Judge J. Rodney Gilstrap

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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“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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Proportionality Finally Gets Used in a Discovery Order

msmithDiscovery, Judge J. Rodney Gilstrap, Marshall

Let’s say you defeat an adversary in litigation, and you’re looking for assets from which a judgment can be satisfied.  Can you get discovery into your former opponent’s disposition of assets?  The answer is yes, but not prior to when you made your claim.  Why? Because it would not be proportional to the needs of the case. This order makes that finding, but then defines what discovery would be “proportional” under the circumstances.

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Means Plus Function Terms Indefinite for Lack of Corresponding Structure

msmithClaim Construction, Judge J. Rodney Gilstrap, Marshall

Reading Markman orders is often like watching soccer while being an American.  Only rarely does someone actually score a goal. This Markman is a good example.  Dozens of pages of solid analysis, but it’s only at the top of p. 32 and again a few pages later  that goals sneak up on you – when the Court noted that these were means plus function terms, and the lack of corresponding structure rendered the three terms indefinite. 

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Improper Venue Motion Denied, But Points for Creativity (Deducted, But Still)

msmithJudge J. Rodney Gilstrap, Marshall, Venue

This case has an interesting procedural history with respect to venue.  Five months after TC Heartland the defendant filed a Section 1404 motion, but didn’t challenge venue as improper.  That motion was denied, as was the mandamus petition challenging it.  Ten months after the mandamus denial, after a change in lead counsel, the defendant filed a motion asserting improper venue.  The order on that motion addresses several issues, including venue over foreign defendants, the geographic jurisdiction of the court, creative uses of the marking statute, and even more creative arguments regarding venue waiver.

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