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.

Expert’s Opinions v. Court’s Claims Construction

A recurring issue in patent cases is when a technical expert’s opinion is consistent with the Court’s claims construction, and simply opines whether infringement exists under the construction, and when it is not.  A recent case provided three useful examples where an expert did – but in some cases did not – proffer opinions that were consistent with the claim constructions the jury would have to consider, or was otherwise permissible.

Private Securities Fraud Class Action Certified

Class actions are not the most common form of cat in the Eastern District of Texas, but they are filed from time to time.  This case provides an interesting look at the standards applied to motions to certify a class, as well as to the standards applied by district judges reviewing reports and recommendations regarding class certification, as well as a thick block of analysis on the specific requirements of private securities fraud class actions as set forth in Amgen.  If you’re addressing similar issues, the two opinions are worth a close study.  If you’re not, this is an hour of your life you can keep.

Motion to Stay Pending Resolution of IPR

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,

101 Motion Denied w/o Prejudice Pending Claim Construction; Case Stayed Pending CBM Review

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

Nokia Engineer Week in the EDTX Concludes With Verdict in Core II

Last week was apparently Nokia Engineer Week in the Eastern District, as two juries found for two plaintiff patent holders asserting patents by Nokia engineers. As I posted last week, on Thursday a Tyler jury in Magistrate Judge K. Nicole Mitchell’s court found that Apple willfully infringed a patent by a Nokia engineer on wireless communication technology and awarded $22 million.  On Friday, a Marshall jury in Judge Gilstrap’s court assessed damages in a retrial of a March 2016 patent trials at $2.3 million. Why Nokia patents? Industry followers may recall that Nokia sold off large numbers of its patents beginning in 2011 after selling its cell phone business to Microsoft.  While I do not know what the respective splits any proceeds from last week’s verdicts would be, a 2011 story reported that proceeds from at least some of the patents would be divided in thirds between the acquiring entity related to the plaintiff in last week’s case, Nokia and Microsoft.  See  Mosaid Acquires 2,000+ Nokia Patents, Will Handle Licensing & Litigation For A Cut. Is This That Damages Retrial Of Which You Spoke? Actually, no. Readers may recall that in March a Marshall jury in Judge Gilstrap’s court also found against LG and in favor of Core and awarded $3.5 million in damages.  In August, Judge Gilstrap set aside the damages verdict in that case, finding that there was insufficient evidence to support the damages verdict, and ordered a retrial.  This is not that case.  It involved smartphone user interfaces, while last week’s case involved patents dealing with battery life and voice quality.