Del. Judge Unveils New Rules in 'Guinea Pig' Patent Case
One of the country's most prominent patent judges, U.S. District Judge Sue Robinson in Wilmington, Del., announced this month that she's adopting a new plan to winnow her busy docket of cases. Robinson will hold two additional conferences relatively early on, effectively forcing plaintiffs to show their cards closer to the outset of litigation.
"Quite frankly, I think there's a lot of gamesmanship right now in patent litigation on both sides of the fence," Robinson told lawyers at a Sept. 11 status conference, adding that she will "insert some extra steps" to keep the parties in line. (Read the transcript here.)
Judging from the group of patent cases Robinson picked to test the approach, her experiment is a response to the steady flow of lawsuits filed in Delaware by non-practicing entities, a.k.a. "patent trolls. The test cases were filed in March by an NPE called HBAC Matchmaker Media Inc. and its lawyers at the Los Angeles-based firm Russ August & Kabat. HBAC alleges that several Web-based companies, including AOL Inc. and Google Inc., are infringing two patents relating to targeted advertising — the common practice of trying to match consumers with the ads most likely to influence them.
The defendants — represented by Ed Reines of Weil Gotshal & Manges and Jack Blumenfeld of Morris Nichols Arsht & Tunnell, among others — filed a motion on Aug. 16 urging Robinson to sanction HBAC for filing frivolous claims. They argue that it's plainly obvious that they don't perform HBAC's patented system of targeting ads. Russ August defended itself in a Sept. 9 brief, stating that it has good reasons for bringing suit.
Robinson didn't say at last week's hearing whether she'll sanction HBAC. In a sign that she's taking the issue seriously, she ordered HBAC to turn over its files for in camera review within three days so that she can determine whether the company did an adequate pre-suit investigation.
Robinson's eagerness to review HBAC's files is unusual. Patent plaintiffs usually aren't asked to prove that they did their homework. At last week's hearing, Russ August partner Eric Carsten asked Robinson for permission to provide some context to the files he's turning over. The files might not mean anything in the abstract, he said. Robinson denied the request for the time being.
The biggest news from the hearing, in our view, is the quiet unveiling of Robinson's case management experiment. There are certain milestones in every Delaware patent case. For instance, at a certain date, the defendants must turn over core technical documents. Sixty days later, the plaintiff must produce its "validity contentions." The new twist is that Robinson will then hold conferences to dive into the merits of the cases and try to resolve them before trial.
"I'm going to use you as my guinea pig," Robinson told the assembled lawyers at the HBAC status conference. "I plan to get a little more involved at the outset in document production to make sure we really are doing our job as officers of the Court to produce relevant information to try to shortcut what should be going on here."
Russ Kabat's Carsten didn't return calls seeking comment. Defense lawyers in the case either declined to comment or didn't return our calls.