Central District could get its first patent specialist

LOS ANGELES -- For the first time, a patent specialist might serve as an Article III judge on one of the nation's busiest courts, with the nomination of Mark Scarsi to a seat on the Central District in Los Angeles.

Patent litigators have met the news with enthusiasm, while being careful to praise judges already on the bench who have worked diligently in a pilot program to get up to speed and handle these complex cases, an increasing part of the court's docket.

"Naming Mark Scarsi, an intellectual property lawyer, to the federal bench in Los Angeles is fantastic," said Morgan Chu, the legendary patent litigator from Irell & Manella LLP.

"Our judges are outstanding and many of them are very experienced in patent litigation," Chu said. "Mark Scarsi's addition will only enhance the district's reputation in handling some of the toughest, most complex patent cases."

The Central District ranks third in the nation for patent cases behind the Eastern District of Texas and the District of Delaware. And thanks to the U.S. Supreme Court's May 2017 decision in TC Heartland LLC v. Kraft Foods Group Brands LLC, the number of patent cases could grow.

That decision held that patent cases should be brought in a jurisdiction where the defendant is based, which is expected to reduce the Eastern District of Texas' docket that has widely been viewed as a patent plaintiff's paradise.

Scarsi is co-managing partner of the Los Angeles office of Milbank, Tweed, Hadley & McCloy LLP. He has tried dozens of patent cases over the past 20 years in venues across the nation. He has a bachelor's and a master's degree in computer science, and worked as a software engineer for several years before becoming a lawyer.

Scarsi declined to comment for this story.

"Mark is a terrific guy and very talented IP professional who would add immeasurably to the Central District bench," said Wayne M. Barsky, a patent litigator at Gibson, Dunn & Crutcher LLP. "And I'm going to go far out on a limb and guess that the six terrific district judges currently participating in the Central District's Patent Pilot Program would heartily welcome a seventh!"

Luke L. Dauchot, a patent litigator at Kirkland & Ellis LLP, agreed Scarsi was "a great pick."

"You get to know a person pretty well trying a case together, which we did" in the Eastern District of Texas, Dauchot said. "He's a terrific trial lawyer and a genuinely good person."

"The combination of TC Heartland's patent venue rules and LA high-tech economic initiatives will lead to more patent cases" in the Central District, Dauchot said. "Mark's unique technical and patent litigation experience will add strength to an already capable and patent-savvy group of judges and law clerks."

Federal courts in California have approached patent cases differently. The Northern District, with its vast technology industry, developed local rules for judges to follow. That effort was largely led by U.S. District Judge Ronald M. Whyte, now retired.

"The first patent case to come to me for trial, I thought, 'I don't even know what a patent is,'" he told the Daily Journal in 2008.

Understanding how crucial patents were to the district's major industries, the judge threw himself into learning. He audited a patent class at Santa Clara University School of Law. He also developed the local rules and model jury instructions for other judges to follow.

U.S. Magistrate Judge Paul S. Grewal, a former patent litigator who clerked on the U.S. Court of Appeals for the Federal Circuit, also took a lead in refining the Northern District's approach to patent cases. But he left the court in 2016 to join Facebook Inc.

The Central District, headquartered in Los Angeles, and the Southern District, in San Diego, have resisted adopting local rules. Both of those districts have formed pilot programs in which certain judges agree to handle those cases.

In the Southern District, Judge Cathy Bencivengo is a former national co-chair of DLA Piper's patent litigation department. She has been part of a national effort to institute similar programs to help judges learn to handle patent cases. None of the judges in the Central District had much prior experience with patent litigation, although U.S. District Judge Andrew J. Guilford in Santa Ana is a former intellectual property litigator who handled trademark and trade secrets cases. Guilford has done much of the heavy lifting to make the court friendlier to patent cases, lawyers say.

Doug Muehlhauser, a patent litigator at Knobbe Martens, said he has been impressed by "the integrity, energy and skill" Central District judges have applied to resolving patent disputes.

"But I believe that Mr. Scarsi can make significant improvements to the processes and practices employed by the Central District for handling patent litigation matters," he said.

"For example, the manner in which patent cases are handled today differs significantly from judge to judge, even among the judges who participate in the court's Patent Pilot Program, some of whom apply their own specialized patent rules while others do not," Muehlhauser said.

Scarsi's presence on the court could be especially influential, some lawyers say. He could finally persuade the court to adopt local rules and best practices that would give litigants more predictability. Attorneys say they hope Scarsi might also encourage the use of more independent experts to advise judges. He would likely also be a great resource for other judges who don't have a background in those cases.

"Perhaps, in a couple of years, as the 10-year Patent Pilot Program comes to an end in 2021, Mr. Scarsi would be a leading voice in crafting fair, balanced and efficient patent litigation rules that could be adopted district-wide," Muehlhauser said.