The Irises are Blooming in California

Interesting order out of the Northern District of California Monday. The district court granted summary judgment, and then granted defendant’s motion to join plaintiff’s founder/inventor as a necessary party and pursue attorney fees against him under 35 U.S.C. § 285. Noting that the plaintiff did not appear to have assets from which an award could be paid, the Court found that “[g]iven [the founder’s] controlling shareholder power and his status as the only person from [plaintiff] who is involved in this litigation, the Court finds that [his] activities may potentially subject him to liability for attorneys’ fees and that he should be joined in this action.” The cites to Iris Connex begin on page 14, and build to a climax around page 20.  Unlike that case, the only issue presented here was whether the third party should be joined, and not whether he was liable, if so, whether he should be held jointly and severally liable with the plaintiff, and what the amount of fees should be.  Those issues are yet to be briefed. cand-5-15-cv-01238-442

Mandamus Denied on Venue Waiver Opinion

I posted a few weeks ago on an EDTX case finding an objection to improper venue waived in a fairly unique set of circumstances.  Yesterday the Federal Circuit denied a petition for a writ of mandamus as to the district court’s ruling affirming the magistrate judge’s decision.  In its order, the Court found that the “exacting standard” for mandamus had not been met, and explained why.

Docket Navigator’s Patent Litigation annual report

For those with Docket Navigator Plus subscriptions, DN’s Patent Litigation Annual Report for 2017 is out and includes Top law firms and attorneys Top patentees and patent challengers Top courts and judges Litigation activity overview Updated statistics on the PTAB New statistics on the effects of TC Heartland I’m still working my way through the mass of data – it usually takes me at least a week, and that’s if I don’t have a trial going on, but it provides some useful observations on, for example, rulings by district, and pre and post-TCH rulings on venue issue.  

Amending Contentions to Add Products and DOE arguments

Orders passing on motions to amend infringement or invalidity contentions are always of interest, since you want to know which fact situations will and won’t permit contentions to be changed.  In a recent case the court granted the plaintiff’s motion for leave to amend its contentions to add additional allegedly infringing products and doctrine of equivalents (DOE) arguments based on deposition testimony obtained in the case.

Motion for Summary Judgment on Release Defense Granted

A release defense exists where, for example, a patent holder licenses its patent to a manufacturer.  The manufacturer is released from future claims.  If the agreement extended to the manufacturer and its customers, the customers would have a license defense against the patent holder.  So, for example, let’s say Wile E. Coyote licenses a manufacturer of avian shoewear and its customers.  His claims against the Roadrunner for selling the manufacturer’s shoes to his feathered friends would be released as well. This was the situation presented in a set of cases set to go to trial Monday week. This morning the Court granted the motion, which would have the effect of eliminating the plaintiff’s claims against other manufacturers’ products arising out of their use of parts from the original licensed party.

Preliminary injunctions & seizure under the DTSA

Today appears to be former employee day, topped off with the first seizure order I’ve seen under the still relatively new Defend Trade Secrets Act (DTSA), which is what we used to call UTSA, or TUTSA or TTSA back when it was common law or Texas statutory law.  In this case, a former employee is alleged to have taken the company’s trade secrets.  Judge Mazzant authorized seizure of a laptop belonging to the company in the employee’s possession, but the laptop couldn’t be found, which set the stage for the injunction proceeding as well as additional excitement for the defendants’ electronic devices.

… but her emails

You know those cases where an employee leaves the company and after being sued by the employee the company discovers that some things happened to documents relating to the claim?  This is one of those cases, and the aspect we’re looking at is the motion for sanctions arising out of the alleged destruction of documents alleged by be relevant to the claims by the former employee.

More forum selection in criminal cases – 5th Circuit approves prosecutors’ filing in “center of commerce” in EDTX

On Monday I noted that the EDTX is a venue of choice in significant drug smuggling cases arising out of seizures on the other side of the Galapagos islands.

Coincidentally, on that same day the Fifth Circuit released another opinion affirming prosecutors’ right to select an EDTX venue for a false statements case where the alleged lie took place in Eastern District of Texas, was mailed from the Northern District of Texas, and the agency received the document in Colorado.   This underscores a fact familiar to EDTX practitioners – there are a lot of criminal cases that could have been filed in the Northern District of Texas or elsewhere but are instead filed in the Eastern District, for reasons that are beyond the scope of this post.  And the Fifth Circuit has something to say about that, as I explain.