Federal Circuit affirms EDTX “stop instruction”

The conditioning of a jury question on an affirmative answer to a prior question is called a “stop instruction” because it explicitly tells the jury to “STOP” if it found “no” to the prior question.

A common example is an instruction to the jury not to answer a question asking if the patent claim is invalid if it just answered that the claim is not infringed.   That isn’t the case in all trials – if it were then a no claims infringed / no claims valid verdict wouldn’t be possible, and most years that is either the most or the second most common single verdict locally.  And it’s the most common defense verdict, certainly – for example in 2017 of the five noninfringement verdicts where invalidity was also submitted, the jury found the claims invalid in four. (It also found the claims invalid in a fifth case where the claims were infringed).

Last week the Federal Circuit addressed this issue in a case from Judge Gilstrap’s court and affirmed the court’s use of – and later enforcement of – the “stop instruction” under the interesting facts of that case.

Exceptional Case Finding Sought After Summary Judgment of Noninfringement

The defendant in this case won a summary judgment of no infringement and asked the court to declare the case exceptional under 35 U.S.C. § 285 and award $700,000 in attorneys’ fees.  The court’s resolution of the motion is yet another data point showing what conduct by a serial filer/bulk filer/ high volume filer is sufficient to trigger liability under Section 285. 

Archaeology, Motions for Reconsideration and Kinkeade the Dog

One of my interests is archaeology (which isn’t hard to tell, looking at the picture of me coming out of the Great Pyramid a few years back), and one of the things I’ve noticed that makes some digs more complicated is when the the language is also foreign.  Put simply, it’s easier and quicker for English-speaking archaeologists to understand the contents of a dig site in Colonial Williamsburg or London because to the extent they uncover writing, it’s relatively easy to understand what it says and means.  That’s not necessarily the case when dealing with medieval sites, and gets progressively more difficult when the work moves to ancient sites where the language require special expertise.
Patent litigation sometimes has a similar characteristic when studying procedural rulings because the significance of the facts and the conduct at issue may not be immediately clear to nonpatent lawyers – and even the rules at issue are different.  As NDTX Judge Ed Kinkeade (shown here with Kinkeade the companion dog – it’s a long, but heart-warming story that he would like you to read) is fond of saying, patent litigation is a little like Lord of the Rings because it has its own language, with its own creatures – trolls and elves and such.
Thus as entertaining as many of us find procedural rulings in patent cases, it’s sometimes easier to extract a usable ruling from a nonpatent case separated from the technical jargon and patent rules.  That’s the case in this ruling on a motion for reconsideration by Judge Amos Mazzant.  Who does not, to date, have a companion dog named for him, much less a picture with Roger Staubach, Tom Brokaw and a dog on the field at a Dallas Cowboys game either (I was there when Judge Kinkeade appeared on the 50 yard line holding a dog and I thought I had only had one beer at the time).  But on to the ruling.

Hatch-Waxman Cases, MDL Panels & Stays

While you’re enjoying Parker’s perfect snow angel from Tuesday, I wanted to note that the segment of patent litigation that was affected the most significantly by TC Heartland was pharmaceutical cases, and as I discussed in my paper presented in November, one of the potential solutions to the additional venue obstacles is multidistrict litigation (MDL) proceedings.

One recent EDTX case indicates that that perennial bridesmaid in search of a wedding may actually be approaching at least one altar.

The “Vindicator” of Infringement Contentions

Thought I wouldn’t be able to tie a patent case post to yet another aircraft from the Naval Aviation Museum, didn’t you?  Well, you’d be wrong.

Parker is pictured next to a spectacular restoration of an abysmal combat aircraft from World War II – the SB2U Vindicator dive bomber.  The Vindicator was state of the art when it joined the US carrier fleet in 1937, painted up all pretty with chrome yellow wings and white tails (carrier air groups were color coded back then, meaning that these are Saratoga aircraft, although on the Enterprise) here in that 1940 Fred MacMurray classic Dive Bomber, but by 1942 it was hopelessly outclassed and had been replaced by the SBD Dauntless.  Its last combat action was as part of a hand-me-down to a Marine unit at the Battle of Midway (filmed by Hollywood director John Ford at left), where ground crews had to use adhesive tape from the infirmary to keep the fabric on the wings from peeling off.  The aircraft’s performance was so awful that pilots took to calling them Vibrators or  Wind Indicators.

So what does this have to do with infringement contentions?

You know those truly awful contentions you sometimes get where you can’t tell what the plaintiff is contending, and the court grants the motion to strike and they replead and it still isn’t clear, and it’s hundreds of pages of completely unintelligible text?  These Vindicator-type contentions are what this case is about, and thankfully, it comes with an explanation of what the purpose of infringement contentions is, what not to do when an issue is raised whether they are compliant, and what relief you might be able to get when confronted with them.


One of my favorite parts of the day is seeing what the appellate lawyers at #appellatetwitter are up to.  They may be getting medieval on each other about the one space versus two controversy, the Oxford comma, or their special private brand of soft porn – font selection.

Recently, appellate lawyer Jason Steed made himself very popular by making mugs for the #appellatetwitter community.  In a scene reminiscent of the run on Beanie Babies the #AT community snapped up the first run, requiring a second in a stylish contrasting color, shown here seductively posed next to a dog-eared copy of a Bluebook.  (Stop and think about the work that would make a Bluebook dog-eared. On second thought, don’t).

I bring this up because individual subscribers will be seeing a package in the mail the next couple of days as a little first anniversary present for the new weblog.  I hope you like it.