Evidence: Getting It In – CLE presentation

I’ll be starting a two-site presentation on evidence next week at the TexasBarCLE Advanced Evidence and Discovery Course in Dallas.  It’s the first of three CLE presentations on different subjects over the next three weeks, culminating in a panel on the effect of TC Heartland at the upcoming ABA IP seminar in DC on April 19. My paper deals with the nuts and bolts of getting evidence in.  But as I discovered when I started working on the paper, most activity on evidentiary issues is now at the pretrial stage, with very little activity – at least in my practice – coming at trial, since most exhibits are preadmitted.  So to my mind the most helpful paper on getting evidence in would be on how to list it, object to it, and respond to objections at the pretrial stage, with trial being something of an afterthought from an evidentiary standpoint.  And what matters at those stages is, candidly, not quite what the rules indicate matters, so I tried to present the parts of the rules of evidence that practitioners should actually be spending most of their time worrying about.  I always worry when I try to be helpful as opposing to reciting caselaw and listing rules as they appear in the rules, but I think the end result is pretty good. It is, candidly, troubling that even the slides are finished and off to the Bar eight days before the presentation, but even procrastinators fall short and get something done on time once in a while. Subscribers can download copies of the paper and the slides below.  But no spoilers for attendees, okay?

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.

ESI Order Developments

One of the things I like about this weblog is that it gives me a way to share interesting developments in how common procedures are applied in specific fact situations in civil litigation locally – with the almost half dozen people who care. An example of that came up recently in a case where parties in a follow-on group of cases disputed whether they should have to use the bespoke metadata provisions in an ESI order negotiated between the plaintiff and an earlier defendant. 

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.

Concurrent Bi-District Markman Hearings Ordered

I have posted previously on some interesting orders coordinating related patent infringement cases between EDTX, WDTX, NDTX and NDCal.  The opportunity for cross-district cooperation was presented to courts after Congress required that cases involving different products or processes be filed separately in the AIA in 2011, and was significantly enhanced after TC Heartland eliminated personal jurisdiction as a basis for venue in patent cases.

In furtherance of the twin goals of judicial efficiency and reducing the risk of inconsistent or conflicting constructions, earlier this week EDTX Chief Judge Rodney Gilstrap ordered a concurrent Markman hearing in a case which has a parallel case pending before NDTX Chief Judge Barbara Lynn, meaning that he and Judge Lynn will conduct the hearing for both cases together later this summer.  They have chosen to conduct the hearing in the courthouse in Marshall.

For more details, see below.

Law360 Intellectual Property editorial advisory board

I am honored to have been named to Law360’s Intellectual Property editorial advisory board. The purpose of the editorial advisory board is to get feedback on Law360’s coverage and gain insight from experts in the field on how best to shape future coverage. The members of the 2018 Intellectual Property Law360 editorial advisory board are:

John T. Battaglia, Fisch Sigler LLP

John Battaglia is a partner at Fisch Sigler. He has been a federal prosecutor and law clerk at the Federal Circuit and Eastern District of Virginia. He has tried to verdict a variety of intellectual-property disputes and argued several cases on appeal. In 2006, he was appointed deputy associate attorney general of the United States.

Garrard Beeney, Sullivan & Cromwell LLP

Garrard Beeney is co-head of Sullivan & Cromwell’s intellectual property and technology group and a member of the firm’s managing partners committee. Beeney has been inducted as a fellow of the American College of Trial Lawyers. He was counsel in the two major patent cases that were argued before the U.S. Supreme Court in 2016 and has litigated intellectual property and licensing cases in both federal and state courts. Beeney also represents clients before U.S. and European competition law authorities.

Andrew Choung, Glaser Weil Fink Howard Avchen & Shapiro LLP

Andrew Choung is a partner and head of the patent and technology practice group at Glaser Weil. His primary focus is on complex patent litigation, including defense, licensing programs, strategic counseling and America Invents Act proceedings. Before joining Glaser Weil, Choung practiced IP law at prestigious firms in both the U.S. and Korea.

William A. Delgado, Willenken Wilson Loh & Delgado LLP

William Delgado is a partner at Willenken Wilson Loh & Delgado, a nationally renowned litigation boutique based in Los Angeles. He has litigated almost every type of intellectual property dispute in various cases across the country. At present, he focuses on patent and trademark litigation.

R. David Donoghue, Holland & Knight LLP

R. David Donoghue is a trial attorney and the co-leader of Holland & Knight’s intellectual property group, focusing his almost two decades of experience upon intellectual property litigation and particularly upon patent disputes. Donoghue’s most recent trial experience includes a jury verdict finding of willfulness, a full trebling of damages and a full award of attorneys’ fees. He has also been chosen as lead trial counsel in RPXIS’ insurance program defending companies against nonpracticing entities.

Ann Ford, DLA Piper

Ann Ford advises clients with respect to business and transactional aspects of intellectual property, as well as litigation and pre-litigation protective measures. She works with clients to acquire, develop and exploit intellectual property assets and has specific experience in restructuring intellectual property assets for tax planning and developing joint venture arrangements to support co-branding efforts. She is the U.S. chair of DLA Piper’s trademark, copyright and media practice.

Keith J. Grady, Polsinelli PC

Keith Grady is vice chair of Polsinelli’s intellectual property litigation practice. With almost 30 years of experience, he has represented private and publicly traded companies in intellectual property matters in courts throughout the U.S. across a range of technologies. Grady frequently writes and speaks on patent and trademark litigation.

Colleen Tracy James, Mayer Brown LLP

Colleen James, an intellectual property partner in Mayer Brown’s New York office, is a first-chair trial lawyer who focuses her patent litigation practice on cutting-edge issues in the life sciences industry. Her practice includes Patent Trial and Appeal Board proceedings and other complex intellectual property litigation. She has extensive experience litigating abbreviated new drug application matters brought under the Hatch-Waxman Act in federal courts across the U.S.

Mike Keyes, Dorsey & Whitney LLP

Mike Keyes is the managing partner of the Seattle office of Dorsey & Whitney. He’s an experienced first chair IP trial lawyer and award winning author, blogger and podcaster. He co-edits Dorsey’s IP Blog and co-hosts the podcast This Week in Law with Denise Howell.

Matthew J. Rizzolo, Ropes & Gray LLP

Matt Rizzolo is counsel in the intellectual property litigation practice at Ropes & Gray in Washington, D.C. He has significant experience litigating complex intellectual property cases in a variety of jurisdictions, including federal district courts throughout the United States and in Section 337 actions before the U.S. International Trade Commission.

Michael C. Smith, Siebman Burg Phillips & Smith LLP

Michael Smith is a partner in the Marshall office of Siebman Burg. He has appeared as counsel of record in over 800 cases in the Eastern District of Texas, maintains a weblog on the district and edits the O’Connor’s Federal Rules handbook on civil procedure.

Andrew W. Stroud, Hanson Bridgett LLP

Andy Stroud is a partner at Hanson Bridgett and is office leader of their Sacramento office. He has significant expertise in litigating claims for copyright and trademark infringement, misappropriation of trade secrets, and unfair competition. Stroud served as the chair of the California State Bar IP section and is a frequent commentator on the fair use test and other aspects of copyright law.

Rachelle Thompson, McGuireWoods LLP

Rachelle Thompson is a registered patent attorney with particular experience in complex commercial litigation and litigation involving biotechnology, pharmaceuticals, semiconductors, telecommunications, smartphones, digital cameras, and wireless technology. She has extensive experience in all aspects of patent litigation in both district court and the U.S. International Trade Commission. In addition to litigation, Rachelle provides IP-related counseling to clients in a variety of technologies and industries

Jane Shay Wald, Irell & Manella LLP

Jane Shay Wald is a partner emeritus of Irell & Manella LLP and chairs the firm’s trademark practice group. She counsels and litigates trademark matters in the federal courts and the Trademark Trial and Appeal Board and prosecutes trademark applications through registration with the U.S. Patent and Trademark Office. She is a frequent writer and speaker on trademark topics.

David E. Weslow, Wiley Rein LLP

David Weslow, a partner in Wiley Rein’s intellectual property group, focuses his practice on litigation and transactions involving trademarks, copyrights and domain names. He regularly assists clients with the often novel application of intellectual property claims to cyber scams, intangible thefts, social media issues and other internet based disputes.

Judge Gilstrap Named 2018 Baylor Lawyer of the Year

U.S. District Judge Rodney Gilstrap had an unusual ceremony in his courtroom Friday.  Called to an unscheduled hearing about an unidentified confidential matter, he was asked to “unseal the courtroom,” allowing the bailiff to open the doors to the public, which included his staff, courthouse employees and colleagues. The judge was then told that there was a “jury of his peers” waiting in the jury room, and when he invited the jury to enter, his wife led a crew of Baylor law school alumni and Gilstrap’s current and former colleagues on the EDTX bench, accompanied by the Baylor fight song. (No, seriously).  They included former EDTX judges David Folsom and T. John Ward; Clerk of Court David O’Toole; Texarkana EDTX judge Trey Schroeder; Marshall’s Magistrate Judge Roy Payne, and Lufkin trial lawyer George Chandler, as well as Baylor Law’s dean Brad Toben by satellite.


Baylor Law School now
Baylor Law School back when we had to walk uphill both ways in the snow to attend classes.

The reason that Judge Ward and George Chandler were in the room was for the announcement was that Judge Gilstrap would join them as a recipient of the Baylor “Lawyer of the Year” award.  The award began in 1961, making Judge Gilstrap the 58th Baylor Lawyer of the Year.” Other past recipients of the award from the EDTX include the late former Marshall EDTX Judge Sam B. Hall, Jr. in 1992, and former Tyler EDTX Judge Leonard Davis more recently.  For trivia buffs, it also means that the late Marshall lawyer Ernest Smith (no relation) now has two former partners, Judge Hall and Judge Gilstrap, who have been named Baylor Lawyer of the Year.

The recipient of the award is selected annually by the Baylor Law Alumni Association executive committee. The award is the highest honor given by the association, and is given to an outstanding alumnus who has brought honor and distinction to the Law School and to the legal profession. Criteria for recipients include legal accomplishment, involvement and service in the profession and active interest in Baylor Law.

Dean Toben told the assembled group that he likes to characterize it as a Baylor lawyer who is bright, a model of integrity, and one who illustrates through their life and service a sense of compassion, empathy, and an ability to reach out to others. He said it’s also someone who has a servant-led life that is influenced by faith.  He also noted that Judge Gilstrap’s colleagues have established a scholarship at Baylor Law School to benefit deserving students, in perpetuity.

Congratulations to Judge Gilstrap, and we’re all looking forward to the traditional dinner later this spring commemorating the honoree.

Calculating Taxable Court Costs For Making “Copies” in EDTX

Mondays are awful enough without having to consider the dreary question of “exemplification and court costs”, but on the bright side, I can promise you that on a much worse day than this when you obtain a favorable order limiting the recovery of court costs for ESI production based on your knowledge of this order you’ll experience something you didn’t think was possible.  And that is that you can win a ruling and you still don’t feel any better about how the case turned out. The needle won’t move at all. So on that happy note let’s talk about “making copies”, as the Stevarino would say.  (If you don’t get that SNL reference, look it up.  It’s the best). 

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.