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.  

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.

Estoppel & Non-Petitioned Grounds

The Federal Circuit has recognized that § 315(e) estoppel does not attach to petitioned grounds not instituted by the Patent Trial and Appeal Board (“PTAB”).  The Federal Circuit has not addressed, however, whether § 315(e) estoppel attaches to non-petitioned grounds. The issue for many courts, therefore, is whether the plain language of § 315(e)(2) suggests that estoppel does or does not apply to non-petitioned grounds—grounds that a party failed to raise in an IPR but reasonably could have done so. A recent pair of EDTX opinions from a magistrate judge whose conclusion was later affirmed by the district judge provides an answer, and indicates the answer in other EDTX courts as well.


Cases involving injunctions in patent cases are rare because injunctions are rare.  Preliminary injunctions prior to a determination on the merits were analogized by one EDTX judge to “the sun rising in the west” (seriously, we were on a phone hearing and I was thinking ‘I’m going to steal that’). And injunctions following a determination on the merits are also rare because so few cases get that far, and of those that do, not many can satisfy the standards following eBay. So this order provides some rarely seen judicial analysis in this area.

Motion to Strike Untimely Claim Construction Positions Granted in Part

The thing about patent local rules is that they often run contrary to the procedures established in the FRCPs.  The FRCPs often work more like a funnel, only gradually narrowing and restricting parties’ ability to change their contentions and positions as the case proceeds.  Didn’t get things just right in your pleadings?  Need to change a position set out in a rog response?  No problem (usually).

Instead, as even the earliest cases interpreting the EDTX patent rules’ predecessor, the ND Cal’s patent local rules stated, and the Federal Circuit later acknowledged, the rules permissibly provide a precise timeline for parties to disclose their infringement, invalidity, and claim construction positions “specifically to require parties to crystallize their theories of the case early in the litigation so as to prevent the shifting sands approach to claim construction.”   O2 Micro, 467 F.3d at 1364 or thereabouts.  Making changes later usually requires a heightened showing – something FRCP 15 would be horrified at, but which is well within courts’ discretion in managing these complex cases.

Of course that necessarily creates a new form of satellite litigation over the timeliness of proposed changes.  The other day I posted on the issue arising in connection with a request to amend invalidity contentions, and this recent order addresses the same question when it comes to claim construction terms and positions.

Bifurcation – what it is, and why you’re not getting it

An issue that comes up from time to time is whether a trial should be bifurcated into different proceedings.  In a patent case, a court might try invalidity separately before infringement, or invalidity and infringement, and then the issue of willfulness, etc.

The attached case presents the issue of whether an issue of corporate veil piercing/alter ego should be tried before the rest of the case.  The attached order resolves the motion, but more importantly provides the relevant analysis for such requests under Fed. R. Civ. P. 42(b).

Happy Fourth of July

“It has ever seemed strange to me, how weapons and warships – the tools of death – are the loveliest things man has made.”  Poul Anderson, The Sign of the Raven. This lovely view of the Lexington rounding Ford Island in Pearl Harbor en route to her final refit in March/April 1942  is a fitting image to celebrate the Fourth of July this year.  Even if you don’t make it your screensaver. Happy Fourth, everyone.

2018 EDTX Bench/Bar Planning Committee Meeting

The annual meeting of the Posse took place last night and today in Frisco/Plano/Arlington to plan the upcoming 2018 bench/bar conference.  The Arlington trip was to AT&T Stadium, which will be the site of the Thursday night dinner.  The exact schedule isn’t set yet, but will include locker rooms visits, so of course we checked out those as well.

We’re actually in the planning meeting as I type this, so if you have suggestions for topics or speakers, send them along.  The schedule will be worked on over the next several weeks, so comments are welcome anytime.