Day 1, Panel 4: Trends in Patent-Infringement Defense
December 4, 2025
B-CLE Recording (CLE: $100) | Agenda | Event Resources | Speaker Biographies
Download Panel Transcript Here
Speakers
Sarah Guske, Morgan Lewis
Matthias Kamber, Paul Hastings
Mike Powell, Quinn Emanuel
Panel Summary
Bijal Vakil opened the defense-side panel by noting that the current environment is strongly pro-patent — characterized by the effective elimination of IPR as a reliable defense tool, litigation funders lobbying Congress, and an administration framing patent strength as a geopolitical imperative against China — and presented data showing that while DJ cases in the Northern District of California have more than doubled from 39 in 2023 to 90 this year, jury verdicts in the major patent jurisdictions have fallen from 61 to 32, suggesting the anticipated pro-patent litigation surge has not yet fully materialized. Sarah Guske argued that the decline of IPR, while painful for defense practitioners, has a silver lining in that defendants can now take more holistic litigation positions without the strategic compromises that came with parallel PTAB proceedings — for instance, pursuing indefiniteness defenses that would have been self-defeating in an IPR petition — and noted that ex parte reexamination has risen as an important alternative post-verdict insurance policy. Matthias Kamber echoed the holistic defense theme and explained that EPRs are now in active consideration as a tool to reduce settlement value after large jury verdicts in Texas, even though the PTO’s policy signals suggest the same pro-patent institutional attitude may eventually limit EPR’s effectiveness as well. Mike Powell, providing a plaintiff-side counterpoint, noted that failed IPRs were actually useful tools for plaintiffs because the expert declarations filed in support became available for creative use at trial, and argued that the Federal Circuit’s pattern of reversing every jury verdict over $500 million reflects an unhealthy tendency to scrutinize damages by verdict size rather than by the soundness of the underlying royalty theory.
The panel then addressed verdict form strategy, damages contentions, and the expanding frontier of extraterritorial damages. Matthias Kamber walked through three recent verdict form pitfalls — the Federal Circuit’s Optus v. Intel decision requiring patent-by-patent jury questions on infringement to avoid Seventh Amendment non-unanimous jury risks; a Delaware case where a jury found both non-infringement and invalidity without the verdict form sequencing invalidity as conditional on infringement, creating an unresolved appellate question about mootness; and a Marshall, Texas case where Judge Gilstrap sua sponte added a question asking the jury to allocate damages percentages between two patents, resulting in a 48-52 split with no evidentiary support and a new appellate problem. Sarah Guske flagged that the Northern District of California’s damages contention rule lacks the same teeth as its infringement and invalidity contention rules — allowing plaintiffs to amend their damages theories with little constraint — and suggested that defense practitioners should consider either pressing for more definitive contentions through motions to compel or using interrogatories to pin down theories early. On extraterritoriality, Mike Powell described two significant cases currently on appeal — one involving importation percentage proxies based on company-wide data to estimate how many foreign-assembled products contained an accused US-sourced component, and one involving the Voxer v. Meta case where 60% of foreign video watch time was served from US servers and included in the royalty base — while Matthias Kamber noted the broader jurisdictional competition between US, UK, EU, and Chinese courts all claiming authority to adjudicate global royalty bases, with some district judges growing increasingly uncomfortable with the extraterritorial reach.
Key Learning Points:
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The IPR Collapse Creates Both Risk and Opportunity for Defense Practitioners — Ex Parte Reexamination and Holistic Strategy Are the Path Forward: While the effective elimination of IPR as a reliable defense tool removes a critical early settlement leverage mechanism and insurance policy, defense lawyers can now pursue indefiniteness, on-sale bar, and other defenses that were strategically incompatible with parallel IPR petitions, and ex parte reexamination — now processing in two to three years — has emerged as the primary post-verdict tool for reducing settlement value pending appeal, though the PTO’s pro-patent institutional posture raises questions about how effective EPR will ultimately be for defense purposes (Sarah Guske; Matthias Kamber; Bijal Vakil).
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Verdict Form Design Is a Critical and Underappreciated Defense Tool with Significant Appellate Consequences: The Federal Circuit’s Optus v. Intel decision requires patent-by-patent infringement questions to avoid Seventh Amendment non-unanimity risk; conditioning invalidity questions on a prior finding of infringement is essential to avoid mootness and waiver problems on appeal; and Judge Gilstrap’s sua sponte modification of a verdict form in Marshall, Texas illustrates that judges are actively trying to preserve verdict integrity — making verdict form planning a strategic priority that must be addressed by experienced practitioners before the fog of trial, not after the jury charge conference (Matthias Kamber; Mike Powell; Sarah Guske).
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Extraterritorial Damages Are the New Frontier for Plaintiff Royalty Base Expansion — and the Defense Bar Has Not Yet Developed Adequate Guardrails: Plaintiffs are increasingly using US-nexus theories — components qualified in the US but shipped globally, content served from US servers to foreign viewers, and global infringement activity connected to a domestic infringing act — to dramatically expand royalty bases beyond domestic sales, with Texas judges allowing these theories through Daubert and juries awarding damages on them, while the Federal Circuit has not yet provided clear limiting principles that would prevent this exception from swallowing the territorial limits of US patent law (Mike Powell; Matthias Kamber; Sarah Guske).
Program Transcript
Key Terms: Patent Defense Strategy, Pro-Patent Environment, Defense Side Perspective, Holistic Defense Strategy, Defense Practitioner Shortage, Pro-Patent Administration, China Innovation Narrative, Patent Troll Tax, Innovation Tax, Defense Side Headwinds, Litigation Pendulum, Pre-AIA Era, Post-AIA Era, Defense Practitioner Market, IPR Elimination, IPR Insurance Policy, Ex Parte Reexamination (EPR), XPR Post-Verdict, EPR Timeline Two to Three Years, EPR Settlement Value Reduction, EPR Institution Rate, Central Reexamination Unit, PTAB Job Market, PTAB Practitioner Demand, Holistic Defense Without IPR, IPR Strategic Compromise, IPR Failed Expert Declarations, IPR Indefiniteness Conflict, IPR One-Year Bar, Post-Verdict EPR, EPR Insurance Policy, EPR Settlement Pending Appeal, EPR PTO Policy Signal, EPR Resource Diversion, EPR Institution Signal, EPR Claim Rejection, EPR Claim Amendment, EPR Two to Three Year Timeline, EPR vs. IPR Strategy, EPR Defense Playbook, XPR Filing Post-Verdict, Declaratory Judgment Cases, DJ Case Increase, Northern District California DJs, 90 DJ Cases 2025, 39 DJ Cases 2023, DJ Filing Strategy, DJ Budget Consideration, In-House DJ Filing, DJ vs. IPR Strategy, Litigation Funding Disclosure, Funder Settlement Authority, Funder Sunk Cost Problem, Litigation Funder Lobbying, Wall Street Patent Investment, Funder Mediation Impact, Funder Settlement Timing, Funder Standing Issues, Funder Identification, Adequate Settlement Authority, Federal Circuit $500 Million Study, Jury Verdict Decline, 61 Verdicts 2023, 32 Verdicts 2025, Large Damages Reversal, Federal Circuit Scrutiny, Damages Verdict Size, Pro-Patent Verdict Trend, Jury Verdict Jurisdictions, Texas California Delaware Verdicts, Verdict Form Design, General Verdict Form, Patent-by-Patent Questions, Claim-by-Claim Questions, Seventh Amendment Non-Unanimity, Optus v. Intel, Non-Infringement Invalidity Sequencing, Conditional Invalidity Question, Mootness on Appeal, Judge Gilstrap Verdict Modification, 48-52 Damages Split, Damages Apportionment Question, Verdict Form Waiver, Fog of Trial Verdict Form, Jury Charge Conference, Northern District Damages Contentions, Damages Contention Rule, Infringement Contention Analogy, Invalidity Contention Analogy, Early Damages Disclosure, Damages Theory Pinning, Royalty Theory Identification, Good Cause Amendment Standard, Laundry List Damages Contentions, Motion to Compel Contentions, Interrogatory Alternative, Damages Contention Teeth, Plaintiff Early Disclosure, Backward Working Damages Theory, Apportionment Defense, Comparable License Challenge, Georgia-Pacific Factors, Expert Opinion Timing, Damages Expert Early Engagement, Royalty Base Defense, Royalty Rate Defense, EcoFactor Defense, Daubert Damages Motion, Damages JMOL, Pigs vs. Hogs Analogy, Damages Number Inflation Risk, Settlement Value Impact, Extraterritorial Damages, US Nexus Theory, Foreign Activity Royalty Base, Importation Percentage Proxy, Company-Wide Data Proxy, US Server Foreign Content, Voxer v. Meta, 60% Foreign Watch Time, Selltech Case Lost Profits, Induced Infringement Extraterritorial, Component Global Qualification, Foreign Assembly US Component, Royalty Base Expansion, Territorial Limits Patent Law, Global Sales Damages, Global Royalty Base Competition, UK FRAND Rate Setting, China FRAND Jurisdiction, EU BSH Decision, US Extraterritorial Reach, Judge Gatekeeping Discomfort, Cross-Border Patent Adjudication, US vs. European Jurisdiction, Judge Albright Extraterritorial, Judge Gilstrap Extraterritorial, Worldwide Damages Authority, Indefiniteness Defense, Nautilus Standard, Williamson Decision, 112 Invalidity Defense, Means Plus Function, PTAB Indefiniteness Conflict, IPR Indefiniteness Preclusion, Reasonable Construction Standard, Nonce Word Defense, Functional Claim Defense, Eastern District Texas, Northern District California, Delaware Venue, Marshall Texas, Judge Gilstrap, Judge Albright, Magistrate Judge Payne, 95% Texas Filing Rate, Venue Reform Proposal, Company Headquarters Venue, Venue Motion Strategy, TC Heartland Impact, Optus v. Intel, Voxer v. Meta, Selltech Case, EcoFactor v. Google, Rex v. Intuitive Surgical, Fintiv Decision, SAS Decision, Arthrex Decision, eBay Decision, Nautilus Decision, Williamson Decision, PREVAIL Act Defense Perspective, AIA Congressional Intent, IPR Statutory Estoppel, Res Judicata Reform, Claim Splitting Traditional, Post-Verdict XPR Preclusion, Stiffer Estoppel Proposal, Fintiv Reform, Discretionary Factor Elimination, Defense Side Reform Wish List
[HOST]
So this is the counter to the earlier session on patent enforcement. This time we’re looking at patent defense.
Um, we have Bijal Vakil with us. Um, Bijal is a partner at Skadden, and, you know, one of the– the more senior patent litigators in– in the Bay Area, so it’s always nice to have him join us as a moderator to lead this panel.
So Bijal, all yours.
[BIJAL VAKIL]
Thank you. I don’t know if I appreciate the comment about being one of the most senior people around, but hearing that people graduated law school in 2009, et cetera, I guess is quite humbling. In any event, we’re happy to be here today. We’re gonna talk about defense side patent strategies, and we are, I will say, encouraged or enthusiastic about the pro-patent panel that just finished.
Some of us want to pull our hair out, but we will talk about that in a second. I’m pleased to be here today with my colleagues, who I deeply respect.
We have Sarah from Morgan Lewis, Matthias from Paul Hastings, and Mike from Quinn Emanuel. And probably, I guess, Mike, you’re the only one of us who does do some plaintiff’s work as well.
[MIKE POWELL]
Yeah, and just to be clear, I’m here as sort of a counterpoint to some of the opinions you’re gonna hear from my colleagues. Be more in line with the panel from earlier today, I think, but
[BIJAL VAKIL]
Yeah.
[MIKE POWELL]
I’ll try and hold back a little bit.
[BIJAL VAKIL]
Perfect, perfect. And so, we wanted to start off with just some interesting statistics, because if you take as given what we see in Law 360 and The Wall Street Journal, et cetera, we’re living in a pro-patent atmosphere, an atmosphere that’s marked by, essentially, what I would say, the illegal elimination of the PTAB. We have, we have litigation funders who are lobbying Congress all day long, and so the headwinds that we’re seeing are definitely pro-patent.
Uh, I went on the website, and I know that former commissioner Iancu is here, but when you go to the Center for Innovation Promotion’s website, it’s “to promote strong and effective IP rights that drive innovation and boost economic competitive– competitiveness and improve the lives everywhere.” That is their mission statement, and it includes extremely well respected people like Ian Cukappos, Judge Michel, Judge O’Malley, and others. And, we’re also dealing with an administration, and this is not a political conference at all, but that wants to say, “We are more innovative than China, and let’s grant more patents.
Let’s be more vigilant about protecting patent rights.” So you have this, we were joking about this earlier, a six-seven issue for those of you who are hip.
(laughS)
We’ve got this six-seven issue of, “Well, we want a amazing campaign and political narrative with China,” and yet, I think many of us here feel that the patent trolls and the non-practicing entities and the litigation funders are out here to tax innovation. So, just some statistics, because if, what we’re seeing plays out by the data. So, we thought, if we’re in a pro-patent world with no PTAB, you would see an increase in declaratory relief cases, most notably in the Northern District of California. And when we looked at the data, there have been 90 DJs filled so far this year, and if you contrast that with 2023, that was 39.
So, there has been an increase in DJs. So, for all of you who are in-house at companies, you should definitely consider filing a DJ case. And especially when you have budgets of 20 to 25 million, as Fortress says is appropriate.
(laughing)
All right. And the number of jury verdicts, though, has gone down, interestingly. So in ’23, we had 61 in the main jurisdictions.
I’m talking about Texas, California, and Delaware. And this year, we’ve had 32. So, it’s interesting, right? We had the headwinds that are saying that it’s a pro-patent world, and then we’re seeing the data, and it doesn’t really play out.
In my mind, I believe that the renaissance for the patent trolls is coming, and you’re gonna have a shortage of patent litigation on, patent litigators on the defense side because it’s extremely pro-patent right now. Now, I was gonna pull my hair out hearing some of the comments.
I was extremely irked at the comments that we heard earlier today. I wanted to start the panel off with a speed round. So Sarah, everyone gets one minute. Why were you pulling your hair out?
(laughs)
Although you’ve got, when you heard that. Panel.
[SARAH GUSKE]
Yeah, I just spent a lot of time getting this wig during the break.
(Bijal laughing)
I think a lot of us have thoughts, many, many thoughts on damages. But I’m gonna turn to litigation funding a little bit. I think that the thing that took me by surprise is that the perception that the only reason you need to know who is funded and funded by whom is for standing, and the other reasons discussed this morning, which I think are legitimate reasons.
But I think even the panel acknowledged this morning that litigation funding can impact settlement authority. It can impact the timing of settlement, and certainly sunk costs become a problem at some point when you’ve got a funder who expects to get their investment out.
And you map that across the most, if not all judges who require people with the adequate settlement authority to participate in mediation or settlement conferences. It’s actually quite important for the purpose that, you know, it’s supposed to, I guess, the same justification for changing issues at the PTAB right now to look for better resolutions faster and cheaper resolutions.
We need to know those funders to have productive settlement discussions in a lot of ways. So throw that out as a counterpoint.
[BIJAL VAKIL]
Well, thank you. And, you know, again, just not to nitpick at the previous panel, but we will.
(laughing)
There were no litigation funders in 2008 when the pendulum was, you know, when these pendulum shifts have happened, we haven’t had Wall Street investing billions of dollars into patent cases, so there is a reason for that. Matthias?
[MATTHIAS KAMBER]
I’m gonna sort of take my–
[BIJAL VAKIL]
You used to have long hair this morning, so.
(laughing)
[MATTHIAS KAMBER]
Yeah, I’m not, I’m not gonna pull my hair out. I’m gonna, I’m gonna take my proper place here, I think on the spectrum maybe between Mike and Sarah, and just share an observation that on the panel.
Steve mentioned the heyday and, and Steve and I started practicing right about the same time. He’s probably a year or two out of the gate earlier than I was from clerking. But I do think that things have, there have been two eras. There was the pre-AIA decade where I was practicing where there were certain realities in the market, then there’s been the past decade plus, 12 years or so, and I think it awaits to be seen what the next, what that third decade looks like in terms of my practice.
I think you heard a preview of it a little bit this morning. One thing I was, as I was contemplating this last night, though, was we were talking about this balance, right?
There’s always this balance. There’s a tension in the system between the right amount of pro-patent rights, the right amount of pro-inventor rights, and the right amount of rights on the opposite side, which is largely the focus of this panel. And things have changed in the defense direction over the years.
Ebay was mentioned as one of them this morning. 101 was very different when 20 years ago.
112 has even changed. I mean, Nautilus, Williamson, I think make viable invalidity defenses under one– uh, 112 that– that weren’t viable at that time. And then apportionment. A lot has happened in damages and apportionment.
Yes, we’ve heard that there are many, many sort of numbers and verdicts, you know, in the hundreds of millions of dollars that never seem to be sustained by the Federal Circuit, but largely that’s because of the apportionment law that has come out in that intervening time period,
[BIJAL VAKIL]
So. Thank you, Matthias, and you know, just to add to that since I’m slightly older than you, we also didn’t have 95% of patent cases filed in one state within two jurisdictions, right? Absolutely. When we first started practicing patent litigation. So that is a shift, right?
And the attitude that we are against dispositive motions, so that’s something to keep in mind. Mike?
[MIKE POWELL]
All right, thank you, and on that last point, that’s why I’m wearing cowboy boots
(laughing)
’cause I know what state that is. The thing that surprised me, if there was one thing, was that there’s a study that says the Federal Circuit has never affirmed a verdict over $500 million in a patent case. So, I didn’t know that study was out there. That did surprise me.
But since I’m giving sort of the plaintiff’s counterpoint to what they’re talking about, I think that just means what we all know, which is pigs get fat, hogs get slaughtered, right? So you have to have a legitimate damages theory to get your numbers into those ranges of multiple hundreds of millions of dollars and a billion in some cases, and we all know you can do it in the trial court.
What we’re talking about is can you get it through the federal circuit? I think it’s almost kind of sad that the federal circuit has such a watchful eye on large damages numbers.
There are cases, right, where the royalty is ridiculously low. It might be a quarter of a penny on a thing that someone charges $100 for, and that could lead to a billion dollar royalty, right? That in and of itself doesn’t mean it should be reversed or there’s something out of whack in the system, so maybe as I’m thinking about this, you can present something to the Federal Circuit where you don’t even give them the judgment number, right? You give them the theory, the royalty, the base, and how it was calculated so that they make an informed decision not on prejudice and size of the award, but on the reasoning behind the award.
[BIJAL VAKIL]
Thank you. We’re gonna shift gears now to a hot topic, which is the PTAB. I can tell you as someone who reviews resumes, there are a lot of PTAB practitioners and PTAB judges looking for jobs right now.
There’s no shortage of that. Sarah, is there a way to leverage the PTAB anymore? Uh– Does it exist? Do you know what it is?
[SARAH GUSKE]
It does exist because four whole petitions got instituted this week. So you know, it’s going strong. No, I think you know, there has been a lot of speculation about how it’s going to impact an influx of cases. I think as Bijal pointed out with the statistics, we haven’t seen that yet even though there’s been a lot of months since late January of this year for those influx of cases.
So, you know, some of that I think it will play out over time, and it will certainly there’s gonna be people who are emboldened to file who may not otherwise have, but there’s also a reason to believe that it may not be this, like, waterfall of cases as well. So try to– to provide a little bit of m– maybe cold comfort until time, more time passes, but when you– when you look at where most cases are filed, 95% according to I’m sure what’s very reliable data, uh– –in– in Texas like, the state of the PTAB is– does not really gonna impact those cases or change the– the state of the world anyway ’cause those courts were not really allowing PTAB IPR specifically to dictate much about the trajectory of a case. But–
[BIJAL VAKIL]
But it was an insurance policy,
[SARAH GUSKE]
Right? It did act as an insurance policy, and you still have ex parte re-exams– Yeah. Which I think even before this year have been on the rise for serving those purposes as well since they no longer take five years to get through, which is a positive.
But– sort of also teeing off of what Bijal said, you know, there, there’s an element of like, “Hey, we’re, we’re lawyers. We can make lemonade out of lemons from a defense perspective.” And there’s a lot of reasons that IPRs impacted in a negative way defense strategy, you know, dealing with a one-year bar or trying to get in front of a court’s faster schedule before to– in order to get you are often having to guess at what claims were going to be asserted, what that infringement read looked like, what claim construction positions you might want to preserve for non-infringement that would be contrary to your PTAB strategy. So, so now, as defense lawyers, we can be back in the, the more holistic driver seat to push the, the defenses that, you know, maybe better long-term anyway without having to make sacrifices and guesses, which also goes to, to Bijal’s point that, you know, the, the defense lawyer who knows how to do more than babysit a case through contentions and, and–
[MATTHIAS KAMBER]
Yeah.
[SARAH GUSKE]
Ptab litigation, I think, are going to be, you know, in potentially in short supply.
[MATTHIAS KAMBER]
Yeah, I, I just want to echo actually a couple of those points, Sarah. I mean, I think the holistic point is, I think, a very good one.
And as you were talking, that word popped in my head that you used it. But it– I think it is very true that there, there are now ways as as defense lawyers that I think the, the strategy can be more holistic, and that there’s less tension sometimes between the positions you might want to or, frankly, have to take in front of the PTAB because, uh– And, and I’ll give one example that, that I’ve had before. Wanting to argue indefiniteness for something. And then you can’t do that.
If it’s indefinite, the PTAB can’t take it. In a situation I had, we noted that there might be an indefiniteness problem, and that was the reason why the PTAB ultimately denied institution in that case. Well, now, you can take some of those defenses.
You can work with that defense in the actual litigation in a way that perhaps you might have had to scrap it if you were going to go in with an IPR petition. The other thing I’ll just echo too is EPR is very much now in consideration by my clients.
I mean, everyone is thinking about EPRs, ex parte reviews as, or ex parte reexaminations as part of the strategy–
[BIJAL VAKIL]
So there is a reason for those PTAB groups at law firms.
[SARAH GUSKE]
Important reasons.
[MATTHIAS KAMBER]
There are, very much so, and what it often, and Mike can probably address this, too, but it ends up being a bit of an insurance policy on big verdicts. And if there’s an EPR and it gets instituted, and these days it’ll take closer to two to three years, I think. There’s a little more certainty. Then it might well be that after you have a trial in Texas, those claims are either rejected or amended, and then you, you can get it.
You can get that result before the appeal. And I think that that is an important consideration. I can’t quite tell how that’s going to play out in the long run. I’ve been told and the PT, excuse me, the PTO itself seems to be suggesting that they are diverting the resources that were traditionally dedicated to IPRs over to the ex parte reexamination unit.
I think that’s true with some of the high-level staffing decisions that you’ve seen, but I’m not entirely convinced that, that we’re gonna see very different results. I think the PTO itself is signaling where it stands in terms of their policy and their view on patent rights. And I think it remains to be seen whether EPR is going to be a place where you can actually get traction as a defendant on patent scope, so.
[MIKE POWELL]
Well, kind of building off of what Matthias said, we call it XPR by the way. I don’t know EPRA. We don’t like, we wanna X them out as the plaintiff side, right.
(all laughing)
So it–
[BIJAL VAKIL]
There’s always the Quinn way to do things.
[MIKE POWELL]
It’s a defense strategy that’s just in the playbook now, and every verdict you have a post-verdict ex parte reexamination. And what I think, in my experience that is useful for from the defense side is teasing down settlement value, right? So if you do get a big verdict, that XPR, if there’s any legs to it, can tease that down if you’re gonna do a settlement-pending appeal.
So that’s kind of what, what I see in my practice that happens And I think that’s still a powerful tool. And based on what Mateos is saying, it might become even a stronger tool for defense lawyers. On indefiniteness, yeah, I wanted to comment on that.
You know, from a plaintiff perspective, I say if you file an IPR, you should be precluded from arguing– –indefinitely in district court, right? Because you have to go into the IPR having a reasonable construction of, of the terms.
So it’s actually kind of incongruous to allow them to then come back and say the patent’s indefinite when they told the PTAB or the patent office that we can understand what these claims mean. So that’s one comment that I have on that. The other thing I just talk about or think about in relation to PTAB practice and district court practice from a plaintiff perspective is the trade-off between time to trial and certainty, right? In my own experience, it’s been shown repeatedly that failed IPRs give you a lot of good things to do as a plaintiff in a patent case, including at trial sometimes when the expert declarations that went in in support of an IPR can be used sort of in a creative way at trial as additional testimony.
Maybe the positions are a little bit off, a little bit different. So I actually found value in failed IPRs certainly as a plaintiff side lawyer that’s– –I’m gonna miss that now if they really do die off. But I have a feeling that they’re gonna find a way to still exist in our world.
It may just be focused on earlier issued patents, not some of the older ones that maybe have that staying power.
[BIJAL VAKIL]
Well, I wanna pivot now to damages. We’ve been s– speaking about damages and some of the recent cases, and Mark mentioned some of those as well earlier.
Uh, we’re all, many of us practice in the Northern District of California. We have local rules that provide for damages contentions to be done, and we don’t really see them used. I know, Sara, you used it a couple of times.
But we don’t see motion practice on that, so I’m not really sure that there’s a lot of teeth in those damages disclosures. But, Matias, perhaps you could tell us a little bit about your thoughts and potential strategies, particularly with jury verdict forms, ’cause that’s a topic that Mark had mentioned as well.
[MATTHIAS KAMBER]
Yeah. This is, I mean, this relates to damages, it relates to other issues as well. And I sort of have three maybe semi-anecdotal examples from the past year where verdict forms have been kind of the focal point of the issues in a case.
And Mark already addressed one of them. That was the Optus case that came out from the Federal Circuit.
Uh, it was a case against Intel, and the, the verdict form was, was a general verdict form. And the issue there was it essentially said, “Has the plaintiff proven that the defendants infringed any of the asserted patents?” There were multiple patents in the case. Intel objected under, on Seventh Amendment grounds to say, “Well, wait a second you, there, there’s not a unanimous jury here, or there’s the risk of having a, a non-unanimous jury, because Juror 1 could find Patent 1 infringed, and Juror 2 could find Patent 2 infringed, but they might not necessarily agree as two patents.” And the Federal Circuit agreed in that particular case, and said, “You, you can’t have that.”
So, I think the practice tip is you need to have certainly patent-by-patent questions with respect to infringement, and I dare say claim by claim, which is what you typically see. I mean, it, a lot of, whether it’s in, in the Northern District here or in the Eastern District of Texas, you’ll often see it claim by claim. And even that Optus decision suggests that the question of infringement is a claim-by-claim question. They don’t actually instruct district courts that it has to be a claim-by-claim verdict form, but I think if you read the logic of their decision in that case, it’s there.
Certainly the implication is there. Uh, another thing that came up more recently for me was in a case that I was involved in the trial in Delaware, and the verdict form had a question about infringement, and then moved on to a question about anticipation, and moved on to a question of obviousness. And we were the defense, and what happened was that the jury found non-infringement but also anticipation and obviousness, and, but there were no counterclaims. The jury was asked all of the questions, and after the verdict on the appeal or before as we were getting the final judgment, the plaintiff said, “Well, wait a second.
The invalidity questions became moot as soon as there was a finding of non-infringement.” But that hadn’t been an issue for the verdict form.
It was, those questions were on the verdict form, and most of the time you would get a question like, “Is there infringement?” And only if you have found infringement, move on to questions two and three about invalidity. Um, that wasn’t this verdict form. The appeal is a little bit confusing, and it’s still pending.
Um, right now the, the Federal Circuit heard the argument and they said, “Well, we don’t know if, if certain issues have been waived, and if there was actually a final judgment that involves or includes the invalidity finding.” So they’ve sent it, they’ve retained jurisdiction, but sent it back down for clarification on that issue. But I do think it’s a, it’s some, it’s another verdict form issue to be aware of as you go through, as you put one together in the fog of trial, towards the very end sometimes.
[SARAH GUSKE]
It’s also a pretty compelling argument to make sure somebody’s paying attention to the jury charge in verdict form–
[MATTHIAS KAMBER]
Absolutely.
[SARAH GUSKE]
–that knows how this plays out.
[BIJAL VAKIL]
Yes. Has there ever been an issue where a judge has made a comment about a jury verdict form?
[MATTHIAS KAMBER]
Yeah. That’s the last example I had most recently with a case, actually.
[BIJAL VAKIL]
In which jurisdiction?
[MATTHIAS KAMBER]
Uh, this was in Eastern, in Marshall, Texas, so this was a case before Judge Gilstrap. And what happened was actually one of the, there were two patents at issue in the trial, one of which was invalidated by Judge Chabria here in the Northern District, a week before the jury trial in Texas. And rather than estoppel applying, the judge went forward with the trial, and at the very end, we had the verdict form agreed by the parties. And the judge called us in after the jury charge conference and said, “Actually, I can’t, I, I’ve come up with a new Question 3B.”
3A or Question Three was, “What are the damages?” And I think he knew that there might be a problem, and, and this is also to Mark’s point before, he didn’t wanna have a full retrial of the entire case, which is kind of the trend at the Federal Circuit when you have these problems with the damages verdict. And so he said, “I’m gonna add 3B, and it’s gonna ask what percentage of the damages belong to Patent 1 versus Patent 2, and it has to add up to 100%.” Which is sort of interesting, because the plaintiff’s theory was that either patent was worth the same amount.
That, you know, whether there be infringement of one, the other, or both– the number was supposed to be the same. This was clearly an effort on the part of the judge to avoid, I think, a problem on the potential invalidation of one of the patents at the federal circuit, but perhaps not the other on appeal in a way to avoid, I think, a full retrial.
Probably a good attempt other than the fact that the jury came back 48-52 and there was no evidence in the record to support any of that. So I think he may have created a different new problem that was unexpected from the verdict form.
[BIJAL VAKIL]
But that was A+ for Judge Gilstrap’s clerk who did come up with a new question to add to the jury verdict form.
[MIKE POWELL]
One other anecdote on this case I have on appeal right now. The issue came up when you get an award and there’s two claims of the same patent that were found to be infringed and you have one damages number, the plaintiff’s position is that, you know, the claims are basically the same invention so whether it’s one or the other it’s the same damages number, similar to what you’re talking about, but it’s two claims in the same patent. That’s being appealed right now on whether there was a failure to apportion across the claims.
[BIJAL VAKIL]
Mm-hmm.
[MIKE POWELL]
So that’s a new argument. Haven’t seen any case law on that one, but that is a flavor of this that’s percolating out there.
[BIJAL VAKIL]
And Sara, I wanted to go back to an earlier comment that I made with respect to the damages disclosures in the Northern District. Putting on your practice pointer hat, what pointers would you give and is there any real teeth to that rule or should the folks out here try to lobby to change that?
[SARAH GUSKE]
I guess it depends on what side you’re on. Well,
[BIJAL VAKIL]
Let’s ask
[SARAH GUSKE]
The trolls, yeah. Oh, the trolls? Oh, yeah.
Uh, so the damages contention rule here in California doesn’t have as much restrictive language in it as the infringement contention and invalidity contention rules relating to needing to have good cause in order to be able to supplement or amend. There is, I think the current iteration of the rule for damages contentions do put, like, a limited boundary on early damages contentions that you have to identify, like, your theory for a royalty or something to that effect, but not much around how you apply it, how you calculate the base, what the rate range may be. And often what you get is sort of a laundry list of things that the plaintiff may pursue a theory on and then sort of a number or a range of numbers.
So you can, depending on your judge, move to compel for a more definite set of contentions, but if the plaintiffs can sort of amend for almost any reason until late in the case, then you have to have a hard conversation with your client about whether it’s worth the money to try to do that. So you know, again, it’s going to be case dependent about whether you do press for amending the contentions or you switch over to your interrogatory requests and press really hard for early disclosure of the actual basis for the particular theories to try to pin them down early.
Otherwise, yeah, you’re looking at a situation where, you know, do, do the defense lawyers of Northern California band together to petition for a revision to the damages contentions that puts more burden on the plaintiffs up front to, to really know what their theory is as opposed to coming up with a minimum number that they need to hit to make it make financial sense and then work backwards. You know, maybe look for ways to press for a fully baked rational theory up front.
[BIJAY JUKI]
And Mike and Matthias, could a crafty plaintiff’s lawyer game the system that Sarah’s articulating?
[MIKE POWELL]
Well, I think one of the things we talked about in preparing today is if you’re going to put more teeth in those early damages disclosures, I think you’re going to see the damages numbers go up, right? I think you’re going to see plaintiffs starting out at a billion and they’ll pare it back by the time they get to trial.
But I also think that tension is forcing early disclosure of expert opinion testimony, right? I mean, we have to be mindful that on patent cases when you’re applying Georgia-Pacific, most of that comes from your damages expert. So what you’re really asking for is an early disclosure of that expert opinion. That could be viewed as unfair because other opinions don’t have to be disclosed as early, but you’re right, it’s analogous to infringement contentions or invalidity contentions where you get the lawyers, you know, making their arguments that then the experts adopt later.
I think you’ll have to do that on the damages side too if you do give it more teeth.
[MATTHIAS KAMBER]
Yeah, I think the problem with this is, is that, Mike kind of addressed this, is that hogs slim down. I mean over the course of a case. Back to
[BIJAY JUKI]
Those Texas analogies. 95% of cases, 95% hogs. You know, it’s not the other way
[MATTHIAS KAMBER]
Around that, you know, over the course of the case usually the pig is getting fed. It’s that the hog is slimming down and people have to start with I’m sympathetic to the fact that a plaintiff that doesn’t really have the numbers, they don’t have a financial production necessarily at that time, they don’t have a good sense or any sense for that matter, of whether there are comparable licenses from the defendant. I mean, they’re aware of their own but not from the defendant. It’s very difficult, I think, at that early, relatively early stage of the case to be pinned down on a damages theory.
And my worry is that if, to the extent that we try to do it if we try to put teeth on that rule, which could help, it’s just going to lead to bigger numbers. And frankly, once those bigger numbers are out there, sometimes it makes a case more difficult to settle rather than easier to settle because people just get locked into their positions and where their expectation is in terms of what a case might be worth. So it could have a counterproductive effect if we actually try to put more teeth into that rule.
[BIJAL VAKIL]
Well, I guess staying on with the theme of strange and bizarre theories that plaintiffs are trying to advocate, and how to litigate effectively in places like Texas, I want to pivot to Mike to talk about extraterritoriality. And are we seeing judges, I guess, somehow improperly apply a U.S. damages model to worldwide sales?
[MIKE POWELL]
So this is a matter near and dear to my heart.
(laughs)
Another case on appeal currently involves the extraterritorial piece of not being able to tell which of the imported devices have the component that infringes in it. They’ve got multiple vendors that supply the component, you’ve only sued one of them, and you’re trying to figure out how many of those devices are in the actual products that get imported to the U.S.
[BIJAY JUKI]
And Mike, where was this case?
[MIKE POWELL]
This is an East Texas case, and the, the issue came up because we did third-party discovery to the, the brand customers, right? The ones that import. They don’t track this.
These are components that are put in the devices at Foxconn or somewhere else overseas, and there’s nobody that has records that were discoverable that could tell you how many of these devices have this component. Now, this issue came up in the Selltech case, if some of you are familiar with that, in the lost profits context. That case came out after our damages reports had been issued and just a little bit before trial, so we had to distinguish it. Selltech said because lost profits requires you to actually find each individual sale that you could have captured for yourself as the patent owner, that doing an importation percentage based on top level data of how many on a company-wide basis, how much of their sales are in the US versus globally, they said that doesn’t cut it because it doesn’t show each individual sale.
So Selltech is this data point that’s out there saying that that, that is not reliable. Now we had to argue that in the reasonable royalty context, you have to go back to what in the hypothetical negotiation the parties would have had access to. What would have been available to them to negotiate some kind of royalty? And there, it was only published data from the brand customers that said on a company-wide basis, this is how many widgets we or how many sales we have in the US, this is how many sales we have globally.
And we use that as a proxy to estimate how many of the imported products have the accused device in it. Now again, that number includes things like services and non-accused products, so the argument is that it’s overreaching. Now it could be the other way, it could be under-reporting the percentage as well.
As a proxy, it’s not perfect. That issue did survive a Daubert challenge, but that’s the issue that’s on appeal to the Federal Circuit right now.
So that’s one way where then that was an induced infringement case, so it’s tied up with how you can sort of get products from overseas into the US and what you can figure out your royalty base is gonna be. Now relatedly, another thing that plaintiffs’ attorneys are doing is increasing the reach of royalties, right?
So global activity now can be a factor that you consider in the royalty analysis, provided the global activity is connected to US infringement, right? So again, in the context of, for instance, of a battery or a component in a larger product, if those components get qualified for use in these globally distributed products in the US, is that enough of a nexus to tie your royalty base to some global activity in the sale?
So one component approved in the US is shipped globally, can you attach a royalty to those sales on a global basis? That’s another way to kind of plaintiffs are upping the royalty base to get higher damages.
[ARJUN KOHLI]
And just a question for Matias and Sarah on that point. I mean, should Judge Gilstrap, Judge Albright, and other judges play more of a gatekeeping function when this type of testimony comes in?
[MATTHIAS KAMBER]
Yes.
(laughter)
[BIJAL VAKIL]
Sorry, my bias is very hard.
(panel members laughing)
[MATTHIAS KAMBER]
No, I mean, look, I think EcoFactor is not a huge game changer as we’ve heard, I think from one or two people already today. I think some of us were expecting more.
But I think it does at least telegraph that the Federal Circuit is paying more attention to these issues, that it does care about the amendment to the federal rules, and that district court judges should be playing a larger gatekeeper role overall. And I’ve heard federal circuit judges over the past, even in the past few months say on panels, that they are paying closer attention to those issues.
Frankly, it’s one of the reasons why that study about the damages numbers has that data or shows those results, that is, the Federal Circuit is going to put pretty strict scrutiny on big damages verdicts models that might not really be valid or that maybe perhaps should not have been presented at trial. The reality is, I think, you know, on the question directly of Judge Albright or Judge Gilstrap, and Judge Gilstrap usually outsources some of this work, at least in the first instance, to Magistrate Judge Payne. They have not changed their behavior all that significantly, I think, in the wake of EcoFactor. I think maybe other judges might be looking at it differently in other districts.
I don’t believe, or I have not seen the behavior change significantly in those particular courts as to how they are addressing Daubert rulings. I mean, to the contrary, I think we’ve been citing those cases and motions with the same result. That is, those Daubert motions continue to be denied as they were even before EcoFactor came out.
[SARAH GUSKE]
And with EcoFactor, I think the en banc decision gave plenty of wiggle room for it to not have a greater impact going forward because I lost count, there was several instances where the majority noted that the agreements were undoubtedly relevant. It was just the specific way in which they were being relied on in that– So, you know, I think the game changer that some thought it would be maybe didn’t play out because the Federal Circuit gave district judges kind of a choose your own adventure. But going back to the topics that Mike was just discussing on the changes to damages and its interplay with extraterritoriality, I think that’s an area where there’s gonna have to be more litigation and more appeals to really shake out what the impact is because I, it’s hard to imagine that the Federal Circuit cases that sort of have opened the door to pursuing damages for foreign activity, as long as there’s a nexus, probably didn’t intend for that exception to swallow the rule and, there are gonna be guardrails put in place and maybe a refocus, again, really looking at what can constitute infringement or infringing activity to continue to narrow that down a little bit. But I think it’s an instance, and I guess job security that Federal Circuit has provided us for decades now of when you get a ruling that you think, okay, this provides some, some clarity.
And then you realize, no, there’s about 500 other things that we really need to probe further to get a real set of rules out of it.
[MATTHIAS KAMBER]
Can I actually just address one thing–
[BIJAL VAKIL]
Yeah, sure.
[MATTHIAS KAMBER]
Which I think is, there is this interesting competition happening between and among jurisdictions about who want, you know, who wants to host your, be the venue for this patent litigation. This is part of it, I think, is if, you–
[BIJAL VAKIL]
Don’t like the Starbucks in Marshall?
[MATTHIAS KAMBER]
Right.
(Matthias chuckles)
If you’re a US court and you’re able to arbitrate this larger question of the worldwide damages or some larger damages base that goes outside the US, that’s interesting. I think you see it in the SEP litigation context, where you have courts in the UK, courts in China, who are saying, “Well, we will litigate your worldwide FRAND license rate issue.
We’re not going to limit ourselves to the patent rights or the scope of the patent rights in this country.” And I think that the opposite tension I see too, which is, there are certain courts, there are judges that are very uneasy with this.
And then there’s also, by the way, an EU decision that basically says, “Now we, the EU, can litigate, can decide issues about your US patent as long as the company is based in or, you know, Europe in some way.” And some judges are looking at this going, “Well, wait a second.
That’s too far.” Um, and I, so I agree with Sarah.
I think there’s going to be a lot of litigation over these issues about extraterritoriality and really the scope of the rights that a court may have to arbitrate these issues or decide these issues between and among parties.
[MIKE POWELL]
Well, I could add one more point on this just to maybe give another data point. And I agree, it’s a spectrum, right? And I don’t know that you need guardrails. You maybe need more data points to figure out where that spectrum, where your case falls.
One, for instance, that I think falls on the right part of the spectrum is the Voxer versus Meta case from a couple years back in, that we tried in Austin. There, right, it was live video is what the accused service was, and you had obviously people watching videos in the US. I think no, everyone agrees that’s gonna be infringing; it’s not extraterritorial, it’s in the royalty base.
But we extended it to also include people that watch videos in other countries, but they’re served from Facebook or Instagram servers that are located in the US. Now they have a model that’s dynamic. That load actually changes over time. On any given moment there might be 70% in the US, another moment there might be only 30% US.
So we had to average that, and it turned out that 60% of the foreign videos were actually served from US servers. Wow. So we got 60% of the foreign watch time as part of the royalty base in that case.
[BIJAL VAKIL]
Wow. That, by the way, this is very scary to me, because in light of what Mike just said, in light of the fact that these judges in Texas are allowing this in, and the fact that we heard from litigation funders and plaintiffs firms that they want cases that are $100 million, right? It seems that they’re going to always try to reach for this, these global sales.
Much to my dismay. In any event, I feel the heavy weight of the dessert that’s being put out there right now for lunch.
And I want to end with a very quick speed round. If you were President Trump and you had a bill to pass to help improve the defense sidebar, what would that be?
I’m gonna go first, because I can play God. I would require that patent cases be brought where the company is headquartered. Go, Sarah.
[SARAH GUSKE]
I’ve got some problems with the premise of your hypothetical, but,
(all laughing)
um–Um, you– you know, hearing what– uh, what Mike’s counterpoint was on damages contentions or being pinned down to a damages model earlier in the case, even outside of the contention context, I understand those limitations. But getting, forcing plaintiffs to– Because a lot of these things that they allegedly need discovery on, and more time to develop around comparable licenses, those sorts of things, they can do those earlier.
So, I think putting some more teeth on– on making– making your damages case and basis for it known well before expert discovery and have that actually be, you binding, I think, would be–
[BIJAL VAKIL]
We will– we will tell Ramy and Rabekosh. Matthias?
[MATTHIAS KAMBER]
You know, I think mine has already sort of been written, and it’s called the AIA. And
(all laughing)
I just think that it needs to– I mean, Congress had a clear intent. They debated this for a long time. They put into place IPRs and other systems– PGRS4. I think where maybe things went off the rails is when we had all of these discretionary factors come in.
I wouldn’t leave this up to some high-level policy person. I’d leave it with the panels. They can look at these issues.
I have my doubts about Fintiv. I think Fintiv is where we really maybe took a turn away from what Congress was looking for or intending by way of the AIA and the IPR provisions.
[MIKE POWELL]
And I would say I would like to see stiffer estoppel between Patent Office process and just district court proceedings. I’d like to see a return back to traditional claim splitting, res judicata analysis so that you don’t get XPRs filed after a verdict.
[BIJAL VAKIL]
Hey, whose side are you on? I thought that was the,
(panelists laughing)
That was the Quinn Insurance policy post-verdict.
[MIKE POWELL]
Counterpoint.
(panelists laughing)
[BIJAL VAKIL]
Well, I wanna thank all of our panelists. I see we’ve got 10 seconds left, so we’re ending right on time for dessert. So thank you very much.
(audience applauding)
[MATTHIAS KAMBER]
Thank you.
(audience applauding)