Motion for Summary Judgment as to Defenses of Improper Inventorship & Derivation

An improper inventorship defense rests on the statutory requirement that a patent is invalid if more or fewer than the true inventors are named.

A defense of “derivation”, on the other hand, requires proof of both prior conception of the invention by another and communication of that conception to the patentee.

Both defenses require proof by clear and convincing evidence.

This case presents an interesting situation in which the defendant claimed that the plaintiff wasn’t the inventor, but did not identify who else was.  Given that the procedural context was the plaintiff’s motion for summary judgment as to the defendant’s improper inventorship defense, the issue presented was thus whether Defendant had created a genuine issue of material fact regarding its defenses of improper inventorship and derivation.

On the derivation defense, the issue was whether the Defendant had adduced proof that the “entirety” of the invention was conceived by others.

Section 1404 venue order

In recent weeks I have been looking at various venue opinions over the past few months, and realized that I’ve been giving Section 1404 motions asserting inconvenience short shrift since improper venue post Heartland/Cray is sort of the new black in venue law.  This opinion remedies that somewhat with an opinion from a few weeks back that has some really useful insights into the relevant analysis.

Verdict in Apple v. VirnetX IV – $502.8 million

A Tyler jury in Judge Schroeder’s court returned a verdict yesterday in the latest VirnetX trial against Apple.  It found that Apple’s FaceTime and VPN On Demand infringed four VirnetX patents and set damages at $502.6 million.  It comes back today to begin the willful infringement portion of the trial. The first VirnetX trial in 2012 resulted in infringement and an award of $368 million for older Apple products.  The Federal Circuit affirmed the infringement finding but required a new trial on damages. Judge Schroeder combined the damages retrial on the older products with the soup to nuts trial on newer products in February 2016, which resulted in a $625 million verdict. Apple convinced him to set that combined verdict aside, thus requiring the two cases to be retried separately. On the older products damages retrial the jury found $302 million, which the Court later enhanced to $439 million, and that verdict is on appeal – and now the second verdict on the newer products is $502.6 million.  So the separate trials yielded verdicts of $804.6 million before enhancement, compared to the consolidated trial in 2016 of $625 million. How much of that is attributable to post-February 2016 sales I do not know.

Supplementing Initial Disclosures & Sequencing Issues at Trial

The issue of when initial disclosures – not patent rule disclosures, but the Rule 26(a)(1)-ish ones which include lists of persons with knowledge – can be supplemented is one that doesn’t come up often.  And a request that issues be sequenced at trial is even rarer.  This order resolving requests for both is of interest to practitioners, since while these requests don’t come up often, they’re of great interest when they do.

Service of process overseas

Texas lawyers are spoiled when it comes to service of process.  We get to serve process in civil suits using certified mail, return receipt request in state court.  And in the same way that state court procedures tend to bleed into federal court practice, even where the federal rule is not the same (think who pays for expert discovery) the state rules on service of process influence practice in federal court as well.

In part for that reason, in part because other nations have this perplexing tendency not to follow the Texas rules of civil procedure, and in part because agreements tend to eliminate this issue in many cases, the actual requirements for service of process on foreign defendants are terra incognito-ish for many practitioners, and can present obstacles when not rigorously followed, as this decision shows.