Eastern District of Texas Federal Court Practice

Readability bookmarklet

I recently ran across a little tool that I'm getting a lot of use out of, and I thought others might as well.  It's called Readability, and it's a bookmarklet (meaning you activate it by dragging it to your bookmarks toolbar, which essentially means you turn it into a button on your web browser's toolbar - not quite as simple as it sounds to set up, but easy as can be once set up) that reformats a web page by eliminating all the ads and other online clutter, so you get a book or newspaper style version of the website with text font and size (and formatting) you've selected.   It has only the text and photos, so you have just the information you need, in a format you're used to, and without distractions.  If you prefer the original version, you just click and you're back to the original page.  Here is a link with more information on the thing - the above link takes you straight to the setup page and shows you immediately what the thing does.

I have tried it out with my daily RSS reader reading and it works pretty well for me in letting me process my daily reading more quickly.  I don't use it on all pages - just ones where the font size or formatting or ads are preventing me from focusing on the content the way I'd like.  I have found it distinctly useful when I need to get out of light skimming mode and focus on content.  A lot of my reading is old-fashioned issue spotting - I'm reading articles and posts and case blurbs to see if there's something I'm interested, and I don't use it for that.  But when there is I slow down so I can concentrate on the content, but sometimes the formatting is a problem and I have to work harder to stay focused on the content.  This allows me to eliminate that with one click and get the page reformatted so it is in a format I am used to. 

It reminds me a bit of when I discovered (to my assistant's intense displeasure) after working on a couple of back to back Fifth Circuit appeals that I really liked reading briefing printed double-sided and spiral bound like an appellate brief (I now use Levenger Circa notebooks for this).  It's like reading a book, and I can just feel the neurons upstairs relaxing and getting ready for party time with the highlighter when I open a notebook with motion briefing presented like that.  Readability reminded me a lot of that feeling - when I find an article or post that I want to take some time to study and absorb, it puts it in a format that makes it easy for me - and, incidentally, one step closer to being printed out for the old Circa notebook...

Anyway, it works for me - hopefully a few readers will find it useful as well.

"Courthouse Colors" - 2009 SBPS Marshall Christmas card

The 2009 Siebman, Burg, Phillips & Smith, LLP - Marshall Christmas card will start going out today.  Following up on Carol Pace's watercolor of the historic Harrison County Courthouse last year (shown in the background), we are happy to have a new original watercolor of the courthouse by Carol for this year's card as well.  This time it is of the interior of the dome of the 1901 courthouse, complete with pink and cream walls, terra cotta and gold brackets, dark green ironwork, and that's before you even get to the colors in the stained glass, or the cobalt blue frieze in the courtroom.  The 14-year renovation of the courthouse was completed this year, and the interior colors have been a spectacular addition to the building after decades of institutional green walls.  As good as the cards look, we're proud to have the original hanging in our reception area - stop by if you're in the neighborhood and take a look.  (Watercolor aficionados might prefer the more muted colors in the original - the cards are distinctly more colorful.  So no, the rotunda does not actually look quite so much like a Paris brothel).

Thanks to the many firms that set the example for us last year by donating to worthy causes instead of sending gifts, our firm has also decided that in lieu of gifts this season we will contribute to Court Appointed Special Advocates (CASA) of Harrison County in honor of our clients.  CASA is a local non-profit organization that trains community volunteers to be advocates for abused and neglected children in the custody of Child Protective Services (CPS).  In a court system challenged by increasing caseloads, we believe that a CASA volunteer can make a great difference in the life of a child, and are pleased to have this opportunity to help them out.  To learn more about CASA, please visit http://www.casaofharrisoncounty.org or call 903-923-9224.

Postverdict ruling in Opti v. Apple - willfulness finding set aside; rest of verdict affirmed

Opti v. Apple, 2:07cv21

Judge: Chad Everingham

Holding: Motions for judgment as a matter of law granted as to willfulness; denied on other issues

This spring plaintiff OPTi obtained a jury verdict of infringement and willful infringement from a Marshall jury in Judge Everingham's court, with damages set at $19,009,728.  Today Judge Everingham ruled on the various postverdict motions. 

Apple’s motion for judgment as a matter of law on willfulness was granted, its motions on damages and its enablement and prior art invalidity defenses were denied, and OPTi's motion for entry of judgment was granted in part.  (Its motion for enhanced damages was denied as moot).

On the willfulness motion, Judge Everingham echoed (quoted, actually) Judge Ward's detailed ruling two months ago setting aside the willful infringement finding in Centocor v. Abbott, writing that "because 'the issues of infringement and validity were hotly contested, close, and required an intensely factual inquiry,' the court finds that there was no objectively high likelihood of infringement. See Centocor, Inc. v. Abbott Labs., No. 2:07-CV-139, Dkt. No. 326 at 6 (E.D. Tex. Oct. 1, 2009) (Ward, J.)." (Note: to all the lawyers I'm local counsel for, do you see something here that I frequently suggest you include in your briefing?)  

The judgment issued today for a reasonable royalty of $19,009,728 and $2,696,974 in prejudgment interest for a total award of $21,706,702, plus court costs and future interest.  The court concluded that the case was not exceptional under 35 U.S.C. § 285 and denied any attorneys’ fees request.

Incidentally, this is same song, fourth verse on claims on willful infringement in recent months - willful infringement verdict set aside in Centocor, willful infringement not found by jury in Retractable Technologies, summary judgment granted on willful infringement claim in Crane... I don't mean to imply that the decisions either declining to submit willful, juries not finding it, or courts setting it aside are unanimous, even recently (see Abstrax), but there are a lot of them recently for those with an interest to review.  Why might that be of interest?  Because it provides a set of court decisions by the same (or substantially similar) judges with prior experience in this aspect of the law applying the relevant law at the same point in time (i.e. before Congress, the Federal Circuit, or the Supreme Court change it) to different factual and procedural situations.  It's sort of an exploded reverse version of the Socratic method where parties repeatedly ask the Court to rule these claims in or out under different fact patterns.  That's one reason I keep posting the links to these recent opinions - because it's helpful (to me at least) to reread Judge Everingham and Judge Ward's holdings in the different cases.  To borrow a scientific term, we've controlled for the judge and the law - so the different results must be due to the facts, highlighting which facts may be significant. 

And now, I am off to get what I semi-affectionately refer to as the Godzilla Tree up at home.  I am already in trouble for talking to you people so long, so I'll sign off for the evening.

ED patent filings update/another Federal Circuit venue opinion

Couple of interesting developments in the Eastern District of relevance to the patent docket today. 

First, current court statistics indicate 256 patent cases have been filed in the district in the last twelve months (last December and 2009 through November).  That's down from 308 in 2008 and 371 in 2007, and includes the generally slow filings at the end of last year and the first two or three months of this year).  But it's more than a little bit higher than I thought it would be, based in large part on how slow things were the first part of the year.

Second, the Federal Circuit issued another venue opinion in Novartis v. LaRoche today, reversing Judge Folsom's denial of a motion to transfer after re-weighing the relevant factors.  No, the California plaintiff doesn't have to go to California - they have to go to North Carolina, where one of several defendants and several of the relevant witnesses are located, as well as where some of the development of the product at issue occurred (the latter of which seems to have been a major factor for the court).

Of interest, in light of the Fifth Circuit's holding in In re Volkswagen that the court cannot disregard the location of documents simply because they are easier to transport in this age of electronic discovery, was the appellate court's decision to do exactly that with respect to the plaintiff's 75,000 documents relating to conception and reduction to practice because the documents in question had been converted to electronic format and transported by the plaintiff from California to their counsel's office in Texas.  In his two opinions Judge Folsom had actually declined to assign weight to the carpetbagger documents as the plaintiff asked, other than observing in a footnote in the reconsideration that "some" of the documents in the case were located in Texas, as opposed to In re Genentech, where none were.  (Interestingly, the documents sent to Marshall were previously paper and in California - the page of the opinion where the appellate court considered the additional cost of shipping these 75,000 documents across the country to North Carolina as a factor weighing against transfer was missing from my copy.  But I'm sure it was in there somewhere, since the Fifth Circuit was emphatic that the court could not disregard the location of the original documents). 

The timing of Novartis is interesting, since the December issue of Robert Matthews' Patent Happenings has an excellent summary of recent venue rulings from the district, entitled Eastern District now applying a more main-stream view on transferring patent infringement actions.  Judge Folsom's February 3 decision to deny transfer in the Novartis case is noted in a footnote - I am assuming the mandamus was predicated on the August 3 order denying the motion for reconsideration.

Summary Judgment of Invalidity (Obviousness) Granted; Motion for Leave to Amend to Assert Walker Process Claims Denied

The Ohio Willow Wood Company v. Thermo-Ply, Inc., (9-07-cv-00274) (Nov. 20, 2009)
Judge: Ron Clark
Holding: Defendant's Motion for Summary Judgment GRANTED; Defendant's Motion to Amend PICs DENIED
On Friday Judge Clark granted summary judgment ending this case.  It has an interesting procedural history.  After plaintiff OWW filed suit against TP, another company intervened, claiming ownership rights in the patent.  Judge Clark held a hearing on the inventorship and invalidity issues raised to the defendant and stayed the case pending resolution of these issues.  The defendant then filed a motion seeking to assert Walker Process claims (Sherman Act violations which allege fraud before the PTO).  Judge Clark denied the motion, concluding that TP could have met the deadline in the scheduling order for asserting such a claim.
More interesting (not that anyone could ask for more from the first order, of course) is another order, also from Friday, in which Judge Clark granted TP's motion for summary judgment that all asserted claims were invalid as obvious (SJ on anticipation was sought, but not granted).

Motion for Summary Judgment on Patent Exhaustion & Implied License Granted in part

Laserdynamics, Inc. v. Quanta Storage America, Inc., 2009 WL 3763444(E.D.Tex. Jun 29, 2009) (NO. 2:06-CV-348-TJWCE)
Judge: T. John Ward
Holding: Motion for Summary Judgment on Patent Exhaustion & Implied License GRANTED in part
Apparently somebody needed this opinion from last June published.  In it, Judge Ward granted in part the defendants' motion for summary judgment on patent exhaustion and implied license issues.  Judge Ward noted that a detailed order would follow, but in the meantime, there were three things the parties needed to know to continue preparation for trial:

• First, the exhaustion doctrine does not apply to sales made overseas by the plaintiff's licensees. As such, the court denied the defendants' motion for summary judgment to the extent it relies on the exhaustion doctrine.
• Second, QCI has an implied license with respect to drives manufactured by non-Quanta entities licensed by the plaintiff under worldwide licenses and sold by those licensees to QCI for incorporation into QCI computers. In addition, QSI is not liable for manufacturing drives for Philips or Sony/NEC/Optiarc which are, in turn, resold into the United States to non-Quanta entities. (I know we were all wondering about this).
• Finally, the Quanta defendants do not have an implied license with respect to drives that are sold through two of the plaintiff's licensees. The effect of such transactions, the Court concluded, would be to grant an impermissible sublicense.

Motion to Tranfer Venue to Minnesota Denied

Deep Nines, Inc. v. McAfee, Inc., 2009 WL 3784372(E.D.Tex. Nov 10, 2009) (NO. CIV.A.9:09CV89)
Judge: Ron Clark
Holding: Motion to Transfer Venue DENIED
"It is clear that where there is no connection with Texas or the Eastern District of Texas, venue is improper here," Judge Clark opens this opinion, citing In re Genentech, 566 F.3d 1338 (Fed.Cir.2009). That was not the situation in this case, he concluded, since there were significant contacts with Texas generally, and the Eastern District specifically. One of the Defendants has an office in the Eastern District, and several potential witnesses are located in the district. In addition, a number of witnesses have also been identified in Dallas (which seasoned venue practitioners know is immediately adjacent to the Eastern District). In addition, Judge Clark had previously adjudicated a dispute between two of the parties in this case, including a claim construction hearing and a trial, involving infringement of one of the patents-in-suit. Also, Deep Nines's claims involve, to some extent, the settlement agreement entered into by Deep Nines and McAfee at the conclusion of the earlier case, and the agreement provides that it shall be governed by Texas law. "Under these facts," Judge Clark wrote, "Secure has not met its burden to demonstrate that transfer to the District of Minnesota is 'clearly more convenient.'”

Patent Case Transferred to California

Vasudevan Software, Inc. v. International Business Machines Corp., 2009 WL 3784371(E.D.Tex. Nov 10, 2009) (NO. 2:09-CV-105-TJW)
Judge: T. John Ward
Holding: Motion to Transfer Venue GRANTED
This is a patent case with the plaintiff in North Carolina and the defendants in New York (but activity related to case in California) and California.  Judge Ward went through the current analysis, and concluded that the defendants had met their burden to show that transfer was appropriate.

Defense verdict in patent case in Marshall; trial stats so far in 2009

Last Thursday a Marshall jury in Judge Ward's court in Fiber Systems Int'l v. Applied Optical, 2:06cv473 returned a defense verdict on infringement in a patent case.  One claim and one product was submitted - from what I've been able to ascertain the plaintiff dropped the rest of the asserted claims right before trial started, and Judge Ward JMOLed two of the three accused products before the case went to the jury.  As for defenses, as I noted in a prior post, a number were summary judged the day before the pretrial conference and a couple set for a later bench trial - the remainder, including invalidity did not go to the jury (whether they were voluntarily dropped by the defendant or dismissed as a result of JMOL rulings I don't yet know).

If true, I think that's the third defense jury verdict in the district this year in patent cases (two Marshall and one Beaumont), not counting Judge Davis' ruling in favor of Microsoft after jury selection in the Fenner case in March, and Judge Ward's granting of JMOL in defendant's favor at the conclusion of the plaintiff's case in Paradox.  That's without getting into the sticky issue of how you count defense wins on damages (Retractable) or on postverdict JMOLs on damages (Hearing Components - award reduced postverdict from $4.6 million to $1.39 million).  By my count then, you can score it this year so far anywhere from 8-3-1 to 6-6-1 (depends on whether you count a post-jury selection grant of summary judgment or not) depending on what you count as a plaintif win and what as a defense win.  The tie is, of course the Thermapure case, which as I posted last was, was a plaintiff win on infringement but a hung jury on damages, which will be retried on damages next March.

Order Awarding Damages for Post-Verdict Sales

Cummins-Allison Corp. v. SBM Co., Ltd., --- F.Supp.2d ----, 2009 WL 3855958 (E.D.Tex. Nov 13, 2009) (NO. CIV.A. 9:07CV196)
Judge: Ron Clark
Holding: Order re: Damages for Post-verdict Sales of Infringing Products
This order arose in the context of sales made after the date of the verdict for the plaintiff and before the date the court entering an injunction to prevent future infringing conduct.
In this case, pursuant to notice given to the parties well before trial, the jury was asked to determine future damages, and arrived at a royalty rate of $400.00 per infringing unit sold. Judge Clark concluded that there was substantial evidence to support this finding. In accordance with 35 U.S.C. § 284, and after considering the Seagate factors, Judge Clark determined that Defendants' post-verdict sales were willful and thus enhanced the jury's award to $500.00 per infringing unit sold.
Judge Clark's order is a very helpful analysis of the law - constantly evolving though it may be - on the issue of future damages in patent cases.