Yet Another Decision on Assignor Estoppel

Assignor estoppel is an equitable doctrine that prevents one who has assigned the rights to a patent (or patent application) from later contending that what was assigned is a “nullity.” In addition to the estopped assignor, the doctrine may prevent parties in privity with the assignor from challenging the validity or enforceability of the patent.  Courts have applied the doctrine to invalidity challenges based on novelty, utility, patentable invention, anticipatory matter, and the state of the art.

This was the issue presented in a recent EDTX case in which a plaintiff plugged the doctrine into a handy summary judgment template in an attempt to prevent the defendant from challenging the validity of the patent in suit.  Let’s see how that worked out.

600 Camp Says Remand from the Supreme Court “best vetted and addressed first by the district court”

A district judge (not from the EDTX) once explained to an audience at a seminar that the court of appeals could reverse him, but “they can’t make me read it.”

The Fifth Circuit seemed to agree with Judge Hanen’s sentiment yesterday, deciding that after the Supreme Court granted certiorari, vacated its judgment, and remanded a case to it for further consideration in the light of its recent opinion in Moore v. Texas, 137 S. Ct. 1039 (2017), “[i]t appears that the remand from the Supreme Court is best vetted and addressed first by the district court.” Accordingly, it vacated the district court’s judgment and remanded the case to it for further proceedings.

14-70001-CV1

Post-trial accounting (escrow, royalty rate & interest calculations)

Assume a jury finds infringement – which on recent numbers happens about half the time a patent case goes to trial.  Then assume that the patent is still in effect and the jury was not asked to determine future damages.  In recent cases following the general abolition of injunctive relief in most patent cases, the Federal Circuit has instructed trial courts how this is supposed to work. In a recent decision arising out of a verdict in favor of the patentee in a medical device case an EDTX judge applied this caselaw and set forth how it worked out, including the creation of an escrow account, the appropriate royalty rate for future sales, as well as issues of prejudgment and postjudgment interest.

Sufficiency of Contentions Referencing Representative Products

One of the key features of patent litigation in many of the patent-heavy districts is mandatory disclosure of detailed infringement and invalidity contentions.  The EDTX has used such a procedure since 2000, when Judge T. John Ward adopted the Northern District of California’s local patent rules for cases in his court, and the rules were adopted district-wide several years later. One of the common issues regarding contentions is when they are sufficient, and specifically when a party can chart one “exemplar” product and have that chart cover others.  This was the issue presented in a recent decision by Judge Roy Payne in Marshall.