Patently-O Bits and Bytes

• Model Jury Instructions: More on this in an upcoming post. At Judge Michel's request an all star cast of patent law experts have hammered out a set of model jury instructions for patent infringement actions. [Link][Comments welcome to PatentJuryInstructions@gmail.com]
• BPAI Appeal rules have been stayed – Most likely until after January 20.
• Two keen jobs:
  • Fellow at Berkeley Law School (Sponsored by Microsoft). Apply by February 1, 2009 [Link]
  • Appellate Litigator for the USPTO Solicitor's Office. Apply by January 9, 2009 [Link]
• Does stare decisis apply to a previous court's unappealed claim construction decision? See Shire v. Sandoz
• Donoghue: "Breach of Patent Settlement Does Not Create Federal Jurisdiction" [Link]
• Barkoff: "Federal Circuit Affirms $16.8 Million Award of Fees to Takeda in Pioglitazone Case" [Link]
• In house counsel Brian Schar writes the American Intellectual Property Abstract (American IPA)
• Mullin provides an update on the Troll Tracker defamation suit.
• The Trading Secrets blog has some useful information on protecting rights via employee agreements. [Link]

Comments

[West Coast Guy]

RE Shire v. Sandoz

How can issue preclusion apply when the parties are not the same? It cannot.

From the caption of the Order, Shire and Sandoz are the parties in the present case. In the earlier case, Shire and Impax Labs were the captioned parties. Unless Sandoz was a party of the earlier case (which is not reflected in the caption), Sandoz will not have had the opportunity to litigate or be heard on the issue of claim construction if preclusion is held to apply. Issue preclusion should definitely NOT apply if this is Sandoz's first bite of the claim construction apple.

Can any Patently-O reader retrieve the decision of the previous case from Westlaw -- 2005 WL 319983 -- to see if Sandoz was a perty to the earlier matter?

[smashmouth football]

"How can issue preclusion apply when the parties are not the same? It cannot."

But isn't that what Blonder-Tongue Labs., Inc. v. Univ. of Illinois Found., 402 U.S. 313 (1971), tells us?

Besides, Sandoz was arguing in FAVOR of issue preclusion, i.e., DEFENSIVE non-mutual collateral estoppel. Most courts recognize this doctrine, even if they decline to extend it to offensive uses (although the Supremes DID extend the doctrine in Parklane Hosiery Co. v. Shore, 439 U.S. 322 (1979)).

As far as I can tell, Sandoz was not a party to the earlier case.

[West Coast Guy]

smashmouth football,

"Sandoz was arguing in FAVOR of issue preclusion."

Where did you find that? The order shows that Sandoz was the movant for the certification of the interlocutory appeal to the CAFC.

Thanks.

[Free Agent]

Good thing I stayed up late to get those three appeal briefs written... Anyone know why they decided to wait for "completion of OMB review of the proposed information collection under the PRA" at the 11th (12th?) hour?

[Malcolm Mooney]

From the Albrittroll Link:

"Where did the changed date come from? According to depositions, Albritton's assistant called the Clerk's office five times urging them to change the date, and he urged her to "stay on top of it." The E.D. Texas court employees ultimately did change the date—something they had never done before, according to court workers in depositions.

...[B]ased on an excerpt of Albritton depo testimony from motion, it looks like he's saying that the filing date really should have read Oct. 16, and thus, these were just his honest efforts to correct a mistake..... Albritton says that because Frenkel used the word "conspiracy" at one point, he stands accused of a crime."

LOL. Can you believe this clown? Oops, I just accused Albritton of illegally operated a circus. He truly jumped the shark. Oops, I just accused Albritton of endangering animals.

But how about that E.D. of Texas? Nice clerks. Just get on the phone and scream like a baby at them and they'll fix your mistakes, no questions asked!

[Malcolm Mooney]

Let there be no question: Albritton should be sanctioned for filing that lawsuit. Maybe someone will recommend disbarring him.

[Brian Schar]

Dennis, thanks for the plug! My blog has a record number of hits today and they're all coming from here.

[smashmouth football]

West Coast Guy

I may be confused here, but this is what I read in the District Court's certifying order:

"In the September 24, 2008
Order, the Court declined to apply the doctrine of issue preclusion to another district
court’s claim construction, see Shire Labs. Inc. v. Impax Labs., Inc., No. 03-01164,
2005 WL 319983 (D. Del. Feb. 9, 2005), with respect to the same patents at issue here.
September 24, 2008 Order [Docket No. 169] at 11-13.

Defendant moved the Court to certify its September 24, 2008 Order for
immediate interlocutory appeal pursuant to 28 U.S.C. § 1292(b)."

So the District Court declined to apply issue preclusion, and the defendant appealed.

[smashmouth football]

MM:

"But how about that E.D. of Texas? Nice clerks. Just get on the phone and scream like a baby at them and they'll fix your mistakes, no questions asked!"

The first thing they told us at orientation to the Judiciary (I'm a law clerk) was DON'T SCREW WITH THE CLERK'S OFFICE. They can even make life miserable for law clerks, let alone parties.

[West Coast Guy]

smashmouth football,

Good read. I didn't link the court's denial of issue preclusion as a denying Sandoz.

[formerROKA]

In the "keen jobs" section, "Berkeley Law School" is mentioned, but I don't think that there is such a school. It is more correct to say UC Berkeley Law School, although that's not entirely correct, either. It's kind of like saying LA Law School (UCLA).

[Malcolm Mooney]

It'd be fun to work at Boalt just to pass Torture Yu in the hallway and say, "Heckuva job, Johnnie!"

Of course, soon President Obama will be able to stomp on children's testicles under Torture Yu's theories since we're still "at war."

Johnnie Yu: a truly rotten human being.

[Leopold Bloom]

MM = Rick Frenkel?

[AllSeeingEye]

Mr. Bloom, interesting call... it would explain his palpable bitterness.

[hey 6k!]

MPEP 710.06 ya ... :-P

The Office Action issued > in the above-identified application contained at least the following errors, each error being so egregious as to prevent Applicant from understanding or replying to the grounds of rejection asserted in the Office Action. Applicant requests correction thereof, and further requests that a new three (3) month period for reply be set to run from the mailing date of the supplementary Office Action.