Congratulations Alan Albright – USDJ – WDTX – Waco Division

If readers will permit the brief digression, I wanted to congratulate Texas’ newest federal district judge, Alan Albright of Austin, who was confirmed by the Senate last week for the vacancy in the Waco Division of the Western District of Texas.

I first met Alan the fall of 1986 when I moved to Austin to start graduate school and worked days as a runner delivering papers at his firm McGinnis, Lochridge & Kilgore.  They had this newfangled “facsimile” machine down on the ninth floor, but since you could count the number of offices in Austin that had one it could send or receive from on two hands, the only way to deliver papers between offices was to have one of us drive (or walk) them to where they needed to go.  Seriously.  Anything that had to get somewhere faster than U.S. mail we hand carried.

Alan had just joined the firm recently as well, after clerking for Judge Nowlin in Austin, and was a ball of fire, all starched shirts, suspenders and that goofy looking Saab. But he was always a great guy, even to a mere runner like me.  We’ve run into each other numerous times through the years on patent panels in Austin and Horseshoe Bay, and he’s tried cases here in Marshall, so he knows us up here behind the pine curtain.  And he has a son named Grayson as well, so you know he has sound judgment.

The Waco courthouse is also a special place. I interned there for Judge Smith 27 years ago while in law school, so my first experience with these bizarre things they don’t teach you about in law school called “motions” was in what will soon be Judge Albright’s chambers.  I had a chance to visit with Alan a few months back about Waco and told him a few things that make it special to my family, and I’m sure it’ll be special to his as well.  (He already knows he needs to switch to Dr Pepper).

Congratulations, Alan.  We’re proud of you and for you.

VirnetX – JMOL, MNT, enhanced damages & attorneys fees rulings

A trip to the West Coast for a mediation kept me from posting this earlier, but Judge Schroeder’s unredacted opinion in the VirnetX case resolving the postverdict motions is now out, and provides the latest analysis on many issues of interest to practitioners, including most notably enhanced damages, as none were awarded.

VirnetX Litigation Slouches Towards Another Appeal

Apologies to Yeats, but it is referred to as the “most thoroughly pillaged piece of literature in English literature”, so piling on is permitted. Judge Schroeder entered another final judgment in the VirnetX case last week after denying defendant Apple’s most recent JMOL and motion for new trial. The order itself is filed under seal for the moment, but will be unsealed, less any needed redactions from the parties, on September 10. VirnetX – final judgment VirnetX – sealing order

Emergency motion practice

An issue that sometimes comes up in the at times frenetic world of complex civil litigation is when it is appropriate to caption a motion as “emergency”.  A complete discussion of the topic is beyond the scope of this post, but there is a data point that’s worth mentioning.

Patent jury verdict; indications on submission of Section 101 issues

A Marshall jury in Judge Gilstrap’s court deliberated through 6:15 pm Friday evening in this case, came back for two hours Saturday morning, and finally completed deliberations yesterday morning, returning a verdict in favor of the plaintiff for approximately $10 million.  I wanted to address in this post a couple of issues that aren’t in the major media coverage of the case, but might be of interest to practitioners.

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.