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Eastern District of Texas Federal Court Practice http://mcsmith.blogs.com/eastern_district_of_texas/ A web log devoted to practice in the U.S. District Court for the Eastern District of Texas, with special emphasis on patent litigation - published by Michael C. Smith 2014-11-07T12:08:00-05:00 Motion for Sanctions For Litigating After Claims Construction Ruling Denied (updated) http://mcsmith.blogs.com/eastern_district_of_texas/2014/11/motion-for-sanctions-for-litigating-after-claims-construction-ruling-denied.html DietGoal Innovations LLC v. Chipotle Mexican Grill, Inc., 2:12cv764 (10/14/2014) Judge: William C. Bryson Holding: Motion for Sanctions Denied King Arthur: Now stand aside, worthy adversary. Black Knight: 'Tis but a scratch. King Arthur: A scratch? Your arm's off. Black...
DietGoal Innovations LLC v. Chipotle Mexican Grill, Inc., 2:12cv764 (10/14/2014)

Judge: William C. Bryson

Holding: Motion for Sanctions Denied

King Arthur: Now stand aside, worthy adversary.

Black Knight: 'Tis but a scratch.

King Arthur: A scratch? Your arm's off.

Black Knight: No it isn't.

King Arthur: What's that, then?

Black Knight: [after a pause] I've had worse.

Defendant sought sanctions under Rule 11 for the plaintiff's continuance of the case following Judge Payne's claim construction opinion, which it contended made clear that, well, their arm was off.

Judge Bryson began his analysis by rejecting the plaintiffs claim that there was no pleading, written motion, or other paper that it filed with the court following the claims construction ruling, and thus no basis for an argument that its conduct violated Rule 11.  He noted that the rule makes clear that "later advocating" a position taken in an earlier written filing can be sanctionable as well.

Nonetheless, he determined that the plaintiff's conduct in continuing to advocate its theory of infringement was not wholly frivolous for two reasons.

First, because the plaintiff could argue on appeal to the Federal Circuit that Judge Payne's claim construction was in fact incorrect.  (Editor's Note: In an amazing coincidence, three days after this opinion came out, the Federal Circuit actually held that Judge Payne's claims construction in another case was, in fact, incorrect - see here.  Wow.  Who could have seen that coming, right? This is why it's so cool to have Federal Circuit judges hearing trial court cases by assignment - they know all this neat stuff about, like, appeals and stuff).

And second, it was not frivolous for the plaintiff to continue to argue that it could prove infringement even under the court's claim construction. While admitting that he was "skeptical" that the plaintiff's interpretation of the claim construction order was correct, the Court was not prepared to say that the plaintiff's position was wholly frivolous. "It is not unusual, following a claim construction order, for the parties to dispute the precise meaning of the order that was entered," Judge Bryson concluded. (Who, us?)  "DietGoal's argument that the court's claim construction order was amenable to an interpretation consistent with its theory of infringement was, at minimum, not wholly frivolous, and it might have led the Court to revise or at least further explain the construction of the term 'customized eating goals.'"

Accordingly, the motion for sanctions was denied.

Update: A sharp-eyed reader caught that the claims construction noted above as reversed on October 17 was actually by Judge Payne's predecessor on the Marshall magistrate judge bench, former Judge Chad Everingham.

 Eastern District of Texas - Marshall Division Michael C. Smith 2014-11-07T12:08:00-05:00 Patent Litigation Dictionary - "Substantial Portion" http://mcsmith.blogs.com/eastern_district_of_texas/2014/11/patent-litigation-dictionary-substantial-portion.html "Substantial Portion" - a term "commonly understood by lawyers to be "weasel words" ... [whose] meaning is malleable to a point where they mean what the user wants them to mean in any given situation; they have no meaning of...
"Substantial Portion" - a term "commonly understood by lawyers to be "weasel words" ... [whose] meaning is malleable to a point where they mean what the user wants them to mean in any given situation; they have no meaning of their own."  Abstrax v. Hewlett-Packard, 2:14cv158 (11/4/14) (Gilstrap, J.).  Example: "The Court found that the term "substantial portion" was a phrase that was subject to very different constructions."

For more patent litigation dictionary entries, see here.
 Patent Litigation dictionary Michael C. Smith 2014-11-07T11:44:48-05:00 Motion for Attorneys Fees Denied; Costs Granted in Part http://mcsmith.blogs.com/eastern_district_of_texas/2014/11/motion-for-attorneys-fees-denied-costs-granted-in-part.html Macrosolve v. Newegg, 6:12cv46 (10/16/14) Judge: K. Nicole Mitchell Holding: Motion for Attorneys Fees Denied: Costs Granted in Part In January 2012, Macrosolve filed this action against Newegg alleging patent infringement. In March 2014, Macrosolve filed a motion to voluntarily...
 Macrosolve v. Newegg, 6:12cv46 (10/16/14)

Judge: K. Nicole Mitchell

Holding: Motion for Attorneys Fees Denied: Costs Granted in Part

 In January 2012, Macrosolve filed this action against Newegg alleging patent infringement. In March 2014, Macrosolve filed a motion to voluntarily dismiss its claims against Newegg with prejudice, which the Court granted.  Newegg then filed a motion for fees under 35 U.S.C. § 285 and for costs under 28 U.S.C. § 1920.

Exceptional Case Under 35 U.S.C. § 285

Newegg maintained it should be awarded attorneys' fees because Macrosolve engaged in vexatious litigation and brought objectively baseless claims against Newegg in bad faith.  Judge Mitchell reviewed the facts and held that "[e]ven under the new, lower standard for an exceptional case designation, Newegg provides little evidence that this case "stands out from others with respect to the substantive strength of [Macrosolve's] litigating position" or that it litigated the case in an unreasonable manner," as required by Octane Fitness.  Given that the lower standard for 285 was not met, the Court found that the accompanying request for expert fees and other nontaxable expenses did not meet the higher standard required for sanctions under the Court's inherent powers either.

Court Costs Under 28 U.S.C. § 1920

With respect to Newegg's claim for court costs, Judge Mitchell held that there was no justification for the Court to deny Newegg its costs as plaintiff requested, and that Chief Judge Leonard Davis' "Standing Order Regarding Bills of Costs" which interprets 28 U.S.C. § 1920 after its 2008 amendment guided the Court's resolution of the parties' costs disputes.  Accordingly, costs for video-recorded depositions, producing electronic documents in an acceptable format, and the technical advisor were recoverable; however, costs for "ASCII transcripts," "rough drafts," expedited delivery, and PDF to TIFF conversion were merely incidental and not recoverable under the statute.  Newegg was ordered to resubmit its costs request (originally $26,860.95) to reflect the Court's rulings.

 Eastern District of Texas - Tyler Division Michael C. Smith 2014-11-06T17:59:20-05:00 How to Tell What's REALLY Important http://mcsmith.blogs.com/eastern_district_of_texas/2014/11/how-to-tell-whats-really-important.html I got a smile out of of my weekly Twitter activity report this week. My tweet on the Law360 feature on Eastern District of Texas Chief Judge Leonard Davis was narrowly beat out out by the tweet on the goodie...
I got a smile out of of my weekly Twitter activity report this week.

My tweet on the Law360 feature on Eastern District of Texas Chief Judge Leonard Davis was narrowly beat out out by the tweet on the goodie bag distributed at the ED bench/bar.  (Sorry, Judge).  But the top (by far) was the photo of my wife and I cheering on our Baylor Bears with fellow Baylor alum DCC Ashley P at a recent event.
 Commentary Michael C. Smith 2014-11-05T10:08:17-05:00 Motion to Transfer Venue from Sherman to California Denied http://mcsmith.blogs.com/eastern_district_of_texas/2014/10/motion-to-transfer-venue-from-sherman-to-california-denied.html Net Navigation Systems, LLC v. Extreme Networks, Inc., 4:14-CV-254 (10/27/14) Judge: Amos Mazzant Holding: Motion to Transfer Venue Denied After reviewing the applicable factors in this patent case, Judge Mazzant concluded that the defendant had not met its burden to...
 Net Navigation Systems, LLC v. Extreme Networks, Inc., 4:14-CV-254 (10/27/14)

Judge: Amos Mazzant

Holding: Motion to Transfer Venue Denied

After reviewing the applicable factors in this patent case, Judge Mazzant concluded that the defendant had not met its burden to demonstrate that the Northern District of California was a "clearly more convenient" forum than the Eastern District of Texas. The factors that favored transfer included the local interest of the Northern District of California as the "home" of the defendant; the access to sources of proof that are generally available there or that can be made available there; and the availability of compulsory process of witnesses. "Heavily outweighing these factors," the Court observed, "is the fact that this Court has extensive experience with these same patents, including a Markman hearing and claim construction order, and it is much more efficient to conduct the two co-pending trials of these patents-in-suit in one forum." The Court also noted that the Eastern District of Texas could bring the case to trial faster than the Northern District of California, and that the remaining factors were neutral.
 Eastern District of Texas - Sherman Division Michael C. Smith 2014-10-31T15:19:35-04:00 "Update of Federal Courts and Federal Rules of Civil Procedure" - 2014 Advanced Civil Trial course panel http://mcsmith.blogs.com/eastern_district_of_texas/2014/10/update-of-federal-courts-and-federal-rules-of-civil-procedure-2014-advanced-civil-trial-course-panel.html Unfortunately this panel fell so soon after last week's bench bar that I was not able to get a post up on it ahead of time, but I was fortunate to be able to pinch-hit moderating a distinguished panel yesterday...
Unfortunately this panel fell so soon after last week's bench bar that I was not able to get a post up on it ahead of time, but I was fortunate to be able to pinch-hit moderating a distinguished panel yesterday morning in Houston on the subject of federal courts and the Federal Rules of Civil Procedure at the State Bar's 2014 Advanced Civil Trial course.

The panelists included U.S. District Judge Lee Rosenthal of the Southern District of Texas – Houston Division, Associate Dean Lonny Hoffman of the University of Houston Law Center and distinguished practitioners Richard W. Mithoff, Jr. and Murray J. Fogler, both of Houston.

We spent most of our time talking about the upcoming amendments to the Federal Rules of Procedure (even though they will not take effect until December 1, 2015) which deal with discovery and document preservation, but also covered other topics including pleadings, and technology for hearings. I hope to get a summary of the current state of the proposals up soon, but in the meantime, here's a quick summary of the salient points:

"Proportionality" added to the definition of scope of discovery;

No new limits on number of written discovery (there had been some proposed); and

Rule 37 on sanctions for failure to preserve documents rewritten

Lonny Hoffman provided an outstanding summary of the rule proposals for attendees, which was followed by valuable insights from Judge Rosenthal, who, as a former chair of both the advisory committee on the  FRCPs and the standing committee which oversees all of the federal rules, is a veteran of the rulemaking process.  Richard, Murray and I sounded the requisite notes of alarm for the practicing bar for any rule changes, since of course everything was better back in the old days (am I getting old, or what?).

Judge Rosenthal also informed us on the new Fifth Circuit pattern jury instructions which are hot off the presses, metaphorically speaking, as well as the new employment law pattern discovery requests which are available for use nationwide.  (I don't have a link for the latter, so if any employment lawyers reading this know where they are located, please shoot me an email and I will post it).

It was a very enjoyable panel, and I really appreciated the opportunity to work with these distinguished members of the bench and bar.  Nonetheless, after three trips to Dallas and one trip to Houston in the last eight days (some of which were distinctly happier than others), I am very glad to be back in the office and relatively undisturbed for a few days to catch up.

 Commentary Michael C. Smith 2014-10-30T12:09:12-04:00 Please Stand For the Jury .... http://mcsmith.blogs.com/eastern_district_of_texas/2014/10/please-stand-for-the-jury-.html Had one of my favorite moments as a ED Tex lawyer just now. We just started the panel of actual, real live former jurors from patent cases that will be talking to us about their experiences. When the jurors entered... Had one of my favorite moments as a ED Tex lawyer just now. We just started the panel of actual, real live former jurors from patent cases that will be talking to us about their experiences. When the jurors entered the hotel ballroom for their panel ... the entire room of lawyers and judges stood up until they were in place and seated. Now that, ladies and gentlemen, is how we do that. Michael C. Smith 2014-10-24T15:59:13-04:00 ED Tex Bench Bar - Delaware and EDTex judges panel http://mcsmith.blogs.com/eastern_district_of_texas/2014/10/ed-tex-bench-bar-delaware-and-edtex-judges-panel.html Enjoying the panel on best practices in patent docket with ED Tex judges Leonard Davis and Rodney Gilstrap and Delaware judges Leonard Stark and Sue Robinson. Enjoying the panel on best practices in patent docket with ED Tex judges Leonard Davis and Rodney Gilstrap and Delaware judges Leonard Stark and Sue Robinson. Eastern District of Texas news & events Michael C. Smith 2014-10-24T13:14:12-04:00 ED Texas Affirmance rates at Federal Circuit http://mcsmith.blogs.com/eastern_district_of_texas/2014/10/ed-texas-affirmance-rates-at-federal-circuit.html CAFC Judge Timothy Dyk is putting up some interesting statistics on reversal rates for the district on the panel that is up right now. He shows the stats for the year thus far as 38% reversal on mandamus - up... CAFC Judge Timothy Dyk is putting up some interesting statistics on reversal rates for the district on the panel that is up right now. He shows the stats for the year thus far as 38% reversal on mandamus - up a bit over the last few years. The district generates about ten percent of the appellate court's district filings, and has a 94% affirmance rate so far - 14 affirmance, one partial and one reversal. He and Judge Davis just talked about his recent experience trying a case and hearing summary judgment motions in Tyler. Alan Fisch is talking about the benefit of trying cases before judges that try a lot of civil cases. Eastern District of Texas Bar Association Eastern District of Texas news & events Michael C. Smith 2014-10-23T11:52:57-04:00 Captain Of The Patent Rocket Docket: Judge Leonard Davis - Law360 article http://mcsmith.blogs.com/eastern_district_of_texas/2014/10/captain-of-the-patent-rocket-docket-judge-leonard-davis-law360-article.html Good article in today's Law360 Captain Of The Patent Rocket Docket: Judge Leonard Davis about our chief. http://www.law360.com/ip/articles/588528?nl_pk=733cd330-4a3a-469a-bf1e-d53aa762df44&utm_source=newsletter&utm_medium=email&utm_campaign=ip Good article in today's Law360 Captain Of The Patent Rocket Docket: Judge Leonard Davis about our chief. http://www.law360.com/ip/articles/588528?nl_pk=733cd330-4a3a-469a-bf1e-d53aa762df44&utm_source=newsletter&utm_medium=email&utm_campaign=ip Michael C. Smith 2014-10-22T16:26:16-04:00 Paul Brown Courthouse Naming Ceremony http://mcsmith.blogs.com/eastern_district_of_texas/2014/10/paul-brown-courthouse-naming-ceremony.html Great morning in Sherman watching the federal courthouse be formally renamed for the late U.S. District Judge Paul Brown. In a sign of the collegiality among the local bench, every sitting and senior district judge and all magistrate judges were... Great morning in Sherman watching the federal courthouse be formally renamed for the late U.S. District Judge Paul Brown.  In a sign of the collegiality among the local bench, every sitting and senior district judge and all magistrate judges were present, as well as the chief judge of the Fifth Circuit Judge Carl Stewart.  Eastern District of Texas - Sherman Division Eastern District of Texas news & events Michael C. Smith 2014-10-22T16:18:27-04:00 ED Bench/Bar Goodie Bag http://mcsmith.blogs.com/eastern_district_of_texas/2014/10/ed-benchbar-goodie-bag.html Bench/Bar is getting underway and I am unpacking my goodie bag. Phone charger is a great idea, and kudos for whoever included the hand sanitizer. Bench/Bar is getting underway and I am unpacking my goodie bag. Phone charger is a great idea, and kudos for whoever included the hand sanitizer. Eastern District of Texas Bar Association Michael C. Smith 2014-10-22T15:14:56-04:00 Sherman Courthouse Renaming Ceremony; ED Tex Bench Bar Starts Tomorrow http://mcsmith.blogs.com/eastern_district_of_texas/2014/10/sherman-courthouse-ceremony-ed-tex-bench-bar-starts-tomorrow.html The 2014 Bench/Bar kicks off tomorrow morning in Sherman with the renaming of the Sherman courthouse for former U.S. District Judge Paul Brown at 10 am. The activities (well, aside from golf) continue with CLE at the hotel in Plano...
The 2014 Bench/Bar kicks off tomorrow morning in Sherman with the renaming of the Sherman courthouse for former U.S. District Judge Paul Brown at 10 am.

The activities (well, aside from golf) continue with CLE at the hotel in Plano at 2pm with panels on not lying to judges (more or less), the past, present and future of the ED Tex, a high Octane panel on patent issues and the Fifth Circuit's new hyperlink program.

Tomorrow evening continues with a reception, opening remarks by Chief Judge Davis, and dinner, which features Dallas law school deans from UNT and SMU, presentation of the Hannah award, and remarks on professionalism by Baylor President Kenneth Starr.   After that we have a keynote presentation by Fifth Circuit Chief Judge Carl Stewart, also on professionalism (but less likely to involve discussion of Baylor football), followed by dessert and dancing with ED Tex veteran (in both the courthouse and the dance floor, as we now know) Emerald City (President & Mrs. Bush are not expected to accompany the band).

Thursday morning has panels on patent litigation statistics, practice in the ED Tex, yet more practice on the ED Tex, how to screw up (or not) at trial, and the Mark Cuban trial.  That brings us to lunch.

Thursday afternoon is a presentation on legal writing in the cell phone age, and a panel on legal writing in a paperless world.  Following a break, we get into how to invalidate patents, and a panel with Federal Circuit Judge Kimberly Moore and some of her former law clerks on practice in the Federal Circuit.

Thursday afternoon is also the panel I have been working on Circuit Judges and District Judges: What Can They Learn From One Another? What Can Lawyers Learn From Listening? with  Chief Circuit Judge Sharon Prost and Judge Timothy Dyk from the Federal Circuit, Chief Judge Leonard Davis and Judge Rodney Gilstrap from the ED Tex, Judge Barbara Lynn from the ND Tex (not the legendary blues guitarist, singer, and songwriter from Beaumont, just in case you were wondering), and Judge Sue Robinson from the District of Delaware, with Jennifer Ainsworth, Glenn Thames and I as interactive facilitators.  Not often you get six judges like this on the same panel, so I look forward to that one.

Thursday evening has another reception, dinner on your own, and then Reflections of ED Texas/ND Texas 2014 Patent Mock Trial Presented at China University, Beijing with Comparative Ethics. And After Dinner Drinks by the ND and ED Texas lawyers and judges who participated in the Presidential Suite.  Discussions are set to conclude at 10:30.  Drinking is expected to continue after then.

Friday morning, if we can stagger out of our respective hotel rooms after two nights of conversing about the latest trends in federal court litigation till all hours, we will be greeted with a panel on Hatch-Waxman Behind the Pine Curtain (which had damn well better be accompanied by some choice pharmaceuticals if they want anyone awake), in-house counsel wish lists, patent case management, and patent litigation management (again).  Again, the first is an academic presentation, then the second has four judges who might know something about managing a patent docket: Judges Davis and Gilstrap from the Eastern District and Judges Leonard Stark and Sue Robinson from Delaware.

After a buffet lunch, attendees with be treated to a panel on current proceedings at the Board of Patent Appeals and Interferences, Jurors Gone Wild (that's the next panel which is about juries, not the name of the BPAI panel), and then a panel of actual ED Tex patent case jurors.  Whether they will, too, go wild is anyone's guess.

It's going to be an enjoyable few days in Plano - hope to see many of you there.
 Eastern District of Texas news & events Michael C. Smith 2014-10-21T17:15:33-04:00 Verdict in Trinity highway rail cap qui tam False Claims Act case http://mcsmith.blogs.com/eastern_district_of_texas/2014/10/verdict-in-trinity-highway-rail-cap-qui-tam-case.html A Marshall jury in Judge Rodney Gilstrap's court rendered a verdict today in the highly – publicized qui tam False Claims Act action that was tried last week involving highway rail end caps. The jury found that defendants Trinity Industries,...
A Marshall jury in Judge Rodney Gilstrap's court rendered a verdict today in the highly – publicized qui tam False Claims Act action that was tried last week involving highway rail end caps. The jury found that defendants Trinity Industries, Inc. and Trinity Highway Products, LLC knowingly made, used, or cause to be made or used, a false record or statement material to a false or fraudulent claim, and awarded $175 million in damages.
 Eastern District of Texas - Marshall Division Michael C. Smith 2014-10-20T16:10:27-04:00 Judge Gilstrap's first patent verdict affirmed; district and appellate judge involved will be on ED Bench/Bar panel next week http://mcsmith.blogs.com/eastern_district_of_texas/2014/10/judge-gilstraps-first-patent-verdict-affirmed.html Back in the summer of 2012, U.S. District Judge Rodney Gilstrap tried SSL v. Citrix, which was significant for several reasons. As I posted at the time. it was: (1) Judge Gilstrap's first patent trial; (2) the first trial in...

Back in the summer of 2012, U.S. District Judge Rodney Gilstrap tried SSL v. Citrix, which was significant for several reasons.  As I posted at the time. it was:

(1) Judge Gilstrap's first patent trial;
(2) the first trial in the historic 1901 county courthouse district courtroom in almost half a century (Judge Bryson was using his courtroom across the street), and
(3) the first application by a district court of the Federal Circuit opinion in Bard Peripheral v. W.L.Gore (Fed. Cir. 2012) (on rehearing).

As readers know, Bard was the case that held that the objective prong of the test for willful patent infringement is a separate question of law, and that henceforth it would be the trial court's duty to determine whether the defendant's actions were objectively reckless.  The Bard opinion came out several days into the trial, forcing the Court (working out of a makeshift courtroom across the street from his chambers while conducting his first patent trial) and the parties to figure out how to apply it. Pursuant to Bard, Judge Gilstrap made the determination that the defendant's actions were in fact (sorry, in law) objectively reckless, and then submitted the issue of willfulness to the jury under the new Bard framework for the jury to find if the subjective prong was met.

In SSL, there were two patents asserted.  The jury found one patent - unfortunately for the plaintiff the one with the lion's share of the damages sought - not infringed, and that only one of the three claims on a second patent was infringed.  It also found that all three of the second patent's claims were also contributorily and induced-edly (not a word, but it needs to be) infringed.  The jury found that the infringement of the second claim was willful, but of course only looking at the subjective prong of the test.  Finally, the jury assessed damages at $10 million.  For comparison purposes, the plaintiff was seeking $63 million in closing.

The plaintiff then sought enhanced damages based on the willfulness finding.  The Court determined that there was no copying, but that Citrix' "eight-year long failure to investigate the '011 patent" supported enhancement.  He also found that it wasn't a "close case", the length of infringement was lengthy, and Citrix' size and financial condition weighed in favor of enhancement (these are all factors in the enhancement analysis, incidentally, not just random observations).  Judge Gilstrap accordingly determined that trebling the $10 million verdict was not appropriate, but did enhance damages $5 million for a total of $15 million.

However, since the jury agreed with Citrix that the '796 patent was not infringed, and with SSL that the '011 was, Judge Gilstrap determined that neither side was the "prevailing party" in this case and held that each side should bear its own costs.

On appeal the defendant claimed the the jury got it wrong in finding infringement and willful infringement on one patent, as well as in finding the patent not invalid.  It also stared down the throat of a gift horse by complaining that the court should have excluded agreements its expert actually used to calculate a lower royalty rate than the plaintiff argued for - this in a case that was a substantial defense win on damages.  Speaking of a defense win on damages, the plaintiff also appealed, claiming that the jury got it wrong for not finding infringement on the patent that had the money, and that Judge Gilstrap got it wrong by making an incorrect claim construction (again, on the patent that had the money) and by not finding it the "prevailing party" for purposes of court costs.  (I am misstating the analysis slightly since the appeal is actually not of what the jury did, but of the district court's decision to deny the JMOL asking to set it aside, but you get the idea).

Yesterday the Federal Circuit ruled on the cross-appeals.  Writing for a panel consisting of herself, Judge Lourie and Judge Linn, Judge Kathleen O'Malley affirmed Judge Gilstrap's rulings across the board, essentially, including the willfulness finding (both the court's and the jury's) and the enhanced damages in the amount Judge Gilstrap had determined, as well as the claims constructions, exclusion of nonexpert testimony on invalidity, admission of certain agreements (not licenses, but it agreed with Judge Gilstrap that they were close enough for use) on the issue of damages, calculation of prejudgment interest, and finally, exclusion of evidence of ongoing reexam proceedings.  On the last point, it appears from the opinion that the claims stood rejected at the time of trial but the PTO later found them not invalid, a factor which the panel found further supported the court's finding that the objective prong of willful infringment had been met.

The panel did, however, find that Judge Gilstrap should have held the plaintiff to be the prevailing party, and considered the relative success when it came to the decision of what fees and costs to award, not whether a party was "prevailing" in the first place.  (This morning Judge Gilstrap entered an order in the case setting a briefing schedule on the fees/costs issue).

I have heard some commentators argue that Federal Circuit opinions are sometimes unclear and difficult to draw clear guidance from for use in future cases.  They won't be saying that about this one.  It reads almost like a JMOL, and you know how I feel about those.  So put this one away for the subjects above - it is a good reference on a number of issues that recur at trial in patent cases.  Perhaps that isn't coincidental, since Judge O'Malley was a district judge for 16 years before joining the Federal Circuit.

Speaking of district and appellate judges, I would call to readers' attention that both Judge O'Malley and Judge Gilstrap will be on a panel on trial & appellate court relations next week at the Eastern District bench/bar, Circuit Judges and District Judges: What Can They Learn From One Another? What Can Lawyers Learn From Listening? along with Federal Circuit Chief Judge Sharon Prost, Eastern District Chief Judge Leonard Davis, and district judges Barbara Lynn of the Northern District of Texas and Sue Robinson of the District of Delaware, (both of whom have heard the odd patent case or two, I understand).  If you aren't registered, now would be a good time...
 Eastern District of Texas - Marshall Division Michael C. Smith 2014-10-15T12:11:05-04:00 Lien On Me (Some): GeoTag's Motion for a Preliminary Injunction in Attorneys Fees Case Denied http://mcsmith.blogs.com/eastern_district_of_texas/2014/10/lien-on-me-some-geotags-motion-for-a-preliminary-injunction-in-attorneys-fees-case-denied.html Mount Spelman & Fingerman, P.C. v. GeoTag, Inc., 2:14cv013 (10/2/14) Judge: Rodney Gilstrap Holding: GeoTag's Motion for a Preliminary Injunction Denied As readers are aware, GeoTag filed multiple suits against over 400 defendants at various locations within the United States,...
Mount Spelman & Fingerman, P.C. v. GeoTag, Inc., 2:14cv013 (10/2/14)

Judge: Rodney Gilstrap

Holding: GeoTag's Motion for a Preliminary Injunction Denied

As readers are aware, GeoTag filed multiple suits against over 400 defendants at various locations within the United States, including over 350 such defendants in Texas federal courts alone.  "As these cases proceeded, a litany of settlements and dismissals resulted," Judge Gilstrap observed.

But that's not what this case - or order - is about.  As weblog readers know from my prior posts, Geotag changed its attorneys approximately once a year (most often in August) from the institution of the litigation in 2010 through 2014. The lineup for the 2012 – 2013 season included California firm Mount Spelman & Fingerman, P.C., which represented Geotag from September 21, 2012 until it was terminated on November 8, 2013.

MSF instituted this litigation in Judge Gilstrap's court, contending that it was owed substantial sums as attorneys fees under the fee agreement, and that the agreement gives it a contractual lien over all amounts recovered by Geotag as a result of enforcing the patent in suit in all courts around the country. To enforce its asserted lien MSF has sent letters to entities sued by Geotag claiming that it has a lien covering all settlement proceeds and directing settling entities to pay the settlement amounts into an escrow account that cannot be touched by Geotag until the dispute is resolved by the Court.

As a result, GeoTag filed a motion seeking a preliminary injunction to prevent MSF from making such demands. It argued (one) the lien is unethical under the Texas disciplinary rules of professional conduct; and (two) that the lien should cover only existing settlements as of the time of MSF's discharge – and not the global lien that it now claims.

Judge Gilstrap concluded that a contractual charging lien to protect a contingency fee was not unethical under Texas disciplinary rules. He further concluded that since ambiguous terms in the fee contract must be resolved in favor of the client, the fact that some of the relevant provisions were ambiguous required him to construe the terms in favor of Geotag. Accordingly, the court concluded that MSF's lien covers only those disputes where resolution, either by executed settlement agreement, final judgment or dismissal with prejudice, was consummated before its date of termination – November 8, 2013. With respect to disputes resolved or consummated after that date the Court found that while MSF did hold an unsecured breach of contract action, to the extent it can prove damages, against Geotag, it did not have a lien for those disputes.

The Court further held that the lien was only enforceable on a case-by-case basis and not collectively "that is to say, MSF may only properly seek to enforce its lien in each individual case where resolution of the case was consummated before November 8, 2013, and there only to the extent of the specified contingent fee earned in that particular case." In other words, MSF could only claim the contingency fee to which it would be entitled from each individual settlement, i.e. it couldn't collect the entire settlement up to its overall fee that was due. Again, this was a result of the Court's resolving ambiguities in the provision against the lawyer drafter of "what must be viewed to be an excessively broad and ambiguous lien provision."

The same rule required MSF to accept Geotag's allocation of "costs" to the specific, individual cases when calculating the amount of its lien covers, because it was unclear what proportion of accrued costs should be allocated to each individual case.

The court went on to specifically hold that MSF did not hold a lien over funds obtained from the Delaware litigation or the Yellowpages.com litigation for the same reason.

Finding that its ruling "substantially mitigated" any harm to Geotag as a result of MSF's actions, the Court denied the request for preliminary injunction.

 Eastern District of Texas - Marshall Division Michael C. Smith 2014-10-13T17:13:09-04:00 Defendant's Motion for Summary Judgment Granted in Part in Conversion-ish Claims http://mcsmith.blogs.com/eastern_district_of_texas/2014/10/defendants-motion-for-summary-judgment-granted-in-part-in-conversion-ish-claims.html Hillman v. City of McKinney, NO. 4:11-CV-150 (10/2/14) Judge: Amos Mazzant Holding: Defendants Motion for Summary Judgment Granted in Part Plaintiffs were owners of a family entertainment business located in the city of McKinney, Texas. In February 2009, the bank...
 Hillman v. City of McKinney, NO. 4:11-CV-150 (10/2/14)

Judge: Amos Mazzant

Holding: Defendants Motion for Summary Judgment Granted in Part

Plaintiffs were owners of a family entertainment business located in the city of McKinney, Texas. In February 2009, the bank foreclosed on the real property and building that housed the business. This lawsuit arose out of a dispute between the business owners and the building owners over their access to the building while the building in the process of being sold to a new owner.

After parsing through the applicable facts and relevant legal standards, Judge Mazzant found that the plaintiffs' claims for loss of goodwill and loss of reputation damages must be dismissed, but that some of their claims against the new purchaser of the building (and other parties related to the building and its change of ownership) did survive.
 Eastern District of Texas - Sherman Division Michael C. Smith 2014-10-13T15:15:20-04:00 Motion for Leave to Serve Amended Contentions Granted http://mcsmith.blogs.com/eastern_district_of_texas/2014/10/motion-for-leave-to-serve-amended-contentions-granted.html Georgetown Rail Equipment Company v. Holland LP, 6:13cv366 (10/7/14) Judge: John Love Holding: Motion for Leave to Serve Amended Contentions Granted The defendant asserted that the proposed contentions were deficient under the local rules, and in any event there was...
Georgetown Rail Equipment Company v. Holland LP, 6:13cv366 (10/7/14)

Judge: John Love

Holding: Motion for Leave to Serve Amended Contentions Granted

The defendant asserted that the proposed contentions were deficient under the local rules, and in any event there was not sufficient good cause to permit the amendment.

With respect to the first argument, Judge Love rejected the contention that infringement contentions were intended to require party to set forth a prima facie case of infringement and evidence to support its case, and noted that in any event, the complaint was not connected to the proposed amendment.

With respect to the good cause analysis, the Court noted that the defendant had refused to produce source code, and was subsequently ordered to produce of the code, and the amendment followed that code review. It also did not agree that the contentions were introducing a new theory or product into the contentions, but rather were refining the scope of the accused product. The Court found that there was insufficient evidence to indicate that there would be unfair prejudice as a result of the amendment, and deferred the issue of whether a continuance was necessary pending a specific request by the defendant to remedy a problem caused by the amended infringement contentions.
 Eastern District of Texas - Tyler Division Michael C. Smith 2014-10-13T15:04:03-04:00 Victory Monday on EDTexweblog http://mcsmith.blogs.com/eastern_district_of_texas/2014/10/victory-monday-on-edtexweblog.html It's a victory Monday on the weblog celebrating the Cowboys' big win yesterday up in Seattle with my Staubach throwback. It's also a very rainy holiday Monday in Marshall – unless, of course you're across the street picking a jury...
It's a victory Monday on the weblog celebrating the Cowboys' big win yesterday up in Seattle with my Staubach throwback. It's also a very rainy holiday Monday in Marshall – unless, of course you're across the street picking a jury in Judge Gilstrap's court in the Trinity industries cap-end case, in which case it is still rainy, but it's not exactly a holiday.

But it's a good opportunity to catch up on work, as well as looking at some recent opinions that are worth noting, so keep an eye out and I will try to get a few up later today.

 Commentary Michael C. Smith 2014-10-13T11:54:13-04:00 Motion for Summary Judgment Granted in Foreclosure Case http://mcsmith.blogs.com/eastern_district_of_texas/2014/10/motion-for-summary-judgment-granted-in-foreclosure-case.html Hodges v. Wells Fargo Bank, N.A., NO. 4:12-CV-441 (10/3/14) Judge: Amos Mazzant Holding: Defendants Motion for Summary Judgment Granted Plaintiffs challenged the defendant's foreclosure of their property, and asserted several related causes of action. The court found that summary judgment...
Hodges v. Wells Fargo Bank, N.A., NO. 4:12-CV-441 (10/3/14)

Judge: Amos Mazzant

Holding: Defendants Motion for Summary Judgment Granted

Plaintiffs challenged the defendant's foreclosure of their property, and asserted several related causes of action. The court found that summary judgment was appropriate as to all of the plaintiffs claims.
 Eastern District of Texas - Sherman Division Michael C. Smith 2014-10-09T18:36:14-04:00 1(01) Is The Loneliest Number - Yet Another SJ of No Patentable Subject Matter http://mcsmith.blogs.com/eastern_district_of_texas/2014/10/101-is-the-loneliest-number.html DietGoal v. Chipotle Mexican Grill, 2:12cv764 (10/3/14) Judge: William Bryson Holding: Motion for Summary Judgment of Invalidity Under Section 101 Granted My backup title was "You're No Good, You're No Good, You're No Good, Baby You're No Good," which gives...
DietGoal v. Chipotle Mexican Grill, 2:12cv764 (10/3/14)

Judge: William Bryson

Holding: Motion for Summary Judgment of Invalidity Under Section 101 Granted

My backup title was "You're No Good, You're No Good, You're No Good, Baby You're No Good," which gives me an excuse to post a '70's Linda Ronstadt picture.

The Court previously stayed further proceedings pending the briefing and resolution of the motions for summary judgment. One of the motions for summary judgment, filed on behalf of all of the remaining defendants in this case was a motion for summary judgment that the '516 patent was invalid under 35 U.S.C. § 101 because it is directed to unpatentable subject matter (stop me if you've heard this before).

Judge Bryson granted that motion and entered summary judgment in favor of the defendants, but with the interesting twist that his ruling was based on the collateral estoppel effect of the decision of another district court.  Sort of a judicial play-action pass, since after his essay on the subject in Loyalty you'd have expected the Court to opt for a run up the middle on this subject.  But no - opted for the easy toss to Dez in the corner of the end zone.
 Eastern District of Texas - Marshall Division Michael C. Smith 2014-10-09T17:42:11-04:00 Patent Filings At Record Highs; No, Wait, They're Way Down http://mcsmith.blogs.com/eastern_district_of_texas/2014/10/patent-filings-at-record-highs-no-wait-theyre-way-down.html The patent litigation corner of the Internet is (appropriately) abuzz today with Lex Machina's recent report that the number of new patent cases filed last month was down 40% from the total the same month the year before, which it...
The patent litigation corner of the Internet is (appropriately) abuzz today with Lex Machina's recent report that the number of new patent cases filed last month was down 40% from the total the same month the year before, which it suggested was as a result of the impact of the U.S. Supreme Court's recent ruling in Alice Corp..  (Remember back all those months weeks ago when the headlines were trumpeting that patent filings were at record highs?)

A closer look at the data indicated to me potentially a more nuanced finding, in two ways.

First, as the report indicated, filings reached a record high of 675 new cases in April 2014. But as commentators have noted, that spike - which by the way was enormous locally until you look closer and note that the entire increase was attributable to filings by I believe two attorneys on behalf of four plaintiffs - was potentially the result of suggested amendments to a Senate patent reform bill which would have established new fee shifting rules and which would have backdated the revisions to April 24, I believe it was.  The tactic of filing essentially every case in this office to avoid an anticipated negative legislative action is not new – we saw the same thing in 2011 shortly before the AIA went into effect, and Texas lawyer sees it every other August 31, as the laws passed by the most recent legislature go into effect on September 1.

But as I have noted before, the effect of this orgy of filings is to damp down filings for the next several months since the pipeline of new cases was at least in part emptied in April. Thus the reduced rate of filings over the subsequent months may be explainable in part to this effect.

Does it explain it all? Well, filings through September last year were 4,548, and filings through September this year are 3,887.  So filings are actually down for the year now - they are at 85% of last year's levels - but the month-to month figure of 40% down in September may be exaggerating the trend a bit much.  As the chart below that adds the 2011 and 2012 numbers shows, the filings vary widely between months - the September filings are always off about 20% one way or the other from the prior year, so perhaps the change is not going to be as dramatic as month to month statistics indicate.

Second, although the commentators focus on the Court's decision in Alice, I have been studying the past year's opinions by both patent courts (I think the Supreme Court now fits that definition) and there are other opinions that justify a pause before filing new suits, and which I believe represent a more dramatic and unexpected change in the law than Alice, taking into account the preceding Federal Circuit caselaw on the subject.

Of course Octane Fitness / Highsmith counsels some caution before filing new cases.  And as I have posted recently, indefiniteness is a brave new world post-Nautilus, so that's an additional analysis that new filings need to undergo, and then there's that VirnetX opinion on damages from last month that I would think would send a lot of lawyers back to the drawing board (if not to their neighborhood bar) to try to figure out what damages models will still work.  So a delay in filings at least is to be expected, and that alone translates into a depressed number for several months..

Put it this way.   If you had a case otherwise ready to file under the January 2014 standards, would you file it without going back and checking it not just for Alice problems, but also potential indefiniteness challenges, risks that your infringement allegations are "exceptional" (and not in a good way) as well as whether you had Alice issues?  Even if it took a couple or three months?

I didn't think so.

I am not saying that the commentators are not right and that Alice (perhaps in combination with the other opinions I have noted) won't have a major effect on patent filings the rest of the year.  I just think that it will take another quarter before I think we know that for sure.  Remember all the commentary about how filings dropped off after the AIA was enacted in 2011 - and a few months later they came back on steroids?  Or earlier this year when the filings were setting record levels?

This is proof that procrastination pays - I still haven't finished analyzing Lex Machina's analysis on that trend, and now it's obsolete.

 Commentary Michael C. Smith 2014-10-09T15:59:29-04:00 Upcoming Panel: Focus Groups and Mock Trials: Best Practices in Patent Litigation http://mcsmith.blogs.com/eastern_district_of_texas/2014/10/upcoming-panel-focus-groups-and-mock-trials-best-practices-in-patent-litigation.html I will be moderating a panel, Focus Groups and Mock Trials: Best Practices in Patent Litigation at the upcoming Institute for Law and Technology's 52nd Annual Conference on Intellectual Property Law at the Center for American and International Law in...
I will be moderating a panel, Focus Groups and Mock Trials: Best Practices in Patent Litigation at the upcoming Institute for Law and Technology's 52nd Annual Conference on Intellectual Property Law at the Center for American and International Law in Plano, Texas on November 10-11, 2014.

The panel will be at 10:45 am on the second morning of the seminar, and I will be joined by Eastern District practitioners Jennifer Haltom Doan of Texarkana and
Wesley Hill of Tyler, who I can absolutely promise are going to have some great advice for attendees on what works and what doesn't with respect to the oft-used focus groups and mock trials based on their experience working with faux and real jurors trying patent cases behind the Pine Curtain.  (I may even have some myself).

The conference is shaping up to be a good one, with separate tracks on patent prosecution and patent litigation, as well as a conference dinner featuring Former Chief Judge Randall Rader of the Federal Circuit.  The conference brochure can be downloaded here.
 Commentary Michael C. Smith 2014-10-07T16:32:22-04:00 Texas Law Desk - #txlawdesk http://mcsmith.blogs.com/eastern_district_of_texas/2014/10/texas-law-desk-txlawdesk.html For many Texas lawyers, desks and offices take on a significant importance in our lives and careers. Often these spaces become a representation of our professional identities, home to our creative idiosyncrasies, and landing pad for our often-challenging workload. The...
For many Texas lawyers, desks and offices take on a significant importance in our lives and careers. Often these spaces become a representation of our professional identities, home to our creative idiosyncrasies, and landing pad for our often-challenging workload.

The State Bar of Texas is sponsoring a social media project Texas Law Desk asking Texas lawyers what does your space say about you and what tools do you find indispensable to getting the job done?

Share your workspace photos with the State Bar of Texas (@statebaroftexas) viaTwitter, Facebook, and Instagram using the hashtag #txlawdesk. Alternately, you can email your photo to firstname.lastname@example.com. Be sure to note your five favorite items featured in the photo - maybe a tablet that helps you manage workflow, a lamp that puts off the perfect glow, a comfortable chair or stand-up desk, a to-do list app on your smartphone, or something similar. For inspiration check out this list of 40 Inspiring Workspaces of the Famously Creative and Lifehacker's series How I Work.

Particularly interesting, impressive, or messy desks will be featured on the Texas Bar Blog.

My Texas Law Desk

As shown above, my "desk" is actually the most rarely used part of my work environment. I get most of my work done on either my editing standup desk or my computer monitor standup desk that sits on my credenza. My favorite items on my desk(s) from left to right are:

1. Stand-up desk for editing

I really enjoy doing my editing on a standup desk. Mine is a old (George III) mahogany architect's table with a pull–out felt writing surface with storage underneath, and locking cubbies for pen, ink and stationery.

2. Dictation headset

I use Dragon Naturally Speaking for almost all my typing, and have a Logitech headset I use for that and for conference calls.  This new one (an H800) I particularly like.

3. iPad Air

I keep my iPad handy, usually with the Remember The Milk (RTM) to-do app open, since that is how I organize all of my work. But I also do most of my case and article reading on the iPad so that I can save the highlighted versions of documents using iAnnotate.  I mainline Evernote and Google Apps most of the day, but normally on the desktop monitors.

4. O'Connor's Federal Rules

Well of course - it has the rules, (well-written) commentaries and the Texas federal courts' local rules in the back.  I actually keep all of my O'Connor's books on the Thomas Jefferson revolving book stand (unloaded version shown at right), but it doesn't revolve very often, since as you can tell it has a Lenovo portable monitor on it, which I use as a third monitor for my computer.  Because, you know, the primary monitors just aren't big enough.

5a.Varidesk computer stand-up desk

Varidesk makes single and double monitor versions, and I have the latter supporting a wireless Logitech keyboard and mouse and Dell 24" and 30" monitors.  It's easy to raise and lower and I usually lower it at night and raise it in the morning.  No, I don't know why either.

5b. ScanSnap

Since we operate an office that is virtually paperless, I have to have a easy way of getting paper into the computer, and I have found my Fujitsu ScanSnap to be the best for that. As I said, I use Evernote a lot, but do not have the Evernote version of the scanner.  Yet.  I'm waiting for this one to break, but not even knocking it off the credenza (accidentally, of course) has fazed it.  So I can't scan from my portable device to it, but I haven't figured out why I would ever need to.

 Commentary Michael C. Smith 2014-10-07T13:13:33-04:00 Texas Monthly article on patent docket http://mcsmith.blogs.com/eastern_district_of_texas/2014/10/texas-monthly-article-on-patent-docket.html Loren Steffy has an article on the local patent docket in Texas Monthly this month that readers might enjoy. Some good quotes, although I would qualify my quote that plaintiffs win about half the cases in Marshall to note that...
Loren Steffy has an article on the local patent docket in Texas Monthly this month that readers might enjoy.

Some good quotes, although I would qualify my quote that plaintiffs win about half the cases in Marshall to note that that's a long-term win rate - at present they only win about a quarter to a third.  (I do like my "trash cases" comment though).

(Exceedingly original photograph of the Sam B. Hall, Jr. courthouse in Marshall from Sam B. Hall, Sr.'s courthouse across the street by photographer ... wait for it ... O. Rufus Lovett.  Only Texas Monthly).
 Eastern District of Texas Bar Association Michael C. Smith 2014-10-06T18:44:34-04:00 Rulings on Posttrial Motions in Civil Rights Case Against County http://mcsmith.blogs.com/eastern_district_of_texas/2014/10/rulings-on-posttrial-motions-in-civil-rights-case-against-county.html Sellers v. Wood County, 2:12-CV-293 (9/29/14) Judge: Roy Payne Holding: Rulings on Posttrial Motions The jury in this case found that the plaintiff had failed to prove her claims against the three individual defendants, and that they were entitled to...
 Sellers v. Wood County, 2:12-CV-293 (9/29/14)

Judge: Roy Payne

Holding: Rulings on Posttrial Motions

The jury in this case found that the plaintiff had failed to prove her claims against the three individual defendants, and that they were entitled to qualified immunity, but that she did prove both her §1983 claim and her Texas Whistleblowers Act claim against her former employer, Wood County.  The Defendant filed a JMOL and the plaintiff sought an award of attorney's fees and court costs (as did the prevailing defendants).

Motion for Judgment as a Matter of Law

With respect to the JMOL, Judge Payne concluded that there was sufficient evidence in the record from which the jury could have reasonably concluded that Wood County stigmatized the plaintiff by publishing the false statement that she was under a criminal investigation by the Texas Rangers, and that plaintiff was damaged in her efforts to secure further employment. There was also evidence to support the jury's finding that the statement was published to other agencies and that plaintiff was not afforded a meaningful hearing despite her request through her attorney, as well as evidence from which the jury could reasonably conclude that the Sheriff personally participated in and approved the actions at issue.  There was also sufficient evidence supporting the plaintiff's Texas Whistleblowers Act claim.

Motion for Attorney's Fees

The Court found it clear that the plaintiff was the prevailing party, and thus entitled to attorneys fees under §1988, but that fees should not be awarded for either the individual claims which failed, or under the Whistleblower's Act.  But it did not accept the defendant's proposal that the Court just apply a 75% haircut to the fee application as a result.  Instead, the Court reduced the number of hours claimed by one of the two attorneys who represented the plaintiff from 602.25 to 400 due to issues relating to the reconstruction of the time devoted to the case.  It then reduced the fee by 10% due to unneeded duplication between the two attorneys, leading to an fee award of $76,430.25.  (Without pulling out a calculator, this looks to me like about a third reduction from the original application).

Court Costs

Plaintiff sought taxation of $33,268.51 in costs, which the court reduced only by the cost of private process servers, which totaled $6,630.58.

Attorney Fees for Individual Defendants

Finally, the three defendants which were found by the jury to be entitled to qualified immunity and thus not liable for damages sought an award of fees under §1988."[U]nlike a prevailing plaintiff," Judge Payne wrote, "a prevailing defendant in a civil rights case can only recover attorneys fees if the court finds that the plaintiff's case against it was'frivolous, unreasonable, or groundless, or that the plaintiff continue to litigate after it became clearly so.'"  In this case the Court found that the fact that the jury decided the factual questions underlying the qualified immunity defense in favor of the individual defendants did not mean that the claims were frivolous, and accordingly denied the motion.  The Court also denied the three individual defendants' bill of costs, noting that it appeared to be seeking all of the taxable costs of all of the defendants, including Wood County, and did not establish that any were not on the county's behalf.
 Eastern District of Texas - Marshall Division Michael C. Smith 2014-10-06T13:42:36-04:00 Defendants Motion to Dismiss Claims Arising Out of Foreclosure Granted http://mcsmith.blogs.com/eastern_district_of_texas/2014/10/defendants-motion-to-dismiss-claims-arising-out-of-foreclosure-granted.html Bradley v. PNC Bank, N.A., 4:14CV37 (9/26/14) Judge: Don Bush Holding: Defendants Motion to Dismiss Granted This case arose out of the plaintiff's claims regarding a foreclosure on property by the defendant bank. Defendant sought dismissal of the plaintiff's claims...
 Bradley v. PNC Bank, N.A., 4:14CV37 (9/26/14)

Judge: Don Bush

Holding: Defendants Motion to Dismiss Granted

This case arose out of the plaintiff's claims regarding a foreclosure on property by the defendant bank. Defendant sought dismissal of the plaintiff's claims of fraud, breach of contract, wrongful foreclosure and trespass on various grounds. The Court granted the motion, finding that the plaintiffs claims which accrued prior to February 2012 were dismissed for lack of standing, and any remaining claims were dismissed with prejudice for failure to state a claim.
 Michael C. Smith 2014-10-03T15:20:26-04:00 Motion for New Trial in Habeas Case Denied http://mcsmith.blogs.com/eastern_district_of_texas/2014/10/motion-for-new-trial-in-habeas-case-denied.html Darling v. Director, TDCJ-CID, 4:10CV602 (9/26/14) Judge: Ron Clark Holding: Motion for New Trial Denied Judge Clark concluded that the petitioner had primarily engaged in the rehashing of evidence, legal theories, or arguments. In the absence of any new arguments...
Darling v. Director, TDCJ-CID, 4:10CV602 (9/26/14)

Judge: Ron Clark

Holding: Motion for New Trial Denied

Judge Clark concluded that the petitioner had primarily engaged in the rehashing of evidence, legal theories, or arguments.  In the absence of any new arguments or evidence that could not have been raised in Petitioner's first proceeding, the Court denied the Petitioner's motion for reconsideration as he had failed to show a manifest error of law or fact in order to obtain relief under Rule 59.

 Eastern District of Texas - Sherman Division Michael C. Smith 2014-10-03T15:14:13-04:00 The Zombie Issue - October 2014 Texas Bar Journal http://mcsmith.blogs.com/eastern_district_of_texas/2014/10/for-those-of-you-that-think-i-only-come-up-with-weird-ideas-when-it-comes-to-my-weblog-i-insist-on-taking-at-least-some-cred.html For those of you that think I only come up with weird ideas when it comes to my weblog, I insist on taking at least some credit for this month's Texas Bar Journal theme, which takes advantage of the upcoming...
For those of you that think I only come up with weird ideas when it comes to my weblog, I insist on taking at least some credit for this month's Texas Bar Journal theme, which takes advantage of the upcoming Halloween holiday to provide an issue centered around assorted creepy topics. (Digital edition here).

Ever wonder if a real estate seller is required to disclose that their house is haunted? We've got you covered. Wonder if a haunted house is unreasonably scary? Yeah, that too. Plus what every Texas lawyer should know about the European witch hunts. And for something really scary, there are three orders from the Texas Supreme Court and the Texas Court of Criminal Appeals regarding fees, business records affidavits and bar admissions rules, as well as an ethics opinion dealing with the employment of law clerks.

For those content with more mundane topics, we also have an article on how to select the right legal software for your practice.  (You guessed it - that's my favorite).

Kudos to managing editor Patricia McConnico and her staff as well as board of editors chair John Browning for another great issue. (But I do get credit for not laughing out loud when the idea was brought up in my last board of editors meeting as chair).
 Commentary Michael C. Smith 2014-10-02T17:39:17-04:00 How Sitting by Designation Affects Judicial Behavior - article by Lemley & Miller http://mcsmith.blogs.com/eastern_district_of_texas/2014/10/how-sitting-by-designation-affects-judicial-behavior-article-by-lemley-miller.html I read an enormouly entertaining paper by Mark Lemley and Shawn Miller today, If You Can't Beat 'Em, Join 'Em? How Sitting by Designation Affects Judicial Behavior. I should first explain what the term "sitting by designation" refers to. It...
I read an enormouly entertaining paper by Mark Lemley and Shawn Miller today, If You Can't Beat 'Em, Join 'Em? How Sitting by Designation Affects Judicial Behavior.

I should first explain what the term "sitting by designation" refers to.  It is common practice among the regional federal appellate courts, as well as the Federal Circuit, for district judges to be invited to sit by designation on a panel hearing a number of cases. Judge Hall sat at the Fifth Circuit and heard a batch of cases while I worked for him, and I was fortunate enough to be able to accompany him and work with the appellate judges' clerks in preparing bench memos and afterwords observing the process of the preparation of an appellate opinion by the panel (one judge did not share bench memos, so I was also fortunate enough to see how that affected the process).  I ran across the notebooks I kept from that experience the other day while cleaning out my mother's garage, and had forgotten how much the experience helped me understand the process by which a panel decides a case. Because while only a couple of the cases resulted in arguments followed by written opinions, the panel prepared for a substantially larger number, so I had the opportunity to see the process across more than just the case or two that my judge tasked me with working on, and observe the differences from district court practice.

In this paper, the authors investigated the impact of a single variable – whether a district court judge has sat by designation on a Federal Circuit panel in a patent claim construction appeal – on the likelihood that that judge's subsequent claim constructions are reversed. They found that after sitting by designation, the reversal rate of district court judges on subsequent claim construction appeals decreases by 50 percent, from a little over 30% to 15%.

This is one of the times that I have really appreciated the statistical training that I got in graduate school, because without it I don't think I'd have caught the extent to which Lemley and Miller emptied the cupboards to test this variable, growing increasingly frustrated as they fired every possible variable and statistical gimmick they could find at the proposition, and almost without exception it had absolutely no effect.  They couldn't explain it by any factor they could identify - the judges' experience, the number or type of patent cases, type of issue in the case the district judge sat on, or anything else they could think of.  Significantly, the data indicated that the change wasn't explainable by the experience the district judge may have gained about claims construction law during the experience, or how to write a Markman order that doesn't get reversed.

As a result, as the authors state, "our evidence suggests this increased agreement is due to increased Federal Circuit trust in the decisions of individual judges who have sat by designation" and not by increased district judge understanding of claim construction either substantively, or in terms of how to craft opinions that better withstand appellate scrutiny.

One piece of data to watch for the future is one variable that they warned they didn't have enough data to be statistically significant yet, and that was breaking down the reversal rate for subsequent cases by whether judges with whom the visiting district judge sat were on the panel or not.  If the subsequent panel did not have one of the judges with whom the district judge sat, the reversal rate was 21% - but if it did the reversal rate was 5%.  But the number of data points here is instructive,  at least to data hounds like me.  The first number is generated using 44 decisions, and the second is generated using 19, out of which only one reversed the district judge.  This is why statisticians warn when the numbers are too small, because if the 20th decision happens to be a reversal the reversal rate for the second category jumps from 5% to 10%.

Thus the authors statement that, at present, these results are not statistically significant.  But that statement comes with a footnote that "[n]otably, however, the p value has declined as we have added more observations, suggesting that a larger number of observations might result in a finding of statistical significance. We intend to keep collecting data over time, and will update our results."

The authors also indicate that they will be looking at this effect in the regional district courts to see if the characteristic continues there.

Again, a fascinating paper on a very interesting subject. I look forward to seeing updates as the authors obtain more information.

 Commentary Michael C. Smith 2014-10-01T16:19:21-04:00 Lex Machina Patent Litigation Damages Report http://mcsmith.blogs.com/eastern_district_of_texas/2014/10/lex-machina-patent-litigation-damages-report.html Several weeks ago, Lex Machina released a 75 page Patent Litigation Damages Report, which analyzes both cumulative and median damages in cases that terminated between 2000 and 2013. It has taken me a while to get through it but I...
Several weeks ago, Lex Machina released a 75 page Patent Litigation Damages Report, which analyzes both cumulative and median damages in cases that terminated between 2000 and 2013.  It has taken me a while to get through it but I found the report interesting reading.

There are a couple of observations I would make about things that you need to know in reading it.

First, as it makes clear, the report deals with awards without regard to whether the awards were later set aside on appeal, but readers need to know that that also includes awards that were later set aside by the district judge.  For example, at p. 11 it identifies the 2007 TGIP v. AT&T award of $156,289,609 as the final entry in the "top 10" reasonable royalty damage awards from 2000-2013.  But Judge Clark set that verdict aside barely a month after trial - see my post on why here.  I do not disagree with that methodology by any means, but the practical effect is that you quickly realize when you're reading through the list of cases that most of the large cases were set aside by the Federal Circuit, and at least with respect to local verdicts, almost all were medical device or pharmaceutical cases, which involve damage models that are often stratospheric and which don't have a lot of similarity to ordinary patent damages analysis.

I was reminded when going through the charts of the difficulty I recently ran across in trying to make some sense of a bar graph of where there was one data point that was an order of magnitude larger than all the rest, and it had the effect of concealing the activity for all the other data points, since they were crammed down at the bottom of the chart.  Frustrated, I finally eliminated the one large data point, and the trends among the others immediately became far more apparent.  Damages awards in patent cases are sort of like that if you are looking at district court results since most of the really large awards go away on appeal, or at least (like, say VirnetX) are remanded for further proceedings on damages issues. The report accommodates this by providing information on median awards as well, so that the effect of the few large awards doesn't obscure the information that the more ordinary awards provide. It is just a little like reading about the Cowboys' 2014 season based on articles written the day after the first game, when they were blown out by San Francisco. None of it was wrong, but three games later much of it is no longer relevant.  (Ask Rob Ryan).

There is a second major comment if you are reviewing the report for information on the Eastern District, and that is that due to the retirement of Judge Ward and Judge Folsom in late 2011 – early 2012, several of the damage awards that should be attributed to them were attributed to Judge Michael Schneider of Tyler because he had the cases at some later point in time, resulting in him being attributed with $2.3 billion in damages awards. Although the report does not list the origin by district or judge of the cases, the very helpful Lex Machina staff were able to identify for me the nine awards that they credited to Judge Schneider. In fact, seven of the nine were actually awards made by Judge Ward, Judge Folsom, or in one case Judge Gilstrap in a case decided last year, although Judge Schneider did have all of those cases at some point during the transition. Thus I believe Judge Schneider's total attributed number of $2.3 billion should be somewhere around $1.7 million (with an "m"), derived from two cases. And, again, over $2 billion of that number comes from three medical device/pharmaceutical cases, all three of which I believe the Federal Circuit later set aside, so the numbers for the more traditional electronics – based patent infringement cases are substantially different.  So if you're trying to determine to determine trends by judge or in the more routine cases, some further analysis might be useful.

But the report is a useful reference for awards in patent cases.
 Commentary Michael C. Smith 2014-10-01T13:55:15-04:00 Defendant's Renewed Motion for Judgment As a Matter of Law in Antitrust/Lanham Act Case Denied http://mcsmith.blogs.com/eastern_district_of_texas/2014/10/defendants-renewed-motion-for-judgment-as-a-matter-of-law-denied.html Retractable Technologies, Inc. v. Becton, Dickinson and Co., 2:08cv16 (9/30/14) Judge: Leonard Davis Holding: Defendant's Renewed Motion for Judgment As a Matter of Law, or Alternatively, for New Trial or Remittitur Denied On September 19, 2013, following an eight-day trial,...
Retractable Technologies, Inc. v. Becton, Dickinson and Co., 2:08cv16 (9/30/14)

Judge: Leonard Davis

Holding: Defendant's Renewed Motion for Judgment As a Matter of Law, or Alternatively, for New Trial or Remittitur Denied

On September 19, 2013, following an eight-day trial, a jury returned a verdict finding that BD attempted to monopolize the safety syringe market, and awarded $113,508,014 in antitrust damages. The jury also found that BD engaged in false advertising under the Lanham Act, but the parties did not submit a Lanham Act damages question to the jury.

Judge Davis rejected the request to set aside the jury's verdict on liability, and similarly rejected the attack on the jury's damages award, finding that the jury had sufficient evidence to conclude that the plaintiff had proven the amount of damages it was awarded.

With respect to the Lanham Act claims, the court rejected attacks based on principles of res judicata, release, and a complaint that the jury's verdict lacked evidentiary support.
 Eastern District of Texas - Tyler Division Michael C. Smith 2014-10-01T12:27:40-04:00 Cross Motions for Partial Summary Judgment in Employment Case Granted in Part http://mcsmith.blogs.com/eastern_district_of_texas/2014/09/cross-motions-for-partial-summary-judgment-in-employment-case-granted-in-part.html Metzler v. XPO Logistics, Inc., 4:13-CV-278 (9/25/14) Judge: Amos Mazzant Holding: Cross Motions for Partial Summary Judgment Granted in Part This is a case about an employment relationship that apparently went very, very wrong. After reviewing the underlying facts in...
 Metzler v. XPO Logistics, Inc., 4:13-CV-278 (9/25/14)

Judge: Amos Mazzant

Holding: Cross Motions for Partial Summary Judgment Granted in Part

This is a case about an employment relationship that apparently went very, very wrong.

After reviewing the underlying facts in light of the applicable law, the Court dismissed the plaintiffs claims for age discrimination and retaliation and the defendant's claims for conversion and for breach of the return of property provision in the contract.  In doing so, it rejected the arguments that a party could not file evidence in a reply brief, as well as the proposition that the local rules of the Northern District of Texas - as opposed to those of the Eastern District - applied in this case.

Remaining for trial were (1) the plaintiffs claims for declaratory judgment, breach of contract, invasion of privacy – intrusion on seclusion, conversion, and tortious interference with the contract remained live for trial; and (2) the defendants counterclaims for breach of contract regarding the full effects and best interests provision, the non-consultation provision, the confidentiality provision, the competitive opportunity provision, and the cooperation provision, declaratory judgment regarding termination for cause, breach of contract regarding the RSU forfeiture provision, breach of fiduciary duty, usurpation of corporate opportunity, and injunctive relief remained for trial.

To the right is a photograph of all of the trees that are going to die just to print copies of the court's charge in this case.
 Eastern District of Texas - Sherman Division Michael C. Smith 2014-09-30T17:58:06-04:00 Motion to Dismiss Civil Rights Action Granted http://mcsmith.blogs.com/eastern_district_of_texas/2014/09/motion-to-dismiss-civil-rights-action-granted.html Robinett v. Gernale, 1:12cv489 (9/25/14) Judge: Thad Heartfield / Zack Hawthorn Holding: Motion to Dismiss Granted Meanwhile, across the hall, and around the corner from Judge Crone in the Beaumont courthouse, Magistrate Judge Zack Hawthorn and District Judge Thad Hartfield...
Robinett v. Gernale, 1:12cv489 (9/25/14)

Judge: Thad Heartfield / Zack Hawthorn

Holding: Motion to Dismiss Granted

Meanwhile, across the hall, and around the corner from Judge Crone in the Beaumont courthouse,  Magistrate Judge Zack Hawthorn and District Judge Thad Hartfield resolved this civil rights lawsuit against plaintiff's jailers, whom she contended were deliberately indifferent to her serious medical needs.

Judge Hawthorn analyzed the claims made against the jailers in the motion to dismiss, and submitted a report and recommendation that the motion to dismiss be granted. Judge Heartfield reviewed the report and the recommendations and found that the Judge Hawthorn had correctly concluded that the claim against defendant Black in her official capacity was barred by the Eleventh Amendment. With respect to the claim against defendant Black in her individual capacity, he similarly agreed that defendant Black was entitled to qualified immunity because the plaintiff's allegations did not demonstrate that she acted with deliberate indifference to her serious medical needs.

While noting that the plaintiff included additional allegations against defendant Black in her objections, even when those allegations were considered, Judge Heartfield concluded that the plaintiff  still failed to show that defendant Black was aware of facts indicating that the plaintiff was subject to substantial risk of serious harm. As a result, the court concluded that the allegations against defendant Black were insufficient to meet the "extremely high standard" applicable to claims based upon deliberate indifference, and thus Defendant Black was therefore entitled to qualified immunity.

 Eastern District of Texas - Beaumont Division Michael C. Smith 2014-09-30T17:33:58-04:00 Defendant's Motions for Summary Judgment Granted in Part in Race Discrimination Case http://mcsmith.blogs.com/eastern_district_of_texas/2014/09/defendants-motions-for-summary-judgment-granted-in-part.html Brooks v. Firestone Polymers, LLC, 1:12-CV-325 (9/24/14) Judge: Marcia Crone Holding: Defendant's Motions for Summary Judgment Granted in Part This is a civil rights case in which eight plaintiffs allege that they were discriminated against on account of their race...
Brooks v. Firestone Polymers, LLC, 1:12-CV-325 (9/24/14)

Judge: Marcia Crone

Holding: Defendant's Motions for Summary Judgment Granted in Part

This is a civil rights case in which eight plaintiffs allege that they were discriminated against on account of their race while employed at Firestone's chemical manufacturing facility in Orange, Texas. Defendant Firestone sought summary judgment on various grounds.

After reviewing the applicable law and the underlying facts, Judge Crone concluded that Firestone's motions for summary judgment would be granted in part and denied in part. Plaintiff Ruffin's 2009 Title VII and § 1981 discriminatory demotion claims, as well as Plaintiffs' Title VII and § 1981 denial of overtime claims, "survive summary judgment and may proceed to trial." However, with respect to Plaintiffs' other claims, the Court concluded that there remained no material facts in dispute, and Firestone was entitled to judgment as a matter of law.
 Eastern District of Texas - Beaumont Division Michael C. Smith 2014-09-30T17:16:10-04:00 Four venue motion denied; one granted http://mcsmith.blogs.com/eastern_district_of_texas/2014/09/four-venue-motion-denied-one-granted.html Secure Axcess, LLC v. U.S. Bank Nat'l Assoc. et al, 6:13cv717 (9/26/14) Judge: K. Nicole Mitchell Holding: Motions to Transfer Venue Granted/Denied There were originally 17 actions in this litigation, which were consolidated by the four for pretrial purposes, but...
Secure Axcess, LLC v. U.S. Bank Nat'l Assoc. et al, 6:13cv717 (9/26/14)

Judge: K. Nicole Mitchell

Holding: Motions to Transfer Venue Granted/Denied

There were originally 17 actions in this litigation, which were consolidated by the four for pretrial purposes, but with venue motions to be decided in the original cases. On Friday, Judge Mitchell issued orders in five of the member cases, granting one of the motions, and denying four. On the one that was granted, the defendant had agreed that efficiency counseled in favor of the Eastern District conducting claim construction proceedings, and accordingly Judge Mitchell held that the successful movant's case would be transferred to the Northern District of California after the issuance of the court's claim construction order.
 Eastern District of Texas - Tyler Division Michael C. Smith 2014-09-30T17:06:28-04:00 Defendant's Motion for Judgment As a Matter of Law Denied http://mcsmith.blogs.com/eastern_district_of_texas/2014/09/defendants-motion-for-judgment-as-a-matter-of-law-denied.html SimpleAir v. Google, 2:11cv416 (9/30/14) Judge: Rodney Gilstrap Holding: Defendant's Motion for Judgment As a Matter of Law Denied On January 18, 2014, a Marshall jury in Judge Rodney Gilstrap's court returned a verdict that the accused Google services infringed...
SimpleAir v. Google, 2:11cv416 (9/30/14)

Judge: Rodney Gilstrap

Holding: Defendant's Motion for Judgment As a Matter of Law Denied

On January 18, 2014, a Marshall jury in Judge Rodney Gilstrap's court returned a verdict that the accused Google services infringed each of the asserted claims and that the asserted claims were not invalid.  With respect to both infringement and invalidity, the court found that there was substantial evidence to support the jury's verdict, and accordingly denied the motion.
 Eastern District of Texas - Marshall Division Michael C. Smith 2014-09-30T15:59:12-04:00 Defendants' Motion to Stay Litigation Pending CBM Review Granted http://mcsmith.blogs.com/eastern_district_of_texas/2014/09/defendants-motion-to-stay-litigation-pending-cbm-review-granted.html DataTreasury v. Fiserve, et al., 2:13cv431 (9/29/14) Judge: Roy Payne Holding: Defendants' Motion to Stay Litigation Pending CBM Review Granted This is one of three cases that were filed on May 28, 2013. The court granted a stay in the...
DataTreasury v. Fiserve, et al., 2:13cv431 (9/29/14)

Judge: Roy Payne

Holding: Defendants' Motion to Stay Litigation Pending CBM Review Granted

This is one of three cases that were filed on May 28, 2013. The court granted a stay in the other two cases pending CBM review of the patents in suit on August 14 – and by this order stayed the third case as well (it had been stayed previously on an interim basis pending the Court's ruling on this motion).
 Eastern District of Texas - Marshall Division Michael C. Smith 2014-09-30T15:22:54-04:00 Motion for Partial Judgment on the Pleadings Granted in Part in Section 1983 case http://mcsmith.blogs.com/eastern_district_of_texas/2014/09/motion-for-partial-judgment-on-the-pleadings-granted-in-part-in-section-1983-case.html Burress v. Blake, 4:14cv35 (9/23/14) Judge: Don Bush Holding: Motion for Partial Judgment on the Pleadings Granted in Part There aren't many sentences where the words "Paris" and "strip" are in the same sentence and yet we're talking about Paris,...
 Burress v. Blake, 4:14cv35 (9/23/14)

Judge: Don Bush

Holding: Motion for Partial Judgment on the Pleadings Granted in Part

There aren't many sentences where the words "Paris" and "strip" are in the same sentence and yet we're talking about Paris, Texas (shown at left in movie poster from Paris, France.  No seriously - the French Paris.  They have one too).

This is a 1983 case, in which the plaintiff asserted claims against defendants arising out of an incident where she was a citizen spectator in a state district courtroom  in Paris, Texas when a female Paris police officer (to aid reader comprehension I helpfully provide for reference as a recent cinematic illustration of what a female police officer in Paris looks like) took her to a restroom and strip-searched her without a warrant during a bathroom break.  And people say Texas courthouses are dull places...

Defendants filed a motion for judgment on the pleadings under Twombly and Iqbal. After reviewing the underlying facts and the applicable law, Judge Bush concluded that all of the Plaintiff's claims against two of the defendants should be dismissed with prejudice for failure to state a claim, as should all of Plaintiff's official capacity claims against Paris police officer Blake, including Plaintiff's claims that Blake violated her Fifth and Fourteenth Amendment rights to be present in the courtroom, her right to privacy under the First, Third, Fourth, Fifth and Ninth Amendments, her right to be free from arbitrary and unreasonable interference by the police, and her right to counsel.

The only claims athat survived were Plaintiff's Section 1983 claims against Blake individually for violation of her First Amendment right to be present in the courtroom and her Fourth Amendment right to be free from an illegal seizure of her person, as well as any corresponding request for injunctive relief.
 Eastern District of Texas - Sherman Division Michael C. Smith 2014-09-30T15:07:26-04:00 You're Going As WHO? http://mcsmith.blogs.com/eastern_district_of_texas/2014/09/youre-going-as-who.html This is a point of personal privilege, but I thought some readers might get a kick out of it. For several days now, our oldest, Grayson, who is a sophomore at Loyola in Shreveport has been trying to figure out...
This is a point of personal privilege, but I thought some readers might get a kick out of it.

For several days now, our oldest, Grayson, who is a sophomore at Loyola in Shreveport has been trying to figure out who to go as for "historical person" dress-up day today during Homecoming week.  (today they get to dress as a historical person – tomorrow will be as a Disney character, and so forth).  He knew he was going to wear his dark suit, but couldn't find a hat to go as Abraham Lincoln, and was having trouble thinking of anyone else.

At the same time, he was looking forward to the outcome of the Cowboys/Saints game last night since Loyola is pretty heavily populated by Saints fans (being as it is in Shreveport, Louisiana) while he is a big Cowboys fan (at right at his first game in 2007 in old Texas Stadium).

This morning he told us as he switched his books to his old Cowboys backpack that the big win helped him figure out who his historical character would be.

He decided to go as Jerry Jones.
 Michael C. Smith 2014-09-29T15:49:07-04:00 Alex Schell Place, Plano, Texas http://mcsmith.blogs.com/eastern_district_of_texas/2014/09/alex-schell-place-plano-texas.html I had someone point out to me recently that the city of Plano recently renamed a street Alex Schell Place in honor of Eastern District Judge Richard Schell's late father, who was the longest appointed official in Plano's history, serving...
I had someone point out to me recently that the city of Plano recently renamed a street Alex Schell Place in honor of Eastern District Judge Richard Schell's late father, who was the longest appointed official in Plano's history, serving as its representative on the North Texas Municipal Water District for 45 years (a post of some import since in Texas whiskey's for drinking, and water's for fighting, as the saying - or at least the law review  article - goes).

In fact, Judge Schell's family's involvement in Plano stretches back over 130 years. His maternal great-grandfather and his paternal grandfather both served as mayor of Plano. There is a Schell Elementary School in Plano, and another Schell Elementary School in Richardson, as well as a Schimelpfenig (Judge Schell's other grandparents) Middle School and Schimelpfenig Library.

Congratulations to the Schell family on this honor.  I will be hunting for the street formerly known as "J" the next time I am in town.
 Eastern District of Texas - Sherman Division Michael C. Smith 2014-09-26T16:54:30-04:00 Basic Bookkeeping and Accounting for Lawyers - Antony Ng http://mcsmith.blogs.com/eastern_district_of_texas/2014/09/basic-bookkeeping-and-accounting-for-lawyers-antony-ng.html While some attorneys have accounting or business backgrounds that provide them with the basic tools for understanding the bookkeeping and accounting processes, either for their own firm or for their client's business, many do not. For the latter, Basic Bookkeeping...
While some attorneys have accounting or business backgrounds that provide them with the basic tools for understanding the bookkeeping and accounting processes, either for their own firm or for their client's business, many do not. For the latter, Basic Bookkeeping and Accounting for Lawyers, a short (71 pages) book by Austin patent attorney Antony Ng provides a very useful basic overview of the principles of bookkeeping, geared to the needs of a small to medium firm lawyer.  The book is available in paperback, which is what I have, but is probably more useful in Kindle format.

The book starts with the most basic concepts, assuming paper bookkeeping entries for conceptual understanding, but it made particular sense to me since I recently inherited a stack of my parents' and grandparents' old ledgers and books (my grandfather was an accountant in Marshall beginning in the 1920s, and he and my dad both ran small businesses in Marshall, coincidentally both on the same block of East Austin St. that I office in today - yes, that's the Hub in the background).  They made absolutely no sense to me as I was organizing them in the garage a few weeks ago, but after reading Antony's book, I can tell that reviewing them is going to be a lot more interesting now.  Like most attorneys my age, I have really never had to review paper bookkeeping or accounting records – it has all been computer printouts, so the original ledger entries didn't make a lot of sense.  After reading this, it does.  Apparently my mother spent way too much money on clothes.

 Commentary Michael C. Smith 2014-09-26T14:08:50-04:00 Petition for Writ of Habeas Corpus Denied http://mcsmith.blogs.com/eastern_district_of_texas/2014/09/shy-v-director-tdcj-cid-411cv378-91914.html Shy v. Director, TDCJ-CID, 4:11cv378 (9/19/14) Judge: Ron Clark/Amos Mazzant Holding: Petition for Writ of Habeas Corpus Denied Judge Clark adopted Judge Mazzant's report and recommendation that the petitioner's petition for writ of habeas corpus be denied. The grounds asserted...
 Shy v. Director, TDCJ-CID, 4:11cv378 (9/19/14)

Judge: Ron Clark/Amos Mazzant

 Holding: Petition for Writ of Habeas Corpus Denied

Judge Clark adopted Judge Mazzant's report and recommendation that the petitioner's petition for writ of habeas corpus be denied.  The grounds asserted were ineffective trial counsel, prosecutorial misconduct, trial court evidentiary rulings, insufficient corroborative evidence and actual innocence.
 Eastern District of Texas - Sherman Division Michael C. Smith 2014-09-25T10:47:20-04:00 Equitable Defense of Laches Rejected After Postverdict Hearing http://mcsmith.blogs.com/eastern_district_of_texas/2014/09/equitable-defense-of-laches-rejected.html U.S. Ethernet Innovations, LLC v. Texas Instruments, 6:11cv491 (9/18/14) Judge: Michael Schneider Holding: Equitable Defense of Laches Rejected Following the trial in this case, the court conducted a separate evidentiary hearing on laches, at which it heard the live testimony...
 U.S. Ethernet Innovations, LLC v. Texas Instruments, 6:11cv491 (9/18/14)

Judge: Michael Schneider

Holding: Equitable Defense of Laches Rejected

Following the trial in this case, the court conducted a separate evidentiary hearing on laches, at which it heard the live testimony of five witnesses, and accepted deposition designations, prior trial testimony, and exhibits for consideration as well.

After reviewing the underlying facts, Judge Schneider began by concluding that TI had not fully disclosed its position on laches during the discovery. Nonetheless, he determined that even if the court considered the undisclosed evidence, it would reject the defense anyway because TI could not prove material prejudice, and the doctrine of unclean hands prevented it from benefiting from an inequitable remedy.
 Eastern District of Texas - Tyler Division Michael C. Smith 2014-09-25T10:13:59-04:00 "Coming of Age for the Federal Circuit" - article by Robin Feldman http://mcsmith.blogs.com/eastern_district_of_texas/2014/09/coming-of-age-for-the-federal-circuit-article-by-robin-feldman.html I was doing research for my forthcoming article on patent litigation in Texas for the Year in Review issue of the Texas Bar Journal and ran across an article that I thought readers might be interested in. In an article...
I was doing research for my forthcoming article on patent litigation in Texas for the Year in Review issue of the Texas Bar Journal and ran across an article that I thought readers might be interested in.

In an article shortly to appear in The Green Bag, Coming of Age for the Federal Circuit University of California Hastings College of the Law professor Robin Feldman calls attention to the fact that the Supreme Court granted certiorari in more patent cases this term than any other since the Circuit's creation in 1982 (because of course no one else noticed that, right?), and in several cases rejected the Federal Circuit's logic in unanimous or near – unanimous opinions.  (Again, if this is a spoiler I do apologize).

The article proposes messages that she believes can be ascertained from the Supreme Court's decisions, and expresses opinions on the Circuit's response to the Supreme Court's rulings.   I don't know what your opinion will be about the author's statements, but I'd be willing to bet that almost everyone who reads this weblog is going to have one.

I am not recommending the article because I agree with all of the statements in it – on the contrary, some I would vigorously challenge - but I believe it is a very interesting and thought-provoking article that many readers of this blog would find worth their time.
 Commentary Michael C. Smith 2014-09-24T16:05:06-04:00 Petition for Writ of Habeas Corpus Recommended Denied http://mcsmith.blogs.com/eastern_district_of_texas/2014/09/petition-for-writ-of-habeas-corpus-recommended-denied-2.html Esparza v. Director, TDCJ-CID, 4:11cv425 (8/28/14) Judge: Don Bush Holding: Petition for Writ of Habeas Corpus Recommended Denied Petitioner claimed ineffective assistance of counsel at his murder trial. Judge Bush concluded that he had failed to prove that there was...
 Esparza v. Director, TDCJ-CID, 4:11cv425 (8/28/14)

Judge: Don Bush

Holding: Petition for Writ of Habeas Corpus Recommended Denied

Petitioner claimed ineffective assistance of counsel at his murder trial.  Judge Bush concluded that he had failed to prove that there was a reasonable probability that, but for counsel's alleged unprofessional errors, the result of the proceeding would have been different. Moreover, he concluded that as to each of his claims, Petitioner failed to show that the state court proceedings resulted in a decision that was contrary to, or involved an unreasonable application of, clearly established federal law, or that the decision was based on an unreasonable determination of the facts in light of the evidence presented in the state court proceeding.

Accordingly, Judge Bush recommended that the petition be denied.

 Eastern District of Texas - Sherman Division Michael C. Smith 2014-09-24T14:20:57-04:00 Be Creative! Okay, Maybe Not Quite That Much... http://mcsmith.blogs.com/eastern_district_of_texas/2014/09/be-creative-okay-maybe-not-quite-that-much.html Profile Products, LLC v. Central Fiber, LLC et al., 6:13cv549 (9/15/14) Judge: K. Nicole Mitchell Holding: Plaintiff's Scheduling and Case Management Proposal Denied I was over at the Tyler courthouse at a few days ago for a hearing, and the...
 Profile Products, LLC v. Central Fiber, LLC et al., 6:13cv549 (9/15/14)

Judge: K. Nicole Mitchell

Holding: Plaintiff's Scheduling and Case Management Proposal Denied

I was over at the Tyler courthouse at a few days ago for a hearing, and the word that I heard over and over both inside the courtroom and elsewhere was "creative". What could the parties and the court do to be creative in finding a way to manage a particular case more efficiently? Which is, of course is a hallmark of the Eastern District of Texas going back to then-Chief Judge Robert Parker's Civil Justice Expense and Delay Reduction Plan in 1991.  They may have been creative before then, of course, but at that time there wasn't much of a record being kept.  As Milton Gould and Edward Weinfeld observed in The Hero Judge in 1992, "the accomplishments of the trial judges are written in water.... Like the heroes Horace described who lived before Agamemnon: 'They are all unmourned, and consigned to oblivion because they had no bards to sing their praises.'"  Things have changed a bit since then, haven't they?

Of course while creative is a good thing, it still may not actually work in practice. For example, in this case the plaintiff came up with an undeniably creative proposal, but not until the scheduling conference. In order to consider this last-minute proposal, Judge Mitchell delayed the case to allow briefing, and issued this order regarding the proposal.

Plaintiff proposed an "expedited bench trial" that involved just one of the asserted patents, and one of its claims, and limited the relief sought to injunctive relief only. All other patents and claims asserted in the complaint would be bifurcated and stayed (or alternatively dismissed without prejudice). The plaintiff proposed a trial date in six months, and a consolidated claim construction, evidentiary, and dispositive motion hearing, at which the parties would also receive manicures, the courtroom carpet would be cleaned, and one of the court's law clerks would learn how to play piano.  (Okay, I may be exaggerating slightly but the proposal does appear to provide for a rather ambitious proceeding).

The defendant opposed the proposal, noting that the case was filed more than a year ago, and questioned why an additional seven months to try the case would result in irreparable harm. It also asserted that its Seventh Amendment rights would be impaired by allowing the Court first to determine equitable claims that share common factual issues with legal claims, and would result in the Court deciding common issues of fact relevant to the other patents and claims in suit.  The Court agreed, noting that the proposal "does not truly simplify the case, but instead risks duplicative litigation," noting that the asserted patents and claims shared common facts and should be litigated together in the interest of judicial economy.

But bonus points for creativity from this bard.  Wonder what would have happened if they'd jst filed on that one claim, and sought only injunctive relief?

 Eastern District of Texas - Texarkana Division Michael C. Smith 2014-09-24T12:55:23-04:00 JMOLS Denied Except As To Willful Infringement; Injunction Granted in Part http://mcsmith.blogs.com/eastern_district_of_texas/2014/09/jmols-denied-except-as-to-willful-infringement-injunction-granted-in-part.html L.C. Eldridge Sales Co., Ltd. et al v. Azen Manufacturing Pte., Ltd. et al, 6:11cv599 (9/23/14) Judge: Michael Schneider Holding: Defendants' Renewed Motions for Judgment As a Matter of Law Denied Except As to Willfulness; Injunction Granted in Part After...
 L.C. Eldridge Sales Co., Ltd. et al v. Azen Manufacturing Pte., Ltd. et al, 6:11cv599 (9/23/14)

Judge: Michael Schneider

Holding: Defendants' Renewed Motions for Judgment As a Matter of Law Denied Except As to Willfulness; Injunction Granted in Part

After a six day jury trial in Judge Schneider's court last November, a Tyler jury returned a verdict finding all of the asserted claims infringed and not invalid. It awarded damages of $651,168 split among the three defendants, and found the defendants' infringement willful.

Judge Schneider rejected the defendants' motions directed at the jury's findings of infringement, invalidity, induced infringement and damages.  However, he found that the defendants presented a "good faith, credible, and objectively reasonable invalidity argument," which he concluded raised a credible fact question as to whether the patent taught a novel concept. Accordingly the court found that the plaintiffs did not prove by clear and convincing evidence that there was an objectively high likelihood that did the defendant's actions constituted infringement of a valid patent. As a result the court did not review whether there was substantial evidence to support the jury's finding with respect to the subjective prong.

In a separate order, Judge Schneider concluded that no injunction should issue as to the three drilling rigs for which the plaintiff obtained damages (the Atwood Condor, Seadrill West Capricorn and Seadrill Sirius, if you must know). However he found that it was proper to enjoin defendants from selling or using rigs with infringing systems in the United States in the future. Accordingly, he granted the motion for injunction only with regard to infringing systems that may later be brought into the United States.

 Eastern District of Texas - Tyler Division Michael C. Smith 2014-09-24T12:21:48-04:00 Emergency Relief Granted in Commodity Exchange Act Case http://mcsmith.blogs.com/eastern_district_of_texas/2014/09/emergency-relief-granted-in-commodity-exchange-act-case.html U.S. Commodity Futures Trading Commission v. RFF GP, LLC, 4:13cv382 (7/10/13) Judge: Richard Schell Holding: Ex Parte Emergency Motion for a Statutory Restraining Order, Appointment of a Temporary Receiver, Expedited Discovery, an Order to Show Cause regarding a Preliminary Injunction,...
 U.S. Commodity Futures Trading Commission v. RFF GP, LLC, 4:13cv382 (7/10/13)

Judge: Richard Schell

Holding: Ex Parte Emergency Motion for a Statutory Restraining Order, Appointment of a Temporary Receiver, Expedited Discovery, an Order to Show Cause regarding a Preliminary Injunction, and Other Equitable Relief Granted

Plaintiff, the U.S. Commodity Futures Trading Commission, brought this action asserting good cause to believe that the defendants were engaging in violations of the Commodity Exchange Act. Judge Schell concluded that the issuance of the requested orders was justified under the facts of the case, and accordingly entered the orders prohibiting transfer, dissipation and disposal of assets, providing for accounting and transfer of funds and documents, and for appointment of a temporary receiver.
 Eastern District of Texas - Sherman Division Michael C. Smith 2014-09-24T12:03:05-04:00 More ED Tex Decisions on Indefiniteness Under Nautilus http://mcsmith.blogs.com/eastern_district_of_texas/2014/09/more-ed-tex-decisions-on-indefiniteness-under-nautilus.html FYI, the decisions are also coming down with regularity locally on the formerly relatively quiet front of indefiniteness analysis with at least two decisions by Eastern District magistrate judges in recent days invalidating at least one of the asserted claims...
FYI, the decisions are also coming down with regularity locally on the formerly relatively quiet front of indefiniteness analysis with at least two decisions by Eastern District magistrate judges in recent days invalidating at least one of the asserted claims in cases as indefinite under Nautilus in the context of claims construction rulings.

An entire case's set of claims being invalidated due to indefiniteness is still a rarity, but it is increasingly common for one or two claims to drop out under the newer standard during claims construction.  Unfortunately, unless you're familiar with the case, it is difficult to tell how important the dearly departed claim was to the value of the case, so it's often hard to tell if the defendant has just taken out the QB or the FB.

MS336; MS337
 Eastern District of Texas - Marshall Division Eastern District of Texas - Tyler Division Michael C. Smith 2014-09-23T14:00:27-04:00