of Law and Economics, edited by A. Mitchell Polinsky and Steven Shavell (forthcoming 2007) (with S. Scotchmer); “An Economic Assessment of Market-Based Approaches to Regulating the Municipal Solid Waste Stream,” in Market Based Incentives, in Jody Freeman and Charles Kolstad (Eds), Moving to Markets in Environmental Regulation: Lessons from Twenty Years of Experience (Oxford University Press, New York, 2006); “Copyright’s ‘Staple Article of Commerce Doctrine’: Patently Misguided,” 53 Journal of the Copyright Society 365 (2006) (with D. Nimmer).
Duke University School of Law
Arti Rai is an authority in patent law, administrative law, law and the biopharmaceutical industry, and health care regulation. Her current research on innovation policy in areas such as green technology, drug development, and software is funded by NIH, the Kauffman Foundation, and Chatham House. She has published widely in both peer-reviewed journals and law reviews, including Nature Biotechnology, PLoS Biology, PLoS Medicine, the Annals of Internal Medicine, and the Columbia, Georgetown, and Northwestern law reviews. She is currently editing a book on intellectual property rights in biotechnology and has also co-authored a casebook on law and the mental health system.
Rai has served as a peer reviewer for Science, Research Policy, the Journal of Legal Studies, various National Academy of Sciences reports on intellectual property, and various NIH study sections. She has also testified before the U.S. Senate on innovation policy issues. Rai is currently the chair of the Intellectual Property Committee of the Administrative Law Section of the American Bar Association.
Prior to entering academia, Rai clerked for the Honorable Marilyn Hall Patel of the U.S. District Court for the Northern District of California; was a litigation associate at Jenner & Block (doing patent litigation as well as other litigation); and was a litigator at the Federal Programs Branch of the U.S. Department of Justice’s Civil Division.
Rai graduated from Harvard College, magna cum laude, with a B.A. in biochemistry and history (history and science), attended Harvard Medical School for the 1987-1988 academic year, and received her J.D., cum laude, from Harvard Law School in 1991.
McDermott Will & Emery
David Larson is a partner in the law firm of McDermott Will & Emery LLP based in the Silicon Valley office. As a member of the Intellectual Property, Media & Technology Department, his practice focuses on patent and other intellectual property litigation and counseling.
David has worked on major patent litigation matters, and his recent trials include: representing a major mobile phone manufacturer in two cases before the International Trade Commission (power management circuitry and semiconductor fabrication); a jury trial in the Western District of Wisconsin on behalf of a leading manufacturer of network switches; and a jury trial in the Northern District of California involving patents regarding use of recombinant DNA for protein synthesis. He also represented a leading video chip manufacturer asserting patent claims in the Eastern District of Virginia (which upheld a favorable settlement the opposing party tried to disavow), and successfully argued the appeal to the United States Court of Appeal for the Federal Circuit.
Based on his work for a leading aerospace and defense company, David was recognized in trade secret litigation by The Legal 500 United States 2007 for his industry experience and client oriented approach.
David holds a B.S. in Chemical Engineering from Stanford University. He worked as a technical engineer in the Engineering Service Division of the Dupont Company for two years, and earned his law degree from Georgetown University.
David is admitted to practice in California and is also admitted to practice before the U.S. Patent and Trademark Office.
King & Spalding
Daryl Joseffer is a partner in the national appellate practice at King & Spalding. Mr. Joseffer joined King & Spalding in 2009 after serving as the Principal Deputy Solicitor General and, previously, an Assistant to the Solicitor General. During his five years in the Office of the Solicitor General, Mr. Joseffer argued 11 cases and filed more than 100 briefs in the Supreme Court, losing only twice. He also successfully handled some of the government’s most sensitive cases in the courts of appeals.
In the Supreme Court, Mr. Joseffer argued major patent, pharmaceutical, environmental, and energy cases, including: Microsoft v. AT&T (patent infringement liability for overseas copying of software designed in the United States); Merck KGaA v. Integra Lifesciences I, Ltd. (patent infringement liability for drug and medical device research); Warner-Lambert Co. v. Kent (federal preemption of state law claims concerning drugs approved by the Food and Drug Administration); Entergy Corp. v. Riverkeeper, Inc. (Environmental Protection Agency’s authority to weigh costs against benefits); and BP America v. Burton (statute of limitations for oil and gas royalty claims).
Before joining the Office of the Solicitor General, Mr. Joseffer was Deputy General Counsel of the Office of Management and Budget, where he focused on environmental and other regulatory matters. Before that he was a partner at Kirkland & Ellis and a law clerk to Judge Jerry E. Smith of the U.S. Court of Appeals for the Fifth Circuit.
Craig Kaufman, a Silicon Valley partner, is a member of the Intellectual Property Group. His practice focuses on patent infringement litigation, with an emphasis on chemical, pharmaceutical and biotechnology patents. Mr. Kaufman has represented clients such as Acer, Dow AgroSciences, Nanya Technology Corporation, Compal Electronics and Affymetrix, Inc. in patent litigation involving technologies ranging from DRAM to genetically modified plants.
Prior to joining Orrick, Mr. Kaufman was an Associate Solicitor at the United States Patent and Trademark Office (PTO), where he represented the Commissioner of Patents and Trademarks in District Court and before the United States Court of Appeals for the Federal Circuit. Before joining the PTO, Mr. Kaufman was an associate at Kilpatrick and Cody and an associate at Cushman, Darby & Cushman.
Edward Reines is a partner in Weil Gotshal’s Technology Litigation Practice, with a robust trial and appellate practice. Mr. Reines is also active in public service and is dedicated to supporting disabled veterans rights pro bono. He was named one of the Top 100 attorneys in California by the California Daily Journal and one of the Top 75 IP litigators nationally by IP Law & Business.
Among his public service commitments, Mr. Reines serves on the Federal Circuit’s Advisory Council, is Chair of the Patent Rules committee for ND Cal and Chair of the National Model Jury Instructions project. Mr. Reines is a Ninth Circuit Lawyer-Representative on behalf of ND Cal. He is past president of the Federal Circuit Bar Association and is currently Vice-Chair of the AIPLA Amicus Committee. He teaches patent litigation at both Berkeley and Stanford Law Schools. He is a regular CNBC commentator on IP law. Mr. Reines graduated from Columbia Law School in 1988 with honors.
Bill Rooklidge is co-chair of the intellectual property practice at Howrey LLP, and a partner in that firm’s Irvine, California office. He began practicing as an intellectual property litigator in 1987, and his practice now focuses on patent and trademark infringement litigation before both trial and appellate courts across the country. He has tried cases to juries, judges and arbitrators, and argued over a dozen appeals to the United States Court of Appeals for the Federal Circuit.
Educated as a mechanical engineer and registered to practice before the United States Patent and Trademark Office for almost 25 years, Bill previously served as a registered professional engineer for a manufacturing company and a judicial clerk to the Honorable Helen Nies, Circuit Judge of the United States Court of Appeals for the Federal Circuit. Before his clerkship, he earned his LL.M. in patent and trade regulation law.
Bill has served as President of both the American Intellectual Property Law Association and the Orange County Patent Law Association. He has written amicus briefs both for AIPLA and for the American Bar Association. He has also authored over 40 articles on patent law and litigation, patent reform and the Federal Circuit’s decision-making, and has articles have been cited by the United States Supreme Court, Federal Circuit and district courts.
Since 2004, Bill has actively participated in the debate regarding legislative patent reform. He has authored a dozen articles on patent reform.
District Court Judges
Judge Jeremy Fogel
Northern District of California
Judge Jeremy Fogel was born in San Francisco and raised in Los Angeles, California, where he attended Los Angeles public schools. He received a B.A. with Great Distinction in Religious Studies from Stanford University in 1971 and obtained a J.D. cum laude from Harvard University in 1974. Judge Fogel was admitted to practice law in California in 1974. From 1974 to 1978, he was in private practice in San Jose, California. In 1978, Judge Fogel founded the Santa Clara County Bar Association Law Foundation’s Mental Health Advocacy Project and served as the Project’s Directing Attorney until 1981. He was then appointed to the Santa Clara County Municipal Court, where he served as the Presiding Judge from 1984 to 1985. In 1986, Judge Fogel was appointed to the Santa Clara Superior Court. From 1987 to 1988 and in 1995, he served as the Superior Court’s Supervising Judge for the Family Law division. In 1991, Judge Fogel served as the Superior Court’s Supervising Judge for the Probate/Mental Health Division. Moreover, from 1992 to 1994 and from 1996 to 1998, he was the Superior Court’s Civil Team Leader and Law Motion Judge. In 1998, Judge Fogel was appointed to his current position with the United States District Court for the Northern District of California. From 1987 to the present, Judge Fogel has also served on the faculty of the California Continuing Judicial Studies Program and California Judicial College, specializing in alternative dispute resolution, psychology, ethics, family law, sexual harassment awareness and prevention, domestic violence, and judicial excellence. In addition, from 2002 to the present, he has been a Mediation Trainer and member of the Advisory Committee on Alternative Dispute Resolution Education for the Federal Judicial Center. Judge Fogel has also served on the faculty of the Patent and Trademark Seminar for the Federal Judicial Center since 2005.
Judge Andrew J. Guilford
Central District of California
Judge Andrew Guilford became a United States District Judge on July 7, 2006. For his entire career before becoming a judge, Andrew Guilford was a business trial lawyer with Sheppard Mullin Richter & Hampton, handling cases involving a wide variety of issues, particularly relating to intellectual property, unfair competition, finance, and professional liability. He received his AB degree in economics summa cum laude in 1972, and his JD degree in 1975, both from the University of California at Los Angeles, where he was elected to Phi Beta Kappa and was an associate editor of the Law Review.
In 2000, Judge Guilford served as President of the State Bar of California. He also served on a Supreme Court Task Force examining Multijurisdictional Practice. In 1992, he was elected to the American College of Trial Lawyers. He has been selected five times by the Daily Journal as one of California’s Top 100 Lawyers, and was selected as one of the 50 Best Lawyers in Orange County. He was listed in Best Lawyers in America and as a “Southern California Super Lawyer.” The Orange County Bar Association awarded him its highest honor – The Franklin G. West Award – and the Orange County Trial Lawyers Association named him as the Business Litigation Trial Lawyer of the Year.
For fun, Andy takes photos, reads history, follows sports, and plays at basketball, tennis, and softball. His hero is Winston Churchill, and he hopes someday to see Maury Wills elected to baseball’s Hall of Fame.
Judge Ronald M. Whyte
Northern District of California
The Honorable Ronald M. Whyte was appointed to the United States District Court for the Northern District of California by President George Bush and took his oath of office on March 2, 1992. Prior to his appointment to the federal bench, Judge Whyte served as Judge of the Superior Court of the State of California for Santa Clara County, appointed by Governor George Deukmejian in 1989.
Judge Whyte received his B.A. in mathematics from Wesleyan University in 1964 and his J.D. from the University of Southern California School of Law in 1967. He is a member of the State Bar of California; U.S. District Court, Northern District of California; U.S. District Court, Central District of California; U.S. Court of Appeals for the Ninth Circuit; Santa Clara County Bar Association; and Federal Judges Association.
From 1977-1989 he was a member of the law firm of Hoge, Fenton, Jones and Appel, Inc., in San Jose, California, with extensive trial experience. From 1971-1977 he was an associate with the same firm. Judge Whyte served as Lieutenant, Judge Advocate General’s Corps, U.S. Naval Reserve from 1968-1971 where he prosecuted and defended Naval and Marine personnel at Special and General Courts-Martial and he also served as a Military Judge at Special Courts-Martial.
Judge Whyte’s professional involvement includes serving as Judicial Liaison, New Patent Instructions Committee for the Northern District (2000-present); George Washington School of Law Intellectual Property Advisory Board (2000-present); Judicial Liaison, Patent Rules Committee for the Northern District (1966-present); Executive Committee, San Francisco Bay Area Intellectual Property Inn of Court (1994-present); Executive Committee, Santa Clara Inn of Court (1992-present; President 1997-1998); Board of Visitors, Santa Clara Law School (1997-present); Member, California State-Federal Judicial Council (1997-2001); Judicial Liaison, Patent Rules Committee for the Northern District (1996-present); Chair, Capital Habeas Corpus Committee for the Northern District (1999-present); Chair, Trial Court delay Reduction Committee for the Superior Court for Santa Clara County (1989-1992); Legal Counsel to the Santa Clara County Bar Association (1986-1989); Member of the County Select Committee Reviewing the Criminal Conflicts Program (1988); Member of the Board of Trustees of the Santa Clara County Bar Association (1978-1979 and 1984-1985); Chair, Real Estate Section of the Santa Clara County Bar Association (1982); Chair, Fee Arbitration Committee of the Santa Clara County Bar Association (1978); Chair of the Trial Court Delay Reduction Committee for the Superior Court (1989-1991); Member of the Board of Governors of the Association of Business Trial Lawyers (1991-1993); Member of the Executive Committee of the San Francisco Bay Area Intellectual Property Inn of Court (1994-present); and President of the Santa Clara County Inn of Court (1997-1998).
Judge Whyte’s teaching experience includes serving as an Advisor for the Judicial Enforcement of Intellectual Property Rights Conferences in Luxor and Cairo, Egypt sponsored by the U.S. Department of Commerce and the Egyptian National Center for Judicial Studies (March 2000); Panelist at “Trial of a Patent Case,” ALI-ABA Course in Chicago, Illinois (September 1997, September 1998 and September 1999); Panelist at “National CLE Conference,” Utah State Bar Intellectual Property Section (March 1999); Speaker at “Advance Patent Law Institute,” University of Texas School of Law (November 1997); Speaker at “Intellectual Property Law,” Practising Law Institute in San Francisco, California (October 1996).
In addition, has lectured for the Federal Bar Association, California Continuing Education of the Bar, The Rutter Group, the Santa Clara County Bar Association, the Orange County Bar Association, the State Bar of California and other organization on various subjects including patent law, trial practice, civil procedure, law and motion, judicial arbitration and governmental tort liability.
Judge Whyte was the recipient of the Berkeley Center for Law and Technology 2001 Distinguished Service Award, the Santa Clara County Trial Lawyers Association’s Judge of the Year Award for 1992, the Santa Clara County Trial Lawyers Association’s Federal Judge of the Year for 2003, and the Lewis & Clark Law School 2003 Distinguished Visitor award.
Federal Circuit Court Judges
Judge Randall R. Rader
Randall R. Rader was appointed to the United States Claims Court by President George H. W. Bush in 1989 and served on that court until his appointment to the Federal Circuit in 1990. Prior to his appointment, Judge Rader served as Minority Chief Counsel, Staff Director, Senate Committee on the Judiciary, Subcommittee on Patents, Trademarks, and Copyrights from 1987 to 1988. He also served as General Counsel and Chief of the Senate Committee on the Judiciary’s Subcommittee on the Constitution from 1981 to 1986, and as Counsel in the House of Representatives from 1975 to 1980. Judge Rader taught Patent Law at the University of Virginia School of Law and at the George Washington University National Law Center, and Comparative Patent Law at Georgetown University Law Center. Judge Rader is the author of a casebook entitled Patent Law, published by West Publishing in 1998.
Judge Richard Linn
Richard Linn was appointed by President William J. Clinton in 1999. Prior to his appointment, Judge Linn was a Partner and Practice Group Leader at the Washington, DC law firm of Foley and Lardner from 1997 to 1999. He was a Partner and head of the intellectual property department at Marks and Murase, L.L.P. from 1977 to 1997. Judge Linn served as Patent Advisor, United States Naval Air Systems Command from 1971 to 1972, was a Patent Agent at the United States Naval Research Laboratory from 1968 to 1969, and served as a Patent Examiner at the United States Patent Office from 1965 to 1968. He was a member of the founding Board of Governors of the Virginia Bar Section on Patent, Trademark, and Copyright Law and served as Chairman in 1975. In 2000, Judge Linn received the Rensselaer Alumni Association Fellows Award. He was honored in 2006 for dedication, service, and devotion to justice by the Austin Intellectual Property Law Association. Judge Linn was awarded the 2009 New York Intellectual Property Law Association Leadership Award. He also received the 2009 Jefferson Medal from the New Jersey Intellectual Property Law Association “in recognition of meritorious and outstanding contributions in support of the Constitution of the United States of America and furtherance of a fundamental principle thereof—‘to promote the progress of Science and useful Arts’”. He served as an Adjunct Professor and Professional Lecturer in Law at George Washington University Law School from 2001 to 2003, and currently serves on the Law School’s Intellectual Property Advisory Board. Judge Linn is a past president of the Giles Sutherland Rich American Inn of Court, is a member of the Richard Linn American Inn of Court, and is a visiting member of the William C. Conner American Inn of Court. He received a B.E.E. from Rensselaer Polytechnic Institute in 1965, and a J.D. from Georgetown University Law Center in 1969.