Motion to Limit Pre-Suit Damages For Failure to Mark

Defendants in patent cases sometimes allege that a plaintiff has failed to comply with the marking requirement of 35 U.S.C. § 287, and thus that pre-suit damages are limited.  As here, that motion often takes the form of a motion for partial summary judgment.  The Court’s order in this case provides a useful exposition on the applicable standards for patent marking, and applies those standards to the facts of this rather interesting case to determine whether the pleadings were sufficient for the plaintiff to seek presuit damages in the first place, and if so, whether the defendant met its burden to allege a limitation, and if so (also) whether the plaintiff had satisfied its burden of compliance.

Wait – I went into the ditch here.  On a motion for summary judgment, the final question is not whether the plaintiff had shown compliance, but actually just whether there is a factual dispute as to whether unmarked patented products were sold.  There, I feel better.

Rulings on motions in limine in patent cases

I finished reading these rulings on the parties’ motions in limine in a recent patent case this afternoon and decided that there was nothing unusual enough in them to justify a post analyzing them, but am posting the order anyway simply to show examples of common rulings in response to common issues in patent cases.  These are always worth reviewing so that when a similar issue comes up, you have an idea what the ruling is likely to be if the issue is disputed, including the specific language that might be appropriate for an agreed limine.

Order on Claim Construction Briefing Term & Page Limits

Many courts have default rules that restrict claim construction briefing.  They might be page limits applicable either to claim construction or to motions in general, or a presumptive limit on the number of terms to be construed, either in toto or at a time.  This order deals with a case where limits on both were in place and a party sought leave to expand both the number of terms and the page limits, as well as asking the Court to apply constructions from a prior.  It indicates which of these arguments work, and which might be best left on the hard drive.

No Waiver: Motion to Transfer Based on Improper Venue Granted

Several months ago I announced the last ruling that dealt with a claim of waiver for failure to assert an improper venue claim timely following TC Heartland.  I was premature, because there was still this case, which was stayed due to pending IPR proceedings three months before Heartland was decided.  When the stay was lifted several weeks ago, the defendant asserted an improper venue argument, and the plaintiff asserted that the defense had been waived.

Motion to Reconsider Order Granting Motion to Transfer

Let’s start the week off with a little palate cleanser in the form of an order dealing with a motion to transfer a patent case to the Northern District of California, but with the added frisson of a different procedural context – this one’s an order on a motion to reconsider the Court’s order granting the motion to transfer.

Redeposing Experts Close to Trial – Two Outcomes

When cases get close to trial, the requests for additional discovery and the orders granting it can get a bit harried as bits and pieces are granted or denied.  And sometimes those grants (or denials) come with costs that do have a price tag.  Here are a couple of recent orders from the Eastern District of Texas that illustrate how those can work out.

Marshall/Tyler patent scheduling conferences – September 11, 2018

If it’s the second Tuesday of an odd numbered month, there’s a good chance there are patent case scheduling conferences going on across the street at the Judge Hall courthouse.  This month was no different, with numerous cases heard for both Judge Gilstrap’s Marshall and Tyler dockets, as set forth below.

VirnetX – JMOL, MNT, enhanced damages & attorneys fees rulings

A trip to the West Coast for a mediation kept me from posting this earlier, but Judge Schroeder’s unredacted opinion in the VirnetX case resolving the postverdict motions is now out, and provides the latest analysis on many issues of interest to practitioners, including most notably enhanced damages, as none were awarded.