Zealous Advocacy, or Abuse of Advocacy?

by Lee Gesmer on October 11, 2008

In the Medtronic v. BrainLab patent litigation in U.S. District Court in Colorado, Senior U.S. District Judge Richard P. Matsch has sanctioned Medtronic Navigation, Inc. and its lawyers $4.3 million, an amount which represents part of the attorney’s fees and costs incurred by BrainLab in defending this case. This order is a follow-up to his decision last February ordering that Medtronic be sanctioned, but not deciding (at that time) the precise amount of the sanction.

Unusual circumstances led to this disaster for Medtronic and its counsel. As many readers of this blog know, the judge, not the jury, determines the scope of the patent claims in patent litigation. This is done by the judge before trial, in what is often referred to as a “Markman hearing.” The name of the hearing is based on the 1996 U.S. Supreme Court decision in Markman v. Westview, which held that patent “claim interpretation” is the province of the judge, not the jury. After the judge determines the scope of the patent and the meaning of the claims, he or she instructs the jury accordingly, and the lawyers are expected to honor the judge’s rulings and tailor their case to the judge’s pre-trial claim interpretation.

So, what went wrong in the Medtronics case? Apparently, during the jury trial on infringement the lawyers for Medtronic (the plaintiff), argued outside of the scope of claim interpretation determined by the judge.

Making a federal judge angry is almost always a bad idea. This is especially true when the judge is 78 year old U.S. District Court Judge Maitch, who has been on the federal bench since Richard Nixon appointed him 34 years ago and seen it all. (Judge Maitch presided over the Timothy McVeigh Oklahoma city bombing case. ) After Medtronic lost its patent case, the judge wrote (earlier this year):

Upon reflection, this Court finds and concludes that the rulings on the claims construction issues adjudicated the fairly debatable issues in this case and that the manner in which plaintiffs’ counsel continued the prosecution of the claims through trial was in disregard of their obligations as officers of the court. The fairness of the adversary system of adjudication depends upon the assumption that trial lawyers will temper zealous advocacy of their client’s cause with an objective assessment of its merit and be candid in presenting it to the court and to opposing counsel. When that assumption has been contradicted by a trial record of conduct reflecting a winning is all that is important approach to the trial process, the court has a duty to redress this resulting harm to the opposing party.

The court continued:

Rather than accept that the claims construction rulings stripped the merits from this case, counsel chose to pursue a strategy of distorting those rulings, misdirecting the jury to a different reading of the claim language, and blatantly presenting the jury with a product to product comparison contrary to established law and the Court’s cautionary instructions. . . . Capping all of this was a closing argument that misdirected the jury’s attention from the focus of the case, carefully crafted to avoid the Court’s instructions. That argument distorted both the evidence and the law, misleading the jury . . . .

Concluding, he stated:

Throughout these proceedings Medtronic and [its] lawyers have demonstrated that when they are faced with adverse court rulings, they proceed undeterred, with only superficial observance of the court’s determinations. Such conduct supports the conclusion that after the Markman rulings, Medtronic’s primary objective in pursuing this litigation was to put economic pressure on its competitor in the market.

Medtronic is likely to appeal the sanction. However, its predicament is complicated by the fact that in addition to “advocacy abuse” during trial the judge found Medtronic’s case to be frivolous, and he awarded sanctions on independent statutory grounds.

What is puzzling about this case is how Medtronic was able to get away with its in-court behavior. One would expect defense counsel to object strenuously to plaintiff’s attempt to ignore the Markman ruling during trial. If Medronic’s counsel persisted, the trial judge should have taken them into his chambers (the place that everyone else calls an office) and read them the riot act, even going so far as to threaten to hold them in contempt if they violated his order. Why that didn’t happen here, and why this problem was allowed to progress as far as it did, is something of a mystery to those who weren’t present in the courtroom during trial.

The judge’s choice of the phrase “advocacy abuse” is also interesting. If you asked around you’d find that very few lawyers are familiar with this phrase. In fact, a Westlaw search shows that the phrase has been used on only a handful of occasions in U.S. case law.

While the court did find this to have been an “exceptional case” justifying an award of fees against Medtronic under 35 U.S.C. Section 285, and against its attorneys under 28 U.S.C. Section 1927 for “unreasonably and vexatiously” multiplying the proceedings, in the alternative it awarded fees against both Medtronic and its attorneys under the court’s “inherent authority,” a judge-made concept that provides that the courts may sanction litigations and attorneys for conduct tantamount to “bad faith.” One may be left wondering whether abuse of advocacy rises to the level of bad faith. Undoubtedly, an answer to this question will be provided on appeal.

Read the full decision here.

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