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By Tony Dutra
Nov. 7 --The tug of war between the judiciary and Congress over efforts on patent litigation reform continued Nov. 6 as the Judicial Conference of the United States delivered letters to the chairman and ranking minority member of House Judiciary Committee claiming that H.R. 3309, the most comprehensive bill now under consideration, “runs counter to” the Rules Enabling Act process.
Both sides are framing it as a question of the constitutional boundary between Congress's authority over district and circuit courts and the act, passed in 1934, which gave the Judicial Conference responsibility for the Federal Rules of Civil Procedure.
Section 6 of the Innovation Act (H.R. 3309), which was introduced by Rep. Robert W. Goodlatte (R-Va.) on Oct. 23 (206 PTD, 10/24/13), would require the Judicial Conference to implement “rules and procedures” for case management of a patent infringement action. For example, it identifies “core” and “additional” categories of discovery and sets out specific staging of discovery related to claim construction hearings and judgments. It also calls for cost-shifting during discovery, requiring the party seeking “additional” discovery to bear the other party's costs.
Judge Kathleen M. O'Malley of the U.S. Court of Appeals for the Federal Circuit recently questioned the authority of Congress to dictate case management decisions that courts must make, saying it crossed the boundary between the judiciary and the legislature (191 PTD, 10/2/13). When Goodlatte introduced the bill, he said that he “took to heart constitutional concerns, but it is the role of the legislative branch to set the rules of the road for our judicial system.”
A day later, Goodlatte pressed the issue.
“Let me be clear about Congress' constitutional authority in this area,” he said during a discussion on patent reform sponsored by the American Enterprise Institute in Washington, D.C. (210 PTD, 10/30/13). “By the terms of the Constitution, it is up to Congress to decide whether and how to grant any of the federal courts jurisdiction to decide cases with the sole exception of the Supreme Court and its constitutionally guaranteed original jurisdiction over certain limited subjects.”
On Nov. 1, O'Malley, speaking at a patent law conference at the Georgetown University Law Center in Washington, D.C., shot back and criticized lobbyists and members of the patent bar who she said were backing the legislative effort (214 PTD, 11/5/13).
“When a class of powerful constituencies asks Congress to dictate not just the scope and the contours of substantive patent law, but the way courts exercise their authority over individual patent cases, it threatens to break down important constitutional distinctions between the branches of government,” she said.
The Judicial Conference's letter was signed by Judge Jeffrey S. Sutton of the U.S. Court of Appeals for the Sixth Circuit, who is chairman of the organization's Committee on Rules of Practice and Procedure, and Judge David G. Campbell of the U.S. District Court for the District of Arizona, who is chairman of its Advisory Committee on the Federal Rules of Civil Procedure.
“Section 6 sets forth the content of the civil rules that the Judicial Conference is expected to develop through the Rules Committees,” they said.
“We greatly appreciate, and share, the desire to improve the civil justice system in our federal courts, including by reducing abusive procedural tactics in patent litigation,” according to the letter. “But legislation that mandates the contents of the federal rules contravenes the longstanding Judicial Conference policy opposing direct amendment of the federal rules by legislation instead of through the deliberative process Congress established in the Rules Enabling Act, 28 U.S.C.§§ 2071-2077.”
The authors cautioned that Section 6 of H.R. 3309 has the potential to “undermine, rather than further, the development of sound rules and practices.” Rather, they said, Congress should merely “express its interest” in addressing litigation problems and “respect the long-established virtues of the deliberative processes created by the Rules Enabling Act.”
Text of the letter is available at http://pub.bna.com/ptcj/JCRulesCommLtr13Nov6.pdf.
H.R. 3309 is available at http://pub.bna.com/ptcj/GoodlatteTrollBill13Oct22.pdf.
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