Judge Gilstrap Succeeds Judge Clark as EDTX Chief Judge

United States District Judge Rodney Gilstrap will assume the position of Chief Judge of the Eastern District of Texas on Thursday, March 1, 2018. He will replace Chief Judge Ron Clark who will take senior status at that time. For those keeping track, that will mean that the district has four of its eight active judgeships filled, with two judges on senior status, both in the Beaumont Division.  Three of the four vacancies have pending nominations.

Service of process overseas

Texas lawyers are spoiled when it comes to service of process.  We get to serve process in civil suits using certified mail, return receipt request in state court.  And in the same way that state court procedures tend to bleed into federal court practice, even where the federal rule is not the same (think who pays for expert discovery) the state rules on service of process influence practice in federal court as well.

In part for that reason, in part because other nations have this perplexing tendency not to follow the Texas rules of civil procedure, and in part because agreements tend to eliminate this issue in many cases, the actual requirements for service of process on foreign defendants are terra incognito-ish for many practitioners, and can present obstacles when not rigorously followed, as this decision shows.

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.

Fees Set in Deficient Infringement Contentions Case

Several weeks ago I posted on Judge Payne’s order on inadequate infringement contentions, which culminated in an order that the plaintiff pay Defendants’ reasonable expenses, including attorneys’ fees, incurred as a result of several motions seeking to compel it to comply with the Local Patent Rules governing infringement contentions. The parties were unable to reach agreement on the amount of costs, and earlier this week Judge Payne issued his order resolving the issue.