Plaintiff sought dismissal of the defendant’s claims that the plaintiff – a false eyelash manufacturer – engaged in false patent marking and false advertising in this case dealing with false eyelashes. (You can sort of see the theme, can’t you?) Judge Gilliland concluded that the false patent marking claim was not time-barred, that there was marking of an unpatented article, sufficient facts were pled to allege the requisite intent to deceive, and there was a sufficient showing of a competitive injury to require denial of the motion to dismiss. But the court did recommend granting the motion to dismiss the false advertising claim, noting that statements of inventorship – here “innovator” – are not actionable as false advertising, and recommended dismissal of the defendant’s claims against an individual as lacking personal jurisdiction.
Judge Brown agreed with plaintiff BSA that the defendant’s motion to dismiss this trademark infringement case for lack of jurisdiction should be denied. (Then-Tiger Cub Grayson is now a semiconductor engineer in Austin, so he has to squint even harder).
In a scene somewhat less relaxing than this one canoeing at Fern in December, a Marshall jury in Judge Gilstrap’s court returned a verdict in the ATL v. CosMX case last Friday. All four claims were found infringed, but two were proven invalid. At least one of the four was willfully infringed (yes, I know what you’re thinking and no, we don’t know from the verdict form whether it was the ones that were not found invalid). Damages were set at $3,701,108. The jury also found that a letter by the plaintiff was not shown by clear and convincing evidence to be both objectively baseless and an attempt to interfere with a business relationship of a competitor through use of the litigation process, nor did the plaintiff engage in anticompetitive conduct.
No, I’m not joking about the heron – this photo (not taken today) is of our friendly lake bird. A slightly less friendly Judge Albright denied everything the plaintiff requested on this discovery dispute, including info on the accused products, and a corporate deponent from the defendant on numerous additional issues.
I’m enjoying a quiet morning at Fern Lake outside Marshall watching the squirrels in the yard, the big heron out on the lake, and the judges refereeing discovery squabbles. First up is an interesting set of motions in Waco seeking to sub in a replacement validity expert, and compel an immediate deposition of a damages expert.
In a sua sponte order, Judge Gilstrap decided to stay the Netlist trial pending a decision on the IPRs in the remaining two patents, which are due in the next 60 days. Judge Payne had previously recommending denying the stay, Judge Gilstrap had accepted that recommendation, and the Federal Circuit had declined to order a stay on mandamus.
Judge Starr denied most, but not quite all of the summary judgment motions (the claim for breach of implied covenant of good faith and fair dealing and unjust enrichment found itself on the outside looking in) filed in this trademark case.
Judge Starr denied the motion to strike and exclude certain of the plaintiff’s damages expert’s opinion on all three asserted grounds.
Although finding that the defendant met the “low bar” of its initial burden to raise such a defense, Judge Payne recommended denial of the plaintiff’s motion because there was a genuine issue of fact as to whether the products complied with 35 U.S.C. §287, entitling it to pre-suit damages. This was because the plaintiff did not present arguments that the products were so marked, relying only on its argument that the defendant had not cleared its initial burden.
Judge Ezra denied the motion, declining to find that the asserted claims were directed at unpatentable subject matter. He noted that Federal Circuit jurisprudence limits a courts’ authority to issue
ineligibility determinations at a case’s earliest stages, noting both the need for claim construction and the procedural context requiring a court considering a Rule 12(c) motion to accept a complaint’s factual allegations as true. He noted that “fact discovery and expert reports are often necessary to ensure that
courts do not ‘prematurely’ rule on eligibility,” and that “it is inefficient to attempt to resolve §101 motions at such an early stage where the parties do not agree that the claims are representative.”