Advanced PI Seminar – Day 2


Today’s seminar started with tips on use of local counsel, followed by Section 101 developments and injunctive relief in patent cases.
After the morning break we’ll hear as presuit and pretrial pitfalls and indemnification provisions. The judges panel at lunch features Judge Nancy Atlas of the SDTX and Judge Miriam Quinn with the PTAB on copending cases moderated by D.J. Healey.
Day 2 concludes with presentations on the AIA on-sale bar, intentional waiver of privilege and appellate issues in both district court and PTAB litigation. Actually, it concludes with dragging two teenage boys out of their room before the checkout deadline and heading to Waco to hunt for an apartment for our engineering student’s junior year at Baylor, but that’s probably just me.

Advanced Patent Litigation Course – San Antonio


The twins and I are in San Antonio for the Advanced Patent Litigation course, which is co-sponsored by the Intellectual Property Law Section of the State Bar of Texas. Which means they’re in bed and I’m watching patent lawyers and taking notes for the IP Section’s newsletter.
The morning starts on a light note with Nick Guinn on litigating cases with more than just patents – which might be interesting in light of last week’s verdict in Marshall. Next up is the PTAB, which gets three presentations that will cover recent developments (including sovereign immunity), the issues surrounding real parties in interest and privity, as well as a panel on recent changes in PTAB trial proceedings. The lunch presentation is on the duty of candor to the Court, and I suspect I know what the tale to be told is. Did you know there’s a back door to the attorney/client privilege in this context?
The afternoon starts with what looks to be an interesting panel which consists of case studies in patent enforcement. It will address issues to be considered before filing an action to enforce a patent, like time, costs, legal hurdles, IPRs and potential recovery.

Which reminds me of the time Scotty Baldwin assigned his new associate the responsibility of screening cases. Carl protested that he just got out of the U.S. Attorney’s office and didn’t know what to look for. “It’s real simple,” Scotty said. “There’s liability, damages, and a defendant that can pay. If a case has two out of three, take it. If one has all three, call me because I’ve never seen one of those cases, goddammit.”
Perhaps apocryphal, perhaps not. In any event, patent cases are a little more difficult to evaluate, and this panel will explain why.
Former submariner Russ Emerson will no doubt call on his experience in being on ships that sink in addressing recent developments in patent venue, followed by recent developments in patent antitrust.
Good Lord, it’s only 2:15 in the afternoon on Day 1 and we still have O2 Micro issues, lost profits after WesternGeco, apportionment in damages calculations and funding patent litigation in the world of IPRs.
The course is held at the Hyatt Regency Hill Country Resort & Spa, where at 7pm every night you get to make s’mores.

Pro Bono IP Workshop for East Texas Inventors

The Cole STEM building at SFA

On Thursday, September 12, 2019 there will be a pro bono intellectual property workshop for East Texas inventors and entrepreneurs on the campus of Stephen F. Austin State University. The event is co-organized by the U.S. Patent and Trademark Office and the State Bar of Texas IP Section.

The pro bono program is designed to provide basic information on securing patent and trademark rights, and includes small group meetings to focus on specific topics and short one-on-one consultations with intellectual property lawyers.   Attendance at this program is estimated to be around 50-60 people.

The location for the workshop is the Cole STEM facility on the SFA campus in Nacogdoches and will help showcase the presentation to the greater East Texas inventor and business community.  

The IP Section and the USPTO have successfully presented this program to underserved communities across Texas in Corpus Christi, the Rio Grande Valley, Fort Worth, El Paso and Waco.  Nacogdoches will continue the pro bono tour into East Texas.  A pro bono tour to Lubbock is scheduled for spring 2020.  

Joe Cleveland, chair of pro bono tour, tells me that without exception, every lawyer who has participated in the program has greatly enjoyed the opportunity to give back to our community in such a unique and significant way. Here are a sampling of the comments the IP Section received from the tour’s last stop in Waco: 

“We are excited to see our innovation economy grow and your work this past week will contribute significantly!”

Dr. Jeremy Vickers, Associate Vice President, Baylor University

“Your service to the bar and to the public is greatly appreciated!”

Leah Jackson Teague, Associate Dean, Baylor Law 

“Thank you for bringing so much value to our community.” 

Greg W. Leman, Executive Director, Start Up Waco 

 Joe is looking for 12-15 good IP lawyers who would be willing to participate in the Nacogdoches program on Thursday, September 12, 2019 from 8AM to 4PM.  If you may be interested, please contact Joe as soon as possible, and he will provide further details.  He can be reached at 817-339-2454 or jcleveland@belaw.com

“Whale fall” JMOL on willful infringement, jury instructions & interest calculations

Earlier this year a Marshall jury in visiting CAFC Judge Bill Bryson’s court rendered a $20 million verdict in favor of the plaintiff against defendant Eli Lilly.  Several weeks ago Judge Bryson followed up with an order explaining his reasons for several decisions during trial.

Judge Bryson’s order is an example of what I referred to in my talk about JMOLs week before last at Horseshoe Bay as a “whale fall” – the sort of order that can take weeks to fully digest, but if you’re interested in the subject of getting a JMOL on a plaintiff’s claims of willful infringement or on when certain jury instructions are appropriate or how prejudgment interest is calculated it’s worth it.

Our story begins with the defense counsel rising at trial to assert a JMOL as to the plaintiff’s claim of willful infringement…

State Bar of Texas IP Section TIPSheet – Call for Submissions

I’m pleased to announce that the State Bar’s IP Section has added me to their council as editor of their TIPSheet newsletter. I wanted to take this opportunity to ask readers to submit articles for publication to the section serving IP lawyers in Texas.

The TIPSheet (the acronymn has a double meaning and the Texas IP Section would really be disappointed if you didn’t get it) welcomes the submission of articles for potential publication in upcoming issues, as well as any information regarding IP-related meetings and CLE events. If you are interested in submitting an article to be considered for publication or adding an event to the calendar, please email me at michaelsmith@siebman.com The links above will take you to back issues to show the sort of articles we’ve published in the past.

Article Submission Guidelines

STYLE: Journalistic, such as a magazine article, in contrast to scholarly, such as a law review article. We want articles that are current, interesting, enjoyable to read, and based on your opinion or analysis.

LENGTH: 1–5 pages, single spaced.

FOOTNOTES AND ENDNOTES: Please use internal citations.

PERSONAL INFO: Please provide a one-paragraph bio and a photograph, or approval to use a photo from your company or firm website.

If you have any questions, please email me – again, the email is michaelsmith@siebman.com .