The most important Marshall venue opinion today is the news that we’re getting a Dairy Queen, after decades without one. We actually had two when I was growing up – but no McDonalds – when that opened around 1980 the MHS band played at its dedication and I was honking away back in the trombone section. And I’m old enough to remember when my grandfather had to drive us to Longview to go to an El Chico’s. We don’t have that now either, but it was replaced with one of many quality chicken establishments. (Candidly, I still recommend the pizza).
But I digress.
As I mentioned the other day, we’re seeing a number of new venue opinions in recent weeks, and I wanted to start analyzing the ones coming out of Marshall, albeit from different judges. The first is by Judge Gilstrap, but I’ll be following up with decisions by Judge Payne and visiting Judge William Bryson of the Federal Circuit, as well as more by Judge Gilstrap. But this is one you’ll want to study for your form files as it has new language and analysis that litigants will find useful.
The Kaist verdict form is now attached to that post, along with some comments on the format of the form, which is a little different, and initially was very different. As well as the substance of course.
One of the phrases in trial practice that rarely makes it into writing is “opening the door”, so it was nice to see an order from a recent case ruling on a motion entitled Plaintiff’s Motion Regarding Door Opening Under MIL No. 3.
I wanted to go through the basics of what happened between the pretrial ruling granting the motion in limine excluding the bad stuff and the ruling at trial that the door had in fact been opened, which let the bad stuff – which, again, the party had succeeded in keeping out pretrial – in.
If you’ve ever tried to limine out evidence of IPR proceeedings, and seriously, who of us hasn’t, you might be interested in this issue.
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.
As of today, Judge Gilstrap has a new standing order dealing with the use of juror questionnaires. The order memorializes existing practice in some ways, but adds additional requirements as well.
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.
Orders granting even part (sometimes especially ones granting only part) of motions to strike expert witnesses are always of interest to practitioners, since they provide guidance on which opinions are in and which are out.
This motion sought to exclude certain portions of a patent defendant’s infringement expert, and was granted, but only in part.
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.
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.
Marshall jurors persist in rendering verdicts on days I’m out of town. But I’m here now, and the verdict is a little more complex than May 11’s simple noninfringement one.