How Can Infringement Claims Die? Let Me Count the Ways
With apologies to Elizabeth Barret Browning, let me count some of the very interesting ways this case tells us that infringement claims can be lost.
Judge K. Nicole Mitchell (USMJ)
Motion to Reconsider Order Granting Motion to Transfer
Let’s start the week off with a little palate cleanser in the form of an order dealing with a motion to transfer a patent case to the Northern District of California, but with the added frisson of a different procedural context – this one’s an order on a motion to reconsider the Court’s order granting the motion to transfer.
Motion for Summary Judgment as to Defenses of Improper Inventorship & Derivation
An improper inventorship defense rests on the statutory requirement that a patent is invalid if more or fewer than the true inventors are named.
A defense of “derivation”, on the other hand, requires proof of both prior conception of the invention by another and communication of that conception to the patentee.
Both defenses require proof by clear and convincing evidence.
This case presents an interesting situation in which the defendant claimed that the plaintiff wasn’t the inventor, but did not identify who else was. Given that the procedural context was the plaintiff’s motion for summary judgment as to the defendant’s improper inventorship defense, the issue presented was thus whether Defendant had created a genuine issue of material fact regarding its defenses of improper inventorship and derivation.
On the derivation defense, the issue was whether the Defendant had adduced proof that the “entirety” of the invention was conceived by others.
Motion to Exclude Expert Testimony Granted in Part
Motions to strike expert testimony usually attack multiple opinions by the expert, and orders not infrequently deny some, but not all of the grounds. This order provides an example of that … and oh so much more.
Case Transferred to Northern District of California
Motions to transfer alleging inconvenience aren’t as common as they were before TC Heartland, but you still see them from time to time. In this case, Judge Mitchell concluded that the relevant factors made the proposed transferee forum in California “clearly more convenient.
Case Stayed Pending IPR Proceedings
The issue of when cases should be stayed due to pending IPR proceedings, and what effect those proceedings will have on the district court litigation if they are resumed are issues of interest to many patent litigators. This opinion issued earlier today addresses both.
Service of process overseas
Texas lawyers are spoiled when it comes to service of process. We get to serve process in civil suits using certified mail, return receipt request in state court. And in the same way that state court procedures tend to bleed into federal court practice, even where the federal rule is not the same (think who pays for expert discovery) the state rules on service of process influence practice in federal court as well.
In part for that reason, in part because other nations have this perplexing tendency not to follow the Texas rules of civil procedure, and in part because agreements tend to eliminate this issue in many cases, the actual requirements for service of process on foreign defendants are terra incognito-ish for many practitioners, and can present obstacles when not rigorously followed, as this decision shows.
Expert’s Opinions v. Court’s Claims Construction
A recurring issue in patent cases is when a technical expert’s opinion is consistent with the Court’s claims construction, and simply opines whether infringement exists under the construction, and when it is not. A recent case provided three useful examples where an expert did – but in some cases did not – proffer opinions that were consistent with the claim constructions the jury would have to consider, or was otherwise permissible.
Private Securities Fraud Class Action Certified
Class actions are not the most common form of cat in the Eastern District of Texas, but they are filed from time to time. This case provides an interesting look at the standards applied to motions to certify a class, as well as to the standards applied by district judges reviewing reports and recommendations regarding class certification, as well as a thick block of analysis on the specific requirements of private securities fraud class actions as set forth in Amgen. If you’re addressing similar issues, the two opinions are worth a close study. If you’re not, this is an hour of your life you can keep.
Motion to Stay Pending Resolution of IPR
Defendants sought a stay pending IPR. Judge Mitchell reviewed the relevant factors and determined that a stay was not warranted. First, there was no showing of any case-specific prejudice. Second, the defendants’ delay in filing their IPR peition weighed against a stay, as the motion wasn’t filed until shortly before claim construction briefing was to begin. Third, and most importantly,