Eastern District of Texas Federal Court Practice

Papers and Seminars: What Is It About Patent Venue...?

It has already been a busy year on the speaking front, even with a busy trial schedule as local counsel in federal court here in Marshall and Tyler - we picked a jury in a patent case which resulted in a defense JMOL last month and picked another jury last Monday for a trial starting on the 17th - both Marshall cases in Judge Ward's court.  Thankfully two other February patent cases - one before Judge Ward and one before Judge Davis - have been moved to April (with the one previously before Judge Ward reassigned to visiting Judge Rader from the Federal Circuit). 

In January I presented Intellectual Property and Patent Litigation Update at the State Bar's Litigation Update seminar in Austin on January 22. It was the first time I had covered that topic in full in a while, and the updating on both substantive and procedural issues affecting patent litigation since 2007 took a lot of last fall.  I also accordioned that paper down into the Patent Litigation article which was part of the 2009: Year in Review feature in the January issue of the Texas Bar Journal.  Both papers had as a major component the recent venue caselaw coming out of the Federal Circuit and the Eastern District.

The venue sections were beefed up even more to reflect the December and January Federal Circuit opinions on venue in patent cases for March's Venue Selection Post In re Volkswagen.  Has It Impacted Life in East Texas? at the Advanced Intellectual Property Law course (also in Austin) set for March 5.  But that paper actually gets previewed a month earlier (also in Austin as luck would have it) at the Austin IPLA's February meeting and luncheon at the Westwood Country Club next Tuesday, February 16 as Venue Selection in Patent Cases Post In re Volkswagen.  I am told that registration begins at 11:30 a.m., with the luncheon at noon and that pre-registration is available on the web at www.austin-ipla.org under the "Events" tab.  That presentation will, in turn, be further updated as necessary after it completes its off-Broadway run in Texas for when it hits the big city at the AIPLA spring meeting in New York City on May 6-8, 2010 (not in Austin).  (Sorry - was in New York last week for work on a case and I'm still in a New York state of mind.  If my phone worked, I'd post pictures of the WTC work that went on all night outside my hotel room.  But I digress..). 

On a totally different front (so I'm still digressing, but on a somewhat related topic), I'll be reprising last year's paper on dispositive motions at the Federal Court Practice seminar on May 10 in Dallas.  This year I'll be focusing more on motion practice and local rules, using dispositive motions as an example of both.  Federal procedural issues are a favorite topic of mine since my practice is mostly as local counsel in federal court, and will be a nice palate cleanser after four straight papers focusing on patent venue.

Plaintiff's verdict in Texarkana patent case

After two defense wins earlier in the month January ended a little brighter for patent plaintiffs, with a Texarkana jury in Judge David Folsom's court returning a verdict of infringement in Ion v. Sercel, 5:06cv236.  The jury found yes on literal and doctrine of equivalents, no on obviousness and best mode defenses, and set damages at $25,155,645 in lost profits damages (but none on reasonable royalty).

Marshall Jury Finds for Defendant Google - No Infringement and Patents Invalid

Today a Marshall jury in Judge Everingham's court in Function Media v. Google, 2:07cv279, found that defendant Google's AdSense products did not infringe the nine asserted claims of Function Media's two patents.  The jury further found that Google had shown by clear and convincing evidence that all of the asserted claims of both patents were invalid as both obvious and as anticipated.   

That's a good start to the year for patent defendants in the Eastern District - a JMOL at the close of the plaintiff's case two weeks ago in our Southwest EFuels v. 3T case, and a sweepstakes in this one.  Meanwhile, up in Texarkana the jury in the third case heads towards another verdict this week, and jury selection for the February docket of cases is only six days away...

January 2010 patent docket, rounds 2 and 3 ...

As I previously noted, last week ended with a JMOL in favor the accused infringer in the patent case in trial in Judge Ward's court in Marshall, and Judges Davis and Love's patent cases in Tyler both settled (the former before opening statements, the latter during trial). 

This morning the courts reloaded with Judge Everingham starting a patent case in Marshall (after a hot couple of weeks of pretrial motions throwing around all kinds of interesting claims, resulting in a flurry of court orders that I'll get to later)  and Judge Folsom picking a jury in Texarkana, also in a patent case.

That's five patent cases all getting at least to voir dire in front of five different judges in three divisions, with magistrate judges handling two of the five trials.

Women and the Law: The Advocate (Winter 2009)

The State Bar of Texas Litigation Section's quarterly publication The Advocate is always welcome to hit my desk - it's one of the few bar-related publication that actually consistently provides me with useful information (the Texas Bar Journal accompanies it in this category) and the editor's color choices are always, well, interesting.  The current issue - shown at left - is a screaming hot pink in honor of its topic Women and the Law.  It's a terrific issue, and I highly recommend it to Litigation Section members for reading (I'm told we also shipped copies to members of the State Bar's Women and the Law section gratis (perhaps in fear of a infringement action over the issue's title?   Hmmm...). 

I have reproduced the table of contents below.  It won't be available online till the next quarterly issue comes out, but you can always join the Section here and get a copy (although I bet Jennifer Ainsworth would be willing to e-mail you a copy of her very educational article on Texas women general counsel and what they look for in outside counsel, being as she's from East Texas.  There are some heavy hitters in this issue, from Fifth Circuit judge Tom Reavley, to jury selection guru Lisa Blue, to a frank article from Kathleen Wu on the status on women in the profession, to a really useful (not for me, of course) "top ten" list of things everyone should know about divorce. 

Four Suggestions for the Future by Justice Ruby Kless Sondock & Connie Pfeiffer
Gender Discrimination in the Workplace: “We’ve Come a Long Way, Baby” by Katie J. Colopy, Sandra K. Dielman & Michelle A. Morgan
What’s Changed for Women Lawyers in the Last Decade?  Not a Whole Lot, Frankly by Kathleen Wu
Rough Road to Justice: The Journey of Women Lawyers in Texas by Betty Trapp Chapman
Texas Trailblazers and Their Texas-Size Balancing of Professional and Personal Success
by Sofia Adrogué & Kennon L. Peterson
The View from the General Counsel’s Seat: Advice on Business Development and the Attorney-Client Relationship from Texas Women General Counsel by Jennifer Parker Ainsworth
The Psychology of Women’s Influence on Juries by Lisa Blue & Robert B. Hirschhorn
Making the Practice of Law Work for Women by Karen Hirschman
Top 10 Things Every Woman (and Her Husband) Should Know   Before Filing For Divorce by Kelly McClure
An Odyssey of Talent at the Bar by Judge Thomas M. Reavley

Of course the issue also contains the regular items:

Evidence & Procedure Updates by Luther H. Soules III & Robinson C. Ramsey
From My Side Of The Bench by Judge Randy Wilson

Motion to Strike New Invalidity Theories Granted-in Part; Defendant Cannot "Reserve the Right" to Assert New Combinations

Realtime Data v. Packeteer, Inc., 2009 WL 4782062 (E.D. Tex. Dec. 8, 2009)

Judge: John Love

Holding: Motion to Strike New Invalidity Theories Granted-in Part

In this opinion, Judge Love addressed the issue of when a defendant's invalidity contentions should be stricken for failure to comply with the local rules regarding adding new prior art.  With respect to two references, Judge Love noted that they had not appeared in any invalidity chart and had not been identified claim by claim and element by element, and rejected the defendant's claim that the plaintiff was "on notice" of these references.  (Ever wanted to know how many references generate an "impossibly high number of combinations"?  Judge Love says 500 gets you there).
On a third group of references, however, Judge Love concluded that sufficient notice had been provided.  But in doing so, he rejected the claim that a defendant can "reserve the right" to combine any of the references it provides.  Such a statement does not "clearly suggest" the combination as required by P.R. 3-3, he held.
All of this was rendered somewhat moot, however, by the Court's requirement that in the interest of narrowing the case, defendant Citrix would be limited to no more than five obviousness combinations, to be disclosed within a week, with amended invalidity contentions to follow a few days later.  (Ed. note: this case was set for trial in January 2010 and settled shortly before trial).

Jefferson Bar Journal feature on Judge Thad Heartfield

 As district regulars know, January 1, 2010 marked former Chief Judge Thad Heartfield of Beaumont's assumption of senior status.  I just received from one of Judge Heartfield's many admirers a copy of this very nice article about the judge from the Jefferson Bar Journal, and thought readers might appreciate it.  Download JudgeHeartfieldArticle

Judge Bush Receives Serjeant of the Inn Award at Inns of Court Ceremony

I attended a joint meeting of the Metroplex American Inns of Court last night at which the Eastern District of Texas' own Magistrate Judge Don Bush received the Serjeant of the Inn award from the Paul Brown American Inn of Court in Sherman.  Other recipients of the honor included Jim Cowles by the Patrick E. Higginbotham Inn, Thomas William Mayo from the William "Mac" Taylor Inn, Roland Johnson (currently president of the State Bar of Texas) from the Eldon B. Mahon Inn, Mark X. Mullin from the John C. Ford Inn, and the Hon. Marilea Lewis from the Annette Stewart Inn (which also hosted the event).

The Inns of Court in Dallas and Fort Worth established the Serjeants' Inn award to honor their members for long and meritorious service to the Inns of Court and to the legal profession. Each of the Inns in Dallas and Fort Worth (which apparently includes Sherman) can nominate one member each year and these nominations are announced at the joint Inns of Court meeting in January.

The origins of the award dates back to a peculiarity of the English court system in the late 15th century.  The Serjeants' Inn in the English Inns of Court system consisted of those barristers who had distinguished themselves by their service to their profession and accomplishments as barristers. A serjeant-at-law was a superior rank of barrister - in fact until 1875 only serjeants could be appointed judges (the name serjeant is actually corruption of the original Latin servientes, literally a servant of the law). When a barrister was appointed a serjeant, he left his Inn of Court and joined Serjeant's Inn.  As one the speakers noted last night, that part of the tradition was not retained in the Texas award - the honorees remain in their Inn.  The picture at right shows the last of the the three Serjeants' Inns, this one on Chancery Lane in London (the first was abandoned in 1498 and the second burned down in the Great Fire in 1666).  The Chancery Lane location was similarly abandoned in 1877 and the members returned to their original Inns.  So the Paul Brown Inn gets to keep Judge Bush.

JMOL order filed in Southwest EFuels v. 3T

Southwest Efuel Network, L.L.C. v. Transaction Tracking Technologies, Inc., 2:07cv311 (Ed. Tex., Jan. 13, 2010)
Judge: T. John Ward
Holding: Defendant's Motion for Judgment as a Matter of Law GRANTED
It took Judge Ward just a day to get the parties a written order memorializing his oral ruling granting defendant's JMOL yesterday morning.  In his order, Judge Ward first concluded that "[t]he undisputed evidence shows that the accused 3T software product does not infringe
the asserted method claims. On cross-examination, Plaintiff’s technical expert conceded that the
accused product does not perform the “sending” step of subpart (f) of independent claim 1. On
cross-examination, Plaintiff’s technical expert conceded that the accused product does not
perform the “sending,” “calculating,” and “transmitting” steps of subparts (a), (b), and (c)1 of
independent claim 6."  (Ed. note: Claims 1 and 6 were the only independent claims asserted).  The Court went on to conclude that "Plaintiff failed to introduce any evidence that the Defendant actually performed the claimed method. Plaintiff failed to introduce any evidence that any customer of the Defendant actually used the claimed method in the Defendant’s accused product."
Key to Judge Ward's holding was the Federal Circuit's recent holding in the Lucent case that based upon the facts presented in that case the evidence was “just barely sufficient” to permit the jury to find direct infringement. Lucent, 580 F.3d at 1318.  "In this case," he wrote, "Southwest provided far less evidence on infringement than the plaintiff in the Lucent case. There, the plaintiff presented evidence that the defendant had instructed its customers to use the accused products in an infringing way, and there were instruction manuals distributed by the defendant showing such use. Accordingly, the Court finds that Plaintiff provided no direct or circumstantial evidence of infringement for a reasonable jury to find infringement."
Judge Ward went on to grant JMOL as to the claims of contributory, inducing, and willful infringement.

The Prior Art talks to i4i v. Microsoft jurors

Joe Mullin with IP Law & Business has a great article discussing the recent i4i v. Microsoft case with some of the jurors.  The upshot is that in the jurors' mind the case wasn't even close - after they heard the facts they were convinced Microsoft was infringing i4i's patent, and weren't complimentary of the way Microsoft put on its case (juicy details in Joe's article).  (They understandably didn't mention its failure to make a FRCP 50(a) motion, which is what the Federal Circuit would later focus on, as I've previously posted).

The point that I hope comes across in the article was something that I saw this week in our trial in Marshall and that is that if you weren't in the courtroom, as the jury or judge is, in my opinion you simply can't judge what the jurors did in a particular case (with the possible exception of appellate judges, who have the full record and adversarial briefing to inform them of what happened in a particular case).  Joe writes that once the trial ended, one of the jurors went online and read what others were saying about the case  “They talked about stupid people in Texas, ignorant people in Texas, on a lot of the blogs,” the juror said.  "They talked about how patent companies were coming to Texas because there were dumb people on the juries.”  But those people didn't hear the testimony in the case, she emphasized.  "If you sat through that trial at all, you would know, it was just so clear cut. They weren't there. They didn't know. If they had heard what I heard, they could not have come up with any other verdict.”

I think that point is worth emphasizing, because as anyone who watches jurors - as we did this week - knows (as opposed to those who opine about a trial they didn't attend, a jury they never saw, and a case they know only by reading a press clipping) jurors work awfully hard to understand the facts and to follow the law, and while I don't always agree with them (usually when I lose), I've never yet seen a jury who wasn't trying its dead-level best to do its job, and whose decision I couldn't understand based on the facts I watched presented to them.