Eastern District of Texas Federal Court Practice

Patent verdict

A Marshall jury in Judge Folsom's court just returned a verdict in the Retractable Technologies v. Becton Dickinson case, 2:07-CV-250.  Patent infringed, not invalid, and damages of $5 million.

47th Annual Conference on Intellectual Property Law - Institute for Law & Technology

Spending today and tomorrow in Plano at the annual conference on IP law put on by the Institute for Law & Technology at the Center for American & International Law in Plano.

This morning's session is focused on patent litigation, and is chaired by Bruce Sostek.  First up was Hilda Galvan on proceedings at the ITC, then SBPS' Clyde Siebman on venue developments in 2009.  Bob Chiaviello gave a "state of the union" on patent enforcement, and currently at the podium (metaphorically) is Ted Stevenson on patent damages, focusing on the entire market value rule.  After Ted we'll hear from Brett Johnson on Markman practice and a federal judges panel with Judges Folsom and Ward from the Eastern District of Texas and Judge Lynn from the Northern District.  (Note: as Judge Folsom was in trial, Judge Everingham filled in for him).

This afternoon's sessions focus on trademark and copyright issues, then tomorrow's will be devoted to patent prosecution and technology, licensing and IP rights.

Motion to Compel Denied - Noncompliance with "Meet and Confer" Rule

Konami Digital Entertainment Co., Ltd. v. Harmonix Music Sys., Inc., No. 6:08cv286, 2009 WL 3448148, *2-*3 (E.D. Tex. Oct. 22, 2009)

Judge: John Love

Holding: Motion to Compel DENIED

Thanks to Robert Matthews with Matthews Patent Law Consulting for alerting me to this recent opinion by Judge Love which came out while I was on vacation, but which deserves immediate mention since it applies the still relatively new "meet and confer" local rule.

Judge Love's opinion denied an accused infringer’s motion to compel a patentee to produce discovery on technologically-related patent prosecution files, to support athe ccused infringers’ inequitable conduct defense, because the accused infringers failed to procedurally comply with the court’s local rules requiring the lead counsel for each side have a meet and confer before filing any motion to compel.

Judge Love noted that the “lead counsel” identified on the certificate was not the same lead counsel identified on the court’s docket.  “At this time, the Court will not address the substantive merits of the Motion because the moving party has failed to satisfy the requirements of the Local Rules. Pursuant to Local Rule CV-7(h), prior to seeking court intervention, lead counsel for the movant must have a personal conference with the lead counsel for the non-movant. Local Rule CV-7(h). The ‘meet and confer’ rule further explains: ‘In the personal conference, the participants must give each other the opportunity to express his or her views concerning the disputes.  The participants must also compare views and have a discussion in an attempt to resolve their differing views before coming to court.  Such discussion requires a sincere effort in which the participants present the merits of their respective positions and meaningfully assess the relatively strengths of each position.’  L.R. CV-7(h).  The parties apparently agree that a telephone conference occurred prior to the filing of this Motion but disagree as to whether the requirements of Rule CV-7(h) and (i) were met, and if not, who was responsible."  In discovery-related motions, the Certificate of Conference must be signed by lead counsel, Judge Love notes, citing L.R. CV-7(I), and going on to write that "[t]he Court sees no reason that the ‘lead counsel’ signing a Certificate of Conference should not be the same attorney that is designated as lead counsel on the Court’s docket sheet. "  Accordingly, Judge Love denied the motion for failure to comply with the rule and instructed the parties to meet and confer and refile if necessary.

The opinion provides some useful (and additional for readers that were not at the recent bench/bar conference at which this topic came up quite a bit) guidance as to the application of the "meet and confer" rule.

Attorney Most Supportive of Paralegals Award

Had a nice surprise on my desk when Jamie and I got back from vacation this week - at their recent Paralegal Day event the Northeast Texas Association of Paralegals voted me the attorney most supportive of paralegals.  Not to toot my own horn, but I'm pretty proud of that award.  I now have a certificate attesting that I am not a jerk to work with.  Well, to be more precise I am not a jerk to work with in comparison to others.  It is definitely a relative thing, I have a feeling...

Motion for Summary Judgment as to Patent Defendant's Defenses and Counterclaims Granted in Part; Antitrust Claims Severed

Fiber Systems Intern., Inc. v. Applied Optical Systems, Inc., 2009 WL 3571350(E.D.Tex. Oct 26, 2009) (NO. 2:06-CV-473)

Judge: T. John Ward

Holding: Plaintiff's Motion for Summary Judgment as to Defendant's Affirmative Defense and Counterclaims GRANTED IN PART

This is a patent case which just had its pretrial conference and jury selection last week.  In response to FSI's infringement claim, defendant AOSI raised eight affirmative defenses and counterclaims: (1) patent invalidity, (2) inequitable conduct, (3) impermissible broadening of claims, (4) unenforceability due to express or implied license, (5) patent misuse, (6) antitrust violations, (7) unfair competition, and (8) fraud and negligent misrepresentation. FSI filed a motion seeking summary judgment as to all of these claims. 

On invalidity, AOSI contended that the patent in suit was invalid on grounds of anticipation, obviousness, and lack of enablement.  Judge Ward granted the summary judgment in part here, knocking out AOSI's defenses of anticipation and enablement (the latter of which AOSI did not respond in opposition), but denied it as to obviousness, noting that while AOSI had not designated an expert on obviousness, it was not required to put on expert testimony to support its claim of obviousness.  AOSI had also argued as a ground of invalidity that FSI impermissibly broadened the scope of its claims during reexamination. For essentially the reasons outlined in the Report and Recommendation filed by Judge Everingham, Judge Ward held that AOSI's defense lacked merit, and FSI was entitled to summary judgment on this defense.

On inequitable conduct, Judge Ward denied the motion, finding a genuine issue of material fact.  Also, because AOSI claimed that it was not alleging express or implied license or patent misuse as affirmative defenses, Judge Ward denied as moot FSI's motion for summary judgment as to these issues.

Finally, Judge Ward noted that AOSI's answer raised counterclaims against FSI for antitrust violations, unfair competition, and fraud and negligent misrepresentation.  He denied the motion for summary judgment on the claim for unfair competition, fraud, and negligent misrepresentation, but found that the trial of the antitrust counterclaim in this patent infringement suit posed a significant risk of confusion for the jury, and accordingly sua sponte ordered a separate trial of AOSI's antitrust counterclaim. As such, FSI's motion for summary judgment on this counterclaim was carried with the case. 

William Wayne Justice (1920-2009)

Former Eastern District of Texas chief judge William Wayne Justice passed away yesterday at his home in Austin.  Judge Justice was appointed to the Eastern District bench in 1968 following several years as U.S. Attorney for the district.  Judge Justice officed in Tyler for the first thirty years of his career on the bench, then moved to Austin after taking senior status to be closer to his daughter.

His accomplishments in over forty years on the bench were many, as detailed in the obituary in today's Austin-American Statesman.  It's a good read, and will give those who didn't know much about the Judge a chance to see what all the fuss is about.  My favorite quote about Judge Justice (and I can just see her saying it with a twinkle in her eye) is from my former professor the late, great Barbara Jordan, who once said that Judge Justice "helped officials in Texas state government see their duty clearly."  I think the judge probably liked that one.

Patent Case Transferred

Prust v. Apple Inc, No. 2:09cv00092 (10/7/09)

Judge: T. John Ward    2009-10-07

Holding: Motion to Transfer Venue GRANTED

Short and sweet result for defendant Apple.  Judge Ward wrote that "[t]he plaintiff is in Minnesota, the defendant is in the Northern District of California, and the non-party witnesses are in Minnesota, California, Missouri, Illinois, New Mexico, Colorado, Montana, Georgia, and Florida. The plaintiff has failed to show greater convenience or a sufficient connection to this District that would warrant denying transfer."

Motion to Dismiss Resolved in Patent Infringement Plus Case

Ola, LLC v. Builder Homesite, Inc., 2009 WL 3190443(E.D.Tex. Sep 29, 2009) (NO. 2:08-CV-324-CE)
Judge: Chad Everingham
Holding: Motion to Dismiss GRANTED in part and DENIED in part

Lots of holdings in this opinion by Judge Everingham in a case which involves allegations that the defendants infringed patents, violated the Illinois Trade Secrets Act, breached a contract, committed common law fraud, and engaged in unfair restraint of trade. 

The Court held that the complaint adequately stated claims of joint enterprise liability, was sufficient to state a claim for patent infringement (in part because the court had not yet construed the relevant terms), and was sufficient to state a claim under the ITSA as well as for unfair competition.   Judge Everingham granted the motion to dismiss the breach of contract claim against all but one defendant, as well as the fraud claims, holding that they were preempted by the ITSA.  Finally, the plaintiff admitted that it inadvertently forgot to include claims against three of the named defendants and sought and was granted leave to replead to fix that.

Class Action Against Trustee Wells Fargo Certified

Clower v. Wells Fargo Bank, N.A., --- F.R.D. ----, 2009 WL 901486(E.D.Tex. Mar. 30, 2009) (NO. 2:07-CV-510-TJW)

Judge: T. John Ward

Holding: Motion for Class Certification GRANTED

Plaintiffs as beneficiaries of irrevocable or testamentary trusts sued Wells Fargo, as successor administrator of trusts, alleging that it was acting without authority in administering trusts, and asserting claims for constructive fraud, conversion and trespass to title. Plaintiffs moved to certify a class action that would encompass other trusts administered by bank that shared the same trustee history.  Plaintiffs seek removal of Wells Fargo as the trustee of all of these trusts, as well as actual damages for trustee fees, commissions and other charges collected by Wells Fargo during its administration of these trusts.

Judge Ward's order goes through the various requirements for class actions under FRCP 23 and concludes that certification is appropriate, holding that "the Court is of the opinion that a class action, rather than innumerable individual actions, is the better method of litigating this dispute."

Madeleine Segal Hall (2009)

Madeleine Hall, widow of the late U.S. District Judge Sam B. Hall, Jr., for whom the Marshall federal courthouse i    s named passed away Tuesday morning at home with her three daughters.  Visitation is this evening from 6-8 pm, and funeral services will be tomorrow morning at 11 am at Eastern Hills Church of Christ.

I started to say that Judge and Mrs. Hall were married while I clerked for him, but of course they'd been married a long time before that raising their three daughters and getting Judge through an unsuccessful run for Congress in 1962 (the genesis of the Marshall Division, by the way - interesting story), and a successful one in 1976 (and four more after that), which was followed by his appointment to the federal bench in 1985, where he served until his death in 1994.  Her influence was felt at the courthouse on a daily basis when I was a law clerk - as soon as Judge Hall came in we could tell if Mrs. Hall was up when he left the house, because if she wasn't, he would be wearing one of those god-awful powder blue Congressional suits from the '70's with the wide lapels and matching shirts and ties with knots the size of my fist.  If she was up, on the other hand, he invariably looked dapper in a sportjacket and slacks with a tastefully patterned tie.  (Unless he'd been at the farm - then he was in jeans, a scruffy jacket, and that silly hat, but nobody could ever do anything about that).  There's probably an observation in there somewhere about Sam and Madeleine, but I'll leave that for those that knew the Halls better than I.

Mrs. Hall's contributions to the community in Marshall are many, and she will be missed by far more than just her family and close friends.  It was always a treat seeing this tiny china doll of a grandmother on the square at lunch and reporting to her on how Jamie and the boys were doing, and I will miss that very much.  Anyone that knew her would invariably describe her as a great lady, and there is nothing I can add to that, other than to say that if Jamie and I had ever been blessed with a daughter, I could have asked for no more than to have her grow up to be like Madeleine Hall.