It's status conference week in Marshall, with nonpatent cases up Monday afternoon, and patent cases yesterday afternoon. That means I spent this morning analyzing the settings to provide clients and cocounsel with information on time to trial and Markman, and other information on that status of the docket, as well as information on changes in procedures and forms.
Maybe I'm the only one that gets a little thrill out of adding more data points to a chart ... but I definitely do enjoy that little extra length on the trend lines. (I probably need a vacation).
Good article in Law360 about the new Eastern District of Texas judicial nominees Judge Amos Mazzant III of Sherman and Robert Schroeder III of Texarkana (calling him "Trey" at this point is only likely to lead to confusion for obvious reasons) - see here.
I always like it when reporters cite me as a source for when the Apocalypse is near. Speaking of which, the reference to being "in the trenches" was actually a hat tip to the 100th anniversary of the start of World War I (last Saturday, June 28). Glad it made it in.
Judge: Leonard Davis
Holding: Motion to Exclude Yet More Expert Testimony Granted
I couple of days ago I posted on Judge Davis' opinion excluding the defendant's damages expert's opinions in this case, with leave to revise and resubmit in accordance with the Court's order. Judge Davis also excluded the plaintiff's damages expert in this case, again, with leave to revise and resubmit. Although, as I note below, there is a substantive difference between the role of the two at trial.
The plaintiff's expert expressed an opinion that the reasonable royalty due was $5 per console and $3.25 per remote. Defendant complained that the opinion improperly used the "entire market value" exception to the general rule that royalties are based on sales attributable to the infringing functionality only. (Ed. note: I was recently reading an admonition by Judge Rader in a CAFC oral argument to the effect that it's not a rule, it's an exception to the general rule, and that conceptually makes sense to me so I have rephrased the issue according to the way I understand it).
Plaintiff claimed was not (again, I have rephrased to how my eleven year old twins would understand this dispute, since they're the experts in our household on both Wii consoles and disputes), but that the requirements of the exception were met because the accused functionality drives demand for the accused Wii systems. Judge Davis rejected this assertion. Defendant next claimed that the plaintiff''s royalty figure was based on the entire market value of the accused products. Plaintiff again claimed was not, relying on the Ericsson v. D-Link case. Judge Davis disagreed, noting that the revenue base in that case was limited to “the market value of the contribution of the asserted patents to the end products”—not the market value of the end products as a whole. He then focused on what the expert did differently here - he "considers total profits from accused and unaccused products [but] does not disclose how he apportions those end product profits. Thus, the Court is unable to determine whether Mr. Bokhart uses the entire market value of the accused Wii console as his royalty base."
"Because the expert's apportionment methodology, if any, is not disclosed" Judge Davis concluded, "his report is excluded." (Emphasis mine). The Court gave the Laserdynamics case another workout in this opinion, quoting it - as it did with respect to the defendant's expert - on the key point. “'[A] reasonable royalty analysis . . . must carefully tie proof of damages to the claimed invention’s footprint in the market place.' LaserDynamics, Inc. v. Quanta Computer, Inc., 694 F.3d 51, 67 (Fed. Cir. 2012)."
Interestingly, for those interested in the evidentiary rules, Judge Davis did not actually exclude the opinion for failure to comply with Federal Circuit substantive law on damages, which is usually the basis for exclusion in this area, as opposed to FRE 702. Instead the exclusion was explicitly under Rule 702 itself, because the problem was actually not improper methodology, but unknown methodology. In an elegant little piece of analysis under Rule 702, the Court noted that "[t]he lack of transparency in Mr. Bokhart’s report precludes a finding that it “is based on sufficient facts or data; . . . is the product of reliable principles and methods; and . . . has reliably applied the principles and methods to the facts of the case.” See FED. R. EVID. 702. The report should explicitly identify how the royalty base is apportioned to include only the value of the asserted patents." (Emphasis mine). So it's not excluded because it violates LaserDynamics - at least not yet - but because it isn't shown to be based on sufficient facts and is the product of a reliable methodology.
Again, the expert was given leave to revise his report, be deposed, yada yada.
One more editorial comment. As I wrote last summer in an article in an article in the "In House" supplement to Texas Lawyer focusing on IP, this procedure of trimming expert reports as the case approaches trial to conform them to Federal Circuit damages is not new, and of increasing importance in cases. Last spring I was involved in a case where the trial judge issued four separate opinions ruling on challenges to a plaintiff's damages expert's report where it provided the necessary guidance as to what the expert could and could not do. As you might expect, the final report was an order of magnitude less that the first one - and ended up being moot since the jury found the claims not infringed and invalid. But at least the damages testimony was as consistent with the current guidance from the Federal Circuit as the Court could make it.
Of course, and this point is worth closing on - since the plaintiff bears the burden of proof on damages, this issue is of far more significance to it. As the saying goes, with respect to breakfast, it's a day's work for a chicken, but a lifetime commitment for the pig.
One of the most common issues in practice under the local patent rules is determining when infringement and invaldiity contentions can be amended. Under the local rules, a party's contentions are deemed to be the party's final invalidity contentions unless amendment or supplementation is permitted by the Local Patent Rules. P.R. 3–6. Aside from a window related to the Court's Markman ruling under which amendment of contentions is permitted as of right under P.R. 3–6(a), amendment may be made only by order of the Court "which shall be entered only upon a showing of good cause.” P.R. 3–6(b).
When determining whether a party has demonstrated good cause, Eastern District of Texas courts typically consider factors set forth in S & W Enters., L.L.C. v. SouthTrust Bank of Alabama, NA, 315 F.3d 533, 536 (5th Cir.2003), those being: (1) the explanation for the party's failure to meet the deadline; (2) the importance of the amendment; (3) potential prejudice from allowing the amendment; and (4) the availability of a continuance to cure such prejudice.
I reviewed another data point on this issue today when Judge Gilstrap denied a group of defendants' motion to amend their invalidity contentions, seeking to add several new references. While agreeing that the defendants had acted promptly in bringing the new references to the Court's attention, the Court noted that they had failed to explain why, with "reasonable diligence" they could not have discovered the references before the deadline. It also rejected the defendants' argument that they "reserved the right" to amend the contentions, noting that such a unilateral reservation could not trump P.R. 3-6 or the Court's docket control order. The Court also found that the defendants had failed to demonstrate the importance of the amendment, and that the plaintiff had shown prejudice as a result of the timing of the proposed amendment vis a vis the Markman hearing.
Just as I was finishing posting on Judge Bryson's order granting summary judgment of noninfringement, another ED Tex order crosses my desk granting the same thing. Specifically, the two defendants in a patent infringement case filed motions for partial summary judgment of noninfringement under the doctrine of equivalents, and one argued that it did not literally infringe at all.
With respect to the latter claim, the Court wrote that “Plaintiff’s summary judgment evidence is [it's expert's] say-so ... But an expert’s ipse dixit statements ‘are not sufficient to avoid summary judgment.’" As a result, the Court found that the expert''s unsupported opinion—contradicted by the very publication he relied on—did not generate a genuine issue of material fact. Accordingly, summary judgment was granted as to the plaintiffs claims of literal infringement. Sooo, looking away from the ipse dixit ruling (it was there - I had to use it) we'll move along to the DOE argument.
With respect to the plaintiff’s claims under the doctrine of equivalents, the Court noted that prosecution history estoppel can bar the application of the doctrine of equivalents to recapture subject matter that was surrendered during prosecution, and that determination of whether this is the case is a matter of law for the Court. The Court then agreed that under the facts of the case, prosecution history estoppel applied, and that the plaintiff had not rebutted the presumption - thus summary judgment was rendered as to the DOE claims as well.
The Court concluded by ordering the plaintiff to submit a status report indicating its intent to prosecute its remaining claim of literal infringement and a certification that those claims are not frivolous under the Court’s order.
Attached is a brochure Download NTAP - Smith seminar for a seminar I will be doing for the Northeast Texas Association of Paralegals (NTAP) on Saturday, August 9 at the Summit Club in Longview. Billed as Fifty Shades of iPad it promises a "lip-biting seminar for lawyers, paralegals and office staff on personal productivity, managing a law office, going paper-less, and tips for practicing in local federal courts." Ahem.
The seminar qualifies for 5.5 CLE hours towards continuing legal association credit, and I do not anticipate attendees will actually lose ethics credit by attending (although six consecutive hours of me is always fraught with risk of some sort or other - just ask my wife). Half of the proceeds will be donated to charity, which is, after all, the least we could do.
Judge: William Bryson
Holding: Motion to Reconsider Denial of Motion for Summary Judgment of Non-infringement Granted
If The Roses of Success from Chitty Chitty Bang Bang isn't the theme song for motions for reconsideration, it ought to be.
After ascertaining that the parties' apparent agreement on a term was actually masking a disagreement that was likely to spring out at trial (of course this is the only time that has ever happened, right?) Judge Bryson conducted additional claim construction proceedings. He then considered the defendant's motion to reconsider his prior order denying its motion for summary judgment, and decided the defendant was correct that it was entitled to summary judgment since the plaintiff's only evidence on a key limitation was the conclusory assertion of its expert.
As Grandpa Potts put it in the middle verse (missing from my copy of the Court's opinion):
For every big mistake you make be grateful!
That mistake you’ll never make again!
Every shiny dream that fades and dies,
Generates the steam for two more tries!
Ah, there’s magic in the wake of a fiasco!
It gives you that chance to second guess!
Then up from the ashes grow the roses of success!
(Chitty trivia: Lionel Jeffries, who played Grandpa Potts (center above) in the 1968 musical, was actually 39 years of age during filming, three years younger than Dick Van Dyke, who played his on-screen son).
Regular readers know that I periodically note interesting articles in the Texas Bar Journal, in part because for the past four years I have served as chair of its editorial board. I will return to the editorial board this fall for my tenth year, but this time as a member, as we will have a new chair, John G. Browning of Dallas.
John has served on the TBJ board for a number of years now, writing articles and emceeing numerous issues on a broad variety of topics (social media comes to mind, mostly because I have lifted a ton of his work for a couple of papers). But the Bar Journal is just one very, very small corner of his writing career, as he is a published author and frequent contributor (including one this week to Texas Lawyer I noticed) for publications far too numerous to mention. John recently received the 2014 Burton Award for Distinguished Achievement in Legal Writing for “Keep Your ‘Friends’ Close and Your Enemies Closer: Walking the Ethical Tightrope in the Use of Social Media,” published in the St. Mary’s Journal of Legal Malpractice & Ethics in 2013. The article was one of five law review pieces John published last year. And it's his fourth Burton Award.
I have enjoyed working with John during his time on the board, and we have had some interesting experiences together, including getting to present to a class at SMU's Dedman School of Law School after one of our editorial board meetings - during which I discovered he was an adjunct professor there. As well as another Dallas-area law school. Makes me tired just typing it.
I wish John the best of luck in his new role, and know he'll not just continue but greatly improve on the good work the Bar Journal has been doing. Kudos to incoming SBOT president Trey Apffel for picking him - he's a definite upgrade at the position!
Judge: Leonard Davis
Holding: Motion to Exclude Expert Testimony Granted
Plaintiff sought to exclude the defendant's damages expert's opinions, claiming that the expert's royalty base did not include the value of every claimed element. Judge Davis agreed, holding that while it is sometimes necessary to apportion the smallest salable practicing unit to remove the value of unclaimed elements, here the defendant had not cited any precedent permitting the complete removal of the value of claimed elements.
The Court permitted the defendant to amend its expert's report and recalculate his reasonable royalty in light of the Court's ruling within six days, after which the expert could be deposed, and the plaintiff could file a supplemental expert report to respond to any amended report by the defendants expert, with the plaintiff's damages expert then subject to an additional deposition as well.
R. David Donoghue is a patent trial attorney and partner with Holland & Knight’s Intellectual Property Group in Chicago. He maintains both the Chicago IP Litigation Blog and the Retail Patent Litigation blog, which was was created to help retailers understand patent litigation and how to drive their cases to positive resolution.
Professors John Allison (University of Texas at Austin McCombs business school), Mark Lemley (Stanford), and David Schwartz (Chicago-Kent) have published an interesting article looking at empirical patent litigation data for cases filed in 2008 or 2009 as compared to similar data for cases filed in 1998-99 — Understanding the Realities of Modern Patent Litigation. It is not a perfect data set because, as the article notes, it does not include the most recent cases, those filed in or after 2010. But it does track decisions in the 2008-09 cases through 2013 which makes the data set more recent than it could be. And regardless of whether it includes the most recent data, it is valuable for retailers to show macro trends in patent litigation. Here are some highlights and related takeaways for retailers:
Anticipation is King. In 1998-99, decided invalidity challenges (won or lost) were “overwhelmingly” based upon obviousness, to the point that although obviousness had a very low win rate, the largest number of invalidations were still based upon obviousness. For the 2008-09 data set, there were as many anticipation challenges as obviousness challenges (154 v. 149). This suggests that defendants have become more sophisticated and more cost conscious. Knowing that obviousness challenges have a low win rate, defendants are focusing their prior art challenges on anticipation. And anticipation challenges are likely to continue rising as obviousness challenges drop based upon: 1) the low win rate for obviousness; and 2) the fact that the PTAB is a far better trier of fact for obviousness arguments. The Patent Office is accustomed to complex, multi-reference obviousness challenges and is willing to invalidate based upon obviousness, making the PTAB the faster, cheaper and most successful route for obviousness challenges.
The King is Dead. Long Live the King. Indefiniteness challenges, virtually non-existent in the 1998-99 data set, have overtaken anticipation and obviousness challenges with 176 motions. And that is before the Nautilus, Inc. v. Biosig Instr., Inc., No. 13-369, __ S.Ct. __ (2014), decision replacing the “insolubly ambiguous” standard with the arguably higher standard that the patent must inform one of ordinary skill as to the scope of the term with reasonable certainty. There is some dispute about whether the standard will result in increased indefiniteness, but whether or not it does it should at least generate more indefiniteness defenses and summary judgment motions while the district courts and eventually the Federal Circuit flesh out what the “reasonable certainty” standard means.
Invalidity SJ is a Long Shot. Or at least, the motions have low success rates. 20% success for anticipation motions, 20% for obviousness, and 17% for indefiniteness. The clear winner was 54% for Section 101 patentable subject matter motions. One of the reasons for the low success rates is likely over-filing of invalidity motions. I suspect defendants who file invalidity motions sparingly only when there really is no question of fact in a necessarily fact-intensive analysis have a much higher win percentage. As patentable subject matter motions become more widespread (as they already are), we will likely see a large increase in the number of motions and some drop off in the win rate.
Invalidity Is Also a Long Shot at Trial. Invalidity win rates at trial do improve, but not drastically: 31% for anticipation; 28% for obviousness; 17% for indefiniteness. This is not surprising because the patentee enjoys the presumption of validity and jurors tend to see the Patent Office as beyond reproach, which collectively requires a very strong invalidity case and presentation to overcome. These statistics are another indication that retailers should strongly consider Patent Office proceedings to challenge patent validity.
Patentees Lose Most of the Time. While invalidity decisions have relatively low success rates (at least for now), patentees only win 26% of rulings on the merits. This is because defendants win 54% of noninfringement motions, and if you include noninfringement stipulations after claim construction, the percentage raises to 57%. And of course, the patentee has to win every issue to succeed. So, the noninfringement and invalidity rulings are largely additive, with some limited overlap when a court decides motions together on multiple issues.
Forum Matters. The article analyzed win rates which suggest that, patentees fair best in E.D. Texas and D. Delaware (the two biggest patent districts), as well as S.D. New York. Conversely, patent defendants are most successful in C.D. California, N.D. California and N.D. Illinois.
RMail Limited v. Amazon.com, Inc., et al; Cause No. 2:10-cv-258 (04/04/2014)
Judge: Rodney Gilstrap
Holding: Motion to Stay Granted; Reconsideration Denied
In this interesting case, Judge Gilstrap granted a Motion to Stay and administratively closed the case pending a determination of ownership as to the asserted patents in California state and bankruptcy court, a fact that surfaced on the eve of trial. While rejecting the defendants Motion to Dismiss for Lack of Subject Matter Jurisdiction, the Court granted the Defendants' alternative request for a stay pending resolution of the California actions.
As I posted back in April, a Tyler jury in Judge Michael Schneider's court held that the defendant had not shown by clear and convincing evidence that the 14 asserted claims in U.S. Ethernet Innovations, LLC v. Texas Instruments Incorporated, 6:11cv491, were invalid either as anticipated or as obvious. The trial was limited to invalidity, and a later trial was set as to infringement.
Last week, another Tyler jury found three different TI products had infringed the asserted claims directly and that TI had also induced infringement. USEI had asked the jury for $4.3-6.5 million in damages, and the jury assessed $3 million. While the case originally involved three patents and additional defendants, by time of trial only TI and one patent was left. For this infringement-only trial each side had eight hours for evidence.
Early in Jules Verne's 20,000 Leagues Under the Sea, Captain Nemo's mysterious submarine the Nautilus attacks a U.S. frigate, the Abraham Lincoln. The submarine's namesake (yes, we're going with a nautical reference here because exercise equipment is far too dull) lives on in the Supreme Court's decision on June 2, 2014 in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120 (2014) which lowered the standard for negating patentability due to indefiniteness. The new test requires that the claim scope be “reasonably certain” to one skilled in the art at the time of the patent, a change from the prior "insolubly ambiguous" standard mandated by the Federal Circuit.
(I am already having deep regrets about not using as a reference the USS Nautilus (SS-168) that fought in the Battle of Midway, as well as the USS Nautilus (SSN-571) that was the first nuclear warship, but I figured the Verne/Disney reference would be best. Besides, my copy of 20,000 Leagues was actually published by the U.S. Naval Institute (no seriously) so it is something of a two-fer. As an aside within this parenthetical, do not buy an edition with a translation other than the 1993 Miller/Walter contained in this annotated edition - it is the landmark translation/annotation that replaced original translator Lewis Mercier's act of literary vandalism in 1873 that bowdlerized the original, as well as cutting some 23% of Verne's original text. Seriously - twenty-three percent. It's also the reason the USNI decided to publish the book, because in its original form, it's one of the classics of nautical literature. Until I read it, I thought all French translated this bad - which was one of the reasons French was one of my majors - I couldn't stand to read it in translation.)
Anyway, back to the judicial Nautilus, skippered by Justice Ginsburg (shown here sometime during the Civil War with, Justice, uh, Taney), as opposed to the fictional or historical ones. Today, Dennis Crouch noted in discussing the PTAB's first post-Nautilus decision that indefiniteness "can be" difficult under Nautilus, a deliberate pun on the decision's interpretation of that term.
That has certainly been my experience to date locally. I recently found myself sitting in a Markman hearing in which the Court indicated that it had found all the asserted claims of a patent indefinite applying the new standard. Soup to nuts - no sorbet. As I posted on as recently as, well, yesterday, decisions finding isolated claims indefinite have been relatively common - but invalidation of all of the asserted claims of a patent on indefiniteness grounds was not.
Nice to know we have new things to look forward to. Bon voyage, Nautilus.
I posted earlier today on David Donoghue's article on parallel district court and IPR proceedings, and last week about a hearing in one of my cases on a motion to stay (no, don't have a ruling yet).
Another data point on this subject came out recently when one of the local judges denied an unopposed motion for a stay pending the PTAB determination of whether or not to institute inter partes review of the claims in suit.
Although recognizing that the plaintiff's decision not to oppose the motion was a concession that the stay would not unduly prejudice it or present a clear tactical disadvantage to plaintiffs, and that the case was still in its early stage and a trial date has not been set, the Court noted that the PTAB proceeding was in an even earlier stage than the litigation. According to the Court, it would take the PTAB up to three months to determine whether or not to institute the review at all, thus whether a stay would simplify the issues in question and trial was "wholly unpredictable, if not completely speculative, at this time." In addition, the court noted that the defendant was not a party to the PTAB proceeding, and thus was not bound by the estoppel effect of the administrative proceeding.
As a result, the Court held that the motion was premature, and that the defendant had failed to carry its burden to demonstrate any substantial benefits justifying a stay at this stage of the PTAB proceedings.
Cell and Network Selection LLC v. AT&T Inc., et al., 6:13cv43 (5/2/14)
Judge: Nicole Mitchell
Holding: Claims Construction ruling; Motion for Summary Judgment of Invalidity Based on Indefiniteness Granted in Part
I stopped posting on claims construction rulings several years ago because they come out of the Eastern District on an almost daily basis now. However, this recent opinion by Judge Mitchell also addresses a Motion for Summary Judgment of Invalidity claiming that some of the claims are invalid as indefinite.
Judge Mitchell agreed that claim 14 was indefinite because the term lacked antecedent basis. However, she recommended denying the motion as to claim 15, finding that it was not "insolubly ambiguous". As you might expect, given recent activity on First Street in D.C., objections were filed, and the Court has not yet ruled, so we'll see if the ruling on claim 15 stands under the new test.
If you're a Law 360 subscriber, you might take a look at this recent article by David Donoghue on the subject of parallel district court litigation and IPR. If, not, David has it cross-posted on his Retail Patent Litigation blog. It's a good look at how IPR proceedings interrelate with district court litigation, even when the latter isn't stayed as a result.
In a letter to President Obama, Judge Davis stated that "[i]t has been a great honor to serve as a United States District Judge in the Eastern District of Texas. It is an excellent district with very hard working judges. However," he went on to point out, "for the past several years our district has been greatly understaffed due to two longstanding judicial vacancies. With my retirement in May 2015 and Judge Richard Schell's in March 2015, the Eastern District could have four of eight judgeships vacant by this time next year. This would make it very difficult for the remaining four Eastern District Judges to do the work of eight and continue to fulfill their Constitutional responsibilities to the citizens of East Texas."
According, Judge Davis urged the president and Texas' senators to work together to timely fill the existing two vacancies this year and to begin the vetting process for potential applicants for the two upcoming 2015 vacancies.
For myself, it has been a privilege and a pleasure practicing in Judge Davis' court, and trying cases before him. He is (and will continue to be for the next year) an exemplary trial judge, and has been a great leader of the bench and bar during his time as chief judge. He has always exemplified the tradition of our local judges - smart, hard-working, demanding, but courteous to the litigants, and understanding of the very difficult task we have to do. He sets a very high bar for his successor. But then again, as local practitioners know, it was already pretty damn high when he got there. We will miss him greatly, and our sympathies are with the ducks to whom he can soon turn his undivided attention.
A Tyler jury in Magistrate Judge John Love's court rendered a verdict in the Eon v. Silver Spring case Friday. It found five of the twelve asserted claims from the three asserted patents infringed, did not found any of the seven asserted claims that had an invalidity defense asserted had been proven invalid by clear and convincing evidence, and awarded damages $18.8 million.
As I've posted recently, U.S. District Judge Rodney Gilstrap of Marshall currently has just under a thousand individual patent cases filed in his court a year. Statistically speaking, most are terminated by voluntary agreement among the parties, i.e. they settle, making efficient processing of the many hundreds of settlements announced annually something of interest to the court.
Accordingly, earlier today Judge Gilstrap entered a new standing order setting forth how notices of settlement are to be filed with the Court, noting that consistency and uniformity in both the form and substance of the notices "is of material benefit to the Court and promotes the Court’s ability to monitor and manage its docket."
Under the new order, promptly upon the settlement in principle of any case pending before Judge Gilstrap, the parties shall jointly file a motion with the Court that complies with the following requirements:
The order notes that in most cases the Court will not afford more than thirty (30) days in which to submit dismissal papers but in exceptional cases the Court may grant a longer period for such submission.
Importantly, in light of the numerous submissions that ask the Court to stay the deadlines in the case because the parties are "talking settlement", the order specifically states that "[a] motion indicating that the parties are communicating about settlement but one which stops short of an express indication that the matters in controversy have, in fact, settled will not ordinarily support or prompt from the Court an order staying the existing deadlines." (Emphasis mine). The order also notes that other filings (such as and for example a "mere" notice of settlement) are specifically not adequate to comply with this order or to secure a stay of existing deadlines. "Such noncompliant filings shall not support later requests to reset missed deadlines or otherwise amend the docket control order" the order concludes.
Why would the Court do this? Is it just being compulsive-retentive (not that that's a bad thing)? Actually there are significant pragmatic reasons which have come to light possibly due to the increase in individual filings following the AIA. With the blizzard of filings coming into chambers each day via ECF (think how many filings an average of 700+ patent cases generates, not to mention the other civil and criminal cases on the Court's docket) mere "notices" of settlement, which do not, as opposed to a motion, require court action, are not tracked the same way. Thus a party's prospective exit from the case via a "settlement" may not be recorded, nor can the viability of the proposed exit be tested according to the standards in this order before scheduling issues arise.
In addition, absent a stay - and "notices" don't ask for one because then they'd be a motion - deadlines will continue to run and if a would-be settlement falls apart later (which does happen), the parties may have missed numerous deadlines and need the Court to consider substantial scheduling relief it may not be willing at that stage to grant. When if they had advised the Court originally that they were just "talking settlement" they likely would have gotten the binary choice in this order - either settle or comply with the deadlines. And at the point where that instruction would have done the most good. Hence the explicit requirement to basically "put up the flag" when you're ready. (If you're not from Texas, ask your local to explain that reference to you).
This is really nothing new - just a codification of traditional best practices locally.
Some time ago, I posted excerpts from a transcript by U.S. District Judge Keith Ellison to a jury about the importance of jury service, "You went where your country asked you to go when your country asked you to go there." I received today a copy of a similar set of comments to a jury by former Judge Jim Parsons of the 3rd District Court in Palestine, and they were so good I wanted to reproduce them here.
I have modified the formatting somewhat, as Jim had the original laid out for reading orally to the venire, much as a lawyer would handle an opening. In fact, I have heard one lawyer complain to Judge Parsons that it was always a problem trying to explain to your client why the judge’s opening remarks were always better than your voir dire or opening statement. (Jim characterizes that as "swashbuckling b.s." which is now my favorite term for the social side of local lawyering. And no, "Texicans" is not a misspelling).
I have to note that Jim, who is also a former president of the State Bar of Texas (and one whose accomplishments 24 years ago were noted as recently as yesterday by the current Bar president Trey Apfel in his inaugural column, which is unheard-of) received word yesterday that along with Dulin Kelley of Tennessee and Mike Maguire of California, he has been nominated for president of the American Board of Trial Advocates (ABOTA). After reading this, you can see why.
Good Morning ladies and gentlemen:
My name is Jim Parsons and I am the Judge of the 3rd District Court of Anderson, Houston and Henderson Counties.
You have been summoned as jurors for this week.
The cases set for this week are civil/criminal (explain difference)
In a moment we will review the qualifications for and exemptions from Jury service. But before we begin, I would like to review with you the history of Jury Trials
Look around you- you will see that there is a mixture of our community and that is the way the system has been designed
If you look in the Pentateuch, the first five books of the Old Testament, you will find that the Jewish Nation would empanel Juries to decide issues of property value and property ownership
The Greeks began using the Jury system in about 1,500 BC
The Romans adopted the Jury system from the Greeks
The Romans brought Jury trials to England in the 4th century AD
By the 12th Century Jury Trials had been part of the Judicial system in England for over 800 years. A tyrannical king attempted to do away with the right to trial by Jury and in the 12th Century in a misty meadow in Runnymede England. The MAGNA CARTA was signed guaranteeing the right to Jury Trials for the English people.
28 States have adopted the language of the Magna Carta verbatim and placed in their State Constitutions the right of Jury trial.
The concept of jury trials was ingrained in the colonists in the settling of America. Again a tyrannical king attempted to deny the right to jury trials to his citizens. Jefferson in penning the complaints against the Crown set out the denial of the right to Jury trials as basis for separation from England
The United States Constitution guarantees the right to Jury Trials.
The Texicans in their revolution complained of the denial of the right to Jury Trials
The Texas constitution guarantees the right to Jury Trials
And in fact the Texas constitution guarantee has been judicially declared to be stronger than the U S constitutional guarantee
My Court the 3rd Judicial District Court is in fact older than the State of Texas
It was created on December 22. 1836 when President Sam Houston touched quill to paper and created the four Republic of Texas Courts.
In the past 130 years there have been 30 Judges of the 3rd Court
I am the 30th Judge of this Court
I succeeded the Han. R. W. Lawrence who held this bench for 31 years
R. E. Baylor. for whom Baylor University is named, is a former Judge of this court
For the past 120 years my Court has sat in this County
This Courtroom is 84 years old. Many of your parents, their parents and fore parents have sat in this very room in response to the call for jury service.
Democracy makes very few demands on its citizens
We are required to pay taxes and render service in time of War.
I have heard it said that Jury service is equal to service to your country in time of War. I have no quarrel with that statement.
In a moment your name will be called by your elected District Clerk. When you respond to the call of your name
REMEMBER there were no juries summoned for Jury duty today in Castro's Cuba
There were no persons summoned for jury duty today in Mother Russia
MADAM CLERK please call the roll.
Babbage Holdings, LLC v. Activision Blizzard, Inc, et al, Cause No. 2:13-cv-750 (05/15/2014)
Judge: Rodney Gilstrap
Holding: Defendants' Motion to Dismiss granted
Judge Gilstrap granted the Defendants' Motion to Dismiss the Plaintiff's Second Amended Complaints, agreeing that the Plaintiff had not pleaded facts that plausibly establish Defendants knowledge of the patent prior to its expiration date.
After denying the motion, Judge Gilstrap noted counsel's obligations under Rule 11 and wrote that "the circumstances surrounding this motion raise, in the Court's view, a real and legitimate concern that Babbage may have violated such duties, especially in light of its Second Amended Complaint which was filed after Defendants had urged the dismissal of Babbage's indirect infringement allegations but which continued to assert the same claim of indirect infringement as included in its earlier complaints."
Accordingly, Judge Gilstrap set a hearing for the plaintiff to show cause why sanctions should not be imposed in light of the above conduct.
Texas Lawyer did another of their periodic patent judge panels moderated by John Council at the Belo Mansion in Dallas this morning. Representing the Eastern District of Texas was former Chief Judge Richard Schell and Magistrate Judge Nicole Mitchell. They were joined by U.S. District Judges David Godbey of the Northern District of Texas, Dallas Division and Lee Yeakel from the Western District of Texas, Austin Division.
A very Highmark Octane discussion if you, uh, know what I mean.
Assuming that I am out of my hearing in Marshall in time to make it to Houston Friday, I will be pleased to be co-presenting a paper Trial Procedure in Federal Court with Eastern District of Texas Magistrate Judge Nicole Mitchell of Tyler Friday afternoon in Houston. Judge Mitchell will also be part of the lunch judges panel. Depending on when (and whether) I show up, it will be the last or the second to last segment of the 2014 Federal Court Practice seminar put on by the State Bar of Texas in Houston.
Judge Mitchell (possibly with me - possibly not) will be covering the pretrial, jury selection, trial, and postverdict stages of the federal civil litigation process, although we are deferring most of the discussion on the crucial JMOL stage of the process to the paper because we're short on time to cover that in the detail it needs. Although Judge Mitchell might have plenty of time if I don't make it.
If you're in Houston, or short on CLE, or just want to hear how the Eastern District's newest patent judge suggests you should do things at trial, sign up and come spend Friday with us (well, with her anyway) in Houston. You'll be glad you did.
More attention to the Eastern District of Texas docket today. In an article Eastern Texas Judge Has Nation's Busiest Patent Docket, Law360 reporter Ryan Davis analyzed Judge Gilstrap's docket in light of the 2013 patent litigation year in review report by litigation analytics firm Lex Machina. According to that report, there were 1495 patent cases filed in the district last year, with 941 of them being assigned to judge Gilstrap – 542 more new patent cases than the next busiest judge on the list.
As I noted to Ryan in the article, one of the factors that explains Judge Gilstrap's docket is the fact that due to vacancies in the district, at present he is the only district judge assigned to the Marshall division, which means he receives every new case filed in the division. One caveat, though - my note that Judge Gilstrap has four law clerks is incorrect. A thorough search of the courthouse only located three. I just know I saw a fourth one somewhere ...
I skimmed the Lex Machina report yesterday after talking with reporter, and ran across a few items of interest to Eastern District practitioners.
Fastest median time to trial – although the district ranked fourth at 677 days, the three districts ranked ahead of it had only one or two trials each, ranging from 212 to 587 days – the Eastern District had 24 trials (jury and bench) during the same time, averaging 677 days.
Most new cases – as noted above, Judge Gilstrap ranked first, ED Chief Judge Leonard Davis fifth, and Judge Schneider seventh. The intervening four judges were all from Delaware.
Most merits decisions - Judges Andrews and Robinson from Delaware and Judge Gilstrap tied at 15. Judge Davis was next with 13.
Most summary judgment decisions – four judges tied for first place with five decisions each – Judge Leonard Davis came in tied for second with four.
Damages awards – unless I've forgotten one, the only Eastern District verdict in the top 10 nationally was Pact XPP v. Xilinx coming in at ninth at $23 million. This was below the 2013 average of $34 million, although the median award was $1.2 million.
Not for a case. I'm in a hotel downtown for a seminar tomorrow and am soliciting advice on restaurants. I know the usual suspects (I am upstairs from a really good one actually), but wanted to ask advice from the local bar. What's good?
Bianco v. Globus, 2:12cv147 (5/12/14)
Judge: William Bryson
Holding: Motion for Reconsideration of Order Denying Motion for Attorneys Fee Under 35 USC 285 Denied
Judge Bryson denied the original motion for fees on the issue of inventorship (the claim that the plaintiff lost on at trial). After Octane came out, defendant moved for reconsideration. Judge Bryson denied the motion, holding that (1) Globus had waived application of the new standard by not asking for it after the Supreme Court granted cert on the issue that grant meant that the change in the law couldn't be characterized as "unexpected"; and (2) the claim failed under the new, more liberal standard as well.
"Based on the foregoing analysis" he concluded "Globus has failed to satisfy its burden of showing that Dr. Bianco’s inventorship claim is one that “stands out from others with respect to the substantive strength” of Dr. Bianco’s litigating position. Thus, the Court concludes that Dr. Bianco’s inventorship claim was not exceptional within the meaning of section 285, as construed by the Supreme Court in Octane Fitness, and that Globus is not entitled to an award of attorney fees under section 285. The motion for reconsideration is therefore denied."
Well, there's one more item to scratch off on my bucket list - my oldest son's football career was chronicled on the front page of today's New York Times. No, seriously. See Football Risks Sink In, Even in the Heart of Texas. Okay, it's eleven words in the ninth paragraph and the article arguably is focused on something else, but still ...
With football off his radar (Cowboys games aside, of course - G shown in 2007 at old Texas Stadium at his first game) , Grayson is actually focusing on science and math, headed towards a career in engineering (we think). Interestingly, he's already logged more time in Judge Gilstrap's courtroom watching patent trials than about 90% of the lawyers working on them, so he'll have an interesting perspective when he finally gets to practicing.
No interest in law - he wants to be an inventor. Is very irritated over this whole graphene thing - he came up with that idea several years ago (although there was this tiny issue about enablement).
As numerous sources have reported, due to reports that pending patent legislation in Congress would be made effective retroactive to April 24, there was a flood of filing of new patent infringement cases on April 23.
I study filing patterns in the district in order to counsel clients on trends within the local patent docket, and thought it might be interesting to see what that day's filings looked like in isolation.
There were a few single defendant cases - Penovia LLC, Hyperion Therapeutics, Inc. and TQP Development, LLC filed one each in Marshall.
Quxuz LLC, InMotion Imagery Technologies, LLC and NovelPoint Tracking LLC filed three each, the first two in Marshall and the latter in Tyler.
Olivistar, LLC, CYVA Research Holdings, LLC, and c4cast.com, Inc. filed five each, also in Marshall.
But there were three much larger cases filed, one in Tyler, and two in Marshall. TQP Development, LLC filed 18 new cases in Marshall dealing with encrypted data transmission systems, while eDekka LLC sued approximately 90 defendants over patents dealing with information retrieval. Meanwhile, over in Tyler, VStream Technologies, LLC filed 19 actions asserting patents dealing with processing data from digital cameras.
Other divisions saw some new cases as well. PanTaurus, LLC filed one case in Beaumont before Judge Clark asserting a patent dealing with methods of inhibiting data corruption on a storage device, while Judge Amos Mazzant in Sherman received five cases filed by Net Navigation Systems, LLC.
Some of these cases represented adding cases with new defendants where the patents had already been asserted, while others represented entirely new claims. And some have had more defendants added since April 23.
BSG added four more defendants to its cases in Marshall, and new cases were filed in Tyler by Presqriber, LLC (26 defendants) in a case involving patents dealing with ordering and prescribing drugs (but apparently not spelling), and Vigilant Solutions, Inc. (3 defendants) in (yet another) license plate recognition patent.
BSG Tech filed seven cases in the Marshall Division yesterday, alleging infringement of patents dealing with databases on websites. Smartflash filed three others in the Tyler Division asserting patents which also deal with online activities on websites.
Judge: Roy Payne
Holding: Motion for Relief from Judgment or for a Stay Denied
Secure Axcess, LLC v. Nintendo of America Inc., et al, 2:13-cv-32 (3/7/2014)
Judge: Rodney Gilstrap
Alexsam, Inc. v. Barnes & Noble, Inc. et al; 2:13-cv-3 (3/6/2014)
Judge: Michael Schneider
Holding: Rulings on Motions for Judgment as a Matter of Law
Evolutionary Intelligence, LLC v. Apple, Inc., 6:12-cv-783
Judge: Caroline Craven
Holding: Motion to Transfer Venue granted
This is a patent case by a California/Delaware company, which claims it is from Boston, against a California/California corporation, a California/Delaware corporation and a California/Delaware corporation. After denying the Plaintiff's Motion for Leave to Add Additional Defendants, Judge Craven concluded that the Defendants had met their burden to show that the Northern District of California was "clearly more convenient" to the Eastern District of Texas, and accordingly granted Defendants' Motion to Transfer the Case to the Northern District of California.
On Tuesday of this week Uniloc Luxembourg SA filed 16 actions in the Tyler Division, accusing technology companies of infringing its patent dealing with anti-piracy software registration. There are prior cases involving the same patent already pending before Chief Judge Davis.
Judge: Michael Schneider
Holding: Motion to Compel Granted
You'll never believe this, but sometimes parties can't reach agreement as to how to count interrogatories.
In this case, the Defendant objected that the numbered interrogatories contained distinct subparts that count as multiple interrogatories. Specifically it contended that the first nine interrogatories actually contain 25 separate interrogatories, and therefore it ran into problems answering the 17 that were submitted.
Judge Schneider noted that the Advisory Committee Notes to Rule 33 make clear that a party cannot circumvent a limit on the number of interrogatories "through the device of joining as 'subparts' questions to seek information about discrete separate subjects." Of course the Advisory Committee does not go on to define what exactly a "subpart" is but does note that "a question asking about communications of a particular type should be treated as a single interrogatory even though it requests the time, place, persons present, and contents be stated separately for each such communication."
Armed with this general rule, the Court held that the Plaintiff's request seeking facts, documents and identification of persons with information did not automatically amount to three separate interrogatories. It accordingly overruled the objections and concluded that if the parties had not otherwise resolved the issue the Defendant was ordered to submit its responses within 14 days of this order. However the parties were encouraged to reach agreement if a modified response timeline is warranted (i.e. a rolling production).
Personal Audio LLC v. Howstuffworks.com, 2:13-cv-15-JRG-RSP (3/3/14)
Judge: Roy Payne
Holding: Motion to Dismiss Affirmative Defenses and Counterclaims denied.
Plaintiff filed a Motion to Dismiss the Defendant's Affirmative Defenses and Counterclaims under FRCP 12(b)(6). Noting that the affirmative defenses were noninfringement and invalidity, the Court stated that it found no merit in these arguments because the Plaintiff was clearly on notice as to the substance of the contentions:
Adopting the standard Personal Audio suggests would lead to absurd results by implementing a double standard which imposes a heightened pleading requirement on only one side (Defendant) in a patent case. As an example, Personal Audio asks that the court require HSW to spell out, at the time of filing its answer, in painstaking factual detail, its entire theory of noninfringement, before Personal Audio has set forth the substance of any theory of infringement. This would be unfair and unreasonable, and the Court finds it highly doubtful that such a result was the Supreme Court's goal when deciding the seminal cases regarding pleading requirements.
We are finally changing out our display of local artists' work in the Marshall office on the wall art hall. Or is it the Hall art wall? You have sharp eyes and local knowledge (and apparently nothing better to do) if you get that. Either way, I'll have details up sometime next week after we decide who gets to look at what. We really enjoy having the local artists' work up and bragging about them to anyone that will listen.
There is another hall on the other side of the wall but it doesn't have a wall that y'all could call Hall. But maybe in the autumn.