ASSOCIATION OF BUSINESS TRIAL LAWYERSSAN DIEGO

REPORTVolume XIV No. 3 Summer 2007

Judge Ronald L. Styn:A Brown BagConversationBy Charles Berwanger, Esq. Gordon & Rees LLP

Picture: A file room con-taining pleadings from 500 cases. The files rangefrom simple one-inch thick files to files fillingmany file drawers. There is but one judge and oneresearch attorney in Department 62 to deal with

this mountain of paper andthe recurring paper wars itgenerates.

This is the world ofIndependent Calendar JudgeRonald L. Styn, who providedinsights on how counsel canpersuade a judge – specifical-ly Judge Styn – given thiscontext, and how counselmust prepare for trial.

This article will recountthe themes Judge Styn iden-

tified; the constraints that counsel must respect;and highlights of Judge Styn’s biography andcourt staff contact information.

I. Law and MotionBefore filing a discovery motion or a demurrer,

call or write to opposing counsel – in other words,“meet and confer.” The motion may not be neces-sary or it may be tailored to an actual dispute thatsubsists after counsel talk. Although not requiredby court rule, this is the best practice and isstrongly encouraged by Judge Styn. In fact, JudgeStyn by his “Department 62 Policies andProcedures” is available during ex parte hours toattempt to resolve these disputes without the

The U.S. Supreme CourtTakes On Patent LawBy Craig Countryman, Fish & Richardson P.C.

After a relatively longhiatus from patent cases, the Supreme Court hastaken a new interest in them, hearing six patentcases in the past two years. Two recent decisionsstand out: KSR v. Teleflex,127 S. Ct. 1727 (2007), andMedImmune v. Genentech,127 S. Ct. 764 (2007). Theyare notable not only for theprofound effect they willhave—both involve frequent-ly recurring questions inpatent law—but the way inwhich the Court decidedthem. The Court eschewedclear rules, emphasizing theneed for flexibility. It identi-fied where the Federal Circuit went astray, flaggedother issues not before it that deserve scrutiny bythe lower courts, and then left the Federal Circuitand District Courts to work out the details. This

InsidePresident’s Column

Hon. Jan M. Adler … … … … … p. 2

Should California Adopt Class Action Reforms?Christopher J. Healey … … … … p. 3

Class Actions: There Is No Reason to Fix What Isn’t BrokenRachele R. Rickert … … … … … p. 4

Do We Really Need Civility Guidelines?Daniel Lawton … … … … … … p. 5

(See “Hon. Ronald L. Styn” on page 6)

(See “Patent Law” on page 7)

Craig Countryman

Hon. Ronald L. Styn

As we reach and passmid-year, our chapter can look back with a feelingof accomplishment and forward with a sense ofanticipation. Since our last ABTL Report, we pre-

sented an exceptional dinnerprogram featuring HarvardLaw School Professor CharlesOgletree that was attended byover 300 people, making it oneof the most successful programsin our history. ProfessorOgletree’s eloquent speechabout Charles HamiltonHouston, “America’s GreatestUnknown Lawyer,” was trulyinspiring. We thank JudgeYvonne Campos for suggesting

that we co-sponsor this program with the HarvardLaw School Alumni Association and for making it pos-sible to bring Professor Ogletree to San Diego.

We presented two more outstanding BrownBag lunch programs, featuring Superior CourtJudge Ronald Styn and Fourth District Court ofAppeal Justice Cynthia Aaron. Our chapter alsorecently co-sponsored the 23rd Annual RedBoudreau Dinner, at which Cynthia Chihak wasrecognized as this year’s Broderick Award winner.

Last, but far from least, we congratulateMaureen Hallahan, our immediate past president,on her appointment as a Superior Court judge, andlong-time ABTL member Harvey Levine for hisinduction into the California Bar Association TrialLawyer Hall of Fame, in which he joins theHonorable Rudi M. Brewster as the second mem-ber of our legal community to be so honored.

Looking forward, we will present two moreexceptional dinner programs this year. OnSeptember 10, we will present LieutenantCommander Charles Swift and Seattle attorneyHarry Schneider, Jr., who successfully and coura-geously represented Guantanamo detainee SalimAhmed Hamdan before the United StatesSupreme Court. This program will be unlike anyour chapter has previously presented. Not only isthe subject matter of the program fascinating and

2

Hon. Jan M. Adler

President’s ColumnBy the Hon. Jan M. Adler, President ABTL

compelling, but as you listen to Commander Swiftand Mr. Schneider speak about the case, you willbe reminded why we should all be proud to bemembers of the legal profession and why what wedo is so important to ensure that we have thefinest and fairest system of justice in the world.

We will end the year with a program onDecember 3 featuring Duke Law School ProfessorErwin Chemerinsky, who is nationally recognizedas one of the foremost experts on the SupremeCourt. Professor Chemerinsky will speak aboutthe first two years of the Roberts Court and whatwe might expect from the Court in the future.Both of these programs will be truly outstanding,and our goal is to equal or exceed the audience wehad for Professor Ogletree.

Meanwhile, planning continues for the ABTLAnnual Program in the Napa Valley, which willtake place on October 5-7, 2007. The program,which is entitled “Security & Privacy Actions: TheChanging Landscape For Business Litigators,”will cover a host of cutting-edge issues in this bur-geoning field that you will not want to miss, andwill feature an all-star lineup of lawyers andjudges from across the state. We are delighted andhonored to present former Supreme Court JusticeSandra Day O’Connor as the keynote speaker, aswell as a special address by Kathleen Sullivan,the former Dean of Stanford Law School. And, asif all this is not reason enough to attend the pro-gram, the planning committee has arranged for aprivate wine tasting at the home and vineyard ofMary Jo and Art Shartsis. Registration informa-tion can be found at www.abtl.org.

You better act fast, however, as rooms at theSilverado Resort and the Meritage Resort arenearly gone. We thank our chapter’ representa-tives on the planning committee, Marisa Janine-Page, Monty McIntyre, Katherine Bacal andFrank Tobin, for their hard work and major con-tributions to this year’s Annual Program.

We are also pleased to report that ABTL will beworking with the San Diego County BarAssociation on a joint Civility and ProfessionalismCampaign in 2008. We thank Board memberChris Healey, who will be our representative onthe committee in charge of this most worthy cam-paign, as well as Heather Rosing, the incomingPresident of the County Bar, for inviting us to par-ticipate. Also, please be sure to look for the featurearticle on our chapter in the September issue of

(See “President’s Column” on page 18)

3

In some situations, classactions make a lot of sense. For example, if adefendant’s conduct has actually injured a groupof persons in the same way, or if liability can oth-erwise be uniformly resolved, class proceedingsprovide an efficient way to resolve the dispute.Injured parties get relief, the defendant gets final-ity and the court system is spared the burden ofmultiple lawsuits on the same issue.

However, for many large corporations and otherdeep pocket targets, class action procedures inCalifornia appear to be skewed in favor of classplaintiffs and the lawyers who represent them.Some view California class action litigation as ahigh stakes game of roulette, with the single mostimportant factor being the judge assigned todecide the class certification motion. Inconsistentcertification rulings fuel the perception thatCalifornia’s limited statutory scheme for classaction procedures requires an overhaul.

I. The Perceived Problem: ClassCertification is a Crap Shoot

The primary problem cited with Californiaclass actions — and chief grist for the tort reform-ers’ mill — is the lack of consistency in class certi-fication decisions.2 Every litigant in complex liti-gation faces the risk that reasonable minds candiffer on tough issues. But the stakes are higherin class actions, both for the defendants who facebet-the-company exposure if class certification isgranted and the absent plaintiffs whose rights arebeing litigated by strangers. Given the dueprocess risks for both sides, the perceived lack ofpredictability in the process is a concern.

The “inconsistent results” problem is perhapsbest illustrated by the recent conflict in certifica-tion rulings issued in wage and hour class actionsfollowing the California Supreme Court’s decisionin Sav-On Drug Stores, Inc. v. Superior Court(2004) 34 Cal.4th 319. Sav-On holds that a trialcourt has the discretion to grant class treatmentfor overtime pay claims, notwithstanding thearguably individualized inquiry required to deter-mine whether particular employees are exempt

Should California Adopt Class Action Reforms?By Christopher J. Healey, Esq., Luce Forward Hamilton & Scripps, LLP1

from the overtime requirement.Faced with similar facts, courts after Sav-On

have split on whether to certify class overtimeclaims. Dunbar v. Albertson’s,Inc. (2006) 141 Cal.App.4th1422, 1432-1433 (class certi-fication denied in overtimecase; plaintiffs fail to demon-strate that their individualclaims can be “extrapolated”to the class); Alba v. PapaJohn’s USA (C.D. Cal. Feb. 7,2007) 2007 U.S. Dist. LEXIS28079 (granting class certifi-cation; existence of central-ized policies and proceduressatisfy commonality requirement, despite individ-ual questions raised as to how specific managersspend their time).

II. Proposed Improvements To Class ActionProcedures in California

At present, California class action proceduresexist in a hodgepodge of statutes (C.C.P. § 382and Civil Code § 1781), court rules (C.R.C.3.760-3.771) and case law. With an eye towardaddressing the “inconsistent results” problem —whether real or perceived — here are four sug-gested changes that could enhance the certifica-tion analysis and management of Californiaclass actions.

1. Require Class Proponents to ProvideRealistic Trial Plans

One simple but important step would be torequire the class proponent to submit a trial plandetailing how the class claims can be fairly triedon a class-wide basis. Presently, class certificationdecisions are often based on the plaintiff’s case“theory,” with little or no practical considerationgiven to how the class claims will actually be tried.

That can lead to big headaches for trial courtsand litigants, as the Sav-On case illustrates. Sav-On upheld class treatment for the plaintiffs’ theo-ry of “deliberate misclassification,” but provided

(See “Class Action Reforms” on page 11)

Christopher J. Healey

4

(See “Not Broken” on page 13)

Class Actions: There Is No Reason to Fix What Isn’tBrokenBy Rachele R. Rickert, Esq., Wolf Haldenstein Adler Freeman & Herz LLP

they need to be structured in such a way that theysupport and not destroy the underlying purposeand utility of class action pro-cedure in California.

I. California Has AStrong Public Policy

Favoring Class ActionsCalifornia’s judicial policy

favors class actions. Richmondv. Dart Insudstries, Inc., 29Cal.3d 462, 473 (1981). (“[T]hisstate has a public policy whichencourages the use of the classaction device”). The CaliforniaSupreme Court has long rec-ognized that class actions help deter fraudulent

Class action lawsuits,when appropriately used, are an important andvaluable part of California’s legal system. Classactions have been used to battle some of thenation’s most serious social problems and toredress significant injuries. Because of this,California has a strong public policy favoring classactions. California class action law is also well-developed and the standards for class certificationare clear. Moreover, enactment of the Class ActionFairness Act has resulted an increase in the num-ber of class actions being litigated in federalcourts—a forum generally perceived by defen-dants to be more favorable to their interests.While no changes to current class action proce-dures are needed, if any future changes toCalifornia’s class action procedure are considered

Rachele R. Rickert

5

(See “Guidelines” on page 16)

the values embodied in them to enforce them ortake them seriously.

The late Sam Dash hadno use for such civilitycodes. His reasoning wassimple: “If you’re a profes-sional, you don’t need a BoyScout oath. If you’re not aprofessional, a Boy Scoutoath is flim-flam.” See A.Mashburn, “Professionalismin the Practice of Law: ASymposium on Civility andJudicial Ethics in the1990s,” 28 Val. U.L. Rev. 657, 685 (Winter 1994).

As long as twelve years ago, there were at least

Do We Really Need Civility Guidelines?By Daniel Lawton, Esq.1

I am personally sick andtired of hearing about the lack of civility in our pro-fession. Numerous speeches, reports, letters, andlaw review articles have abounded for at least tenyears on the issue of decreased civility and theneed to do something about it. Multiple jurisdic-tions and organizations have drafted codes andcreeds to combat this problem. See Comment, “ACritique of the Civility Movement: Why RamboWill Not Go Away,” 77 Marq. L. Rev. 751, 752(Summer 1994).

In the past, these codes and creeds resemblepapal encyclicals: scarcely read, even more scarce-ly heeded, and viewed as irrelevant by the faith-ful. No empirical study links civility codes to bet-ter behavior. Indeed, because many of these guide-lines are aspirational, they may send the exactopposite message if we don’t care enough about

Daniel Lawton

6

necessity of a motion.If a motion must be filed think brevity, clarity

and good English, admonishes Judge Styn.Remember those 500 cases on Judge Styn’s dock-et. Verbosity and flaccid writing is not persuasive.It indicates slopping thinking and unfairly bur-dens the reader. Edit, edit and edit again.

II. Judge Styn’s Pet PeevesFootnotes. If it is important – put it in the text.

If not, delete it.A footnote suggests that the writerwants to make a point but cannot figure outwhere or how to make it.

Mystery titles. Imagine a pleading where thetitle makes a mystery of what its purpose is. Try“Reply to Opposition to Motion…” not “Defendantsand Cross-Complainants Washington, Jeffersonand Lincoln’s Reply….”

Acco fastening a document to ensure it cannotbe read. Don’t!

Redundancies. “Plaintiff ’s Complaint in thismatter….” Don’t!

Two or more “Exhibit No. 1’s.” The sin of multi-ple lodgments. See Cal. R. of Ct. 2.10, 2.11, 2.114and 3.113 regarding exhibits.

Know and follow the court rules and JudgeStyn’s policies and procedures.

III. The TrialCourts stress that jurors’ time not be wasted;

that their comprehension be maximized; and thatthey be satisfied by their jury experience. Theseelements thread their way through court rulesgenerally and Judge Styn’s policies and proce-dures specifically.

Judge Styn’s policies and procedures and trialrequirements give emphasis to the need for coun-sel to plan for trial to avoid wasting jurors’ time.For example:

The Court expects counsel to put on a continu-al flow of witnesses.

If an evidence issue is anticipated, raise it in amotion in limine or before trial. Sidebars wastejurors’ time and are to be avoided.

If a deposition is to be used in lieu of testimony,provide excerpts to other counsel and Court beforetrial so the Court can rule on objections before thetrial starts.

If an exhibit or demonstrative evidence createsan issue raise it before trial.

Hon. Ronald L. StynContinued from page 1

Jury questionnaires are usually a waste of time.Provide instructions to Court before trial.Keep closing argument to 20 minutes or less –

otherwise you lose jurors’ attention.Judge Styn also commented on various best

practices for trial counsel. For example:Do not use first names with witnesses.Dress professionally. Jurors notice.Yes, you can lead an expert witness.

Understand, however, that may dilute the expert’spersuasiveness.

Consider the value of having the judge ask avoir dire question rather than you asking.

Do not say before the jury – “We’re willing tostipulate…” unless you already have other coun-sel’s agreement.

Lawyers tend to talk too much.Do not read your closing argument.Technology. Jurors expect it. However, beware.

Know how to use it or have somebody availablewho does.

Finally, Judge Styn is available for trial postmortems. However, he is not available for settle-ment conferences of his own cases – even with awaiver.

SHORT BIOGRAPHY

EducationB.A. University of Redlands, 1963, withdistinctionLLB, Stanford Law School, 1965Member, Board of Editors, Stanford Law Review

EmploymentLaw Clerk: The Honorable James M. Carter

United States District Judge1965-1966

Trial Attorney: Department of Health,Education and Welfare1966-1967

Assistant Professor: University of Kentucky College of Law,1967-1969

Adjunct Professor of Law: Cal. Western LawSchool, 1970-1980

Private Practice: 1969-2000Appointed to Superior Court April 10, 2000

2000-present

Selected ActivitiesMember, Board of Governors, The Associationof Business Trial Lawyers – San Diego;

President 1998Master, American Inn of Court – Louis Welsh

(See “Hon. Ronald L. Styn” on page 7)

7

Department 62 Staff and ContactInformation

Court Clerk: Kimberly MulliganCalendar Clerk: Lorinda JonesReporter: Susan HolthausStaff Attorney: Kerry Kawamura

Phone NumbersCourtroom: (619) 685-6055Calendar (619) 685-6117

Hon. Ronald L. StynContinued from page 6

Chapter; President 2002 - 2007Consultant – “Making a Claim on a TitleInsurance Policy,” C.E.B. Action Guide (1992)Consultant – “Title Insurance Practice,” 2d Ed.C.E.B. (1997)Judicial Consultant – “Real Property Remediesand Damages,” 2d Ed. C.E.B. (2002)Member, Board of Directors San Diego JudgesAssociation 2001-2002

Civic ActivitiesMember, Board of Directors, BlackfriarsTheatre (formerly Bowery Theater) 1989-1995

President 1991-95President, San Diego Club – University ofRedlands Alumni Association, 1985-1995Member, Gifted Education Committee, SanDiego City School, 1986Member, Board of Directors, PlaywrightsProject, President 1997-98Star Award, San Diego Theatre Guild, 1994

Patent LawContinued from page 1

article examines these two decisions, then exploressome of those unresolved details.

I. KSR v. TeleflexPatent protection ensures that companies who

invest substantial sums into developing new prod-ucts are able to recover those costs. When a newproduct is merely an obvious extension of what is

(See “Patent Law” on page 8)

8 (See “Patent Law” on page 9)

Relatedly, the skilled artisan will examine any artit “makes sense” to look at to determine whetheran element is known, not just art designed tosolve the same problem. “[F]amiliar items mayhave obvious uses beyond their primary purpos-es.” Id. at 1742.

The Court came closest to offering a new test bystating that “[w]hen there is a design need or mar-ket pressure to solve a particular problem andthere are a finite number of identified, predictablesolutions,” if one of those solutions succeeds andwas “obvious to try,” it is unpatentable. By indis-criminately rejecting an “obvious to try” standardand restricting the relevant art to that aimed atthe same problem the patentee solved, theFederal Circuit had gone beyond guarding againsthindsight bias, instead “deny[ing] factfindersrecourse to common sense.” Id.

Applying these principles to Teleflex’s patent,the Court found that prior art the Federal Circuithad dismissed was relevant, despite being direct-ed at different problems than Teleflex’s patent.That art, coupled with the strong market incen-tive to convert mechanical pedals to electronicpedals, rendered Teleflex’s combination obvious.The Court closed by stressing that obviousness isultimately a legal determination, and summaryjudgment is appropriate when the scope of theprior art and the claims, along with the level ofordinary skill in the art, are not in material dis-pute. Id. at 1745-46.

As may already be apparent, KSR leaves manyunanswered questions. If the skilled artisan’sinquiry doesn’t stop at art directed at the sameproblem, where does it stop? What types of evi-dence are probative of “market pressure” or“design need”? In what technology areas is suchevidence most appropriate? How many solutionsis a “finite number,” justifying application of thepreviously disapproved “obvious to try” test?

These questions defy concrete answers, for theCourt repeatedly stressed the importance of flexi-bility. As to the first question, litigants mustensure their technical experts specifically articu-late why the person of ordinary skill would orwould not consider a piece of art, while takingcare not to focus solely on the art’s explicit teach-ings at the expense of background about the typeof inferences and creative steps the skilled artisanwould be expected to employ. Id. at 1740-41.

The “market pressure” language may well be

Patent LawContinued from page 7

known, however, patent protection is unnecessarybecause the development cost is likely minimal,and may even deprive an earlier patentee, whoinvented part of the existing technology, the fullvalue of his contribution. See 127 S. Ct. at 1741.

KSR dealt with a specific “obviousness” prob-lem: if technology A is known and technology B isalso known, when is the combination of A and Bpatentable? Is patent protection forbidden onlywhen the prior art contains some “teaching, sug-gestion or motivation” to combine A and B?

Teleflex patented an automobile pedal that (1)sends electrical signals to communicate its posi-tion to the engine throttle, (2) sends the signalsfrom a sensor located on a fixed pivot point on thepedal apparatus, and (3) can be adjusted to pivotcloser to or further from the driver. Pedals withfeatures (1) and (2) were known in the art, as werepedals with features (1) and (3), with the sensoron the pedal’s footpad rather than the pivot point.But while each feature was known in the art, aswere various combinations, no single device hadyet combined all three. Id. at 1735-37. WasTeleflex’s device patentable?

The Court began by cautioning against patentsthat merely combine known features, for suchpatents risk withdrawing ideas from the publicdomain. Combination patents are appropriate ifthe prior art discourages combination because itis thought likely to fail or to present safety risks,or if the combination provides an unexpectedresult or “new synergy.” However, a combinationthat is simply a “predictable use of prior art ele-ments according to their established functions” isobvious. Id. at 1740. Although a specific sugges-tion to combine the prior art may reveal what is“predictable,” it is unnecessary; “in many fields”market demand may drive design trends, whilepublications may contain little discussion of obvi-ous techniques. Id. at 1741.

The standard in this circumstance has histori-cally been whether the combination would beobvious to a hypothetical person of ordinary skillin the art—patent law’s analog to tort law’s rea-sonable person. But the Court added new sub-stance to it, explaining that the skilled artisanwill find a combination obvious if it is an obvioussolution to any problem in the field, not just theparticular problem the patentee set out to solve.

9

Patent LawContinued from page 8

the most interesting aspect of KSR because it pro-vides a new weapon to show obviousness. Untilnow, market evidence has primarily been used bypatentees to show their invention is commerciallysuccessful, an indicator of non-obviousness. AfterKSR, expert testimony from an economist exam-ining market trends in the years preceding thepatent application may help demonstrate obvi-ousness. In KSR, for example, testimony on therate at which automobile manufacturers wereshifting from mechanical to electronic pedals andwhen the shift began would have been useful.Also, technical experts should now opine on theextent to which published articles accurately rep-resent the true state of the art: the more completea picture published articles paint, the less impor-tant market evidence will be. Patentees may findsuch evidence a useful way to minimize theimportance of market evidence.

Given the flexibility of the standard, precedentswill be much more fact-bound, leaving district

courts as the most important players in giving lifeto KSR’s sweeping language.

II. MedImmune v. GenentechMedImmune addressed the issue of when a

potential infringer, not yet accused of infringe-ment, may seek a declaration that a patent isinvalid. Timing matters because often any districtcourt in the United States will have jurisdiction tohear a patent case. Who chooses the forum, then,determines whether the time to trial is under ayear or closer to 3-5 years, and also determineswhether the case will be brought in a District withPatent Local Rules that impose additional disclo-sure requirements during discovery. The stakes inMedImmune were even higher, involving not justforum selection, but whether either party hadstanding to sue at all.

MedImmune entered into a license agreementwith Genentech, agreeing to pay royalties untileither certain patents expired or a court invalidat-ed them. The licensed products were those “whosesale would infringe” one of Genentech’s patents or

(See “Patent Law” on page 10)

10

Patent LawContinued from page 9

pending patent applications. Four years later,Genentech demanded that MedImmune beginpaying royalties on a product that Genentechbelieved infringed its recently issued patent.MedImmune paid the royalties “under protestand with reservation of its rights,” and promptlyfiled suit seeking a declaration that Genentech’spatent was invalid and not infringed.

Everyone agreed that MedImmune would havestanding to seek declaratory relief if it hadrefused to pay royalties. But was there an actualcontroversy between the parties whileMedImmune was still paying? The FederalCircuit held there was not, but the SupremeCourt reversed.

The Court pointed to cases where, when apotentially unconstitutional law is involved, aplaintiff is not required to risk criminal prosecu-tion in order to challenge the law’s validity. See,e.g., Steffel v. Thompson, 415 U.S. 452, 459-60(1974). In such cases, individuals “choose” not toengage in the proscribed conduct, eliminatingtheir imminent risk of prosecution, but that choicedoes not eliminate jurisdiction because it is “effec-tively coerced.”

Although MedImmune involved two privateparties, the Court extended Steffel and held thatMedImmune’s choice to pay royalties was alsoeffectively coerced. If it did not pay, yet continuedto sell its product, it would face a suit for infringe-ment, triple damages, attorneys’ fees, and aninjunction that would prevent it from selling aproduct that accounts for 80% of its yearly rev-enues. Therefore, MedImmune’s on-going royaltypayments did not eliminate the actual controver-sy between the parties, even though it eliminatedthe imminent risk MedImmune would be sued forinfringement, nor did its contractual promise topay royalties also contain an implied promise notto challenge the validity of the patents.

MedImmune puts licensors in an awkwardposition. They are now subject to invalidity suits,but cannot counter-claim for infringementbecause the licensee’s sales are under authority ofthe license. Nor can they repudiate the license byclaiming an anticipatory breach, for the licensee isstill performing. The license itself may allow thelicensor to terminate it, after which the licensorcould counterclaim for infringement (the license

in MedImmune permitted either party to termi-nate it on 60 days after giving written notice.) Butthere is nothing current licensors can do to avoidsuit altogether.

More significant, the Court also addressed anissue not before it, remarking that the FederalCircuit’s general requirement that a declaratoryjudgment plaintiff have a “reasonable apprehen-sion of imminent suit” was inconsistent withprior Supreme Court precedent. 127 S. Ct. at774 n.11. The Federal Circuit has since jetti-soned the test, extending MedImmune to allpatent declaratory judgment cases, not justthose involving a pre-existing license betweenthe parties. SanDisk v. STMicroelectronics, 480F.3d 1372 (Fed. Cir. 2007); Teva v. Novartis, 482F.3d 1330 (Fed. Cir. 2007).

One question after MedImmunue is what con-tractual language should prospective licensorsinsist on in the future? A provision prohibiting thelicensee from challenging the validity of thepatent under any circumstances is unenforceable.See Lear v. Adkins, 395 U.S. 653, 673-74 (1969).Contractual language automatically terminatingthe license if the licensee sues, on the other hand,should be enforceable and would essentiallyrestore the pre-MedImmune rule. Extracting writ-ten admissions of validity and infringement couldbe beneficial, as would a provision requiring thelicensee to pay attorneys’ fees should it later chal-lenge validity and lose. An alternative is a provi-sion automatically stepping up the royalty rate ifthe licensee sues and wants to continue payingroyalties. Finally, a forum selection clause couldensure that if the licensor must litigate, it will bein a patentee-friendly district.

On a wider application, it now seems underMedImmune that any time a patenteeapproaches another party about a potentiallicense, it may open the door to a declaratoryjudgment suit. One way the patentee may pro-tect itself is by only proceeding after a suitableconfidentiality agreement is in place, preventingdisclosure of the negotiations as the basis for adeclaratory relief action. SanDisk, 482 F.3d at1375 n.1. MedImmune thus represents a signif-icant expansion of declaratory judgment juris-diction, and will inject even more uncertaintyinto an already murky area of the law. ▲

11 (See “Class Action Reforms” on page 12)

Class Action ReformsContinued from page 3

little guidance as to how those claims could beeffectively managed with a class of approximately1,500 employees. Issues such as whether theclass-wide overtime claims can be proven throughsurvey or statistical evidence, and how to accom-modate the defendant’s right to cross-examineindividual employees at trial were left unre-solved. As we approach the three-year anniver-sary of the California Supreme Court’s decision,the post-remand trial court in Sav-On still contin-ues to wrestle with these issues.

In other jurisdictions, a “rigorous analysis” oftrial plan issues is a mandatory prerequisite toobtaining class certification. See e.g., Castano v.American Tobacco Co. (5th Cir. 1996) 84 F.3d734, 744 (improper to certify class withoutknowing how the class claims can and will betried); Southwestern Ref. Co. et al v. Bernal et al.(Tex. 2000) 22 S.W.3d 425, 435 (“We reject theapproach of certify now and worry later”).3

Increasingly, some California trial courts arerequiring trial plans as a condition of the initialcertification order or continued class treatment.See e.g., Dunbar, 141 Cal.App.4th at 1432-1433(class action trial plan must demonstrate how theclaims asserted by the individual named repre-sentatives can be extrapolated to the class as awhole); Bell v. Farmers Ins. Exchange (2004) 115Cal.App.4th 715, 757 (class trial managementplan must not “restrict [defendant’s] right to pres-ent evidence against the claims”).

Current California procedures contain nospecific trial plan requirement, and not all trialcourts require them as a prerequisite to classcertification. Making trial plans a mandatorypart of the class certification process would forcea more careful consideration of the downstreamramifications of class treatment. That may leadcourts to deny certification in some cases, butthose that survive the “trial plan” screen wouldbe less vulnerable to attack through motions todecertify or on appeal.

2. Clarify The Extent To Which Trial CourtsMay Consider The “Merits” At The Class

Certification StageHistorically, California appellate courts have

sent conflicting signals on the extent which the“merits” of asserted claims or defenses should be

considered at the class certification stage. Somecourts have suggested that no consideration of themerits is proper. See e.g., Reyes v. Board ofSupervisors (1987) 196 Cal.App.3d 1263, 1271-1272 (“at the certification stage, [the] trial court isnot to examine the merits of the case.”).

That position appears to derive from a misread-ing of the U.S. Supreme Court’s decision in Eisenv. Carlisle & Jacquelin (1974) 417 U.S. 156. Eisenstates that trial courts are not to undertake a“preliminary inquiry into the merits” at the classcertification stage. Id. at 177. But as clarified laterin the opinion, this statement was intended onlyto preclude courts from deciding which partywould “prevail on the merits” in the context of aclass certification motion. Id. at 178.

This interpretation of Eisen is consistent with theCalifornia Supreme Court’s decision in Linder v.Thrifty Oil Co. (2000) 23 Cal.4th 429. In Linder, theCourt held that the trial court could not deny class cer-tification based on a finding that the plaintiff’s claimslacked merit. But the Court did not preclude any mer-its consideration at the class certification stage.Rather,the Linder court stated that “issues affecting the mer-its of a case may be enmeshed with class actionrequirements,” such as predominance of commonissues and typicality. Id. at 443.

The Court’s recent decision in Fireside Thrift &Loan v. Superior Court (2007) 40 Cal. 4th 1069,makes clear that the merits can and should beconsidered at the class certification stage. As theCourt explained, this analysis is “intertwined”with the overall issue of whether the class certifi-cation is proper:

… [P]laintiff need not establish a likeli-hood of success on the merits in order toobtain class certification. It does not fol-low [however] that … a trial or appel-late court is precluded from consideringhow various claims and defenses relateand may affect the course of the litiga-tion, considerations that may overlapthe case’s merits. … Indeed, in Linderwe expressly recognized that “whetherthe claims or defenses of the represen-tative plaintiffs are typical of classclaims or defenses” was an issue thatmight necessarily be intertwined withthe merits of the case, but which thecourt considering certification couldand should consider.

12 (See “Class Action Reforms” on page 13)

Class Action ReformsContinued from page 11

Fireside, 40 Cal.4th at 1091-92 (emphasis added).

3. Clarify The Extent To Which ClassTreatment is Proper If Liability Issues

Require Individualized ProofOne of the most difficult issues in class action man-

agement is whether certification should be granted ormaintained, even though the resolution of some liabil-ity issues requires individualized proof.

Class proponents argue that Sav-On answersthe question. See Sav-On, 34 Cal.4th at 334(“Individual issues do not render class certifica-tion inappropriate so long as such issues may beeffectively managed.”). But that may not be thecase if the individual issues affect liability. InJohnson v. Ford Motor Co. (2005) 35 Cal.4th 1191,the Court held that a claim for punitive damagescould not be justified as disgorgement of profitsobtained from absent third parties, absent evi-dence that the defendants’ conduct with respect tothe absent parties was tortious. Citing Sav-On,the Court noted by analogy that in a class action,if individual issues remain after the commonquestions have been tried, “each plaintiff muststill by some means prove up his or her claim,allowing the defendant an opportunity to contesteach individual claim on any ground not resolvedin the trial of common issues.” Id. at 1210.Significantly, Justice Werdegar authored bothJohnson and the majority opinion in Sav-On.

Although the issue in Johnson was punitivedamages (not class certification), the Court’s state-ment strongly suggests that the defendant’s rightto present individualized liability evidence cannotbe ignored in class actions. Indeed, several postSav-On cases have denied class certification ofovertime claims, due to the class plaintiffs’ failureto accommodate the employer’s due process right tocross-examine each class member on individualissues at trial. See e.g., Jiminez v. Domino’s Pizza(C.D. Cal. 2006) 238 F.R.D. 241, 253 (employerdefendant in overtime class action has the “right tocross-examine each general manager to determinewhether there is liability as to that specific per-son”); Sepulveda v. Wal-Mart Stores, Inc. (C.D. Cal.2006) 237 F.R.D. 229, 249 (defendant is entitled topresent evidence showing that each employee actu-ally did perform primarily exempt tasks).

There are no easy answers to this question. A

blanket rule that precludes class treatment when-ever any liability issues require individualizedproof may unduly restrict trial courts’ discretion to“promote justice,” one of the underlying justifica-tions for class actions in the first place. However,given the legitimate due process concerns (and themanageability challenges) arising from certaintypes of class actions, some guidance to trial courtson this issue would seem appropriate.

Consistent with Johnson, one possibleapproach is to create a rebuttable presumptionthat class certification should be denied if materi-al issues affecting liability require individualizedproof at trial. Trial courts could still grant certifi-cation, but only if the class proponent providedcompetent evidence sufficient to rebut the pre-sumption. For example, class treatment mightstill be appropriate if the resolution of importantcommon issues would benefit litigants and thecourt system, with the defendant’s right to litigatethe remaining issues with individualized proofpreserved in some manageable proceeding.

4. Grant A Direct Right of Appeal WhetherClass Certification Is Granted or DeniedGenerally speaking, an order denying a motion

for class certification will trigger a direct right ofappeal. See Daar v. Yellow Cab Co. (1967) 67Cal.2d 695, 698-699. In contrast, an order granti-ng class certification is reviewable only through adiscretionary writ. Blue Chip Stamps v. SuperiorCourt (1976) 18 Cal.3d 381, 387.

But most writ petitions are denied with apostcard. That leaves defendants with theHobson’s choice of risking “ruinous” liability inorder to obtain appellate relief after trial, oraccepting settlement terms that are grosslyinflated given the exponential liability exposurefrom a class trial. In some cases, defendantsmay literally be unable to bond around anadverse trial judgment and thus effectively haveno ability to seek appellate review.

The solution is to level the playing field so thatboth sides have a direct right of appeal whetherclass certification is granted or denied. Thatapproach is fair, given the potentially outcome-determinative nature of the certification decision.See Carabini v. Superior Court (1994) 269Cal.App.4th 239, 243-244 (appellate reviewappropriate given that an “order granting ordenying class certification frequently determineswhether the case has continuing viability.”).

13

Class Action ReformsContinued from page 12

III. ConclusionIn summary, being a creature of equity the

linchpin for class litigation is fairness.Improvements in California’s class action proce-dures would further that underlying objectiveby making the certification process more trans-parent and hopefully more consistent. Whetherthe suggestions outlined in this article go too faror not far enough is a legitimate question fordiscussion. Let the debate begin. ▲

1 The author wishes to thank Erin Maysent for her research assistance onthis article.

2 That sentiment prompted Assembly Bill 1505 (Parra), class actionreform legislation that would have amended California class action pro-cedure to largely mirror Fed. R. Civ. P Rule 23.

3 Several federal courts have recently taken the trial plan analysis even astep further, requiring plaintiffs asserting securities fraud claims todemonstrate “loss causation” by a preponderance of the evidence inorder to obtain class certification. See e.g., Oscar Private EquityInvestments v. Allegiance Telcom (5th Cir. May 16, 2007, No. 05-10791)2007 U.S. App. LEXIS 11525.

(See “Not Broken” on page 14)

Not BrokenContinued from page 4

practices, aid legitimate business enterprises“by curtailing illegitimate competition,” andavoid the burden to the judicial system of “mul-tiple litigation involving identical claims.”Vasquez v. Superior Court, 4 Cal.3d 800, 808(1971). Furthermore, as the U.S. Supreme Courthas recognized, a class action overcomes “theproblem that small recoveries do not provide theincentive for any individual to bring a soloaction prosecuting his or her rights.” AmchemProds., Inc. v. Windsor, 521 U.S. 591, 617 (1997).Class actions are utilized and encouraged toprevent a defendant from avoiding liability forwrongdoing because individual victims maylack the sophistication, financial motivation orresources to sue on their own. Vasquez, 4 Cal.3dat 808.

For example, where the amount in controver-sy is generally not sufficient to warrant individ-ual litigation or to obtain legal assistance inprosecuting the claim, the class action deviceremains the only practicable way for consumersof such services to deter and redress wrongdo-ing. See, e.g., Javor v. State Board ofEqualization, 12 Cal.3d 790, 797 (1974) (Wherethe small amount of sales tax overage involved

“may discourage an individual action as eco-nomically impractical, the state would beunjustly enriched, if a class suit were not per-mitted.”); Cipro Cases I and II, Nos. 4154, 4220,2003 WL 23005275, *8 (Cal. Superior Nov. 25,2003) (“Few of the present Class members couldafford to undertake individual litigation againstBayer to recover the relatively modest damagesat issue here. But the failure to recover suchdamages is a real hardship to people of averagemeans.”)

II. Class Action Law In California Is Well-Developed And Allows Courts The

Flexibility They Need California class action procedures are well-

developed and include statutes (Cal. Code Civ.Proc. §382; Cal. Civ. Code §1781), a substantialbody of case law law (just a small sample of whichis mentioned herein), local rules for case manage-ment (Cal. Rules of Court 3.750, et seq.), and pub-lications on case management issued by theJudicial Council of California and the FederalJudicial Center (e.g., the Deskbook on theManagement of Complex Civil Litigation).

The standards for class action certification arestraightforward. Class certification requires theexistence of both an ascertainable class and awell-defined community of interest among classmembers. Sav-on Drug Stores, Inc. v. Sup. Ct., 34Cal. 4th 319, 326 (2004); Linder v. Thrifty Oil Co.,23 Cal.4th 429, 435 (2000); Cal Code. Civ. Proc.§382; Cal. Civ. Code §1781. The Supreme Court ofCalifornia has suggested that Civil Code §1781,like Fed. R. Civ. P. 23, may be used as a procedur-al guideline to ensure fairness in class actionsuits, even in non-consumer cases where §1781 isnot directly applicable. Thrifty Oil, 23 Cal. 4th at437-38 (citing Vasquez, 4 Cal.3d at 820-21); Reyesv. San Diego County Bd. of Supervisors, 196 Cal.App. 3d 1263, 1270-71 (1987).

“The certification of a class is a discretionarydecision that demands the weighing of many rel-evant considerations.” Sav-On, 34 Cal. 4th at 336.While trial judges have been given considerablediscretion in applying these criteria to particularcases, that fact does not make the class certifica-tion inquiry a “crap shoot.” The same may be saidabout any significant pre-trial motion, from dis-covery to summary judgment – the judicialassignment may play a role in the outcome.

14

Not BrokenContinued from page 13

However, no matter what the circumstance, thetrial court needs to determine that the record con-tains substantial evidence that common issues oflaw and fact will predominate over individualissues if the claims are tried as a class action. Id.at 328-29. If it does not, defendants surely willseek immediate appellate relief, and appellatecourts review such matters in writ proceedings.Id. Giving defendants a right to delay resolutionof a class case for years simply by filing an appealis not the correct solution.

The trial court is in the best position to deter-mine whether the case is appropriate for classaction treatment (Thrifty Oil, 23 Cal. 4th at 435),and no two cases are exactly the same. Thus, it isnot surprising that different cases in the samegeneral area of the law may have different out-comes. For example, one wage-and-hour case maybe appropriate for class action treatment becausethe work performed by employees allegedly mis-classified as exempt was virtually identical in allof the company’s stores (as was the case in Sav-On). Another wage-and-hour case may be found tobe inappropriate for class action treatmentbecause the duties of the class members variedfrom store to store and would require individual-ized proof as to liability (as was the case inDunbar v. Albertson’s, Inc., 141 Cal. App. 4th 1422(2006)). In the latter situation, issues of liabilityrequired individualized proof and thus renderedthe common issues of fact and law comparativelyinsubstantial.

These different outcomes are due to factual dif-ferences presented to the Court in a particularcase, not due to any inherent defect in California’sclass action law. The same may be said for securi-ties, anti-trust, consumer, civil rights and othertypes of class litigation – the results depend onthe particular facts presented to the Court.

As a result, in those cases where class certifica-tion is appropriate, a detailed trial plan at the classcertification stage may be unnecessary. For exam-ple, consider a securities case where the plaintiff isalleging that directors of a company’s Board ofDirectors breached the fiduciary duties they owedto the company’s shareholders by failing to maxi-mize the value of their shares in the context of amerger or acquisition. The breach of fiduciary dutyclaim can be proven with facts applicable to the

(See “Not Broken” on page 15)

class as a whole (i.e., defendant’s conduct in enter-ing into the merger agreement with the acquiringcompany), rather than by a series of facts relevantonly to the shareholders. A requirement that theplaintiff prepare a detailed trial plan in every casewould be unnecessary and would only result in apointless expenditure of attorney time andexpense, reducing the portion of the recovery thatends up with the shareholders. Thus, rather thanrequiring a trial plan in all cases or creating someunprecedented presumption against certification,attorneys should use the planning procedures setforth in the California Rules of Court to ensureflexibility for both the parties and the Courtdepending on the needs of a particular case.

Even in those cases where a trial plan may behelpful to demonstrate the predominance of com-mon issues of law and fact, the trial court alreadyhas the discretion to require one. See FiresideBank v. Superior Court, 40 Cal. 4th 1069, 1087(2007) (a trial court has “broad discretion to struc-ture and streamline class action proceedings”).But defendants should be careful what they askfor, since in order to create a fully developed trialplan the parties need to exchange merits discov-ery first to show how the case would be presentedat trial the Court could also agree to certify a par-ticipation issue for class determination under Cal.R. of G. 3.765(b) which defendants typically arereluctant to do. The court could also agree to cer-tify a particular issue for class determinationunder Cal. R. of Ct. 3.765(b).

Nor is there really any documented systemicconfusion about the extent to which trial courtsmay consider the merits at the class certificationstage. A plaintiff need not establish a likelihoodof success on the merits in order to obtain classcertification. Thrifty Oil, 23 Cal.4th at 439-443. Acourt may, however, in determining whether thecriteria of Code of Civil Procedure §382 are met,consider “how various claims and defenses relateand may affect the course of the litigation, con-siderations that may overlap the case’s merits.”Fireside Bank, 40 Cal. 4th at 1091-92. Giventhese clear guidelines on class certification inCalifornia, reform is unnecessary.

III. Interstate Class Actions Are BeingLitigated In Federal Court Since Passage of

The Class Action Fairness ActThe “Class Action Fairness Act”, 28 U.S.C.

§1711; Pub.L. 109-2, Feb. 18, 2005, 119 Stat. 4

15

Not BrokenContinued from page 14

(“CAFA”), was signed into law and became effec-tive on February 18, 2005. Congress declaredthe purpose of the law to be, among other things,to “restore the intent of the framers of theUnited States Constitution by providing forFederal court consideration of interstate casesof national importance under diversity jurisdic-tion.” Pub.L. 109-2, §2 As a result, CAFArequires interstate class actions to be heard infederal court—a jurisdiction perceived by CAFAproponents as being more likely to “‘deny certi-fication in situations where a state judge mightgrant it improperly.’” John H. Beisner & JessicaDavidson Miller, They’re Making a Federal Caseof It … In State Court, 25 Harv. J.L. & Pub. Pol’y143, 154 (2001) (citing Memorandum toAdvisory Comm. On Civil Rules from Judge LeeRosenthal, Professor Edward H. Cooper, andProfessor Richard Marcus (Apr. 10, 2001) (quot-ing an ICJ/RAND study, Deborah R. Hensler etal., Class Action Dilemmas: Pursuing PublicGoals for Private Gain 28 (1999))).

CAFA, however, was enacted “on the basis ofassumptions rather than empirically derived fact.”Thomas E. Willging and Shannon R. Wheatman,Attorney Choice of Forum In Class ActionLitigation: What Difference Does it Make? 81Notre Dame L. Rev. 591, 597 (2006). “[D]espite theforce with which conclusions have been asserted,there had been no quantitative empirical exami-nation of the differences in the treatment of classactions in state and federal courts.” Id.

This study actually concluded that federal andstate judges are about equally likely to certifycases as class actions. Id. at 605. While federaljudges were more likely than state judges to issuerulings denying class certification, state judgeswere more likely than federal judges to take noaction regarding class certification due to, forexample, termination by dismissal, summaryjudgment, voluntary dismissal, or settlement ofclass representatives’ claims. Id. at 605, 607. Sucha conclusion undermines the assertion Californiacourts and the Legislature need to adopt or applyfederal standards to ensure greater uniformity inresolving the issue of class certification.

Another recent study conducted by the FederalJudicial Center surveyed the number, frequency

and types of class actions filed in or removed to 88federal district courts from July 1, 2001, throughJune 30, 2006. The study found a 46% increase inclass action activity in those district courts fromJanuary to June 2006 as compared with July toDecember 2001. Thomas E. Willging, Emery G.Lee III, The Impact of the Class Action FairnessAct of 2005: Third Interim Report to the JudicialConference Advisory Committee on Civil Rights,Federal Judicial Center at 1 (April 2007)(locatedat www.fjc.gov). In the sixteen months since CAFAwent into effect on February 18, 2005, the studyfound a substantial increase in class action activ-ity based on diversity of citizenship jurisdiction.The report concluded that much of this observedincrease is attributable to CAFA. Id. Thus,because of the adoption of CAFA, a significantamount of state court class action litigation is nowbeing handled in federal court, with class certifi-cation determinations governed by Fed. R. Civ.Proc. Rule 23. This counters the unfounded con-cerns of class action reform proponents aboutclass actions clogging the state court system.

IV. ConclusionIn light of California’s strong public policy

favoring class actions, while no reform is neces-sary, any reforms to California’s class action pro-cedures must be carefully crafted so that thebenefits of class action litigation are notdestroyed or significantly delayed. Recentattempts at reform have not been so fashioned.1

California’s class action statutes, rules andwell-developed case law render any Draconianchanges unnecessary. Drastic reform could threat-en the very utility of class actions in redressingand deterring fraudulent practices by large busi-nesses, at the expense of consumers, employees,investors and other individuals. The tort reformgroups advocating for change have already madesignificant in-roads in juror attitudes with theirclass action rhetoric, even though such claimshave little evidentiary support. There is no reasonto further tip the scale in favor of wrongdoers anymore than it already is. ▲

1 For example, A.B.1505 (which went significantly beyond Rule 23 in itsscope) recently died after Assemblyman Van Tran (R-Costa Mesa), vice-chair of Assembly Judiciary, made a motion for the committee to vote onapproving A.B.1505. The motion did not even receive a second.

16

GuidelinesContinued from page 5

Civility, Moral Character, and Professionalism,” 8St. Thomas L. Rev. 113, 115 (Fall 1995).

Second, without clear standards, many judgesunderstandably routinely refuse to sanctionoffending attorneys, even though no one doubtsthey have inherent and statutory authority to doso based on other, enforceable standards such asthose provided by Business and Professions Codesection 6068, the Rules of Professional Conduct,and local rules. Rather, they tell counsel to “workit out”. Attorneys sense that there will be no sanc-tions for violating civility codes, and so they ignorethem. Why shouldn’t they? Our real lives are toofull of meaningful things to pay attention tothings than have no real force or effect.

Third, many times these codes lack clarity or usephrases containing loopholes that attorneys can cite toin justifying their uncivil conduct. Civility codes typi-

100 courtesy codes and civility guidelinesthroughout the country. As long as ten years ago,36 bar associations and supreme courts and 69local bar associations had adopted similar creedsor codes, as well as thirteen federal district courtsand one federal circuit court. Comment, “CivilityCodes: the Newest Weapons in the ‘Civil’ WarOver Proper Attorney Conduct Regulations Misstheir Mark,” 24 Dayton L. Rev. 151 (Fall 1998),159 & nn. 65, 66. In 1988, two ABA sections adopt-ed creeds for professional conduct. Yet complaintsabout lack of civility are greater than ever.

I submit we need to step back and look at thisissue. Civility guidelines won’t create civility. Theempirical and anecdotal evidence shows suchcodes alone, without enforcement and a commit-ment to take them seriously, are not effective. Ifwe want to take steps to improve inour on-going discussion on this issue, Ihave several suggestions. You may notlike any of them, but at least theyform the basis for a candid discussionof this issue.

I. The Evidence Is DubiousWhether Civility CodesAccomplish Anything

Civility codes have been around longenough for us to assess whether or notthey work. Everyone agrees our bar isless civil than ever, yet we have hadcivility codes in place for years. Peoplewho’ve studied this issue more than Ihave concluded they don’t work just bythemselves. See Comment, “CivilityCodes: the Newest Weapons in the‘Civil’ War Over Proper AttorneyConduct Regulations Miss their Mark,”24 Dayton L. Rev. 151, 184-185 (Fall1998); J. Cary, ‘Rambo Depositions:Controlling an Ethical Cancer in CivilLitigation,’ 25 Hofstra L. Rev. 561, 597& n.160 (Winter 1996).)

The inability of civility codes bythemselves to affect civility is basedon several factors. First, most civilitycodes lack any enforcement mecha-nism. M. Aronson, “Be Just to OneAnother: Preliminary Thoughts on

(See “Guidelines” on page 17)

GuidelinesContinued from page 16

17 (See “Guidelines” on page 18)

cally brim with words like “integrity,” “courtesy,” “abu-sively,” “discourteously,” “professional manner,” “offen-sive,” “reasonably believes,” “unnecessarily inflamma-tory”, and so forth. These terms are highly indetermi-nate and context-dependent. Using them in anabstract way leaves the reader with no real informa-tion, just high-sounding incantations. Even attackingan opponent’s or judge’s integrity, motives, or conductmay be justified as the “rare circumstance” when sucha matter is “legitimately in issue”. In addition, manycodes contain a caveat that they are not intended toinhibit a lawyer’s “zealous representation”or affect the“legitimate interests” of his or her client, allowing alawyer to claim that was all they were doing in under-taking the conduct in question.

Fourth, most of these codes are not intended toprovide a basis for further litigation, sanctions orpenalties. Many guidelines or codes use a voluntaryinter-firm dispute resolution process. But whatclient or law firm will pay its lawyers to receive,investigate, and assist in the resolution of com-plaints of unprofessional or uncivil conduct? Wescarcely have enough time to deal with our uncivilbrethren as it is. Expecting law firm members toset aside more time to deal with them via such aprocess is unlikely. Moreover, the assumption thatlaw firms are endowed with the ability to sit injudgment of others’ incivility within their own firmis dubious, since some large national law firms are“very much part of the problem.” See J. Frost, “TheTopic Is Civility – You Got a Problem With That?”71 Fla. Bar J. 6, 8 & n.6 (January 1997).

II. There Are Other Additional Ways to FixThe Incivility Issue

We all need and can do something to addressthis issue of civility (or the lack thereof).

Those considering the adoption of civility codes:if you’re going to write civility codes, make themenforceable (as in the Northern District of Texas).The bogeyman of “satellite litigation” is not toohigh a price to pay to fix what everyone agrees isa chronic problem. Such litigation would wane asmiscreants suffered pain and behavior improved.J. Cary, “Rambo Depositions”, supra, at 593.Without the real threat of sanctions or satellitelitigation, uncivil behavior has only worsened.

Attorneys: enroll in an Inn of Court or in ABTL,show up, and help put on programs. Firms and

agencies, require membership in such groups foryour attorneys. These groups foster communitythrough regular meetings, social events, andtraining (on civility as well as other topics). Whowould think of being rude to a friend with whomyou’d enjoyed lunch at a monthly Inn of Courtteam meeting or at an ABTL dinner or brown baglunch? You wouldn’t.

Law schools: start teaching civility, both in theclassroom and by example. No first year law stu-dent humiliated in a Socratic “dialogue” by acranky law professor can forget it. Does any of usdoubt that many students so treated wind upbelieving that such behavior is the norm for pow-erful attorneys? That shouldn’t happen —Kingsfield is dead. An interest in civility muststart at the earliest possible point in lawyers’socialization. M. Aronson, “Be Just to OneAnother” supra, at 116. Many of us teach at lawschools. We need to make that point early on.

Senior lawyers, managing partners, and prac-tice group leaders: teach civility to your lawyers.Imprint them. If you receive complaints of badbehavior by your lieutenants, don’t insulate your-self from it – involve yourself in it, personally, andnow. Are you too busy? We’re all too busy. But thecivility problem is too big and too insidious for youto say you’re too busy to pay attention to it.

You and I: quit hiding behind our computers, faxmachines, Blackberries, and secretaries. This is evermore the nature of our practice. As one author hascommented,“[W]e don’t need to see each other all thatmuch, with our various modern devices. Armed withour machines, we function just fine as faceless paper-producers – something our predecessors could not be.We all too rarely see the faces behind the faxes andvoice-mail messages.” T. Gee and B. Garner, “TheUncivil Lawyer: A Scourge at the Bar,” 15 Rev. Litig.177,183 (Univ.of Texas at Austin School of Law Winter1996).We needn’t let it be so.Let’s solve our differencesin person – let’s meet and confer, not swap letters.Judge Haden once ordered me and an opponent tomeet for coffee in front of the courthouse. We did it. Itworked. Problems that had occupied multiple faxedletters melted away in a few minutes.

Judges: police incivility. If you don’t do it, whowill? Obviously we haven’t done it for ourselves.Courts can and do sanction outrageous behaviorwhen asked, and even punish offenders suasponte when appropriate. See ParamountCommunications, Inc. v. QVC Network, Inc.

18

GuidelinesContinued from page 17

(1999) 637 A.2d 32, 52, 53 & 56, n.23 and 38,where the court characterized an attorney’sbehavior as “extraordinarily rude, uncivil, andvulgar,” ruled that “this kind of misconduct isnot to be tolerated in any Delaware court pro-ceeding,” and ordered attorney thirty days toappear voluntarily to show cause why he shouldnot be barred from future appearances inDelaware courts.

Magistrate Judge McCurine and many of ourlocal magistrates makes themselves available bytelephone to deal with discovery disputes, includ-ing on the spot during depositions. Despite a largecaseload, they have found a way to deal with it. Ihave to believe other judges can do so too. Anddon’t ignore the Guidelines put out by organiza-tions such as the ABTL and the County BarAssociation – invoke them in your decisions if nec-essary. See Starbrite Waterproofing Co., Inc. v. AIMConstruction & Contracting Corp., 164 F.R.D. 378(S.D.N.Y. 1996) (invoking New York State Bar vol-untary Guidelines on Civility in Litigation in sanc-tioning counsel for misconduct at depositions).

And while no one may want to say it, we shouldno more tolerate rudeness from judges than rude-ness from lawyers. Incivility is a problem evenamong judges. In 1991, half the judges inter-viewed in one survey complained of uncivil behav-ior by other judges. See T. Gee and B. Garner,supra, 15 Rev. Litig. at 180 & n. 16. It erodesrespect and sets a horrible example. Fortunatelyvirtually all of our local bench is a model of profes-sionalism and civility. But if a judge has actedrudely to you or your client, don’t let it go. Reportit to the Commission on Judicial Performance. Ifjudges can’t have manners, how can they crediblypolice incivility among attorneys?

All of us: out offenders. Has someone taken adefault without warning by running down to courtafter knowing you were being hired, then refusedto set it aside? Out them. Let the news circulateabout their tactics. Judges routinely remind ushow they talk privately about us with their col-leagues. You should do the same thing. Don’t letuncivil behavior be a secret. Country clubs shamedeadbeat members who don’t pay their tabs ontime by posting their names on a bulletin board.Why do you think they do it? Because it works.You can and should do the same thing when an

opponent behaves badly.Finally, let’s all look in the mirror. It’s a bitter

pill to swallow, but we have met the enemy, and heis us. Tenth Circuit Judge Paul Kelly, Jr., notedthis in his address concerning professionalism atFordham University School of Law nearly tenyears ago: “I believe we have to place the blamewhere it belongs – on our own shoulders.” Hon.Paul J. Kelly, Jr., Remarks: A Return ofProfessionalism, 66 Fordham L. Rev. 2091, 2093(May 1998). Jill Burkhardt, San Diego CountyBar president, talks about this in a recent column:“Maybe it’s time for closer self-examination.” Foronce, stop blaming the jerk at the other end of thetelephone. Instead, look at yourself, since “the sadtruth is that we, or at least some of us, just mightbe part of the problem.” Frost, supra at 8. It is wewho are to blame for incivility in our bar, so it isup to us to fix it.

So here is my challenge to you: be a one-attor-ney army who lives by a new, unwritten creed.Lawyers like Jack Crumley and of his generationdidn’t need a creed on a wall to tell them what todo. They were the professionals Sam Dash talkedabout. Be like them. Until we drop the ineffectualformality of symbolic gestures like civility codeswithout more, we’ll be talking and writing aboutthe civility crisis for many more years – and kick-ing it down the road for our successors to handleafter we’re gone. In the meantime there is plentywe can do now. So let’s do it! ▲

1 Dan Lawton is a member of ABTL San Diego. He is a trial and appellatelawyer who has practiced in downtown San Diego since 1987.

the San Diego Lawyer.With all of the terrific programs and events

ABTL is sponsoring this year, it is not surpris-ing that our membership has now nearlyreached the 800 mark. We hope all of you willencourage friends and colleagues who have notyet joined our chapter to do so in order that they,too, can benefit from the efforts of our talentedand dedicated Board.

Please accept my best wishes for an enjoyableand rejuvenating summer, and as that hit of yes-teryear goes (extra credit if you know the originalartists), “See you in September, see you when thesummer’s through.” ▲

President’s ColumnContinued from page 2

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Hon. M. Margaret McKeown • Thomas W. McNamara • Jeffrey R. Patterson • S. Christian Platt • Anna RoppoHon. Dana M. Sabraw • Hon. Janis Sammartino • Nancy L. Stagg • Dennis Stewart • Frank L. Tobin • Kent Walker

Hon. Howard Wiener (Ret.) • Kristine L. Wilkes • Robin A. Wofford • Mark C. Zebrowski

EMERITUS BOARD MEMBERSWilliam S. Boggs • Hon. Peter W. Bowie • Luke R. Corbett • Charles H. Dick • Hon. Irma E. Gonzalez

Hon. Judith L. Haller • Hon. William J. Howatt, Jr. • Hon. J. Lawrence Irving (Ret.) • Hon. Ronald L. Johnson (Ret.)Hon. Arthur W. Jones (Ret.) • Michael L. Kirby • Michael L. Lipman • Hon. Jeffrey T. Miller • Abby B. Silverman

Robert G. Steiner • William F. Sullivan • Reg A. Vitek • Michael J. Weaver • Shirli F. Weiss

PRSRT STDU.S. Postage

PAIDPermit #51

San Diego, CAP.O. Box 16946

San Diego, CA 92176-6946

The views and opinions expressed in this newsletter aresolely those of the authors. While these materials areintended to provide accurate and authoritative informationin regard to the subject matter covered, they are designedfor educational and informational purposes only. Nothingcontained herein is to be construed as the rendering oflegal advice for specific cases, and readers are responsi-ble for obtaining such advice from their own legal counsel.Use of these materials does not create an attorney-clientrelationship between the user and the author.

Editor: Alan M. Mansfield(858) 348-1005

Editorial Board:Erik Bliss, John T. Brooks,

Richard Gluck, Robert Gralewski,and Shannon Petersen.

©2007 Association of Business Trial Lawyers-San Diego.All rights reserved.