Malpractice & IP:
Are Things Getting Worse?
Patent Challenges in Prosecution
October 2014
Mercedes K. Meyer, Ph.D.
Drinker Biddle & Reath LLP │ Washington, DC
LEGAL DISCLAIMER
I am Not Your Lawyer
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These materials are public information and have been prepared solely for
educational and entertainment purposes to contribute to the understanding of U.S.
intellectual property law and practice. These materials reflect only the personal
views of the speakers and are not individualized legal advice. It is understood that
each case is fact-specific, and that the appropriate solution in any case will vary.
Therefore, these materials may or may not be relevant to any particular situation.
Thus, Drinker Biddle & Reath LLP and the speakers cannot be bound either
philosophically or as representatives of their various present and future clients to
the comments expressed in these materials. The presentation of these materials
does not establish any form of attorney-client relationship with Drinker Biddle &
Reath LLP and the speaker. While every attempt was made to insure that these
materials are accurate, errors or omissions may be contained therein, for which any
liability is disclaimed.
 And nothing represents the views of Drinker Biddle & Reath, its attorneys, or
any sentient life form on the earth or universe, or any parallel universe, alive or
dead, fictitious or real! This is for entertainment purposes only!

Law Firm Understanding
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 Change
― AIA & The Supremes & The Executive Branch
 Six Sigma
― Process
― Docketing
― Software & Keeping with the Times
 Education
 Professionalism
 Conclusion
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Changing Times & Changing Law
Change - Date Insanity
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2 sets of statutes next 20 yrs
New PTO Ethics Rules
6/8/95
URAA
11/29/99 5/29/00
AIPA
12/10/04 9/16/2011
PTA 154(b)
•
•
•
•
Claim of benefit – 1.78
Publication after 18 mos.
Inter partes reexamination
RCE v. CPA practice
• 17 years from grant
to 20 years from
filing
• CONS/DIVS/CIPS
9/26/2011
9/16/2012
•
•
•
•
Prioritized Exam
• Final rules for
interferences and
appeals
(9/10/04)
• CREATE
Act 103(c)
•
•
•
•
•
Prometheus
3/21/2012
Best mode
Virtual & false marking
OED Stat. of limitations
Micro entity status
PTE
3/16/2013
•
•
•
•
•
FITF
Derivation
Loss of interference
Repeal of statutory
invention registration
• PGR
Oath & Dec
Preissuance submission
Supplemental exam
IPR
PGR for business
methods (CBM)
Myriad
6/13/13
Supreme Court Decisions by Decade
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1900-1919: 13
1920-1949: 6 (including Funk Brothers)
1950-1969: 11 (Graver, Graham)
1970-1979: 8 (Gottschalk, Wertheim,
Flook)
1980-1989: 5 (Chakrabarty, Diehr)
1990-1999: 8 (Markman, WarnerJenkinson)
2000-2004: 7 (Festo)
2005-2009: 17 (Lizard Tech, Ariad,
KSR, Bilski)
2010-2014: 7 (Mayo, Myriad, Alice)
Doesn’t include remands etc., e.g.,
Classen or Lab Corp.
AIA & The Supremes
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 2 sets of statutes – 1 was enough
 Supreme Court “making law”
― KSR, Bilski, Ariad, Myriad, Prometheus
 USPTO “making law”
― New ethics rules
― New 101 Guidelines – makes Myriad & Prometheus
look pleasant
Statistics
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 Last 25 years, IP has gone from geek
status to HOT with Congress, The White
House and The Supremes
 Malpractice trends – see E. Coe article
― 382
claims reported 1996-1999
― 528 claims reported 2000-2003
― 685 claims reported 2004-2007
― ~16% going to the court to decide
 Big firm names and multimillion dollar
claims
Law Firm State
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 Increasing billable hours – the 1990’s shift
 Decreasing education / mentoring hours
 No metrics – metrics are law firm oriented not client oriented
(Billing Rate)x(Hours Billed) ≠ Qualitative Metric
―
Quality Control - Silos and generally lack of enforcement for uniform
procedures
 Moving Lawyers -tracking
 Industry mergers and breakups – tracking
 Gaping Gaps – Prosecutor to Litigator to Judge
― Copying / plagiarism – accepted patent drafting practice – Judge:
“dubious at best, and at worst, an insult to the professional standards of
the patent bar.”
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Six Sigma
Process, Docketing, Software &
Keeping Up With The Times
Six Sigma for Service NOW
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 WHO? - DuPont, GE, and many corporations
 WHAT?
― Standardization - Forms, procedures for handling papers
given new laws
― Consistency for applications, opinions, litigation, education,
licensing
― Docketing – missed dates
― Partners coming & going
 HOW?
― Analytics – quantitative and qualitative metrics are coming
and getting better
• LexMachina, LexisOptimizer, PatentAdvisor, IPDAS
Paper Process
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 Records to Docketing to Attorney
– paper flow & docket clearing
 Inbound & Outbound Partners
― New
docketing systems & data
transfer
 Paper to Paperless
• Clients are going paperless….
• Ownership of paper and
electronic files
• What are your procedures?
WHY? - 2 Cases
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 In re Druce (2014)
― Missed dates
― Back dating a series of documents over 2-3 years
― Blaming the paralegal
― Where were the procedures? Why didn’t docketing,
billing, an admin, or the lawyer detect it?
 In re Kelber
― Hiring systems – warning letters from OED & OED
process
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Education, Silos, Culture &
Professionalism
Changing Your Focus – The Why
Education, Silos & Culture
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 New attorney education
― 1970’s, 1990’s, Today
― The reality
― Mentoring – a dying art
― Paralegal / Support education
 Integration into system – silo issues
― My way is better
― Our malpractice is still cheaper than doctors’
 Risk Management & Law Firm Culture
― Reporting / Depression / Substance Abuse / Life style
― 360 Reviews of ALL professionals – Silo minimization
Professionalism
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 2 Buckets
― The embarrass your grandparents / common sense rule
 In re Caracappa, D2014-02 (2014) – one bucket
 In re Tassen – both buckets
Conclusions
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 Reaping the “reward” of the 1990’s legal shift
 We need better qualitative metrics that reflect
value to the clients
― Social
media connections, conflict checks / month, dollar
tracking annually / client over time, Roadshow number,
paper number, client turnover,
― Promoting roadshows which educate your own lawyers
while educating others
Mercedes K. Meyer, Ph.D., J.D.
Drinker Biddle & Reath LLP
Mercedes.Meyer@dbr.com
202-842-8821
THANK YOU!
References for Your Educational
Entertainment
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In re Caracappa, D2014-02 (2014)
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In re Druce, D2014-13 (Sept. 5 ,2015)
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Erin Coe, “Firms Face Rise in High Stakes IP Malpractice Suits, Law360 (March 2, 2012)
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Cold Spring Harbor Laboratory v. Ropes and Gray, 11-10128RGS (D.Mass. Jan 13, 2012)
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Jess Davis, “Baker Botts Dodges $41M Verdict in IP Malpractice Trial,” Law360 (May 15, 2014)
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Michael Ena “Jurisdictional Issues in the Adjudication of Patent Law Malpractice Cases in Light of Recent Federal Circuit Decisions, 19 Fordham Intellectual Property,
Media and Entertainment Law Journal 220 (2008)
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Anthony K. Greene, Trends in Intellectual Property Lawyers Professional Liability Claims 1983-2010, ABA 37th Annual Conference on Professional Liability (June 3,
2011)
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David Hricik, “Lawyers, Clients, and Money” May 2014, excerpt from David Hricik & Mercedes Meyer, Patent Ethics: Prosecution (LexisNexis 3d ed. Forthcoming 2014)
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In re Kelber, D2006-13
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Malpractice – Panel Examines Several Problem Areas Specific to Intellectual Property Practice, 27 Law. Man. Prof. Conduct 372 (2011)
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Mercedes K. Meyer, “Professionalism Before the Office: Some Issues,” AIPLA 2014 Annual Meeting, October 25, 2014
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Samuel Oddi, “Patent Attorney Malpractice, An Oxymoron No More 2004 U. Ill. J.L. Tech. Pol’y 1 (2004)
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Supreme Court List: http://en.wikipedia.org/wiki/List_of_United_States_patent_law_cases
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Jennifer Smith, “The Wrong End of Lawsuits,” The Wall Street Journal (Feb. 6, 2012)
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C. Scheinfeld and Parker H. Bagley, “Beware: Patent Malpractice Suites Are on the Rise,” 249 New York Law Journal
In re Tassen, No. 2013-07) (Dir. USPTO 2013), available at http://e-foia.gov/Foia/RetrievePDF?sytem=OED&flNm=0094_DIS_2003-09-098