Motion to Dismiss or Transfer


Judge Payne recommended denial of the motion to dismiss for improper venue, finding that the defendant did have a regular and established place of business in the EDTX when suit was filed. He also recommended that the motion to transfer venue to the San Antonio Division of the WDTX be denied, finding that the defendant had not shown that that forum was clearly more convenient. (It’s unclear if this was the map of Texas that the defendant was using).

Motion to Dismiss Granted in Part

Plaintiff sought dismissal of the defendant’s claims that the plaintiff – a false eyelash manufacturer – engaged in false patent marking and false advertising in this case dealing with false eyelashes. (You can sort of see the theme, can’t you?) Judge Gilliland concluded that the false patent marking claim was not time-barred, that there was marking of an unpatented article, sufficient facts were pled to allege the requisite intent to deceive, and there was a sufficient showing of a competitive injury to require denial of the motion to dismiss. But the court did recommend granting the motion to dismiss the false advertising claim, noting that statements of inventorship – here “innovator” – are not actionable as false advertising, and recommended dismissal of the defendant’s claims against an individual as lacking personal jurisdiction.

Patent Verdict in Marshall

In a scene somewhat less relaxing than this one canoeing at Fern in December, a Marshall jury in Judge Gilstrap’s court returned a verdict in the ATL v. CosMX case last Friday. All four claims were found infringed, but two were proven invalid. At least one of the four was willfully infringed (yes, I know what you’re thinking and no, we don’t know from the verdict form whether it was the ones that were not found invalid). Damages were set at $3,701,108. The jury also found that a letter by the plaintiff was not shown by clear and convincing evidence to be both objectively baseless and an attempt to interfere with a business relationship of a competitor through use of the litigation process, nor did the plaintiff engage in anticompetitive conduct.

Summary Judgment Sought on Marking Defense

Although finding that the defendant met the “low bar” of its initial burden to raise such a defense, Judge Payne recommended denial of the plaintiff’s motion because there was a genuine issue of fact as to whether the products complied with 35 U.S.C. §287, entitling it to pre-suit damages. This was because the plaintiff did not present arguments that the products were so marked, relying only on its argument that the defendant had not cleared its initial burden.

Motion for Judgment on the Pleadings on Section 101 Defense Premature

Judge Ezra denied the motion, declining to find that the asserted claims were directed at unpatentable subject matter. He noted that Federal Circuit jurisprudence limits a courts’ authority to issue
ineligibility determinations at a case’s earliest stages, noting both the need for claim construction and the procedural context requiring a court considering a Rule 12(c) motion to accept a complaint’s factual allegations as true. He noted that “fact discovery and expert reports are often necessary to ensure that
courts do not ‘prematurely’ rule on eligibility,” and that “it is inefficient to attempt to resolve §101 motions at such an early stage where the parties do not agree that the claims are representative.”

Motion to Dismiss Recommended Denied

Yes, it’s FRCP 12(b)(6) time again, but the ground is an unusual one and this time the Waco plaintiff prevailed. In a lengthy opinion, Magistrate Judge Anne Berton concluded that Defendant ASUS had failed to carry its burden to show that the reissue claim was broader in scope than the original claim and thus failed to shown that reissue claim 1 is invalid under 35 U.S.C. § 251.