Four GD’s, two SOBs and one f-bomb comes to …

I just spent the last two days in depositions that were a model of decorum and professionalism by all involved, which reminded of one that wasn’t.

Once upon a time an EDTX judge was presented with a situation involving the use of coarse and profane language by a lawyer in a deposition.  (No, it didn’t involve Joe Jamail).

After considering all facts surrounding the deposition, arguments of counsel, and the attorney’s statement at the show cause hearing, the judge imposed a fine for the abusive behavior at his deposition.  But it’s how the fine was calculated that is of interest …

Findings and Conclusions on Section 101 Defense

A Lamkin next to a big old hairy Section 101 motion for summary judgment

Section 101 defenses of claims of lack of patentable subject matter can come up all many stages of the case – they can be the first rabbit out of the hat after a case is filed (a draft motion served before an answer is referred to as a Lamkin), during the pretrial phase of a case as a motion to dismiss, for judgment on the pleadings or for summary judgment, at trial (according to the CAFC) or even after trial.  That was how it came up in the attached case, where it was resolved by findings and conclusions after a trial on the merits of the infringement and invalidity claims.

Section 101 defense raised after trial


February 2 Marshall/Tyler Patent Scheduling Conferences & Larger Filing Trends

The most recent batch of bimonthly patent case scheduling conferences was held earlier this week in Marshall, and as usual I have a brief rundown of the results compared to the last conference at the end of November, as well as the ones in September and July for longer term trends.
I am also comparing the results to the cases heard a year ago, since that tells us a lot about filings trends and how they’re affecting the docket.  The trend also bears some relating to recent data from other sources that I thought might be of interest.

Andrei Iancu Confirmed as USPTO Director

The U.S. Senate confirmed Andrei Iancu as USPTO director earlier this week in a 94-0 vote.

Several years ago Andrei and I were on a panel in Dallas discussing EDTX patent juries, and he also authored an article on the real reasons the Eastern District of Texas draws patent cases – which he discussed at length during our panel discussion.  I thought subscribers might be interested in the transcript of the former, and a copy of the latter, so I have attached copies below.

Congratulations, Andrei – we’re glad to have you in place.  Now fix everything.

Beyond Gilstrap: 5 Judges To Watch In Patent Litigation – Law360

Yesterday’s release of the Lex Machina 2017 patent litigation survey was accompanied by numerous articles based on its data, since LM typically releases embargoed copies of their report to news outlets (including me) ahead of time.

One of the more useful articles I saw yesterday was on Law360 by Matthew Bultman Beyond Gilstrap: 5 Judges To Watch In Patent Litigation, and I thought it deserved some brief analysis.

Motion Trends After TC Heartland: What’s the Relief When Venue is Improper?

Lex Machina’s 2017 patent litigation year in review which is out today, says that “[w]hile the odds of success in E.D. Tex. for a motion to transfer filed prior to TC Heartland were roughly even, afterwards the grant rate increased to 75%” and notes that motions decided almost doubled in the period 180 days after compared to 180 days before (Report at p. 9).  Incidentally, some of these numbers are not new – the grant rate for motions to transfer in EDTX has hovered at 50% for the past three years.  But this puts a number on both the increased numbers of granted motions, and the increased percentage of grants.

Interestingly, it notes, as shown in the above graph, that this pattern was repeated in other districts – the grant rates went from 54% (51% in EDTX) to 74% (75% in EDTX), with the only statistically significant difference being that the number of motions decided in other districts increased even more than they did in EDTX, illustrating a little-reported effect of TC Heartland – it changed the basis for venue for patent cases across the nation – not just in EDTX.

The report doesn’t distinguish between motions to transfer under Section 1404, which was by far the most common motion to transfer under 1404, and motions to dismiss or transfer based on improper venue, which were more common after TC Heartland changed the law on patent venue, but there is one important distinction between the two and that is the relief granted.  While the grant of a motion to transfer is a transfer to a district that is “clearly more convenient”, the relief on a motion to dismiss or transfer for improper venue can be transfer, or it can be simply dismissal.

This is the decision presented in a recent case where an EDTX court considered whether a case where venue was improper should be transferred, or dismissed.

Current Activity at the Judicial Panel for Multidistrict Litigation (MDL)

A few days ago I wrote a post that characterized the Judicial Panel for Multidistrict Litigation (MDL) as the perennial bridesmaid in patent litigation.  The reason why is that every time there is a major development that affects where patent cases can be brought, someone will suggest that the remedy will be for more patent cases to be handled in MDL proceedings.

I wanted to note some useful recent commentary on what the MDL panel is up to these days, and whether there are indications that MDL might be becoming a realistic option, either in patent litigation generally or Hatch-Waxman patent cases specifically.

Crowdsourcing Evidence Paper

I am presenting a paper “Evidence: Getting It In” at the State Bar’s 31st Annual Advanced Evidence and Discovery seminar in April and May in Dallas and San Antonio, respectively, and am already hard at work updating my standard materials on evidence. The problem is that the other speakers have taken some of the juicier bits and pieces of my evidence stories, so I am having to dig for tips and pointers that are a little less obvious.

So let’s try a little crowdsourcing here – readers, if you have any good evidence stories or tips, please shoot them to me at I’ll credit you in the paper and online.

Judicial Orders Providing/Encouraging Opportunities for Junior Lawyers

One of my favorite sayings is that “the work teaches you how to do it.”  Most of the time I think of that it’s when I’m trying to improve my woodworking or modelmaking skills, or teaching one of the boys how to do something – as with Parker here learning how to drive screws in the workshop using a socket screwdriver.  Understanding how it works isn’t the same as learning how to do it so that at the end of the operation you, the screw, and the workpiece are all still on speaking terms.  And in my experience the best way to learn is to take a handful of screws and just start learning how best to insert them while Dad is looking the other way.  It’s not hard to do – but initially it’s hard to do right.

One of the ways that translates in the practice of law is the overriding importance of trying cases before a judge and jury as an indispensable tool in developing as a trial lawyer.  I will never forget how suddenly clear the whole case became after my first solo trial in district court.  As I was packing bags after obtaining a win on liability but a loss on the amount of damages, I realized that the case wasn’t about all the things I had been worrying about, and was instead about just a few things – witness credibility being at the top of the list, but that’s a different post.  But I’d never have realized that if I hadn’t actually tried the case and seen firsthand in a case I prepared what mattered and what didn’t.  Those don’t just teach trial skills – they teach lawyers what matters in discovery and what doesn’t, and that makes future cases far easier and less expensive to develop.  We’ve all seen discovery fights where both sides are burning enormous resources over obtaining documents that the more experienced lawyers know will never see the light of day in court, nor influence the case’s settlement value.

In recent years, things have gotten decidedly worse for younger lawyers.  Fewer and fewer trials are taking place, and even hearing slots to hone argument skills before a real judge are scarce.  In an effort to remedy that for next gen lawyers, groups such as the ChIPs Next Gen Lawyers Committee are working to encourage opportunities for junior lawyers.  ChIPs is a nonprofit corporation dedicated to advancing women at the intersection of law, technology, and regulatory policy, and its Next Gen Lawyers website contains a summary of judicial orders providing or encouraging opportunities for junior lawyers, including orders from the Eastern District of Texas.

These orders get across what we hear from many judges – they are willing to give young lawyers a chance to argue motions and are open to a number of different ways that that can be done.  The orders show a wide range of tactics and incentives that help lead lawyers and clients provide younger lawyers with the opportunity to take speaking roles at hearings and trials.

The summary document can be downloaded here:


or accessed here, where you can also find copies of the orders.

If you are aware of additional orders or initiatives, please email

ChIP’s Next Gen Committee consists of:

  • Kathi Vidal (Lutton), Fish & Richardson (Lead)
  • Judge William Alsup, Northern District of California
  • Natalie A. Bennett, McDermott Will & Emery
  • Judge Christopher J. Burke, District of Delaware
  • Isabella Fu, Microsoft
  • Judge Paul Grewal, Northern District of California
  • Jessica Hannah, Apple
  • Karen Keller, Shaw Keller
  • Noreen Krall, Apple
  • Rachel Krevans, Morrison Foerster
  • Judge ​Barbara M. G. Lynn, ​Northern District of Texas
  • Julie Mar-Spinola, Finjan Holdings, Inc.
  • Sonal Mehta, Durie Tangri
  • Judge K. Nicole Mitchell, Eastern District of Texas
  • Judge Jimmy Reyna, Court of Appeals for the Federal Circuit
  • Gabby Ziccarelli, Blank Rome LLP