Adjustacam Fees Set at $564,865.85

The procedural history of this case is a long one.  Essentially, Adjustacam originally sued 58 defendants in 2010.  It dismissed most of its claims prior to Markman, and then in the fall of 2012 dismissed its claims against the last defendant, Newegg.  Newegg sought fees under Section 285 and Judge Davis denied the motion. Octane Fitness then came out while that decision was on appeal, changing the standard for determinations of “exceptional case” under Section 285, and Newegg sought fees again.  The trial court, now Judge Gilstrap, denied the renewed motion.  The Federal Circuit reversed and found the case “exceptional”, and Judge Gilstrap ordered briefing on the amounts of fees.  This afternoon he issued the attached order setting the fees.

Summary Judgment of Improper Venue Granted

This is a patent infringement case involving medical devices that are currently in clinical trials across the country, including at sites in the Eastern District of Texas. The original motion to dismiss for improper venue was denied pre-TC Heartland.  The renewed motion was denied because the issue of improper venue could not be addressed at the motion to dismiss stage because the basis for the defense depended on factual questions that could not be resolved at that stage.

But once further discovery into the infringing acts in the EDTX was conducted, at the summary judgment stage the Court could address the question of the relevance of the § 271(e)(1) safe harbor defense in determining whether venue was proper.

Supplementing Initial Disclosures & Sequencing Issues at Trial

The issue of when initial disclosures – not patent rule disclosures, but the Rule 26(a)(1)-ish ones which include lists of persons with knowledge – can be supplemented is one that doesn’t come up often.  And a request that issues be sequenced at trial is even rarer.  This order resolving requests for both is of interest to practitioners, since while these requests don’t come up often, they’re of great interest when they do.

Celebrating Lexington Day With an Enhancement/Exceptional Opinion

Well, it’s certainly both an enhanced and exceptional day for me, as Paul Allen’s team located the wreck of the carrier Lexington in the Coral Sea, 76 years after it sank, along with – to date – 11 of the 35 aircraft it had on board when it went down.  

Yes, I’m the crazy uncle that makes handcrafted wood Lexington toys for his cousins’ kids – as well as the occasional plastic model of one – but you know, every family has one of those, doesn’t it?  So today, the Lexington comes with me to the office to celebrate.

Also celebrating this morning is plaintiff Eidos Display, which, following a lengthy campaign, won a 2x enhancement of its recent $4.1 million jury verdict against competitor Chi Mei Innolux. Like the Battle of the Coral Sea both sides won something, with Innolux defeating Eidos’ request for attorneys fees under Section 285.  So let’s analyze what happened, note some significant comments in the opinion, and say hello to LBJ, Mr. Sam, and some East Texas lawyer sayings along the way.

Service of process overseas

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.

What part of “The Court ORDERS additional briefing on … the propriety or impropriety of venue in this District and the propriety or impropriety of venue in any requested transferee districts” did you not understand?

I recently posted on a post-Micron decision finding no waiver and deciding to dismiss as opposed to transfer patent cases brought against three defendants.  There’s an interesting followup to that decision now, in which the plaintiff asked the Court to “modify” the order to transfer instead of dismiss.

The Equitable Defense of Patent Misuse & Limitation of Damages Based on FRAND Principles

Equitable defenses typically don’t get a lot of attention in patent cases.  In this case the parties declined to present any evidence on the equitable defenses orally, instead submitting on the papers, but of course submitting additional briefing postverdict as well.  Accordingly, the defendant’s equitable defenses of patent misuse and limitation of damages based on FRAND principles were resolved postverdict in the attached findings of fact and conclusions of law.

Fees Set in Deficient Infringement Contentions Case

Several weeks ago I posted on Judge Payne’s order on inadequate infringement contentions, which culminated in an order that the plaintiff pay Defendants’ reasonable expenses, including attorneys’ fees, incurred as a result of several motions seeking to compel it to comply with the Local Patent Rules governing infringement contentions. The parties were unable to reach agreement on the amount of costs, and earlier this week Judge Payne issued his order resolving the issue.

Plausibility and Allegations of Infringement

The Twombly and Iqbal cases set forth the rule that to survive a motion to dismiss, a plaintiff must plead enough to state a claim to relief that is “plausible on its face.” None of this has anything to do with celebrated artist Cy Twombly, but it’s a good excuse to reference his work for those of you that enjoy that sort of thing.

Today’s EDTX Twiqbal guidance comes in the form of an order on a defendant’s renewed motion to dismiss  a patent plaintiff’s claims of willful and induced infringement as well as direct infringement

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 …