Month: February 2018

Judge Gilstrap Succeeds Judge Clark as EDTX Chief Judge

msmithCourt News

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.

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Service of process overseas

msmithCommentary, Judge K. Nicole Mitchell (USMJ), Tyler

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.

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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?

msmithCommentary, Judge J. Rodney Gilstrap, Marshall, Venue

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.

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

msmithJudge J. Rodney Gilstrap, Marshall, Patent Litigation

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.

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Fees Set in Deficient Infringement Contentions Case

msmithDiscovery, Judge Roy S. Payne (USMJ), Marshall

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.

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Plausibility and Allegations of Infringement

msmithJudge Roy S. Payne (USMJ), Marshall, Motions to Dismiss

The Twombly and Iqbal cases set forth the rule that to survive a motion to dismiss, a plaintiff must plead enough to state a claim to relief that is “plausible on its face.” None of this has anything to do with celebrated artist Cy Twombly, but it’s a good excuse to reference his work for those of you that enjoy that sort of thing.

Today’s EDTX Twiqbal guidance comes in the form of an order on a defendant’s renewed motion to dismiss  a patent plaintiff’s claims of willful and induced infringement as well as direct infringement

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Four GD’s, two SOBs and one f-bomb comes to …

msmithBeaumont, Commentary, Discovery, Judge Richard Schell

I just spent the last two days in depositions that were a model of decorum and professionalism by all involved, which reminded of one that wasn’t.

Once upon a time an EDTX judge was presented with a situation involving the use of coarse and profane language by a lawyer in a deposition.  (No, it didn’t involve Joe Jamail).

After considering all facts surrounding the deposition, arguments of counsel, and the attorney’s statement at the show cause hearing, the judge imposed a fine for the abusive behavior at his deposition.  But it’s how the fine was calculated that is of interest …

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Findings and Conclusions on Section 101 Defense

msmithCommentary
A Lamkin next to a big old hairy Section 101 motion for summary judgment

Section 101 defenses of claims of lack of patentable subject matter can come up all many stages of the case – they can be the first rabbit out of the hat after a case is filed (a draft motion served before an answer is referred to as a Lamkin), during the pretrial phase of a case as a motion to dismiss, for judgment on the pleadings or for summary judgment, at trial (according to the CAFC) or even after trial.  That was how it came up in the attached case, where it was resolved by findings and conclusions after a trial on the merits of the infringement and invalidity claims.

Section 101 defense raised after trial

 

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Withdrawing Deemed Admissions

msmithDiscovery, Judge Amos L. Mazzant III, Sherman

Some afternoons it’s not the weather than sends chills down your spine but the thought that you could have been in a party’s position in a case you’re reading.  In the attached, Judge Mazzant denied a party’s motion to withdraw a party’s motion to withdraw and amend deemed admissions.  The order provides a useful guide on what facts are important when you find yourself in a similar situation.  Or, let’s be clear here – how not to respond to discovery requests.

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