Boston Business Journal

Legal maneuvers

by Sarah Chapin Columbia
June 6, 2008

Federal court in Boston has traditionally been one of the most active venues in terms of number of patent cases filed annually. But intellectual-property lawyers and federal statistics said this is changing.

The number of IP-related lawsuits going to trial in Massachusetts has steadily decreased over the years -- due mostly, observers say, to the belief that other venues offer speedier resolution.

"There are a number of patent forums that are drawing cases because of particular aspects of those courts, and it's based on the perception that you can get to trial faster," said Tom Banks, managing partner of the Cambridge office of IP law firm Finnegan, Henderson, Farabow, Garrett & Dunner LLP.

As a result, Massachusetts companies looking to defend their patents against alleged infringers often think about giving up the home-court advantage, opting to file not in the federal court here in Boston but rather in a quicker court elsewhere. Likewise, New England companies being sued might end up in a far-flung district, picked by the plaintiff's lawyers because of the court's record of being plaintiff-friendly.

"There's a lot of venue shopping going on," said Sarah Chapin Columbia, a partner and co-head of the Boston Intellectual Property Practice Group at McDermott Will & Emery LLP.

Such legal maneuvering can have repercussions on both the state's business and law communities. Some companies involved in litigation could find themselves traveling farther for court proceedings and hiring local counsel in addition to their own regular IP attorneys. Meanwhile, companies that do file in Massachusetts could see any financial impact resulting from their patent disputes last longer because it takes more time to resolve cases here than elsewhere. The average time to trial is about two years, according to area IP attorneys.

There were 2,896 patent cases filed in the United States in the fiscal year ending Sept. 30, 2007, according to the Administrative Office of the U.S. Courts.

According to statistics from Administrative Office, 56 cases were filed in Massachusetts in 2007, compared with 73 in 2006 and 72 in 2005. Year to date, 21 cases have been filed in 2008.

Compare that with the Court for the Eastern District of Texas -- one of the so-called "rocket dockets" -- where 359 patent cases were filed, and California Central District Court, where 334 patent cases were filed. In fact, nine courts saw more filings than Boston in fiscal 2007.

"If I was advising a client, I'd say go to Texas. It's cheaper to go to trial, and there's less opportunity for a defendant to prepare a defense or turn up something that might knock out your patent," said Mike McGurk, a partner at Finnegan Henderson.

Because patent laws are federal in nature, courts across the country must apply patent laws uniformly. However, because individual courts have their own processes, procedures and self-imposed deadlines, cases often move at different paces in different courts.

The U.S. District Court for the Eastern District of Virginia was one of the first to earn the "rocket docket" label, when a judge there in the 1960s pushed to speed up patent cases. Other courts adopted similar positions, which changed how lawyers decide where to file.

"In the past, if you represented a Massachusetts company, you would want to file in a Massachusetts court. Now it's less of a primary factor, it's just a factor," said Eric Marandett, chairman of the IP Litigation Group at Choate Hall & Stewart LLP.

There are limits, however, in venue shopping. The court must have jurisdiction over the defendant, although in this age of global business, it's not often difficult to meet that criterion.