Top 10 issues for Patent Litigation in 2011

The end of the year is the time for top 10 lists. Here, in no particular order, are my top 10 issues for patent litigators in 2011.
10. Microsoft Corp v. i4i Ltd. Partnership., and the clear and convincing evidence standard where the defendant relies on uncited art. Will the Supreme Court decide that a lesser burden of proof is required to show invalidity when art was never considered by the USPTO? If so, this will profoundly change both litigation and prosecution practice. My favorite possible implication – what presumption applies to a mongrel 103(a) combination of cited and uncited art? And will the PTO experience a data dump of prior art, if Microsoft prevails?
9. Global-Tech Appliances v. SEB S.A., and the standard for proving the mental state required for induced infringement. Whatever language the Supreme Court uses to describe the mental state required to show inducement will send everyone scrambling to prove or disprove the existence of that mental state.
8. Fee-shifting in the “exceptional case.” Several commentators have observed that a dual standard exists for an exceptional case finding, depending on whether the prevailing party is a plaintiff or defendant. This dual standard runs afoul of Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 (1994) and is likely to be reconciled. This may mean that prevailing defendants have a greater chance of recovering their fees from unsuccessful plaintiffs.
7. Rate pressures will increase. Okay, this is nothing new but it will continue in 2011. Although law firm CFOs will deny it (inevitably citing secret data garnered by Citigroup that show mythical competitor firms never discount), clients continue to look for ways to cut legal spend. Look for smaller teams, more outsourcing, fewer discovery battles, and more joint defense agreements.
6. We’ll see more Delaware and less Texas. As the Federal Circuit continues to mandate venue transfers, more plaintiffs will opt for an at least arguably relevant forum.
5. Judge Rader continues to place his stamp on the court. With just nine active judges, the Federal Circuit is overburdened. The three openings (two now that Kathleen O’Malley has been confirmed by the lame duck Senate) may get mired in committee, and the docket will slow down. Judge Rader will be even more powerful in reforming the court.
4. Reexaminations will increase. Accused infringers will seek reexamination more frequently, particularly inter partes reexamination. The statistical data on reexamination is promising. The interplay between venue (some districts will grant stays, others won’t), state of mind (does the finding of a SNQ defeat specific intent), alternative fee plaintiffs (for whom delay is particularly costly) and other factors make reexamination an increasingly attractive option.
3. The Federal Circuit will impose restrictions on damages. With Judge Rader firmly at the helm, and following his experiences sitting by designation in Marshall, TX, I expect to see some serious tightening of the Georgia-Pacific factors. The entire market value rule may find its best days are behind it.
2. False marking suits will disappear as quickly as they arose. There are several reasons for this, but the difficulty in proving deceptive intent coupled with decimal point damages will be a factor. A large award for a prevailing defendant under Section 285 (see number 8 above) may prove the death knell for false marking plaintiffs.
1. The battle of the titans. Apple, Google, Microsoft, Oracle, the list goes on. Not since the 1980’s, when IBM began touting licensing over litigation, have so many significant players taken up arms. Will we see a major consumer product enjoined, or will the doctrine of mutual assured destruction bring a fragile peace?