Day 2, Panel 1 (Litigation): Using Equitable Defenses Considerations
December 5, 2025
B-CLE Recording (CLE: $100) | Agenda | Event Resources | Speaker Biographies
Download Panel Transcript & Materials Here
Speakers
David Bloch, Greenberg Traurig
Clem Roberts, Orrick
Greg Sobolski, Cleary
Panel Resources
Panel Summary
Bhanu Sadasivan opened by framing equitable defenses — inequitable conduct, unclean hands, prosecution laches, and equitable estoppel — as a category of defenses that attack not the patent itself but the conduct of the person asserting it, and noted a resurgence of interest in these defenses based on the frequency of their appearance in recent docket alerts and IP publications. David Bloch presented a data-driven analysis using Lex Machina covering 305 terminated cases from January 2023 through June 2025 in which equitable defenses had been pled, finding that estoppel was raised in 297 cases of which only 21 reached trial, inequitable conduct was raised in cases where 20 reached trial, unclean hands in 19, and laches in only 13 — representing between 4% and 9% of cases where these defenses were raised. Most strikingly, Bloch found that in only three of those cases — Capex Maxwell, Staton Techne, and Lindis Biotech — did a party actually prevail at trial specifically on the equitable issues, leading him to conclude that defense-side lawyers may be systematically overvaluing these defenses relative to their actual dispositive impact. Clem Roberts offered several structural explanations for the high dropout rate, including the tendency to plead equitable defenses reflexively in every answer to avoid waiver regardless of factual basis, the settlement dynamics that cause cases with genuinely strong equitable issues to resolve before trial because they dramatically reduce a patent’s settlement value, and the influence of judge-specific skepticism toward mud-throwing defenses in plaintiff-friendly venues like East Texas and parts of Delaware.
The panel then shifted to practical trial strategy for getting equitable themes in front of juries despite the structural barriers of bifurcation and judicial gatekeeping. Greg Sobolski explained that the most effective structural mechanism for presenting equitable evidence to a jury is requesting a non-bifurcated trial with an advisory verdict on the equitable issues — arguing overlapping evidence to avoid separation — and that motions in limine battles in cases with live equitable defenses are invariably intense, with judges typically holding a tight line on what overlapping evidence actually gets in front of the jury. Clem Roberts made the counterintuitive point that practitioners may not need a formal equitable defense in the case to achieve the same thematic result at trial — arguing that a standard invalidity defense based on prior art not disclosed to the PTO, an on-sale bar defense, or an improper inventorship argument can all convey the same “bad actor” narrative to a jury without the procedural overhead of a formally pled equitable defense. Sobolski recounted the SMR v. Magna trial in which inequitable conduct was tried to the bench simultaneously with the jury trial on liability — resulting in a verdict of no infringement and invalidity that mooted the inequitable conduct issue — while Roberts referenced the Sonos v. Google case where Judge Alsup, despite a jury verdict in Google’s favor, found a novel equitable hook post-trial to grant relief to Sonos, only to be reversed by the Federal Circuit, illustrating that equitable arguments can be a powerful tool for lobbying the judge even when they cannot reach the jury directly. The panel concluded that storytelling accessibility is the decisive factor in whether equitable themes actually move a jury — a concrete narrative like “you had the document and chose not to give it” resonates powerfully, while technical arguments about prosecution delay timelines cause eyes to glaze over — and that the most powerful equitable cases tend to settle precisely because their strength is so clear.
Key Learning Points:
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Equitable Defenses Are Statistically Rare as Dispositive Trial Issues — But Are Still Worth Pleading Strategically: Of 305 terminated cases with equitable defenses pled over 30 months, only three resulted in a party actually prevailing at trial on those specific equitable grounds — suggesting these defenses are systematically overvalued as case-dispositive tools — but they retain significant value as settlement leverage, as judicial lobbying instruments in bench trials, and as thematic scaffolding that allows defendants to get bad-actor evidence before the jury through overlapping validity and infringement arguments (David Bloch; Clem Roberts).
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You May Not Need a Formal Equitable Defense to Tell an Equitable Story at Trial: A standard invalidity defense based on prior art not disclosed to the PTO, an on-sale bar argument, or an improper inventorship challenge can convey the same “patentee concealed or withheld” narrative to a jury that a formal inequitable conduct or unclean hands defense would — without the procedural complications of bifurcation, the strict pleading requirements of Twombly/Iqbal, or the evidentiary battles over what overlapping evidence the jury can hear — making the thematic goal often achievable through the core validity case alone (Clem Roberts; Bhanu Sadasivan).
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Advisory Verdicts and Non-Bifurcation Are the Best Structural Tools for Getting Equitable Themes to Juries: When equitable defenses are live at trial, the most effective approach is to resist bifurcation by arguing overlapping evidence and request an advisory jury verdict on the equitable issues — accepting that motions in limine battles will be intense and that judges will typically hold a tight line on what gets in — while simultaneously planning the closing argument from day one of trial to stitch together whatever overlapping evidence does come in into a compelling bad-actor narrative that can influence the jury’s infringement and invalidity findings even if the equitable defense itself remains a bench matter (Greg Sobolski; Clem Roberts; David Bloch).
Program Transcript
Key Terms: Equitable Defenses, Inequitable Conduct, Unclean Hands, Prosecution Laches, Equitable Estoppel, IPR Estoppel, Patent Misuse, Unenforceability, Affirmative Defense, Waiver of Defense, Twombly/Iqbal Standard, Patent Enforceability, Bad Actor Defense, Conduct-Based Defense, Deceit Standard, Inequitable Conduct, Materiality Standard, Intent to Deceive, But-For Materiality, Withheld Prior Art, False Inventorship Claims, Evasive Testimony, Candor to Patent Office, Duty of Disclosure, Rule 56, Therasense Standard, Unenforceability Finding, Inequitable Conduct Bench Trial, Post-Trial Inequitable Conduct, Unclean Hands Doctrine, Reprehensible Conduct, Unfair Advantage, Loss of Court Confidence, Deceit Standard, Integrity of Court, Love and Care v. Lauren, Discovery Non-Disclosure, Evasive Prior Art Testimony, Unclean Hands Jury Instruction, Prosecution Laches, Unreasonable Delay, Inexcusable Delay, Six-Year Presumption, Equitable Estoppel, Misleading Conduct, Reliance Element, Investment Reliance, Silence as Misconduct, Specific Reliance Standard, Google v. Sonos Laches, Fraunhofer Estoppel, Bifurcated Trial, Non-Bifurcated Trial, Advisory Jury Verdict, Bench Trial, Jury Trial, Overlapping Evidence, Motions in Limine, Equitable Defense Presentation, Trial Clock, Eight-Hour Trial Limit, Sidebar Practice, Line-Drawing at Trial, Bench Trial Equitable Issues, Lex Machina Data, Docket Navigator Data, 305 Terminated Cases, 30-Month Study Period, Estoppel Cases, Inequitable Conduct Cases, Unclean Hands Cases, Laches Cases, Trial Rate Analysis, Dispositive Issue Rate, Healthy User Bias, Epidemiological Study, Settlement Dropout Rate, Defense Winnowing Rate, Love and Care v. Lauren, Capex Maxwell, Staton Techne, Lindis Biotech, SMR v. Magna, Sonos v. Google, 360 Heroes Case, Amprex Cosmax Case, Puma v. AstraZeneca, UPenn v. Genentech, Cook Medical Case, MGI Case, Hatch-Waxman Cases, Equitable Storytelling, Bad Actor Narrative, Jury Accessibility, Eyes Glazing Over, Closing Argument Strategy, Overlapping Evidence Strategy, Thematic Defense, Inventor Credibility Cross, Document Withholding Narrative, On-Sale Bar Narrative, Non-Disclosure Narrative, Mock Jury Testing, Advisory Verdict Strategy, Overlapping Evidence Argument, Motion in Limine Practice, Advisory Jury Verdict Request, Non-Bifurcation Motion, Jury Instruction Equitable Defense, Doctrine of Equivalents Limitation, Inventorship Defense Jury Instruction, Patent Misuse Jury Trial, Orange Book Late Listing, FDA Document Non-Disclosure, Settlement Value Impact, Strong Equitable Case Settlement, Pre-Trial Resolution, Settlement Leverage, Case Dropout Rate, Healthy Patent Selection Bias, Litigation Cost vs. Settlement Value, Rational Settlement Theory, Equitable Defense Settlement Signal, Judge Alsup, Judge Albright, Judge Hall, Judge Sweeny, East Texas Judges, Delaware Judges, Judge-Friendly Venue, Judicial Skepticism, Post-Trial Equitable Motions, Bench Decision Influence, Judicial, Prior Art Non-Disclosure to PTO, On-Sale Bar Defense, Improper Inventorship Defense, Undisclosed Prior Art Cross-Examination, IDS Non-Disclosure, Competitor Knowledge Questions, PTO Disclosure Record, Thematic Validity Defense, Garden Variety Invalidity Defense, Inventorship Exclusion Defense
[SARAH GUSKE]
All right, everyone. I’ll give a couple of opening remarks while our panelists, first panelists get situated. I’m Sarah Guske.
I will be your litigation track guide for the day. A couple of pieces of housekeeping.
Today is the two-track day. The big room has been split in half. Please do not walk through the prosecution track to get to the coffee.
(Sarah laughing)
There are doors to my left, just as you go out into the lobby. That’ll get you right out to the food and caffeine.
So just keep that in mind. The other two hints here are on the agenda are the two-hour sessions that have been strategically saved for the end of today. The second and final day are the special credits sessions. So, the second to last in this room is a tech credit for California, and the last, as is traditionally the case, is the coveted ethics.
Sorry to today’s first panelists. So with that, I’m gonna turn it over to Bhanu Sadasivan, hopefully I nailed it there who will be the moderator of today’s first panel. Bhanu is a partner at McDermott mostly doing patent litigation across a wide variety of technologies and even life sciences.
And I know her and her fellow panelists will have lots of interesting things to say about equitable defenses, which I think we can all attest that almost on a daily basis in docket navigator alerts or IP360, we’re seeing something about equitable defenses, whether at the pleading stage or summary judgment seems to be resurging in interest. So, with that I’ll turn it over to Bhanu.
[CLEM ROBERTS]
Can I just say, I’m shocked that equitable defenses is less coveted than ethics.
(panelists laughing)
[AUDIENCE MEMBER]
I mean, we said to you in the morning that you were going to go off.
[DAVID BLOCH]
That’s a foolish.
[BHANU SADASIVAN]
Well, that’s worked very well. I was being sarcastic, but thank you, everyone. Welcome to our panel. There’s a slight alteration to the title.
We will call it as Using Equitable Defenses to Support Trial Peeps. And before I start saying anything, let me first introduce my distinguished panelists. I have David Block over there, and David is a shareholder at Greenberg Traurig and an IP litigator.
David has written extensively with more than 50 published articles, and is a co-author of IP and Technology in Government Contracts.
[DAVID BLOCH]
Soon to be a major motion picture.
[BHANU SADASIVAN]
And I have Clem Roberts here who is a partner at Orick, and he’s a global co-leader of Orick’s Technology and Innovation Sector. Clem is a trial lawyer with a focus on IP litigation in complex commercial cases. And then I have Greg Sobolefsky here, who is a partner at Cleary Gottlieb, and Greg is also a trial lawyer who represents clients ranging all the way from startups to Fortune 100 companies in both patent and trade secret matters, and it’s an honor and a privilege to be with these distinguished panelists here. Just to give a little context, or just to put things in perspective it’s an unusual topic, equitable establis, because this is not about attacking the patent, which is the classic defense that all of us do.
It’s a little bit more of, ‘Hey, rather than attacking the patent, let’s just attack the person who is asserting it.’ At a very high level, right? Whether it’s a patentee or if it’s the patent owner. Okay, a patent owner, you come with unclean hands, so the patent shouldn’t be held enforceable.
You did something bad with the patent office, inequitable conduct, therefore the patent should be unenforceable. When you were prosecuting the patent, you unreasonably inexcusably delayed prosecuting the patents, and that caused problems, and so prosecution alleges, the patent should be unenforceable.
Then of course there is the equitable establi, I unreasonably because of your conduct, I thought you were not gonna sue me. No, you sued me, and I made all these actions.” So it really is, so, in a thematic sense, it’s really the person, the actor, as opposed to the, to the patent here, and one of the in terms of unclean hands, one of the things that has came out was in last year, in 2024, Federal Circuit decision in the uh, I think it is the, I think of it as the baby throwing their mat away case.
[DAVID STITCH]
Love and care.
[BHANU SADASIVAN]
Yeah. Love and Care v. Lauren, and that, what was interesting is that the lower court found it and the Federal Circuit affirmed it, but there were two main things that they said. They said that the defendant in this case had not disclosed these patent application which are important for claim construction purposes that they disclosed it during the discovery period, they didn’t disclose it during summary judgment motion, so the judge was not, did not think that was okay, and the other thing he also found was that there’d been a lot of questions about searches for prior art, and they said, “Oh, we never conducted it.”
It turned out the judge felt that that wasn’t quite accurate, evasive testimony, but, I mean, what was interesting to me was, I’ll write a couple of quotes from it. The court said the defendants by quote, “By deceit and reprehensible conduct, attempted to gain an unfair advantage.” End quote.
And they also said it was offensive to the integrity of the court, resulting in the court’s, quote, “Loss of confidence in defendant’s candor,” so this is the context. It’s more of not doing so well.
Thematically, it seems like a very powerful way of attacking a case. So now I’m, I’m gonna start with with, with, with David. Now this seems like a very powerful story. Does it, Do you find that if equitable defenses are pled in the cases that you have looked at, it actually helps
[DAVID STITCH]
So that is an interesting question, as far as I’m concerned at least. And to see if we could answer it I started spelunking through some datasets that we built up of cases and trials that went all the way, oh, sorry. I’m not sure, push it forward. There we go. Just like that.
[DAVID BLOCH]
And while you mess with that, I’ll keep talking. It’ll be incredible.
Tried to figure out in a sort of a finite window how many cases actually brought these equitable issues all the way to trial, and then how many of them got to an actual jury or a decider and how they played out. And like you, I, my intuition was that this is sort of the defendant’s version of the classic patentee story. “Look, I’m Horatio Alger.
I invented this wonderful thing, it has a ribbon on it and a red stamp. And it’s, you know, the government granted it, so it must be good. And you guys are copycats,” right?
The classic plaintiff’s approach, no matter who you are as a plaintiff. And the idea on the other side, the defendant wants to have that story, right?
That, “Well no, you didn’t invent that. You cheated, you lied, and you did something that means that your patent is either invalid or unenforceable or otherwise should be denigrated by those deciders of fact.” To my surprise, this stuff gets to deciders very rarely. So I looked first at Docket Navigator, and I looked at that because I tend to find it easier and more reliable frankly.
Docket Navigator on this one though is not very good. When I ran my initial searches just trying to find out the number of cases that had gone to trial with the cases that involved these issues and had gone to trial, so that’s disjunctive. So you have X number of cases with these allegations, and then they went to trial. Docket and I’m looking at January 1, ’23 through June 30, ’25, so 30 months, and there’s no magic to that.
I just wanted to do it after the zombie apocalypse, and I wanted it to be far enough from here in time that we could look back and see what had happened if we were interested sort of from, you know, June 30 to now. The problem with Docket Navigator is that it was both under and over-inclusive. It came up with a total of 70 cases that fit that criterion.
That number is way too low. More cases than that were filed in 30 months and ended in those 30 months that included these issues in some way, shape, or form. It also captured stuff that was sort of not responsive, right? It captured ITC cases.
Well, an ITC case is completely different. It’s never going to a jury, bifurcated or not. It captured Court of Federal Claims cases. Same issue.
It captured Federal Circuit cases. Those aren’t trials at all. So for some reason, the coding in Docket Navigator is not very good for this particular question.
So I was forced to go to Lex Machina, and Lex Machina, for whatever reason, was much more reliable and more consistent with what I was expecting since for example, also Docket Navigator. Yeah, I know, I just said.
(laughs)
And I know a guy.
[CLEM ROBERTS]
We have no reason why you’re asking for that.
[BHANU SADASIVAN]
Yeah, we were not trying to plug you.
[DAVID BLOCH]
Well, and the other thing about Docket Navigator is, there are two or three cases that of course we all know about that absolutely fit these criteria. And Staton Technia, I’m not sure I’m saying that right, but that Staton case with Dr. Ahn and Samsung, Docket Navigator didn’t pull that one up on my query. So either my query was completely defective, which I doubt or that database is just not well-coded.
Lex Machina was much better. So what we find is in this 30-month period, you’ve got 305 terminated cases, so cases that are not currently pending, that have ended in some way, shape, or form that included in their pleadings or somewhere in their case file allegations of either estoppel inequitable conduct, unclean hands, or laches. Now you would think that those would all overlap.
They largely But do not entirely overlap. So understand, and again, this is just the number of cases where these allegations are made and that the cases are over, right?
So of these you had for estoppel cases, you had 297 cases that terminated of which 21 reached trial. Now again, that doesn’t mean they were tried on these specific issues, but it means they went to trial, right? Which makes some sense. For inequitable conduct, you’re a little bit lower.
It’s 20 cases reach, and so there’s a lot of overlap here. So 6% of all trials and 9% of cases where inequitable conduct was raised.
For unclean hands, you’re at 19, 5% of all trials, 9% of cases where they were raised. And then for laches, you only have 194 cases where laches was asserted, which suggests that, you know, compare that, you’ve got another you’ve got another 100 cases where estoppel’s pleaded than laches. And so that tells you something about how those defenses are pled and how much more difficult they are to plead. Of which only 13 reached trial on laches-related issues.
That’s 4% of all trials and 7% of cases where laches was raised. So interestingly enough, of those cases, so we’re, you know, again, between 13 and 21 considering the overlap, in only three of Which is to say that in three of these cases, of the 20 of the between 13 and 21 cases that made it to trial where these issues had survived to trial, in only three did the challenger, did the entity the party normally, the defendant raising equitable issues prevail at trial. So we have this notion that this is gonna be this incredibly powerful defense for patentees, right?
That the patentee will find something about the file history or about the conduct of the plaintiff, and that will be this incredibly powerful defense. Statistically speaking, that does not appear to be the case, right?
If you’ve got three cases over 30 months that actually make it to trial and in which those are the dispositive issues, that suggests, at least to me, that perhaps defense side lawyers are over-emphasizing or are over-valuing equitable defenses.
[CLEM ROBERTS]
Question, were those the dispositive issues on the equitable issues or was dispositive in favor of the defendant, but the equitable issue reached trial?
[DAVID BLOCH]
Uh, both. So the three cases in question where are they? I have the list.
It’s it’s Capex Maxwell, it’s Staton Techne, Teckea and then it’s Lindis Biotech and in each of those you had a win specifically on the equitable issues, right? Now interestingly enough, oftentimes those are cases where the patentee also loses on merits issues, right? So you’ve got the inequitable conduct claim and then they don’t infringe either, right?
Um, CAPEX, you had no infringement and invalidity but you also had fake, you know, false inventorship claims. So basically, defense wins on everything and maybe that’s part of the pattern here, right?
You know, and the hope is of course, you get the decider of fact to get so exercised by these terrible things that you’ve told the trier of fact, that the trier of fact is more likely to rule on infringement or invalidity as well as on the equitable issues. Staton Techea, I think we all know about that. There’s a bench trial there.
Now there, you never reached validity or infringement because the court wiped that case out on the equitable issues before trial bifurcated, tried those first and then in the Lindis Biotech, you had, actually that’s the one, that’s the one where you’ve got validity and infringement, so the patentee wins at trial and then there’s a subsequent bench trial on inequitable conduct and the court wiped that out in Delaware. But most of the time, you’ve got these issues that are in the case, but they’re not the case dispositive issues of that 21. And I know, Greg you had at least one where that, you saw that exact movie, right?
[GREG SOBOLSKI]
You’re talking about SMR Versus Magna?
[DAVID BLOCH]
I am. I was going to talk about that now, but I wanted to make sure you had the chance to say it.
[GREG SOBOLSKI]
No, please.
[DAVID BLOCH]
No, no, go.
[GREG SOBOLSKI]
This is–
[DAVID BLOCH]
It being your case, you should probably talk about it.
[GREG SOBOLSKI]
Ours, but so that was a case that had an element of inequitable conduct that was tried to the bench while the jury was deliberating. So the setup that David is talking about, you know, we can talk a little bit about the presentation of evidence and the extent to which the presentation of evidence to the jury overlapped with, with the inequitable conduct issues. But actually the way that played out is it, during trial what you could say to the jury was hotly contested.
[DAVID BLOCH]
Right.
[GREG SOBOLSKI]
You have the subsequent inequitable conduct bench trial, but then the verdict came in. It was a verdict of no infringement and invalidity so the judge didn’t, you know, have to go any further than that. But that was the sequence of events and you spent pretty much every day in court having sidebar about the line that you’re going up against.
[DAVID BLOCH]
Right. So in other words, and that’s really, that turns out to be the more common outcome, right? That you win or lose on validity infringement, there is some sort of decision on the equitable issue and the equitable issue ends up not being the dispositive issue in the case.
Either it’s denied, the court finds no inequitable conduct, finds no unclean hands or you’ve got the infringement issue and the validity issue and you don’t really need to reach the unenforceability issue as in the Magna case.
[DAVID STITCH]
So there’s a huge winnowing from the time you plead anything–
[DAVID BLOCH]
Correct.
[DAVID STITCH]
To actually whether going before a jury trial or a bench trial.
[DAVID BLOCH]
Now I do want to, one other point on that though, I didn’t really run a control on that ’cause you know, there is winnowing period, right? I mean, the number of cases that actually get to trial is vanishingly slim compared to the number, so it might be the case that these percentages would track on any other metric I chose to look at, right?
I mean it’s not gonna track on, I mean if you did individual, you know, 102, 103, 112, would I have the same percentages? Maybe so, and I didn’t check that. But it is striking how few of these equitable issues ever get in front of the decider.
[BHANU SADASIVAN]
And so from a procedural perspective, Clem, can you speak to a little bit about how these things are, the evidence is developed, the information developed, the experts, or facts or mils and things like that?
[CLEM ROBERTS]
Sure. So I did try to look at whether or not equitable defenses dropped out at a higher rate than other defenses. And it is extremely hard to actually figure that out from the data sets.
My, I have some supposition about it from what I saw, but I don’t have any sort of statistically significant evidence to back it up. So I think there’s two, well, maybe three issues.
The first one is you have to plead equitable defenses in your answer because they’re affirmative defenses, and so if you don’t plead them, then you are at risk of losing them. And everyone in this room has the experience of when they were younger of partners yelling at them not to waive any defenses early on in a case. And so, I think the tendency is that people plead equitable defenses all the time when they do not have a strong factual basis for it and they’re just saying, “Well, maybe we’ll develop it in discovery. All I need is one sentence now to get past Twombly/Iqbal, and if I get past Twombly/Iqbal, right, and, and maybe the defense isn’t even gonna move to dismiss on it ’cause it’s a waste of time, the plaintiff isn’t gonna move to dismiss, you know, I can, I can see what develops later.”
So, I tend to think that those defenses are pled early in cases regardless of whether or not the folks think that they have merit. The second is, any time you’re looking and describing what happens, like the research David did or the research I did, it’s not a controlled study.
It’s what they would call in medicine an epidemiological study, and that can show you correlation But it can’t show you causation, and it suffers from healthy user bias, right? And I think something like that is going on here too, which is the patents that tend to reach trial, tend to reach the decision-maker are patents that don’t have major problems, right? If a patent has a major problem where there’s a real equitable issue that really is threatening from the trier of fact perspective it’s more likely that the settlement value is gonna come down below the cost of litigation and the thing’s gonna resolve. So I think the if you’re trying to figure out why the dropout rate is so high, part of the reason the dropout rate is probably so high is because the, you know, if there is a serious inequitable conduct issue that gets discovered or there’s a material piece of prior art that gets left out people go back to the PTO and file IPRs, right?
There’s a whole bunch of other variety of reasons why those weaker patents are gonna end up getting resolved before trial or before they reach the decision-maker, at least at a jury trial. And then the third thing that might be going on, and again, this is supposition, I don’t have evidence for it is that a very high percentage of patent cases get brought in districts where the plaintiffs know that the judges are relatively friendly to patent cases. And so if you are of the opinion that your equitable case is strong enough that certain judges are likely to grant those equitable motions, right?
Like we all have been in front of judges where, you know what? That’s probably just not a high percentage probability regardless of how strong we think the actual evidence is. And maybe a different judge might, but there are some judges who are very skeptical of those defenses and very skeptical of people throwing mud at plaintiffs and so it’s just not among the things that you’re gonna select to spend your very limited trial time on.
If you got a clock, you got eight hours to present your case, you’re defendant against nine patents, how much time are you gonna spend investing in an equitable case in front of a judge who’s extremely unlikely and unfavorable to grant it? I think it’s low. But again, there’s no evidence, there’s no way of teasing that out from the data that’s available.
What I did try to do was figure out whether or not equitable defenses drop out at faster rates in, for example, front of Judge Albright or in front of East Texas or in front of certain judges in Delaware, and I couldn’t substantiate that that’s the case. I’m not saying it isn’t the case, but I’m saying that I couldn’t, from the evidence, find evidence that they actually drop out faster and I– I looked pretty hard.
So that’s kind of, I think all of the reasons that we might be seeing for the pattern that David and I both saw in the research, which is that these things do drop out at a very high clip. But I think there’s some structural reasons for that.
[GREG SOBOLSKI]
Question, Clem. They drop out at summary judgment or, what’s the mechanism that gets this out of the case?
[CLEM ROBERTS]
Yeah, there’s a couple of mechanisms. Mechanism one is that it doesn’t ever reach a decision, right? So like, you know, there’s a motion, there’s a dismissal that’s a stipulated dismissal and it didn’t reach a decision, so that’s a huge percentage of the cases. There are some decisions on summary judgment, there are some motions in limine that exclude evidence and then you find that just not all of the issues are presented at trial.
But it’s, it is actually a relatively common occurrence that something is pled in the complaint and if you look at things where it is pled and the case reaches trial, there is nothing in the record that tells you why the defense dropped out. Like, there’s no motion in limine that excludes a key piece of evidence, there’s no summary judgment issue on the equitable defense.
It simply does not get presented, and that is actually a very large fraction of the cases that you actually see where it’s pled And then there’s a decision.
[BHANU SADASIVAN]
And so, one of the things it sounds like, a lot of these defenses go in a bifurcated trial, which means it’s going more towards the judge than really not before a jury. Now, y’all can think of it as a great jury bait.
Are there cases where they’re trying to bring in at least some element of the equitable defense to try to show in front of a jury to, again, skew the whole bad actor scenario? Did you find anything?
I know you looked at that, Craig.
[GREG SOBOLSKI]
Yeah. Good morning, everybody. So the answer to your question is in every case where there’s an equitable element that’s preserved that you could present it at trial, you are trying to bring that in for sure.
If you’re not doing that, you should probably rethink why not. In that subset of cases where those defenses make it to, to trial, what you see almost invariably, I’m not sure I saw another example, is the the defendant is gonna argue that you oughta be able to present without bifurcation. So, that you don’t want to separate liability from the equitable defense, on the grounds that you’ve got a lot of important overlapping evidence and rather than bifurcation because you’re not gonna have a good chance of getting the jury to decide the issue, you ask for an advisory verdict. That is, I think, your best bet structurally at trial to be able to do, you know, more than just the presentation of overlapping evidence, but go up to the line on a theme that leverages the evidence that you can get in.
So what does that look like? For those of you who do trial work, you know that the motions in limine practice in cases that have these equitable defenses is intense.
The moment it’s pled, you can predict sort of two or three years later, at least one of the mills is going to be. Um, the interest, the most interesting precedent that I saw recently was actually out of Delaware in the, it’s I think UPenn versus Genentech. Um, I think it was Judge Hall actually who said, “I’m gonna allow the jury to hear more than you would have thought.”
Which I think was a summary judgment stage ruling. Unfortunately, not unfortunately, the reality is that case did not make it to trial, so we’re not gonna know where that goes. Um, but there have been a couple cases like that in the last couple years where you have some judges and some courts, there was one in the Southern District of Indiana, Judge Sweeny, not a ton of patent cases there, but some, that allowed the, the presentation of evidence, at least theoretically, to go to the jury because it related to, you know, infringement, non-infringement invalidity.
But then what you see when you go and look at the trial transcripts to see how that shook out, almost invariably the judge holds the line and says, “You haven’t sort of convinced me that there’s enough overlap.” And the defense trial lawyers are not able to say very much. That’s at least sort of anecdotally and when you read the transcript, it’s hard to know quantitatively how that bears out because the nature of these decisions are not gonna be readily accessible. Would also very much welcome, you know, those of you in the audience who do these types of trials, what your experience is.
But in effect, the way to get the theme out by leveraging the defense is you have to be willing to go up to the line and what the line is is gonna be hotly contested and super subjective. I haven’t seen a case, at least in the last several years from the research, where the defense was able to go, you know, the defendant was able to get to a point where the theme was so hotly based on the equitable defense that you’d think, “Wow, I wanna replicate that on that side of the playbook.”
But it’s sort of a give and take. But I’d flag the, the decision in, in the Genentech case for those of you who are preparing to, to litigate these things, because it is a potentially helpful one. Though, of course, these things are always super fact sensitive.
[CLEM ROBERTS]
Yeah, I was also gonna mention that I also think you don’t need an equitable defense in the case to do a lot of what you would otherwise get out of an equitable defense, right? If you have a invalidity argument, you are almost always basing that invalidity argument at trial on a reference that was not disclosed to the PTO. If you’re going in front of a jury with a reference that PTO considered, I think, the conventional wisdom is, you’re toast on invalidity. So, you’re going in with a reference that they don’t and you will almost always ask them, “Well, sir, you’re experienced,” to the inventor, “you’re experienced, you’re familiar with the field, you tracked your other competitors, you knew about the art in this field, and you didn’t disclose this.”
All of those are questions you get to ask, right? And so, those are all questions that get to the same idea of knowing about the prior art, knowing about the company that was responsible for the prior art and not disclosing it to the patent office.
So thematically, that’s very similar. Similarly, if you have an on-sale bar, right, you did not tell the patent office that you were selling this product in the marketplace.
You didn’t put that evidence in front, but in fact you were selling it. Well, you didn’t put this document in front of the PTO and you didn’t put this document, and those documents were not in front of the PTO. And most judges will let you ask the witness whether or not they put that evidence in front of the PTO ’cause it’s actually not contested ’cause there’s the statements in front of the PTO about what they checked off.
“This, sir, this document isn’t on the list, correct?” So you can get that evidence in. So, the thematic idea of withholding or not being fully truthful with the PTO, I’m not sure there’s that much of a difference in terms of what a judge will let you get away with when you’re doing an explicitly based equitable defense than simply if you’re doing your sort of garden Mark 1.0 invalidity defense. You can still put in a lot of those themes and, in my experience, I’m not sure that the, when you’re running an equitable offense, you get a lot more thematic material to work with in front of the jury.
[BHANU SADASIVAN]
And going down that line of doesn’t have to be a classic equitable defense, it’s just more in the validity, inventorship is one, right? That’s a little bit of a borderline even though it’s a validity of the patent and yes, the district court can correct the inventorship, but really going this whole thematic idea of, oh, you did not name the right inventor or you excluded someone, again, it’s a bad actor. It’s you’re up the shenanigan idea.
I’ll throw it open to the team here. Does that help?
Is that helpful in terms of defendants getting better at a verdict?
[CLEM ROBERTS]
So I think, I don’t know whether it’s helpful or whether you could prove it empirically, but I do want to point out that, like, in Hatch-Waxman litigation or when you’re in front of a judge, all the evidence comes on in front of the judge because the judge is the decision-maker, so you have a unified trial. And we’ve been talking about jury verdicts and, like, whether you can sway the jury with the evidence.
I’m not persuaded that you can’t sway the judges with the evidence. And so those are the situations where, in some sense, I’m more tempted to lean super heavily into the equitable defenses because the judge may not agree with you on the equitable defense, but I can’t help but think that if the judge sees the evidence and if the evidence is let’s say one standard deviation above mean, it does strike the judge as poor behavior, you’re more likely to get a bounce in terms of the judge’s decision. Um, we were on the losing side of this, but I’ll give the Sonos v. Google case that we tried in Northern California. We won in front of the jury, they made a whole bunch of equitable arguments and then Judge Alsop decided the post-trial motions in their favor and against us on a novel equitable issue that’s now been overturned by the Federal Circuit.
But I think that was entirely Judge Alsup deciding that he didn’t like what Sonos had done, which was write new claims in the specification after Google had launched its product based on specification after Google had launched its product. He didn’t like that, and so he then found an equitable hook to take the jury verdict away. So I think that can be very effective. Now, again in that case, it didn’t stand up in front of the Federal Circuit, but I think that, that is an effective way of lobbying the judge, and I wouldn’t you know, I wouldn’t say, “Oh, I can’t get it in front of the jury And so it’s not worth doing,” especially where you have a bench trial, right?
[DAVID BLOCH]
Yeah, that’s right. I mean, and in terms of sort of how it’s played out, again, we have such a small data set that it’s hard to draw any sort of real statistical conclusions. But uh, in 360 Heroes, there was an inequitable conduct jury instruction which was about limiting the application of the DOE, the doctrine of equivalence, and that was a case that Bill Ramey lost, which is a phrase that I think you say a lot.
Yeah.
(laughing)
But still, I mean, they got that defense in and Delaware allowed it. There was improper inventorship defenses in the jury instructions at MGI that was a claim. No infringement, all claims invalid, so, you know, maybe that helped.
There’s an interesting case where it’s the Amprex Cosmax case, I don’t know if anyone’s paid any attention to that, East Texas case. But that’s one where the court allowed the defendant to try patent misuse to the jury and you actually got a weird sort of split verdict and validated two patents. One patent was infringed and willfully infringed, so it was a three, four million dollar outcome for the plaintiff. They actually let the jury hear the misuse defense.
And then there’s a really fun one, thinking about how Delaware started to look at this, there’s a a pharma case called Puma, Puma v. AstraZeneca in which the patentee did not timely put its patents into the Orange Book. So this was not a classic ANDA case where you’ve got your stay and it’s a bench trial, it was a jury trial. The jury found that there was inducement, found the patents valid, and then there was a bench trial and unclean hands and waiver, and it was all about this ‘late Orange Book’ listing, and the judge was like, “Why wasn’t that presented to the jury?” The judge actually criticizes in the subsequent bench trial the failure to present evidence about this sort of belated Orange Book listing to the jury because he apparently thought that was a much more interesting. He Or she, I’m not sure who the judge was, but the judge, ended up rejecting the unenforceability defense at the bench trial, but strongly criticized the you know, the target, the defendant for having failed to raise these issues in front of the jury.
So it, goes to sort of Clem’s point and Greg’s, know, actually, they may think these issues are relevant to the things that juries do decide even if you’re not trying the actual defense to the jury, the Puma case was especially interesting for that to me.
[GREG SOBOLSKI]
I actually have a question for Clem or David. From the 70s equitable defenses that made it far enough that you might try them, did you get a sense of the fraction that was estoppel and then the fraction that is estoppel that’s IPR estoppel? And, and I’m asking that question ’cause at some level everyone always thinks about unclean hands and equitable conduct ’cause you think that’s where the kind of more salacious allegations are, but sometimes the straightforward or more kind of less salacious equitable defenses are a path in.
Ipr estoppel has a, a Croy issue, but–
[CLEM ROBERTS]
Yeah, I didn’t look at that ’cause that’s generally not pled, right? So when I was looking at pleadings versus outcomes–
[DAVID BLOCH]
Okay.
[CLEM ROBERTS]
And so that one just wasn’t part of my dataset.
[GREG SOBOLSKI]
Got it.
[DAVID BLOCH]
Yeah, and I didn’t really manage to catch that either, but I was able to figure out how many cases had estoppel issues. Equitable estoppel issues, but in terms of the extent to which they were estoppel issues based on IPRs, I wasn’t able to tease out.
And again, part of it’s just, I mean, the number of cases that went to trial–
[GREG SOBOLSKI]
It’s just so small.
[DAVID BLOCH]
Yeah, with estoppel you know, 21 reached trial when estoppel issues were still live in the case and of those, let’s see many, I mean, were only three, again, other problem is that for most of these, was pled in all 21 of these cases, And equitable conduct is pled in 20 of the 21. Unclean hands in, what, 19 of the 21, and then laches in 13 of the 21, so it’s, you know, it’s really hard to tease that out.
Now the jury instructions–
[CLEM ROBERTS]
Yeah, and I’m also hard-pressed to think of a way in which IPR estoppel is gonna make it in front of the jury. Like, I mean, my experience is normally it’s either uncontested because people file with the PTO as part of it that they’ll submit to estoppel as a result of it as part of trying to get the PTO to institute, although good luck on that anymore. And I just haven’t seen any cases where the issue of whether and the extent to which someone was bound by IPR estoppel was in any way presented to a jury. So it feels like a motion of elimination to me.
[GREG SOBOLSKI]
Yeah. It probably should be. So I would flag, and I ask just because the one case where I happened to see it is Cook Medical where a judge decided expressly to put that issue before the jury. Sort of unusual.
[DAVID BLOCH]
Right.
[GREG SOBOLSKI]
It’s not in a regular sort of patent district. It’s not in Delaware.
[DAVID BLOCH]
What was the thinking, or reasoning behind presenting that to the jury?
[GREG SOBOLSKI]
That there was enough overlap with liability that it was just gonna go to the jury at least as a theoretical matter. But the possibility was open. In other words, it wasn’t foreclosed as a matter of law the way you would expect it probably would turn out in, say, Delaware or something like that.
Yup.
[BHANU SADASIVAN]
Um, so, so Greg, I know you were also thinking of maybe other creative ways that you could try to get some of these equitable defenses before a jury. Do you want to speak a little bit about that?
[GREG SOBOLSKI]
I mean, I don’t think, I don’t know that there is some special creative way other than the sort of, you know, creativity of trial lawling. I think you have to be willing to win the framing fight on what the line is and just go there. But sort of prospectively, I don’t think there’s a strategy you can devise that’s a surefire winner. You have to be willing to just have that fight.
You have to be willing to say it and then have the sidebar, right? There’s a little bit of risk management and tactical judgment that, of course, you plan way ahead of trial, but then as the trial day unfolds, you just see where you can go. I think it’s very judge-dependent.
I think part of it is how the judge perceives you have sort of behaved or presented the defense.
[DAVID BLOCH]
Yeah, well we’ve got a question on the far right. There we go. My far right.
[AUDIENCE MEMBER]
Yeah. So when you’re talking about jurors, I feel like we know what’s shocking that patentees do. It’s shocking that they didn’t do this or that they did do that. And we’re all basing that on the context of law school and practice and doing this. And I just question whether equitable defenses are more listened to.
(indistinct conversation)
[GREG SOBOLSKI]
Sometimes the eyes are not even open.
(laughter)
[SARAH GUSKE]
But I mean, do you have a sense that jurors are getting it, so then it’s effective maybe?
[CLEM ROBERTS]
I think it depends on the story, right? Like, if your story is one that a jury can understand, right? Like, you had this piece of evidence in your hand, and you decided not to give it, right? And you have an email about why you didn’t give it, right?
That’s a story a jury can understand. If your argument is a more technical argument about, you know, “Oh, you waited too long. You waited for six years and one month, and the laches is presumptive after six years,” right?
I think that’s a very hard sell to a jury. So I do think you’re exactly right, and this is where the storytelling aspect comes in, and also where the evidence is that these things do not appear to be remarkably effective in terms of swaying juries, because I think it’s a rare case where you have a very persuasive narrative like that. And in those rare cases where you have those super persuasive narratives, I expect that the settlement value, right, is gonna be low enough. Even though there’s uncertainty, the strength of the patent is low enough that the very material costs of taking the case to trial swamp it, and so the parties are able to reach a resolution.
[BHANU SADASIVAN]
And I think that is precisely what equitable defenses can do if you can tell that story. And I’m sure we’ve all seen this in jury trial or even when we talk to mock jurors, and we find out what actually they remember. They’ll remember if there was an inventorship.
They’ll say, ‘Oh, this person got cut off. This person did all this work, was not named as an inventor.’ They’ll remember that. The details, you’re right. The technical stuff, probably not.
And so I think it is at the end of the day, the storytelling as to why this is unfair to the extent you can get to the jury.
[CLEM ROBERTS]
Yeah, let me give you an analogy. So in recent years doing a bunch of Hatch-Waxman litigation, and that’s plaintiff-side work on behalf of the pharmaceutical companies against generics.
And we routinely find that certain generics have lied and cheated when they’ve submitted their manufacturing evidence to the FDA. That’s just, like, a very super common thing. You’ll find examples where they’ve got 72 hours of batch test records, which are all one hour apart, and they’re all signed by the same person who purportedly oversaw all of them for 72 hours. Didn’t happen, right?
As soon as you uncover that kind of evidence, the case is settled. They never reach decision because the plaintiffs just fold up shop and go home, or the defendants, I guess, fold up shop and go home. The generics do.
So my point is, and that would be a bench trial, that wouldn’t even be a jury trial. But where you have evidence that’s, like, strong of, like, people actually doing bad stuff that a judge or a decision-maker’s likely to get upset about, my personal experience is those cases get resolved very, very quickly. It is, like, super rare for a party to say, “You know what?
I wanna go in front of Judge Alsop and have them beat me over the head with the fact that I submitted false documents to the FDA.” Like, if you want to do that, like, good luck to you, ma’am. Like, that’s just not, in my experience, it doesn’t happen.
[DAVID BLOCH]
And that’s pretty consistent with sort of what goes to trial, right? You know, you, if either one side or the other is overwhelmingly likely to succeed, people are rational enough, even Bill Ramey is rational enough, to sometimes cut bait, right?
You know, you get to trial on these or any issues only because both sides think they have a story to tell.
[CLEM ROBERTS]
I wanna know what Bill Ramey did to you in your childhood.
[DAVID BLOCH]
You and me both. You know, I don’t know what it is he resents about me so much.
[GREG SOBOLSKI]
So I think your point–
[DAVID BLOCH]
Jealous of my hair.
[GREG SOBOLSKI]
Is a great one. That was a really good point. The one thing I would say is, putting aside the eyes glazing over, or assume they do, if you can use an equitable defense such that you get that extra marginal piece of evidence in at trial in front of the jury that you otherwise might not get, I think you will have that much more likelihood of a compelling way to stitch the evidence at closing where the eyes won’t glaze over.
If you’re thinking sort of strategically long-term and then tactically at trial, why push this stuff understanding that, in the trial day, you’re not gonna be able to necessarily do a lot with it? Closing, in my view, is why you’re setting that up over two and a half years–
[CLEM ROBERTS]
But Greg, let me ask you, Let me ask you about your personal experience with that. So in the trial that you were mentioning where you had those hotly contested fights–
[DAVID BLOCH]
Magnum.
[CLEM ROBERTS]
Was there in fact evidence that you think you got in as a result of having those issues at play, that you think you otherwise would not have gotten in under, you know, 402?
[GREG SOBOLSKI]
I think the answer is yes, but I think it is also because that case had so much confusion abounding in it for a variety of reasons. It was also an interesting case where we walked in adjudicated infringers with 10 out of 10 IPR petitions having been denied, and shortly before Christmas, a Markman order where we lost every single term.
[CLEM ROBERTS]
Merry Christmas to you.
[GREG SOBOLSKI]
So that opens up creativity.
(laughter)
But the verdict was no infringement, all patents or all patents obvious. And I think there’s no question, but that’s kind of a unique case.
[CLEM ROBERTS]
I think it was Wordsworth, there is no phrase that serves to concentrate like the mind like the phrase, ‘Thou shalt be hung in the morning.”
(laughter)
[GREG SOBOLSKI]
Yeah.
[BHANU SADASIVAN]
All right. We have less than two minutes left. Not enough time for any questions, if anyone has. Any final concluding thoughts from the panelists?
[GREG SOBOLSKI]
Thanks so much.
[CLEM ROBERTS]
Go Warriors.
[GREG SOBOLSKI]
Thank you all.
[BHANU SADASIVAN]
All right.
(applause)