Twice the Fun: Mini-Markman Hearings

I have commented repeatedly about EDTX judges’ use of the “mini-Markman” process to take up a limited set of claim terms that may be dispositive on an expedited basis.  The idea is, of course, that if one or more claim terms will be dispositive of the case, as in Iris Connex, for example, it makes sense to focus on that on an expedited basis.

A recent case provides a good example of how the process works, with the court soliciting input as to allegedly dispositive claim terms and then setting a schedule for briefing and hearing those terms separately and substantially in advance of the regularly scheduled Markman hearing.

Microsoft wins XBox patent trial in Marshall after declining to challenge venue post-TC Heartland

Right before I left for vacation I noted that Microsoft declined to assert a venue challenge after TC Heartland came out and instead proceeded to trial.  That turned out to be a good decision, since two weeks later a Marshall jury in Judge Rodney Gilstrap’s court rendered a complete defense verdict, finding that the asserted claims were not infringed and were invalid.

As I posted a few weeks ago, Microsoft had engaged in an extensive but unsuccessful campaign to get the patents invalidated at the PTO, and the PTO activity actually limited the invalidity defenses that could be asserted at trial.  This didn’t prevent the Marshall jury from finding the claims not infringed and that each was invalid.  (Verdict form is below the fold).

Unless I’ve missed one, that means four plaintiff and four defense verdicts so far this year, with last month’s verdict invalidating one patent but not the other counting as a tie).

Microsoft Declines to Challenges Venue in EDTX Post-TC Heartland

A little more information this afternoon on how TC Heartland is playing out on the ground in EDTX.

Biscotti Inc. v. Microsoft Corporation, 2:13cv1015-JRG-RSP is a patent infringement case that’s closing in on trial before Judge Gilstrap in Marshall.  (Readers might recall my post on Judge Payne’s recent order on the effect of Microsoft’s IPR activity on its invalidity defenses at trial.)

In the course of the pretrial conference before Judge Payne earlier today, Microsoft noted in response to a question from the Court that it would not be asserting a challenge to venue in the EDTX as a result of the Supreme Court’s decision in TC Heartland.

Motion to Strike Expert Report Portions That Were Outside PICs Granted

Much like this photo of our twins after seeing their first Broadway show last month, there’s content here to make you both happy and sad.

First, have you ever been frustrated looking for an order to give that obnoxious partner/associate that wants to file a motion to strike something because it’s a few hours late?  Well, click through and the Court’s haiku-like resolution is yours to embrace.

The Court declines to do so.

[Defendant] has not suffered any prejudice.

But there’s substantive information in this order granting a motion to strike portions of a plaintiff’s expert report because they are different than what was in their infringement contentions that’ll put a smile on your face.

Parsing the Effect on IPR on Invalidity Defenses

Not all patents that end up before the proverbial “patent death squads” at the PTAB are never heard from again.  In some cases the patents (and the invalidity arguments made against them) come back, but the thing you may have to decide is if, like Gandalf the White, the trip was an improvement (note the straightened hair), or like Stephen King’s Pet Sematery … not.

That issue was presented in a recent EDTX case where a patent returned to the trial court after a stay during which the PTAB upheld the patentability of each of the challenged claims for which the IPR was instituted.  (No, the examining panel wasn’t made up of Santa Claus, the Easter Bunny and Frosty the Snowman – that really does happen).  The plaintiff then sought to trim the defendant’s invalidity case based on the events that transpired before the PTAB.

Marshall jury finds for defendant in hip implant case

I was talking with a legal news reporter the other day and she seemed startled that local federal courts try more than patent cases.  While I generally don’t post on them because most readers are more interested in patent cases, they try personal injury, antitrust, civil rights, and criminal cases.  Employment, class action, social security, bankruptcy … you name it, they try it.  The other day when there were three jury trials going at the same time, only one was patent – the others were antitrust and discrimination.

A Marshall jury in Judge Gilstrap’s court returned a verdict Friday in favor of the defendant in a hip implant case.  While I haven’t followed the case in detail, it appears to be primarily a product liability case, although it appears other causes of action were also alleged, including deceptive trade practices. Robin Richardson summarizes the trial and its outcome here.

Saint Lawrence Communications v. Motorola – verdict

This is not news – I just realized that the post that should have gone out 3/24 did not (possibly because I was getting ready to start a trial the next business day).  I was just organizing materials on recent verdicts and realized that while I knew there had been seven trials so far this year in patent cases – I could only find six verdicts. A Marshall jury in Judge Rodney Gilstrap’s court returned a verdict in Saint Lawrence’s patent infringement case against Motorola, as analyzed below.