Eastern District of Texas Federal Court Practice

Appeal of Magistrate Judge's Markman Order Denied

CooperVision, Inc. v. Ciba Vision Corp., 2007 WL 2408881(E.D.Tex. Aug 21, 2007) (NO. 2:06CV00149RHC, 9:06CV00260RHC)
Judge: Ron Clark
Holding: Objections to Memorandum and Order Construing Claim Terms DENIED
Defendant appealed Judge Hines' Markman ruling.  Judge Clark stated simply:

Judge Hines recited the correct standard and made specific findings on each of the claim terms at issue in a detailed thirty-three (33) page order. CIBA agrees that Judge Hines reached the constructions “after careful consideration of the parties' respective positions.” CIBA simply disagrees with the conclusions reached by Judge Hines. After reviewing his findings, under the circumstances of this case, the court cannot conclude that Judge Hine's decision was clearly erroneous or contrary to law.

Claims Construction Opinion

Blackboard, Inc. v. Desire2Learn, Inc., 2007 WL 2255227(E.D.Tex. Aug 03, 2007) (NO. 9:06-CV-155)
Judge: Earl S. Hines
Holding: Claims construction opinion

Rancour and chaffy behavior

CooperVision, Inc. v. Ciba Vision Corp., 2007 WL 2264848(E.D.Tex. Aug 06, 2007) (NO. CIV A 206CV149)
Judge: Earl S. Hines
Holding: Motions to Compel GRANTED in part
This case just keeps getting better.  "Bullying, venomous and tit-for-tat pretrial antics go against the letter and spirit of the Federal Rules of Civil Procedure, and they especially assail customary and expected practice in the Eastern District of Texas," Judge Hines observes at the beginning of this opinion addressing three motions to compel.  (I especially like paragraphs that begin "Rancour continued."  That's funny - I don't care who you are).  Judge Hines also detailed the parties' "shoot first" strategies, where one party files a motion to compel, followed by one from its opponent two hours later.  The opponent then filed a second one within a week (just to make sure everybody knew who the bad guy was, I guess).  "The majority of issues raised and argued ad nauseum in warring motions, responses, replies, and, yes, even a sur-reply, are moot," Judge Hines notes, "and the few remaining issues have reasonable solutions so obvious that the court must wonder whether the clients' interests were advanced by the expenditure of so much highly-compensated attorney time on such a parenthetic skirmish." 
The order goes on to grant in part and deny in part the motions, noting that much of what was requested has now become moot.

Somebody Hold the Baby: Due Date Under Local Patent Rules Clarified

Coopervision, Inc. v. CIBA Vision Corporation, 2:06-cv-00149-RHC
Judge: Earl Hines
Holding: Motion for Clarification  of Patent Rules Due Date Ruled On
At 5:30 pm on a Friday afternoon you'd think I'd heave better things to do than read and post on a relatively minor order in a patent case.  But you'd be wrong.  I heard today at Judge Everingham's investiture (which went very well, thank you for asking) about an order by Judge Hines in a patent case that dealt with how to calculate a deadline under the patent rules, and decided to look it up and see what His Honor did.  (By the way, did you know that Judge Hines was invested on April 13 23 years ago, and, like Judge Everingham, had an eight year old daughter and a six year old son at the time?  Also, his secretary's name was Lincoln and Judge Everingham's was Kennedy.  Coincidence?  I think not).
In Coopervision, Inc. v. CIBA Vision Corporation, Plaintiff, ably represented by no fewer than ten local counsel, asked the Court to order defendants, laboring under the disadvantage of only having two, to serve invalidity contentions under P.R. 3-3 on April 23, which was 45 days after the Plaintiff served its "proposed" amended infringement contentions.  Defendants, on the other hand, wanted 45 days after the Court granted the plaintiff's motion for leave to amend its infringement contentions, which would be May 15.  (The difference is, of course, 22 days). 
"There is merit to both sides of this dispute," Judge Hines sagely observed, after studying this headscratcher.  "After considering local P.R. 3-3, the arguments of the parties, the language of the court’s March 30, 2007 order [permitting the amendment], the imminent claim  construction deadlines and the tension between competing equities, the court will establish a middle-ground deadline that will permit defendant to complete, analyze, and chart relevant new art without creating a snowball effect that could imperil other existing deadlines."   In a ruling that can only be described as almost, (but to be technical about it, not precisely) Solomonic, Judge Hines ordered the invalidity contentions to be served April 30.

Motion for Certificate of Appealability Denied

PYR Energy Corp. v. Samson Resources Co., 2007 WL 858803(E.D.Tex. Mar 16, 2007) (NO. 105-CV-530)
Judge: Earl S. Hines
Holding: Motion for Certificate of Appealability DENIED
Judge Hines denied this motion by defendants to appeal two prior orders in the case, in the process explaining the standards for doing so under 28 U.S.C. § 1292(b).  Noting the expected length of appeal and the relative imminence of trial, he found that the better course was not to stay proceedings, "but rather proceed to trial so that the appellate court can deal with the entire case as a complete package, rather than piecemeal."

Failure to Comply With Privilege Log Requirements Results in All Protection Lost for Documents Listed on Privilege Log

PYR Energy Corp. v. Samson Resources Co., 2007 WL 446025(E.D.Tex. Feb 07, 2007) (NO. 1:05-CV-530)
Judge: Earl S. Hines
Holding: Motion for Sanctions re: Nonproduction of Privilege Log Granted (pretty much in its entirety)
Judge Hines previously ordered the defendant to produce a privilege log.  Contending that Samson didn't comply with the Court's order, Plaintiff wanted Samson taken out and shot.  Judge Hines agreed, writing:

Samson failed to comply with either Rule 26 or the court's order in numerous respects. First, the purported privilege log was filed more than two weeks past the deadline, and then only after twice being prompted by the court, at hearings on May 10th and again on May 22nd. Second, the late-filed log was incomplete. It was not supplemented until six weeks past the deadline. Third, the log does not identify all recipients of the documents; the “general description” of the subject matter is so vague and oblique as to be meaningless; and there is no proffered justification for the assertion of any claim of privilege.
Additional and glaring deficiencies were identified during the court's subsequent in camera review. On the log, many documents list only one e-mail recipient. The e-mail, however, clearly was sent to multiple people. Some documents even were sent to third parties, e.g., Mr. Ames, an employee of Venus. Several documents were filed under seal as privileged, but were not identified in the log. Other documents filed under seal simply were not the documents purportedly identified by the log.
PYR's sanctions motion and objections to the privilege log identified many of the deficiencies noted above. Yet, Samson has taken no efforts to correct the deficiencies or to produce and disclose documents during the intervening seven months since PYR's motion was filed. Accordingly, the court agrees with PYR that Samson's disregard of the Federal Rules of Civil Procedure and of this court's explicit order subjects Samson to an appropriate sanction for failure to make disclosures and cooperate in discovery.

Judge Hines went on to find that Samson's "nearly wholesale and persistent failure to comply with the court's order warrants the sanction of deeming any privilege waived as to many documents in the log."   However, "all sanctions must be just," Judge Hines observed, "and the court finds waiver of privilege to be unjust with respect to certain documents that are at the core of the attorney-client privilege."  So the order went on to hold that privilege had been waived for all but fifteen of the documents listed on the privilege log.

Infringing Barbie? The Magical World of Wishes and Dreams Goes 8-6 against Barbie's Fairytopia in 12(b)(6) Throwdown in Eastern District

McArdle v. Mattel Inc., 2006 WL 2668860(E.D.Tex. Sep 13, 2006) (NO. 1:06-CV-103)
Judges: Thad Heartfield & Earl S. Hines
Holding: Motion to Dismiss GRANTED in part and DENIED in part.  Specifically, (1) author's claims for breach of contract, fraud, and negligent misrepresentation were not preempted by the Copyright Act; (2) the Copyright Act preempted author's claims for unjust enrichment, quantum meruit, and misappropriation; (3) author's allegations were insufficient to state a breach-of-confidential-relationship claim; (4) author's allegations were sufficient to assert a trade dress infringement claim; (5) toy company's alleged conduct of copying author's product, and then giving purchasers the false impression that its product line was different than author's product was not actionable as reverse passing off; (6) author failed to plead fraud action with the required particularity; (7) author stated a claim for negligent misrepresentation; (8) court was without jurisdiction to consider author's claim against Barbie for negligent use of pixie dust, and reserved ruling (with regrets) on author's motion for summary judgment in his favor due to the entire concept of a Barbie with butterfly wings and pixie outfits being insanely annoying and deeply silly.
In this case a children's book author (“The Magical World of Wishes and Dreams”) (see http://www.magicalwb.com/home.htm) sued toy company Mattel, alleging that its "Barbie's “Fairytopia-Make a Magical World” line of products infringed his federally protected copyrights and trademarks, and asserting numerous state law claims, including negligent misrepresentation, breach of implied contract, trade dress infringement, and fraud. Mattel filed a motion to dismiss on various grounds.
Judge Heartfield adopted the report and recommendations of Judge Hines as noted above, paring down the "smorgasbord" of 14 claims asserted in the Plaintiff's complaint to eight in a report that is a pretty good summary of every conceivable intellectual property cause of action except patent infringement.

Musings on Motions for Reconsideration in Oil & Gas case

PYR Energy Corp. v. Samson Resources Co., --- F.Supp.2d ----, 2007 WL 106169(E.D.Tex. Jan 10, 2007) (NO. 1:05CV530)
Judge: Earl S. Hines
Holding:
I'll let Judge Hines' order speak for itself.  It begins.

One hundred and six years ago today, within the territorial jurisdiction of this district and less than ten miles south of the present courthouse, the ground beneath a small wooden derrick housing an ongoing drilling operation of a single wildcat well began to shudder. Around 10:30 A.M.,

“··· with an ear-shattering roar, the earth began to spew uncounted tons of mud, gas, rocks, and finally a towering column of heavy green crude oil, six inches around, erupting almost two hundred feet in the air.

The roaring geyser of oil hurled pipe skyward and scattered it over the prairie like straws. It blasted aawy the crown block of the homemade derrick, knocked off the superstructure, and sent the terrified crew scrambling for safety before it blazoned the Southeast Texas sky with a soaring banner of oil. With the advent of this well-the Lucas Gusher, named for Captain Anthony F. Lucas, the Austrian mining engineer who brought it in-the Spindletop oil field was born.”

(Internal citation omitted).  The Spindletop field itself peaked within two years and then steadily declined. But it generated an oil exploration boom unlike any before. By 1917, there were twenty-six refineries operating in Texas, and by the eve of World War II, there were forty-six oil fields within a hundred-mile radius of Spindletop, with 2440 producing wells.

Needless to say, an abundance of legal disputes inevitably accompanied this much commercial activity. Texas jurists, legislators, and regulators were required to steadily and vigorously develop the state's standards governing the rights of those who own and produce such vital commodities as oil and natural gas. Texas now is richly endowed with a body of natural resources law fashioned by more than a century of experience.

Unfortunately, that endowment does not fully sustain the present lawsuit which centers on one of Spindletop's offshoot fields known as the Nome Prospect, located not far away from Spindletop in Jefferson County, Texas.

(Internal citations omitted; emphasis added).  With that colorful introduction, Judge Hines embarks on an analysis of competing motions for reconsideration of his prior summary judgment orders in this case.  Judge Hines observes:

In most instances, the specter of additional expense, protracted proceedings and uncertain outcomes propels litigants, especially sophisticated businesses more interested in achieving optimum economic results than in developing arcane points of state law, to negotiate a resolution of their differences through alternative means. To date, however, the parties here prefer a judicial resolution. So, the wheels of justice shall grind, unavoidably slow but exceedingly fine. Future law professors, legal commentators, and seminar speakers, at least, and perhaps some courts will benefit if the parties stay their course.

In the end, with the single exception of addressing one issue left unaddressed in his original order, Judge Hines did not depart from his original conclusions, but ended the case on a interesting note:

PYR's new brief makes a far better argument in support of its position regarding the reversionary working interest than was in any of its earlier briefs. Moreover, Samson's reply does not address any of these new arguments, and says little more than that the court correctly decided the issue in its original opinion. This leaves the debate in a “court versus PYR” posture. Given that Samson's lawyers are more experienced in the present subject matter than the generalist presiding judge, Samson's silence is cause for pause. It raises concern that Samson is unable or unwilling to answer PYR's new arguments.

While the court is unpersuaded by PYR's new arguments, in candor the court's original analysis and PYR's new opposing arguments run at almost a dead heat. This issue is as close to 50/50 as it could possibly be. The court, however, cannot simply leave the scales of justice evenly balanced as a law professor might do at the end of a stimulating lecture on a perplexing issue. The scales must tip, and the final tipping point for the court is consistency. . . . Consistency and balance generally are considered hallmarks of impartial justice. There is a nuanced view that “a foolish consistency is the hobgoblin of little minds.”  [Ralph Waldo Emerson, Self Reliance, in Essays: First Series (1841)].Others must judge whether the court has fallen victim to a foolish consistency. But for the reasons expressed in this section, the court will adhere to its original view.

"Goose/Gander" Flaps Again: Privileged Document Need Not Be Produced at Deposition

2M Asset Management, LLC v. Netmass, Inc., 2006 WL 3751187(E.D.Tex. Dec 18, 2006) (NO. 2:06-CV-215)
Judge: Earl S. Hines
Holding: Defendant's Motion to Compel DENIED
Defendant asked Judge Hines to compel the plaintiff to bring all of the documents listed on its privilege log to its corporate rep's deposition to allow him to refresh his recollection as needed.  The defendant claimed that viewing the documents to refresh his recollection would not constitute a waiver in this case, but the plaintiff wasn't so sure, especially in other cases.  Judge Hines denied the motion, finding the supposition that the documents would help the witness to be, well, supposition.  In addition, there was no precedent to support the request when attorney-client materials are at issue, and only sparse precedent when work product was at issue.  Pragmatically, Judge Hines pondered that the request was made awfully late for such a significant decision, raising concerns of "slippery slope" and "circumstances unforeseen". 
But what's really important about this opinion is Judge Hines' statement that "[w]hat's good for the goose is good for the gander" (which we can now all cite) as well as the statement that "[i]f the court were to compel 2M to produce its attorney-client privileged documents to refresh its witness recollection under the casual circumstances of this case, similar requests would be made in every case, leading to satellite litigation in matters that are intended to be conducted extrajudicially" thus giving attorneys an insight into the Court's rationale in examining an unusual request such as this.

Motions to Compel Granted in Retaliation Case

Fairchild v. Liberty Independent School Dist., 2006 WL 3627652(E.D.Tex. Dec 11, 2006) (NO. 1;06CV92)
Judge: Earl S. Hines
Holding: Motions to Compel
This is a 1983 action alleging retaliation.  Plaintiff moved to compel production of documents and tapes.  Defendant opposed, claiming that the tapes were protected under the Texas Open Meetings Act.  Quoting Local Rule CV-26(d), Judge Hines outlined the scope of discovery in federal court, noting that "[t]he words “disclosure” and “discovery” are terms of art in federal practice" and explaining how privileges fit into this framework. Judge Hines eventually ordered all of the information requested produced, holding:

"All information sought by Fairchild in the pending motions is relevant to her claims. None of the purported state evidentiary privileges meets the test for applicability in a federal cause of action in federal court. Many of the communications were, however, undertaken with an expectation that Texas law would keep them private, or at least prevent their disclosure to the public at large. Several other documents involve minor students who are not party to this case. The court is mindful of these concerns. Federal law requires defendants to disclose these communications and documents to further the truth seeking process. Meeting this end, however, does not require that defendants make these communications and documents open for the world to see. Although the defendants must produce the documents and tapes, the court will enter a protective order allowing redaction of identifying information regarding minor students, and allowing defendants to designate documents and communications as confidential. Access and use of these materials will be limited to the conditions in the order."