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.

How Do You Know When The Case Is Over?

Ever had that situation where you think you have a settlement, but the other side doesn’t, or vice versa?  I mean in the absence of horned and breastplated opera singers, of course. That was the situation presented in this case, where the parties in a patent infringement case appeared to have settled their dispute, but the final settlement agreement fell through when Defendants learned that the Patent Trial and Appeal Board (PTAB) had instituted inter partes review (IPR) of one of the asserted patents. The Court found that

Motion for Exceptional Case Finding After Favorable Jury Verdict

As readers of this blog know, prevailing parties’ opinions of the likelihood of a finding of “exceptional case” after a favorable verdict in a patent infringement case are a little like the children in Garrison Keillor’s Lake Wobegon – they’re all above average.  And as readers of my annual column on patent infringement in the Texas Bar Journal’s “Year in Review” issue note, judges have to date uniformly disagreed that a verdict – standing alone – supports a finding of exceptional case.

This issue was presented in a EDTX case recently when

Twombley’d in the Iqbals – Claims Against 11 Defendants Dismissed Without Leave to Replead

I wouldn’t call Professor Arthur Miller’s often-quoted phrase more elegant,  but it is clearly better that the mere “Twiqbal” at describing the effect of his former student Judge Payne’s report and recommendation last week in Bartonfalls v. Turner Broadcasting Systems, Inc., 2:16cv1127, which recommended dismissal of the plaintiff’s claims under three patents against 11 defendants, with prejudice, i.e. no opportunity to replead, using only four paragraphs of analysis.

But the grounds for the dismissal were unique.  In this case