Kaist verdict – $400 million

A Marshall jury in Judge Gilstrap’s court found the asserted claims willfully infringed in the Kaist case and awarded $400 million. It also rejected all of the asserted invalidity defenses.  The plaintiff is  the intellectual property arm of a South Korean research university.  The defendants are Samsung Electronics Co., Ltd, Qualcomm, Inc., and GlobalFoundries Inc..

A quick review indicates that this is the largest patent verdict in Marshall since January of 2011 in a medical device case, and the second largest in Judge Gilstrap’s court in the six-plus years he has been on the bench.  The only one larger was a Tyler case, Smartflash, which he set aside in postjudgment proceedings.

I’ll post separately on where that leaves us on verdicts compared to last year, and will attach the verdict when it’s posted.

Motion to Transfer Granted – Current Standards on Foreign Defendants & More

It’s hard to believe that it’s been six weeks since I spoke on venue post-TC Heartland at the ABA IP meeting in Crystal City, but one thing I said is probably worth repeating – take your notes on venue in pencil.  Because there have already been three important Federal Circuit venue opinions since then. For the same reason, it’s always worth reading the most current venue opinions coming out of local courts because they implement the new decisions pretty quickly.  The attached is a good example, as it address several hot topics, including venue statutes not applying to foreign defendants and personal jurisdiction arising from products sold into the forum state, as well as the evergreen issues regarding transfer under Section 1404.  Oh, and it’s a Hatch-Waxman case too, so the analysis in places is sort of backwards and in high heels, as the Ginger Rogers reference would say.

Case Stayed Pursuant to “First to File” Rule

One of the first legal principles I learned about as a law clerk back in the days of MS-DOS and paper slip opinions from the Fifth Circuit was the “first to file” rule.

In Texas Instruments v. Micron, 815 F.Supp. 994 (E.D. Tex. 1993) Judge Hall stayed TI’s patent infringement action in favor of a “first filed” action in Idaho, and in so doing set out the metes and bounds of the doctrine, which also addressing the various transfer factors.  He also made the observation that “[a]ll too often, patent infringement suits begin with a battle over where the war is to be fought.”  Id. at p. 996, n. 1.

The reason I still have the paper copy is that when I clerked it was a tradition that the clerks kept the paper advance sheets of Judge Hall’s published opinions once the bound copies came in. I still have mine, which as you can tell I keep with Judge’s portrait, biography, and an autographed copy of the 1991 CJRA Plan that was the genesis of the EDTX that we know today.  Since there were two clerks, if we both needed the same advance sheet for our collection we’d pick up the one from Texarkana the next time Judge Hall had hearings there, which is when we’d process the stacks of new volumes and advance sheets to keep the law library up to date in the rooms of old barrister bookcases that filled chambers and the law library upstairs (now Judge Craven’s chambers) – and toss boxes upon boxes of obsolete advance sheets.

Earlier this morning Judge Gilstrap applied this rule, similarly staying a later-filed infringement action in favor of an earlier filed declaratory action in South Carolina, citing his predecessor’s opinion in TI v. Micron.

12(c) Motion to Dismiss Under Section 101 Denied

Seems like just last week that I summarized where we were on local decisions after the Federal Circuit held that some Section 101 issues were questions of fact.  Oh wait, it was just last week.  Well, we have another one – this time within an order denying a Section 101 motion at the pretrial stage, this time explicitly concluding that there were issues of fact that precluded dismissal as to two of the three asserted patents.

The Gatekeeper

A couple of Daubert rulings today put me in mind of Ghostbusters.  Remember the Gatekeeper and the Keymaster? Well, the outcome of these “gatekeeper” motions may or may not have been as catastrophic to the parties in these cases – it’s usually difficult to tell with the part in/ part out rulings – but as usual they do provide some insight into why some opinions are ruled in or out, and some useful guidance on which challenges are worth making and which aren’t..

EDTX 101 Update After Aatrix

Paradoxically, I’m going to celebrate receiving my second patent this morning (9,955,784 is my new favorite number) with analysis of what’s happening locally regarding the patentable subject matter defense under Section 101 following the Federal Circuit’s opinion in Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121 (Fed. Cir. 2018).

I have had a few requests for some attention to that specific issue, and wanted to let people know what I’ve seen so far locally.