IAM Article: “EDTX judge’s new limine order takes name-calling off the table”

My article on Chief Judge Rodney Gilstrap’s new standing order on motions in limine was published on IAM last week – it’s accessible to subscribers here. Unlike most of my writing, which is perhaps more directed towards practitioners, it is focused on what clients might want to know about the order. The principal takeaway is that it ought to save clients money, and help inform them what sorts of issues and arguments are off the table in Judge Gilstrap’s court.

Post-Verdict Motions, Including Inequitable Conduct

Judge Gilstrap denied the defendant’s renewed motions for judgment as a matter of law, letting the jury’s award of $75,229 stand.  In a separate order, supported by findings of fact and conclusions of law, he found that the defendant had failed to establish by clear and convincing evidence its inequitable conduct defense.

Motion To Dismiss For Lack Of Standing On Eve Of Trial Granted

You have really got to work hard to achieve a result this bad.  On the eve of trial in the WDTX, Judge Albright dismissed the plaintiff’s claims because the plaintiff had lost its patents via a turnover order after it was sanctioned in the EDTX and didn’t pay those sanctions, nor did it post a supersedeas bond while appealing them, thus making them vulnerable to the turnover order. (For clarification, the EDTX case being referenced is not the underlying sanctions order against this attorney I posted on a few weeks ago. Nor is it the one from the NDTX I also posted on recently, nor the one from D. Del. – both also against the same attorney. As I said, you have to work hard to get this result.

“Hot-Then-Cold Positions” – Are They A Good Thing?

The court noted that the defendant was able to secure and produce several employees of the third-party in an effort to distance itself from the EDTX, but when the court ordered venue discovery, defendant suddenly no longer controlled that third party or its employees, and refused to produce documents from them.  “Defendant’s hot-then-cold positions are not well received by the Court,” Judge Gilstrap wrote, and ordered production, adding that “[t]he parties should be mindful that the disputes addressed herein are just the kind of things to be considered when the Court is later asked to determine if this is an exceptional case under 35 U.S.C. § 285.

Can I Just Not Show Up For A Deposition?

Judge Gilstrap granted the plaintiff’s motion to compel the defendant to produce the four witnesses identified for deposition.  Noting that the plaintiffs had previously set the depositions three weeks after the notice, and the defendant did not call the court or move the court for protective order, the court ordered the defendant to pay plaintiff’s attorneys fees and costs of $6,288.25 associated with the four depositions for which the defendant witnesses failed to appear. 

Motion For Venue Discovery Denied Without Prejudice 

One of the Non-Albright Waco patent cases finally has an order!  Judge Kathleen Cardone denied the plaintiff’s first two motions for venue discovery, noting that the first motion contain no certificate of conference, and the second only stated that plaintiff’s counsel attempted to confer with opposing counsel late in the day but received no response.  Finding that “Plaintiff’s eleventh-hour communication does not amount to a good-faith attempt to resolve the matter” and thus did not comply with the relevant local rule,” Judge Cardone denied the motion, but without prejudice to the plaintiff’s ability to refile compliance with the local rules, and detailed what that requires. 

Motion To Dismiss Granted In Part

Judge Albright denied the defendant’s motion to dismiss the plaintiff’s direct infringement and pre-suit indirect and post-suit willful infringement claims.  The court granted the motion to dismiss the pre-suit willful infringement claims, as well as the defendant’s motion challenging the sufficiency of the plaintiff’s pleadings that the defendant makes/sells/etc. the accused devices in the United States, as well as the motion directed to the plaintiff’s joint infringement and alter ego theories, but with leave to amend.