Q&A With Wolf Greenfield’s Mike Rader

August 1, 2013

Michael N. Rader

(as published in IP Law360)

Q: What is the most challenging case you have worked on and what made it challenging?

A: I was retained by The Jackson Laboratory, a nonprofit biomedical research institution and mouse repository, to defend a patent infringement action filed by another nonprofit over a particular strain of immunodeficient research mice. The case was technically challenging because it required knowledge of genetics, immunology and mouse husbandry. It was legally challenging because it involved a matter of first impression, namely how to construe a claim limitation that defined the patented invention using specialized mouse nomenclature. To my knowledge, no prior court had ever confronted such a question.

Finally, the case was also taxing because I felt a unique degree of responsibility to ensure that the accused mouse model, which is used to study a variety of diseases including cancer and AIDS, would remain available to the scientific community. While the amount of money involved was modest compared to many commercial cases I have litigated, in other ways the stakes were higher.

While courts are sometimes reluctant to admit extrinsic evidence (such as expert testimony) in connection with claim construction proceedings, in this case we felt compelled to offer expert testimony explaining the meaning of the mouse nomenclature used in the patent claims. The patent specification offered no elucidation, in effect assuming knowledge by the reader — and mouse nomenclature is not a matter of common knowledge. We ended up calling the chair of the International Committee on Standardized Genetic Nomenclature in Mice, whose testimony was helpful in establishing that the claims referred to one strain of mice, while the accused mice, from a different mouse colony and hence a different strain, were not covered.

Yet another logistical challenge in the case was the length and breadth of the all-day Markman hearing, which involved extensive technology tutorials, live expert testimony, and argument on two patents. I decided to divide up the responsibility with a junior associate who has a strong biology background. I asked her to deliver the technology tutorial and to argue one of the two patents. To prepare for this important argument (her first), she and I spent dozens of hours studying cases, preparing slides, debating and moot-courting in the weeks leading up to the hearing. That thorough preparation, which led to her outstanding success in court (winning the claim construction, and later winning summary judgment as well), is my proudest achievement as a mentor.

Q: What aspects of your practice area are in need of reform and why?

A: District court judges need to formulate rules and procedures that get patent cases to trial more quickly; preferably within one year of filing. For patentees, justice delayed can often be justice denied. The extended distraction and ballooning cost of patent litigation is increasingly frustrating to accused infringers as well, despite the conventional wisdom that delay favors defendants. A shorter time to trial will also create more opportunities for patent litigators to hone their trial skills and experience the most exciting part of the American legal system.

Several steps will be needed. First, courts will need to limit the number of patent claims that plaintiffs are allowed to assert. Second, the scope of electronic discovery should be carefully controlled. Third, district courts should take a cue from the ITC by reducing the turnaround time for fact and expert discovery. Fourth, it will be important for judges to take a no-nonsense approach that appropriately penalizes parties’ failure to comply with the new requirements. District courts, with the blessing of the Federal Circuit, have already begun implementing some of these suggestions. In a macro sense, accelerating the time to trial for patent cases will benefit the patent system as a whole by giving it more teeth and credibility.

Q: What is an important issue or case relevant to your practice area and why?

A: Everyone is talking about how to bring more certainty to patent cases, particularly at the claim construction stage. Some have proposed that the Federal Circuit afford deference to claim construction decisions by district courts, thus reducing the rate at which claim constructions are reversed or modified. The Federal Circuit recently decided to address this issue en banc, ordering the parties in Lighting Ballast Control v. Philips Electronics to brief the questions of (1) whether the appeals court should “afford deference to any aspect of a district court’s claim construction” and (2) “if so, which aspects should be afforded deference.”

Underlying factual questions are sometimes involved in the claim construction process, though longstanding precedent holds that claim construction is strictly a matter of law. A possible outcome of the Lighting Ballast case would be for the Federal Circuit to afford deference to a district court’s resolution of underlying factual questions (such as what a person of ordinary skill in the art would have understood about a particular technical matter), while maintaining that the ultimate process of determining the proper construction is a matter of law to be reviewed de novo. This approach might have only a modest impact on the claim construction reversal rate, but would bring additional coherence to the process by formally recognizing the existence of underlying factual questions, which today are awkwardly rebranded as matters of law.

Another proposal to address the uncertainty in patent cases is to create specialty patent courts. This proposal is intriguing, but would require a massive realignment given the large number of patent cases filed every year, and would ultimately threaten to take patent cases out of the hands of juries. As a middle ground, the Federal Judicial Center recently created a Patent Pilot Program under which patent cases are preferentially assigned to a subset of participating judges who develop increased expertise in managing patent litigation. This program should be allowed to develop for several years to determine whether it leads to the desired results of increasing overall quality and decreasing reversal rates.

Q: Outside your own firm, name an attorney in your field who has impressed you and explain why.

A: Can I name two? Jim Altman and Barbara Murphy, who practice together at a boutique firm Foster Murphy Altman & Nickel, are ITC specialists with whom I have worked as local ITC counsel several times. Jim and Barbara are among the most expert ITC practitioners in the country. Their encyclopedic knowledge of commission caselaw and trends has helped me work through several thorny issues related to domestic industry, public interest and importation. Jim and Barbara are also experts in commission procedures, the judges’ rules, what works and what doesn’t work.

During the discovery period in a recent investigation that we handled together, I learned from Jim and Barbara that a ground rule requiring full translation of any document — including even a single foreign language character — might be strictly enforced. The opposing party lost hundreds of its exhibits for failure to comply with that rule. Working with Jim and Barbara allows me to focus my energies on core patent issues, knowing that they are expertly guiding our team on ITC-specific issues.

Q: What is a mistake you made early in your career and what did you learn from it?

A: As a law student, I was deposed in a patent infringement case about some patent drawings that I had prepared during an engineering internship several years earlier. I came to the deposition inadequately prepared, having not carefully reviewed my file related to the internship. After later inspection of my file, it turned out that some of the testimony I gave about the drawings was not accurate. I had to provide lengthy, substantive errata, and was required by the judge to submit to a second deposition. The experience was embarrassing and frightening.

During my professional career I have seen numerous lawyers counsel witnesses not to refresh their recollections about relevant events and documents before being deposed. My personal experience on the other end of a deposition for which I was unprepared convinced me, as a lawyer, never to take that approach.