2009 Lawyer-to-Lawyer Referral Guide

June 2009 /$4

EARN MCLE CREDIT PLUS

Implementing Mandatory
the Adam Patent
Walsh Act Class
page 32 Actions
page 38
Injunctions for
Copyright
Infringement
page 12
The Fair
Procedure

Swindlers’
Doctrine
page 18

List
Los Angeles lawyers
R. Alexander Pilmer and
Mark T. Cramer examine the legal
issues facing the victims of
collapsed Ponzi schemes
page 22
 b y M A R K A N C H O R A L B E RT

R EQ U I R E D
CLASS
I N O R D E R T O M A I N TA I N C L A SS A C T I O N S A G A I N S T
INFRINGERS, PLAINTIFFS NEED TO MEET THE FOUR
P R E R EQ U I S I T E S O F F E D E R A L R U L E 23

P
atent holders are often victims of multiple infringers but rarely use class actions to prosecute their patent
claims collectively. Typical class actions involve a named plaintiff that seeks to represent a class of
unnamed plaintiffs whose interests are aligned with those of the named plaintiff. Another type of class,
however, that may achieve efficiency in patent litigation is a non-opt-out, or mandatory, issues class. This
class can be created to resolve issues of patent ownership, validity, enforceability, and claim construction.
In a mandatory class action, class members cannot voluntarily exclude themselves from the class as defined in the
court’s class certification order. A rarely used feature of Rule 23 of the Federal Rules of Civil Procedure allows for
certification of a mandatory defendant class action. In this suit, a named defendant is compelled, almost invariably
against its wishes, to represent a class of unnamed defendants that share one or more common issues appropriate
for joint adjudication. Mandatory defendant class actions are a potent tool to resolve common issues involving mul-
tiple defendants.
The drafters of Rule 23 intended the rule to enable those with small claims to achieve relief even if their individ-
ual claims are too small to be viable. Another purpose of Rule 23 is to “achieve economies of time, effort, and expense
and promote uniformity of decision as to persons similarly situated, without sacrificing procedural fairness or bring-
ing about other undesirable results.”1 Rule 23(a) establishes four prerequisites to maintaining a class action: 1) the
number of people or entities in the class should be too numerous to permit their joinder, 2) members of the class should
share common questions of law or fact, 3) the “claims or defenses of the representative parties are typical of the claims
or defenses of the class,” and 4) the “representative parties will fairly and adequately protect the interest of the class.”
KEN CORRAL

Of these prerequisites, the second is central to the creation of a common issue class, but the other three must also

Mark Anchor Albert is a business litigator and appellate lawyer in Los Angeles.

38 Los Angeles Lawyer June 2009

be considered. The first, numerosity, exists In general, Rule 23(b)(1) permits the use action provides adequate procedural due
when a proposed class is so numerous that of the class action device when necessary to process. The court approves competent class
joinder is impracticable. “Impracticable” prevent the possible adverse effects—on either counsel to represent the class, and represen-
does not mean impossible.2 A reasonable the parties opposing the class or on absent tative plaintiffs (also court approved) have an
estimate of the number of purported members class members—that might result if separate incentive to pursue class claims identical or
satisfies the numerosity requirement; a precise actions were brought, with a risk of incon- substantively similar to their own. Another
number is not required.3 Numerosity is pre- sistent results. Structurally, that provision is due process safeguard is that the trial judge
sumed at the level of 40 class members.4 divided into two clauses that describe the must approve class certification and any set-
Indeed, one patent case in which a defen- risk of prejudice, which is to be avoided by tlement or dismissal. Further, absent class
dant class was certified—Dale Electronics, allowing class action. A Rule 23(b)(1) class members are rarely subject to discovery and
Inc. v. R. C. L. Electronics, Inc.—involved action applies when the defendant or plain- are almost never liable for attorney’s fees,
only 13 alleged patent infringers.5 tiff is obligated to treat class members alike, costs of suit, or judgment.21
The third test, typicality, “is a permissive when class members are asserting claims The plaintiff class in Shutts was certified
standard.”6 The basic inquiry is whether the against a common fund in which joint or under the Kansas equivalent of Rule 23(b)(3)—
action is based on claims or defenses that common rights or obligations demand uni- not Rule 23(b)(1) or (b)(2)—and the Court
are unique to the class representatives: tary treatment, or when there is a limited expressly limited its opt-out requirement to
“Typicality refers to the nature of the claim fund that is insufficient to satisfy all the “those class actions which seek to bind known
or defense of the class representative, and claims.13 A Rule 23(b)(2) class action was plaintiffs concerning claims wholly or pre-
not to the specific facts from which it arose intended to focus on cases in which broad, dominantly for money damages,”22 noting
or the relief sought.”7 Issues of patent valid- classwide injunctive or declaratory relief is that the Court’s “discussion of personal juris-
ity and invalidity, patent ownership, and necessary.14 Finally, a Rule 23(b)(3) class diction [did not] address class actions where the
claim construction (among others) are stan- action—by far the most common—was jurisdiction is asserted against a defendant
dard in many patent infringement actions. intended to embrace other cases in which a class.” The Court offered “no view concern-
Cases often are based exclusively upon plain- class action would be “convenient and desir- ing other types of class actions, such as those
tiff-specific facts and legal principles that are able,” including those involving complex lit- seeking equitable relief.”23 Accordingly, Shutts
identical for all defendant class members and igation for money damages.15 should not be read as establishing opt-out
therefore apply classwide. Typicality should The drafters of Rule 23 deemed it unnec- rights in actions maintained under Federal
be found to exist if the claims of class repre- essary, however, to provide subdivision (b)(1) Rule 23(b)(1) or (b)(2).
sentatives arise from the same events and and (b)(2) class members with a universal A better reading of Shutts is that the opt-
practices as the claims of absent class mem- right to notice or to opt out of the class. This out right does not apply to classes that have
bers and are based on the same legal theories.8 right is part, however, of Rule 23(b)(3) class 1) the same interest in a particular patent, 2)
Rule 23(a)’s fourth prerequisite—ade- actions, which primarily seek monetary recov- the same defense regarding a particular patent,
quate representation—“depends on the qual- eries.16 In the three subsections, the different or 3) allegedly violated the same claim or
ifications of counsel for the representatives, presumptions of homogeneity and cohesive- claims of a particular patent. In the post-
an absence of antagonism, a sharing of inter- ness of interests among members of the classes Shutts decision Ortiz v. Fibreboard Corpora-
ests between representatives and absentees, that may sue support each section’s different tion,24 the Court rejected a mandatory class
and the unlikelihood that the suit is collu- procedural safeguards.17 Aside from com- based upon a litigation-generated limited
sive.”9 To satisfy this requirement, the patent mon fund or limited fund cases, in cases that fund that would have bound all potential
holder plaintiff should consider, if possible, seek ordinary monetary remedies the varying asbestos claimants in a single action. However,
naming a defendant that can afford to and has characteristics of individual claims often com- the Court made clear that mandatory classes
the incentive to retain a law firm with the plicate class relief.18 Rule 23(b)(1) and (b)(2) are still appropriate in proper cases.25
experience and resources to handle complex cases, on the other hand, typically involve rel-
patent litigation.10 Any unwillingness on the atively homogeneous and cohesive groups in Common Issues
part of defendants to represent the class is which a unitary result may not only be prefer- The issues of patent ownership, validity,
entitled to little weight in the certification able but necessary, given the group nature of proper claim construction, and enforceabil-
analysis. What defendant ever wishes to be the harm inflicted and the interrelated nature ity may be appropriate for mandatory adju-
sued, or if sued, seeks to represent other of the relief sought. dication in an issues class under Rule
unnamed defendants?11 For these reasons, “[c]ertification under 23(c)(4)(A). Under the rule (“[w]hen appro-
either (b)(1) or (b)(2) constitutes a mandatory priate, an action may be brought or main-
Three Class Categories class. That is, the class members may not tained as a class action with respect to par-
Once the requirements of Rule 23(a) are sat- opt out of the action and ‘pursue separate lit- ticular issues”), a district court is empowered
isfied, the plaintiff patent holder must demon- igation that might prejudice other class mem- to certify a mandatory defendant class only
strate compliance with one of the three dif- bers or the defendant.’”19 Many courts have with respect to particular issues, even if sub-
ferent categories of class actions listed under held that mandatory classes under Rule sequent actions would be required regarding
Rule 23(b). The different requirements of 23(b)(1)(A), (b)(1)(B), and (b)(2) fully com- issues of infringement and damages.26 The
these three categories attempt to strike a bal- port with due process.20 plain language of Rule 23(c)(4)(A), its struc-
ance between the desirability of classwide In Phillips Petroleum Company v. Shutts, tural relationship with Rule 23(a), and the
adjudication and the interests of class mem- the Supreme Court considered the due process Advisory Committee Notes that accompany
bers to pursue claims separately or not at requirements necessary to bind an absent it permit trial judges not only to sever issues
all. The different type of class actions are plaintiff in a Rule 23(b)(3) state court money for class certification purposes and for trial but
categorized according to the different objec- damages class action. The Court chose not to also to employ those procedures when doing
tives of class treatment envisioned by the insist upon “minimum contacts” as the touch- so would facilitate Rule 23’s purpose of
rule’s drafters, or the nature or effect of the stone of due process for jurisdiction over “achieving economies of time, effort, and
relief being sought.12 absent plaintiffs. The structure of a class expense, and promoting uniformity of deci-

40 Los Angeles Lawyer June 2009

sion as to persons similarly situated.” has been separately tried. E.g., appropriate for classwide resolution.
Mandatory certification also serves Rule 1’s Technograph Printed Circuits, Ltd. v. The facts relevant to patent validity also
goal of ensuring a fair and efficient remedy.27 Method Electronics, Inc., 285 F. Supp. are the same regardless of the identities of
As one court has noted regarding manda- 714 (N.D. Ill. 1968). Thus, defendant defendants or absent class members and
tory certification, Rule 23(c)(4)(A) is “intend- class actions are commonly used in a include the properly construed patent claims,
ed to advance judicial economy by permitting conservative fashion to adjudicate less the patent specification, and the relevant
adjudication of any issues common to the than the whole controversy.30 prior art, which by definition is publicly avail-
class even though the entire litigation may not The Rule 23(a)(2) commonality require- able to any defendant, named or not. Any
accused infringer may challenge the validity
of any issued patent by showing with clear
and convincing evidence that the patent fails
to meet any one of the statutory require-
ments for patentability, such as showing that
the claimed invention is anticipated by, or
obvious in view of, prior art, or that the
patent specification is insufficient. Patent
validity therefore also is an issue which may
be common to and typical of accused
infringers who are members of an issues class.
Finally, the issue of patent enforceability
also may present common questions appro-
priate for mandatory adjudication in an
issues class. An accused infringer may
allege—by way of affirmative defense or
counterclaim, for example—that the patents
are unenforceable due to the inequitable
conduct of the inventors and their attorney
while prosecuting the patents, that the paten-
tees misrepresented the content of prior art
references to the patent examiner, that the
patentees provided too many references to the
patent examiner, or that the patentees inten-
tionally withheld relevant references from
the patent examiner. The evidence necessary
to prove patent enforceability or unenforce-
ability under such circumstances would be
the same regardless of the identity of the
defendant. Under the circumstances, patent
enforceability would present issues that are
common to and typical of the named defen-
dant and other unnamed members of the
defendant class.35
satisfy the requirements of Rule 23.”28 The ment is not difficult to meet.31 Because Rule
relevant inquiry for a court is whether reso- 23(a)(2) is written in the disjunctive, a sin- Patent Claim Construction
lution of particular common issues would gle common question of either fact or law The issue of patent claim construction also
materially advance the disposition of the lit- should satisfy the commonality require- may often be appropriate for mandatory
igation as a whole. If the resolution of even ment.32 Accordingly, a plaintiff patent holder defendant class resolution. In Markman v.
one common issue would simplify subse- may want to request that the issues of patent Westview Instruments, Inc.,36 the Federal
quent individual proceedings, certification of infringement and damages be tried sepa- Circuit held that a district court in a patent
that issue for class treatment under Rule rately under Federal Rules of Civil Procedure infringement case must first construe the
23(c)(4)(A) may be appropriate.29 42(b) after the mandatory defendant issues meaning of the claim terms of a patent before
In many cases, a classwide resolution of class is certified and the class issues are adju- determining whether any claim of that patent
the common issues of patent ownership, dicated.33 is infringed by any defendant class member,
validity, enforceability, and claim construction The issue of patent ownership, when dis- or whether any claim of these patents is
would materially advance the disposition of puted, is a common question that may be invalid. Claim construction involves an exam-
litigation. In subsequent actions for infringe- appropriate for treatment in a mandatory ination by the district court of the patent
ment and damages, those key issues would not issues class. The patent holder has the burden claims and the intrinsic evidence (i.e., the
need to be adjudicated again. In re Gap Stores of proving that it is the owner of the patents patent specifications and file histories).
Securities Litigation holds: it asserts.34 Whether a patent holder owns the Extrinsic evidence may also warrant review
In patent cases, for example, this has patents it asserts in a particular patent in appropriate cases.37 For purposes of a
meant that issues of patent validity, infringement action typically will involve defendant issues class, the evidence neces-
fraud on the patent office, and patent unique facts. The issues are the same regard- sary to construe the claims will be the same
misuse have been litigated as class less of the identities of defendants and absent regardless of the identities of defendant class
issues while each case of infringement class members—and accordingly may be members. Claims are not construed by ref-

Los Angeles Lawyer June 2009 41

erence to any accused methods or systems.38 action there would be a risk of incon- issues class under Rule 23(b)(2). Certification
In Shire LLC v. Sandoz, the Federal Circuit sistent or varying adjudication with of a class is proper under Rule 23(b)(2) if the
granted review, however, to decide whether respect to individual members of the party opposing the class has acted on grounds
collateral estoppel and/or stare decisis applies class which would establish incom- generally applicable to the class. When
to a previous court’s unappealed claim con- patible standards of conduct for indi- allegedly infringing defendants assert a reverse
struction rulings. District courts have reached vidual class members.41 declaratory relief action requesting a decla-
conflicting positions on this issue.39 It is The Dale Electronics court reached the ration that the plaintiff patent holder’s patents
unclear what effect the Federal Circuit’s deci- same conclusion based upon the same analy- are invalid and unenforceable and that the
sion in Sandoz may have on binding rulings sis, noting that actions involving patent valid- patent holder does not own the patent or
on claim construction applied to defendant ity are particularly well suited for Rule otherwise have the right to enforce it, and
issues classes. 23(b)(1) defendant class treatment: when the action requests the issuance of a per-
Sandoz may be significant in light of Rule The prosecution of separate actions manent injunction prohibiting the plaintiff
23(b)(1)(A)’s requirement regarding “incom- by or against individual members of patent holder from claiming infringement or
patible standards of conduct.” Depending the class would create a risk of incon- requesting licensing fees from defendants and
on the outcome of Sandoz, defendants may sistent or varying adjudications with other class members, a mandatory defendant
be able to argue that when it comes to claim respect to individual members of the class with respect to the class issues may
construction issues, defendant issues classes class which would establish incom- comply with the letter and spirit of Rule
are unavailable under Rule 23(b)(1)(A). This patible standards of conduct for the 23(b)(2).
is because in these situations a plaintiff faces party opposing the class. Rule 23(b) (1) The Methode Electronics court certified a
no risk of inconsistent judgments, and thus an (A). While Blonder-Tongue makes an defendant patent infringement class under
issues class is not necessary. After Blonder- invalidity determination final and bind- Rule 23(b)(2) under similar circumstances.
Tongue, a judgment of patent invalidity ing on the plaintiff, it does not meet the The court held:
against a plaintiff precludes it from pursuing problem of a possibility of a validity [B]y obtaining patents, notifying some
further patent infringement actions, and any finding by this court and an invalidity alleged infringers of the patents, and
inconsistent rulings could be resolved by the finding by another court. The alleged threatening some of them with
Federal Circuit. infringers could continue infringing infringement suits unless they take
In Blonder-Tongue, the Supreme Court until such time as the plaintiff brought licenses, and by bringing civil actions
held that when a patent is found invalid or suit against each of them and reliti- against some of them, the plaintiffs
unenforceable in one action, the patentee is gated the question of validity.42 herein have acted on grounds generally
collaterally estopped from claiming that the A Rule 23(b)(1)(B) defendant class also applicable to the class and any sub-
patent is valid or enforceable in another, so may be warranted. As previously noted, Rule classes thereof. Further plaintiffs’
long as the patentee had a full and fair oppor- 23(b)(1)(B) class treatment is appropriate if claims for relief against each defen-
tunity to litigate the validity of its patent.40 individual adjudications either would be dis- dant contain prayers for injunctions.
Following Blonder-Tongue, several patent positive of the interests of other class mem- Each defendant has amended its coun-
infringement defendant class actions have bers or would substantially impair or impede terclaims to pray for declaratory and
been certified under Rule 23(b)(1)(A), on the the ability of absent class members to protect injunctive relief. These prayers are typ-
ground that inconsistent or varying adjudi- their interests. Certification of a defendant ical of the requests for relief usually
cations on validity and enforceability issues class under Rule 23(b)(1)(B) is appropriate in made by patentees and alleged
in individual actions could establish incom- patent infringement actions because the typ- infringers in patent infringement
patible standards. ical expense and complexity of a patent actions. By these counter-claims final
For example, in Standal’s Patents, a patent infringement action may, as a practical mat- injunctive relief and declaratory relief
infringement action involving sawmill equip- ter, give patent rulings in one court significant with respect to the class as a whole has
ment, the court certified a defendant class persuasive value in other court, even in the been made appropriate.45
under Rule 23(b)(1)(A) despite the argument absence of a published decision or any res To be sure, the certification of a defendant
that Blonder-Tongue meant that the absent judicata or collateral estoppel effect. As the issues class may not always be appropriate.
defendants would not be harmed by an court indicated in Research Corporation v. In Tilley v. TJX Companies, Inc.,46 the court
adverse ruling and could only benefit from Pfister Associated Growers, Inc.: stated that “there will be no single act or
separate adjudications in separate actions: The difficulty of subject matter inher- refusal to act on the part of the plaintiff (the
Suppose that Standal’s brought an ent in most patent cases…give selected party opposing the class) that makes injunc-
action against one infringer, i.e., the adjudications of validity or invalidity tive or declaratory relief appropriate.”47 In
first class member, and its patent was more than the usual weight when a patent lawsuits presenting a true “reverse
found valid. Under Blonder-Tongue court is considering the adoption of declaratory relief case” that satisfies Rule
Standal’s would be permitted to bring another court’s opinion or reasoning by 23(b)(2)’s requirement of a request for “final
an action against the second means of comity. This practical fact, injunctive relief” or “corresponding declara-
infringer—the second class member. added to the great expense of defend- tory relief” in favor of the class and against
As long as the patent was found valid ing a patent suit of this type, would the party opposing the class,48 however, cer-
in each subsequent action, Standal’s tend towards impairing or impeding tification of a defendant issues class may be
could bring an action against the next the nonparty class members’ ability appropriate.
infringer. However, once the patent to protect their interests.43 When, as in Methode Electronics, a patent
was found invalid, for example, in the Other decisions, such as Technograph and holder allegedly has acted on grounds gen-
tenth suit, Standal’s would be pre- Dale Electronics, have reached the same con- erally applicable to members of the defendant
cluded from seeking redress from any clusion.44 class—and in particular, when the defendant
of the other 260 alleged infringers. If A plaintiff patent holder may also wish to accused infringer has raised one or more
this action were not certified as a class request certification of a mandatory defendant common issues by means of its affirmative

42 Los Angeles Lawyer June 2009

 defenses or a counterclaim for declaratory a simple matter of judicial economy. Having
Seeking an Experienced relief—a classwide adjudication in accordance
with Rule 23(b)(2) and (c)(4)(A) that con-
“tested” the strength of its patents in prior
nonclass proceedings, the plaintiff patent
Arbitrator/Mediator? cerns those issues may be necessary and appro-
priate under Rule 57 of Federal Rules of Civil
holder may be able to significantly increase the
likelihood that the same common issues
Procedure and 28 USC Section 2201(a), which would withstand more intensive scrutiny in
STEVEN govern declaratory relief actions.49 a subsequent defendant class action in which

RICHARD Class Notice

multiple defendants may combine their defen-
sive resources. ■
SAUER, ESQ. Although notice to members of the defendant
class is not automatically required in a manda- 1 See FED. R. CIV. PROC. 23(b)(3) Advisory Committee
tory defendant issues class under Rules Notes (1966).
COUNSELOR AT LAW • SINCE 1974 2 Harris v. Palm Springs Alpine Estates, Inc., 329 F. 2d
23(b)(1), (b)(2), and (c)(4), the plaintiff patent
909, 913-14 (9th Cir. 1964).
holder usually should request that notice be 3 See General Tel. Co. of Northwest, Inc. v. EEOC, 446

“He is truly a master given anyway. The court is given discretion by U.S. 318, 330 (1980); Pederson v. Louisiana State
Rule 23(d)(2) and (c)(2)(A) to direct “appro- Univ., 213 F. 3d 858, 868 (5th Cir. 2000).
in his art.” priate” notice to be given in Rule 23(b)(1) and 4 See Ansari v. New York Univ., 179 F.R.D. 112, 114

(b)(2) class actions “for the protection of the (S.D. N.Y. 1998).
6,000 members of the class or otherwise for the
5 Dale Elecs., Inc. v. R.C.L. Elecs., Inc., 53 F.R.D.

Settled over 5,000 Federal & fair conduct of the action.”50

531, 534 (D. N.H. 1971).
6 Thomas & Thomas Rodmakers, Inc. v. Newport

State Litigated Cases Following notice to absent defendant class Adhesives & Composites, Inc., 209 F.R.D. 159 (C.D.
members, well-funded and motivated defen- Cal. 2002).
7 Weinberger v. Thornton, 114 F.R.D. 599, 603 (S.D.
dants may step forward. Plaintiff patent hold-
Cal. 1986).
323.933.6833 TELEPHONE ers should recognize that the provision of 8 Rosario v. Livaditis, 963 F. 2d 1013, 1018 (7th Cir.
notice to absent defendant class members in 1992).
arbitr@aol.com E-MAIL a high-stakes patent infringement case—even 9 Local Joint Exec. Bd. of Culinary/Bartender Trust

if the infringement issue itself is not being Fund v. Las Vegas Sands, Inc., 244 F. 3d 1152, 1162
4929 WILSHIRE BOULEVARD, SUITE 740 adjudicated in the lead proceeding—may (9th Cir. 2001).
10 See Sullivan v. Chase Inv., 79 F.R.D. 246, 258 (N.D.
LOS ANGELES, CALIFORNIA 90010 result in the intervention or joinder in the
Cal. 1978); see also United States Trust Co. of New
action of additional defendants that have the York v. Alpert, 163 F.R.D. 409, 422 (S.D. N.Y. 1995).
incentive and resources to mount vigorous, 11 See Research Corp. v. Pfister Assoc. Growers, Inc.,

supplemental defensive challenges to the 301 F. Supp. 497, 499 (N.D. Ill. 1969) (“This court
plaintiff’s claims. Such defendants may seek, weighs the defendants’ protestations that they do not
for example, to reopen claim construction ‘desire’ to represent the entire class, but this is hardly
enough to overcome the overwhelming evidence of
issues or to challenge patent validity based on
their ability and intention to challenge the plaintiff’s
the production of new sources of alleged assertions of validity and infringement.”); Technograph
invalidating prior art. This scenario may Printed Circuits, Ltd. v. Methode Elecs., Inc., 285 F.
increase the delay and cost of the proceedings. Supp. 714, 721 (N.D. Ill. 1968).
12 See Amschem Prods., Inc. v. Windsor, 521 U.S. 591
Therefore, a defendant issues class may be
(1997); United States Parole Comm’n v. Geraghty,
appropriate only in cases in which the plain-
445 U.S. 388, 402-03 (1980).
tiff patent holder is quite confident in the 13 See Advisory Committee Notes, 39 F.R.D. 69, 100-
validity of its patent(s), is well versed in all 03 (1966).
prior art, and has chosen an initial defen- 14 See id.; see also Holmes v. Continental Can Co., 706

dant class representative and class counsel that F. 2d 1144, 1155 n.8 (11th Cir. 1983).
15 See Amchem Prods., Inc., 521 U.S. at 615; see also
can be expected to mount a comprehensive,
Penson v. Terminal Transp. Co., 634 F. 2d 989, 993
thorough, and vigorous defensive effort that (5th Cir. 1981) (citing FED. R. CIV. PROC. 23 Advisory
will not leave defensive “holes” that subse- Committee Notes (1966)).
quent intervening defendants can exploit. It 16 See FED. R. CIV. PROC. 23(c)(2).
17 See Holmes, 706 F. 2d at 1155-56.
may be prudent in some circumstances for a
18 See id.
plaintiff patent holder to first bring one (or 19 Bunnion v. Conrail, 1998 U.S. Dist. LEXIS 7727
even more) non-class-action patent infringe-
(E.D. Pa. 1998) (citation omitted).
ment cases against one or more select defen- 20 See, e.g., Dosier v. Miami Valley Broad. Corp., 656

dants to obtain favorable rulings on com- F. 2d 1295, 1299 (9th Cir. 1981); Laskey v. United
mon patent ownership, validity, enforceability, Auto. Workers, 638 F. 2d 954, 957 (6th Cir. 1981);
and claim construction issues before com- Robertson v. National Basketball Ass’n, 556 F. 2d
682, 685-86 (2d Cir. 1977).
mencing a subsequent defendant class action 21 Phillips Petroleum Co. v. Shutts, 472 U.S. 797, 808-
proceeding in a separate case. This is so 10 (1985).
because, although the prior favorable rulings 22 Id. at 811 n.3. See also KAN. STAT. ANN. §60-223.

against the nonclass defendants would not 23 Id.

24 Ortiz v. Fibreboard Corp., 527 U.S. 815 (1999).
be binding on subsequent class defendants in
25 Id. at 864-65.
a separate action, such prior rulings on com- 26 See FED. R. CIV. PROC. 23(c)(4)(A).
mon issues nonetheless, as a practical matter, 27 See F ED . R. C IV . P ROC . 23(c)(4)(A) Advisory
likely would be highly persuasive on the dis- Committee Notes (1966); see also In re Joint E. & S.
trict judge in the subsequent proceeding—as Asbestos Litig., 878 F. Supp. 473, 489-90 (E. & S.D.

44 Los Angeles Lawyer June 2009

N.Y. 1995); In re Tetracycline Cases, 107 F.R.D. 719,
735 (W.D. Mo. 1985).
28 Emig v. American Tobacco Co., 184 F.R.D. 379, 395 “OUTSOURCE” PATENT WORK TO MICHIGAN
(D. Kan. 1998) (citing 7B WRIGHT & MILLER, FEDERAL
PRACTICE AND PROCEDURE §1790 (2006)). FOR VALUE...
29 In re A.H. Robins Co., Inc., 880 F. 2d 769, 740 (4th

Cir. 1989), cert. denied, 493 U.S. 959, 110 S. Ct.

377, 107 L. Ed. 2d 362 (1989). ● We deliver 100% value at 50-75% of West Coast pricing
30 In re Gap Stores Sec. Litig., 79 F.R.D. 283, 293 (N.D.
● Named a Top 100 Patent Firm in Intellectual Property Today
Cal. 1978).
31 See Thomas v. SmithKline Beecham Corp., 201 ● Representative clients: NASA, General Motors
F.R.D. 386, 392 (E.D. Pa. 2001) (citation omitted).

QLG
32 Harris v. Palm Springs Alpine Estates, Inc., 329 F.
248.380.9300
2d 909, 914 (9th Cir. 1964).
33 See Technograph Printed Circuits, Ltd. v. Methode
QUINN LAW GROUP, PLLC www.quinnlawgroup.com

Elecs., Inc., 285 F. Supp. 714, 720 (N.D. Ill. 1968).

34 Kunkel v. Topmaster Int’l, Inc., 906 F. 2d 693, 695 MECHANICAL, CHEMICAL, ELECTRICAL, MATERIALS, AEROSPACE, AUTOMOTIVE, IT, AND SOFTWARE ARTS
(Fed. Cir. 1990).
35 Research Corp. v. Pfister Assoc. Growers, Inc., 301

F. Supp. 497, 499 (N.D. Ill. 1969). See also Tech-

nograph Printed Circuits, Ltd., 285 F. Supp. at 723;
Dale Elecs., Inc. v. R.C.L. Elecs., Inc., 53 F.R.D. 531,
536 (D. N.H. 1971); Standal’s Patents, Ltd. v.
MOTORCYCLE EXPERT WITNESS
Weyerhaeuser Co., 2 U.S.P.Q. 2d (BNA) 1185 (D.
Or. 1986); Webcraft Techs., Inc. v. Alden Press, Inc., EXPERIENCE AREAS OF SPECIALITY
2 F. R. Serv. 3d 1396, 1403, 1985 U.S. Dist. LEXIS CA Licensed (#32551) Motorcycle Dynamics
16966, 228 U.S.P.Q. (BNA) at 184 (N.D. Ill. 1985). Professional Mechanical Engineer Motorcycle Performance Analysis
36 Markman v. Westview Instruments, Inc., 52 F. 3d M.S. in Mechanical Engineering Accident Reconstruction
967, 976 (Fed. Cir. 1995). Motorcycle Road Racing Expert
Edward P. Milich, P.E. Vehicle Testing & Data Acquisition
37 See Pall Corp. v. Micron Separations, Inc., 66 F. 3d License Holder
PO Box 5 Finite Element Analysis
1211, 1216 (Fed. Cir. 1995). National Roadracing Champion,
38 See SRI Int’l v. Matsushita Elec. Corp., 775 F. 2d Torrance CA 90507 #1 Plate Holder Technical Writing &
310. 710. 4708 voice Communications
1107, 1118 (Fed. Cir. 1985). Member, Society of Automotive
39 Shire LLC v. Sandoz, 07-CV-00197-PAB (D. Co. 310. 533. 9152 fax Engineers, Motorcycle Technical
epm@epmengineering.com Committee WHEN YOUR CASE REQUIRES
Dec. 5, 2008). Compare, e.g., TM Patents, L.P. v.
www.epmengineering.com 20 Years of Motorcycle Experience A CHAMPION
International Bus. Mach. Corp., 72 F. Supp. 2d 370,
Former NHTSA Associate
377 (S.D. N.Y. 1999) (A claim construction in a
Markman hearing is a final judgment for purposes of
issue preclusion.) with Graco Children’s Prods., Inc.
v. Regalo Int’l, LLC, 77 F. Supp. 2d 660, 663 (E.D.
Pa. 1999) (“[D]espite a previous court having held a
hearing on the claim construction of a patent pursuant
to Markman,” issue preclusion would not apply under
the facts of the case.) and Kollmorgen Corp. v.
Yaskawa Elec. Corp., 147 F. Supp. 2d 464, 469
(W.D. Va. 2001) (Issue preclusion applies only where
the earlier claim construction “was essential to a final
judgment on the question of the patents’ infringe-
ment.”).
40 Blonder-Tongue Lab. Inc. v. University of Illinois

Found., 402 U.S. 313, 334 (1971).

41 Standal’s Patents, Ltd. v. Weyerhaeuser Co., Civil

No. 86-219-FR, 1986 U.S. Dist. LEXIS 16623, at

*19 (D. Or. Dec. 11, 1986) (internal quotation marks
omitted).
42 Dale Elecs., Inc. v. R.C.L. Elecs., Inc., 53 F.R.D. 531,

537 (D. N.H. 1971).

43 Research Corp. v. Pfister Assoc. Growers, Inc., 301

F. Supp. 497, 499-500 (N.D. Ill. 1969).

44 See, e.g., Technograph Printed Circuits, Ltd. v.

Methode Elecs., Inc., 285 F. Supp. 714, 723 (N.D. Ill.

1968); Dale Elecs., 53 F.R.D. at 537.
45 Methode Elecs., Inc., 285 F. Supp. at 723.
46 Tilley v. TJX Cos., Inc., 345 F. 3d 34 (1st Cir.

2003).
47 Id. at 39.
48 See FED. R. CIV. PROC. 23(b)(2).
49 See Société de Conditionnement v. Hunter Eng.

Co., Inc., 655 F. 2d 938, 943 (9th Cir. 1981); Research

Corp. v. Pfister Assoc. Growers, Inc., 301 F. Supp. 497,
500 (N.D. Ill. 1969).
50 See FED. R. CIV. PROC. 23(d)(2); FED. R. CIV. PROC.

23(c)(1)(C)(2)(A); FEDERAL JUDICIAL CENTER, MANUAL

FOR COMPLEX LITIGATION (FOURTH) §21.311 (West
2004). See also Kerney v. Fort Griffin Fandangle
Ass’n, Inc., 624 F. 2d 717 (5th Cir. 1980).

Los Angeles Lawyer June 2009 45