Plausible. P-L-A-U-S-I-B-L-E. Plausible.

One day a year I have to spell things right, and today was that day.  Congratulations to our Marshall Chamber of Commerce team for pulling off the win at the annual Marshall – Harrison County Literacy Council spelling bee.  We made it past 12 other teams, and raised some good money for local literacy efforts.   As Bryan Partee said at the beginning of the competition, “when you can read, every book is a children’s book.”  I like that.  (To answer your question, they’re fire ants – Marshall’s Fire Ant Festival is just a few weeks away).

Speaking of spelling, “plausible” can be a pretty hard word, but a recent opinion by Judge Payne uses it in a sentence, and provides some guidance on when a motion to dismiss a complaint for failure to state a claim  because an assertion is not “plausible” should be denied.

Outlining the Contours of Waiver Post TC Heartland

As readers are aware, a lot of pixels have been devoted in recent weeks to identifying when a motion to dismiss for improper venue asserting the Fourco argument pursuant to the Supreme Court’s recent decision in TC Heartland has been waived for failure to assert it when required under Rule 12(b)(6).  A recent report and recommendation by Judge Payne addressed this issue in a specific set of circumstances I had not seen in an order previously.

Lies, Damned Lies and Case Captions

It isn’t unusual for a case’s caption to gradually become dated, reflecting parties that have been dropped, settled or reorganized.  And thus it also isn’t unusual for parties to ask the Court to amend the case caption to replace the names of parties who have passed on with the current ones.  It turns out there’s a problem with that, but also a solution, as a recent opinion points out.

Yet Another Decision on Assignor Estoppel

Assignor estoppel is an equitable doctrine that prevents one who has assigned the rights to a patent (or patent application) from later contending that what was assigned is a “nullity.” In addition to the estopped assignor, the doctrine may prevent parties in privity with the assignor from challenging the validity or enforceability of the patent.  Courts have applied the doctrine to invalidity challenges based on novelty, utility, patentable invention, anticipatory matter, and the state of the art.

This was the issue presented in a recent EDTX case in which a plaintiff plugged the doctrine into a handy summary judgment template in an attempt to prevent the defendant from challenging the validity of the patent in suit.  Let’s see how that worked out.

Sufficiency of Contentions Referencing Representative Products

One of the key features of patent litigation in many of the patent-heavy districts is mandatory disclosure of detailed infringement and invalidity contentions.  The EDTX has used such a procedure since 2000, when Judge T. John Ward adopted the Northern District of California’s local patent rules for cases in his court, and the rules were adopted district-wide several years later. One of the common issues regarding contentions is when they are sufficient, and specifically when a party can chart one “exemplar” product and have that chart cover others.  This was the issue presented in a recent decision by Judge Roy Payne in Marshall.

Agreed Transfers Post TC Heartland- Is It Transfer or Dismissal?

What gets attention since TCH is the effect of the decision on new patent case filings in the EDTX, and depending on which week you check filings, they have decreased by around half as plaintiffs voluntarily decide that they don’t have the venue facts to file here and choose to file elsewhere.  What gets less attention is the effect of the decision on pending cases where plaintiffs come to the same conclusion.

These decisions show how those decisions come about, and what the Court does when the parties agree that the plaintiff needs its ticket punched, but can’t decide whether to dismiss or transfer.

Microsoft Declines to Challenges Venue in EDTX Post-TC Heartland

A little more information this afternoon on how TC Heartland is playing out on the ground in EDTX.

Biscotti Inc. v. Microsoft Corporation, 2:13cv1015-JRG-RSP is a patent infringement case that’s closing in on trial before Judge Gilstrap in Marshall.  (Readers might recall my post on Judge Payne’s recent order on the effect of Microsoft’s IPR activity on its invalidity defenses at trial.)

In the course of the pretrial conference before Judge Payne earlier today, Microsoft noted in response to a question from the Court that it would not be asserting a challenge to venue in the EDTX as a result of the Supreme Court’s decision in TC Heartland.

Motion to Strike Expert Report Portions That Were Outside PICs Granted

Much like this photo of our twins after seeing their first Broadway show last month, there’s content here to make you both happy and sad.

First, have you ever been frustrated looking for an order to give that obnoxious partner/associate that wants to file a motion to strike something because it’s a few hours late?  Well, click through and the Court’s haiku-like resolution is yours to embrace.

The Court declines to do so.

[Defendant] has not suffered any prejudice.

But there’s substantive information in this order granting a motion to strike portions of a plaintiff’s expert report because they are different than what was in their infringement contentions that’ll put a smile on your face.

Parsing the Effect on IPR on Invalidity Defenses

Not all patents that end up before the proverbial “patent death squads” at the PTAB are never heard from again.  In some cases the patents (and the invalidity arguments made against them) come back, but the thing you may have to decide is if, like Gandalf the White, the trip was an improvement (note the straightened hair), or like Stephen King’s Pet Sematery … not.

That issue was presented in a recent EDTX case where a patent returned to the trial court after a stay during which the PTAB upheld the patentability of each of the challenged claims for which the IPR was instituted.  (No, the examining panel wasn’t made up of Santa Claus, the Easter Bunny and Frosty the Snowman – that really does happen).  The plaintiff then sought to trim the defendant’s invalidity case based on the events that transpired before the PTAB.