This is an order resolving a motion to compel on damages issues in a patent case. At issue was whether the Defendants, a parent and a subsidiary, were required to provide financial data on infringing sales made by the parent to entities other than the named sub, and whether Defendants were required to provide financial data for certain additional products. The Court granted one but denied the other, citing the “p” word and providing a useful list of things not to do to preserve a claim for discovery.
This case is a rematch between two companies which make and sell oilfield equipment used to blow stuff up. Last year a Marshall jury in Judge Payne’s court held the six claims asserted in that case not infringed and invalid as (1) obvious, (2) anticipated and (3) due to the on sale bar. This year just two claims were asserted and the Marshall jury in Judge Payne’s court held them not infringed and invalid as well, but only as obvious this time.
Today saw one summary judgment ruling and five Dauberts roll out from the chambers downstairs across the street, making things about as busy downstairs this week as they were when this photo of Judge Payne’s future courtroom was taken in 1940-ish. So let’s take a quick look, shall we?
One of the more recent examples of the venue order is this one from Judge Payne last month which denies a motion seeking a transfer to Delaware . What makes this order different than the run of the mill orders – what Justice Scalia would have called “mine run” for reasons that still baffle legal scholars – is that it’s based on some forum selection clauses in prior patent license agreements, as well as a judicial economy argument due to prior Delaware cases.
And now from the tart side of the menu, we have an order excluding an expert’s testimony as not based on sufficient qualifications only a couple of weeks before trial. No, no leave to submit an additional report was granted – didn’t you hear me describe it as “tart?” If leave had been granted I would have described it as creamy, with a hint of cinnamon and nut in the crust.
It’s one of those transition days at the office as my last two October trials either settled or were continued within 24 hours of each other yesterday after a whirlwind last couple of weeks full of activity getting both ready for their respective pretrial conferences. You know the kind of day I’m talking about – closing files, stacking up the documents to be shredded, trying to clean up the mess my to do list has become, and having the usual existential debate – am I happy or sad that I’m not as busy as I was two days ago.Hmm. In terms of specifics, this morning it means I’m in the office early enough to tack on another post before the daily weblog email deadline of 8 am, and I thought this order seeking partial summary judgment on the issue of damages, which deals with marking issues.
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.
Motions to dismiss insufficient defenses “or any redundant, immaterial, impertinent, or scandalous matter” are in practice a pretty rare bird, and orders resolving them even more so. So while there is not, regrettably, anything “scandalous” being dealt with in this recent order, it does at least take neglected Rule 12(f) out for a spin.
Two of patent litigants’ favorite topics come together in this afternoon’s essay by Judge Payne ruling on a defendant’s motion for partial summary judgment of willful infringement. (Ever wonder why “infringement” has an “e” and “judgment” doesn’t? I have, but just the once). So crack open a peanut butter cup, and let’s see what the Court had to say.
The analogy may be a bit overstated, but it is true that there are likely no two limine rulings that are the same. Each case raises a different set of issues, each lawyer has a different level of comfort with having or not having a limine on certain issues, and even where the issues are ones that are frequently repeated, the rulings can vary slightly, depending on how the issues are presented.
A recent order by Judge Payne is actually adopting the parties’ “joint” set of proposed limines, but still illustrates some of these characteristics. These are not issues that the parties disputed, but it is useful to see the types of issues that parties don’t dispute – but want a limine order on anyway.