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.

Court Explains Vacatur of $75 Million Damages Award

I have been doing the one-armed paper hanger thing in recent weeks getting ready for some upcoming trials and hearings (including last Friday in Texarkana where cocounsel Brent Carpenter and I celebrated enjoying the hell out of practicing law by taking a selfie outside the courthouse) and have just been able to turn to some of the more interesting recent orders.

A couple of weeks ago I posted that Judge Payne had decided to vacate the damages award in the Ericsson v. TCL case.  The opinion is now out and explains the basis for the Court’s decision – as well as noting that the infringement JMOLs will be denied.

Patent Case Stayed Pending Mandamus Decision – But Not Pending IPRs

Earlier today Judge Gilstrap granted a motion staying a consolidated patent case pending the resolution by the Federal Circuit of a mandamus petition that has been filed in another case.  The Court declined to stay the case pending resolution of two IPR proceedings. The ruling is worth studying because of what the motion sought, as discussed below.

Adjustacam Fees Set at $564,865.85

The procedural history of this case is a long one.  Essentially, Adjustacam originally sued 58 defendants in 2010.  It dismissed most of its claims prior to Markman, and then in the fall of 2012 dismissed its claims against the last defendant, Newegg.  Newegg sought fees under Section 285 and Judge Davis denied the motion. Octane Fitness then came out while that decision was on appeal, changing the standard for determinations of “exceptional case” under Section 285, and Newegg sought fees again.  The trial court, now Judge Gilstrap, denied the renewed motion.  The Federal Circuit reversed and found the case “exceptional”, and Judge Gilstrap ordered briefing on the amounts of fees.  This afternoon he issued the attached order setting the fees.

Summary Judgment of Improper Venue Granted

This is a patent infringement case involving medical devices that are currently in clinical trials across the country, including at sites in the Eastern District of Texas. The original motion to dismiss for improper venue was denied pre-TC Heartland.  The renewed motion was denied because the issue of improper venue could not be addressed at the motion to dismiss stage because the basis for the defense depended on factual questions that could not be resolved at that stage.

But once further discovery into the infringing acts in the EDTX was conducted, at the summary judgment stage the Court could address the question of the relevance of the § 271(e)(1) safe harbor defense in determining whether venue was proper.

Supplementing Initial Disclosures & Sequencing Issues at Trial

The issue of when initial disclosures – not patent rule disclosures, but the Rule 26(a)(1)-ish ones which include lists of persons with knowledge – can be supplemented is one that doesn’t come up often.  And a request that issues be sequenced at trial is even rarer.  This order resolving requests for both is of interest to practitioners, since while these requests don’t come up often, they’re of great interest when they do.

Celebrating Lexington Day With an Enhancement/Exceptional Opinion

Well, it’s certainly both an enhanced and exceptional day for me, as Paul Allen’s team located the wreck of the carrier Lexington in the Coral Sea, 76 years after it sank, along with – to date – 11 of the 35 aircraft it had on board when it went down.  

Yes, I’m the crazy uncle that makes handcrafted wood Lexington toys for his cousins’ kids – as well as the occasional plastic model of one – but you know, every family has one of those, doesn’t it?  So today, the Lexington comes with me to the office to celebrate.

Also celebrating this morning is plaintiff Eidos Display, which, following a lengthy campaign, won a 2x enhancement of its recent $4.1 million jury verdict against competitor Chi Mei Innolux. Like the Battle of the Coral Sea both sides won something, with Innolux defeating Eidos’ request for attorneys fees under Section 285.  So let’s analyze what happened, note some significant comments in the opinion, and say hello to LBJ, Mr. Sam, and some East Texas lawyer sayings along the way.

What part of “The Court ORDERS additional briefing on … the propriety or impropriety of venue in this District and the propriety or impropriety of venue in any requested transferee districts” did you not understand?

I recently posted on a post-Micron decision finding no waiver and deciding to dismiss as opposed to transfer patent cases brought against three defendants.  There’s an interesting followup to that decision now, in which the plaintiff asked the Court to “modify” the order to transfer instead of dismiss.

The Equitable Defense of Patent Misuse & Limitation of Damages Based on FRAND Principles

Equitable defenses typically don’t get a lot of attention in patent cases.  In this case the parties declined to present any evidence on the equitable defenses orally, instead submitting on the papers, but of course submitting additional briefing postverdict as well.  Accordingly, the defendant’s equitable defenses of patent misuse and limitation of damages based on FRAND principles were resolved postverdict in the attached findings of fact and conclusions of law.