A Marshall jury in Judge Gilstrap’s court deliberated through 6:15 pm Friday evening in this case, came back for two hours Saturday morning, and finally completed deliberations yesterday morning, returning a verdict in favor of the plaintiff for approximately $10 million. I wanted to address in this post a couple of issues that aren’t in the major media coverage of the case, but might be of interest to practitioners.
In a 43 page opinion (much, much longer if you count the extensive 10 point footnotes) Judge Gilstrap denied defendant Google’s motion to transfer the pending SEVEN litigation to California. The opinion addresses several issues relevant to the transfer analysis post TC Heartland / In re Cray that will be of interest to practitioners, as noted below.
I still have nightmares about the Brad Pitt & Morgan Freeman movie Seven from several years back. I don’t even like to see an image of Gwyneth Paltrow, and if I see blonde hair coming out of a box I will start screaming. (Okay, that doesn’t actually happen that much, but I worry about it a lot more than is normal). Today I can associate the word Seven with something else, albeit even scarier – a show cause order that begins “[u]nlike promises and pie crust, the Rules and Procedures of this Court are not meant to be broken, nor is their breaking to be ignored.”
The thing about patent local rules is that they often run contrary to the procedures established in the FRCPs. The FRCPs often work more like a funnel, only gradually narrowing and restricting parties’ ability to change their contentions and positions as the case proceeds. Didn’t get things just right in your pleadings? Need to change a position set out in a rog response? No problem (usually).
Instead, as even the earliest cases interpreting the EDTX patent rules’ predecessor, the ND Cal’s patent local rules stated, and the Federal Circuit later acknowledged, the rules permissibly provide a precise timeline for parties to disclose their infringement, invalidity, and claim construction positions “specifically to require parties to crystallize their theories of the case early in the litigation so as to prevent the shifting sands approach to claim construction.” O2 Micro, 467 F.3d at 1364 or thereabouts. Making changes later usually requires a heightened showing – something FRCP 15 would be horrified at, but which is well within courts’ discretion in managing these complex cases.
Of course that necessarily creates a new form of satellite litigation over the timeliness of proposed changes. The other day I posted on the issue arising in connection with a request to amend invalidity contentions, and this recent order addresses the same question when it comes to claim construction terms and positions.
You want to. You know you do. But the question is whether you can show good cause under P.R. 3-6(b). Because that’s the standard for amending your invalidity (or infringement) contentions in a patent infringement case.
This recent opinion out of Marshall addressing a motion to supplement invalidity contentions (the third in the case) provides a useful review of the relevant standards, and cautions that a lack of prejudice “without more” is not sufficient to make the required showing. In this case, one reference passed the threshold by the proverbial skin of its teeth, but the other did not – making this a particularly good opinion to consult to see how much diligence gets just a raised eyebrow, and how much gets a throat cutting gesture.
An issue that comes up from time to time is whether a trial should be bifurcated into different proceedings. In a patent case, a court might try invalidity separately before infringement, or invalidity and infringement, and then the issue of willfulness, etc.
The attached case presents the issue of whether an issue of corporate veil piercing/alter ego should be tried before the rest of the case. The attached order resolves the motion, but more importantly provides the relevant analysis for such requests under Fed. R. Civ. P. 42(b).
In recent weeks I have been looking at various venue opinions over the past few months, and realized that I’ve been giving Section 1404 motions asserting inconvenience short shrift since improper venue post Heartland/Cray is sort of the new black in venue law. This opinion remedies that somewhat with an opinion from a few weeks back that has some really useful insights into the relevant analysis.
It’s expert testimony day around the Smith household today, as our oldest Grayson hits the witness stand as an “expert” witness in one of the Practice Court “big trials” at Baylor Law School in Waco. The grazing is pretty thin for students to act as witnesses in the summer so they’re willing to take a rising sophomore engineering student as an “expert metallurgist” to testify – in fact they advertised for them. I can relate. I did my big trial, also on a maritime theme, 27 years ago, and we had to bribe classmates “studying for the bar” to take an afternoon off from the pool to testify.
So Grayson is looking forward to spending this afternoon and a bit of tomorrow after his Calc 2 class lets out expounding on the defects in the iron rivets that were used in the construction of the Titanic, shown above on her building slip in Belfast.
Oddly, he’s been there – here he is with his brother Parker walking near the outline of Titanic’s bow at her building slip in the old Harland & Wolff shipyard in Belfast. And he’s built an arc furnace using parts of a dry cell battery, melts metal for fun, and cooks steaks with a blowtorch. So he’s going to be one of those “I know it all” experts, which should provide good experience for the students directing and crossing him. And he might learn a little humility (but I doubt it).
Of course there’s a related EDTX case involving experts and heat, which is the attached opinion from Judge Gilstrap last month declining to strike an expert’s opinion in a case involving the remodeling of genital tissue by applying heat to certain target tissue. The Court concluded that the expert’s opinions and testimony “are not contrary to the Court’s construction. To the extent Defendants disagree with [the expert’s] opinions, that disagreement can be adequately addressed via vigorous crossexamination and through the presentation of contrary evidence and expert testimony.”
Come to think of it, with general jurisdiction rare, and specific jurisdiction also hard to come by – maybe there is a romance novel in there someplace. When you can get jurisdictional discovery and what you can get are beyond the scope of this order in a case where the existence of personal jurisdiction was challenged. But it does tell you what the timing would be and how it affects your briefing schedule.
The most important Marshall venue opinion today is the news that we’re getting a Dairy Queen, after decades without one. We actually had two when I was growing up – but no McDonalds – when that opened around 1980 the MHS band played at its dedication and I was honking away back in the trombone section. And I’m old enough to remember when my grandfather had to drive us to Longview to go to an El Chico’s. We don’t have that now either, but it was replaced with one of many quality chicken establishments. (Candidly, I still recommend the pizza).
But I digress.
As I mentioned the other day, we’re seeing a number of new venue opinions in recent weeks, and I wanted to start analyzing the ones coming out of Marshall, albeit from different judges. The first is by Judge Gilstrap, but I’ll be following up with decisions by Judge Payne and visiting Judge William Bryson of the Federal Circuit, as well as more by Judge Gilstrap. But this is one you’ll want to study for your form files as it has new language and analysis that litigants will find useful.