Outlining the Contours of Waiver Post TC Heartland

As readers are aware, a lot of pixels have been devoted in recent weeks to identifying when a motion to dismiss for improper venue asserting the Fourco argument pursuant to the Supreme Court’s recent decision in TC Heartland has been waived for failure to assert it when required under Rule 12(b)(6).  A recent report and recommendation by Judge Payne addressed this issue in a specific set of circumstances I had not seen in an order previously.

Lies, Damned Lies and Case Captions

It isn’t unusual for a case’s caption to gradually become dated, reflecting parties that have been dropped, settled or reorganized.  And thus it also isn’t unusual for parties to ask the Court to amend the case caption to replace the names of parties who have passed on with the current ones.  It turns out there’s a problem with that, but also a solution, as a recent opinion points out.

Yet Another Decision on Assignor Estoppel

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.

Sufficiency of Contentions Referencing Representative Products

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.

Whale fall re: JMOL on willful infringement, jury instructions & interest calculations

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…

Agreed Transfers Post TC Heartland- Is It Transfer or Dismissal?

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.

More CAFC Activity on EDTX Defense Trial Wins and Injunction Denials

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.