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,

101 Motion Denied w/o Prejudice Pending Claim Construction; Case Stayed Pending CBM Review

Defendants filed a motion for judgment on the pleadings under FRCP 12(c) alleging lack of patentable subject matter in this case, and asked the Court to invalidate the asserted claims on the basis that they are directed to the abstract idea of “offering, tracking, and processing discounts”—a concept Defendants contended is a longstanding commercial practice.

In its opinion, the Court

Nokia Engineer Week in the EDTX Concludes With Verdict in Core II

Last week was apparently Nokia Engineer Week in the Eastern District, as two juries found for two plaintiff patent holders asserting patents by Nokia engineers. As I posted last week, on Thursday a Tyler jury in Magistrate Judge K. Nicole Mitchell’s court found that Apple willfully infringed a patent by a Nokia engineer on wireless communication technology and awarded $22 million.  On Friday, a Marshall jury in Judge Gilstrap’s court assessed damages in a retrial of a March 2016 patent trials at $2.3 million. Why Nokia patents? Industry followers may recall that Nokia sold off large numbers of its patents beginning in 2011 after selling its cell phone business to Microsoft.  While I do not know what the respective splits any proceeds from last week’s verdicts would be, a 2011 story reported that proceeds from at least some of the patents would be divided in thirds between the acquiring entity related to the plaintiff in last week’s case, Nokia and Microsoft.  See  Mosaid Acquires 2,000+ Nokia Patents, Will Handle Licensing & Litigation For A Cut. Is This That Damages Retrial Of Which You Spoke? Actually, no. Readers may recall that in March a Marshall jury in Judge Gilstrap’s court also found against LG and in favor of Core and awarded $3.5 million in damages.  In August, Judge Gilstrap set aside the damages verdict in that case, finding that there was insufficient evidence to support the damages verdict, and ordered a retrial.  This is not that case.  It involved smartphone user interfaces, while last week’s case involved patents dealing with battery life and voice quality.

Tyler Jury Renders $22 Million Verdict Against Apple on Patent by Nokia Engineer; Apple Trial Outcomes Analysis

Yesterday a Tyler jury in Magistrate Judge K. Nicole Mitchell’s court found that Apple willfully infringed a patent by a Nokia engineer on wireless communication technology.  The patent, which was acquired and asserted in the case by plaintiff Cellular Communications Equipment, a subsidiary of Acacia Research, dealt with managing the resources used to send data over a communications network, and the accused devices were Apple’s iPads and iPhones. The jury found all five asserted claims infringed, that none of the five had been shown to be obvious, and rejected a claim of improper inventorship.  The jury further found that the infringement was willful and awarded $22.11 million in damages. The suit had previous included claims against the mobile carriers that sell Apple’s devices (AT&T, Verizon, Sprint, Boost and T-Mobile) but Judge Mitchell severed and stayed the claims against the resellers, noting that the plaintiff couldn’t get damages from both Apple and the resellers anyway. “What about post-grant proceedings?” I hear you asking.  Yes, Apple filed a petition for IPR under the AIA, and the PTAB declined to institute review, finding that Apple hadn’t established a reasonable likelihood of prevailing.  The PTAB had also denied IPR reviews by HTC, Dell, Amazon and other companies on the patent. Apple at Trial in the Eastern District For a little context on Apple’s recent trials in the district, my notes show that a prior verdict against Apple in Tyler this year (VirnetX II and damages trial on VirnetX I) was set aside by Judge Schroeder, and the retrial in that case starts later this month.  Going back a little further, last year Apple tried three patent cases in the EDTX, all before Judge Gilstrap.  It won two and lost the third, but Judge Gilstrap later set aside that verdict.  Incidentally, the CCC case was originally assigned to Judge Gilstrap, but the parties agreed to trial before Magistrate Judge Mitchell, so Apple’s immaculate record at trial with Judge Gilstrap continues. To find a patent verdict against Apple that wasn’t later set aside by the EDTX trial judge you have to go back to Mirror Worlds, which … no, wait, Judge Davis set that one aside as well.  Hmm.  Okay, here we go – there is one for $9 million in 2011, and another for $19 million in 2009.  To my knowledge neither resulted in a change on appeal (appeals may have been filed, but didn’t result in a decision as best I can tell).   There was also the original VirnetX verdict in 2012, which the Federal Circuit affirmed on liability and reversed on damages, and that is the Sisyphean ball that is going up and down the stairs on the old side of the Tyler courthouse again this year. Running the numbers on those results, and assuming CCC doesn’t change at trial or on appeal, it looks like Apple has won two at trial, lost three (totalling $42 million), and gotten three (for $208 million, $532 million and $624 million respectively) set aside by EDTX judges at the JMOL stage, and a fourth for $368 million set aside at the Federal Circuit (subject to the aforementioned retrial on damages).  That’s a 62% win rate at the district court, rising to 66% counting the appeal. But I really don’t think that takes fully into account Apple’s success in getting $1.36 billion in verdicts set aside at the JMOL stage.  To better evaluate this, perhaps a useful way to look at that is this.  Apple has been successful in setting aside 98.5% of the damages assessed against it by Eastern District of Texas juries at the district court level.  Including the appellate success, its set-aside rate rises to 98.8%.  Even assuming Judge Mitchell denies any JMOLs in the CCC case (Apple has only lost three of eight JMOL rulings, but let’s assume they lose this one), the success rate would only drop to 97%. (A note on Mirror Worlds: For calculation purposes, I am – as always – using the number $208 million for the jury’s verdict because it gave the same damages number for each of the patents.  However, since the accused products were the same, the damages were duplicative and had Judge Davis not set aside the entire verdict on other grounds, the judgment would have been for $208 million plus interest, costs, etc. It would not have been $624 million, as it is often reported in the media.  The jury was asked separate damages questions on each patent to avoid the need for a retrial if the judge set aside some, but not all, of the three asserted patents, since there would be damages awards based on each patent on which a judgment could be based. Since he set aside all three, the issue became moot, but it was an example of verdict form craftsmanship since it would have avoided an unnecessary retrial on damages if only one or two of the three patents had been set aside.)