msmith – Michael C. Smith's Eastern District of Texas Blog

Texas IP Roundup – March 2023

March 24, 2023March 24, 2023 msmithEDTEXWEBLOG, Last Week in Texas with Michael Smith - BCLT, TEXIPLAWBLOG

Join us this upcoming Tuesday, March 28 at 3:00 p.m. Central, Texas time, for another B-CLE live webcast about what is going on in IP cases in Texas federal courts. Wayne Stacy and I will go over the key cases I have selected from the past month to discuss. In this episode, we discuss some recent evidence cases that we should all be watching, including cases on expert report limitations, contention interrogatories, deposition scheduling, and privilege waiver. We also discuss the most recent venue cases and how In re Planned Parenthood is impacting Texas venue decisions. Registration and attendance is free, and CLE credit is available, as always – sign up here.

Declaratory Judgment Of Patent Unenforceability Granted After Five Years

March 23, 2023March 23, 2023 msmithInequitable Conduct, SDTX, Summary Judgment, TEXIPLAWBLOG

The parties filed 11 motions for summary judgment – Judge Ellison granted the one holding the patents in suit unenforceable for inequitable conduct before the Patent Office.

Scam Alert: Don’t Subscribe / Renew Subscription Using Euros

March 23, 2023March 23, 2023 msmithCommentary

We all need to be alert to the cyber scams going around, and here’s a new one. If you are attempting to subscribe or renew your subscription – to this blog or anything else – and you reach a page that has payment in Euros – it’s likely a scam (it definitely is for the blog – like most Texas businesses we are configured to accept payment only in dollars). Contact me at michael.smith@solidcounsel.com and I’ll walk you through the correct process for renewing. If you’re already set up for automatic renewal, you don’t have to worry about this.

WDTX Judge Lee Yeakel Retirement

March 23, 2023March 23, 2023 msmithTEXIPLAWBLOG, WDTX, WDTX - Austin

U.S. District Judge Lee Yeakel will leave the Western District of Texas bench on May 1, 2023, after nearly 20 years of service. Judge Yeakel currently handles half of the Austin Division docket, so his departure will leave a substantial hole. There are already four district court vacancies in Texas and two more anticipated after Judge Yeakel, and none have nominees, so when the docket is reallocated those cases will go to a judge currently serving.

Bad Faith Patent Assertion Isn’t Patent Misuse

March 22, 2023March 22, 2023 msmithMotions to Dismiss, NDTX, TEXIPLAWBLOG

Fort Worth Post Office – Photo: Carol M. Highsmith

Judge Pittman granted the plaintiff’s motion to strike the defendant’s patent misuse counterclaim for failure to state a claim since the alleged conduct – bad faith patent assertion against a competitor – isn’t patent misuse.

Motions For JMOL and New Trial and/or Remittitur Denied

March 22, 2023March 22, 2023 msmithEDTEXWEBLOG, EDTX IP, JMOL rulings, Judge J. Rodney Gilstrap, Marshall, TEXIPLAWBLOG

In another order arising out of litigation involving the same parties, Judge Gilstrap denied the defendant’s motions for judgment as a matter of law, and for new trial and/or remittitur.

Motion For New Trial Denied

March 22, 2023March 22, 2023 msmithEDTEXWEBLOG, EDTX IP, JMOL rulings, Judge J. Rodney Gilstrap, Marshall, TEXIPLAWBLOG

Judge Gilstrap denied the defendant’s motion for new trial in this case in which the Marshall jury awarded the plaintiff a one-time lump sum of $4.3 million as a reasonable royalty on September 16, 2022.

Motion To Transfer Venue Granted

March 21, 2023March 21, 2023 msmithNDTX, TEXIPLAWBLOG, Venue

Judge Boyle granted Google’s motion to transfer venue against it to the NDCA.

Motion To Transfer Venue Denied; In re Google Addressed

March 21, 2023March 21, 2023 msmithTEXIPLAWBLOG, Venue, WDTX, WDTX Cases

Judge Albright denied the motion, noting that the relevant evidence was either located in the WDTX or remotely accessible in the WDTX, with none only accessible in the CDCA, and therefore under In re Planned Parenthood, the sources of proof factor was neutral. As was the court congestion factor under In re Google. In fact the only factor which wasn’t neutral was the presence of other litigation, which the court found weighed strongly against transfer – accordingly the CDCA was not show to be a clearly more convenient forum.

Waco Dismissal

March 21, 2023March 21, 2023 msmithMotions to Dismiss, TEXIPLAWBLOG, WDTX, WDTX Cases

Judge Biery granted the motion by defendant Google to dismiss the plaintiff’s case, finding the infringement claim not plausible – and noting a recent NDCA opinion finding the same thing. The Court also denied leave to amend.