Postponed trials, remote depositions and travel diversions — this is patent litigation in the age of the new coronavirus.
Access to federal courts and the U.S. Patent and Trademark Office has been limited as part of government efforts to fight the spread of the virus. Judges have put jury trials on hold, canceled in-person hearings and, in some cases, encouraged that depositions be done remotely.
Patent attorneys are adjusting to ever-tightening restrictions on travel by reshuffling hearing calendars, preparing for remote work, and rethinking communication and deposition strategies.
“With the exponential growth of the virus, we’re seeing an exponential change in behaviors as well,” Bruce Wexler, global co-chair of the intellectual property practice at Paul Hastings LLP, said.
Case Management Hangover
This week a federal judge in San Diego declared a mistrial in Finjan Inc.’s patent case against ESET LLC “based upon the current state of extraordinary circumstances due to the Coronavirus/COVID-19 Pandemic.”
In the Eastern District of Texas, one of the busiest courts for patent cases, Chief Judge Rodney Gilstrap canceled all jury trials scheduled to begin before May 1. Similar orders have been issued by district courts around the country.
The U.S. Court of Appeals for the Federal Circuit, which is the nation’s top patent court, has canceled all in-person arguments for the month of April. It will conduct some arguments over the phone.
Meanwhile, the Patent Office said all in-person meetings will be done remotely until further notice. This includes hearings at the Patent Trial and Appeal Board, which has already issued notices in patent reviews with upcoming oral hearings.
The Northern District of California has also said there will be no in-person dispute resolution proceedings, which the court typically requires in civil disputes. Karen Boyd, a partner at Bay Area intellectual property firm Turner Boyd LLP, said there could be a major disruption on the front end of patent cases.
“We’re going to have case management hangover for a long time,” she said.
The changes and closures have driven attorneys to quickly reshuffle their plans.
Derek Walter, a Weil Gotshal & Manges LLP partner, was in Delaware for a jury trial Tuesday and had planned to head to the PTO’s headquarters in Alexandria, Va. for a PTAB hearing a day later for his client, Bio-Rad Laboratories Inc.
The patent office’s decision meant he had to “hustle back” home to California Tuesday evening to prepare for the Bio-Rad hearing that was done remotely.
“Normally I would work with my IT staff to set up but we’re all on lockdown, and a lot of the requirements I don’t have at home,” Walter said.
The Northern District of California has said that civil matters be decided through written briefs, with hearings conducted by telephone or videoconference only if necessary. Federal judges in states like New Jersey, Oregon, and Pennsylvania have also encouraged the use of video and teleconferencing.
Attorneys will have to adjust to presenting their case without a full array of visual presentations and handouts that would be available in courtroom, said Armond Wilson LLP trial attorney Doug Wilson.
“Over the phone your ability to communicate is very one dimensional and it is very limited,” Wilson said.
People’s attention span also might be more limited over the phone, and attorneys may have to be more succinct in their presentation. “The other difference is, I can talk for 30 minutes at a hearing in-person where I can give a presentation and I feel like the judge is listening and can follow along,” Wilson said. “I’m not going to do that over the phone.”
Patent attorneys are also learning to work without the Patent Office’s local branches. Prior to the announcement, in many cases, they’ve had options to use the local offices to videoconference into a hearing with parties in other offices.
Lance Kreisman, owner of Peninsula Patent Group, was among the first to represent a client at PTAB oral hearing after the PTO halted in-person meetings. He said the agency gave short notice, informing him Friday of the change of plans for a Monday hearing that would be conducted remotely, though he said it was “no big deal.”
Kreisman planned on partaking in his hearing from a PTO San Jose office. He instead dialed in from home. The experience was “like walking into the hearing room,” where he waited for an attorney to finish presenting in a separate proceeding, he said.
“You never really know how well you might have done, you’re just hearing their voices and the questions they throw at you, but you don’t get any body-language context,” he said.
Number of Depositions
Patent cases also require witnesses be deposed, a process that has often been done through face-to-face interactions.
Gilstrap of the Texas court last week denied a request by Amazon.com Inc. and Saint Lawrence Communications LLC that deadlines in their case be postponed over concerns about traveling to the Seattle area, where Amazon is based, to depose witnesses.
The judge said both sides are “well-versed in the technological innovations that would remotely produce high-quality witness depositions.”
Remote depositions could be particularly challenging for lawyers working with the individual being deposed. And that could shift attorneys’ calculations in who and how many should be deposed.
Doug Kubehl, chair of the IP litigation group at Baker Botts LLP, said flying around the country to depose witnesses face-to-face can discourage attorneys from taking lots of short depositions. Remote depositions can remove that disincentive, potentially creating more work for defending attorneys who still need to thoroughly prepare each witness.
Strategically, “when I’m on the defense side of the case, I’m going to be negotiating for deposition number limits,” Kubehl said.
—With assistance from Perry Cooper