IP Law & Business article on venue proceedings at Fifth Circuit

Iplb3 Joe Mullen is a reporter at IP Law & Business magazine who also runs a weblog The Prior Art - One reporter's notes on the IP beat .  In his recent post on highlights from the May issue of the magazine he notes an article on the pending In re VW en banc proceedings at the Fifth Circuit.  The article is at p. 14 of the May issue, which is available to subscribers - although it may show up on the magazine's website soon (as, for example, the 50 Top IP people under 45 article has).  Good article.

Patent Reform Act - presentation at TADC seminar

Brochure_page_1cropThis Thursday I'll be in Dallas speaking at the Texas Association of Defense Counsel's 2008 Intellectual Property Seminar at the Belo Mansion (home of the Dallas Bar Association).  My assigned topic is "Everything You Need to Know About the Patent Reform Act."  The lineup for a seminar looks like a good one - here's a copy of the brochure Download Brochure.pdf

Plaintiff's Motion for Limited Jurisdictional Discovery Granted

800pxodometer2Womack v. Nissan North America, Inc., 2007 WL 5160790(E.D.Tex. Oct 12, 2007) (NO. 2:06-CV-479-DF)
Judge: David Folsom
Holding: Plaintiff's Motion for Limited Discovery GRANTED; Defendant's Motion to Dismiss for Lack of Jurisdiction and Insufficient Service of Process DENIED WITHOUT PREJUDICE
This is the putative (a word created to describe the first stages of class actions, as best I've been able to tell) odometer class action.  Plaintiff moved for limited discovery on matters bearing on Nissan America's motion to transfer to the Eastern District of Michigan and to consolidate with three other cases pending in other districts and to establish proper service.  Subsequent to this motion, the other actions with which Nissan America had requested consolidation were voluntarily dismissed. At the hearing on September 6, 2007, the parties indicated that they had reached an agreement on the motion to dismiss for improper service, so the only matter remaining for Judge Folsom to rule on was the motion for jurisdictional discovery and the motion to dismiss for lack of jurisdiction.
Essentially, Defendant Nissan Japan moved for dismissal alleging lack of personal jurisdiction, and plaintiff sought discovery into the defendant's contacts in order to respond.  After reviewing the parties' arguments, Judge Folsom held that the Plaintiff has “suggest[ed] with reasonable particularity the possible existence of the requisite contacts” and therefore allowed discovery into the extent of control exercised by Nissan Japan over the affairs of Nissan America, and denied Nissan Japan's Motion to Dismiss without prejudice.  The specific jurisdictional discovery permitted (whichs sets forth the framework for the proceedings to resolve Nissan Japan's personal jurisdiction defense) was the following:

It is ORDERED that for jurisdictional discovery as to Nissan (Japan), Plaintiffs may serve no more than twenty-five (25) interrogatories and twenty-five (25) requests for admissions. It is further ORDERED that for jurisdictional discovery as to Nissan (Japan), depositions shall be limited to a total of twenty-five (25) hours, except that deposition time requiring the use of an interpreter shall only count as half-time toward this total, e.g. one hour of deposition time requiring an interpreter shall only count as thirty minutes toward the twenty-five hour limit. No one deposition shall last longer than six (6) hours. These depositions shall take place in a mutually agreeable city in Japan, unless the parties agree otherwise.
It is further ORDERED that jurisdictional discovery shall be completed within 75 days after entry of this Order. Defendant may renew its motion to dismiss for lack of jurisdiction within 30 days of jurisdictional discovery being completed.

New transcript redaction procedures go into effect

Judge Heartfield just signed General Order 08-8, Download 08-8.pdf which amends several local rules and adds new Local Rules CV-5.2 and CR-49.1, which create new transcript redaction procedures in accordance with U.S. Judicial Conference policy regarding redacting private information from transcripts.
Long and short of it is this - Judicial Conference policy - and now FRCP 5.2 - require (kinda sorta - you have to read the rule) that certain private information (bank accounts, social security numbers., etc.) be redacted from court filings.  When the issue came up of what to do about private information in transcripts - because forthcoming changes will result in hearing and trial transcripts becoming available online - procedures were added last year requiring attorneys to take responsibility for redacting private information in transcripts before they become available online.  These changes amend those changes to set out the procedures for attorneys to follow to redact when the need arises, while avoiding giving us all free copies of the transcripts from the court reporters under the guise of letting us review them to see if any changes are needed.  Essentially, if you didn't make sure during the hearing that private information was kept out of the record, you'll need to either buy a transcript to prepare the
changes, or view the transcript at the terminal in the clerk's office.
If you have this come up in one of your cases, read this order carefully to see what the procedure is.

New Guest Author: Susan Fisher

Starting yesterday readers will be seeing posts from guest author Susan Fisher, who is an attorney with our firm's Sherman office, where her practice focuses on general trial and appellate practice in federal and state court, intellectual property litigation, lender liability, and creditors' rights. She graduated from the University of California at Davis with a B.A. in sociology (1991) and received her J.D. from the University of the Pacific, McGeorge School of Law (1994). She has been a member of the California State Bar since 1994, and was admitted to the Texas bar in 2000. Susan has two daughters, Morgan and Katharine.
As I've noted previously, Susan was elected to the State Bar board of directors last month replacing me, and will be sworn in next month at the State Bar's annual meeting.  Susan's posts will focus on cases coming out of Sherman and Plano, principally those by Judges Richard Schell and Don Bush.

Motion to Dismiss Federal Odometer Act Class Action Denied

Womack v. Nissan North America, Inc., --- F.Supp.2d ----, 2007 WL 5160791(E.D.Tex. Feb 16, 2007) (NO. 2:06-CV-479-DF)
Judge: David Folsom
Holding: Motion to Dismiss for Lack of Subject Matter Jurisdiction DENIED
This is a class action in which the plaintiff claims that the defendant makes vehicles that violate the Federal Odometer Act because they allegedly inflate the mileage driven by 2% over the actual mileage driven, thus reducing the value of the warranties and diminishing resale value.  Judge Folsom found that the plaintiffs stated a sufficient claim to confer standing, and accordingly denied the motion to dismiss for lack of subject matter jurisdiction.  Judge Folsom also denied the 12(b)(6) motion, noting that an issue of fact existed as to how much inflation occurs, as well as how much inflation is permissible under the Act.
Nissan also sought dismissal or repleading under FRCP 9, claiming that the plaintiff had not sufficiently pleaded its "fraud-based" claim under FRCP 9.  Judge Folsom declined to decide whether the plaintiff's claim was sufficiently fraud-ish to trigger the pleading requirements of FRCP 9, instead deciding that even if the rule applied, the plaintiff's allegations satisfied it.

CM/ECF and PACER back online

This afternoon the Eastern District's online filing system went back online several days ahead of schedule.  The General Order extending deadlines till Monday is still in effect, though, so everyone enjoy the first deadline-less day (tomorrow) in recent Eastern District history.. 
It's almost as if Judge Steger wanted us all to have no excuse not to show up tomorrow for the renaming of the courthouse in Tyler ...

SRBPS-Marshall Opening Featured in NET Paralegal newsletter

I am proud to report that our firm's open house, complete with photo, made the front page of the Northeast Texas Association of Paralegals' May 2008 Key Notes publication.  Download may_2008_keynote_1.pdf We are shown immediately below Mona Tucker's ad for "six basset hound / pit bull mix and nine Rottweiler / who knows what" puppies, which is probably just about right.  But at least now we all know that "Pam Hood reports that she loves working at Michael Smith’s new office in Marshall."

Claims construction opinion

Visto Corp. v. Research in Motion Ltd., 2008 WL 1930295(E.D.Tex. Apr 30, 2008) (NO. 2:06-CV-181)
Judge: Chad Everingham
Holding: Claims construction opinion
Judge Everingham's Markman opinion notes that many of terms in this case have been construed previously by Judge Ward, Judge Folsom, and himself, and adopts those constructions.  The order also construes several additional terms both for the plaintiff's claims and RIM's counterclaims.

Motion for Entry of Protective Order Denied

Stone Connection, Inc. v. Simpson, 2008 WL 1927033 (E.D.Tex.April 28, 2008) (No. 4:07-CV-431)
Judge: Richard A. Schell

Holding: Motion for entry of Protective Order DENIED.

The plaintiff moved the court for a protective order, seeking to protect discovery relating to trade secrets and confidential and/or proprietary information pursuant to Rule 26(c)(1)(G). One of the defendants didn’t oppose the plaintiff’s motion, but the court agreed with the opposing defendants’ contention that the plaintiff failed to make the requisite showing of good cause. The court said that the plaintiff’s mere conclusory statement that since this case involves trade secrets and/or confidential and proprietary information, the court should issue a protective order was not sufficient. The plaintiff needed to provide the court with a particular or specific demonstration of fact. (He needed to provide SOMETHING!!)