Eastern District of Texas Federal Court Practice

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.

Claims Construction Opinion

EpicRealm, Licensing, LLC v. Autoflex Leasing, Inc, 2006 WL 3099603(E.D.Tex. Oct 30, 2006) (NO. 2:05CV163, 2:05CV356)
Judges: David Folsom / Caroline Craven
Holding: Claim Construction Opinion (and ruling on appeal to district judge)

Motion to Exclude Expert & Strike Claims Granted

Avance v. Kerr-McGee Chemical LLC, 2006 WL 3030589 (E.D.Tex. Oct 23, 2006) (NO. 5:04CV209)
Judge: David Folsom/Caroline Craven
Holding: Motion to Exclude Expert & Dismiss Claims GRANTED
COMMENTS:
In this motion the defendant sought to exclude a plaintiff's expert and thereby obtain summary judgment as to certain claims in the case.  Magistrate Judge Craven recommended granting the motion because there was an essential element - causation - lacking.  Noting that there had been no objections, Judge Folsom agreed with Judge Craven's ruling.

Motion to Strike Expert Witness as Untimely Denied

Avance v. Kerr-McGee Chemical LLC, 2006 WL 2884930(E.D.Tex. Oct 10, 2006) (NO. 5:04CV209)
Judge: Caroline Craven
Holding: Motion to Strike Expert DENIED
COMMENTS:
Plaintiff sought to strike a defense expert as untimely designated.  Judge Craven held that even asuming the designation was untimely, there was good cause to permit it.

Motion to Dismiss Direct Action Against Insurer Granted

Medmarc Cas. Ins. Co. v. Craytor, 2006 WL 2882563(E.D.Tex. Oct 06, 2006); 2006 WL 3030566 (E.D.Tex. Oct 23, 2006) (NO. 5:06CV95)
Judge: Caroline Craven/ David Folsom
Holding: Motion to Dismiss Plaintiff's Counterclaim GRANTED
COMMENTS:
This case arises out of a legal malpractice claim asserted by Carolyn Miller against Bart Craytor. Miller sought representation from Craytor regarding a 2001 automobile accident. Craytor failed to obtained service of summons on any of the defendants by August 5, 2004, and Miller's suit was dismissed with prejudice as the three-year statute of limitations had lapsed. The legal malpractice lawsuit was resolved when the parties entered into a consent judgment in the amount of $175,000. Medmarc Casualty Insurance Company denied coverage to Craytor for the lawsuit and subsequent consent judgment because Medmarc contends that the express provisions of the Medmarc policies exclude coverage for Craytor's alleged legal malpractice.
Judge Craven recommeded granting Medmarc's motion to dismiss the plaintiff's counterclaim, which was a direct action against Medmarc pursuant to the Arkansas statute, finding that the policy was issued in Texas.  On October, 2006, Noting that there were no objections filed, Judge Folsom adopted the recommendation in Medmarc Cas. Ins. Co. v. Craytor, 2006 WL 3030566 (E.D.Tex. Oct 23, 2006).

Motion to Stay Pending Reexamination Granted in Echostar v. TiVo

EchoStar Technologies Corp. v. TiVo, Inc., 2006 WL 2501494(E.D.Tex. Jul 14, 2006) (NO. 5:05 CV 81 DF)
Judge: Caroline Craven
Divison: Texarkana
Holding: Motion to Stay GRANTED
COMMENTS:
Already heavy press buzz on this one from the other patent law blogs.  This case is the second patent infringement case in the ED Tex concerning DVR technology involving the same parties. The first case, TiVo, Inc. v. EchoStar Communications, et. al., C.A. No. 2:04-CV-1, was an infringement action in which Defendent TiVo sued Plaintiff for allegedly infringing on its patents covering DVR technology. That matter was tried before a jury and resulted in a verdict in favor of the plaintiff, Defendant TiVo. In this case Echostar moved the Court for a stay of this action in light of patent reexamination proceedings before the United States Patent & Trademark Office (“PTO”). According to Defendants, on May 25 and 26, and June 9, 2006, they filed requests for reexamination asking the PTO to reexamine and assess the patentability of all asserted claims of the three patents-in-suit. Defendants have requested an ex partes reexamination of the '186 and '804 patents and an inter partes reexamination of the '685 patent.
Judge Craven granted the motion, finding that the equities merited a stay in this case because "[t]he Court finds a high likelihood that results of the PTO's reexamination will have a dramatic effect on the issues before the Court, up to and including dismissal of the entire action if the patent claims are found to be unpatentable. In any event, the Court will benefit from the PTO's expertise and determination on reexamination, and Plaintiff will not be unduly prejudiced by the stay."