On July 19, 2018, Eastern District of Texas Judge Rodney Gilstrap issued a scathing order in response to a motion by Google LLC to “establish” a procedure for resolving claim construction disputes. Problematically for Google, its motion came nearly two months after the Court issued an order on the procedure for claim construction, three weeks after claim construction briefing began, and only two days before Google filed its responsive claim construction brief. The Court emphasized repeatedly that Google’s motion “demonstrates a serious disregard for [the] Court’s Rules, Orders, and its authority to control its own docket.” The Court also noted that the plaintiff’s actions contributed to the problem and ordered both parties and their counsel to appear on August 7, 2018 to show cause why they should not be sanctioned. The Court’s order is a cautionary tale for litigants and counsel in all cases about the importance of strictly following a court’s rules and procedures, and a reminder that it is the court—not parties or counsel—that controls the case. READ MORE
Order Denying EnerPol, LLC’s Emergency Motion to Strike Schlumberger’s Previously Undisclosed Claim Construction Proposal From its Technology Tutorial and Claim Construction, EnerPol, LLC v. Schlumberger Technology Corporation, E.D. Tex. (January 31, 2018) (Judge Rodney Gilstrap)
Almost everyone has heard the story of the boy who cried wolf: a bored shepherd amuses himself by shouting “wolf!” when there was none, laughing every time the villagers rush out to protect his flock. The one time a wolf does actually come to attack, the villagers ignore his call for help because of his previous false alarms.
Memorandum Opinion and Order Denying Attorneys’ Fees Award, Effective Exploration, LLC v. Bluestone Natural Resources II, LLC, No. 2:16-cv-00607-JRG-RSP, E.D. Tex. (January 18, 2018) (Judge Roy S. Payne)
Order Granting, in Part, Motion for Attorneys’ Fees and Costs And Ordering Supplemental Briefing, Lyda v. CBS Interactive, Inc., No. 16-cv-06592-JSW, N.D. Cal. (January 24, 2018) (Judge Jeffrey S. White)
An inventor or company facing patent prosecution from a non-practicing entities (NPE) with borderline frivolous claims has a difficult tactical choice. On the one hand, defending to judgment may serve to deter further NPE suits. On the other, it may be more cost effective to quickly settle nuisance NPE litigation. While this decision turns on a number of factors, one significant concern will always be the likelihood of securing attorney’s fees to make up for the cost of defending the litigation. As the Supreme Court announced in Octane Fitness, 134 S. Ct. 1749, 1756 (2014), the test for awarding attorneys’ fees is whether the opposing party’s conduct has been exceptional, based on the totality of the circumstances. In this post, we examine two recent cases that illustrate what this standard looks like in practice. READ MORE
On the heels of the Federal Circuit’s reversal of the Court’s decision in Cray (reported here), on Wednesday, Judge Gilstrap dismissed a different patent suit for improper venue even where Defendant’s employees lived and worked in the Eastern District of Texas. The decision confirms that for purposes of venue, an employee’s residence, by itself, does not constitute the employer’s residence too. Instead, courts must look at several factors beyond the mere location of employees when assessing corporate “place of business.” READ MORE
S.1948 – A bill to abrogate the sovereign immunity of Indian tribes as a defense in inter partes review of patents. Allergan, Inc. and The Saint Regis Mohawk Tribe v. Teva Pharmaceuticals USA, Inc., Mylan Pharmaceuticals, Inc., and Akorn, Inc., Case No. 2:15-cv-1455-WCB (E.D. Tex. Oct. 16, 2017). READ MORE
The Federal Circuit today clarified what it means to have “a regular and established place of business” to satisfy the venue requirement in patent litigation under 28 U.S.C. § 1400(b). As we previously reported here, on June 29, Judge Gilstrap denied transfer in this case and set out a four-factor test to consider in establishing venue in a particular district—including physical presence, defendant’s representations, benefits received, and targeted interactions. Defendant Cray, Inc. then petitioned for a writ of mandamus. READ MORE
Magistrate Judge Roy Payne’s recent Report and Recommendation in Huawei Technologies Co. Ltd, v. T-Mobile US, Inc. shines a spotlight on potential inconsistencies in Fed. Cir. precedent regarding patent marking, and provides some valuable insight to plaintiffs and defendants who may be involved in litigation over a patent’s method claims. READ MORE
As we’ve been reporting, patent venue case law continues to develop on multiple fronts in the aftermath of the Supreme Court’s decision in TC Heartland. In a pair of decisions discussed below, two jurisdictions—the Eastern District of Texas and the Southern District of Ohio—took contrasting approaches to how a defendant’s response to personal jurisdiction allegations affected the defendant’s ability to challenge venue. READ MORE
On June 29, 2017, Judge Gilstrap of the Eastern District of Texas issued an opinion analyzing the factors to consider when determining whether, in the absence of “residence” in the district, a defendant “has committed acts of infringement and has a regular and established place of business” there for purposes of satisfying the venue statute. This is an issue that the Federal Circuit has not touched since 1985, leaving litigants and courts to review numerous, not always consistent, regional court decisions.
This particular patent case concerns technologies allegedly incorporated into a Cray XC40 supercomputer installed at the University of Texas Austin’s campus (which is not in the Eastern District of Texas). While this case has been pending since 2015, Cray had timely filed a motion to dismiss for improper venue early in the action. READ MORE
We previously reported on the early impact of the Supreme Court’s decision in TC Heartland based on the first few weeks of new filings. (For a summary of the TC Heartland opinion and its implications, click here.) It has now been one month, and based on the filing data for the month since TC Heartland as well as historical data since the beginning of 2016, we now have a better sense of how things have changed and how things may look in the future. Using data obtained from Docket Navigator, we compared filings in the month since TC Heartland came down on May 22 with filings earlier this year and also for all of 2016. READ MORE