Eastern District of Texas Federal Court Practice

Make That Five - Another Severance

TQP v. Aflac, 2:11cv397 (8/16/12)

Judge: Caroline Craven

Holding: Motion to Sever GRANTED; Motion to Transfer DENIED

Plaintiff did not oppose the severance after reading In re EMC, and Judge Craven agreed, severing defendant Aflac from the remaining defendants in this case.  She then considered Aflac's motion to transfer and denied it.

"Serially Filed Cases" Orders

Some Eastern District judges are beginning to issue orders in "serially filed cases" following Chief Judge Davis' lead in the PersonalWeb Technologies, LLC v. NEC Corp. of America, Inc., Cause No. 6:11cv655 directing parties to be prepared to discuss certain issues at forthcoming scheduling conferences.  In pertinent part, here's what they are saying in some of the recent orders I have seen:

• Congress has recently addressed the issue of joinder in patent cases in section 19 of the Leahy-Smith America Invents Act, which was signed into law in September 2011.  In light of the new joinder provision, the Court has experienced an increase in “serially”filed cases, i.e., separate cases involving the same patent(s) filed near in time naming different individual defendants.
• Such cases present administrative difficulties for the Court, and as the Court considers how to most efficiently handle these cases, the parties should be prepared to provide input at the combined scheduling conference regarding, at a minimum, the following issues:

1. Other than common patents, what factors (and facts) can create common issues regarding infringement, both generally and specifically to the above-captioned cases;
2. Is consolidation for pretrial under Federal Rule of Civil Procedure 42 a viable and efficient means of alleviating the administrative difficulties of serially filed cases on the Court while still serving the interests of the parties;
3. If the Court consolidates such cases for pretrial, how should the individual trials be structured, e.g., validity trial with all defendants, followed by separate infringement trials;
4. What effect, if any, do pending 1404(a) motions for transfer have, and when and how should they be determined;
5. Absent consolidation, what other tools can the Court and/or parties use to promote judicial efficiency and alleviate the administrative difficulties on the Court?

Motion to Transfer Venue Granted

Droplets, Inc. v. E*Trade Financial Corporation, et. al., 2:11cv255 (E.D. Tex. 3/5/12)

Judge: Caroline Craven

Holding: Motion to Transfer Venue GRANTED

Judge Craven granted the defendants' motion to transfer venue of plaintiff's infringement action to the Southern District of New York.  She found that "considerations of judicial economy and court congestion are outweighed by the location of sources of proof, the availability of compulsory process, and the convenience of witnesses." Specifically, although several Defendants were closer to the Eastern District of Texas than to the Southern District of New York, this did not outweigh the presence of thirteen identified non-party witnesses and one of the defendants in the Southern District of New York, or within 100 miles of that court's courthouse.

Motion to Stay Due to Pending Litigation Before Same Judge Granted

Motorola Mobility, Inc., et. al. v. TiVo Inc., 5:11cv053 (E.D. Tex. 7/6/11)

Judge: Caroline Craven

Holding: Motion to Stay GRANTED

TiVo filed a motion to stay, asserting that Motorola filed this case in retaliation for TiVo's filing another case against Motorola's customer Verizon.  Judge Craven noted that TiVo relied on the "first to file" rule, but held that the rule did not apply in this case "as both the Verizon Lawsuit and this case are pending before the same district judge, eliminating the concern over comity and minimizing the concerns of inconsistent and duplicative rulings. Rather than apply the two-part test relied upon by TiVo, in determining whether to stay this litigation, the Court will instead apply the factors laid out by this Court in Soverain Software LLC v. Amazon.com, 356 F.Supp.2d 660 (E.D. Tex. 2005)" which I note were in the context of a stay pending reexam, thus providing these factors with a new context.

Judge Craven eventually concluded that "[w]hen considering the totality of the circumstances, the Court finds this lawsuit should be stayed in its entirety for six months, pending resolution of the Verizon Lawsuit. The stay shall be automatically lifted on January 3, 2012, and a status conference is scheduled before the undersigned at 10:00 a.m. on January 4, 2012. TiVo may request another stay at that time if circumstances warrant."

From Docket Navigator.

Another false marking case transferred - false marking defendants now 10 out of 11

Tex Pat, LLC v. Becton, Dickinson and Company, et. al., 5:10cv00123 (2/22/11)

Judge: Caroline Craven

Holding: Motion to Transfer Venue recommended GRANTED

False marking cases are becoming the New England Patriots of the venue world, having posted an 10-1 record to date on venue motion.  Judge Craven issued her first ruling on such motions this week, granting a motion.  The facts are, again, similar - plaintiff is a Texas company but with no facility or operations, while Defendant's location (including the only relevant witnesses and documents) is in New Jersey.

By the way, Judge Everingham issued an opinion this week as well transferring a false marking case in the Promote Innovation LLC v. Little Kids, Inc., case, but it was already included in the totals as he announced his ruling at the status conferences on November 23 - that was one of the two cases announced transferred at the hearings.

From Docket Navigator.

Motion to Transfer Venue Denied in "National" Patent Case

Intellectual Capital Holdings Limited v. NEC Corporation of America et al, No. 5:08-cv-00065) (June 2, 2009)
Judge: Caroline Craven   
Holding: Motion to Transfer Venue DENIED
Judge Craven denied the defendants' motion to transfer venue, holding that given the "national character" of the case and the fact that the plaintiff and one of the defendants had connections with Texas counseled against a transfer.  But even if Plaintiff had no connection to the forum, the court concluded that the motion would still be denied because the defendants have still "failed to demonstrate that there is a localized focus of people, events, and evidence in the [transferee forum] as to make that venue clearly more convenient for all involved. To the contrary, this case has a national reach, such that no one particular forum can be said to be clearly more convenient than any other."

A Ruling of epicRealm Importance: Summary Judgment of Noninfringement Granted

epicRealm, Licensing, LLC v. Autoflex Leasing, Inc., --- F.Supp.2d ----, 2007 WL 1828014(E.D.Tex. Jun 26, 2007) (NO. 205CV163, 205CV356)
Judge: David Folsom/Caroline Craven
Holding: Defendant's Motion for Summary Judgment of No Infringement GRANTED
    In her Report and Recommendation dated February 21, 2007, Judge Craven recommended Macerich's Motion for Summary Judgment of No Infringement be granted and that Plaintiff's claims against Macerich be dismissed with prejudice. Specifically, regarding direct infringement, she found no genuine issues of material fact regarding whether Macerich performs any of the steps of the claimed methods. Therefore, she concluded Macerich could not be liable for direct infringement of those claims as a matter of law. Regarding indirect infringement (inducing infringement), she found insufficient evidence to demonstrate that Macerich had specific intent to cause the acts which constitute the infringement. Judge Craven further found there were no genuine disputes of material fact on the issue of whether Macerich intended to induce infringement. Therefore, she concluded Macerich could not be liable for active inducement as a matter of law.
    Plaintiff raised three primary objections to Judge Craven's Report and Recommendation. First, Plaintiff asserted that Judge Craven's direct infringement analysis improperly applied the statutory mandate of 35 U.S.C. § 271(a) by focusing only on whether Macerich directed or controlled its web hosting services provider - Red 5 Interactive, Inc. - in making one of the infringing systems named in Plaintiff's Preliminary Infringement Contentions (“PICs”)-the system including Apache and Tomcat software. According to Plaintiff, making the software is only one way to infringe Plaintiff's patents under 35 U.S.C. § 271(a), and Macerich is also liable for infringement by using the infringing systems and methods. Plaintiff argues the Magistrate Judge's analysis ignored evidence showing that Macerich used the infringing combination of Apache and Tomcat software.
    Second, Plaintiff claimed that Judge Craven incorrectly required Plaintiff to produce evidence that Macerich directed Red 5 to “customize” the infringing combination of Apache and Tomcat software. According to Plaintiff, its PICs accuse Macerich of infringement by employing a system that used an Apache web server in combination with a Tomcat page server, and neither Plaintiff's patents nor its PICs require that Macerich “customize” the Apache/Tomcat combination. Again, Plaintiff argues the use of the combination, by itself, is sufficient for infringement.
    Third, Plaintiff claimed that Judge Craven's analysis of infringement by inducement improperly applied the statutory mandate of 35 U.S.C. § 271(b) by again focusing only on whether Macerich induced Red 5 in making the infringing system. Plaintiff claimed that the analysis did not consider evidence that Macerich induced web patrons to use the allegedly infringing combination of Apache and Tomcat software when browsing Macerich's websites.
    On de novo review, Judge Folsom first observed that the Plaintiff in its objections attempted to raise new factual and legal issues by putting forth "entirely new" arguments that he held had never before been briefed.  "The Fifth Circuit has held that issues raised for the first time in objections to a Report and Recommendation of a magistrate judge are not properly before the district judge," he wrote.  "Thus, the Court is under no obligation to address the arguments raised for the first time in Plaintiff's objections."  However, Judge Folsom considered the new arguments anyway, and found them to be without merit. 

Marking and Infringement Summary Judgment Rulings in Patent Case

Massachusetts Institute of Technology v. Abacus Software, Inc., 2004 WL 5268124(E.D.Tex. Sep 29, 2004) (NO. CIV A 501-CV344)
Massachusetts Institute of Technology v. Abacus Software, Inc., 2004 WL 5268125(E.D.Tex. Sep 29, 2004) (NO. CIV A 501-CV344)
Massachusetts Institute of Technology v. Abacus Software, Inc., 2004 WL 5268126(E.D.Tex. Sep 29, 2004) (NO. CIV A 501-CV344)
Massachusetts Institute of Technology v. Abacus Software, Inc., 2004 WL 5268127(E.D.Tex. Sep 29, 2004) (NO. CIV A 501-CV344)
Massachusetts Institute of Technology v. Abacus Software, Inc., 2004 WL 5268123(E.D.Tex. Aug 04, 2004) (NO. 501CV344)
Judges: David Folsom/Caroline Craven
This case just returned to the ED Tex. from the Federal Circuit, and for some reason these five orders from the fall of 2004 were just reported by West.  The first (2004 WL 5268124) is Judge Folsom's order adopting Judge Craven's report and recc that various defendants' motions for summary judgment on marking be denied.  The second (2004 WL 5268125) is another Judge Folsom order adopting Judge Craven's report and recc on various motions dealing with marking and notice.  The third order, (2004 WL 5268126) deals with an appeal of two orders on a marking and noninfringement issue, and adopts those.  The fourth, (2004 WL 5268127) adopts a report and recc that one defendant's motion for summary judgment as to infringement be granted.  The fifth order, (2004 WL 5268123) is Judge Craven's report and recommendation on some of the marking and infringement issues.

(Update: This morning West posted The Massachusetts Institute of Technology v. Abacus Software, Inc., 2004 WL 5268128(E.D.Tex. Aug 24, 2004) (NO. 5:01 CV 344) which is Judge Craven's report & recc on the noninfringement motion.)

Discovery permitted on products listed in P.R. 3-1 contentions, but not in complaint; second site for source code held unnecessary.

Polycom, Inc. v. Codian Ltd., 2007 WL 194588(E.D.Tex. Jan 22, 2007) (NO. 2:05CV520)
Judge: Caroline Craven
Holding: Motion to Compel Discovery GRANTED in part and DENIED in part.
Plaintiffs asked the Court to compel Defendants to (1) produce documents and written discovery responses regarding all of Defendants' accused instrumentalities; and (2) provide Plaintiffs with a native, electronic copy of Defendants' source code, to be maintained in confidence at the offices of Plaintiffs' litigation counsel.
Defendants stated they had always been willing to produce documents related to additional products if Plaintiffs amend their complaint to accuse those products (note: the products were listed in the PICs). According to Defendants, Plaintiffs failed to do so, and the time to amend has lapsed. Therefore, Defendants contend Plaintiffs are not entitled to discovery on the additional products.  On the source code, Defendants objected to the proposed additional location for production. 
On the complaint issue, Judge Craven noted that the complaint did list some products, but the accused products "were not limited to" those listed, and held that discovery into products accused in the PICs was appropriate, even if the products were not listed in the complaint.  On the source code issue, Judge Craven found that the source code did not need to be produced in electronic form at an additional location.

Defendants' Motions for Summary Judgment and to Strike Experts Pretrial Denied by Magistrate Judge

Avance v. Kerr-McGee Chemical LLC, 2006 WL 3909715; 2006 WL 3913509; 2006 WL 3912471; 2006 WL 3912472; 2006 WL 3909714 (E.D.Tex. Dec 4-18, 2006) (NO. 5:04CV209)
Judge: Caroline Craven
Holdings: Defendants' Motions for Summary Judgment and to Exvlude Testimony DENIED; Motion to Strike Experts' Untimely Response & Verification GRANTED
These orders memorialize Judge Craven's pretrial rulings in this case, which recommend that summary judgment not be granted, and that expert testimony not be excluded.  As noted elsewhere, the rulings were affirmed by Judge Folsom.