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.

Triable Issues in Section 287 defenses

Reader: There is no way you can connect pictures of a sunken aircraft carrier’s planes to damages defenses in patent cases.

Me: Hold my beer.

The discovery of the wreck of the old Lexington (CV-2) sunk at the Battle of the Coral Sea was almost an anticlimax after the wreck was found to have dozens of nearly perfectly preserved aircraft that had apparently floated off the carrier’s flight deck as it sank.  Most notable were several TBD Devastator torpedo bombers and F4F-3 Wildcat fighters in part because even after 76 years at the bottom of the Pacific the aircraft still had nearly pristine … markings.

In patent cases, whether or not products were marked can have a major effect on the recoverable damages.  And in a way not really at all similar to the way that submersion for 76 years at the bottom of the Pacific didn’t erase the Felix the Cat insignia on the F4Fs, the facts of how products were marked can make damages recoverable, or at least shift the burden under Arctic Cat.

This recent decision provides another useful analysis of when the burden was successfully shifted, and when there is a triable issue as to whether Plaintiff provided actual notice under § 287 before the lawsuit.

Message from State Bar of Texas re: need for attorneys’ help on Texas’ southern border

Ed. note: Today is my friend Tom Vick’s last day as president of the State Bar of Texas, and he began it with a message to all Texas attorneys about events on the border that I wanted to reproduce in full.

Dear Member,

I am writing with a quick update on the recent events occurring on our southern border. Although the Trump administration signed an executive order to end family separations, the need for volunteer attorneys remains strong—particularly Spanish-speaking immigration lawyers.

Whenever we have had manmade or natural disasters in this state, Texas lawyers have risen to the occasion to help those who cannot help themselves. I have found the only impediment is not knowing how to help. Below are resources for you to get involved and make a difference.

On Monday, the Austin Bar Association will offer training on how to help families separated at the border. The in-person CLE session titled Responding to Zero-Tolerance: Credible Fear and Immigration Bond Hearing Training is sold out, but the Austin Bar will live-stream the training on Periscope for all who wish to watch and learn more. For more details on how to download Periscope and watch, click here.

The South Texas Pro Bono Asylum Representation Project (ProBAR)—a joint project of the American Bar Association, the State Bar of Texas, and the American Immigration Lawyers Association—is requesting volunteers who are fluent in Spanish and have some background in immigration law. For more information, go here.

Catholic Charities is seeking attorneys able to provide direct representation for children’s immigration cases and is also accepting donations including books, toys, supplies, and other items, for detained children. To express a desire to provide representation, email

American Gateways has reported that it could use attorneys immediately to help with limited representation for Credible Fear Interviews and Reasonable Fear Interviews, and help preparing for bond hearings. You can sign up to volunteerhere.

This news story contains a list of legal and humanitarian organizations that are mobilizing to help immigrant children and families. And the Houston Immigration Legal Services Collaborative has this page on how to help. Many of the organizations listed on both of these pages are seeking volunteers or donations.

Assuring equal access to justice and supporting the administration of the legal system are essential parts of our State Bar’s mission. We will continue to identify and provide resources to lawyers and the public to aid in responding to this situation.


Tom Vick 
President, State Bar of Texas

In Re Opening the Door

One of the phrases in trial practice that rarely makes it into writing is “opening the door”, so it was nice to see an order from a recent case ruling on a motion entitled Plaintiff’s Motion Regarding Door Opening Under MIL No. 3.

I wanted to go through the basics of what happened between the pretrial ruling granting the motion in limine excluding the bad stuff and the ruling at trial that the door had in fact been opened, which let the bad stuff – which, again, the party had succeeded in keeping out pretrial – in.

If you’ve ever tried to limine out evidence of IPR proceeedings, and seriously, who of us hasn’t, you might be interested in this issue.

2018 EDTX verdicts versus 2017 – year to date

I just posted on Friday’s Kaist verdict.  For those keeping track, that’s two plaintiff verdicts and two defense verdicts in patent cases thus far, with plaintiffs going 1-0 in Tyler and 1 out of 3 in Marshall.  We are not quite at the halfway mark for the year, but we’re close enough that I can provide some comparison between last year and this year as far as verdicts numbers and outcomes.  (Spoiler alert – the result was 50/50 at this point last year as well, with the tiebreaker going to the defendant on damages).

Law360 Intellectual Property Editorial Advisory Board – recommended topics

As I posted a few weeks back, I was named to the Law360 Intellectual Property Editorial Advisory Board earlier  this year.  Advisory board members are asked to identify specific, major trends, cases, or issues of importance in our practice area to help it plan Law360’s future coverage, and yesterday we had a lengthy call to discuss possible topics. (Spoiler alert: Section 101 is apparently still a big deal).

I won’t go into the topics suggested by other members or everything that I raised, but did want to note some of the topics that might be of interest.  Especially given that trials, especially in patent cases, are rarer and rarer, I thought that topics dealing with trial preparation and practice would be of interest to readers.  I think they’d break down into two broad categories:
  1. “how to/best practices” articles for lawyers on a discrete subject; and
  2. articles on trial court practices, especially in patent cases.
The latter is more something that the court would do, while the former is what lawyers should learn how to do.  (Candidly, these are the topics I speak at at seminars and seem to generate the most interest).
Below is a rundown of the numerous specific topics that might be of interest under each.  If readers have suggestions as to additional topics, please let me know and I’ll forward them.  Again, the advisory board provided an enormous list of really great topics highlighting cutting edge issues in IP, so if your interest is in reading more about what is going on relating to Section 101, trust me, they know that.