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.
I don’t mean to imply that my holidays are so dull and uneventful, or my interests so limited that a Section 285 order constitutes excitement – but given that my middle
doppelganger child Parker’s favorite Christmas presents are a Black Sheep squadron T-shirt and a B-17 bag, it’s certainly possible that’s the case. (For more information on the Black Sheep, see this post on my personal weblog. Because it’s the holidays I’ll spare you from why both the T-shirt and the bag are not totally accurate).
In any event, the attached order provides yet another instance where a court found that despite one side having lost, the case wasn’t “exceptional” for Section 285 purposes, and along the way points out arguments that are not helpful, as well as some that might be.
I usually don’t post cases that involve pro se parties or motions that aren’t opposed, but the Court’s analysis of this motion to compel arbitration is a helpful summary of the necessary analysis on whether to enforce an arbitration clause contained in a contract, and when a court may appoint an arbitrator.
Motions to disqualify counsel are not common in civil litigation locally, and motions based not on conflicts but on counsel’s conduct in litigation are even rare. This order from Judge Mazzant addresses this issue in a case where the attorneys’ conduct in the case was at issue.
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.
A little over a month ago I posted on Judge Payne’s decision to grant a motion to dismiss for improper venue based on his decision not to consider the locations of a corporate subsidiary in the district for purposes of determining venue under Section 1400. See “A Difficult Standard to Meet” – Imputing Places of Business Among Corporations.” I thought readers might be interested in Judge Schroeder’s order resolving the objections to that ruling, which has some useful tips on how to (or not) to brief objections to a magistrate judge’s rulings.
(Ed. note: the scene of Dr. Frankenstein’s laboratory refers metaphorically to the concept of transferring something – here one corporation’s locations – from one entity to another. It does not refer to methods which may or may not be used for the training or usage of law clerks. I express no opinion on its accuracy or metaphorical appropriateness for that use.)
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.