Eastern District of Texas Federal Court Practice

Door County, Wisconsin Intellectual Property Academy

I am fortunate, fortunate, fortunate, to have been invited to speak at some places outside of Texas this summer, including at the Third Annual Door County (Wisconsin) Intellectual Property Academy on July 24-25 at Stone Harbor Resort in Sturgeon Bay, just up the road from Green Bay.  I am especially excited because my wife and I spent several days last month a little further northeast at Mackinac Island, MI where we had an actual freezing night over Memorial Day weekend.  You have to know Texas summers to understand how thrilled we were at that.
The event is sponsored by the State Bar of Wisconsin Intellectual Property Section, and the brochure

Download ip_academy_brochure.pdf

includes a session on What Judges Want You To Know About IP Cases with Judges Crabb and Griesbach of the Eastern District if Wisconsin, a  district experienced in patent litigation.  My topic will be Patent Litigation - A Practitioner's Perspective.  I'm the last speaker Friday, and I'm not sure if that is good or bad.  I just know it won't be hot.
I've been talking with some practitioners about the patent docket in Wisconsin, but would be interested to hear any readers' comments about how it is going, or things they think I should cover in my talk.  My paper isn't written yet, so I'm not yet sure exactly what I'll be saying.

Starting a New Law Office: Ethical Concerns and Practical Pointers - TexasBarCLE webcast

I will be moderating an upcoming TexasBarCLE webcast next month Starting a New Law Office: Ethical Concerns and Practical Pointers.  The seminar is live via webcast on Wednesday, July 2nd, 2008 from 10:00 a.m. to 11:30 a.m. CST.  The webcast counts for 1.5 hours MCLE credit, with one hour of that being ethics credit.  The registration fee is $95 - to get more information or register, click here.  The webcast arose out of the work I was doing on a paper on the subject that is slated for publication in the July issue of the Texas Bar Journal, so the webcast paper will be essentially the Bar Journal paper (at least that's the plan).

Topics include:

• Leaving your old firm: compensation issues, malpractice insurance coverage, file retention, taking clients, client notification
• Creating your new firm: setting up your business entity, EIN, bank accounts, etc.
• Setting up your new office
• Running your new office: pro-bono cases, filing system, supplies, software, legal research, employment contract and letters of engagement, calendaring system
• Client relations: advertising, internet presence

Faculty is:

• Michael Smith, Marshall - Siebman, Reynolds, Burg, Phillips & Smith LLP
  
• Rob Crain, Dallas - Crain Lewis, LLP
• Laura Benitez Geisler, Dallas - Jones Geisler, LLP

If you're not able to watch the webcast live, about a week after the webcast, the program will be archived at TexasBarCLE.com, and you can watch it there.  Doesn't matter whether you signed up ahead of time and couldn't make it, or signed up afterwards - either way you can watch the webcast at your leisure.  I've watched a couple of these recently and really liked the format - you can sit at your desk and watch a seminar of interest to you, pausing it as needed to handle work that can't be put off.

Motion for Summary Judgment Granted

Finley v. Washington Mutual Bank, 2008 WL 2278922 (E.D.Tex.May 29, 2008) (No. 4:07cv225)

Judge:  Michael H. Schneider / Don D. Bush

Holding:  Defendant’s Motion for Summary Judgment on all claims GRANTED.

Judge Schneider adopted the findings and conclusions of Judge Bush, which contained proposed findings of fact and recommendations that Defendant Washington Mutual’s Motion for Summary Judgment on all claims be granted.  In this case, Plaintiff Gary Finley asserted 13 separate claims against Washington Mutual, the originator of Plaintiff’s home mortgage loan.  Defendant filed a Motion for Summary Judgment on March 5, 2008, claiming as one of its grounds that Plaintiff failed to provide evidence that would create a genuine issue of material fact regarding his claims.  On the date that Plaintiff was required to respond, rather than filing a response to the motion, Plaintiff asked the Court for additional time to conduct discovery and to respond.  On April 8, 2008, the Court extended Plaintiff’s deadline to April 25, 2008.  But on April 25, Plaintiff still had not filed a response or any summary judgment evidence whatsoever nor did he make any motions attempting to show good cause for his failure to respond.  After noting that the record indicated that the parties had been given the opportunity to engage in sufficient discovery and that Plaintiff had not objected to or otherwise controverted any of the 27 exhibits that Defendant had attached to its motion, the Court said that it  assumed that Plaintiff’s failure to respond to the motion for summary judgment indicated Plaintiff was not opposed to it and that, having been granted additional time for discovery, Plaintiff conceded that there was no genuine issue of material fact as to at least one of the elements of all of his claims.  The Court said that it “will not-and indeed is not required to-scour the record in this matter to determine whether Plaintiff could create a genuine issue of material facts as to his claims” and that the Court’s “time and resources are limited, and the Court will not do Plaintiff’s work for him.”  The Court, observing that not responding to the Defendant’s motion was not the first instance in this case when Plaintiff failed to comply with the Rules of Civil Procedure or the Local Rules of Court, said, “[s]imply put, the Court’s patience is exhausted.”

Motion for Leave to Amend Invalidity Contentions Denied

The order isn't reported yet, but I thought I'd post on Judge Clark's recent opinion (June 9, 2008) denying the defendant's motion for leave to amend its invalidity contentions in the Iovate v. BSN litigation pending in Lufkin, as such orders are always of interest to practitioners.  The case number is 9:07cv46-RC and the docket number of the order is #162.
BSN sought leave to add several prior art references, but Judge Clark found that the references were all available at the time BSN filed its original and previously amended invalidity contentions, and that it had waited in some cases nearly three months after discovering them before filing its motion for leave to add them.  Judge Clark noted that the case is set for trial in September, and fact discovery closes in less than a month, yet BSN's motion for leave did not even include the substance of the proposed amendments, as required by Local Rule CV-7(k).  This failure presented a particular problem later on, when Judge Clark noted that the prejudice to the plaintiff was greater precisely because of this failure to specifically identify where in the prior art the elements of the claim could be found.
Of interest to practitioners is the cogent analysis in the order of the history and purpose of the local patent rules and their centerpiece requirement of mandatory contentions which in the ordinary course of events cannot be amended without a showing of good cause.  Also of interest is Judge Clark's explicit statement that as the ED Tex rules were modeled on the ND Cal rules, he considers the ND Cal's interpretations of its rules "persuasive authority."  Other Eastern District judges have, of course cited ND Cal cases on its patent rules when discussing the parallel ED Tex rule, but offhand I don't recall a court actually saying this before - it was simply assumed that a ND Cal case on point was worth citing.
Judge Clark analyzes the motion for leave using his customary five factor analysis (some formulations only come up with four, but the interests are essentially the same, although some of us might think that different judges consider different factors to be more important). 
One thing Judge Clark noted repeatedly in this case was an evidentiary gap in BSN's claims.  For example, it claimed that older bodybuilding magazines it was seeking leave to use were not available, but it nowhere supported that with an affidavit - and the plaintiff showed that they were in fact available.  Same thing for an old book.  BSN alleged that it was out of print and hard to find.  Plaintiff adduced evidence to the contrary, and Judge Clark got on Amazon and found it easily as well.  (Don't you hate it when that happens?)  Finally, BSN sought to add patents prosecuted by the plaintiff, but Judge Clark thought that searching for prior patents by the plaintiff was something that should have been done at the outset but, again, the chief problem seemed to be that the Court did not believe that the plaintiff carried its burden to show the "good cause" required by P.R. 3-6(b).  Good cause, in other words (mine, not the Court's) requires a pretty good excuse, and the Court didn't believe one was before it.
As noted above, the failure to specifically identify where in the prior art the claims could be found prejudiced the plaintiff standing alone, but Judge Clark went further in his analysis, noting the "pernicious effect" of accepting BSN's argument that simply producing the prior art references put the plaintiff on notice of BSN's invalidity contentions.  "Lawyers who attempted to analyze the possible range of claims against a client would be punished while lazy attorneys would be rewarded. Parties would be encouraged to adopt a
“rolling” approach to infringement and invalidity contentions in the hope of hiding their true
intentions until late in a case. This would thwart the purpose of the local patent rules."
Accordingly, Judge Clark denied the motion.  I'll revise this post if and when the case comes out on Westlaw to add the cite.

Motion for FRCP 35 Mental Examination and Motion to Compel Production of Records Denied

Jackson v. U.S. Kids Golf, LLC, 2008 WL 2078777(E.D.Tex. May 15, 2008) (NO. 4:06CV237)
Judge: Don Bush
Holding: Motion for FRCP 35 Mental Examination and Motion to Compel Production of Records DENIED
Defendant asked the Court to order a mental examination of Plaintiff Charmane Jackson pursuant to FRCP 35 and to order the production of her medical records. Defendant claimed that it was entitled to this discovery because Plaintiff had put her mental condition in issue by seeking loss of consortium damages as well as damages for mental anguish. 
Judge Bush held that the defendant had not shown the requisite "good cause" for a mental examination.  With respect to the request for the Plaintiff's psychologist's records regarding marriage counseling, Judge Bush noted that to waive the physician-patient privilege in Texas, a plaintiff must rely upon the mental condition as part of the claim or defense. Tex.R. Evid. 509(e)(4) & 510(d)(5). Thus, the question was whether Plaintiff had made her mental condition part of her claims. "In Texas," Judge Bush wrote, "a routine allegation of mental anguish or emotional distress-especially in a personal injury action-generally does not place the party's mental condition in controversy. Coates v. Whittington, 758 S.W.2d 749, 753 (Tex.1988). To waive privilege, “[t]he plaintiff must assert mental injury that exceeds the common emotional reaction to an injury or loss.” Id."  Judge Bush held that the plaintiff had not made any extraordinary claims of mental anguish - her reaction to her son's death did not exceed what would be a common allegation regarding such an event, nor were the records requested even relevant to to the claimed mental anguish, as they were marriage counseling records.  In addition, "at this time" Judge Bush declined to find that the plaintiff had  placed her mental condition into controversy such that the marriage counselor's pre-incident records should be disclosed. Of course if the plaintiff attempted to rely on the psychologist's testimony, the records would become discoverable, he noted.

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

Hard to believe it's not Denny Crane...

It's official - having former AG Alberto Gonzalez getting appointed as an assistant to a special master in an Eastern District of Texas patent case lasted as the weirdest thing in the world of federal courts for only a day and a half.  Today it was replaced by news that 9th Circuit Chief Judge Alex Kozinski, who is currently presiding over an obscenity trial in Los Angeles, maintained a publicly accessible Web site featuring sexually explicit photos and videos (although judging by the reputed content, he might have just been saving them for Larry the Cable Guy). 
You just know that David Kelley is kicking himself for not coming up with this on Boston Legal.  William Shatner is reported to be pissed.  

Paralegal fees, dumb laws and good German potato salad

Just received the June 2008 issue of the Northeast Texas Association of Paralegals' Key Note and saw some information I thought might be of interest to readers.  Key Note had - two days before the national press had it, incidentally, a short report on the Supreme Court's June 2 decision in Richlin Security Service Co. v. Chertoff in which the justices unanimously reversed the Federal Circuit's decision (funny how that keeps happening) and rejected all of the government's arguments that the Equal Access to Justice Act limited recovery of paralegal fees to the attorney's cost -- which was lower than the billed rate.  NALA had filed an amicus on the issue, which obviously would be of interest to paralegals, but which I thought might be of interest to readers as well. 
The issue also has some ethics FAQs from the Texas Paralegal Division and a good article on ethics for paralegals, and under the "Dumb Laws" column, notes that in Mississippi it is illegal to teach others what polygamy is, and in Montana it is illegal for unmarried women to fish alone (married women can fish alone except for Sundays).  Also a good recipe for German potato salad (I say good because it requires half a cup of bacon grease, as all good recipes must).

Claims construction opinion

Bridgelux, Inc. v. Cree, Inc., 2008 WL 2325623(E.D.Tex. Jun 03, 2008) (NO. CIV.A. 9:06-CV-240)
Judge: Keith Giblin
Holding: Claims construction opinion

Ream of Paper #4 Opened

One of the things I've told people about my new office is that with a practice heavily weighted towards federal court, where all filings are electronic, we've dispensed with paper files almost completely.  Of course we have CDs of document production and some paper where I've kept working copies of some briefing, but there are no true case "files" in our office, and certainly no file cabinets or shelves - half of one desk file drawer handles what little non-electronic case information there is and the actual "files" are all in electronic form on our server, with what little actual paper comes in our office scanned and discarded automatically.  Our office has a file room, but its shelves hold toys, since we've turned that into my boys' play (and study) room when they come to visit after school.
What brought home to me how unusual that is is this week, when my desktop printer ran out of paper and I had to open a ream of paper and realized that it is only the fourth we have opened in the five months my new office has been open.  That's less than one ream of paper per month, despite having three printers (which also double as our scanners and "copiers" although I honestly can't recall making a "copy" of anything since we've been open).  With the local rules requiring filing online and eliminating the need to serve counsel with copies of the filed documents we just don't have to print anything any more - documents go straight from files to e-mails and e-mails to files or "to be read" folders (and more easily than ever in the latest version of CM/ECF - it is literally one-click downloading of almost any document, including all attachments).
I'll be talking about the paper-less options more in an article on starting a new law office in next month's Texas Bar Journal, but given the interest our office's unique approach to paper I may be speaking on that more often - people certainly are interested in options to save file space and eliminate the cost and inefficiency inherent in paper-intensive operations.  Don't get me wrong - I still use paper - it's just the exception these days - not the norm.