Back across the street yesterday for scheduling conferences in patent cases, followed by scheduling conferences in everything else. The cases discussed below are for Judge Gilstrap’s share of the Marshall patent docket, as well as the Lufkin patent docket and one Sherman patent case.
This is a Markman ruling that concluded that a claim term was indefinite. The Court set forth the current standards for such an argument before concluding that the term had been shown by clear and convincing evidence to be indefinite in light of the court’s other constructions. The opinion also addresses several times the argument that a claim term should be given its plain meaning, and provides a good set of examples for when this argument will be accepted.
Section 101 motions asserting lack of patentable subject matter are sometimes brought as motions for judgment on the pleadings under FRCP 12(c). After reading this order, I think I might reconsider whether that’s a good idea.
One of the commonly cited uses for a motion to dismiss to to identify and cut out of a case claims or defenses which don’t have support, either in the law or in the facts of the case. Such motions serve the useful purpose of pruning cases back to what’s actually at issue, although I have an editorial comment on that below.
But as with any pruning job, there’s a line between cutting off the dead wood and cutting out causes of action that are still at least potentially live. This recent EDTX case illustrates where this line is with respect to pleaded claims.
This case is a little unusual in that the day before the Markman hearing the Federal Circuit affirmed another district court’s grant of summary judgment of indefiniteness based on construction of a single word. The Court asked for additional briefing, and after considering it, issued the attached opinion.
This is an order resolving a motion to compel on damages issues in a patent case. At issue was whether the Defendants, a parent and a subsidiary, were required to provide financial data on infringing sales made by the parent to entities other than the named sub, and whether Defendants were required to provide financial data for certain additional products. The Court granted one but denied the other, citing the “p” word and providing a useful list of things not to do to preserve a claim for discovery.
This case presents one of the more interesting examples of partial stays due to parallel proceedings before the PTO, with the court staying some of the claims, and severing and proceeding to trial on others. It also illustrates the consequences of not joining in pending IPRs.
While the rest of us were settling down to watch the election returns Tuesday a Tyler jury in Judge Schroeder’s court rendered a verdict in a patent case involving two claims from a single patent.
Let’s say you defeat an adversary in litigation, and you’re looking for assets from which a judgment can be satisfied. Can you get discovery into your former opponent’s disposition of assets? The answer is yes, but not prior to when you made your claim. Why? Because it would not be proportional to the needs of the case. This order makes that finding, but then defines what discovery would be “proportional” under the circumstances.
I’ve seen a couple of cases recently out of the EDTX dealing with breaches of settlement agreements. In some cases the complaining plaintiff (who in this case was the original plaintiff) seeks injunctive relief, but in this copyright case it is just seeking an order in a default situation that it is entitled to the unpaid payments due under the original agreement, as well as fees, costs, and since the infringing activity has resumed, a finding of liability and award of statutory damages. In essence, the hole for the copyright defendant just got twice as deep. (Pro tip: don’t default).
Admittedly this is a default situation, but it’s a nice template for what to seek when you have to go once more unto the breach.