Recent Marshall venue opinions – part 2 (in which we learn about distributors)

A familiar feature on the 100 block of East Austin in Marshall is the something called “the Hub”.  The Hub is a large wagon wheel hub symbol used by the Hub Shoe Store that occupied my offices from 1897-2009.  About once a century the Hub (which is actually a 19th century wooden barrel skinned with metal to look like a wagon wheel without its spokes) needs more than just a paint job and has to be take down for repairs.

Today was that day, so after removing rivets and nails from the McKinley Administration we made sure it was belted in properly for its trip to the local metalsmith.    It’ll be back in a couple of weeks.

What will not be back in a couple of weeks is this patent infringement action brought by a medical device company against a competitor in which it asserted that the defendants’ distributors satisfied the “regular and established business” prong of the venue statute.

Under the Sycamore Tree (there are pretrial motions)

One of the most haunting moments of the season finale of the original Twin Peaks in 1992 was Jimmy Scott singing Under the Sycamore Trees as things got really, really weird. I think of this song whenever I read opinions in Sycamore IP Holdings v. AT&T, which gave us more to consider recently.  Actually, much, much more.

How Not To Amend Your Infringement Contentions

Since their initial adoption by the Northern District of California in the late 1990’s the concept of early, firm contentions – both for infringement and invalidity – has been a characteristic of patent local rules across the country. They represent a deliberate decision by the adopting courts to require parties in patent cases to take positions earlier than would be required  under FRCP 26, and to require in most cases an order finding “good cause” to amend those contentions (certain amendments after Markman rulings don’t require an order but do require a certain showing).  Judges that adopt such proceedings often claim that without them such complex cases would be unmanageable.  Judge Ward, for example, asserted early during his tenure on the bench that patent cases needed such structure to be efficiently managed – and explained that as the reason why he adopted the N.D. Cal.’s patent rules for patent cases filed in his court.

Where a party doesn’t use one of the available mechanisms to amend its contentions, instead purporting to amend via email, interrogatory responses, smoke signals, or what have you – the outcome may be suboptimal, as this case shows.  The case also shows that delay in moving to amend can have serious consequences.

Orders on Procedures and Evidence for Civil Contempt Proceeding

One of the EDTX cases being handled by Judge William C. Bryson of the Federal Circuit has an upcoming hearing on whether the defendant should be held in contempt for not making ordered royalty payments as to certain products following a jury verdict of trade secret misappropriation (later affirmed on appeal and cert denied). Judge Bryson recently issued a couple of orders in connection with that hearing that readers might find of interest.

Whale fall re: JMOL on willful infringement, jury instructions & interest calculations

Earlier this year a Marshall jury in visiting CAFC Judge Bill Bryson’s court rendered a $20 million verdict in favor of the plaintiff against defendant Eli Lilly.  Several weeks ago Judge Bryson followed up with an order explaining his reasons for several decisions during trial.

Judge Bryson’s order is an example of what I referred to in my talk about JMOLs week before last at Horseshoe Bay as a “whale fall” – the sort of order that can take weeks to fully digest, but if you’re interested in the subject of getting a JMOL on a plaintiff’s claims of willful infringement or on when certain jury instructions are appropriate or how prejudgment interest is calculated it’s worth it.

Our story begins with the defense counsel rising at trial to assert a JMOL as to the plaintiff’s claim of willful infringement…

Uropep v. Lilly verdict

I am a few days late getting Friday’s verdict in Uropep v. Lilly by a Marshall jury in visiting Federal Circuit Judge Bryson’s court up, but I have a good excuse – we were chaperoning our 8th grade twins’ class trip to DC where they had their picture taken outside the Federal Circuit’s building (hey, it’s technically true).

The jury found induced infringement, that none of the invalidity claims were proved by clear and convincing evidence, and set damages at $20 million.  (More gratuitous shots of my kids to illustrate only remotely related legal concepts to follow).

First jury (patent infringement) is back

The Marshall cases in trial before juries this week are actually an antitrust, an employment, and a patent case.  The patent case before Judge Bryson came back with a verdict for the plaintiff of $20 million Friday evening, breaking the 3-3 tie we’ve had thus far this year in patent verdicts.  Congratulations to the plaintiff’s local counsel, and … well defendant didn’t have any local counsel I can send out sympathies to. The case is one that I’ve posted on a couple of times, involving 

Motion to Exclude Experts’ Testimony

With trial only a few weeks away in this case, the Court ruled on Defendant’s corrected motion to exclude portions of the plaintiff’s damages and technical experts, which arguing that their opinions are insufficiently reliable under FRE 702.  The Court’s ruling on the motions sets out the relevant considerations for experts, and explains its rulings in some detail.  They also include, candidly, interesting holdings on what constitutes expert versus lay testimony, and when a defendant’s gross sales numbers might be admissible.

Limine Order Prohibiting Reference to “Presumption of Validity”

Erfindergemeinschaft UroPep GbR v. Lilly is closing in on trial, and on Monday visiting Judge William C. Bryson of the Federal Circuit, who as readers know, maintains an active docket of district court patent cases in Marshall and is formally invested as an honorary trial judge in the EDTX with a certificate and everything, recently issued a 13 page order ruling on the parties’ motions in limine.  (Ed. note:  “Erfindergemeinschaft” does not, as you might think, mean “find the mine shaft”, but instead roughly translates to “inventor’s association”, which makes sense since the company was founded by research scientists at Hannover Medical School.  No clue what “Uropep” means in this case involving a drug used to treat erectile dysfunction, but I’ll keep looking). The holding that has the attention is the last paragraph, in which Judge Bryson decided to exclude UroPep from referring to the “presumption of validity”.  He notes that there are cases going both ways on this point, and concludes that that simply means that prohibiting the use of the phrase would not be error.  Having looked both ways, he explains his ruling: “In the Court’s judgment, the use of the phrase “presumption of validity” would add little to the jury’s understanding of the burden of proof on the validity issues. Moreover, the phrase might be confusing to the jury, to the extent that the jury is required to consider both that phrase and the Court’s instructions on the burden of proof. At minimum, the use of the term “presumption” would require a further definitional instruction by the Court, without leading to any greater insight on the jury’s part as to the nature of the burden of proof on the validity issues. Accordingly, the Court will exclude the use of the phrase “presumption of validity” and instead will address the burden of proof in its instructions to the jury.” 237 – Uropep