What if a Marshall jury invalidates patent claims and the PTAB then holds them not invalid in an IPR?

No, I’m not posing a hypothetical. This JMOL is from the plaintiff’s side, as the jury found none of the asserted claims infringed and three of the four patents’ asserted claims invalid. Then, post-briefing, the PTAB found some of the claims the jury had invalidated not invalid. The order resolving all of this is a useful analysis not just of the usual JMOL and MNT arguments, albeit by a losing plaintiff, but of this rock/paper/scissors question.

Motion for Summary Judgment of No Willful Infringement

A somewhat common summary judgment motion late in patent cases is one that seeks summary judgment as to the plaintiff’s claims of willful infringement. This case provides a useful example of a ruling on such a motion which is, at least in part, aptly summarized by Collin’s shirt – “I Can Only Please One Person Each Day – Today’s Not Your Day (Tomorrow doesn’t look good either)”. Behind Collin is one of the Rose windows at Notre Dame de Paris, which we learned earlier today … are still standing.

Admissibility of Nonretained Expert Testimony

Last month my wife emailed me from the Udvar-Hazy museum outside DC to tell me that our youngest, Parker, had turned into me – he thinks he’s an expert on every aircraft they saw and narrated his way through not one but two Smithsonian museums dedicated to air & space (note the B-17 shirt). His brother Collin’s answer to my question of what he saw at the museum that he liked the most was priceless. “The exit,” he deadpanned.

This order deals with objections to real experts based on a common complaint – that the disclosures were procedurally improper. As we all have to pass that procedural threshold to get expert testimony in at trial, it’s worth seeing what the court thought about the disclosures.

Dismissing/Striking Pleadings, the Anti-Injunction Act and Stays

While motions to dismiss pleadings on any one of a variety of grounds are fairly routine, this is one of those cases where the cook decided to toss some peanut butter, cilantro and carrots into the pancake batter, and the court had to step in to consider where the line needed to be drawn. Oh, and there’s a stay request too.

EDTX patent cases consolidation order

I had a question come up today about how the EDTX consolidates patent cases for pretrial proceedings, so I wanted to post an exemplar order and go over some of the provisions in it. Today’s historical reference is our building’s mascot, the 122 year old metal wagon wheel hub sign that’s stood outside our offices since 1897. It came down last fall for the second time in that span for some refurbishment, and we’re glad to have it back up today in front of the historical marker memorializing the building’s history.

Request for Declaration of License Offer as FRAND Denied

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?


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.