I am looking forward to participating in a panel The Impact of Heartland on District Court Litigation at the ABA Section of Intellectual Property Law’s 33d Annual IP Law Conference this Thursday April 19, 2018 at the Crystal Gateway Marriott in Arlington Virginia. Our panel also includes: The Honorable Sherry R. Fallon United States Magistrate Judge U.S. District Court for the District of Delaware Jennifer T. Salinas Partner, Troutman Sanders LLP Irvine, California Frederick L. Cottrell, III (moderator) Director, Richards, Layton & Finger, P.A. Wilmington, Delaware According to the conference materials we will spend an hour and a half discussing “the impacts of the Supreme Court’s Heartland Decision on Patent Litigation and Venue Challenges Across the Country.” They’re capitalizing all the nouns, so you know this is important stuff. The somewhat less breathless description of our topic states that “[t]he Supreme Court’s Heartland decision has changed the patent litigation landscape across the country. The impacts are most evident in active patent litigation Districts in Texas, Delaware, and California. Implications for those jurisdictions, as well as, other venue issues arising from Heartland will be reviewed and discussed.” And discuss them we will. I have really enjoyed working with my fellow panelists to prepare this presentation, and moderator Fred Cottrell has done exemplary work putting together one of the most informative slide decks on this topic that I have seen. We discuss what’s happening in the caselaw and then in our respective districts, so I’ll be talking about what has and hasn’t changed about litigating patent infringement cases in the Eastern District of Texas since Heartland. Most of the time my job seems to be to point out that most of the significant issues we will be discussing are up on mandamus at the Federal Circuit, so it might be best to take notes in pencil on this one …
It’s a beautiful morning in Marble Falls deep in the Texas Hill Country as my copresenter Tony Sauerhoff from Fifth Circuit IT security and I prepare to speak at the annual WDTX Bankruptcy bench/bar on the topic of cybersecurity for law firms.
I can’t access the paper at the moment, but I’ll add it to this post when I get back the piney woods tonight. (Subscribers click through for the link).
Was able to shoehorn in a couple of other events on this trip, including dinner with the Baylor freshman in Waco Wednesday night, breakfast at Magnolia Table in Waco yesterday morning (thank you Chip and Joanna!) a CLE planning meeting for this fall’s UT civil litigation seminar in Austin yesterday afternoon, and a quick trip to my favorite hobby shop in Austin for some new publications on 1942-era carriers. (There may have been a model or two as well).
A month ago I posted on patent filings in prominent patent jurisdictions in the first three months of 2018. Looking back at the last 90 days of filings, some trends are starting to solidify, and some are a little surprising, as the below analysis shows.
Dr. Joyce Johnston, East Texas
Congratulations to these accomplished and dedicated protectors of the 7th Amendment. Winners will receive their awards at the Tex-ABOTA Annual Dinner at the Inn & Spa at Loretto Saturday, June 10, 2018 in Santa Fe, NM.
Why, you might ask, does Tex-ABOTA have its annual meeting in New Mexico? When I was on the Tex-ABOTA board a couple of years back as the East Texas chapter president I heard the story. There was the usual annual feud, familiar to all Texas statewide groups, of do we do it in Dallas or Houston, or maybe Austin or San Antonio, and why not Fort Worth or Corpus, and those nut jobs in West Texas and East Texas keep wanting it out their way once in a while and if we do there the Valley will agitate to get into the rotation …
One year they decided to try Santa Fe as a neutral site for the annual meeting – and they liked it so much it never came back to Texas, and it’s become an increasingly popular annual trek for overheated Texas lawyers and their families. It is a great location and Jamie and I really enjoy a few days of cool weather, hot food, and an indecent dose of Dicky Grigg.
Again, congratulations to the winners – we look forward to the awards ceremony, but, candidly, it’s just an excuse to listen to Dicky. Anyone who deliberately seeks out and then commemorates his sponsorship of a men’s room at a law school he didn’t even attend is someone you want to listen to. Trust me. I have actually been to ABOTA meeting dinners where the table told nothing but Dicky stories for the entire meal – and he wasn’t even there. I am not making that up.
I’ll be starting a two-site presentation on evidence next week at the TexasBarCLE Advanced Evidence and Discovery Course in Dallas. It’s the first of three CLE presentations on different subjects over the next three weeks, culminating in a panel on the effect of TC Heartland at the upcoming ABA IP seminar in DC on April 19. My paper deals with the nuts and bolts of getting evidence in. But as I discovered when I started working on the paper, most activity on evidentiary issues is now at the pretrial stage, with very little activity – at least in my practice – coming at trial, since most exhibits are preadmitted. So to my mind the most helpful paper on getting evidence in would be on how to list it, object to it, and respond to objections at the pretrial stage, with trial being something of an afterthought from an evidentiary standpoint. And what matters at those stages is, candidly, not quite what the rules indicate matters, so I tried to present the parts of the rules of evidence that practitioners should actually be spending most of their time worrying about. I always worry when I try to be helpful as opposing to reciting caselaw and listing rules as they appear in the rules, but I think the end result is pretty good. It is, candidly, troubling that even the slides are finished and off to the Bar eight days before the presentation, but even procrastinators fall short and get something done on time once in a while. Subscribers can download copies of the paper and the slides below. But no spoilers for attendees, okay?
Earlier today Judge Gilstrap granted a motion staying a consolidated patent case pending the resolution by the Federal Circuit of a mandamus petition that has been filed in another case. The Court declined to stay the case pending resolution of two IPR proceedings. The ruling is worth studying because of what the motion sought, as discussed below.
I am honored to have been named to Law360’s Intellectual Property editorial advisory board. The purpose of the editorial advisory board is to get feedback on Law360’s coverage and gain insight from experts in the field on how best to shape future coverage. The members of the 2018 Intellectual Property Law360 editorial advisory board are:
John T. Battaglia, Fisch Sigler LLP
John Battaglia is a partner at Fisch Sigler. He has been a federal prosecutor and law clerk at the Federal Circuit and Eastern District of Virginia. He has tried to verdict a variety of intellectual-property disputes and argued several cases on appeal. In 2006, he was appointed deputy associate attorney general of the United States.
Garrard Beeney, Sullivan & Cromwell LLP
Garrard Beeney is co-head of Sullivan & Cromwell’s intellectual property and technology group and a member of the firm’s managing partners committee. Beeney has been inducted as a fellow of the American College of Trial Lawyers. He was counsel in the two major patent cases that were argued before the U.S. Supreme Court in 2016 and has litigated intellectual property and licensing cases in both federal and state courts. Beeney also represents clients before U.S. and European competition law authorities.
Andrew Choung, Glaser Weil Fink Howard Avchen & Shapiro LLP
Andrew Choung is a partner and head of the patent and technology practice group at Glaser Weil. His primary focus is on complex patent litigation, including defense, licensing programs, strategic counseling and America Invents Act proceedings. Before joining Glaser Weil, Choung practiced IP law at prestigious firms in both the U.S. and Korea.
William A. Delgado, Willenken Wilson Loh & Delgado LLP
William Delgado is a partner at Willenken Wilson Loh & Delgado, a nationally renowned litigation boutique based in Los Angeles. He has litigated almost every type of intellectual property dispute in various cases across the country. At present, he focuses on patent and trademark litigation.
R. David Donoghue, Holland & Knight LLP
R. David Donoghue is a trial attorney and the co-leader of Holland & Knight’s intellectual property group, focusing his almost two decades of experience upon intellectual property litigation and particularly upon patent disputes. Donoghue’s most recent trial experience includes a jury verdict finding of willfulness, a full trebling of damages and a full award of attorneys’ fees. He has also been chosen as lead trial counsel in RPXIS’ insurance program defending companies against nonpracticing entities.
Ann Ford, DLA Piper
Ann Ford advises clients with respect to business and transactional aspects of intellectual property, as well as litigation and pre-litigation protective measures. She works with clients to acquire, develop and exploit intellectual property assets and has specific experience in restructuring intellectual property assets for tax planning and developing joint venture arrangements to support co-branding efforts. She is the U.S. chair of DLA Piper’s trademark, copyright and media practice.
Keith J. Grady, Polsinelli PC
Keith Grady is vice chair of Polsinelli’s intellectual property litigation practice. With almost 30 years of experience, he has represented private and publicly traded companies in intellectual property matters in courts throughout the U.S. across a range of technologies. Grady frequently writes and speaks on patent and trademark litigation.
Colleen Tracy James, Mayer Brown LLP
Colleen James, an intellectual property partner in Mayer Brown’s New York office, is a first-chair trial lawyer who focuses her patent litigation practice on cutting-edge issues in the life sciences industry. Her practice includes Patent Trial and Appeal Board proceedings and other complex intellectual property litigation. She has extensive experience litigating abbreviated new drug application matters brought under the Hatch-Waxman Act in federal courts across the U.S.
Mike Keyes, Dorsey & Whitney LLP
Mike Keyes is the managing partner of the Seattle office of Dorsey & Whitney. He’s an experienced first chair IP trial lawyer and award winning author, blogger and podcaster. He co-edits Dorsey’s IP Blog and co-hosts the podcast This Week in Law with Denise Howell.
Matthew J. Rizzolo, Ropes & Gray LLP
Matt Rizzolo is counsel in the intellectual property litigation practice at Ropes & Gray in Washington, D.C. He has significant experience litigating complex intellectual property cases in a variety of jurisdictions, including federal district courts throughout the United States and in Section 337 actions before the U.S. International Trade Commission.
Michael C. Smith, Siebman Burg Phillips & Smith LLP
Michael Smith is a partner in the Marshall office of Siebman Burg. He has appeared as counsel of record in over 800 cases in the Eastern District of Texas, maintains a weblog on the district and edits the O’Connor’s Federal Rules handbook on civil procedure.
Andrew W. Stroud, Hanson Bridgett LLP
Andy Stroud is a partner at Hanson Bridgett and is office leader of their Sacramento office. He has significant expertise in litigating claims for copyright and trademark infringement, misappropriation of trade secrets, and unfair competition. Stroud served as the chair of the California State Bar IP section and is a frequent commentator on the fair use test and other aspects of copyright law.
Rachelle Thompson, McGuireWoods LLP
Rachelle Thompson is a registered patent attorney with particular experience in complex commercial litigation and litigation involving biotechnology, pharmaceuticals, semiconductors, telecommunications, smartphones, digital cameras, and wireless technology. She has extensive experience in all aspects of patent litigation in both district court and the U.S. International Trade Commission. In addition to litigation, Rachelle provides IP-related counseling to clients in a variety of technologies and industries
Jane Shay Wald, Irell & Manella LLP
Jane Shay Wald is a partner emeritus of Irell & Manella LLP and chairs the firm’s trademark practice group. She counsels and litigates trademark matters in the federal courts and the Trademark Trial and Appeal Board and prosecutes trademark applications through registration with the U.S. Patent and Trademark Office. She is a frequent writer and speaker on trademark topics.
David E. Weslow, Wiley Rein LLP
David Weslow, a partner in Wiley Rein’s intellectual property group, focuses his practice on litigation and transactions involving trademarks, copyrights and domain names. He regularly assists clients with the often novel application of intellectual property claims to cyber scams, intangible thefts, social media issues and other internet based disputes.
We have two months and some change of patent filings in 2018, and I wanted to see how they compare with last fall’s after TC Heartland. There were some interesting trends earlier in the year that have begun to solidify somewhat.
Here’s one for everyone’s form files. Swinger NoticeofAppeal
Texas lawyers are spoiled when it comes to service of process. We get to serve process in civil suits using certified mail, return receipt request in state court. And in the same way that state court procedures tend to bleed into federal court practice, even where the federal rule is not the same (think who pays for expert discovery) the state rules on service of process influence practice in federal court as well.
In part for that reason, in part because other nations have this perplexing tendency not to follow the Texas rules of civil procedure, and in part because agreements tend to eliminate this issue in many cases, the actual requirements for service of process on foreign defendants are terra incognito-ish for many practitioners, and can present obstacles when not rigorously followed, as this decision shows.