More Thumbtacks on the “Exceptional Case” Map Board

One of the lasting effects of Prime Minister Winston Churchill’s lengthy stay at the White House in December of 1941 was President Roosevelt ordering a replica of his “map room” to be created in what had been the billiards room just steps from his elevator and his doctor’s office on the ground floor of the mansion. In memory of its use, for many years the last situation map prepared for President Roosevelt on April 3, 1945 hung over the mantel in this room. But FDR’s interest in precisely where his nation’s units were may pale in comparison to patent lawyers’ interest in reading the latest determinations of whether certain conduct gets a thumb tack for “exceptional” for purposes of an award of attorneys’ fees under 35 U.S.C. §285.

What if a Marshall jury invalidates patent claims and the PTAB then holds them not invalid in an IPR?

No, I’m not posing a hypothetical. This JMOL is from the plaintiff’s side, as the jury found none of the asserted claims infringed and three of the four patents’ asserted claims invalid. Then, post-briefing, the PTAB found some of the claims the jury had invalidated not invalid. The order resolving all of this is a useful analysis not just of the usual JMOL and MNT arguments, albeit by a losing plaintiff, but of this rock/paper/scissors question.

Dismissing/Striking Pleadings, the Anti-Injunction Act and Stays

While motions to dismiss pleadings on any one of a variety of grounds are fairly routine, this is one of those cases where the cook decided to toss some peanut butter, cilantro and carrots into the pancake batter, and the court had to step in to consider where the line needed to be drawn. Oh, and there’s a stay request too.

EDTX patent cases consolidation order

I had a question come up today about how the EDTX consolidates patent cases for pretrial proceedings, so I wanted to post an exemplar order and go over some of the provisions in it. Today’s historical reference is our building’s mascot, the 122 year old metal wagon wheel hub sign that’s stood outside our offices since 1897. It came down last fall for the second time in that span for some refurbishment, and we’re glad to have it back up today in front of the historical marker memorializing the building’s history.

Request for Declaration of License Offer as FRAND Denied

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?


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.