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).

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.

Amended Patent Contentions

Both parties sought leave to amend their contentions in this patent case. Judge Payne granted the plaintiff’s, which sought to revise the language regarding accused products, finding the good cause standard met. The court granted only in part the defendant’s motion to amend its invalidity contentions, however, concluding that while there was good cause as to two of the additional references, there was not as to a third due to lack of diligence.

Plaintiff’s Motions for Summary Judgment Granted in Part

While you’re enjoying this “after and before” photo of the historical Harrison County Courthouse in Marshall before and after its recent restoration, let me tell you about Judge Payne’s order in Netlist v. Micron recommending granting parts of plaintiff’s three motions for summary judgment.

Amended Contentions

Judge Payne granted the plaintiff’s motion for leave to serve amended infringement contentions. He had previously struck a proposed amendment claimed permissible without leave as a result of the court’s claim construction ruling under P.R. 3-6(a), but granted this motion, finding that with the benefit of a three-month continuance, good cause for the amendment was shown under P.R. 3-6(b).