Assignor estoppel is an equitable doctrine that prevents one who has assigned the rights to a patent (or patent application) from later contending that what was assigned is a “nullity.” In addition to the estopped assignor, the doctrine may prevent parties in privity with the assignor from challenging the validity or enforceability of the patent. Courts have applied the doctrine to invalidity challenges based on novelty, utility, patentable invention, anticipatory matter, and the state of the art.
This was the issue presented in a recent EDTX case in which a plaintiff plugged the doctrine into a handy summary judgment template in an attempt to prevent the defendant from challenging the validity of the patent in suit. Let’s see how that worked out.
A Marshall jury in Judge Robert W. Schroeder III’s court returned a split verdict on infringement yesterday in a case involving an Israeli defense contractor’s patents on broadband technology that has already seen one trip to the Federal Circuit on the TC Heartland improper venue issue.
One of the key features of patent litigation in many of the patent-heavy districts is mandatory disclosure of detailed infringement and invalidity contentions. The EDTX has used such a procedure since 2000, when Judge T. John Ward adopted the Northern District of California’s local patent rules for cases in his court, and the rules were adopted district-wide several years later. One of the common issues regarding contentions is when they are sufficient, and specifically when a party can chart one “exemplar” product and have that chart cover others. This was the issue presented in a recent decision by Judge Roy Payne in Marshall.
Earlier this year a Marshall jury in visiting CAFC Judge Bill Bryson’s court rendered a $20 million verdict in favor of the plaintiff against defendant Eli Lilly. Several weeks ago Judge Bryson followed up with an order explaining his reasons for several decisions during trial.
Judge Bryson’s order is an example of what I referred to in my talk about JMOLs week before last at Horseshoe Bay as a “whale fall” – the sort of order that can take weeks to fully digest, but if you’re interested in the subject of getting a JMOL on a plaintiff’s claims of willful infringement or on when certain jury instructions are appropriate or how prejudgment interest is calculated it’s worth it.
Our story begins with the defense counsel rising at trial to assert a JMOL as to the plaintiff’s claim of willful infringement…
What gets attention since TCH is the effect of the decision on new patent case filings in the EDTX, and depending on which week you check filings, they have decreased by around half as plaintiffs voluntarily decide that they don’t have the venue facts to file here and choose to file elsewhere. What gets less attention is the effect of the decision on pending cases where plaintiffs come to the same conclusion.
These decisions show how those decisions come about, and what the Court does when the parties agree that the plaintiff needs its ticket punched, but can’t decide whether to dismiss or transfer.
I posted the other day on Judge Gilstrap’s opinion denying the defendant’s motion to transfer venue in Raytheon v. Cray. Below is additional information on the Federal Circuit proceedings in the case, current through just a few moments ago.
Yesterday was EDTX day at the CAFC again, with that court ruling on appeals from three of last year’s nine Marshall patent trials. It affirmed three noninfringement defense wins in two related cases, but reversed Judge Gilstrap’s denial of the sole prevailing plaintiff’s application for an injunction in an appeal arising out of the January 2016 trial that broke the 2015-2016 EDTX defense win streak at six verdicts.
The opinions are attached with a brief explanation of each.
Nothing like a new set of notices of scheduling conferences to remind me that I haven’t posted on the last set yet. Accordingly, my report on the May status conferences for Judge Gilstrap’s Marshall, Texarkana and Tyler patent dockets is out and attached for subscribers, with cases, Markman and trial dates and information regarding number of defendants/consolidated cases.
On May 26, four days after the U.S. Supreme Court issued TC Heartland, Judge Rodney Gilstrap issued an order in a number of cases sua sponte calling for supplemental briefing as to the effect of TCH on motions that were either recently denied or still pending in which the defendants asserted the Fourco improper venue defense. That briefing would conclude on or about June 15.
Although not included with those cases, the defendant in Raytheon v. Cray had asserted Fourco in a motion which was subsequently denied based on VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574 (Fed. Cir. 1990) in 2016, and on June 1, 2017, it reurged the improper venue defense approximately three months before trial. The Court set a briefing schedule concluding on June 22, and seven days later Judge Gilstrap issued a 27 page opinion that denied the motion.
Although a footnote on the last page of the opinion states that the opinion rests on the Federal Circuit’s holding regarding the “regular and established place of business” in In re Cordis Corp., 769 F.2d 733 (Fed. Cir. 1985), which was its last opinion on the subject before it essentially mooted the language in VE Holdings, the opinion contains an extensive analysis of the issues surrounding this language as a result of the numerous contested motions to dismiss or transfer, and provides guidance and a set of factors to be applied in future cases.
This isn’t unprecedented for common issues – Judge Gilstrap did the same for Section 285 motions earlier this year in Iris Connex, as did Judge Heartfield for motions to transfer a few years back in Mohamed v. Mazda (referred to by some down Beaumont way as the “Magna Carta” of venue jurisprudence for a number of years as it contained state of the art research on every venue issue district courts commonly saw), and Judge Hall on the same subject a few years earlier in 1992 in Box v. Ameritrust – analysis that he revisited in the first Marshall patent case Texas Instruments v. Micron the next year, incidentally).
I wanted to go through the opinion noting the issues it does (and does not) decide, since as the Court notes, they are being raised in numerous cases.
Documents can be filed a variety of ways in CM/ECF, which is the federal courts’ system for electronic filing. They can be notices, documents or motions, and it’s usually a good idea to file the document using the appropriate ECF event. But it is very, very important that a motion be filed as a motion. And there hangs a tale …