Eastern District of Texas Federal Court Practice

Pretrial conference day in Marshall

Two pretrial conferences in patent cases going on this morning in Marshall.  Visiting Federal Circuit judge William Bryson is conducting one in the big courtroom in the federal courthouse, so Judge Gilstrap has moved over to the historic county courthouse on the square and is handling another. 

Electronics, first installed for Judge Schneider a few weeks ago, are working fine, although the audio may need a bit of tweaking.  But the layout with Judge Gilstrap back on Judge Hall's reconstructed bench (which is normally empty as used by the county commissioners court) and the courtroom deputy, court reporter and law clerks on the county commissioners' bench is working fine.  

 

"Patent Defense Strikes Back" Texas Lawyer article / Plaintiff's Patent Verdict in Marshall

Texas Lawyer will be running a slightly modified version of last week's National Law Journal article on the local patent docket in Monday's issue, this time entitled "Patent Defense Strikes Back" by Sheri Qualters.  It features analysis of and commentary on the recent trend it detects of patent defense verdicts in the district.  It's a good article.

In other news, a jury in U.S. Magistrate Judge Judge Roy S. Payne's court in Marshall returned a verdict of $15.34 million for the plaintiff today in the Pact XPP Tech. v. Xilinx & Avnet patent case this afternoon.  All five claims were found infringed by both defendants, none invalid as anticipated or obvious, yes on willful infringement, and damages of $15,399,900.  

Pact was the second patent case tried in Marshall since the retirement of Judges Ward and Everingham at the end of September.  The first, Alexsam v. Pier 1 Imports, tried by Judge Schneider, resulted in a defense verdict on infringement, and now we have a plaintiff's verdict as well, so Marshall remains at 50/50 for the past eight months.  I think Tyler is two plaintiff and four defense during the same period, with half the defense wins being on invalidity.  I know Judges Gilstrap and Bryson (from the Federal Circuit) have at least four more patent cases set for trial through the summer, plus whatever is set through the rest of the district, so we'll have a few more data points by Labor Day.

 

Summary Judgment of Invalidity Granted

Juxtacomm-Texas Software, LLC v. Axway, Inc., et al., 6:10cv11

Judge: Leonard Davis

Holding: Motion for Summary Judgment of Invalidity GRANTED

A recent trend in the Eastern District which began with Markman rulings has started to expand.  For example, recent Markman rulings from judges Davis, Love, Gilstrap and Payne have taken the form of expedited preliminary opinions (which range from a couple of days to a couple of weeks after the hearing) which provide the constructions themselves but without analysis or reasoning so that the parties can start work on their expert reports.  The full opinions with the analysis follow in a matter of weeks (assuming the case hasn't settled in the interim - a not unusual outcome following a Markman ruling).  The benefit to this practice is that the parties can stay on a faster schedule for trial since they aren't spending months waiting on a full-blown Markman ruling.  The down side would be if the constructions changed in the final opinion, but to my knowledge that hasn't happened yet - if the construction makes it into a "preliminary" ruling it's a solid bet it'll be in the full opinion.

Today Chief Judge Leonard Davis applied the principle to dispositive rulings, issuing an order granting the defendant's motion for summary judgment of invalidity, noting that a memorandum opinion explaining the Court's reasoning "will be provided in the near future."  This case was set for pretrial conference on September, with trial to follow in October.  Without going into details, the motion, which was heard on April 24 before Judge Davis, appears to have argued that the court's Markman ruling was dispositive, despite the plaintiff's post-Markman arguments to the contrary.

Motion to Strike Damages Expert Denied

Pact XPP Technologies, AG v. Xilinx, 2:07cv563 (E.D. Tex. 5/11/12)

Judge: Roy S. Payne

Holding: Defendants’ Motion to Strike the Expert Reports and Exclude the TestimonyDENIED

Defendants objected to the Plaintiff's damages expert, claiming "1) that Mr. Nawrocki failed to properly apportion the value of the patented features, and 2) that Mr. Nawrocki improperly applies the entire market value rule. The Court found that Mr. Nawrocki had apportioned the value attributable to the patented features, and thus the Court overruled the objections.  "The Court finds that Defendants criticisms go more to the weight the jury should accord Mr. Nawrocki’s opinion, and not to its admissibility. Although Defendants largely disagree with Mr. Nawrocki’s interpretation of the evidence, Defendants have not shown that Mr. Nawrocki’s apportionment methodology is unreliable or that there are no facts to support his opinion."

Motion for Summary Judgment of No Laches, Equitable Estoppel, Or Waiver Denied

Pact XPP Technologies, AG v. Xilinx, 2:07cv563 (E.D. Tex. 5/11/12)

Judge: Roy S. Payne

Holding: Motion for Summary Judgment of No Laches, Equitable Estoppel, Or Waiver DENIED

A couple of weeks ago I mistakenly said trial in this case was starting the next Monday.  Actually that was jury selection - trial starts this Monday.  I think.

Anyway, the orders keep rolling out.  Judge Payne just denied the plaintiff's motion for summary judgment on the defendant's equitable defenses, stating that "the Court finds that on the current record there are genuine disputes of fact sufficient to justify going forward to trial with these defenses."

Happy Asterisk Day in Marshall

Today's the day for compliance with the first "asterisk" deadlines for the 35 Marshall patent cases which had status conferences before Judges Gilstrap and Payne two weeks ago on April 20.  

The Court's proposed docket control orders contained certain deadlines which were marked with an asterisk, which meant that they were dates which cannot be changed without a separate motion showing good cause, which the Court noted "is not shown merely by indicating that the parties agree that the deadline should be changed."

Today's asterisk deadlines for these cases are:

• File proposed docket control order
• File proposed discovery order
• File proposed protective order
• File notice of mediator.

The orders also set today as the date for compliance with P.R. 3-1 and 3-2 (Infringement Contentions), but this date was not marked with an asterisk, and thus a change could be made by the parties in their proposed dco.

Motion for Limited Stay Denied

Levine v. Casio America, Inc. et al., 2:11cv56 (5/2/12)

Judge: Michael Schneider

Holding: Motion for Limited Stay DENIED

Defendants sought a stay of all proceedings in this case pending the resolution of an earlier case, contending that resolution of the earlier case would be dispositive of this case as well.

Judge Schneider denied the motion, writing that he was unpersuaded by Defendants’ argument and found no "pressing need" for a stay.  The order provided an explanation for the Court's ruling:

Granting a stay would interfere with Plaintiff’s ability to enforce his patent rights. Defendants cannot delay litigation simply because Plaintiff did not include them in the earlier filed action. Plaintiff’s complaint specifically alleges that each defendant in this case directly infringes the patent. Although some issues may be resolved in Levine I, the Court is unpersuaded that the resolution of that case would entirely resolve the instant matter. Ultimately, judicial economy would be better served by allowing both cases to proceed contemporaneously.

Defendants explain that any stay would be brief because it would only last until Levine I is resolved. Currently, the final pretrial conference in Levine I is scheduled for January 7, 2013, with trial commencing shortly thereafter. Following trial, the parties may engage in post-trial briefing and appeals. Thus, it is uncertain when Levine I will be completely resolved. In such circumstances, the Court is unwilling to provide Defendants with an indefinite stay. See In re Sacremento Mun. Util. Dist., 395 F. App’x at 687 (“A trial court may abuse its discretion if it issues ‘a stay of indefinite duration in the absence of a pressing need.’”) (quoting Landis, 299
U.S. at 255). Importantly, Defendants have not identified any hardship or inequity that would result if this action is not stayed. Because a stay in this case would needlessly prolong litigation, the Court denies Defendants’ motion to stay.

Stipulated Judgment of Noninfringement Following Markman Ruling

Patent Harbor v. Audiovox, et al., 6:10cv361 (4/26/12)

Judge: Leonard Davis

Holding: Stipulated Judgment of Noninfringement

Apparently it was Black Monday in Tyler last week, because Judge Davis signed the parties' proposed stipulated judgment of noninfringement in this case as well.  This order is somewhat similar to Judge Love's order in March granting an agreed motion for entry of final judgment after the parties stipulated to Judge Love's entry of final judgment of noninfringement in the case as a result of Judge Love's claim construction ruling.

In this case, the parties similarly stipulated to noninfringement as a result of the court's claims construction ruling, subject to the Plaintiff's right to appeal that construction.

From Docket Navigator.

Dismissal Following Stipulation of Noninfringement Following Federal Circuit's Affirmance of Markman Ruling

ICHL v. BFG Technologies., 5:08cv175 (4/26/12)

Judge: Michael Schneider

Holding: Order Granting Motion for Entry of Final Judgment

This order is somewhat similar to Judge Love's order in March granting an agreed motion for entry of final judgment after the parties stipulated to Judge Love's entry of final judgment of noninfringement in the case as a result of Judge Love's claim construction ruling.

In this case, the parties similarly stipulated to noninfringement as a result of the court's prior claims construction ruling in a prior case, and requested a stay while that ruling was appealed.  The Federal Circuit affirmed the court's claims construction order, and after the plaintiff repeatedly did not respond to requests re: filing of a motion to enter judgment, Judge Schneider set a deadline for it to respond, and last week entered final judgment of noninfringement after it did not.

From Docket Navigator.

Stipulation of Noninfringement Following Markman Ruling

NovelPoint Learning, LLC v. Leapfrog Enterprises, Inc., 6:10cv229 (3/8/12)

Judge: John Love

Holding: Order Granting Agreed Motion for Entry of Final Judgment

The parties stipulated to Judge Love's entry of final judgment of noninfringement in this case as a result of Judge Love's claim construction ruling.