Kaist verdict – $400 million

A Marshall jury in Judge Gilstrap’s court found the asserted claims willfully infringed in the Kaist case and awarded $400 million. It also rejected all of the asserted invalidity defenses.  The plaintiff is  the intellectual property arm of a South Korean research university.  The defendants are Samsung Electronics Co., Ltd, Qualcomm, Inc., and GlobalFoundries Inc..

A quick review indicates that this is the largest patent verdict in Marshall since January of 2011 in a medical device case, and the second largest in Judge Gilstrap’s court in the six-plus years he has been on the bench.  The only one larger was a Tyler case, Smartflash, which he set aside in postjudgment proceedings.

I’ll post separately on where that leaves us on verdicts compared to last year, and will attach the verdict when it’s posted.

Motion to Transfer Granted – Current Standards on Foreign Defendants & More

It’s hard to believe that it’s been six weeks since I spoke on venue post-TC Heartland at the ABA IP meeting in Crystal City, but one thing I said is probably worth repeating – take your notes on venue in pencil.  Because there have already been three important Federal Circuit venue opinions since then. For the same reason, it’s always worth reading the most current venue opinions coming out of local courts because they implement the new decisions pretty quickly.  The attached is a good example, as it address several hot topics, including venue statutes not applying to foreign defendants and personal jurisdiction arising from products sold into the forum state, as well as the evergreen issues regarding transfer under Section 1404.  Oh, and it’s a Hatch-Waxman case too, so the analysis in places is sort of backwards and in high heels, as the Ginger Rogers reference would say.

Case Stayed Pursuant to “First to File” Rule

One of the first legal principles I learned about as a law clerk back in the days of MS-DOS and paper slip opinions from the Fifth Circuit was the “first to file” rule.

In Texas Instruments v. Micron, 815 F.Supp. 994 (E.D. Tex. 1993) Judge Hall stayed TI’s patent infringement action in favor of a “first filed” action in Idaho, and in so doing set out the metes and bounds of the doctrine, which also addressing the various transfer factors.  He also made the observation that “[a]ll too often, patent infringement suits begin with a battle over where the war is to be fought.”  Id. at p. 996, n. 1.

The reason I still have the paper copy is that when I clerked it was a tradition that the clerks kept the paper advance sheets of Judge Hall’s published opinions once the bound copies came in. I still have mine, which as you can tell I keep with Judge’s portrait, biography, and an autographed copy of the 1991 CJRA Plan that was the genesis of the EDTX that we know today.  Since there were two clerks, if we both needed the same advance sheet for our collection we’d pick up the one from Texarkana the next time Judge Hall had hearings there, which is when we’d process the stacks of new volumes and advance sheets to keep the law library up to date in the rooms of old barrister bookcases that filled chambers and the law library upstairs (now Judge Craven’s chambers) – and toss boxes upon boxes of obsolete advance sheets.

Earlier this morning Judge Gilstrap applied this rule, similarly staying a later-filed infringement action in favor of an earlier filed declaratory action in South Carolina, citing his predecessor’s opinion in TI v. Micron.

April 24 Patent Case Scheduling Conferences

The most recent batch of bimonthly patent case scheduling conferences was held April 24 in Marshall, and as usual I have a brief rundown of the results compared to the last conference at the beginning of February.
I am a little behind compiling the results since I was in trial with Judge Schroeder in Texarkana when the conferences took place, but the good news is that lets us see what’s happened in these cases in the now 36 days since then.

Ericsson $75 million verdict reinstated; damages enhanced $25 million; no attorneys fees

After a four-day trial in December, a Marshall jury in Judge Roy Payne’s court found that Defendant TCL willfully infringed claims 1 and 5 of United States Patent No. 7,149,510 asserted by Plaintiff Ericsson by selling phones and devices equipped with the Google Android operating system, and the jury awarded $75 million as a lump sum royalty.

The court previously ordered a new trial on damages after finding Ericsson’s damages theory unreliable, but last Thursday the Court reconsidered that order, reinstated the jury’s verdict in full, and resolved all other remaining disputes, i.e. TCL’s motions for judgment as a matter of law, and Ericsson’s motions for enhanced damages and attorney’s fees.

12(c) Motion to Dismiss Under Section 101 Denied

Seems like just last week that I summarized where we were on local decisions after the Federal Circuit held that some Section 101 issues were questions of fact.  Oh wait, it was just last week.  Well, we have another one – this time within an order denying a Section 101 motion at the pretrial stage, this time explicitly concluding that there were issues of fact that precluded dismissal as to two of the three asserted patents.