Eastern District of Texas Federal Court Practice

State Bar of Texas President-elect Runoff - Please Support Trey Apffel

I don't know whether weblog readers in Texas vote in State Bar elections - but if you don't, you need to make a big exception this year and get out and vote.  Here's how and why::

How to Vote

First the how - Attorneys who are active and in good standing are eligible to vote regardless of whether they voted in the election that concluded on April 30. Today, ballots will be distributed electronically and via mail and voting will take place until May 23 at 5:00 p.m. CST. Or, you can vote now by clicking here.

Why Your Vote Matters 

Now the why: the bar president we elect this month will be president during the legislative session prior to when the Bar is set for sunset review - which is when we have to make the case to the Texas Legislature to continue to let lawyers govern ourselves via an elected board of directors and an independent bar, rather than creating a state agency headed by a gubernatorial appointee and reporting to the Legislature.  To preserve the level of autonomy we currently have, we have to show ourselves to be responsible, mature custodians of our profession and of the public interest that we serve.  This election could show that we are all of these things - or none of these things.  

The State Bar president-elect process

The State Bar has a committee (which I served on in 2008 when I was director for the northeast Texas counties of district 1) that interviews candidates for president-elect, picks two, and then those two run in a general election.  Virtually every year the state's lawyers can't lose because the two lawyers running have survived an intense selection process that generates two candidates with long distinguished records of service to the bar and to their communities.  What is left is two people that know the issues facing the bar, who have the respect of their colleagues, and who their colleagues trust to have the judgment to speak out on behalf of our profession. The Bar also expects - and gets - a dogged advocate for our profession who can work as part of a team with Bar staff, the Bar board and the larger legal and political community to advocate for our profession when called upon.

The State Bar president's job

That last is important because speaking out appropriately and effectively is largely what a State Bar president does.  They cannot hire and fire Bar staff, set Bar policy, or administer or even oversee what the Bar does on a day to day basis.  They appoint members of committees and support the many things the Bar does, and when called on they represent us before the Texas Supreme Court and the Legislature.  They have the respect of their peers not because of the office they hold, but because of the kind of lawyer they have shown themselves to be.  They lead because they have served.

This year's election

This year is different.  Of course, the Bar interviewed and eventually submitted two experienced Bar leaders, Trey Apffel of League City and Larry Hicks of El Paso to the members.  Both are distinguished members of the Bar with long records of service to their community.  Either would be a Bar president we could be proud of, and the Bar membership has selected Trey as one of the candidates for the runoff this month.

What makes this year different is that there was a third candidate, Steve Fischer of Rockport , who utilized the process whereby a candidate could collect enough signatures to be placed on the ballot, and who is now in a runoff with Trey.  And it is that runoff that I want to write about today.

I have known Steve for a little over a year now, since he has served on the Texas Bar Journal board of editors that I chair, and I have appreciated his input and his desire try to make the Bar better.  He is sincere about wanting to do what he believes are positive things for the Bar.  But the reason I am taking the unprecedented (for me) step of recommending in the strongest possible terms that you vote for Trey and not Steve is that it is my strong belief that we do not - we cannot - have Steve representing the lawyers of Texas as president of the State Bar, especially during a legislative session that will lay the groundwork for our next fight for survival as an institutional bar.

The reason why I feel as strongly about this as I do is not just that in my experience Steve has shown an inability to learn how the Bar works and how to promote the changes he believes are necessary.  Many, if not most of us, are not as skilled at working within organizations as we would like.  And after all, since Bar presidents do not exercise command or control over the organization, and no president can make the changes Steve has indicated he wants to make, his inability to make them if he were elected is really is not a concern to me.  Bar presidents learn - in fact they all already know - that the State Bar's elected board of directors exercises the real authority within the organization, and it is they that will decide what changes are made, and when.  A president may persuade or work effectively within the organization to promote desired change, but, candidly, they are in office too short a time, and are typically too busy with their selected project to play a substantial role in the governing of the organization. 

The Importance of Judgment in What a Bar Presidents Says

The reason I am concerned is that Steve has shown a recurring lack of judgment at the one thing a state bar has to do, and do right - communicate effectively on behalf of the Bar.  Not all of us are good front men for an organization, but it goes beyond that.  A State Bar president has to be able to effectively convey the Bar's message to policymakers at the Court and the Legislature, not to mention the larger public.  Steve is not only not on the same page as most of the bar leadership - his judgment in what he says publicly makes placing him in a role representing the Bar I believe could be seriously damaging to the future of the organized bar in Texas.

Want specifics?  In recent years Steve has been a prolific poster on the website of the Corpus Christi Caller-Times.  He is vocal in his opinions, which is certainly his right, but the judgment he has shown raises serious questions about whether this is someone we want representing our profession.  Here are some examples (a complete list can be found here) that I think will get across why I have the concerns I do:

• February 21, 2013: "Give it up liberals- Its not just Mexicans who may be illiterate look at your own posts. Hilarious. At least Mexicans are literate in one language."  
• October 14, 2012: "People dumb enough to believe in organized religion will get scammed all the time- scammers need dumb targets."
• June 28, 2012: "Catholics do have somewhat lower educational attainment than several other religions, but for people to eat this stuff up is outrageous."

Want more?  Just go to the link above and scroll down Steve's posts.  Do we really want this as the face of the organized Bar going into Sunset?  Would you trust an organization led by people who make statements like this to govern itself?  News flash: lawyers are not popular - and there are all too many people that would like to eliminate our ability to govern ourselves, and will seize on the stated beliefs of the Bar's leader regarding religious or ethnic groups to show why it's time to do exactly that.  We should not destroy the good will that generations of bar leaders have built with our state's elected leaders, and we cannot give the Legislature an excuse to head down the path of eliminating the bar's ability to govern itself.  It would be bad not just for us as lawyers, but for our clients and for the public.

Again, I like Steve and I appreciate his input, his hard work, and his motivation - which is to try to make the State Bar better.  He is sincere in his beliefs, and loves the profession no less than any of us.  But as all lawyers know - good intentions are not enough.  Hard work, even coupled with skill is often still not enough.  What this job needs above all else is good judgment in knowing what to say when you open your mouth, because a bar president does not have the luxury of staying silent.  We elect them to speak for us.  And we expect them to speak well.

Trey Apffel is the leader the Bar needs as we head into Sunset review.  I urge you to support him this month with your vote, and to urge as many of your colleagues as you can to join you.  

 

My Favorite Kind of Day in Downtown Marshall

To paraphrase my old trombone professor Dr. Neill H. Humfeld, it's a beautiful day in Marshall.  On North Washington they're closing off the street to set up for another weekend of music in Telegraph Park across from the old courthouse (this weekend it's a motorcycle rally), while in the old courthouse itself people are setting the historic district courtroom up for our upcoming trial with Judge Schneider Monday (consolidated invalidity).  

Meanwhile, across the street the sweet smells of Blue Frog catering are wafting from the Hub's kitchen as lunch rolls in for the trial team that's set up on the 113 side of the building, complete with boxes of papers, crates of electronics, and bowls of sweets close at hand.  

Just the other side of the square an eloquence of lawyers (or maybe it's a litigation of attorneys) is beginning to congeal for the afternoon's Markman hearing in Judge Gilstrap's court.

And to put a cherry on the top, tonight we have the East Texas ABOTA (American Board of Trial Advocates) spring dinner in Longview where we can tell war stories about all of it.  

Some days this job is just too much fun.

Meet the Author Event: "James Riely Gordon: His Courthouses and Other Public Architecture" at the historic 1901 Harrison County Courthouse in Marshall

On a dreary day in the fall of 1997 I took a Michigan author named Chris Meister on a tour of the then-derelict 1901 Old Harrison County Courthouse in Marshall (better known to readers of this blog as the Marshall federal courthouse's incomparable piece of yard art).  Meister was working on a biography of the building's architect J. Riely Gordon of San Antonio, who was the noted architect of dozens of Texas courthouses, the Arizona State Capitol in Phoenix and numerous other public structures. 

 

It was a depressing time for the building - the restoration project that had started off slowly in 1994 had apparently ground to a halt after local voters narrowly - very narrowly - had rejected a bond issue to restore the building, forcing then-county judge Rodney Gilstrap (who still works across the street from the old building I hear) to order the historical commission to vacate the building as it was increasingly clear it wasn't safe for public use any longer in its dilapidated condition.  

I had served as president of the museum a couple of years earlier, and since I was young enough to climb the stairs (a singular skill on our board at the time) I was told to keep the keys for tours for special visitors.  That actually came in handy - one Sunday I got a call to take Lady Bird Johnson for a private tour to see how her inaugural ball gown was coming along on display.  Horrified that it was on display next to one of LBJ's brown suits, less than a week later she sent one of her husband's tuxedos to go with it.  Her Secret Service agents broke character massively when they found out we had her report cards from her Marshall High School days - turns out the Birdster did not have a completely clean conduct record. She missed the top mark one six weeks in one class, it turns out.  I've never seen people with guns so happy outside of deer season.  They were really getting tired of her being perfect.

But I digress.  That particular afternoon Chris and I climbed through the building's nooks and crannies and out onto crumbling balconies, and I did my best to tell him about what a beautiful building this must once have been, and how we hoped some day we could bring it back. 

Chris eventually finished his book, James Riely Gordon: His Courthouses and Other Public Architecture, and tomorrow, Wednesday, March 20, 2013 at noon he is returning to the grand dame for a "meet the author" event in the historic district courtroom sponsored by the Harrison County Historical Museum.  There will be a reception and refreshments and the opportunity for book signing - I will be happy to initial the entry in the endnotes (okay, maybe it's in the index) where Chris mentions me.  And he would probably sign the book too if you really care for that sort of thing.  

But that's not all.  Following the reception and Chris' remarks, he and I will retrace our steps from that tour sixteen years ago by leading vistors through the various restored spaces of the building, where visitors will have an invaluable opportunity to hear the leading Gordon scholar explain the building's relationship to other Gordon architecture, and compare  and contrast the "Harrison County plan" with other plans he was doing at the same time, including his other major 1901 project, the Arizona Territorial Capitol (still in use as the Arizona State Capitol).  Incidentally, for a virtual tour of the building, see here.

I have had a copy of Chris' book for a year now, and it's a fascinating study of courthouse architecture, showing how Gordon refined and changed his designs to accommodate changing styles, local needs, and the always-interesting interactions with that strangest of post-Reconstruction-era political entities, the Texas county judge and commissioners court.  If you ever wanted to see what the concept of separation of powers looks like wall-eyed drunk and staggering down the street bellowing at passing cars, take a look at the job description for a county judge in Texas.  One sometimes thinks that the Legislature created it on a bet, i.e. "[w]ell you're so damn smart, you come up with somebody that can be the county's judge, run its business and be in charge of writing its laws at the same time for one paycheck.  No, wait, make it half a paycheck.  And they have to decide whether somebody's crazy when it comes up.  No, full-time crazy, Bubba, not like in-laws crazy."  Actually, I suspect that's how the Lege does a lot of things.  This is, after all, an outfit that works for $600 a month.  A month.  But I digress yet again.

Cross penny-pinching county government with a big city architect trying to create a building with some serious architectural merit (the watercolor at right is Gordon's elegant original plan before the county started jacking with it) and you end up with some very interesting reading.  For example, Gordon's original plan specified 550 lights (as in those Edison 1.0 dim orange filament light bulbs) for the building.  The county cut it to 175 lights, and you just know it was because they were suspicious that this newfangled electricity was just a fad.  He specified limestone for the first story - they made it half limestone and half brick - the architectural equivalent of flip flops.  He specified red slate for the roof and they used gray because it was on sale at the local Walmart (admittedly the commissioner's court minutes are not definitive on this point).  Twenty years later the county sliced the porches off, rolled them out on logs and bricked up the gap to gain more office space (which is why the building now has four story tall love handles).  You can't make this stuff up (okay, maybe the part about the Walmart, but everthing else I'm sure about).

Anyway, I realize I'm late posting this, but if anyone happens to be in town tomorrow and is interested in finding out about how architecturally important our jewel box of an old courthouse really is, stop by.  If you can't, by all means, buy the book.  If you practice in any of Gordon's many Texas courthouses, you'll be glad you did.

Marshall Federal Courthouse History: 1940 expansion

The current federal courthouse in Marshall was built as the city's post office in 1915.  Since its construction it has undergone three major renovations.  The most recent, in 2006, added a new wing to the back, which added new judicial chambers for the district judge upstairs and a visiting judge's courtroom downstairs, as well as providing a visiting judge's chambers, also downstairs.  Prior to that, the building was converted from a post office to a courthouse in 1964.

But the most significant work done on the building occurred in 1940, when the then-25 year old building was doubled in size by the addition of a massive expansion on the south side.  David Provines with the clerk's office in Tyler just discovered the attached photos from that renovation, and I thought readers might be interested in them.

First of all, he discovered this photo of the original post office lobby.  The layout here is a new one, though - it doesn't match the original floor plans, which had the postmaster's office enjoying the large window at the end of the hall, so it appears there was a major reworking of the original floor plan at this time.  The photo to the bottom left indicates as much, as it shows the windows being taken out - in fact this may be when the original 2 over 2 windows shown in the postcard at top left were replaced with the smaller-paned windows.  

The large four-bay window on the west wall of the workroom (shown better on one of the lower photos) was also completely demolished - replaced with two windows, as shown by the "after" photo also below.  The addition added three matching windows on the west side, of which we now know the first has always been "blind".

The below left photo is notable for one other thing - if you look closely, you'll see that the signs indicate that the building is at the corner of Highway 80 and Highways 59 and 43.  Those with sharp eyes will note that that intersection is now about two miles northeast of the square.  Until the 1950's, US 80 and US 59 intersected on the square in Marshall as Houston Street and Washington Avenue.  (If you grew up in Texas the names of the streets will make perfect sense - US patriots run north south and Texas patriots east/west).  As part of highway improvements, in the 1950's, US 80 was moved four blocks north, and US 59/43 two miles to the east, where it runs under the 1937 railroad bridge and heads north to Jefferson, and northeast to Karnack and Uncertain.    

The photos of the back of the building are the most dramatic, as they show the building while the foundations of the addition were being prepared, and then later when the basement's stone walls were going up.  Comparing the original floor plan, I believe that the interior wall shown is a temporary one to enclose the work room after the large windows in the south wall were taken out, and the steel beams shown exposed were the outside of the original building, and are now the outside wall of the main courtroom.  The current district courtroom occupies essentially the footprint of the original workroom which ran from behind the post office counter to the back of the original building.

The second photo at right shows the basement stone walls almost complete.

"Patent lawsuits skyrocket in Texas" - Dallas Morning News

The Dallas Morning News is re-running an article from Mark Curriden's Texas Lawbook today on the spike in patent filings in Texas since the AIA.  The article notes that "the number of patent infringement lawsuits filed in Texas federal courts nearly doubled in 2012, and that "federal courts in the Eastern District of Texas, which includes Marshall, Texarkana and Tyler, saw the number of patent lawsuits jump from 607 in 2011 to 1,263 last year, an increase of 108 percent."  

All that is true, but what statistics like that miss is that a substantial part of those numbers is not in fact "patent infringement lawsuits filed" in 2012, but rather cases filed before the AIA which were severed into separate cases last year as a result of the Federal Circuit's decision in In re EMC (the first one) last spring.  Because on severance, the severed cases are docketed as new cases, they count as "filings" in 2012, but I think it's misleading to consider them as actual 2012 filings, which connotes a voluntary decision by a plaintiff to file a suit.  I don't have statistics on how many of the 2012 filings were in severed pre-2011, pre-AIA cases, but I am guessing at least a couple hundred and maybe more.  Maybe many more.

The general story is accurate - the AIA joinder provision has dramatically increased the number of patent infringement cases filed since its passage - but the metrics are somewhat off in by that we intend to look at how many new cases are being filed. 

I did get a kick out of the evergreen reference to "plaintiff-friendly juries".  Didn't look so friendly to me Monday afternoon in Tyler when they held eleven claims not infringed and invalid.  But that's just me.

In Memoriam: Gib Walton

My first home in Marshall was built in 1908 by the president of the local electric company, Charles H. Naendall.  When he passed away ten years later, the Marshall News Messenger said something I've never forgotten - that he was the type of man "of whom the community feels the loss."  Of course there are a lot of people like that, and not just in small towns like Marshall - people who never stop working to make their community a better place, and last week we lost one of them way before his time.

While in trial in Tyler last week, I found out that Gib Walton, a Houston lawyer who I had gotten to know while on the State Bar board a few years back, had passed away suddenly.  The line from that 1919 obituary immediately came to mind because he was one of those people, and his passing creates a void in both the legal and the Houston communities.

Gib's service to his community and profession was extraordinary.  In addition to serving as president of the State Bar of Texas in 2007-2008, where I worked with him as chair of one of the Board committees on member services, eventually receiving a presidential citation from him at the end of our terms (so he did have his lapses), Gib was also chair of the  Houston Bar Foundation; on the Committee on Admissions for the U.S. District Courts, Southern District of Texas; chair of the U.S. Magistrate Judge Selection Committee, Southern District of Texas; vice-chair and on the Board of Directors of Methodist Hospital; on the Board of Directors at Brookwood Community and Briarwood School; and Trustee of the Cullen Trust for Healthcare.

At the time of his passing, Gib was a co-leader of Hogan Lovells’ global Projects, Engineering, and Construction practice, a partner in the Houston office, and a member of the Litigation practice. His principal area of practice was civil litigation, including jury trials, bench trials, and arbitration.  Before practicing at Hogan, Walton was at Vinson & Elkins for 32 years.  

Gib's dad was a state judge in Houston, so he was a courthouse brat from way back, and was always cognizant of our duties to the profession as a whole, bringing forward standards of professionalism and courtesy than went back a long ways.  He was the kind of lawyer that you enjoyed working with, whether he was on your side or not.  He was one of our best, and bar is fortunate to have had him for as long as we did.

But anyone that knew Gib knew how important his family was to him.  All of us on the board learned to distinguish quickly between his predecessor as president, Martha Dickie, and "my Martha", the lovely Mrs. Gib Walton, who made the two years we overlapped on the board a real pleasure.  He was so proud of his children Cole and Emily, his daughter-in-law Crystal (planning a summer wedding while being State Bar president was an interesting experience for the Waltons, and one we all enjoyed hearing about) and of course adored his new granddaughter Cambrey.

I last spoke with Gib at a bar event in San Antonio when we talked about a case I was in against one of his partners in Marshall (I was unsuccessful talking him into getting involved so we could work with each other again, but I sure tried).  He was enjoying his new firm and looking forward to doing some different things, and I was hoping that one of them would bring him to East Texas for a change.  His passing at such an early age is a loss for his community and his friends, but of course most of all for his family, and Jamie and my prayers go out to them.

The State Bar has provided the following information on services for Gib next week:

Tuesday, February 12, 2013

Visitation will be held at George Lewis & Sons, 1010 Bering Drive, Houston, Texas  77057 from 5:00 p.m. to 8:00 p.m.

Wednesday, February 13, 2013

Interment will be at Glenwood Cemetery, 2525 Washington Ave, Houston, Texas 77007 at 1:30 p.m.  Family and friends are welcome.

A reception at St. Luke’s United Methodist Church, 3471 Westheimer, Houston, Texas 77027 will follow at 3:00 p.m.

Guest Post: A Study of Eastern District of Texas Patent Appeals to the Federal Circuit: 2008-2012

Peter J. Corcoran, III[*]

            The following study, first presented at the Eastern District of Texas Bench and Bar Conference on October 26, 2012, examines the trends of patent appeals and mandamus petitions from the U.S. District Court for the Eastern District of Texas to the U.S. Court of Appeals for the Federal Circuit from September 1, 2008 to November 1, 2012.  The study’s timeframe begins before the U.S. Court of Appeals for the Fifth Circuit issued In re Volkswagen of America, Inc., 545 F.3d 304, 315 (5th Cir. 2008) (en banc), defining the venue transfer standards for the Fifth Circuit under 28 U.S.C. § 1404(a).  Tables 1 to 8 provide the study’s objective data, collected using Westlaw® to search for all patent appeals and mandamus petitions from the Eastern District of Texas to the Federal Circuit during the study’s timeframe.

           Table 1 provides the yearly number of decided patent appeals and mandamus petitions from the Eastern District of Texas to the Federal Circuit.  It also provides the yearly number of affirmances and mandamus denials.  As seen, the number of patent appeals has steadily risen from thirteen to eighteen appeals from September 1, 2008 to November 1, 2012.  The number of affirmances also rose from eight to fourteen during the same timeframe as the overall number of appeals has increased, resulting in a 62 to 78% affirmance rate during the study’s timeframe.  The gap between the number of appeals decided and the number of affirmances includes the number of affirmances-in-part/reversals-in-part and full reversals.

             Table 1 also provides the yearly number of mandamus petitions from the Eastern District of Texas to the Federal Circuit during the study’s timeframe.  Until 2011, the number of petitions steadily rose from zero to eleven petitions after the Federal Circuit issued In re TS Tech, 551 F.3d 1315 (Fed. Cir. 2008), relying on the Fifth Circuit’s venue transfer standards in In re Volkswagen.  Since September 1, 2011, the number of mandamus petitions decreased to eight petitions, while the number of mandamus denials since September 1, 2010 held steady at six denials.  From September 1, 2008 to September 1, 2010, the number of mandamus denials rose commensurate with the number of petitions filed, resulting in a 50 to 67% denial rate.  In 2011, the Federal Circuit denied 55% of the mandamus petitions filed, and it denied 75% of the filed petitions up to November 1, 2012.  The overall data indicates the Eastern District of Texas has an increasingly high affirmance rate at the Federal Circuit.

             Table 2 shows the yearly win rate for Eastern District of Texas plaintiffs and defendants at the Federal Circuit from September 1, 2008 to November 1, 2012.  From September 1, 2008 to September 1, 2011, defendants led plaintiffs in the number of victories at the Federal Circuit.  These numbers include affirmances, affirmances-in-part, and reversals that favor plaintiffs and defendants.  As of November 1, 2012, the number of plaintiff and defendant wins equaled eleven each. 

             Table 2 also shows the yearly number of plaintiff and defendant wins for mandamus petitions to the Federal Circuit during the study’s timeframe.  The number of plaintiff wins (mandamus denials) and defendant wins (mandamus grants) steadily increased from September 1, 2008 to September 1, 2011, commensurate with the number of petitions filed during that time.  During the same timeframe, the number of plaintiff wins outpaced the number of defendant wins.  For the past two years, the number of plaintiff wins held steady at six, while the number of defendant wins decreased from five to two.

            Table 3 provides the ratio of Federal Circuit affirmances of Eastern District of Texas final judgments under Federal Rule of Appellate Procedure 36 from September 1, 2008 to November 1, 2012.  Rule 36 affirmances are summary affirmances of a lower court’s final judgment.  The Federal Circuit affirms a final judgment under Rule 36 when the three members of the appellate panel unanimously agree that the lower court adequately disposed of the issues appealed and that no further opinion is necessary. 

 As seen, the ratio of Rule 36 affirmances steadily increased to 100% by September 1, 2011.  This means that all of the Federal Circuit affirmances of Eastern District of Texas final judgments between September 1, 2010 and September 1, 2011 were Rule 36 affirmances.  From September 1, 2011 to November 1, 2012, the ratio of Rule 36 affirmances was 43%.

           Table 4 shows the number of Federal Circuit affirmances of issues appealed from the Eastern District of Texas during the study’s timeframe.  These issues include claim construction, infringement, invalidity, written description, damages, willfulness, and inequitable conduct.  As seen, the Federal Circuit affirmed an increasing number of infringement issues and affirmed a somewhat constant number of claim construction and invalidity issues from September 1, 2008 to November 1, 2012.  The number of Federal Circuit affirmances of written description, damages, willfulness, and inequitable conduct issues varied over the study’s timeframe.

 
           Table 5 provides the number of Federal Circuit reversals of the same issues shown in Table 4 that were appealed from the Eastern District of Texas from September 1, 2008 to November 1, 2012.  As seen, the Federal Circuit reversed an increasing number of infringement issues until September 1, 2011, while the Court reversed no infringement issues between September 1, 2011 and November 1, 2012.  The increased number of affirmances and reversals of infringement issues is due to the overall rise of patent appeals from the Eastern District of Texas to the Federal Circuit during the study’s timeframe.  The number of reversals of invalidity issues also increased, while the number of claim construction reversals decreased over the study’s timeframe.  The number of reversals of written description, damages, willfulness, and inequitable conduct issues varied over the same timeframe.

 
           Table 6 shows the number of Federal Circuit affirmances (including Rule 36 affirmances and mandamus denials) of Eastern District of Texas judges between September 1, 2008 and November 1, 2012.

 
Table 7 provides the number of Federal Circuit affirmances-in-part/reversals-in-part of Eastern District of Texas judges between September 1, 2008 and November 1, 2012.

 
           Table 8 shows the number of Federal Circuit reversals (including mandamus grants) of Eastern District of Texas judges between September 1, 2008 and November 1, 2012.

---

[*] Associate, Winston & Strawn LLP, Houston, Texas.  The contents of this study do not reflect the views of Winston & Strawn LLP or any of its clients.

Texas Lawyer on USPTO Rules

Couple of interesting articles in this morning's Texas Lawyer on the timely subject of the final rules promulgated by the U.S. Patent & Trademark Ofice to implement the AIA.  On pages 4-5, in Pondering Patents: USPTO Issues Final Rules, a five-lawyer panel including  former Chief Judge David Folsom talk about which of the new rules they think is most likely to affect patent prosecution clients and patent litigation clients, and whether they're likely to have an effect on patent litigation in Texas. 

Then on the last page in Key Changes in USPTO's New Rules, I have a brief article focusing on the new inter partes review and post grant review mechanisms as options to traditional patent infringement litigation for challenging the validity of an issued patent.

It's official - I'm old.  I just came back up to my hotel room after presenting the paper on social media and the law at Litigation Update that I posted on the other day.  I took my jacket off, hung it up, put on my sweater and sat down to start working - and realized somewhere along the way I have become Mr. Rogers.  I don't change into sneakers though although candidly, I wish I could...

Paper went well - Federal Evidence & Civil Procedure Update is tomorrow morning by James Karen of Jones Day.  I'm looking forward to it (as only someone that looks like Mr. Rogers could, I suppose).

Uncalled-for derogatory statements about footnotes

My least favorite part of this week's Texas Lawyer was the uncalled-for derogatory statements made by Houston lawyer Martin Siegel in his article about my favorite literary tool, the footnote.  Weblog readers don't know this because I haven't figured out yet how to get a weblog to do footnotes, but I just love the things - I represent them in the weblog as parentheticals and the stuff between the hyphens - sort of  like this, actually (or would it be this?) - representing the little moments when I just can't hold (or let go of) a train of thought.  (Or I can't can't help talking to myself while writing.  Really?  No.)

But Martin - just because he's a better writer than the rest of us - uses judgmental terms like "rare", "unimportant, "unnecessary," "poor writing" and the like which are just plain hurtful.  Not all writing is organized and disciplined (as you read this, I sense you agreeing with me).  Some writing doesn't have to have a coat and tie and for some of us, it's kind of always casual Friday at the keyboard, at least when we're not working.  But there are a few points where Martin and I can agree:

• "Nor should footnotes serve as sanctuaries for personal attacks on the court or opposition. Lawyers occasionally seem to think that otherwise inappropriate invective will pass muster as long as it hides out in a footnote, but the court is unlikely to see it that way."  Amen - I see this a lot of the time, and it's snarky.  And that's not good.  If you're going to call the other side ... well, something, first of all, don't do it.  Second, don't do it.  But if you absolutely want to go down that path, cowboy up and do it in the text.  And then e-mail me and let me know how that worked out for you.  But don't be snarky - if it's not a good idea in the text, it gets no better in a footnote.
• "[S]howing off needless or irrelevant erudition or research is not a wise use of footnotes. If the citations or legal discussion directly advance the argument, fine. But briefs are not law review articles, where footnotes are accepted vehicles to explore tangents or display breadth of scholarship."  Well, in briefs I do agree.  But weblogs (and my seminar papers) are different, obviously.  I like to riff on moderately related topics, and heckle myself.  If the writing is something you don't have to do, then why are you doing it if you're not having fun?  Footnotes in unbuttoned writing can come across as asides or comments that serve as a way for the author to bounce an idea off of someone, or to let the text serve as straight man.  The best example I've ever seen was in Dave Egger's A Heartbreaking Work of Staggering Genius, by the way - I can't recommend it highly enough to see the heights to which this device can be taken.  Obviously this is not recommended in brief writing, although there are occasional exceptions - the footnote that can subtly discredit an inflated argument is one, although see bullet point 1 supra and use with extreme caution.  You are not half as funny as you think you are, and the fraction gets smaller when folks in robes are doing the reading.  Clever reads snarky about seven times out of ten (and makes no sense two of the other three).
• "Footnotes should not appear in typeface smaller than 12-point. Although Texas Rule of Appellate Procedure 9.4(e) allows use of 10-point type, it is too small for comfortable reading."  I agree.  It's just too damaging to the utility of a carefully crafted (I assume) footnote to make it 10 point - it is pushing the limits on legibility, especially as the target reader ages.  If you're writing briefs for Teen Court, you can use 10 and 8 point all you want and they'll never even notice.  But if you're writing for lawyers and especially judges - err on the side of legibility.
• "Finally, footnotes are not a handy way to circumvent the rules governing the length of briefs. If the case is in a court that regulates length through word limits, such as a federal court of appeals, this will be impossible, since Federal Rule of Appellate Procedure 32(a)(7) counts words in footnotes toward the limit. While the strategy may appear more promising in Texas appellate courts, which enforce length though page limits, it is still inadvisable. Judges notice and hate such things." (Emphasis mine).

This last point is a good one to remember for practitioners before page-limit-enforcing district courts, and Martin includes a terrific story I had not heard before.  It seems that in  Varda Inc. v. Insurance Co. of North America (1995), the Second Circuit in complaining about an over-footnoted brief recalled a case from 1596, in which an English judge actually jailed a lawyer for filing a 120-page pleading.  The judge ordered the warden to cut a hole in the document, place it around the lawyer's neck, and "lead the said [pleader] bareheaded and barefaced round about Westminster Hall, whilst the Courts are sitting, and . . . show him at the Bar of every of the three Courts within the Hall."

Anyway, notwithstanding the above, the article really is good advice, and comes from a great source, so take it to heart.  At least on the serious stuff.