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February 11, 2009 - Roderick McKelvie

Report on the February 2009 IP Section Luncheon:

Roderick McKelvie


Former U.S. District Court Judge, District of Delaware

Partner, Covington and Burling

February 11, 2009 - 11:45-1:15
Denver Chop House, Large Banquet Room


Over 60 IP Section members were in attendance for the February IP Section lunch presentation by Roderick McKelvie, a former U.S. District Court Judge, District of Delaware, now a partner at Covington and Burling. Mr. McKelvie shared his insights into the conduct of patent infringement cases earned from 10 years on the federal bench, during which he presided over more than 200 patent infringement cases, including more than 30 patent trials. Mr. McKelvie personally enjoyed patent cases because they represented a very interesting intersection of science, business and law. Yet, Mr. McKelvie acknowledged that many other judges are not so keen on patent cases and patent litigators. He framed the remainder of his talk around the question, “Why do courts hate us and our cases?”

One answer offered by Mr. McKelvie is that patent cases are extremely hard-fought and contentious, and that parties often lack incentives to compromise. Lawyers often treat a trial court as merely the first stop on the journey to the “real resolution” which will take place at the Federal Circuit. Also, Mr. McKelvie noted the dearth of conflicting legal principles announced by the Federal Circuit, which make it difficult for the trial judge to determine what the law is, let alone how to properly apply it.

Mr. McKelvie recommended to the national patent litigation bar to make better use of local counsel by making sure that local counsel are actively involved in the litigation, even if they are not in the lead.  Doing so, according to Mr. McKelvie, will alleviate the concerns by many judges that national patent litigators are disrespectful to the local practice and the local bar.

Mr. McKelvie also recounted several “war stories” from the bench. For example, in the wake of the Markman decision, and to some degree even today, judges struggle to fit claim construction within the context of the Federal Rules of Civil Procedure. It is unclear, for example, whether the claim construction process is more akin to trial or to summary judgment. A judges view on the answer to this question will often inform the way in which that judge conducts the Markman proceedings. Also, judges are not always sure whether to construe claims earlier or later in the proceedings.

Mr. McKelvie underscored the fact that difficulty in explaining the underlying technology to the court and to the jurors is a key obstacle in efficient conduct of patent trials. To overcome this obstacle, Mr. McKelvie suggested educating the judge by each side submitting videos describing the technology. Also, the jury may be helped by allowing lawyers to use extensive transition statements that put the testimony in context.

A video replay of this event can be found at the Colorado-CLE website: