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.

“Proportionality” in the EDTX – Recent Activity

Readers may recall that last fall I did an extensive post on the history of discovery standards in the Eastern District of Texas, beginning with Dan Quayle (no, that’s not a joke). At that time, an extensive survey of 2016 Eastern District of Texas cases – including patent and nonpatent cases, as well as published in unreported opinions, indicated that with one Implicit exception (now that is a joke) no case appeared to apply the new “proportionality” test added to FRCP 26 by the 2015 amendments to the Federal Rules of Civil Procedure. A few cases quoted the rule and ruled specific discovery in or out, but only Judge Gilstrap’s Implicit opinion explicitly referenced the permitted discovery as being proportional to the needs of the case under the new standard.

At the time I testified before the advisory committee on the 2015 amendments, and through their enactment, I was of the opinion that the addition of the proportionality test was going to provide parties with a significant tool to delay or frustrate discovery previously considered permissible, especially in smaller cases, and in particular in the “bulk filer” or “high-volume” plaintiff cases, requiring parties to repeatedly seek court assistance to obtain discovery. But as the absence of court decisions applying the proportionality test indicates, that has not been the case, and parties have been able to resolve any questions regarding the proportionality of discovery without needing to resort to the court.

But when they do, it is worth noting. Recently, an Eastern District of Texas judge addressed a discovery issue in a patent case and explicitly referenced the proportionality test in his decision, as I analyze below.