The Supreme Court just addressed parens patriae class actions: MISSISSIPPI EX REL. HOOD v. AU OPTRONICS CORP., Supreme Court, January 14, 2014 http://scholar.google.com/scholar_case?case=13125358902767902557&q=Mississippi+ex+rel.+Hood+v.+AU+Optronics+Corp&hl=en&as_sdt=2006 Standing discussed here: http://digitalcommons.law.umaryland.edu/cgi/viewcontent.cgi?article=2384&context=fac_pubs

David, preemption? I was thinking of a Federal DJ action asserting non infringement where the was a class representative, but where the state attorney general was also a party, his or her standing being derivative as a representative of the state's citizens -- like a father represents his kids.

Well he is during his homily. But I still do not get all the reading from the texts. Why doesn't he look at us and speak the words that we might reply? It is formal, I agree. But way too formal by a long shot.

David, on read text, why is that Priests always read from their books during Mass? They must know the liturgy by heart at some point? I can't imagine Christ effectively communicating if HE read from any texts.

Balance the risk to the discloserthat an amendment would use confidential information adverselyagainst the very substantial harm to the patent owner of not being able to use his litigation counsel in an IPR… --- On balance all I really see is hypothetical damage to the discloser but very real and substantial damage to the patent owner.

David, do you think a state attorney general has standing to bring a DJ class action (having one or more nominal plaintiff infringers) against the patent holder seeking a declaration that the class does not infringe where hundreds or thousands of the state's citizens were noticed? The problem of course is that infringement normally is from infringer to infringer. But if a class is notified, I think a class can be formed. But can the state attorney general help? Does he or she have standing?

David, an expired patent cannot be amended -- at least where scope is changed. Reason, the amended claim is barred from any damages by 252.

Derek, well I beg to differ. The vice that the prosecution bars avoids is removing unnecessary limitations to broaden the claims. During reissues, reexaminations, and IPR, claims can be narrowed. But if they are narrowed, the infringer gets absolute intervening rights and he is out of the case. How is he harmed?

In other words, if counsel or an expert receives "counsel only"(?) confidential information they would then be barred from IPRs. Of course, I think this is wrong because claim in IPRs are, like reissues and reexaminations, incapable of being broadened. There is no way a disclosing infringer could be adversely affected. What this does is strip patent owners of counsel most familiar with a case from defending parallel litigation. I hope that patent owners refuse to sign these kinds on protective orders and take a case up to the Federal Circuit ASAP.

Prof., I really don't think it is possible for a losing patent infringement defendant to file a fresh IPR given §315(b), a statute that requires an eye PR be filed within one year of service of a complaint for patent infringement.

You mean, functionality? Clearly there is a functional relationship to the CPU that depends on the instructions. But not when the claim is to the media itself. Sent from Windows Mail

anon, I think we are. On a good number of issue we do agree.

David, I think the courts exist to resolve genuine disputes and both sides should bear their own attorneys fees as a matter of course. The problem is that today, if not always, law firms litigate to drive costs up to the other side as a means of forcing settlements. I once had a long discussion on litigation tactics with a district court judge who used to be a litigator with a small firm who described in detail just how mainly large law firms did this to drive up revenue to themselves as well. One real solution to this problem is keep litigation costs low. The very best way to do this is shorten time to trial. It is amazing just how much this reduces litigation costs all by itself. This also explains why defense counsel avoid rocket dockets like the plague and patent owners prefer them.

anon, the court in Bertero required apportionment between tthe attorneys fees for defending against he bad faith counter claim, and prosecuting the cause in action that he himself had file. Based on the apportionment the court reduced the award of attorneys fees by $25k. It is noteworthy that the burden of apportionment was placed on the defendant in the MP case, otherwise all attorneys fees would have been awarded. The bottom line, attorneys fees for MP are damages. Attorneys fees for defense of meritorious claims can be apportioned because they are not damages. What David proposes is that attorney fees be awarded to prevailing defendants even for meritorious patent infringement claims filed by a patent owner. That is so beyond the pale -- I am sure the Supreme Court would strike such a statute down as facially unconstitutional.

Bertero v. National General Corp., 529 P.2d 608, 13 Cal. 3d 43, 118 Cal. Rptr. 184 (1974).

Attorney fees are recoverable as damages in an action for * prosecution. Balera v. National, 13 Cal.3d 43 (1974) Your whole thesis is that such damages can be awarded without proof of * prosecution, i.e., that one need not prove the cause of action was a sham. I really disagree. There is consistency between the Supreme Court cases on this topic and the law of * prosection. * the filter would not let me post the word. It begins with M.

I would also ask what are the damages one sustains when someone files a lawsuit against you? Litigation costs. I daresay that, for 1st Amendment purposes, the Supreme Court will treat actions for such "damages" in the same manner as a court award of exactly the same "damages" in the same case. To suggest otherwise is to elevate form over substance. Now consider that Congress further provided that full costs and attorneys fees could be awarded and would have to be paid interlocutory for filing and losing any motion? I can imagine the big bucks defendant exhausting any small buck plaintiff simply by filing a flurry of motions. Winning only a few might bankrupt the small fry.

David, I really think you are misunderstanding the Supreme Court. Your cite to Alyeska is one example. Your quote about attorneys fees and discretion was discussing the prior passage, I believe, where the court said this about the statute in question: "Under Title II of the Civil Rights Act of 1964, 42 U. S. C. § 2000a-3 (b),[35] the prevailing 262 party is entitled to attorneys' fees, at the discretion of the court, but we have held that Congress intended that the award should be made to the successful plaintiff absent exceptional circumstances." Then they conclude, "Under this scheme of things, it is apparent that the circumstances under which attorneys' fees are to be awarded and the range of discretion of the courts in making those awards are matters for Congress to determine." "Under this scheme of things" must be given weight. The Court apparently has no problem in protecting the right of the people to petition the courts for a redress of grievances. But we have never seen the opposite, where they have endorsed routinely awarding attorney fees to the prevailing defendant regardless of exceptional circumstances. The very case you quote indicates they are unwilling to do that.

Win FOR breach of contract? Let is not confuse the issue here. We are talking about the right of access to the courts for redress of grievances. This means the right holder, not the malefactor. I think there are cases about excessive punitive damages that are based on the constitution, but not on the first amendment. See, e.g., BMW v. Gore, 517 US 559 (1996); TXO Production Corp. v. Alliance Resources Corp., 509 US 443 - Supreme Court 1993

But, that only confirms that neither the Supreme Court, nor for that matter, any lower court have ever considered the issue. I daresay, that so long as there is discretion in the court, there may not be a problem.

David, in your two posts you haven't cited one case, not one, that discussed the constitutionality of fee shifting. You simply assume that is constitutional to do so. Now, if there is a 1st amendment right to file suit against a party that has caused one damage, I would suggest that that right will be burdened if there is a fee shift upon loss without regard to whether the lawsuit was objectively reasonable. Such a rule will all but insulate the rich and powerful from suit by smaller companies and individuals and it frankly reeks of injustice. Courts should have the authority to shift fees when there is abuse, but not otherwise.

Rader would require proving objective baselessness when lack of merit is the reason for an award. I see nothing inherently wrong on this. O'Malley distinguishes the Supreme Court case that seems to require proof of knowledge of baselessness. The Court substitutes Seagate's recklessness standard. I see no problem here as well. Prediction: going forward, O'Malley opinion will remain good law. Also, it seems that Congress cannot shift fees on a lesser showing because that would impair the recognized fundamental right to petition protected by the 1st Amendment. I would be surprised if the Supreme Court did not hold such a statute, if enacted, unconstitutional.

Richard, no doubt, but you seem to miss the point. The word troll is cast about to mislead, because in the US, the big boys are able to use the term exclusively against small fry who vex them, while in many cases they too use patents for revenue purposes. I was simply complementing the Europeans for seeing through the smokescreen these folks put up and by identifying the largest European companies as playing in the same sandbox as the people they accuse.

Actually David, having approved contributory infringement may make ITC actions more difficult because one of the elements of proof of contributory infringement is that the product have no substantial noninfringing use. That additional element is not really required for inducement where the product is being used in an infringing matter by somebody and the importer actively induced the infringing activity in some manner.

anon, I thing you missed the bit about "if we want to entirely lose focus..."