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Pound for pound, bench/bar conferences can be among the best investments of time for a practicing litigator to attend. For one, because they involve judges, who are very busy people, they tend to pack a lot of solid contact into highly efficient packages. And because it is often judges that are delivering the insights, the nuggets that one can glean from attendance justify any schedule disruption that said attendance may cause. I was very pleased, therefore, to accept a very kind invitation to attend the Delaware Chapter of the Federal Bar Association’s 2023 Bench and Bar Conference this past week. The lineup of judges and leading practitioners speaking was outstanding and there was an element of nostalgia for me, as my first trial was a Delaware patent case that saw me living in the Wilmingtons’s Hotel du Pont for a month in the summer of 2003. Being back in that venue for the conference, it was hard not to reflect on how far my career has come. Nostalgia aside, with no doubt, no other district court other than Texas has as much impact on patent litigation as Delaware, a fact that is just as true in 2023 as it was in 2003.
I was able to attend two panels on the first day of the conference (and can refer readers to a good recap on the IP/DE blog for some points from the panel I missed.) The first panel I caught focused on appellate issues, with an all-star panel of three federal circuit judges and a leading Third Circuit judge, the Hon. Kent A. Jordan. The latter is a former Delaware district court judge, who in his own right has had significant patent litigation experience from the bench over the years. The second panel I heard was a post-lunch discussion on the hot-button issue of litigation funding, with perspectives offered by the Chief Judge of the District of Delaware, the Hon. Colm F. Connolly, as well as representatives from two of the leading litigation funders, an industry policy advocate, and two highly regarded trial lawyers. Each of the panels contained worthy content that could have extended much longer than the allotted time. I will discuss each in turn below, while adhering to the Chatham House Rule that governed the proceedings.
As expected, based on the quality of the panelists, the discussion with the appellate judges was chock-full of important reminders and tips for appellate practice. As an example, there was fascinating discussion on the issue of claim construction, which is such a fundamental component of any patent case. For one, it has long been true that the federal circuit’s de novo review of claim construction rulings post-Markman is a significant reason why federal circuit reversal rates trend higher than those of its sister circuits. Second, there was some practical commentary on the following point. Namely, that the prevalence of claim construction rulings that assign “plain and ordinary meaning” to claim terms, whether that common construction is agreed to by the parties or ruled on by the trial judge, can be a major source of trouble on appeal, especially where it becomes clear to the CAFC panel that the parties actually dispute what the plain and ordinary meaning of the claim term is. That last nugget gives plenty of room for thought, as it suggests that parties should be more focused on making sure that the district court’s claim construction is fleshed out for appellate review, rather than having their clients assume the risk of the CAFC panel making a claim construction ruling of impact for the first time on appeal.
In addition to the claim construction-related observations, the panel also touched on pragmatic tips for handling appeals, including an interesting discussion on whether bringing in an appellate specialist to handle an appeal is a good idea for important cases. On that point, it seemed like the panel leaned toward agreement that such a move can be a good one, assuming of course that the appeals specialist’s preparation results in them knowing the record as well as the lawyers who may have handled the case since the start. In particular, the idea of having a fresh set of eyes on a case, with experience in choosing the most important two or three appeal points to press, provides a compelling reason to consider having a fresh set of experienced appeal hands join the team. Other practice points included the need to be as concise and direct as possible when addressing points from the record that one wants the panel to consider, since the judges can often be overwhelmed by the sheer amount of material in the record, as is typical in a patent case. There were also reminders of the need to remain cognizant of waiving arguments for appeal over the course of a case’s travel through the district court but not at the expense of giving short shrift to those issues that really do need preservation for appeal and a clear ruling from the trial judge. Finally, there was a recognition that patent cases are inherently complex, with many points that could give rise to appealable issues, making the need to filter out what is important in a given case one of paramount importance when approaching an appeal.
Next, the panel on litigation funding provided a lively and robust discussion on the question of disclosure, which I have addressed on these pages in terms of practice in Delaware before. As can be imagined, the question of whether funders have implicit control of funded cases, even when the funded client is contractually vested with full settlement control, was a point of debate. Likewise, some good background information was offered on the prevalence of litigation funding, as well as the historical use of funding paradigms like contingency cases and the interplay with champerty rules and restrictions on attorney fee sharing. Pointed commentary was also offered on some of the more prominent examples of third-party litigation funding that have made the news lately, from Burford’s dispute with its client Sysco to the public comments made in the context of a high-profile mass tort case regarding consumer litigation funding. Everyone on the panel had a valuable perspective to share and there was a consensus that conversation around litigation funding issues is something that we can expect to continue to see for years to come.
That was it for day one, at least with respect to the panels that I was able to see and the insights I was able to glean. Next week, I’ll describe what happened on day two of the conference, where a focus on trial practice took center stage.
Please feel free to send comments or questions to me at gkroub@kskiplaw.com or via Twitter: @gkroub. Any topic suggestions or thoughts are most welcome.
Gaston Kroub lives in Brooklyn and is a founding partner of Kroub, Silbersher Kolmykov PLLC, an intellectual property litigation boutique, and Markman Advisors LLC, a leading consultancy on patent issues for the investment community. Gaston’s practice focuses on intellectual property litigation and related counseling, with a strong focus on patent matters. You can reach him at gkroub@kskiplaw.com or follow him on Twitter: @gkroub.
