Month: February 2017

Motion to Transfer to NDCA Granted

msmithJudge Roy S. Payne (USMJ), Marshall, Venue

Defent sought a transfer to its home court of the Northern District of California.  In the attached opinion, Judge Payne granted the motion, finding that the defendant had shown that the Northern District of California is a clearly more convenient forum for this action.  The opinion contains extensive and useful analysis on private interest factors as applied to a defendant headquartered in Pal Alto, California, as well as the “local interests” public interest factor.  

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Book Review: Patent Litigation Primer: A Guide For Inventors And Business Owners – Robert A. Klinck

msmithBook Reviews

A couple of years ago I had the pleasure of working with a lawyer from Washington DC named Bobby Klinck defending a client in a patent infringement case in Marshall.

Shortly after our case wrapped up, Bobby told me that he had written a book on patent litigation, Patent Litigation Primer: A Guide For Inventors And Business Owners, which he explained to me was intended to help fill a gap that he saw in practice in the information available primarily to inventors and business owners.

Patent Litigation Primer gives new participants in patent litigation knowledge of the relevant legal concepts and procedures. It is, as its title reflects, primarily directed at inventors and business owners, but is also useful to people who regularly advise them, such as business lawyers, and specifically lawyers without in-depth knowledge of patent litigation.

Bobby has aggressively pruned the citations in the book, so with few exceptions if you already have had any experience in a particular portion of the world of patent infringement litigation, the book won’t be telling you something you didn’t already know – albeit in much more concise language. But what I was struck by as I read the book was how few participants have experience with all the different stages of the process, from patent prosecution to litigation to patent office proceedings.  The book covers them all.

For patent litigators, there is much here that is of interest because it isn’t what we deal with every day. When he goes through the more in-depth discussion of the substantive issues, the discussion is concise and helpful for confirming that you have identified and explained all the major issues to your client, but it is really more for your client to give them a working knowledge of the issues that you are talking about.  Judge Kinkeade in Dallas likes to joke that patent litigation is like Lord of the Rings, and not because there are trolls, but because the language is often not English at all.  This book fixes that.

There is an entire section dealing with litigation, and reading it I was struck by the realization that while while there is nothing here that anyone that has ever litigated a patent case from soup to nuts would not know, there are many, many lawyers litigating patent cases today that have not.  How many of us have experience advising a client, starting with the initial client meeting, when a potential patent infringement claim is worth bringing?  Similarly, many patent litigators, candidly, have never seen a trial that didn’t involve actors and a LCD display.  This helps remedy that.

I highly recommend Patent Litigation Primer as a reference guide for clients, and I keep a copy on my iPad for reminding myself of what exactly it is that a client might want or need to know about different parts of the litigation.

Patent Litigation Primer

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101 analysis and the redshirt phenomena

msmithJudge Roy S. Payne (USMJ), Marshall, Unpatentable - 35 USC 101

A latecomer to the 101 analysis, but these orders just keep coming out… Earlier this month Judge Payne recommended dismissal of a patent for on 101 grounds in a consolidated case.  He has now issued orders (exemplar below the link, as well as the original) extending that dismissal to the consolidated defendants. The cases arise out of litigation

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No “101 Spring”: 101 Dismissal in Rothschild cases affirmed

msmithJudge Robert W. Schroeder III, Tyler, Unpatentable - 35 USC 101

A few weeks after Judge Gilstrap’s order in September 2015 dismissing the 101 defendant eDekka litigation on 101 grounds, Magistrate Judge Love recommended granting a similar motion in the Rothschild Location Technologies cases on January 4, 2016 – a recommendation that Judge Schroeder adopted several weeks later.  That litigation originally involved around three dozen defendants. Judge Schroeder recently denied the plaintiff’s motion for reconsideration in light of the “101 spring” line of cases from the Federal Circuit in 2016 (Enfish et al.) which did not affirm district courts’ decisions to dismiss cases on 101 grounds. In his opinion, Judge Schroeder

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101 Motion Granted in Financial Services Case

msmithJudge Roy S. Payne (USMJ), Marshall, Unpatentable - 35 USC 101

In a recent opinion resolving a 101 defense via a motion to dismiss, an EDTX court noted that “Although procedure is often slighted in the context of § 101 motions, the Court does not take invalidating a patent at the pleading stage lightly.” Nonetheless, it concluded that the motion was well-taken and recommending invalidating the asserted claims. It was a dark and stormy night at the courthouse when 

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Recent 101 Decisions from the EDTX

msmithCommentary, Unpatentable - 35 USC 101

In a development that sounds suspiciously like someone who’s writing computer games for the Nintendo Wii is also following patent litigation, the  2013 game The Wonderful 101 contains a principal character named “Alice”, who is the main operator of the game heroes’ state of the art warship.  Here’s what we are told about Alice.

“Talented in ship controls and cannon warfare, the daring maneuvers Alice takes to save the ship from crisis often leave the rest of the team speechless. . . . She never says more than is absolutely required and her expression never reveals her true emotions, which has the unfortunate side-effect of making her look hard to approach to others.”

Well if that isn’t a good description of the caselaw on patentable subject matter, I don’t know what is.  At least we now have an avatar for Alice motions.  (Note to self: see if Shipping & Transit has a app out called Inequitable Conductors).  

There have been a number recent cases on 101 motions from EDTX courts, and I wanted to review them today, so be looking for posts as the day goes on.

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EDTX filings down 29% in 2017 – on pace to drop 53% from 2015 peak

msmithCommentary

I am remiss in not checking patent filing statistics after the first month of the year, but the good news is that I now have almost twice as much filing history to rely on.

As readers know, EDTX patent filings in 2016 were down 34% – meaning over 800 cases – from 2015’s peak filings.

It appears that to date there have been 167 patent cases filed in EDTX in 2017, which annualizes to a 29% drop over 2016 filing levels – a drop of nearly 500 more cases over the course of the year.  If this holds, 2017 will see filings back at 2012 levels of around 1,200 cases a year, which would be a 53% drop – approximately 1,300 cases – from the 2015 peak.

Of course early filings are a statistically imprecise measure, but they are good at indicating trends.  For example this time last year they were down 47% and eventually ended the year down 34%.

Shift in Number of Parties (read “Type of Filer”)

And here’s another important trend.  In 2015 there were 3.35 parties per case filed in EDTX – that number has now dropped to 2.48 parties per case filed, perhaps reflecting what I’ve written about frequently over the last year – that the reduction is filings is coming from the ranks of the “bulk filers”, i.e. plaintiffs that sue multiple defendants on the same patents.  The trend is clear anecdotally when you look at the list of top filers (lawyers and plaintiffs) from 2015 and see them thin dramatically in EDTX in 2016, but we’re now seeing it at the macro level.  Of course the change is nowhere near that compared to pre-AIA numbers, where the practice of including unrelated defendants in cases resulted in far higher numbers (9.81 in 2010 in EDTX), but it may reflect this change in the makeup of the EDTX patent docket that I am seeing on the ground.

Perhaps supporting this is the fact that this shift doesn’t appear to be occurring in either the District of Delaware (3.67 to 3.86) or the Northern District of California (3.58 to 3.8), both of which saw small increases in the parties per case filed metric, but didn’t (at least anecdotally) see a change in the general makeup that we saw in the EDTX.

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