Order to Show Cause

I still have nightmares about the Brad Pitt & Morgan Freeman movie Seven from several years back.  I don’t even like to see an image of Gwyneth Paltrow, and if I see blonde hair coming out of a box I will start screaming. (Okay, that doesn’t actually happen that much, but I worry about it a lot more than is normal). Today I can associate the word Seven with something else, albeit even scarier – a show cause order that begins “[u]nlike promises and pie crust, the Rules and Procedures of this Court are not meant to be broken, nor is their breaking to be ignored.”

Motion to Strike Untimely Claim Construction Positions Granted in Part

The thing about patent local rules is that they often run contrary to the procedures established in the FRCPs.  The FRCPs often work more like a funnel, only gradually narrowing and restricting parties’ ability to change their contentions and positions as the case proceeds.  Didn’t get things just right in your pleadings?  Need to change a position set out in a rog response?  No problem (usually).

Instead, as even the earliest cases interpreting the EDTX patent rules’ predecessor, the ND Cal’s patent local rules stated, and the Federal Circuit later acknowledged, the rules permissibly provide a precise timeline for parties to disclose their infringement, invalidity, and claim construction positions “specifically to require parties to crystallize their theories of the case early in the litigation so as to prevent the shifting sands approach to claim construction.”   O2 Micro, 467 F.3d at 1364 or thereabouts.  Making changes later usually requires a heightened showing – something FRCP 15 would be horrified at, but which is well within courts’ discretion in managing these complex cases.

Of course that necessarily creates a new form of satellite litigation over the timeliness of proposed changes.  The other day I posted on the issue arising in connection with a request to amend invalidity contentions, and this recent order addresses the same question when it comes to claim construction terms and positions.

Supplementing Invalidity Contentions

You want to.  You know you do.  But the question is whether you can show good cause under P.R. 3-6(b).  Because that’s the standard for amending your invalidity (or infringement) contentions in a patent infringement case.

This recent opinion out of Marshall addressing a motion to supplement invalidity contentions (the third in the case) provides a useful review of the relevant standards, and cautions that a lack of prejudice “without more” is not sufficient to make the required showing. In this case, one reference passed the threshold by the proverbial skin of its teeth, but the other did not – making this a particularly good opinion to consult to see how much diligence gets just a raised eyebrow, and how much gets a throat cutting gesture.

Venue waiver’s last gasp?

Without exception, each of the panels or talks I have been involved with since TC Heartland came out have agreed that waiver isn’t really worth talking about because as an issue it would go away with time as improper venue became a standard issue for defendants to analyze under the new cases.

This may, therefore, be one of the last cases where a court specifically finds that a proper venue defense was forfeited as a result of delay raising it after the change in the law, although the facts are a little unusual, given that the improper venue defense had already been raised by motion twice, denied twice, and mandamus sought and denied.  This, the third motion, was raised seven months after In re Micron was decided, and was denied as well.

Motions for Partial Summary Judgment and the Word “Shall”

Motions for partial summary judgment are an oft-used tool in the trial lawyer’s arsenal, especially since the 2010 amendments to the FRCPs which changed the terminology referring to them, and saw the triumphant return of the word “shall” after a three year exile in favor of the word “should.”

Accordingly, this opinion which came out earlier today is of interest to readers as it provides a detailed analysis of what the rule requires and doesn’t require, as well as an analysis of how the MPSJ can best be used (or not used) in patent cases.

The “how thin can you slice the apple” metaphor is thus again relevant this week.

Bifurcation – what it is, and why you’re not getting it

An issue that comes up from time to time is whether a trial should be bifurcated into different proceedings.  In a patent case, a court might try invalidity separately before infringement, or invalidity and infringement, and then the issue of willfulness, etc.

The attached case presents the issue of whether an issue of corporate veil piercing/alter ego should be tried before the rest of the case.  The attached order resolves the motion, but more importantly provides the relevant analysis for such requests under Fed. R. Civ. P. 42(b).

Expert Testimony On The Effect of Heat

It’s expert testimony day around the Smith household today, as our oldest Grayson hits the witness stand as an “expert” witness in one of the Practice Court “big trials” at Baylor Law School in Waco.  The grazing is pretty thin for students to act as witnesses in the summer so they’re willing to take a rising sophomore engineering student as an “expert metallurgist” to testify – in fact they advertised for them.  I can relate. I did my big trial, also on a maritime theme, 27 years ago, and we had to bribe classmates “studying for the bar” to take an afternoon off from the pool to testify.

So Grayson is looking forward to spending this afternoon and a bit of tomorrow after his Calc 2 class lets out expounding on the defects in the iron rivets that were used in the construction of the Titanic, shown above on her building slip in Belfast.

Oddly, he’s been there – here he is with his brother Parker walking near the outline of Titanic’s bow at her building slip in the old Harland & Wolff shipyard in Belfast.  And he’s built an arc furnace using parts of a dry cell battery, melts metal for fun, and cooks steaks with a blowtorch.  So he’s going to be one of those “I know it all” experts, which should provide good experience for the students directing and crossing him. And he might learn a little humility (but I doubt it).

Of course there’s a related EDTX case involving experts and heat, which is the attached opinion from Judge Gilstrap last month declining to strike an expert’s opinion in a case involving the remodeling of genital tissue by applying heat to certain target tissue.  The Court concluded that the expert’s opinions and testimony “are not contrary to the Court’s construction. To the extent Defendants disagree with [the expert’s] opinions, that disagreement can be adequately addressed via vigorous crossexamination and through the presentation of contrary evidence and expert testimony.”

Triable Issues in Section 287 defenses

Reader: There is no way you can connect pictures of a sunken aircraft carrier’s planes to damages defenses in patent cases.

Me: Hold my beer.

The discovery of the wreck of the old Lexington (CV-2) sunk at the Battle of the Coral Sea was almost an anticlimax after the wreck was found to have dozens of nearly perfectly preserved aircraft that had apparently floated off the carrier’s flight deck as it sank.  Most notable were several TBD Devastator torpedo bombers and F4F-3 Wildcat fighters in part because even after 76 years at the bottom of the Pacific the aircraft still had nearly pristine … markings.

In patent cases, whether or not products were marked can have a major effect on the recoverable damages.  And in a way not really at all similar to the way that submersion for 76 years at the bottom of the Pacific didn’t erase the Felix the Cat insignia on the F4Fs, the facts of how products were marked can make damages recoverable, or at least shift the burden under Arctic Cat.

This recent decision provides another useful analysis of when the burden was successfully shifted, and when there is a triable issue as to whether Plaintiff provided actual notice under § 287 before the lawsuit.

Recent Marshall venue opinions – part 2 (in which we learn about distributors)

A familiar feature on the 100 block of East Austin in Marshall is the something called “the Hub”.  The Hub is a large wagon wheel hub symbol used by the Hub Shoe Store that occupied my offices from 1897-2009.  About once a century the Hub (which is actually a 19th century wooden barrel skinned with metal to look like a wagon wheel without its spokes) needs more than just a paint job and has to be take down for repairs.

Today was that day, so after removing rivets and nails from the McKinley Administration we made sure it was belted in properly for its trip to the local metalsmith.    It’ll be back in a couple of weeks.

What will not be back in a couple of weeks is this patent infringement action brought by a medical device company against a competitor in which it asserted that the defendants’ distributors satisfied the “regular and established business” prong of the venue statute.