Eastern District of Texas Federal Court Practice

Interview With Judge Folsom

John Council has an interview (with video) with now retired former U.S. District Judge David Folsom here.  Hard to believe that March 17 was seventeen years on the bench!

Judge David Folsom portrait open house

This morning was the open house in Judge Folsom's courtroom in Texarkana for viewing of his official portrait.  It's an outstanding portrait, although more than a little of the judge's prior life as a high school teacher comes through (maybe it's the blackboard).   

 

E-Mail Discovery Ruling Adopts Model Order Language in Part

Achates Reference Publishing v. Symantec, et al., 2:11cv294 (E.D. Tex. 12/14/11)

Judge: David Folsom

Holding: Order Regarding Electronic Discovery

We've had the model order regarding e-mail discovery entered basically verbatim in one case where agreed to by the parties, referred to and its structure followed in another by agreement, and in two others had the key provision limiting custodians and terms entered, albeit with varying degrees of agreement from the parties beforehand.  This order, however, was entered after a contested hearing, and copies the language of the model order fairly closely - although not without substantive changes - after determining that the model order's structure was appropriate.  Following a hearing, Judge Folsom entered this order resolving the parties' dispute by stating the following.

"Defendants propose e-discovery provisions similar to those in the Federal Circuit Advisory Council’s Model Order Regarding E-Discovery in Patent Cases," the Court observed in the order. "Plaintiff has proposed that, prior to discussing limits on e-discovery, Plaintiff be allowed Rule 30(b)(6) depositions of Defendants to identify custodians."  (Ed. note:  The record doesn't include the defendant's proposal, so it isn't entirely clear to me which of the differences below from the model order were from the defendant and which were from Judge Folsom).  Judge Folsom quizzed the parties at the hearing as to what rulings the parties had seen on this issue, and ended up siding with the defendants in part in that he rejected the position that the Plaintiff be allowed depositions to determine how many custodians were appropriate, and decided to enter an order similar to the model order.  On the specific issue of e-mail discovery he entered the following:

8. Each requesting party shall limit its email production requests to a total of eight (8) custodians per producing party for all such requests. The parties may jointly agree to modify this limit without the Court’s leave. The Court shall consider contested requests for additional custodians per producing party, upon showing a distinct need based on the size, complexity, and issues of this specific case. If the parties are unable to agree on which party should bear the cost for such additional custodians, the parties should present their dispute to the Court for resolution.
9. Each requesting party shall limit its email production requests to a total of ten (10) search terms per custodian per party. The parties may jointly agree to modify this limit without the Court’s leave. The Court shall consider contested requests for additional search terms per custodian, upon showing a distinct need based on the size, complexity, and issues of this specific case. If the parties are unable to agree on which party should bear the cost for additional search terms, the parties should present their dispute to the Court for resolution. The search terms shall be narrowly tailored to particular issues. A conjunctive combination of multiple words or phrases (e.g., “computer” and “system”) narrows the search and shall count as a single search term. A disjunctive combination of multiple words or phrases (e.g., “computer” or “system”) broadens the search, and thus each word or phrase shall count as a separate search term unless they are variants of the same word. Use of narrowing search criteria (e.g., “and,” “but not,” “w/x”) is encouraged to limit the production and shall be considered when determining whether to shift costs for disproportionate discovery.

How does the order differ from the model order? 

Paragraph 8 differs from the model order in that: (1) it provides for eight custodians, not five (as the model order reflects and as defendants' 26(f) report proposed); (2) the Court can consider contested requests for "additional" custodians rather than for "up to five additional" custodians; and (3) it provides that if the parties are unable to agree on which party should bear the cost for such additional custodians, the parties should present their dispute to the Court for resolution while the model order states that "Should a party serve email production requests for additional custodians beyond the limits agreed to by the parties or granted by the Court pursuant to this paragraph, the requesting party shall bear all reasonable costs caused by such additional discovery."

Paragraph 9 differs in similar ways.  It: (1) permits the Court to consider contested requests for "additional" search terms per custodian instead of "up to five additional" search terms; (2) adds the same provision re: submitting disputes re: cost-sharing to the Court rather than automatically imposing them on the requesting party; and (3) deletes the phrase "[i]ndiscriminate terms, such as the producing company's name or its product name, are inappropriate unless combined with narrowing search criteria that sufficiently reduce the risk of overproduction" (which is likely not substantive, as I read it).

The Court's order also did not include the following provision from the model order - probably also not a substantive omission as it is presumably unnecessary in part because of the scheduling order, and unnecessary in part in that perhaps the Court did not believe the admonitory language was necessary in this case:

Email production requests shall be phased to occur after the parties have exchanged initial disclosures and basic documentation about the patents, the prior art, the accused instrumentalities, and the relevant finances. While this provision does not require the production of such information, the Court encourages prompt and early production of this information to promote efficient and economical streamlining of the case.

But the rest of the model order's provisions are there, essentially verbatimn.

 

 

Motion to Transfer Venue Granted Where Five Defendants Located in Transferee District

EON Corp. IP Holdings v. Sensus, USA, et al., 2:10cv448 (E.D. Tex. 1/9/12)

Judge: David Folsom

Holding: Motion to Transfer Venue GRANTED

Judge Folsom transferred this patent case from Marshall to California, noting that five defendants were located in the Northern District of California.  Plaintiff relied on the Court’s handling of Plaintiff’s other cases in the Eastern District, including two claim construction proceedings regarding parent patents of the patent-in-suit, but Defendants noted that those prior proceedings took place in the Tyler Division, not the Marshall Division. 

"In sum," Judge Folsom concluded, "the location of sources of proof, availability of compulsory process, witnesses’ cost of attendance, and the local interest factors weigh in favor of transfer, and the remaining factors are neutral. On balance, the Moving Defendants have clearly demonstrated that the Northern District would be a more convenient venue than the Eastern District. Defendants’ motion to transfer venue should therefore be GRANTED."

Summary Judgment of Noninfringement Granted; Affirmed

ICHL v. Sony, et al., 5:08cv177 (E.D. Tex. 9/202010)

Judge: David Folsom

Holding: Motion for Summary Judgment of Noninfringement GRANTED

The parties in this case stipulated to noninfringement in this case following his claim construction ruling last year.  Yesterday, the Federal Circuit affirmed Judge Folsom's claims construction.

Sufficiency of the pleadings - part 1 - infringement contentions

Geotag v. The Western Union, et al., 2:10cv574 (E.D. Tex. 12/14/11)

Judge: David Folsom

Holding: Motions to Dismiss for Failure to State a Claim DENIED

This order by Judge Folsom denies motions to dismiss brought by six defendants in this multidefendant case which argued in general that the Plaintiff's pleadings failed to meet the Twombly standard.  Five of the motions were addressed to the infringement contentions, and argued that the complaint failed to sufficiently allege how the defendants infringe, and which claims were asserted.  With respect to Defendant Scott's motion addressed to infringement, Judge Folsom wrote that "[o]n balance, Plaintiff’s complaint satisfies the pleading standards of Twombly, Iqbal, and Form 18 of the Federal Rules of Civil Procedure. Scotts’ demand for greater specificity and more detailed notice of Plaintiff’s infringement theories is addressed by the Court’s Local Patent Rules, such as the Patent Rule 3-1 requirement for disclosure of asserted claims and infringement contentions." Judge Folsom made the same ruling with respect to the other four infringement motions as well, also denying the alternative motions for more definite statement.

The remaining motion was directed at the Plaintiff's "reservation" of willful infringement and raised the propriety of the Plaintiff's prayer for an exceptional case finding in the absence of an allegation of willfulness.   Judge Folsom resolved the issue by stating that "[t]he Court hereby expressly relies on Plaintiff’s representations that it is not currently alleging willfulness. If at some time Plaintiff desires to allege willfulness, Plaintiff can seek to amend its pleading in accordance with the Court’s rules and any applicable scheduling order."  Judge Folsom therefore denied the motion to dismiss the willfulness "reservation" as moot.

As to Plaintiff’s Prayer for Relief, Judge Folsom noted that the plaintiff sought "A judgment and order finding that this is an exceptional case within the meaning of 35 U.S.C. § 285 and awarding to GEOTAG its reasonable attorneys’ fees . . . ."   But because willfulness is only one of several
factors that can support an exceptional case finding, Judge Folsom concluded, the motion should be denied, despite the absence of a pleading of willful infringement.  

Agreed Modifications to Judge Ward's Discovery Order; Disclosures, Protective Orders, E-Mail Discovery, etc.

Advanced Processor Technologies v. Analog Devices, 2:11cv019-DF (11/17/11)

Judge: David Folsom

Holding: Discovery Order

Before he left the bench, Judge Ward directed the parties in this case (as in many, many others) to submit proposed discovery and docket control orders.  Last week Judge Folsom signed the parties' agreed discovery and docket control orders in this case - there were no disputes. 

While the order largely tracked the standard discovery order used by Judge Ward, the parties proposed several fairly minor changes which I thought represented useful modification to the standard language Judge Ward had used for the past twelve years, and wanted to highlight them here.  The additional provisions are in redline:

1. Disclosures. Except as provided by paragraph 1(h), and, to the extent not already disclosed, by December 2, 2011, each party shall disclose to every other party the following information in lieu of the requirements of FRCP 26(a)(1):

Comment:  for a number of years, parties have sometimes been unsure whether the Paragraph 1 disclosures were in addition to FRCP 26(a)(1) or in place of them.  The parties' additional sentence clarified that they wholly replace the disclosure under the rules - which makes sense because they are substantively broader.

1. Protective Order.  The Parties shall meet and confer regarding a Protective Order.  Until a protective order is entered, all designated documents will be treated as confidential-outside counsel only, with disclosure of the document or information being limited to each Party’s outside attorneys of record and the employees of such outside attorneys, and thereafter dealt with according to the terms of the protective order entered by the Court.  The absence of a protective order entered by the Court shall not be a basis for withholding discovery or disclosures unless there is disagreement as to the scope of a prosecution bar, or, with respect to source code only, disagreement as to the terms for source code review.  See P.R. 2-2.

Comment: Actually the entire paragraph was drafted by the parties to essentially incorporate PR 2-2, which deals with the confidentiality of production pending the entry of a protective order, but the part I wanted to highlight was the last section, which modifies 2-2 by addressing two common impediments of document production prior to the entry of a protective order.  The first allows a party to withhold document discovery if there is a disagreement as to the scope of the prosecution bar as to the counsel that view the production, and the second exempts source code production until the terms of source code review are worked out.  Both are useful caveats to the general rule of PR 2-2.

3.  Additional Disclosures.  Each Party, without awaiting a discovery request, shall provide, to the extent not already provided, to every other Party the following ... by March 9, 2012, a copy of all documents, electronically stored information (except for e-mails), and tangible things in the possession, custody, or control of the party that are relevant to the pleaded claims or defenses involved in this action[1], except to the extent these disclosures are affected by the time limits set forth in the Patent Rules for the Eastern District of Texas.

---

[1] For guidance in evaluating whether a particular piece of information is relevant to the pleaded claim or defense in the action, the Court directs the parties to Local Rule CV-26(d). 

Paragraph 3 disclosures (paragraph 2 in Judge Davis' court) deal with document production, and have historically required production of "all documents ...  that are relevant to the pleaded claims or defenses involved in this action."  The important change here (I'll get to the e-mail exception in a moment) is the provision of a footnote that explicitly directs counsel's attention to Local Rule CV-26(d), which for the past eleven years has defined what specifically "relevant to the claim ore defense" means (and was in the local rules for ten years prior to that defining the scope of disclosures under the local rules).  It reads:

(d) Relevant to the Claim or Defense. The following observations are provided for counsel’s guidance in evaluating whether a particular piece of information is “relevant to the claim or defense of any party:”

(1) it includes information that would not support the disclosing parties’ contentions;

(2) it includes those persons who, if their potential testimony were known, might reasonably be expected to be deposed or called as a witness by any of the parties;

(3) it is information that is likely to have an influence on or affect the outcome of a claim or defense;

(4) it is information that deserves to be considered in the preparation, evaluation or trial of a claim or defense; and

(5) it is information that reasonable and competent counsel would consider reasonably necessary to prepare, evaluate, or try a claim or defense.

To paraphrase the rule, to be required to be disclosed it appears that the information must be likely to have an influence on the outcome of a claim or defense, or something that reasonable and competent counsel would consider reasonably necessary to prepare the case.  Arguably, it is not information that “might” have an influence, might be useful, or would be merely relevant.  In other words, "all documents relevant to the claim or defense" is a term of art whose application is informed by consideration of the local rule.   The citation to the local rule makes that clear that the local rule is a good source for determining what is and is not required to be produced under this provision.

3.  Additional disclosures

* * *

(j)             After the exchange of the parties’ initial disclosures, Plaintiff shall designate up to five (5) document custodians of each Defendant from which the discovery of electronic mail may be obtained, and each Defendant shall designate up to five (5) document custodians of Plaintiff from which the discovery of electronic mail may be obtained.  The propounding party may select up to twenty (20) search terms narrowly tailored to particular issues.  The parties shall meet and confer concerning the proper timeframe for electronic mail discovery.  In the event of a dispute concerning one or more search terms or the timeframe, the parties shall meet and confer in an effort to resolve the dispute.  A party may obtain discovery from additional custodians only upon a showing of good cause.

(k)            Voicemails, PDAs and backup tapes are deemed not reasonably accessible and need not be collected and preserved.  A party may obtain discovery of such materials only upon a showing of good cause.

The parties in this case also agreed to exempt e-mail discovery from the paragraph 3 disclosures, and deal with it separately.  They agreed on a 5/20 plan, with five document custodians to be searched, using up to 20 terms "narrowly tailored to particular issues", with the parties to work together on the time frame for searches.  Discovery from additional custodians would require good cause.  This provision tracks in many ways the substance of Judge Everingham's order in the Stambler case.  The parties also made headway by agreeing that voicemails, PDAs and backup tapes were presumptively not to be searched, absent a showing of good cause.

Each of the cases in which Judge Ward required the parties to submit orders has resulted in substantively different orders as parties negotiate orders appropriate to their cases - and in some instances submit some of their unresolved issues to the Court for resolution.  But I thought this order provided some useful revisions to the commonly-used language and was worth calling out for review.

Textiles Day at the Hub: Motion for Leave to Amend Invalidity Contentions Granted

It is "Textiles Day" at the Hub, where we are celebrating getting in our Hub-embroidered sweaters for the winter months, and the local Rotary chapter delivered our two American flags for display on the sidewalk for Veteran's Day tomorrow (joining our usual flag on the flagpole over the 111 side).  The flags are a new program locally by the Marshall Rotary Club that they are calling the Parade of Flags (form with more information here - Download ParadeofFlagsltr2012).  In it, local businesses or homes "subscribe" to flags for patriotic holidays.  Rotarians then come by and flag you up for the holiday, then remove the flags until the next holiday.  They've been popping up all over town the last few days, and we got ours this morning - really does make a difference out front - and reminds me to go up on the roof and change out ours. 

Eventually we'll get around to office regalia with Siebman, Burg, Phillips & Smith, LLP - or at least SBPS - on it - but as we have a the Hub historical marker dedication coming up, we're suiting up for those festivities first.  (We do have SBPS throws on the reception area couch and upstairs on the cot in the boys' room, though.  Seriously.  My nine year olds think it's so cool that they have a blanket with their name on it).

To celebrate the look, the feel, the fabric, darn it, of our lives, let's look at a brief order from Judge Folsom last week granting a motion to amend invalidity contentions.  (Yes, I tried to find a textile-themed order - no luck).

ExitExchange Corp. v. Casale Media, Inc., et. al., 2:10cv297 (E.D. Tex. 10/31/11)

Judge: David Folsom

Holding: Motion for Leave to Amend Invalidity Contentions GRANTED

In a one page order, Judge Folsom granted Defendants' motion to amend their invalidity contentions.  The reasons were pretty simple:

• This case is set for trial November 4, 2013;
• Briefing on claim construction is not due until October-December, 2012;
• The claim construction hearing is set for January 9, 2013; and
• Fact discovery does not close until April 20, 2013, and expert discovery does not close until August 16, 2013.

"Because the Plaintiff will have several months to digest and respond to the new invalidity contentions," the Court concluded "the potential prejudice to the Plaintiff is minimized."

From Docket Navigator.

Another e-mail order - Intravisual v. Fujitsu

Intravisual v. Fujitsu, 2:10cv090 (E.D. Tex. 10/21/11)

Judge: David Folsom

Holding: Discovery Order

Judge Folsom entered the parties' agreed discovery order in this case today.  While the parties had a couple of disputes as to the scheduling order, there were no disputes as to the discovery order.  Of specific interest, the parties jointly proposed a section on ESI discovery that essentially tracked verbatim the model e-discovery order recently promulgated by Judge Rader's advisory committee's e-discovery committee.

When Are Products "Reasonably Similar" to the Accused Products?

Stambler v. Amazon.com, Inc., et. al., 2:09cv310 (E.D. Tex. May 13, 2011) 

Judge: David Folsom

Holding: Motion to Compel GRANTED; Request for Sanctions NOT SO MUCH

No, this case isn't about shoes - but it is about when products not accused are "reasonably similar" to the accused products.  Simple question, right?  After all, it's obvious whether the three shoes above are "reasonably similar" to each other?  Right?  (Guys, this is a trick question - do not answer if there's a woman standing next to you).

Plaintiff moved to compel certain defendants to "fully answer" certain interrogatories and produce related documents in this patent infringement case.  Plaintiff argued that Defendants are limiting their responses and production to the specific website listed as “examples” by Plaintiff’s infringement contentions.  Plaintiff claimed that Defendants are refusing to provide discovery on “other websites and systems that use the same accused technology the same way as the accused system” and argued that it is entitled to discovery on these other websites pursuant to the
“reasonably similar” standard that Judge Folsom has previously enunciated. 

Defendants pointed out that Plaintiff had delayed in seeking information regarding these other websites, that the information was something the Plaintiff should have discovered during his pre-litigation investigation, and that  allowing the discovery at this late stage in the case (discovery closes July 15, 2011) would be burdensome.

Judge Folsom provided some useful analysis on the subject of the scope of discovery with regard to products not listed in the Plaintiff's PICs (or ICs):

The Court has previously found “no bright line rule that discovery can only be obtained if related to an accused product identified in a party’s PICs.”  Further, “[t]he Court conclude[d] that the scope of discovery may include products and services (in this case, websites and systems) ‘reasonably similar’ to those accused in the PICs. This finding best comports with the ‘notice pleading and broad discovery regime created by the Federal Rules’ and the ‘right to develop new information in discovery.’”  Where an accused system is named or adequately described, “Plaintiff is entitled to all discovery for that system, including all of the websites that run on that system, regardless of whether the websites were specifically named in Plaintiff’s PICs.”

(Internal citations and quotes omitted).  Judge Folsom found it important that Plaintiff was not proposing assertion of any new or undefined infringement theories as to websites not named in the ICs, but instead, Plaintiff had discovered additional websites that at least appeared to provide access to the same systems or operate according to the same theories of infringement.  "Defendants’ arguments about Plaintiff’s delay and purported lack of diligence are therefore of limited weight because Plaintiff’s ICs put Defendants on notice of Plaintiff’s infringement theories," he concluded.  Accordingly, the Court held:

On balance, Plaintiff’s motion should be GRANTED. Defendants shall not limit their discovery responses to only the websites identified in Plaintiff’s ICs but instead shall also respond as to reasonably similar websites. Defendants shall supplement their document production and discovery responses accordingly within 60 days of this Order. Also, the parties discussed during oral argument that extensions of certain scheduling order deadlines may be necessary. If any party or parties feel that extensions are necessary, such party or parties should file an appropriate motion.

So should the Court award expenses to the Plaintiff as the prevailing party pursuant to FRCP 37(a)(5)?  Well, no.

On one hand, Defendants have read the case law of this Court’s district too narrowly, as discussed above. On the other hand, Plaintiff’s delay in pursuing this issue to motion has provided Defendants with non-frivolous arguments that Plaintiff’s requested relief at this late stage of discovery would cause excessive unfair prejudice to Defendants. . . . In sum, Plaintiff could have included at least some these other websites in his ICs, and Plaintiff could have moved to compel or to amend his infringement contentions several months earlier than he did.  In granting Plaintiff’s motion, the Court has rejected Defendants’ substantive arguments, but in light of Plaintiff’s at least partial lack of diligence, Defendant’s “nondisclosure, response, or objection was substantially justified.” Fed. R. Civ. P. 37(a)(5)(A)(ii). Alternatively, Plaintiff’s delay is a “circumstance mak[ing] an award of expenses unjust.” Fed. R. Civ. P. 37(a)(5)(A)(iii). Although the Court is mindful of the requirement in Rule 37(a)(5)(A)(i) that a movant first attempt to obtain discovery without judicial intervention, the parties’ briefing and oral arguments demonstrate that Plaintiff’s delay resulted at least in part from a lack of diligence.  As a result, the Court makes no award of expenses for this motion.

("Non-frivolous arguments" omitted).

From Docket Navigator.