As experienced trial lawyers know, successfully trying or defending a case is all about presenting a compelling, understandable theme and narrative that comports with a judge and jury’s common sense and experience.
Juries especially are prone to favor litigants and lawyers they like and case theories they easily understand. That is human nature on display in the courtroom.
Certain types of patent claim theories and defenses possess greater “narrative allure” than others. In patent litigation, the inventor’s journey of discovery is often a key trial narrative, including a recitation of the trials and tribulations incurred on his or her way to obtaining an official U.S. patent—together with its certified seal and blue ribbon.
For those accused of infringing patents—whether through being named as a defendant or identified as a culprit in a cease-and-desist letter writing campaign—the best choice for a compelling defense story is often less apparent. Affirmative defenses, compulsory counterclaims or declaratory judgment causes of action are often asserted in blunderbuss fashion in order to preserve any and all claim or defense theories.
Patents and their dense, impenetrable prose and complicated technical and scientific jargon often make little sense to the uninitiated—i.e., to almost everyone other than inventors, patent prosecutors, expert witnesses, and patent litigators. Advances in cognitive science are now showing that jurors will seek to avoid the mental strain associated with deciphering difficult trial testimony and jargon, and will instead rely on simpler, preconceived notions of how businesses and their executives operate in rendering their jury verdict decisions.[1]
By virtue of its relative simplicity and the seeming ease by which it can be understood by a lay jury, a “Walker Process” antitrust claim offers an appealing defensive/offensive claim theory for alleged patent infringers. Named after a leading Supreme Court case[2] decided in 1965, a Walker Process claim stands for the proposition that “the enforcement of a patent procured by fraud on the Patent Office may be violative of § 2 of the Sherman Act provided that the other elements necessary to a § 2 [monopolization] claim are present.”[3]
The financial incentives for pursuing a Walker process claim are quite significant: a prevailing litigant may be able to recover treble damages and attorneys’ fees. These claims most often appear as a compulsory counterclaim to an allegation of patent infringement. However, they can also be asserted affirmatively, along with declaratory judgment claims for patent non-infringement, invalidity and unenforceability.
The jury appeal and potential monetary rewards of a Walker Process claim also raise corollary patent legal malpractice risks for both parties. For the party prevailing on such a claim, the risks for the other side are obvious: a patent has been held unenforceable due to inequitable conduct and the client is facing a potentially huge monetary exposure or judgment for damages and the successful party’s attorneys’ fees and costs. Even if the Walker Process claim is ultimately unsuccessful, the losing party may argue that the patent counsel’s prosecution conduct increased the litigation costs of enforcing a patent right and resulted in a weakened settlement position.
For the party who pursues and loses a Walker Process claim, the failure of the claim may well be due to an inability to meet one or more of the procedural and substantive requirements that accompany Walker Process claim litigation. For example, if the client is not properly advised about these detailed requirements, or if proof was not appropriately marshalled and applied to various Walker Process claim elements, the failed claim may also subject the patent litigator to unwelcome malpractice exposure.
This article discusses both the potential jury appeal of and corollary patent legal malpractice risks associated one of the most alluring claims in the patent litigation pantheon.
The Jury Appeal of a Walker Process Claim
The intuitive jury appeal of a Walker Process claims is easy to grasp. Patentees who sue others—especially competitors—based on patents that they know were fraudulently procured are readily perceived as “bad” actors and unworthy claimants. When heavy-handed enforcement tactics are piled on top of an already soiled patent grant, it becomes a simple matter for a jury to decide who should prevail in a lawsuit. An example of this jury decision-making in action is a recent jury verdict rendered in favor of a Walker Process claimant in Transweb v. 3M Jury Verdict.[4]
Two Federal Circuit cases involving food technology demonstrate the jury allure of Walker Process antitrust claims. For example, in Dippin’ Dots, Inc. v. Mosey, 476 F.3d 1337 (Fed. Cir. 2007), the plaintiff owned a patent for the process of making a flash-frozen novelty ice cream product. The lawsuit began when several former licensed distributors severed their business ties and entered into competition with Dippin’ Dots. The evidence introduced in the case showed that that the inventor had sold at least 800 customers a form of Dippin’ Dots at a Festival Market mall over one year before applying for a patent—raising an on-sale invalidity bar under 35 U.S.C. § 102(b).
The Festival Market sales were neither mentioned during the USPTO’s examination of the subject patent application nor identified by the inventor as information that might be relevant to the patentability of the invention. The inventor testified that these sales only practiced three out of six steps of the patented process; while the attorney prosecuting the patent application characterized the same sales as being “experimental,” since the manufacturing process used to make Festival Market sales could not be feasibly exploited commercially.[5] The jury, however, found that both the inventor and patent attorney each had “with intent to deceive, made material misrepresentations or omissions in violation of the duty of candor to the PTO.”[6] Although the jury rendered a verdict in favor of the Walker Process claim, it curiously awarded zero damages.
Similarly, in Unitherm Food Systems, Inc. v. Swift-Eckrich, Inc., 375 F.3d 1341 (Fed. Cir. 2004), the case involved a method for browning precooked meat products—a desired innovation for microwavable food products.[7] Unitherm manufactured ovens and created a process for browning precooked meats...
