Divisions

Anti-SLAPP and Duty of Candor

msmithSherman

Back on February 5, I posted on Judge Mazzant’s January 16 decision concluding that the Texas Anti-SLAPP statute did not apply in federal court. This afternoon Westlaw published a report and recommendation by a magistrate judge issued the day before which granted an Anti-SLAPP motion. When I checked to see if it was still in effect, I saw that it had been withdrawn, but had generated a show cause order and a flurry of briefing that I thought readers might be interested in regarding counsel’s duty of candor to the court.

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Request for Declaration of License Offer as FRAND Denied

msmithJudge J. Rodney Gilstrap, Marshall, Patent Litigation

More and more recent patent cases involve patents a party declares are essential to practice a standard. As was recently the situation in a case in Tyler, sometimes a party asks a jury to determine whether a party holding standard-essential patents complied with its obligations in its negotiations. In this case, the plaintiff asked the Court to declare that it had not breached its obligation to offer a license on FRAND, i.e. fair, reasonable and nondiscriminatory, terms. In other words, was its offer FRAND?

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From stay to verdict

msmithStays, Tyler, Verdicts

This time the verdict is from Tyler, where a jury passed on a claim that had been stayed previously while proceedings played themselves out at the PTAB. The jury found the single asserted claim infringed, that the claim wasn’t shown by clear and convincing evidence to be invalid, and assessed damages of $1.5 million. I have attached the verdict form and some other tidbits I thought might be of interest on the stay issue.

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Counterclaims

msmithJudge J. Rodney Gilstrap, Judge Roy S. Payne (USMJ), Marshall, Motions to Dismiss

The plaintiff in this patent case brought a motion to dismiss the defendant’s counterclaims of patent infringement (no, not noninfringement – I know what you’re thinking), promissory estoppel and unjust enrichment. The Court’s report and recommendations, later adopted by the district court, provides a useful foray into the “dancing backwards” world of counterclaims.

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Oil field technology patent verdict

msmithJudge Robert W. Schroeder III, Jury instructions, Texarkana, Verdicts

I’m posting a few pictures from our trip to the Capitol with the local Chamber of Commerce (and our two youngest boys, who served as House pages) last week as they seem appropriate for a verdict from a patent case involving oil field technology. The verdict came from Texarkana last week, where a jury in Judge Schroeder’s court rendered a defense verdict on infringement. Invalidity wasn’t submitted.

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Section 101 Motion Denied by Newest EDTX Judge

msmithJudge Jeremy Kernodle, Twombly/Iqbal, Tyler, Unpatentable - 35 USC 101

Following the addition of U.S. District Judge Jeremy Kernodle to the Eastern District of Texas bench late last year, most of the Tyler docket, including this case, was reassigned from Judge Gilstrap and Judge Schroeder to Judge Kernodle. Judge Kernodle just entered an order denying the defendant’s renewed motion to dismiss for failure to state a claim which argued that the patents in suit claimed ineligible subject matter.

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Habemus DCO – Waco Edition

msmithWDTX Cases

I enjoyed participating in Judge Alan Albright’s first patent scheduling conference last week, although candidly I’d have enjoyed it more if it’d been in person in Waco where I could have snagged some lemon-lavender donut holes from Magnolia Table and checked in on Grayson James on the way home. But I was able to order a mug with Judge Albright’s picture above on it through the Waco paper to commemorate the hearing, so there’s that.

Did I mention we just got orders?

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WDTX – Waco Issues New Patent Proceedings Order

msmithCommentary, WDTX Cases

Late last week, Judge Alan Albright issued an order governing patent proceedings in his court in the Waco Division of the Western District of Texas, and I wanted to take a few moments to go through the provisions and compare them to provisions in other courts in the area. To my knowledge they have not yet been incorporated into any patent case scheduling order, but that will likely change soon, as I have a scheduling conference with Judge Albright Friday morning, and pursuant to the Court’s direction we are submitting discovery and docket control orders for our case based on that new scheduling order. So I’ll be posting those soon.

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