The Risks of Truncating Quotes

This order by Judge Gilstrap denies a losing patent defendant’s motion for judgment as a matter of law under FRCP 50(b) with respect to its defenses of lack of written description, obviousness, and anticipation. But more importantly, it indicates that counsel proceed at their peril when they say the witness’s answer was “clear and unequivocal” – but leave off everything the witness said after “yes.”

Venue For Claims of Insufficiently Fancy Pecan Pieces – The Most Texas Motion to Transfer Ever

Plaintiff, a Swiss company, sued a pecan company from Corsicana, “The Fruitcake Capital of the World”, Texas for shipping it 12 tons of “fancy medium pecan pieces” that it claimed were defective. No, really. The pecan outfit claimed improper venue and asked for a transfer to the Northern District of Texas, and also alleged the claims as to the alleged lack of the requisite fancy-ness of its pecans were insufficiently pleaded. Judge Gilstrap held that venue in the EDTX was proper as to a Texas pecan shop (because of course) and agreed with the Swiss that the claims were sufficiently pleaded. No word as to any cross claim for disparagement of the Navarro County pecans.

Extrinsic Evidence, You Say … ?

Ah, extrinsic evidence – the potentially poisonous puffer fish of the claim construction world. While still no train wrecks, alas – constructions are either plain and ordinary meaning or well-nigh unintelligible technical jargon, Judge Payne notes that he “made subsidiary factual findings about the extrinsic evidence” so there’s at least some potential excitement there if he didn’t handle it with sufficient care.

No Enhancement on $445 Million Verdict; No Stay Due to Pending IPR

The document was an entry of final judgment, but that isn’t what’s significant. Defendant Micron had asked Judge Gilstrap essentially to stay the entire case pending the PTAB’s ruling expected next month on a challenge to the patent that made up less than five percent of the $445 million judgment (the patent on which the $425 million was based had already been invalidated by the PTAB). Judge Gilstrap declined, and entered judgment based on the jury’s verdict against Micron in May. But this means only that Micron will begin work on its JMOLs before the ruling next month – it doesn’t mean the case is now ripe for appeal. And it means something else even more important -in the judgment Judge Gilstrap declined to enhance damages pursuant to 35 U.S.C. § 284. Thus postjudgment motion briefing will proceed on schedule, but narrowed.

Amendment of Infringement Contentions Permitted

Unlike claim construction, either outcome here is informative for other cases because the court separates the facts into the four factors of the relevant analysis and you can study them wriggling in their respective buckets . Here the plaintiff’s request for leave to add three newly-released products was not opposed and leave was granted. Its request to add additional source code citations was similarly granted, but over the defendant’s opposition that the contentions should have been amended sooner.

Late Disclosure of Practicing the Patent Stricken

Judge Payne granted a motion to strike a patent plaintiff’s supplemental interrogatory response, finding that pursuant to P.R. 3-1(f), “Mojo [the plaintiff] has not preserved “the right to rely, for any purpose, on the assertion that its own apparatus, product, device, process, method, act, or other instrumentality practices the claimed invention.” P.R. 3-1(f). While Mojo’s initial disclosures might have preserved that right, the intervening responses indicating that the products and prototypes do not practice the asserted patents cut off that preservation.”

No Customer Suit Stay Where Additional Products Accused

Judge Payne denied the motion, finding that while the stage of the case factor favored a stay, the simplification factor did not because the manufacturer action only had a “narrow overlap” with the customer suit. It covered only a small fraction of the accused products, and the defendant’s agreement to be bound covered on the infringement claims in that case, not the invalidity determination.