Roy Payne

Attorneys’ Fees and Exceptionality: Two Perspectives from Recent Cases

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

E.D. Texas Magistrate Recommendations Highlight How Patent Marking Requirements Can Apply To Method Claims

Report And Recommendation on Motion for Partial Summary Judgment, Huawei Technologies Co. Ltd, v. T-Mobile US, Inc. et al., E.D. Tex. (September 4, 2017) (Magistrate Judge Roy Payne)

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

Details Matter: Two Courts’ Approaches to Personal Jurisdiction and Venue

Report & Recommendation to Deny Motion to Dismiss or Transfer, MyMail, Ltd. v. Yahoo!, Inc., E.D. Tex. (August 17, 2017) (Magistrate Judge Roy Payne)

Order Granting Motion to Dismiss, The Proctor & Gamble Company v. Ranir, LLC, S.D. Ohio (August 17, 2017) (Judge Timothy Black)

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