Judges

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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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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Public reprimand for “inexcusable” lack of diligence in connection with venue declaration

msmithJudge Roy S. Payne (USMJ), Marshall, Sanctions, Venue

Fourteen years ago now, two residents of the Eastern District of Texas drove the few miles that separated their homes from LBJ Freeway in Dallas, where they were rear-ended by a truck driver from Tyler, resulting in the death of their daughter/granddaughter in the back seat. Several months later the survivors of that collision, who had since moved out of the Eastern District, filed a product liability case in the Eastern District.

In its rulings (there were three) on the petition for mandamus of the district court’s order denying the defendant’s motion to transfer venue the Fifth Circuit held that it was the plaintiffs’ current residence, i.e. the residence at the time the suit was filed, that was relevant, not their residence at the time the cause of action arose. The consequences of that ruling have affected the actions of parties, district courts and the Federal Circuit ever since, including in a recent order publicly reprimanding an attorney for inaccurate factual contentions contained in his client’s declaration opposing a motion to transfer.

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“Stream of Commerce” Personal Jurisdiction

msmithJudge J. Rodney Gilstrap, Judge Roy S. Payne (USMJ), Marshall, Personal Jurisdiction

This is a product liability case in which the third party defendant, a foreign corporation, sought dismissal due to lack of specific personal jurisdiction. The magistrate judge’s analysis of the motion sets forth the current status of the “stream of commerce” approach to personal jurisdiction, analyzing both the foreseeability of the use in Texas, as well as whether the cause of action arose out of the third party defendant’s forum-related contacts, and whether the exercise of jurisdiction would be fair and reasonable. An added benefit is the district court’s order, also copied below, accepting the magistrate judge’s recommended disposition, because it addressed a couple of new arguments raised by the objections.

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Renewed Motion to Stay

msmithJudge J. Rodney Gilstrap, Marshall, Stays

Okay, the analogy is imperfect, but if “renewed” isn’t legalese for “please” I don’t know what is. But what was actually at stake was a little less dramatic than Toby’s case. The defendant in this case was simply renewing its motion to stay the case pending IPR proceedings after the proceedings were instituted by the PTAB. But the facts were a little outside the norm.

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