Judges Offer Insight to Intellectual Property Lawyers

I recently attended an intellectual property law event “Judge’s Night Panel,” co-sponsored by the Los Angeles Intellectual Property Law Association (LAIPLA) and The Judge Paul R. Michel Intellectual Property American Inn of Court. The event afforded the opportunity for intellectual property lawyers to hear perspectives from the other side of the bench.

The panel of judges included:

  • The Honorable Milan D. Smith, Jr., Court of Appeals for the Ninth Circuit
  • The Honorable Richard A. Paez, Court of Appeals for the Ninth Circuit
  • The Honorable S. James Otero, United States District Court for the Central District of California
  • The Honorable Andrew J. Guilford, United States District Court for the Central District of California


Is there any difference in how they evaluate an Intellectual Property case versus a non-IP case?

  • Judge Paez believes that in the Ninth Circuit there is no difference.
  • Judge Otero said that in the District Court there is a difference because litigants are willing to spend money which requires early intervention and management by the court. They first look at whether the case has federal jurisdiction. Also, some districts have their own local patent rules and some judges have their own standing rules.
  • Judge Guilford of the District Court also says there is a difference. Patent cases present highly technical issues and that there are special things to consider in interpreting a patent case. Patent cases have a greater focus on expert testimony; at times, he thinks there may be too much emphasis on experts.

Why do you always see the same judges on en banc panels? This question was directed to the Ninth Circuit Court judges:

  • The same 11 judges are considered for the panel each time. It is an arcane system — like a roulette wheel. Someone throws a spindle and someone cranks the bin. One judge who does the selecting and one judge acts as witness. The chief judge always sits on the en banc panel, but besides that, it’s random. Several judges have been on five panels in a year, and then haven’t been selected for a while.
  • The en banc panels are heard every quarter — March, June, September and December. The panel doesn’t discuss the case until after they have heard it.

It seems that a lot of IP decisions are panel-driven. What is the impact of this? This question was directed to those on the Ninth Circuit.

  • Judge Smith said that attorneys shouldn’t be concerned about a panel-driven opinion.
  • Judge Paez says you should be more concerned about how the panels are constituted. Every time he is with a panel, it is a different make-up.
  • Judge Smith minimized this saying in an environmental or in some criminal cases, the panel make-up might make a difference, but in an IP case, he doesn’t think it does.
  • Panels are set one year in advance. The cases are distributed randomly to those panels six weeks before the panel is set to begin. Judge Smith said that just because he is in Southern California doesn’t mean he will set be on a panel in this area. The cases are bundled by area, so he could be assigned to Seattle or Alaska.

Should there be specific local rules for patent cases?

  • Judge Otero said only 4 of 13 Districts have local patent rules. He is in favor of any rules that help him better manage patent litigation.
  • Judge Guilford said that local patent rules would create greater uniformity and predictability. He has his own set of rules he applies. Procedural rules wouldn’t affect the outcome of the cases.

There is a perception that some of the districts’ rules influence the outcome. For instance, in the Northern District of California, there is a perception that the rules favor the alleged patent infringer.

  • Judge Otero is concerned that parties are going to go to the District that seem to favor a case.
  • Judge Guilford says that one size does not fit all; in some patent cases, the burden of local rules might make it more inefficient.

They also touched on the patent pilot program. There are now five judges, and the cases are randomly assigned. If a judge receives a case that is not on the patent panel, he has 30 days to decide if he wants to refer it to a judge who is part of the patent pilot program.

-By Berbay Principal Sharon Berman

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