MATCHING PROCEDURES WITH GOALS C. Graham Gerst

1 Potential Goals of Small Claims Patent Court Eliminate strategy of patent suits brought for nuisance value Provide venue for enforcement of lower value IP I NTRODUCTION

P ATENT N UISANCE S UITS 2 Nature of Patent Nuisance Suits Patent infringement claim (often based on weak infringement claim/likely invalid patent) to leverage cost of patent litigation for settlement Nature of U.S. legal system Nature of patent cases Lessening problem? Baby/bathwater problem

P ATENT N UISANCE S UITS 3 Small Claims Court to Deal with Patent Nuisance Suits? Challenge 1: Plaintiff strategy Respond with procedures/incentives to entice plaintiffs? Challenge 2: U.S. Constitution (7 th Amendment) Cumbersome, difficult, and expensive to replicate Almost impossible to force plaintiffs into that forum against their will

I NEXPENSIVE V ENUE FOR E NFORCEMENT 4 Landscape Facing Meritorious Enforcers Expenses of assertion ($3-$10 million) Even with contingency counsel, must fund experts Damages law (and expense) Lack of injunctions, even against competitors Problem for U.S. economy

I NEXPENSIVE V ENUE FOR E NFORCEMENT 5 Potential Solution Pilot program, single location, but accessible from around the country Limited funding Chance to experiment Consent needed Which cases? Selection by plaintiff, but both parties must consent No injunctions Some limitation on damages available Past damages versus going forward Monetary amount Evidentiary rule at district court

I NEXPENSIVE V ENUE FOR E NFORCEMENT 6 Streamline Process to Lower Cost Specialized ALJs (consent needed) Require involvement by lawyers – gatekeeper function Extremely limited discovery – mandatory disclosures, with some discretion for additional written discovery No e-discovery Limit discovery of experts, loosen who is acceptable No mandatory mediation No multi-defendant suits Shortened time for trial, with some discretion for ALJ Appeal – need some second bite, but lots of deference Enforcement of judgment by district court (a la arbitrations)

MATCHING PROCEDURES WITH GOALS C. Graham Gerst