New Local Rules In Effect

Effective September 2, 2014, the Northern District of Texas’ Local Rules were amended. The latest copy of the rules is located here. I previously discussed the changes to be made to the rules here. The Court also sent an e-mail summarizing the changes (e-mail available here).

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Judge Lynn’s Practice Pointers for Patent Cases

On August 22, 2014, Judge Lynn gave a presentation at the Belo regarding practice tips for patent cases. The Northern District of Texas has the 17th busiest docket in the nation, and it has an active criminal docket. Judges Lynn, Godbey and Kinkeade (i.e., the three judges on the patent pilot project) attempt to ensure that criminal cases will not delay patent cases, but this is not always feasible. Judge Lynn is delighted to have patent cases, and is proud to preside over patent cases. If anyone has suggestions about what the Court can do to improve, she’d love to hear them. Here are highlights that I took down from the presentation:

  1. Too much unnecessary contentiousness in patent cases.
  2. Too much personal antagonism among lawyers.
  3. Look at “every single adjective” in your briefs before filing them; adjectives are rarely persuasive.
  4. If your opposing counsel is misbehaving during a deposition, make sure to videotape it and submit it to the Court. For example, a transcript does not show sarcasm.
  5. Filing motions that don’t matter. She should not have to be thinking to herself during a hearing, “Why am I here.” This includes construing claim terms. The tendency to fight over everything detracts from the things that really matter.
  6. Unnecessary requests for page limit extensions. You usually don’t need them, briefs repeat themselves, etc. It’s generally harder to write a short brief but the brief will be more persuasive. If you really need the extra pages, tell the Court why you need them in your motion. You normally will not need the extra pages.
  7. She would love it if attorneys would agree on the number of claims, terms, and prior art in the case. It’s not reasonably possible to deal with 70 claims. Although Judge Lynn appreciates the legal question of what happens to claims that are dropped pursuant to a court order, the reality is that, if the plaintiff cannot prevail on its best claims, the plaintiff is not likely to win on its worst claims.
  8. It’s difficult for Judge Lynn when attorneys state that a claim term does not need construction, as it’s difficult for the jury to understand a term that has not been construed. The construction has to be understandable to a jury who likely has an average of a high school education, perhaps 2 years in college. There are rarely any words in a patent’s claim that the jury will understand without explanation.
  9. Learn how to use the equipment in the Courtroom. An equipment issues arises in almost every trial.
  10. Have a backup plan if the equipment fails (such as bringing hard copies of your PowerPoint). “It is possible to have a claim construction hearing without a PowerPoint.”
  11. At trial, Judge Lynn is very concerned about the jury’s time. Jurors are a blessing and a miracle to our system, and she wants to ensure that the jurors are treated well and respectfully. One way to do this is to not waste time. For example, do not run out of witnesses at 3:00 p.m.
  12. Do whatever can be done to help the jury do its work. For example, the jurors may not remember what early witnesses in the trial look like. The attorneys can take a picture of every witness, and put it in a book; a glossary can be provided to the jurors, as well as a technical tutorial (e.g., an agreed upon tutorial).
  13. Attorneys are encouraged to agree to let the jurors ask questions. Judge Lynn allows jurors to ask questions, encourages the jurors to write their questions during a break (so that the attorneys won’t know which juror asked the question and start “speaking” to that juror). Upon receipt of a question (unless the question is improper), Judge Lynn calls the attorneys up to the bench, and sees whether they can agree on an answer, work the answer into the examination of the witness, etc.
  14. Don’t waste space in your briefing. For example, with her, there’s no reason to a have big discussion of Phillips and claim construction principles.
  15. Ensure that any technical tutorials provided to her will actually work when she opens them up.
  16. For deposition designations and objections, think about how to make the task easier for her. For example, it’s difficult to look at four different documents when ruling on objections. She does not need full depositions, just the pages that are relevant to the issue she needs to resolve. Mark what’s being offered with one color, and put on the side of the text the objection if the objection is not in the text of the deposition itself. If it’s in the text, highlight that text in a different color.
  17. Don’t miss deadlines. She notices things that come in late. She does not like to move the trial date, unless it’s necessary on account of the Court’s schedule. If you see a problem looming with respect to a deadline, it’s better to bring it to her attention early on.
  18. During trial, don’t surprise her. For example, if there is a witness issue (e.g., timing, calling the witness out of order) tell her as soon as possible. Also be prepared to tell her which witnesses you are calling and how long you expect them to testify.
  19. During a bench conference at trial, be aware that the jury may be able to hear you unless you are whispering. There’s a microphone on the bench that gets activated. Attorneys need to remember to speak into the microphone; otherwise, the court reporter cannot hear what is said.
  20. Ask to approach; if you are given permission with a witness, you do not have to ask again for that witness.
  21. Don’t ask the witness to state his or her name, when Judge Lynn has already done so (i.e., in connection with swearing the witness in).
  22. Sit in on a trial of your judge to see what idiosyncratic things the judge does/wants. You need to know this as it will likely affect your trial presentation. For example, by sitting in one of her trials, you would know that Judge Lynn likes to pre-admit documents, allows note taking by jurors, etc. You also should know the lines of sight of the jurors. Anyone can come into her courtroom, and she likes it when attorneys do, but they rarely do. Take advantage of the opportunity to rehearse and practice.
  23. Judge Lynn places time limits on patent trials.
  24. She refers most discovery disputes in her patent cases to the magistrate judges.
  25. She always tries to take calls that come in during depositions (sometimes, like when she’s in trial, she can’t).
  26. Typos are her number 1 pet peeve.
  27. She does not care whether citations are in footnotes or the text of a brief.
  28. She would certainly entertain an early claim construction of a limited number of terms that are case dispositive.
  29. She routinely has telephone conferences; may have a telephone conference the day a motion is filed; if you are the responding party to a motion, she does not want you to tell her you haven’t had your three weeks to respond as she wants you to be prepared when she calls. Attorneys can always have court reporters present for any call (e.g., to protect the record).
  30. A committee is presently looking at whether claim limits/prior art limits should be made a part of the local rules. She would like parties to limit asserted claims prior to claim construction. She will allows parties to add claims later on if there’s good cause to do so.
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Judge Lynn Denies Motion to Stay Pending Inter Partes Review

On August 15, 2014, Judge Lynn issued an Order (available here) in Leak Surveys v. Flir Systems. The Order denied the defendant’s motion to stay litigation pending Inter Partes Review without prejudice to the defendant reasserting the motion if the U.S. Patent and Trademark Office grants inter partes review with respect to any of the patents-in-suit.

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Judge Lynn to Speak at Belo on August 22, 2014 Regarding “Dos and Don’ts” of Patent Cases

On Friday, August 22, 2014, Judge Lynn is hosting a CLE at the Belo (at noon), and presenting her talk titled “Patent Case Preferences and Pet Peeves–What I Know Now as a Judge That I didn’t Know as a Lawyer.”

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Judge Godbey Grants Stay Pending Inter Partes Review of Patents-In-Suit

On July 9, 2014, Judge Godbey issued an order (available here) in Micrografx v. Samsung. The Order granted Samsung’s motion to stay proceedings pending inter partes review of the three patents-in-suit. Judge Godbey stayed the case pending a decision from the U.S. Patent and Trademark Office on the IPR. Notably, the PTO had not yet ruled on the petitions for IPR. Judge Godbey found that the three stay factors—i.e., (i) whether a stay would unduly prejudice the nonmoving party, (ii) whether a stay will simplify the issues and trial, and (iii) whether discovery is complete and whether a trial has been set—each favored granting a stay.

Samsung is represented by Jon Hyland, of Munsch Hardt Kopf & Harr; and Darin SnyderDavid AlmelingLuann SimmonsMark Lian, and Mishima Alam, all of of O’Melveny & Myers.

Micrografx is represented by Stephen Susman, Justin Nelson, Max Tribble, and Terrell Oxford, all of Susman Godfrey.


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Judge Cummings to Take Senior Status

It has been announced that Judge Cummings intends to take senior status on January 1, 2015. He has served 27 years, having been appointed by President Regan in 1987. The San Agenlo Standard-Times’ article on Judge Cummings’ announcement can be viewed here.

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Judge Kinkeade Issues Markman Opinion in Geotag Case

On June 10, 2014, Judge Kinkeade issued an exhaustive, 62 page Markman opinion in the Geotag v. AT&T case, construing the disputed claim terms of the patent-in-suit. The opinion is available here.

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New IP Cases Filed In the Northern District of Texas

Over the last several weeks, a number of new intellectual property cases have been filed in the Northern District of Texas, including:

Zenimax Media v. Oculus VR: Zenimax’s complaint (available here) asserts that Oculus wrongfully took Zenimax’s intellectual property and commercially exploited such IP for Oculus’ own gain. Zenimax asserts claims for misappropriation of trade secrets, copyright infringement, breach of contract, unfair competition, unjust enrichment, trademark infringement, and false designation of origin.

Advanced Marketing Systems v. The Kroger Co.: AMS’ complaint (available here) alleges that Kroger infringes the patents-in-suit through Kroger’s website’s use of loyalty cards.

Novaerus Group v. Airmanager Technologies: Novaerus alleges (in its complaint available here) that Airmanager infringes U.S. Patent No. 8,211,374 through the sale of Airmanager’s air cleaning products.

Best Little Promohouse in Texas v. Yankee Pennysaver: the plaintiff asserts that defendants infringe plaintiff’s trademarks (complaint available here).

Corning Optical Communications v. Communications System: Corning claims that Communications Systems infringes U.S. Patent No. 6,500,020, entitled “Top Loading Customer Bridge” through the sale of its VDSL2 NID Splitter Module. (Complaint available here).

Dehn’s Innovations v. Cleanblastor: Dehn’s Complaint (available here) asserts that Cleanblastor has committed patent and trademark infringement through the sale of certain cleaning tools and products.

DietGoal v. Taco John’s International: DietGoal’s complaint (available here) claims that Taco John’s breached a settlement agreement with DietGoal after Taco John’s accepted a mediator’s proposal to settle all issues in a pending case but thereafter Taco John’s refused to pay the agreed-upon settlement amount.

Energy Intelligence v. HollyFrontier Corp.: Energy Intelligence’s complaint (available here) asserts that HollyFrontier infringed Energy Intelligence’s copyrights by improperly forwarding copies of Oil Daily to others.

Flexible Innovations v. K Design Marketing: Flexible Innovations asserts in its complaint (available here) that K Design has committed trademark infringement, false designation of origin, and unfair competition through the sale of certain cleaning products.

LakeSouth v. Wal-Mart: LakeSouth filed a patent infringement lawsuit (complaint available here) asserting that Wal-Mart infringes U.S. Patent No. 6,612,713 through the sale of solar powered umbrellas, and U.S. Patent Nos. 6,901,882 and 7,017,521 through the sale of certain bird feeders.

LakeSouth v. Evergreen: LakeSouth’s patent infringement lawsuit (complaint available here) asserts that Evergreen infringes U.S. Patent Nos. 6,901,882 and 7,017,521 through the sale of certain bird feeders.

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Are Magistrate Judges’ Orders on Claim Construction Reviewed De Novo By the District Court Judge?

I came across Judge Schneider’s decision in the East Texas Adaptix cases a couple of days ago (decision available here). The decision is notable for, among other things, the following analysis regarding what standard is applied when a district court judge reviews a magistrate judge’s claim construction ruling:

Defendants assert that the district court must review de novo the magistrate judge’s claim construction order. But the Court’s local rules establish a clearly erroneous standard when reviewing a magistrate’s judge order on non-dispositive matters. Local Rule CV-72(b).

Claim construction is a non-dispositive, pretrial issue that can be referred to a magistrate judge under 28 U.S.C. § 636(b)(1)(A). SciCo Tec GmbH v. Boston Scientific Corp., 599 F. Supp. 2d 741, 742 (E.D. Tex. 2009). In some circumstances, out of an abundance of caution, the magistrate judge may choose to issue a report and recommendation (under 28 U.S.C. § 636(b)(1)(B)) rather than an order on claim construction (under 28 U.S.C. § 636(b)(1)(A)). See, e.g., Innova Patent Licensing, LLC v. Alcatel-Lucent Holdings, No. 2:10cv251, 2012 WL 2958231, at *1 (E.D. Tex. July 19, 2012). The district judge reviews a report and recommendation under the more demanding de novo standard. Local Rule CV-72(c); Innova Patent Licensing, 2012 WL 2958231, at *1.

But in this case, the magistrate judge issued an order on the non-dispositive issue of claim construction, not a report and recommendation. Accordingly, the clearly erroneous standard applies. Yet, the Court acknowledges that its order will be held to the de novo standard by the appellate court. Thus, the Court determines that even under the more burdensome de novo standard of review, the Court would still agree with and uphold the constructions of the magistrate judge.

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Judge Godbey Grants Motion To Stay Pending Inter Partes Review

On May 27, 2014, Judge Godbey granted defendant’s motion to stay pending inter partes review of the patent-in-suit in Employment Law Compliance v. Compli (decision available here). The patent-in-suit had previously been the subject of a petition for ex parte reexamination, which was granted in May 2014. The defendant in the instant suit filed a request for inter partes reexamination in April 2014. The PTO had not yet ruled on this petition.

Judge Godbey ultimately decided to grant the motion to stay. The Court found that a stay would not unduly prejudice the plaintiff, a stay would simplify the issues in the case, and that the case was in in the early stages of litigation.

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