Dismissals With / Without Prejudice

An interesting trend of late in cases filed in EDTX is that a substantial number are ending with dismissals “without” prejudice as opposed to settlements that result in dismissals with prejudice.  I wanted to mention a couple of things I am seeing both statistically and anecdotally, and mention a recent decision that addresses an aspect of this trend, as well as alert readers to some possible upcoming decisions in this area.

Outlining the Contours of Waiver Post TC Heartland

As readers are aware, a lot of pixels have been devoted in recent weeks to identifying when a motion to dismiss for improper venue asserting the Fourco argument pursuant to the Supreme Court’s recent decision in TC Heartland has been waived for failure to assert it when required under Rule 12(b)(6).  A recent report and recommendation by Judge Payne addressed this issue in a specific set of circumstances I had not seen in an order previously.

Lies, Damned Lies and Case Captions

It isn’t unusual for a case’s caption to gradually become dated, reflecting parties that have been dropped, settled or reorganized.  And thus it also isn’t unusual for parties to ask the Court to amend the case caption to replace the names of parties who have passed on with the current ones.  It turns out there’s a problem with that, but also a solution, as a recent opinion points out.

Inequitable Conduct Claim Recommended Denied

It’s sad around the Hub these days, and I’m sure it’s not because our oldest Grayson has officially left home to start engineering school at Baylor, but because Judge Love has recommended granting the plaintiff’s motion for summary judgment on the defendants’ claims of inequitable conduct and unclean hands in this case, leaving the defendant standing beside their truck in the parking garage trying not to completely lose it as they try to go on as if things will ever be the same again.

Metaphorically speaking, of course.

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.


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.