Patent cases often involve production of confidential technical information, which is then reviewed by another party’s experts in preparation for trial. Occasionally, an expert’s work for a competitor causes issues with determining whether the expert can review certain information. That was the case recently in a EDTX case involving electronic products. In that case
Defendants sought a stay pending IPR. Judge Mitchell reviewed the relevant factors and determined that a stay was not warranted. First, there was no showing of any case-specific prejudice. Second, the defendants’ delay in filing their IPR peition weighed against a stay, as the motion wasn’t filed until shortly before claim construction briefing was to begin. Third, and most importantly,
Defendants filed a motion for judgment on the pleadings under FRCP 12(c) alleging lack of patentable subject matter in this case, and asked the Court to invalidate the asserted claims on the basis that they are directed to the abstract idea of “offering, tracking, and processing discounts”—a concept Defendants contended is a longstanding commercial practice.
In its opinion, the Court
Those who have been reading this weblog for a while know that I’ve got a thing for JMOL rulings. They are hands down not just the most useful documents to review for a forensic understanding of what happened in a particular case, but also to learn what the requirements are for claims and defenses.
My interest in JMOLs started before I even started practicing law. In the winter of 1991 I was in my last quarter at Baylor Law School, preparing for my upcoming clerkship with Judge Hall in Marshall by interning for a federal judge in Waco and taking Federal Courts from Prof. Bill Underwood, who had just started at Baylor the prior year. Prof. Underwood emphasized the importance of knowing the FRCPs by pronouncing that if we didn’t know the forthcoming Dec. 1, 1991 amendments to the FRCPs, we wouldn’t pass his class. As a result, I spent the next ten years as (it seemed) the only lawyer east of Dallas that knew what the rules were on subpoena range – because they were in that batch of rule changes.
I have to mention that this was before Prof. Underwood became the Baylor Practice Court professor, a job he held before becoming Baylor’s interim president from 2005-2006, a job he did surprisingly well in. I say “surprisingly” because it’s hard to picture a Baylor PC professor excelling in a job that doesn’t involve torturing law students. It’s like finding out that Genghis Khan took a sabbatical from pillaging to run a successful Habitat for Humanity program. Or a T-rex taking a break from chasing sauropods to set up a child care program for Triceratops eggs. It’s just not expected. I note that Professor Underwood has continued his career outside the fields of torture and despair enhancement as president of Mercer University since 2006, and I wish him well. Again, I didn’t have him for PC, so this is easy for me to say.
Where was I? Oh, yes, JMOLs. Guess what else was in those Dec. 1, 1991 amendments? The motion previously known as a “directed verdict” was renamed “judgment as a matter of law” and given a new scope. And wouldn’t you know it, nine months later I’m minding my own business at the law clerk’s table in the courtroom in Marshall when Judge Hall grants one of these newfangled motions, sends the jury home, and promises a written order.
What came out of that 13 days later was Johnson v. Bekins Van Lines, 808 F.Supp. 545 (E.D. Tex. 1992) – one of the first reported cases using the new name and standard, and a foxhole’s-eye view as to the new rule in the most sensitive of contexts – a court deciding that the evidence was insufficient for the case to go to the jury. I still have the advance sheet on a shelf in my office, and I’ve never stopped appreciating the unique insight that the explanations contained in JMOL rulings can provide into a case.
The most recent JMOL from the EDTX comes from Tyler, in
This case came before the district court on objections from the magistrate judge’s ruling denying the defendant’s motion for summary judgment of indefiniteness. On appeal,
A few weeks after Judge Gilstrap’s order in September 2015 dismissing the 101 defendant eDekka litigation on 101 grounds, Magistrate Judge Love recommended granting a similar motion in the Rothschild Location Technologies cases on January 4, 2016 – a recommendation that Judge Schroeder adopted several weeks later. That litigation originally involved around three dozen defendants. Judge Schroeder recently denied the plaintiff’s motion for reconsideration in light of the “101 spring” line of cases from the Federal Circuit in 2016 (Enfish et al.) which did not affirm district courts’ decisions to dismiss cases on 101 grounds. In his opinion, Judge Schroeder
I mentioned previously that there’s really no “additur” by which a judge can scratch out the damages number awarded by a jury as insufficient under the evidence and increase it. While a trial court can effectively reduce a verdict via “remittuitur” or via JMOL/MNT practice, the reverse isn’t true. But to use an overused word, patent cases are exceptional in that judges do have the ability to “enhance” damage awards under 35 USC 284 where a jury has made a finding of willful infringement. Such was the case in
In this case the defendants sought leave to amend its invalidity contentions to add an indefiniteness argument as a result of the Court’s claim construction. But the timing is important here, because
Motions to compel seeking additional discovery often include requests for fees and costs for the expenses associated with bringing the motion. In this case, the Court granted the defendant’s motion to compel and awarded fees and costs associated with that motion, and the plaintiff filed a reconsideration of the award of fees and costs in his order,
A key issue in motions to stay pending inter partes review is often whether a moving defendant is willing to agree that it will be bound by the statutory estoppel provisions of 35 USC 315 (C). In this case, the court had deferred ruling on the motion to stay until the defendant took a position as to whether it would agree to be stayed. In the attached order,