Eastern District of Texas Federal Court Practice

Federal Circuit Grants Mandamus in Venue Case

The e-mails are flying today over the Federal Circuit's decision today to grant a petition for mandamus transferring a Marshall patent case between a Michigan plaintiff and defendants from Ohio and Canada in IN RE TS TECH USA CORPORATION, TS TECH NORTH AMERICA, INC., and TS TECH CANADA, INC..  The decision stated repeatedly that Judge Ward clearly abused his discretion in not transferring the case in light of the Fifth Circuit's en banc decision in In re Volkswagen of Am., Inc., 545 F.3d 304, 315 (5th Cir. 2008) (en banc) (“Volkswagen II”).  The only problem was that In re VW II wasn't issued until six weeks after Judge Ward denied the motion, and my review of the two orders indicates that the en banc opinion was the sole authority for much of what the Federal Circuit said - it couldn't have written the opinion it did without that order.  Yet there was no motion for reconsideration before Judge Ward, nor did the FC remand for reconsideration in light of the opinion, so see what effect it would have had.  That's even more puzzling in light of the FC's also recent decision in Rentrop v. The Spectranetics Corp., __ F.3d __, __, 89 USPQ2d __, 2008 WL 5246496, *3 (Fed. Cir. 2008) in which it wrote that “[w]e hold that when there is a relevant change in the law before entry of final judgment, a party generally must notify the district court; if the party fails to do so, it waives arguments on appeal that are based on that change in the law.”).  (Thanks to Robert Matthews for the timely cite, which he promises will be discussed in the forthcoming issue of Patent Happenings).
This case will be an interesting one to watch to see what effect it has on motions to transfer at the district court level, petitions for mandamus to the Federal Circuit, and rulings on those motions. 

SRBPS 2008 Christmas Card - "Twas the Night Before Christmas" by Marshall artist Carol Pace

The 2008 Christmas card from SRBPS - Marshall is the original watercolor painting "Twas the Night Before Christmas" of the historic Harrison County Courthouse during the holiday season by Marshall artist Carol Pace.  Carol, as readers may recall, was the first featured local artist in our firm's "Art at Work" program, and contributed the artwork (also of the old courthouse) for our firm cards back in the spring.  We commissioned her to paint a front view of the old courthouse as it approaches its grand reopening in March of 2009 after some 14 years of ongoing renovation.  I am happy to say that the original resides (or will reside once I get it framed) in my office.  Carol chose to punch the color up a bit in the version chosen for the Christmas cards, and we all like the jewel tone colors for the seasonal color.  Click on the photo for a higher-res version of the photo that will let you see some of the detail in the artwork, as well as our holiday greeting.

In Memoriam: Franklin Jones, Jr.

The flag in front of the federal courthouse in Marshall is flying at half staff today in advance of this morning's funeral services for Marshall lawyer Franklin Jones, Jr. (for full obituary, click here).  Franklin was the third generation of his family to practice law in Marshall, following his father Franklin, Sr., and his grandfather Sol Jones, who founded the Jones firm back in the late 19th century.
Franklin's accomplishments in his 54 year law career were many - just to name a few that mean something to me he served as the 100th president of the State Bar of Texas, was a Fellow of the American College of Trial Lawyers, and received the Marshall Chamber of Commerce's Citizen of the Year Award in 2002, and chaired the Courthouse Preservation Council of Harrison County for the past 14 years.  One of my lasting achievements in community service in my hometown will be that I was one of the committee that drafted Franklin to take the job, because he was the only person in the community that we could think of that could chair something that big.  (Franklin often joked in recent years that he was only sticking around to see the courthouse completed, so the delays didn't bother him that much.  He became increasingly concerned when it became clear that the building would be completed in the first months of 2009.  He very nearly made the grand reopening for the building where he, his father, and his grandfather tried many cases before it was replaced with a new courthouse in 1964).
I was fortunate to be able to work for Franklin at what's referred to locally as the "old firm", which was Jones, Jones, Baldwin, Curry and Roth when I worked there as summer help in 1985 and 1986, and again as a law clerk in the fall of 1991 (actually Franklin's cousin Scotty Baldwin left the firm in 1986 to start Baldwin & Baldwin, so by then it was JJCR).  The first trial I ever saw was when I went to Palestine for a week to help Franklin and Mike Miller when they tried Jerry Riggs' FELA case in Palestine, Texas (before the Honorable Bascom Bentley III - now that's a judge's name).  I later saw Franklin try FELA cases in Judge Sam B. Hall, Jr.'s court in Marshall as Judge Hall's law clerk.  (Franklin was also nice enough to let me take a date out in his Mercedes while I was a starving college student - at least that's my story.  What actually happened was that I took his car to get it washed and because it would be late getting back he told me to take it home and bring it to the office the next morning.  I cannot recall with any certainty at this time whether he in fact knew that I would be scheduling the car for a date that evening while I had it.  But I guess he knows now).
One the best experiences I had early as a lawyer (actually as a law clerk for Franklin) was due to Franklin, even though he wasn't there.  I was attending a deposition of the orthopod in the Riggs case in Shreveport with Franklin.  The defense lawyer was from Tyler and he and Franklin locked horns repeatedly during the deposition.  But as soon as it was over Franklin asked him if he'd drop me off back in Marshall on the way back to Tyler - Franklin was headed to Caddo, and Marshall was out of the way.  My jaw about dropped - I didn't know that's how "real" lawyers behaved.  I thought they told each other to go to hell and wouldn't, uh, pour water on each other if they were on fire (remember this was back when L.A. Law was the benchmark for how lawyers behaved).  The other lawyer (whose name I am sorry to say I've forgotten) said of course and took me and the court reporter out to dinner before heading back.  Since then I've learned that it is customary for lawyers out our way to ride with each other to and from depositions (Judge Ward has remarked on this recently at status conferences, and no, he wasn't making it up, as many of the lawyers at the hearing were assuming), and that little (and big) courtesies like this are standard.  I've ridden to Dallas with an opposing lawyer for a mediation, then detoured to Greenville on the way back to drop him at his daughter's volleyball game, and driven his truck back to Longview for him.  That's the kind of relationship that the legal community out our way has had for generations, and Franklin was a good example of it.  Judge Ward alluded to this in his eulogy to Franklin this morning, pointing out that Franklin whipped him in the courtroom not long after he'd started practicing law - the first of many, he said - and that he was usually on the opposite side of Franklin in cases.  But when it came time for Franklin to ask someone to say a few words at his service, he chose his old adversary.  But, Judge Ward noted, he made quite clear that the remarks were to be brief, and as Judge Ward said that as he was unclear just exactly what Franklin's contempt powers might be in his current condition, he decided to comply.
I know I saw Franklin a number of times in recent months working on the courthouse committee and at the courthouse before hearings, but the last time I can remember that we sat down and talked at length was when I went over to pay my courtesy call in January to let him know I'd changed firms.  We talked State Bar gossip (I was in my last year on the bar board - he'd been on the board in the late 1960's and president ten years after that) and local politics and had a really nice visit.  Like many others, I know I'll miss those visits, and the chance to bend his ear for some advice when I need it.

New tab - "Law Office Management"

As regular readers know, since joining my new firm in January of this year and opening a new Marshall office I have been writing and speaking more and more on subjects of law office management, including an article in the Texas Bar Journal, a couple of webcasts, and numerous posts on specific issues of interest to practitioners who are involved in their firm's management.  These posts are not strictly on topic for a weblog devoted to practice in the Eastern District of Texas but, frankly, I haven't got the time to maintain a separate weblog on law office management (it's time-consuming enough keeping a personal one and a legal one).  So from now on I'll categorize posts on law office management issues under the appropriate tab and will try to make clear in the subject line that that's what they are for readers who aren't interested.

"Leaving the Firm: Planning for a Smooth Exit" - TexasBarCLE Webcast

Week before last I participated in the "Leaving the Firm: Planning for a Smooth Exit" webcast put on by TexasBarCLE.  I am so behind on posting that it's obviously too late to watch live (it was on Wednesday, December 10th from 12:30 p.m. - 1:30 p.m.) but it'll be up in a few days and available to watch at your leisure.  It's good for 1 hour MCLE credit (I think .25 hr ethics) and is MCLE#901170853.  The registration fee is $80.  Get more info or register .  If you cannot participate in the entire live webcast (and obviously you can't), the recorded seminar will be archived and available within one week after the event for your review through the remainder of the year (presumably that means into 2009 as well). From the archive screen you can complete the viewing of the segment, visit our discussion forum, and then apply for MCLE credit. You may access the archived webcast from Your Purchases link on TexasBarCLE.com. Questions about the webcast? Call 512-427-1749.
The official blurb for the webcast states that "[w]hether you are leaving your firm to begin your own practice, work for another firm, or retire, there are many things you need to consider. Our webcast will give you valuable information to help assist you with this process."
The speakers were myself and George W. Coleman, with the Law Office of George W. Coleman in Dallas.  George retired from a large Dallas firm a couple of years ago and has returned to the practice of law, and he and I I think provided a pretty good balance of backgrounds.  George and I both enjoyed the webcast process, and I particularly liked that we didn't have a fire alarm go off during it (as happened last time I did one of these).  I have to mention how professional the State Bar's staff is about these.  Shawna Gunkel got George and I together to work out our agenda, and the actual studio staff are great to work with (with the notable exception of the studio chairs being really uncomfortable - but they tell me they're working on that).
One thing I'd point out is that during the course George and I realized that the topic isn't just for lawyers leaving a firm - it's useful for firm administrators trying to prepare for lawyers leaving as well.  Every checklist of things to do at the back end of an attorney's association with a firm also applies to the front end when a new attorney joins a firm, George quite correctly observed.

Stanford Law School Intellectual Property Litigation Clearinghouse (“IPLC”) Launches

If you haven't already heard, the Stanford Law School Intellectual Property Litigation Clearinghouse (“IPLC”) was launched on December 1.  The IPLC is a  searchable online database that provides statistical information on patent lawsuit filings and outcomes since 2000, as well as somewhat less information (as of now) on  copyright and trademark suits.  The database has reinforced some of the common wisdom about patent filings, but has debunked a number of myths as well.  For example, patent cases in the District of Delaware are more likely to actually go to trial than in the ED Texas.  In addition, ND Cal plaintiffs have recently won slightly more than half their cases at trial. The study also notes that while the number of patent cases filed has remained relatively constant between 2000 and the present, the number of defendants has increased substantially in the past couple of years - something that Rick Frenkel was alluding to late last year.  

The IPLC is at http://lexmachina.stanford.edu/patents.  Only registered individuals can use the database, but registration is free.

Petition for Writ of Certiorari Filed in In re Volkswagen

  Plaintiffs filed their petition for cert in the In re Volkswagen case Tuesday.  Texas Parte blog had a brief, but informative post about it a couple of days ago, featuring comments from plaintiff's counsel Martin J. Siegel of Houston.

Court Suspends Annual Attorney Admission Fee

Having trouble making ends meet?  The Eastern District is here to help.  Chief Judge Heartfield just signed General Order 08-14, which suspends the collection of the $10 per year local attorney admission fee effective immediately, until further order of the court.  (The reason is that the fund balance is large enough for the anticipated needs over the next several years).

Swearing in of new clerks / patent case status conferences

Tuesday's patent case status conferences in Marshall were unexpectedly preceded by a point of personal privilege, as I think Judge Ward put it, when all three of his and Judge Everingham's new law clerks were sworn in as members of the State Bar of Texas and the Eastern District Bar, with family and friends in attendance.  As is customary locally, the members of the bar in attendance stood for the swearing in.
The reason I point this out is that Judge Ward took a few moments to outline the extraordinary qualifications of the Court's new clerks, which should be of interest to practitioners in the patent docket in Marshall.  Assuming I got this right, they include:

• All three clerks have technical degrees (two in electrical engineering)
• Two of the three clerks have master's degrees (one in biotechnology)
• All three clerks worked in the private sector for several years before attending law school (for one of the clerks - a graduate of the U.S. Military Academy in West Point - that included a year's tour of duty in Iraq)
• Two of the clerks have previously interned for federal judges (Lee Rosenthal of Houston of Houston and Barbara Lynn of Dallas, both highly respected judges, to put it mildly).
• One of the clerks has already accepted a clerkship at the Federal Circuit after he finishes in Marshall.

I bring this up because while the point has often been made that the Eastern District's judges have considerable expertise in patent litigation, the qualifications of the Court's staff is also worth mentioning.  These are just insanely high qualifications for district court clerks, and I was glad that the patent lawyers assembled for the cattle call, er status conference got to hear that maybe, just maybe, the Court knows a little bit about this newfangled patent litigation business.  I'm just glad that the competition wasn't this fierce when I got out of law school, or I'd still be working in Waco!

Summary judgment granted on state law claims in West v. Perry

Trial starts tomorrow in this case, but the defendant scored a win today, as Judge Davis affirmed Judge Love's report and recommendation that the defendant's motion for summary judgment as to the plaintiff's state law claims for infringement of state copyright law, violations of federal and state unfair competition and laws and conversion should be granted.