Profiles in IP Law: An Interview with Judge Gerald Bruce Lee, United States District Court, Eastern District of Virginia

The Eastern District of Virginia is often thought of as an intellectual property court. What is your perception as to what percentage of your cases are patent, trademark, and copyright, and would you agree that this is an intellectual property court?

I don’t think we consider ourselves an intellectual property court. However, the truth is that we’ve had a number of high-profile patent cases, which have placed us on the radar screen of IP practitioners—cases like eBay, BlackBerry, and Rosetta Stone v. Google. We’ve had a number of fairly high-profile IP cases come through our court, and we are known nationally and internationally for the way we manage cases involving IP law. But we are not in the IP pilot program intentionally. We enjoy our general jurisdiction docket and would not want to become a specialized court.

Of those IP cases that you just mentioned, are there any that you have heard yourself that are particularly memorable?

I have had a number of interesting cases that went to trial—cases involving Mercury Marine, engines, ignition systems, and cases involving power tools, teddy bear innards, and hair brushes. These are not cases that you would find written about in any appellate reporter. I’ve had many different kinds of cases. I can’t think of anything high profile that went to the Supreme Court, like eBay, that I can tell you about. However, I had a recent decision involving an interpretation of the America Invents Act (AIA). The AIA provided for what is called post-grant review, where an entity may challenge the validity of a patent after that patent was granted by the USPTO. My case was Versata v. Rea, where the Versata Development Corporation challenged the USPTO’s decision to review the validity of one of Versata’s patents, a review spurred by the request of SAP America, one of Versata’s competitors. In fact, SAP’s request was the first request placed under the new AIA post-grant review procedure. Thus, this case presented the initial question of whether federal district courts could even hear a challenge to the USPTO’s decision to initiate review of a previously granted patent under the new AIA scheme. It’s first impression cases like this that keep us on the IP radar.

What other types of cases do you often see?

We are the home to many intelligence agencies and the Pentagon, so we have a number of cases involving classified information, espionage, and terrorism. September 11th changed everything. As you know, the case of the so-called 20th hijacker, Zacarias Moussaoui, was handled by Judge Leonie Brinkema. Additionally, I tried a case involving Omar Abu Ali, a young man accused of and convicted of conspiring with al-Qaeda to kill President Bush. I’ve also handled a case involving a man who threatened and plotted to bomb the Metro system. Most recently, I had a sentencing that involved someone making an IED and also firing at the Marine Corps Memorial and the Pentagon. I also tried the Brian Patrick Regan case, the first capital espionage case since the Rosenbergs were tried for espionage and put to death. Not surprisingly, we have had a number of cases requiring the use of classified information.

The inscription above the door here at the courthouse reads “Justice Delayed, Justice Denied.” Can you give any thoughts on how that phrase is embraced by the judges here at the court?

Many people think it was Judge Albert Bryan Jr. who created the “rocket docket,” but I believe it was Judge Walter Hoffman who came up with the idea that cases should be judicially managed. “Justice Delayed, Justice Denied” relates to the parable involving the tortoise and the hare and the idea that speed and fairness are important. But most people forget that in the parable the tortoise won the race, not the hare. In my view, the rocket docket means that we are a court that’s going to manage the case from the outset, though I’ll acknowledge there are times when there’s a tension between speed and fairness. So woe be to those who come here unprepared, because there are so many ways that you can find yourself in a circumstance where if you are not prepared, then the docket can overtake you.

As a judge, I think that in the tension between speed and fairness, fairness has to win, always, and I think that we are generally focused on ensuring that there is fairness in the proceedings. The rules start with everyone being told what the rules are at the outset. If you adhere to the rules, then you will do fine. It’s only if you find yourself in a circumstance where you’re not focused on your discovery or not paying attention to the deadlines that you find yourself unprepared. In my view, fairness has to win that race, just like the tortoise.

What role do you feel the Friday morning motions hearing practice plays in keeping the docket moving in this court, and do you see any downside to holding regularly scheduled hearings every Friday?

I think the Friday motions hearing in open court is critical to our court’s efficiency. There are courts that do not give hearings on motions, and I think it takes longer for those courts to hear motions and resolve the pending legal questions. Lawyers and litigants appreciate decisions being made promptly, and the motions docket is the key to our efficiency. When we changed over from a general master calendar docket to individual dockets, one of the discussions we had was that the active and senior judges would maintain the Friday motions docket because you come to court, and if we can rule from the bench, you get a ruling right on the spot. It is instant justice, and it lets you focus on what’s next—you can decide how the ruling impacts your case, such as whether I’m granting a motion to dismiss, or granting partial summary judgment. You know what’s next and what to do next in terms of trial preparation or trying to resolve the matter with settlement. So we think proper rulings on motions will make a difference, and that means you may not get a full opinion—you get a ruling right from the bench. Judge Bryan and Judge Oren Lewis and others before did that, and it was very efficient. We try to rule right from the bench as often as we can.

Some district courts have adopted model patent rules. Has this court given any consideration to implementing model patent rules?

There have been at least two proposals that I am familiar with that were presented to us as a district concerning whether we need model patent rules or local rules concerning patents, and we made a judgment not to adopt model patent case administration rules. That said, the structure of our cases is done in the scheduling order; and there is a distinctive order that we use in patent cases that in many instances adopts some of what we think are the best practices from model patent rules that we see around the country, such as claim charts and other things that help us in terms of initial disclosures and in structuring the case at the outset.

When do you find the use of technology in courtroom presentation most helpful?

I have been a technology-oriented judge and lawyer my entire career, so I really enjoy and favor the use of demonstrative evidence and technology in the courtroom. Anything that will help the jury and help the court understand the technology is very helpful, and I think great IP litigators look for ways to make the proceeding interesting and informative. I believe that technology can be used effectively, whether it is animations, models, or demonstrations, all those things that can help.

Do you have any anecdotes concerning any particularly effective uses of technology in courtroom advocacy?

I saw an opening statement and closing argument in a trademark case that was so well performed that it was art in terms of how clear it was, in terms of showing the trademark, showing the accused trademark, and showing how they were the same. It was very powerful, like a picture that speaks louder than words; it was very effective in opening and closing arguments. I’ve also seen lawyers use technology in patent cases, particularly animations and models, to demonstrate the accused device and how it fits within the patent, and those things have helped us as well.

Have you ever seen technology go sideways or become distracting or unhelpful?

There are one or two instances when someone has come to court and the technology didn’t work, and we give them a chance to correct it. If after the second time it doesn’t work, then you have to go without it. The new president of the Virginia State Bar is very involved in technology with lawyers, and will tell you that whenever you come to court you should have duplicate systems ready to go. Don’t come to court with one laptop; always have two laptops or two iPads, so if something goes wrong, you can rapidly go to the next one.

Have the recent changes to the law caused a dramatic increase in the court’s caseload due to appeals from the USPTO?

We are not seeing a dramatic increase, but we are seeing an increase in § 145 cases. We have to apply the Supreme Court precedent, which means that in essence we are going to have to take on the role of patent examiner and examine claims de novo. Those of us who are not scientists or engineers realize that we will do the best we can under the circumstances, and we will depend on the lawyers and the litigators to present to us the information we need to do that effectively.

The recent change in the jurisdiction of patent term adjustment cases from the District of Columbia to our court was quite a surprise to us. We don’t know how it happened, but one day all of a sudden we had a case called a patent term adjustment case in the Eastern District of Virginia. So far, these cases have remained in the Alexandria Division. And you may be familiar that there is a dispute at the Federal Circuit now on the issue of a B delay. Two colleagues from my court have reached different conclusions about the state of the law, so we have decided to stay those cases until the Federal Circuit gives us a definitive ruling, because each of us could end up with a variety of different rulings on interpreting the B delay issue. Right now there are about 140 cases that are stayed, and that is unusual because we don’t typically stay cases. We stayed these cases because we think a Federal Circuit ruling will help us resolve that matter and allow us to go forward. We were quite surprised to get those patent term adjustment cases.

Do you find that patent cases require more of your time relative to other civil cases?

Absolutely, because they are more complex and therefore require a lot of time and focus—from the magistrate judge’s perspective there is the commitment of time devoted to discovery, and from the district judge’s standpoint, there is the focus of motion practice around issues involving Markman, summary judgment, partial summary judgment, and Daubert hearings regarding expert testimony.

Has the reassignment of cases to other divisions within the Eastern District been effective in reducing the workload here in the Alexandria Division, and will the new appeals from the USPTO also be subject to reassignment?

We have not figured out whether or not to place the AIA cases generally on the random assignment wheel throughout the district. I’m sure over the next year or so, after we see what impact the patent term adjustment cases and other cases have on our docket, that we will certainly have to examine that. One of the reasons we decided as a court to randomly assign patent cases is because we realized we were being overwhelmed here in Alexandria—this being a preferable venue for many plaintiffs’ counsel and entities that can find a way to bring their cases here. We decided to spread the cases around and it has helped us greatly.

Given that there are no model e-discovery rules in this court, are there certain routine practices that have been adopted?

My impression is that the practitioners are still using paper discovery in most cases. There have been cases where the parties have agreed to some e-discovery, but they are not really using e-discovery as much as you would think or as much as they could. There is great reluctance because e-discovery is so expensive to really go that route.

Has the court given any consideration to model e-discovery rules such as the recent Federal Circuit model rules?

No.

Are there any trends in patent, trademark, and copyright cases filed before the court that you have observed over your tenure on the bench that are either positive or negative trends?

From the standpoint of managing the litigation, the number of patent infringement cases during my 15 years here has increased dramatically from when I first started, because there is greater focus now on intellectual property protection, business method patents, and different types of suits involving trademark and unfair competition. I think it has a lot to do with the economy and the global economy because a number of filings we are receiving are international, so there are questions about whether we have jurisdiction to hear these cases. I’ve also noticed that we’ve had more cases that are bringing Internet domain name registrars into disputes between the trademark holder and the domain name holder. The recent creation of the secondary-level domain names has led to some disputes. I recently had a case where a person owns a domain name and then they sold the secondary domain name (.UK) to someone else that is identical, but the original domain name holder’s business is in Canada and the other domain name holder is in the UK and they came here. Then they sued everybody in sight including the registrar and it was very complicated.

This court has a reputation for turning a very critical eye toward whether venue is appropriate here in the Eastern District. Would you agree with that perception?

I wouldn’t call it a critical eye, but I would say that we realize that if we did not properly examine the venue, then we would be overwhelmed with every single patent case that involved a device that was sold at Tyson’s Corner Mall just because it was sold at Tyson’s Corner Mall. If that’s the only thing you have, we are not going to take your case. We’re just going to send it to where there are more contacts under § 1404; and now that everything is very electronic and mobile that analysis is a little more streamlined, but we are still focused on that. We’re not unwilling to take your case, but you have to show us it reasonably belongs here as opposed to some other place.

Do you prefer to hold separate Markman hearings early or combine claim construction with summary judgment, and why?

My experience has been that holding the Markman hearing concurrently with summary judgment is helpful. Typically it’s near the end of discovery, after the parties have fully dug into the case and figured out what the issues are, and to focus on what the real issues are to go to trial after summary judgment. I think the way we are set up, if we were to do Markman separately, then you’ve got another two to three months after the Markman hearing to get the opinion out, and then the parties fully brief summary judgment, which extends the time to trial. The statistics are that we are a court that, from the standpoint of 2012 at least, the time from filing to disposition in a civil case is five months. That’s number one in the circuit and in the nation. Now for patent cases, I would say it is a little bit more than that. My impression is that it takes about nine months to go to trial from filing, which accounts for about a month for service and six months for discovery. That just doesn’t work for me because I know that some of my colleagues will do Markman separately. It helps me to understand what the issues are; otherwise I’m interpreting terms that may not be relevant to a summary judgment motion or to infringement. There is a tendency to give me 50–60 claim terms, and it’s not really 50–60 claim terms. If you focus, it’s five or maybe 10 that really are determinative of the infringement issue. I’ve had at least one or two cases where I’ve said that I’m not going to do a claim construction of 100 terms—there can’t be 100 terms at issue. I have required the parties to limit the claim terms to the real issues on infringement.

What is your opinion of the use of experts at Markman hearings? Do you find such testimony helpful?

There are certain technologies where it is very helpful—issues involving software, chemical compositions, and biotech. There are certain types of issues that lend themselves to have an expert come into court for a tutorial. I know that there are courts that do these so-called videotape CD tutorials. I’ve never had one of those. I’d rather bring the person in so that I can ask questions.

In trademark cases, have you observed any particularly helpful testimony from survey experts, and is it difficult for a plaintiff to prevail without an expert in a trademark case?

I think it is very difficult to prevail in a trademark case without some market survey demonstrating confusion as to the source or origin of the goods, and I’ve had several cases where market surveys have been presented and it helped focus the issues. Those cases were more likely to go forward where there was some real confusion in the marketplace among consumers about the goods as to the source of origin. But to come to me with four or five individuals who were confused from a thousand Internet sales, I’d have to have a trial on those cases if the rules say that I do, but I’m not sure that I do.

You have been credited with coining the phrase “adrenaline of excellence.” Is that accurate, and could you please explain how that might apply to your experiences here at the court?

The term has to do with the level of preparation that you have, whether as a judge before you walk into court or as a lawyer presenting a motion to the court or a case to a jury. What is that feeling you experience right before you walk through the door, right before you walk up to the podium, right before you introduce yourself to the jury? Is it fear? Is it anxiety? In my view, it is not fear or anxiety if you’re prepared—it is the feeling your body gives you to let you know that it is on full alert, that your mind and your heart and your words are ready to deliver peak performance. I call it the “adrenaline of excellence.”

What are the most common mistakes you see made by attorneys who appear before you?

In motions practice, I am surprised at the number of times lawyers will talk over the judge and not allow the judge to complete a question. I find it frustrating if a lawyer will not answer a question or try to distract you. On my podium I have a little sign that reads, “Please do not point at the judge and introduce yourself to the court,” and you’d be surprised at the number of people in the course of the argument who will point at the judge. It is distracting, but it does not detract from my judgment. It is very important to listen to and answer the judge’s questions. Oral argument is really to help me refine my analysis and help me focus on the questions that I think are important. You might confirm what I was thinking by answering a certain way, you might even persuade me to go another way if you raise some considerations I have not thought of, but it’s not moot court, and it’s not a chance for you to make a speech. So I find it distracting when lawyers do that.

Do you have any advice for out-of-town attorneys who are unfamiliar with the Eastern District of Virginia?

Absolutely. I think it’s important that you learn about the culture of the Eastern District of Virginia and the so-called “rocket docket,” and identify practitioners who practice in this court and who have tried IP cases before our judges and know the ways of this court. If you’re coming in and decide not to hire local counsel or hire somebody who’s a local practitioner that does not do IP work, then master the local rules, because they are distinctive in terms of, for instance, discovery objections and the meet and confer rule. When practitioners from around the country hear stories about our court, they need to know that most of them are true. When local counsel tells you that the judge is not going to continue the case, they are telling you what’s really going to happen. When local counsel tells you that the judge is likely to give you a hearing on your discovery dispute, but she’s going to rule right from the bench, that’s really what’s going to happen. I’ve had cases over the last several years with experienced, seasoned local practitioners who are in this court and who are regarded as very capable IP practitioners as local counsel engaged in a major case, and they are not given anything to do. I think that is a waste of time and talent because these individuals have credibility with the court and know their way around here. If you are going to bring them in they ought to be trial ready and have a role.

Do you have anything else you would like to share?

Yes, this has to do with the issue of discovery. Practitioners have to agree to a protective order to exchange information during discovery among themselves. Where they encounter issues may be when you try to seal a matter that’s being filed in open court. Our local rules address sealing matters. We are more likely to give you a protective order than we are to seal a matter once it’s filed in court. So confer with local counsel and confer among yourselves about protective orders, and you will find that you will be able to hold on to many things you want to keep confidential in the pretrial proceedings up until we have to file under seal. There is a reluctance to seal matters under case law in the Fourth Circuit, and our local rules address that.

Lastly, I think the focus of preparing a case for trial has to focus in on the motions practice, claim construction, and summary judgment. Once you have a ruling on summary judgment, you can decide whether you want to see one of our magistrate judges or reach a settlement among yourselves. Many of these cases resolve themselves—we certainly encourage that—but if you aren’t able to resolve the case and everything is teed up for trial, we will give you a trial promptly.

Thank you.