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.
Today’s B side is what most practitioners in federal court really want to know – how do I get out? This order granting a plaintiff’s motion to remand due to lack of timely written consent, but denying fees, provides an overview of the relevant standards for both.
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.
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.
Without exception, each of the panels or talks I have been involved with since TC Heartland came out have agreed that waiver isn’t really worth talking about because as an issue it would go away with time as improper venue became a standard issue for defendants to analyze under the new cases.
This may, therefore, be one of the last cases where a court specifically finds that a proper venue defense was forfeited as a result of delay raising it after the change in the law, although the facts are a little unusual, given that the improper venue defense had already been raised by motion twice, denied twice, and mandamus sought and denied. This, the third motion, was raised seven months after In re Micron was decided, and was denied as well.
This venue opinion is sort of a double-header, since it includes an order from Magistrate Judge Love, followed by a second order overruling objections to a different report & recommendation from Judge Love by Judge Schroeder. So maybe that’s a tripleheader, but the middle one is secret.
In the old days, before people had to figure out how Daubert is pronounced (the family in the litigation pronounces it “Dobbert”, so you can be all French and everything, but you’d be all wrong too – and I say that as a French major), experts simply said what they said, and if the expert’s opinions were that poor, the jury not only disregarded them after the expert had been destroyed on cross, but punished the rest of your case too for presuming to waste their time with such awful testimony. Of course if your expert presenting the termite-ridden opinions was better than the lawyer cross examining them, things got interesting, but we’re not going to talk about George Greene right now.
One of the interesting things about damages testimony, specifically in patent cases, is that since the Federal Circuit has ruled certain economic calculations out as a matter of law for various reasons, the inquiry when determining whether a damages expert can testify as to an opinion at trial is not always simply that the flaws in the opinions go to the weight (with the experienced trial judge knowing that the system tends to be self-correcting because flawed opinions tend to kick harder than they shoot) but sometimes whether the opinion itself is legally impermissible under controlling caselaw.
The attached is a recent opinion out of Tyler where some of these allegations were levelled against a couple of experts, and the Court’s analysis provided hopefully some useful discussion of when flaws in the expert’s opinion fall on weight side of the scale, as opposed to admissibility. The point above – that bad opinions don’t do well at trial – may have been the lesson from this case as well.
One of the points I am making in the papers I am writing and panels I am speaking on this fall re: TC Heartland is that the issue of whether venue is improper as a result of Heartland/Cray is sometimes rendered moot by the resolution of a followup 1404 motion seeking transfer. We saw another example of this in the EDTX just this week.
It’s sad around the Hub these days, and I’m sure it’s not because our oldest Grayson has officially left home to start engineering school at Baylor, but because Judge Love has recommended granting the plaintiff’s motion for summary judgment on the defendants’ claims of inequitable conduct and unclean hands in this case, leaving the defendant standing beside their truck in the parking garage trying not to completely lose it as they try to go on as if things will ever be the same again.
Metaphorically speaking, of course.
This is a patent infringement case filed last fall. By February of this year, only one defendant was left. That defendant challenged venue in its answer, and five days after the scheduling conference TC Heartland came out. The remaining defendant filed a motion to dismiss for improper venue shortly afterwards. Judge Love’s opinion granting the motion addresses a the proffered waiver argument, as well as the plaintiff’s claim that the motion should be denied because multidistrict litigation was “imminent.”