Litigation La La Land
Some say patent litigation is dull. I remember a Nova Law School professor in 1984 telling us a true story. During a closed-door Hearing with the Judge over child custody, the opposing counsel gave my female professor, the wife’s attorney, a prolonged glare. Then he slid some photos face down across the table to opposing counsel, so the Judge couldn’t see them. When my professor looked at the photos-there was her client, a beautiful blond young woman, naked on her back, having sex with a German Shepard. The professor immediately called for a short recess and confronted her client with the photos. The client admitted the practice of animal sex and said her soon to be x-husband got her into it for his pleasure. So my professor allowed the photos into evidence, and the Judge heard the whole story. The Judge ruled the photos irrelevant since both parents practiced the same sexual acts. But my professor’s moral to the story was this. Never trust a client’s story. Clients lie to their lawyers. Clients often use their lawyer as a foil to trick a Judge or jury to believe a false story. Patent cases are no different.
In patent law, if the patent lawyer intentionally commits a fraud on the patent office while prosecuting the patent, then the patent can be invalidated by the Federal Judge during the trial. I was a brand new patent lawyer in 1986 at age 42. My boss let me work the second chair in a week-long Jury trial. Our client had invented and patented a trailer for a Hobecat, wherein the axle had special low resistance pencil-type ball bearings. After a week at trial, we knew we had won the case because the jury understood that our inventor client had been ripped off by his investment partner who had stopped paying the royalties to our client. Then at about 3 pm Friday the Judge stopped the jury from leaving the room. The Judge picked up a Webster’s Dictionary and read the definition of a “bushing” to include anything inserted between two moving parts to reduce friction. The Judge held that the patent prosecutor had committed a fraud on the patent office by labeling a prior art axle incorrectly as a “bearing” rather than a “bushing”. The Judge decided, after a week-long trial, that a bearing also was a bushing. Case closed. The patent prosecutor was a Marine Corp Captain with Korean War combat experience.
He would never commit a fraud on the government he risked his life to defend. However, the issue of the state of mind of “fraud” is always a magic dance to prove or disprove.
So every time a patent prosecutor files a patent, he or she must be prepared to face a charge he or she is putting one over on the patent office. That means documenting that you asked your inventor client in writing that he has turned over every known piece of the relevant prior art. Furthermore, if the patent prosecutor feels he needs a Declaration to teach the Examiner just how non-obvious the invention is, then super diligence backing up every fact the inventor (or expert) swears to must be confirmed by the patent prosecutor. Remembering the German Shepard story, a wise patent prosecutor will be suspect to any inventor/expert Declarations. Some self-serving inventors have no qualms bending the true facts in order to obtain a patent they believe will make them rich.
The problem for the patent prosecutor is that he/she can lose his/her law license if a Judge finds that the inventor lied to the patent office. The Judge can also hold that the patent prosecutor knew or should have known the inventor was lying. The moral of the story is only use a Rule 132 Declaration to overcome obviousness as a last resort. Triple check every fact the inventor is swearing to under penalty of perjury. Your career may depend on it.
Do Defendants lie and destroy evidence? Where are the missing emails? How do you prove a document was illegally backdated? How do you know who is the true inventor? Is there an intentionally omitted co-inventor you should have discovered?
Inventors are human. They can be greedy, and they can lie. See Genesis, “I want that apple, and the devil made me do it.” So I advise you, inventors, to tell all to your patent prosecutor and your litigator. Some inventors trick their lawyers into helping hide prior art or stealing from a co-inventor. So I advise all you patent lawyers to remember the German Shepard. Clients lie and hide stuff.
In litigation, you can almost count on small businesses to shred documents, have faulty memories and lie. Unfortunately, I have seen giant corporations do the same, as well as giant law firms. Allegedly even the President of the United States lies and profits from his lies.
I recall a case where a big company filed overseas patents with multiple inventors. But the US patent had only one inventor. Why? Because the US inventor did not want to share any royalties with the co-inventors! The co-inventors were his students. If they complained, then they wouldn’t graduate. So he left their names off the US patent. The big patent law firm went along with the game. It all came out just before trial, and the bad guys caved in.
How could a giant public firm cancel a million dollars of imports after they got sued, and then swear they never imported the infringing goods and don’t owe royalties on them? Oh gosh, can’t produce any written proof of the cancellation? That game worked. But who could explain how a year later, goods started popping up for sale that never entered the country?
What does “attorney eyes only (AEO)” really mean? It means that the law firm only and not their client is supposed to look at secret data like customer lists or lab results. So I sent an AEO pending patent application with secret lab data to a large law firm. Can you explain how two months later, miraculously, the large law firm client filed an almost identical patent application? When I filed a bar grievance in the state, what a coincidence the large law firm partners were ethics volunteers to the State Supreme Court. The State Bar took no action. The moral of the story may be, “ AEO kiss my a--.” If doctors had the ethics of lawyers, then the life expectancy in America would drop twenty years. Who said that? If you want to keep something secret, then force the opposing lawyer to come to your office, strip naked, and look at it!
Bullying by well-heeled litigants works. If a key inventor witnesses can be exposed to getting himself sued, then, by all means, suppress his testimony using a veiled threat. A veiled threat can be one phone call or even a detailed letter outlining what wrong this critical witness may have to prove he did not do. Patent litigation average costs at $500.00 per hour lawyer rates range from $1 million to $5 million. Is this enough risk to keep a witness’s mouth shut? Yes, it is.
Can you prove this happened and get even? Doubt it.
In bidding adieu I recommend all patent prosecutors and litigators to study Intellect Wireless. Inc. v. HTC Corp., No.12-1658 (Fed. Cir. Oct.9,2013).
Even after a mistake was corrected in the patent file, the patent owner lost. The patent lawyer was suspended. Amen.