Eastern District of Texas Federal Court Practice

Claims construction opinion

Agere Systems, Inc. v. Sony Corp., 2008 WL 2078308(E.D.Tex. May 15, 2008) (NO. 2:06-CV-079)
Judge: Chad Everingham
Holding: Claims construction opinion

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.

Defense verdict in Marshall patent case

Last Thursday a Marshall jury returned a defense verdict in the Sofpool v. Intex Recretaion Corp. case in Judge Everingham's court in Marshall.  It found that the defendant did not infringe either of the asserted patents, but it did find that the defendant had not shown by clear and convincing evidence that the second patent was invalid as obvious (no invalidity question on the first patent).  As a result of the "no" on infringement, the jury did not reach the willfulness questions, or the damages question, which asked for the defendant's profits as a result of the use of the patents, as well as for a reasonable royalty.  As far as anyone is aware, this is the first design patent case tried to a verdict in the district.
2008 jury verdict stats for the district are thus now tied at two verdicts for plaintiffs and two for defendants.

O2 Micro Int'l v. Rohm settles during trial

I know it'll disappoint everyone, but it looks like the  O2 Micro v. Rohm case settled today, one day before trial was scheduled to finish. 

Claims construction ruling

Cooper Technologies Co. v. Thomas & Betts Corp., 2008 WL 438339, E.D.Tex., February 15, 2008 (NO. 2:06-CV-242)
Judge: Chad Everingham
Holding: Claims contsruction ruling

O2 Micro International Limited v. Rohm Co., LTD., et al - trial begins

Trial begins today in the O2 Micro International Limited v. Rohm Co., LTD., et al case, 2:05-cv-211 in Judge Everingham's court in Marshall, and is set to end no later than Feb. 28.   At the Pre-Trial Management Conference, the parties agreed that Defendant Rohm's antitrust counterclaims would be bifurcated from the patent trial in this case. In addition, the Court held that the issue of inequitable conduct will not be addressed during the patent trial.  Issues for the jury appear at this point to be infringement, willfulness, and invalidity.

Partial summary judgment granted in Marshall patent case set to start trial tomorrow

O2 Micro International Limited v. Rohm Co., LTD., et al, 2:05-cv-211 (E.D. Tex. Feb. 21, 2008)
Judge: Chad Everingham
Holding: Defendant's Motion for Partial Summary Judgment GRANTED in part.
The 02 Micro v. Rohm case is about to crank up for trial in Judge Everingham's court in Marshall tomorrow.  This morning Judge Everingham entered an granting in part and denying in part Rohm's motion for partial summary judgment of (1) no damages for all Rohm inverter controller integrated circuits sold to Sony and (2) no infringement for all Rohm inverter controller integrated circuits sold to Sony after April 1, 2007.
The Court denied the motion insofar as it requested summary judgment of no damages for all Rohm inverter controller integrated circuits sold to Sony prior to April 1, 2007. The basis for the motion was that the plaintiff had supposedly been fully compensated for all infringement by virtue of a lump sum payment made by Sony in a settlement and license agreement. Rohm contended that the payment was made in full compensation for infringement prior to April 1, 2007, and that, under the one satisfaction rule, the plaintiff is not entitled to any additional recovery from Rohm. The Court disagreed, quoting the Supreme Court as having recognized that “[w]here a private release of past infringement which does not purport to release others is involved, the adequacy of the compensation must always be a question of fact.” Aro Mfg. Co. v. Convertible Top Replacement Co, 377 U.S. 476, 513 (1976). The court concluded that fact issues exist on the issue of full satisfaction.
But, "that fact issues exist on the question of full satisfaction does not mean that the jury will answer them," the Court went on.  "The one satisfaction rule is an equitable doctrine, applied to reduce a plaintiff’s recovery from a non-settling defendant to prevent the plaintiff from recovering excessive compensation for a single indivisible injury. (Internal citations omitted).  In the court’s view, the jury should determine the full amount of damages, if any, suffered by the plaintiff as a result of the alleged infringement. Thereafter, the court will apply the equitable doctrine and make factual findings to determine the nature and extent of any credit enjoyed by Rohm because of the Sony settlement. As a result, the parties are barred from referring to the Sony settlement, directly or indirectly, in the presence of the jury."
Judge Everingham then granted the motion for summary judgment with respect to Rohm’s liability for contributory infringement after April 1, 2007, as he was persuaded that Sony’s sales of products incorporating Rohm inverter controllers are licensed sales and, as such, are non-infringing. Absent direct infringement by Sony, therefore, Rohm could not be liable for contributory infringement as it related to Sony. In view of the conditional nature of Sony’s license, however, the dismissal of this portion of the plaintiff’s claim was without prejudice to re-urge it, should Sony fail to comply with the terms of its license agreement in the future.

Jury verdict in E-Z Mart case

Blade v. EZ Mart, 2:06cv498 (E.D. Tex. Feb. 13, 2008)
Holding: jury verdict
In the midst of all the patent cases getting tried this month, especially in Marshall, not much attention gets paid to the other cases.  I ran into some court staff at lunch and learned that the jury in Judge Everingham's case in Blade v. EZ Mart, 2:06cv498, a personal injury case arising out of the plaintiff's slip and fall in the defendants' Longview store parking lot, returned a verdict this morning.  The jury found both the plaintiff and E-Z Mart negligent, and split responsibility 49-51, with E-Z Mart on the losing side by one percent (Texas has a 51% bar on plaintiff's negligence). 
On damages, the jury declined to award the plaintiff or his wife any damages for noneconomic damages, i.e. physical pain and mental anguish, disfigurement, loss of household services, or loss of consortium.  In fact the only damages the jury awarded was what the defendant had stipulated to - $118,774.16 for past medical expenses. 
What the jury didn't know was that under Texas law the damages it awarded are reduced by the percentage of negligence assessed against the plaintiff, so the award will be cut to about $60,000 in the judgment.  What the jury also didn't know was what the liens against any recovery are, either hospital or health insurance.  It's possible - even highly likely given the level of contrib - that the amounts the jury awarded will not even cover the  insurance liens.
Compare that to the Saffran v. Boston Scientific case two days earlier, also before a Marshall jury, where the jury  awarded the number the plaintiff's expert  proposed  as a reasonable royalty.  Different case, different facts.

Claims construction ruling

Cushion Technologies, LLC v. Adidas Salomon North America, Inc., 2008 WL 346056, E.D.Tex., February 05, 2008 (NO. 2:06-CV-347)
Judge: Chad Everingham
Holding: Claims construction ruling

Jury verdict for patent owner in Rembrandt case

The jury in Judge Everingham's court in Marshall returned a verdict in the Rembrandt v. CIBA case, 2:05cv491 this afternoon.  After sending out five notes, the jury returned a verdict for the plaintiff on infringement, but for the defendant on the issue of willfulness.  The jury also found that the defendant had failed to prove by clear and convincing evidence that the patents were invalid either for indefiniteness or because they were not enabled.  Damages were $41,083, 853. 

That's one for both sides so far this year on infringement in Eastern District of Texas patent cases.  In both cases plaintiffs failed to persuade the jury by clear and convincing evidence that infringement was willful, and defendants failed to persuade the jury by clear & convincing evidence that the patents were invalid.