Marshall, Schmarshall! Bring Your Patent Cases to Portland
Or Eugene, Medford or Pendleton -- the four divisions of the U.S. District Court for the District of Oregon. The Eastern District of Texas has become a tremendously popular venue for patent owners wishing to bring suit, but, surprisingly, it is not the district where patent owners have the greatest percentage of prevailing.
As reported by Patently-O, a draft paper entitled "Where to File Your Patent Case" by Stanford Professor Mark A. Lemley reports that the patentee win rate in the Eastern District of Texas is 40.3%, whereas it is 45.3% in the District of Oregon. That puts the District of Oregon in an approximate tie for the second best patent win rate (a four-way near tie with Nevada, Middle Florida, and Delaware) among districts with a statistically significant number of patent cases. Only the Northern District of Texas had an appreciably higher patentee win rate (55.1%).
So why file your patent infringement case in Marshall, Texas, when you are likely to fare better in Portland, or Eugene, or Medford, or Pendleton?
Of course, there is more to choosing a venue than just the odds of prevailing. A couple other important factors are (1) the size of jury verdicts and (2) the likelihood of a stay pending reexamination
Large Jury Verdicts in Oregon.
Texas jurors are famous -- some would say infamous -- for handing out large verdicts . . . like it was somebody else's money. Well, there have been large verdicts in Oregon too. Although this has nothing to do with patent law, a Portland jury very recently handed out an $18.4 million punitive award against Boy Scouts of America in a sexual abuse case, as reported in the Oregonian. That was the largest verdict -- by far -- of that type against the Boy Scouts.
Another largest-of-its-kind verdict was the $304.6 million verdict that a Portland jury awarded to Adidas two years ago in its trademark infringement case against Payless Shoes. (Reported here by the Oregonian).
Back in the patent world, there have certainly been some large verdicts against infringers in Oregon. For example, Translogic won a verdict of about $86 million a few years ago, although that was reversed on appeal because a parallel reexamination killed the patent (which the Portland jury had upheld in view of the same prior art).
Stays Pending Reexamination
Speaking of reexamination, it is becoming increasingly common for a defendant to request reexamination and then seek a stay of the district court litigation. According to LegalMetric's "Stay Pending Reexamination" Reports (which is an invaluable resource, by the way), defendants' win rate for contested stay motions in the District of Oregon are less than the nationwide average, with some judges in the district granting those motions sparingly or never.
As I said, Marshall schmarshall. Patent owners would be wise to at least consider bringing their patent cases in Oregon.
Bringing Patents to a Knife Fight
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Oregon-based Benchmade Knife Co. Inc. and Mentor Group, LLC sued Jonathan Benson, alleging infringement of U.S. Patent Nos. 6,550,832, 6,675,484, and 5,822,866; trademark infringement; unfair competition; and false advertising. The August 18, 2008 complaint touched off not only a lawsuit, but a no-holds-barred knife fight. Benchmade and Mentor sent a September 24, 2008 settlement offer requesting Mr. Benson to concede to a laundry list of items and pay $15,000. Mr. Benson’s animosity reared when he posted the letter on assistedknives.com/Benchmade/BenchmadeExtortion, then introduced new materials on his website directed to Benchmade. Benchmade filed amended complaints to add defamation allegations and a request for trade libel relief in response to Mr. Benson’s modified website. Mr. Benson formed Roadside Imports, L.L.C. in time for the company to be included as a defendant on the second amended complaint, a maneuver he may come to regret.
Mr. Benson then moved for appointment of pro bono counsel, which was granted by District Judge Ancer Haggerty. While there is no constitutional right to an attorney in a civil action, 28 U.S.C. § 1915(e)(1) allows a federal court to request representation in a civil action. Under Ninth Circuit jurisprudence a court has discretion regarding whether to make such an appointment. The decision to grant such a request should be made after evaluating the party’s potential for success on the merits and the party’s ability to pursue legal claims considering the complexity of the legal issues. See, e.g., Agyeman v. Corrections Corp. of America, 390 F.3d 1101, 1103 (9th Cir. 2004). If there is potential for success on the merits and the court does not believe the person can adequately pursue the legal claims, the request should be granted. See id. at 1104-05. After appointing three separate law firms and having each firm decline representation for various reasons, the court ordered Mr. Benson and Roadside Imports, L.L.C. to proceed pro se. So ends the determination that Mr. Benson may succeed on the merits but cannot adequately pursue his claims because of the complex legal issues involved.
Prior to the court ordering defendants to proceed pro se, Benchmade and Mentor filed a third amended complaint naming Mr. Benson and Roadside Imports, L.L.C. as defendants. Just days later the court ordered Roadside Imports, L.L.C. to appear in the case, and here’s where Mr. Benson’s decision to form Roadside Imports, L.L.C. may bite him. Mr. Benson submitted a motion to dismiss based on lack of personal jurisdiction and an inconvenient forum. Benchmade and Mentor asserted both jurisdiction and the forum are proper, and pointed out that Roadside Imports, L.L.C. cannot appear through a non-attorney agent. Benchmade and Mentor followed up by moving the court to enter a default judgment against Roadside Imports, L.L.C. for failing to respond to the third amended complaint, including a default on the question of liability. The court granted Benchmade and Mentor’s motion on June 22, 2009, which appears to leave Mr. Benson in a bit of a bind.
Columbia Sportswear and Simms Fishing Products Settle Their Patent Dispute
Columbia Sportswear Co. and Simms Fishing Products, LLC have settled the declaratory judgment action filed by Columbia seeking to invalidate Simm’s U.S. Patent Nos. 4,405,376 [PDF] and RE 38,497 [PDF]. By an order [PDF] dated September 1, 2009, the court dismissed the case without prejudice. Terms of the settlement were not disclosed.
