Eastern District of Texas Federal Court Practice

Patent Hawk inventor's case transferred from Texas to Oregon, citing In re TS Tech

Odom v. Microsoft, 6:08cv331 (Jan. 30, 2009)
Judge: John Love
Holding: Defendant's Motion to Transfer Venue GRANTED
It took exactly one month for the first Eastern District venue opinion in a patent case reflecting the Federal Circuit's recent opinion in In re TS Tech to come out, and fortunately for practitioners it provides a thorough analysis of the application of both In re VW II and In re TS Tech to patent cases (in the line of older Eastern District cases like Network-1 v. D-Link, Mohamed v. Mazda and TI v. Micron, which sought to explain the issues and the relevant law, as well as resolve specific motions).  In this case, the plaintiff is an Oregon inventor (better known to many as Patent Hawk) claiming that Microsoft, the sole defendant, infringes his patent via its Office software.  Microsoft sought a transfer to Oregon (next to Washington, where Microsoft is located).   I won't go into the factual background of the case, which involves Odom's relationship with Microsoft and the Klarquist Sparkman firm in Oregon prior to suit being filed, but those facts become important later.    
Judge Love's opinion not only cites but analyzes both In re VW II and In re TS Tech, the first to do both since the latter came out.  Judge Love distinguished this case from In re TS Tech in that this is a case dealing with software code, unlike the prior cases dealing with physical evidence, so the location of the original code does not mean any benefit in convenience for anyone, as opposed to, for example, the cars or car parts at issue in both VW and TS Tech.  Neither case, Judge Love points out, dealt with electronic information, as opposed to physical information.
On the issue of cost of attendance of witnesses, Judge Love noted that the Federal Circuit did not explicitly address in TS Tech what showing was necessary on this factor, or the relative importance of party versus nonparty status.  Movants are generally required to list the relevant witnesses and outline the substance of their testimony so the Court can evaluate the importance of the claimed witnesses, but VW II made clear that affidavits are not required for this showing - in that case a simple list with an explanation was sufficient.  In this case, the parties argued over what showing was necessary on this factor, but Judge Love concluded that although the specific showing in each case varies depending on the facts, in this case the defendant's showing was sufficient.  In short, the Court held that although there was still some factual dispute as to who the witnesses were and where they were located, there was not really a dispute that they were located in the Washington/Oregon area.  Importantly, Judge Love observed that "This is not a case where witnesses are spread out all over the country or the world" citing Network-1 Sec. Solutions, Inc. v. D-Link Corp., 433 F. Supp. 2d 795, 800, mandamus denied, 183 Fed. Appx. 967 (Fed. Cir. 2006) (finding this factor neutral where witnesses were located in Connecticut, New York, California, Taiwan, and Israel).  For readers unfamiliar with the Network-1 case, the Federal Circuit in that case denied a petition for writ of mandamus compelling Judge Davis to transfer a case where witnesses were spread through the U.S. and in fact, the world.  (Network-1, by the way, provides the best explanation extant for how patent cases differ from other cases, and how the venue factors apply in such cases, and I highly recommand it).  This case. Judge Love wrote, was in fact quite similar to the facts in TS Tech, not Network-1.
On the local interest factor, Judge Love acknowledged that TS Tech held that, in patent cases, when a defendant sells products all over the country, no specific venue has a dominant interest in resolving the issue of patent infringement, so "in most patent cases" this factor will be neutral.  But not in this case, however.  Due to the extensive ties Oregon has to the underlying case via the contracts, etc., Judge Love concluded that there was in fact a local interest in the case in Oregon, and none in Texas.  That also influenced the familiarity with the law applicable law factor, since this case, unlike most patent cases, involved contract claims requiring application of Oregon law.
Accordingly, after weighing the relevant factors, Judge Love concluded:

Under the circumstances presented here, the convenience of witnesses and localized interests weigh in favor of transfer with the other factors neutral or weighing slightly in favor of transfer. This is a case that is significantly localized in the Northwest. Both parties are residents of the Northwest, and Microsoft’s equitable defenses all arise out of conduct and contracts in the Northwest. No Texas resident is a party to this litigation, nor is any Texas state law cause of action asserted. All identified witnesses—with the possible exception of one—are located in the Northwest. This is not a case where witnesses are expected to be traveling from all over the country or world. In summary, there is little convenience to the parties for this case to remain in Texas, while there are several reasons why it would be more convenient for the parties to litigate this case in Oregon.
The Court finds that Defendant has shown that transfer to the District of Oregon would be clearly more convenient. See Volkswagen II, 545 F.3d at 315.

(Emphasis added).

Motion to Transfer Denied in Products Case

Woods v. General Motors Corp., 2009 WL 185421(E.D.Tex. Jan 16, 2009) (NO. CIV.A. 2-08CV-122)
Judge: T. John Ward
Holding: Motion to Transfer Venue DENIED
This is a product liability case in which the plaintiff alleges her daughter died in a car wreck fire in North Dakota as a result of defective seat belt latches in the U-Haul truck, rented in Lindale.  The plaintiff lives in Yantis, Texas.  For readers unfamiliar with East Texas geography, both towns are approximately an hour west of Marshall (substantially less than 100 miles, not that it matters.  Oh, wait, yes it does.).  Defendants in this case (there are four) are in Michigan, Arizona and New Jersey.  While this is not Judge Ward's first venue opinion post-Volkswagen II, it is the first published one, and reflects the current venue analysis as a result of that case.   
Defendant sought a transfer to North Dakota, claiming that it was ":clearly more convenient" than Marshall.  Judge Ward first noted that the plaintiff lives within 100 miles of Marshall, and that none of the defendants - or any other parties - was located in North Dakota.  Defendants argued that investigating personnel are located in North Dakota, and plaintiff responded that since the plaintiff's daughter was born and raised in the Marshall area, all witnesses who knew her and could testify regarding her were within 100 miles of Marshall, as were the U-Haul personnel who may testify about any representations made to her at the time of the rental, as crucial witnesses of some of claims regarding formation of the lease contract.
After reviewing the applicable factors, Judge Ward concluded that "this District is just as convenient, if not more convenient to the parties and the witnesses than the District of North Dakota. The Court rules that because the defendants have failed to show that the transferee venue is clearly more convenient than the venue chosen by the plaintiff, the plaintiff's choice of venue should be respected" and accordingly denied the motion.

Product Liability Case Transferred

Simmons v. Ford Motor Co., 2009 WL 173850(E.D.Tex. Jan 05, 2009) (NO. CIV.A. 2:07-CV-098)
Judge: David Folsom
Holding:  Motion to Transfer Venue GRANTED
Simmons v. Ford appears to be the first venue order in a product liability case from the Eastern District to be published since in In re Volkswagen of Am., Inc., 545 F.3d 304 (5th Cir.2008).  Judge Folsom provides a succinct history of the Volkswagen proceeding, after which he engages in the required analysis post-Volkswagen, eventually concluding that the Amarillo Division of the Northern District of Texas, 513 miles from Marshall, would be "clearly more convenient" under the facts of this case, which the Court found involved a number of nonparty fact witnesses located in the Amarillo area.

Summary Judgment Granted on Misappropriation Claim

Mathworks, Inc. v. Comsol AB, 2008 WL 5544933(E.D.Tex. Oct 07, 2008) (NO. 6:06-CV-335)
Judge: Leonard Davis
Holding:
This order memorializes Judge Davis' rulings from the pretrial conference. At that time he denied the defendant's motion for summary judgment as to MathWorks's copyright infringement claim and breach of the EPA claim, but granted its motion for summary judgment as to MathWorks's misappropriation claim because Massachusetts law applies, and MathWorks could not overcome the "news information piracy" limitation of this claim.

Beaumont jury finds patent not infringed and invalid

Beaumont magistrate judge Keith Giblin was late - very late - for the Eastern District judges' meeting yesterday afternoon, but with good reason.  Judge Giblin just tried to a jury verdict his first patent case, Mettler-Toldeo, Inc. v. Fairbanks Scales, Inc., et al, 9:06cv97.  The jury found none of the eleven claims of the three aserted patents infringed, either literally or under the doctrine of equivalents, and also found that there was no contributory infringement as alleged.  The jury declined to find that the claims of one of the patent were invalid as anticipated, or that another was obvious, but found two of the three patents invalid anyway as obvious.  Reports are that the case was well-tried on both sides, and that the attorneys threw pretty much everything but the kitchen sink at the judge during the trial.
Judge and jury are reportedly resting comfortably today.

Another patent verdict from Lufkin

On January 21, the jury in Judge Ron Clark's court rendered a verdict in Hearing Components v. Shure, 9:07cv104.   Yes on infringement, no on invalidity defenses, and damages of approximately $4.6 million.

"Art at Work": January/February 2009 featured artist Mieko Hathaway

Our featured artist for the Art at Work program for January and February is Mieko Hathaway from Jefferson, TX.  Mieko began studying art as a child in Japan and then later studied with some well-known US instructors in several mediums.  Her mediums of expertise include:  Watercolors, Casein, Sumi-E, Acrylics and Origami.   Many of Mieko's works reflect her travels as well as her Japanese background.   You can find out more about her here: Download Inside flyer - Mieko
A list of Mieko's art on display can be found here: Download Art Display List

How to Make Visiting Lawyers Happy - part 1: Desktop Power Outlets

 In our continuing attempt to make life easier for the out of town lawyers visiting our office while in town for hearings or depositions, we recently replaced all the desktop lamps in our visiting lawyer offices with new hotel-style lamps with dual power outlets.  The lamps all carry labels with the office wifi network name and key code, so laptop warriors have everything they need to get on the Internet as soon as they sit down, and they don't have to choose between charging the laptop and charging the Blackberry.  (Note: just so readers don't think I'm crazy, the wifi network is not the same thing as the firm's computer network, which is hard-wired.  It is simply Internet access via wifi for visitors, and exists completely separate from our office computer network).
The copy of O'Connor's Federal Rules is also a nice touch, don't you think?

Judgment Entered in Medtronic v. Boston Scientific

On January 23, 2009, Judge T. John Ward entered a final judgment in this case.  It's been a long road for the case since trial, when the plaintiff obtained a jury verdict for $250 million.  Since then the verdict has been trimmed and trimmed again and the final judgment now consists of $19,090,000 in damages, with another $4,558,124 in prejudgment interest, for a total of $23,648,124.  The court determined to sever any claims for future royalties and there was no request for injunctive relief, so this is a final judgment.
The prejudgment interest issue was actually the subject of a separate order, in which Judge Ward rejected BSC's claim that prejudgment interest should be denied because Medtronic delayed filing suit for five years.  Judge Ward found that there was no evidence that Medtronic's delay was a litigation tactic, and noted that the Court had ruled against BSC on its laches defense.  He similarly rejected BSC's request that the interest be calculated using a quarterly payment method.

Justice Amos Mazzant named new Eastern District magistrate judge

The district judges of the Eastern District on January 9 appointed Justice Amos Mazzant (to the right in this picture from the Baylor Law School reception at the State Bar convention last summer - no clue who the guy on the left is) as the district's newest magistrate judge, with chambers in Sherman.  Justice Mazzant currently serves on the Fifth Court of Appeals in Dallas, where he was appointed by Gov. Rick Perry in 2004. 
Justice Mazzant is a familiar face to Eastern District practitioners - after graduating from Baylor Law School in 1990 he clerked for retired U.S. District Judge Paul Brown in Sherman, as well as former magistrate judge Robert Faulkner, and Judge Faulkner's successor Judge Don Bush.  He also engaged in private practice in Sherman.  If the name sounds familiar outside the district as well it's likely because he also served as president of the Texas Young Lawyers Association (TYLA) in 2001, and was named Baylor Law School Outstanding Young Lawyer of the Year in 2002.  He is expected to take his new bench no earlier than April 1.  Congratulations to Judge Mazzant - we're happy to have you on board.