Note from AmeriKat: Mockingbirds, Model Orders and More Adwords Litigation

The AmeriKat's Mockingbird
tote filled with stacks of
work and reading, and the
occasional squeaking snack

A London commuter may often spy the AmeriKat on her way to the City.  But it is not the whiskers and bushy tail that give away her identity, but her trusty Barnes & Noble tote emblazoned with the original cover of To Kill A Mockingbird.  Having quickly realized that the book was unfortunately not a "how-to" manual of how to kill birds, including of the mocking variety, the AmeriKat fell deeply and dotingly in love with the prose of Harper Lee.  So when she was reading her latest edition of Vanity Fair she was absorbed by an article about ongoing litigation concerning the ownership of the copyright in Lee's one and only published novel.  

It is too depressing and complicated for the Amerikat to summarize, but she encourages all who have a fleeting moment on their morning commute to read the article.  The summary is that Lee commenced a lawsuit in May alleging that in 2007 her agent, Samuel Pinkus, "duped" her into assigning him the copyright in Mockingbird and then diverted the royalties.  Earlier this year, Pinkus reassigned the rights back to Lee.  The outstanding issue is that of a claim to the royalties paid to Pinkus's company during the five years he retained copyright.     

What can also be depressing and overly complicated for litigants in the US is the sheer number of prior art citations in patent litigation.  The US Court of Appeals for the Federal Circuit (CAFC)'s advisory council has issued "A Model Order Limiting Excess Patent Claims and Prior Art".  The model order would limit the number of prior art references referred by the parties to 10 claims per patent with a maximum of 32 total claims.  This limit would take effect 40 days after the defendant's deadline to disclose documents about the invention.  Then the defendant would have 14 days to introduce 12 prior-art references in relation to each patent with a maximum number of 40 citations overall.  After claim construction, the plaintiff then has 28 days to select up to 5 claims per patent (up to a total of 16) and the defence has 14 days to select up to 6 prior art references per patent (up to a total of 20).  The parties cannot introduce new claims or prior art references at this point.  

So  "so long, so long, good times" of asserting 40 claims to be matched by 120 prior art references?  [Not quite like the unspoken rule of 3 prior art citations in UK patent litigation, muses the AmeriKat]

Patent litigants need not fret.  The AmeriKat can
vouch that shaving off needless fluff is actually
very liberating, especially in the summer.

Not quite.  Being a model order, courts can use it, amend it or choose not to pay it any attention, but Chief Judge Leonard hoped that the model order would give "the parties more solid barometer of where they should begin their negotiations".  The Chief Judge of the Eastern District of Texas and committee member explained that litigants often wait until the weekend before trial to edit down a huge number of patent claims and prior-art references. Thus, spiralling patent litigation costs.    

The CAFC's Chief Judge Rader hoped that the model order would rein in the costs of patent litigation.  He stated that 

"You don't need to fix the patent system - it's not broken.  What you need to do is fix the litigation system, because it can be abused....[to] make it clear that the district courts have the authority to narrow these issues earlier."

The now infamous (thanks to Apple v Samsung) Judge Lucy Koh who sat on the committee hoped that the new order "will help shape the discussion and scope of litigation, even if it is not outright adopted verbatim".  

Not that the allowance of such citations have dampened the appetite of patent litigants.  As Darren reported earlier, PWC's 2013 Patent Litigation Survey  US patent litigation is staying strong with a compound annual growth rate of 7%.  

An aspect of US litigation one would hope would be facing a decline in growth would be that of keyword advertising litigation.  A few days ago, the Tenth Circuit Court of Appeals affirmed the majority of the district court's opinion 1-800 Contact's trade mark infringement claim against Lens.com save for one issue which has been remanded for a jury trial.  The AmeriKat swears she was a lot younger when she first started following this case (and indeed she was, it having commenced 6 years ago).  Lens.com and its affiliates had purchased adwords for "1-800 contact lenses" and variations on a theme.  1-800 commenced proceedings arguing that Lens.com created initial interest confusion by buying 1-800 Contacts' trademarks which, under the Tenth Circuits test, "results when a consumer seeks as particular trademark holder's product and instead is lured to the product of a competitor by the competitor's use of the same or similar mark." The district court rejected 1-800's arguments that purchasing a competitor's keywords is trade mark infringement and this was upheld on appeal, save for the issue of contributory infringement. For an informative and entertaining rant on this litigation, please see the excellent Eric Goldman's piece here.