Following In re Micron, district courts are addressing the issue of what level of delay in raising a Fourco venue defense following TC Heartland constitues a waiver. This recent opinion sets forth the relevant standards, and finds that defendants that waited four and five months, respectively, waived the defense of improper venue.
And now I’m back to my “fall of shot” analogy for motions for fee awards, with a second one to discuss today from the same judge. In this case, Judge Payne addressed a prevailing defendant’s request for fees and expenses, and denied the motion as to the patent claims, but granted it as to the trademark claims.
One of the things about patent litigation, as opposed to many other types, is that many cases are not resolved in one ruling or trial, or even in one proceeding. Even setting aside procedural issues such as venue, discovery, and pleadings standards, the applicable law often requires that cases proceed through multiple stages of rulings, and in some cases multiple trips to the Federal Circuit before the substantial issues are resolved – with some cases complicated by the fact that the applicable caselaw changed after the case was filed.
And it is now standard practice in most patent cases for a successful outcome for the defendant (and in some cases the plaintiff) to be followed by a motion for attorneys fees under Section 285, and for successful outcomes for the plaintiff in many cases to be followed by motions for enhanced damages under Section 284. So to paraphrase Imhotep from The Mummy (the good one with Brendan Fraser and Rachel Weisz, “[dispositive motion/trial] is only the beginning.”
MyHealth presents a case of the former, in which the resolution on the merits several months ago (see
Motions to Dismiss Under 101 Granted As To the Asserted Claims) led to this recent interesting opinion of fees under Section 285, which brings to a close – at least assuming it isn’t appealed – five years of assertion of Imhotep’s neighbor in death – the ‘985 patent.
You probably won’t see this fact situation come up very often. Defendant’s corporate rep gets on stand at trial and tells jury of its offices and facilities in the district and that “we’re moving a distribution center across to Marshall.” Jury finds for defendant and in a follow-in case defendant moves post-TC Heartland to dismiss for improper venue claiming it does not have a “regular and established place of business in the Eastern District of Texas.
One of the points I’ve been making in my recent papers and talks on patent venue is that the first place the issue can get before the court is at the venue discovery stage when the parties dispute which information is relevant to the analysis. A recent case discusses this, and draws some lines on what is and isn’t discoverable on the issue of venue post In re Cray.
This opinion passing on a defendant’s motion for summary judgment as to a plaintiff’s claims of willful infringement dealt with a couple of interesting issues regarding the necessary prerequisites for a claim of willful infringement.
I had some people ask me last night at a Christmas party (because this is what we talk about at Christmas parties in Marshall) if Judge Payne’s opinion that I posted on yesterday assigning the burden with respect to marking issues analyzed the case under the Federal Circuit’s December 7 opinion in Arctic Cat v. Bombardier, No. 2017-1475. The answer is yes, it did.
And then there’s that pesky marking statute, 35 U.S.C. § 287(a). Under § 287(a), a patentee or other party selling a patented product under the patent must mark that product with the patent number to provide notice to the public that the product it may be pursuing is patented. (No, there is not a penalty for overuse of the letter “p”. Why do you ask?) If they don’t satisfy the marking statute, damages can be limited to the point that the word “presuit” will henceforth cause the patentholder uncontrolled crying fits. The issue of when a plaintiff has the burden of proving compliance with the marking statute at trial was the subject of an interesting order from across the street earlier today.
A Marshall jury in Judge Roy Payne’s court returned a verdict Thursday in favor of Ericsson in a case brought against TCL Communications.
One of my favorite things is when the same court – meaning the same judge and in approximately the same time frame so you don’t have pesky things like intervening changes in the law messing up the comparison – issues orders going opposite ways on the same question based on the different facts in the two cases. The problem is somewhat similar to naval gunnery, where a ship begins an engagement by attempting to “find the range” to a target, with salvoes of shells falling short (and throwing up splashes that are then plotted) and then long as the gunners attempt to determine what trajectory finds the target. Once they “find the range” they attempt to direct as many shells as possible to that target. Where court opinions are somewhat different is that practitioners are acutely interested in where the shots change from short to long so they know at what point a court’s denials of a motion become grants – meaning which facts cause a court that would otherwise deny a motion to consider granting it. Yesterday I posted on a very recent opinion granting attorneys fees in a patent case under Section 285 against a “bulk filer” plaintiff. Two days later, the same judge denied a motion for fees against a different “bulk filer” patent plaintiff, giving us a unique insight into what facts can make cases different. So what were the facts in this new case?