“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

Mini-Markman/Stay Strikes Again

Serially-sued patent defendants often want to know why they can’t just get a case stayed so they can show the Court that it’s obvious that they don’t infringe.  Well, here’s how you do it.

A few months ago I posted on an order granting a motion for an early claim construction on three terms appearing in the asserted claims. “Defendants allege a pattern [by plaintiff] of serially filing groups of cases and then settling those cases before the Court has had a chance to construe the asserted claims,” Judge Payne wrote. (Emphasis added). “The Court finds that determining the meaning of the three terms identified by defendants as early as possible may aid in the just and speedy resolution of this in future cases in which [the plaintiff] asserts the patents.” Accordingly, Judge Payne granted the request for early claim construction and ordered the parties to jointly submit a briefing schedule. The court deferred the issue of whether to stay further discovery and proceedings until it had established a workable early claim construction briefing schedule, but did later stay the case.

The post also explained the history of the “mini Markman” procedure, and cited it as an example of courts finding similar opportunities to achieve efficiencies in addressing repeat issues through special procedures or processes – in much the same way that in my hobby of modelbuilding I find opportunities to achieve efficiencies by using templates or jigs to handle repetitive tasks, using my scratchbuilt 1/200 LUT.  So what you’re wanting to know before we talk about mini-Markmans and stays is, of course, “Michael, how’s that scratchbuilt 1/200 LUT coming along?”  Well, thanks for asking. It’s coming along pretty well – I’ve finished the levels, and am working my way up the tower adding detail and researching the crane on top (did you know it was made by Colby Crane of Seattle – a subsidiary of Lockheed Shipbuilding?).

But back to the mini-Markman.  Judge Payne conducted the hearing yesterday, and the order was out before lunch today.  The order, and my analysis, follow (no more modeling updates, I promise):

Bug, Meet Windshield: Personal Jurisdiction & Twiqbal

Speaking (indirectly) about trial practice, Mark Knopfler that famously observed “some days you’re the windshield; some days you’re the bug.”  What’s a morning catching up on recent cases without watching another argument for (or against) personal jurisdiction and plausibility play out, and see where but for the grace of God, I go … at least until later this afternoon. In this case, the defendant asserted a motion to dismiss for

Another 101 Ruling – Enfish-y or not?

I am going to have to license the graphics from Nintendo’s Wonderful 101 and it’s character Alice before this spring is out because they are in pretty heavy rotation with all the 101 rulings coming out.  This morning’s focuses, as the opinions all do, on whether the claims are more analogous to the cases where patentable subject matter was found, or where it wasn’t, in, for example, Enfish.

In this case,