TC Heartland – analysis of effect on EDTX docket and likely responsive strategies

Since 1948, venue in patent cases has been determined by 28 USC Section 1400, which provides that any civil action for patent infringement may be brought in the judicial district where (1) the defendant resides, or (2) where the defendant has committed acts of infringement and has a regular and established place of business. In 1990, the Federal Circuit interpreted Congress’ rewriting of a related venue statute to change the meaning of “resides” from a corporation’s state of incorporation to anywhere the company was subject to personal jurisdiction.  Congress later broadened that provision to cover any entity.
Today the Supreme Court set aside that interpretation and held that for domestic corporations only, “resides” means only the state of incorporation.
The practical effect of this holding will be to eliminate the first option for patent venue in most cases for defendants that are domestic corporations, since only so many cases can be filed in the District of Delaware, which is where most domestic corporations are incorporated, and require that patent cases be filed only in districts where a domestic corporation “has committed acts of infringement and has a regular and established place of business.”
I wanted to explore what the decision means for the EDTX docket in a little more detail.

284/285 Time: Orders on Motions for Enhanced Damages and Attorneys Fees

In an average year about fifteen patent cases are tried in the Eastern District of Texas.  Statistically, about half are complete defense verdicts, and of the remaining ones, only a few have willfulness findings, so it’s a rare case that presents both a Section 284 claim for enhanced damages and a Section 285 claim for exceptional cases status. When we do have them it allows analysis of which conduct supports (or doesn’t) an award, since courts try to ensure that a party isn’t inadvertently penalized twice for the same conduct.  But a recent case out of Beaumont presents both, and provides some useful insight into a trial court’s calculation of enhanced damages, as well as the more frequently presented question of whether a case is “exceptional” for Section 285 purposes. 

“Trial Procedure” – 2017 TexasBarCLE Federal Court Practice seminar

I will be speaking at next week’s Federal Court Practice seminar at the Texas Law Center in downtown Austin on the subject of trial procedure (click through for the paper).  I just realized that the seminar will be the subject of a live webcast, so if you’re interested in picking up 6.25 hours of CLE (including two hours of ethics) click here.

Topics include:
  • We’re Not in State Court Anymore – Navigating the Differences Between Texas State and Federal Court Practice
  • Service of Process, the Answer and Extraordinary Remedies
  • Pleadings
  • Removal and Remand
  • Dispositive Motions
  • Clerk’s Office Resources
  • Federal Rules Update
  • Federal Judges Panel
  • Trial Procedure (okay, I’m a little biased)
  • Sentencing Guidelines
  • Transitioning from Trial to Appeal: Post-Trial Motions

Again, click through for the paper, and I’ll add the slides when I get them updated.

Dismiss/Stay/Transfer a Case Involving Deer?

Deer waiting to register.

This is a case involving claims by the North American Deer Registry against the company it retained to process deer genetic information.  The defendant sought to:

  • dismiss the complaint
  • compel arbitration
  • transfer venue; and
  • stay the case.

Judge Mazzant denied them all.  On the assumption it had something to do with the law and not just Texans’ overarching interest in all things deer, I have analyzed the rulings.

Motion to Strike Expert Report Portions That Were Outside PICs Granted

Much like this photo of our twins after seeing their first Broadway show last month, there’s content here to make you both happy and sad.

First, have you ever been frustrated looking for an order to give that obnoxious partner/associate that wants to file a motion to strike something because it’s a few hours late?  Well, click through and the Court’s haiku-like resolution is yours to embrace.

The Court declines to do so.

[Defendant] has not suffered any prejudice.

But there’s substantive information in this order granting a motion to strike portions of a plaintiff’s expert report because they are different than what was in their infringement contentions that’ll put a smile on your face.