Samsung’s Motion for Summary Judgment Ruled On By Judge O’Connor In Sumimit 6 Case

Posted on March 4, 2013 by Steven Callahan

On February 6, 2013, Judge O’Connor issued an Order (available here) in Summit 6 v. Samsung. Judge O’Connor ruled that Samsung’s motion for summary judgment of non-infringement should be denied in part, as there was sufficient evidence to raise a genuine issue of material fact as to whether Samsung’s product literally infringed the patent-in-suit, and whether Samsung performs the asserted claims in combination.

Judge O’Connor, however, found that Samsung was entitled to summary judgment on Summit 6’s doctrine of equivalents case, as prosecution history estoppel applied to prevent that theory of infringement.

Summit 6 is represented by Theodore Stevenson, III, Ashley Moore, Douglas Cawley, James Quigley, John Campbell, Kathy Li, Kevin Burgess, Mitchell Sibley, Phillip Aurentz, and Richard Kamprath, all of McKool Smith, P.C.; and Bradley Caldwell, of Caldwell Cassady Curry, P.C.

Samsung is represented by Brian Erickson, Andrew Valentine, Chang Kim, Claudia Frost, Erik Fuehrer, James Nelson, Mark Fowler, and Todd Patterson, all of DLA Piper LLP.

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Supreme Court Rules Legal Malpractice Cases Involving Patent Cases Belong In State Court

Posted on March 4, 2013 by Steven Callahan

On February 20, 2013, the Supreme Court issued its decision (available here) in Gunn v. Minton. The long and the short of the decision is that legal malpractice cases involving allegations that attorneys botched patent infringement proceedings will have to be brought in state court (unless diversity jurisdiction exists):

[W]e are comfortable concluding that state legal malpractice claims based on underlying patent matters will rarely, if ever, arise under federal patent law for purposes of §1338(a).

In the case at hand, the plaintiff (Minton) claimed his attorneys committed legal malpractice in a patent infringement case they handled for him. He filed suit in Texas state court. He lost on summary judgment. On appeal, in a display of chutzpah, Minton then argued that:

Because his legal malpractice claim was based on an alleged error in a patent case, it ‘aris[es] under’ federal patent law for purposes of 28 U. S. C. §1338(a). And because, under §1338(a), ‘[n]o State court shall have jurisdiction over any claim for relief arising under any Act of Congress relating to patents,’ the Texas court—where Minton had originally brought his malpractice claim—lacked subject matter jurisdiction to decide the case. Accordingly, Minton argued, the trial court’s order should be vacated and the case dismissed, leaving Minton free to start over in the Federal District Court.

Not the best set of facts to argue a case on and, not surprisingly, the Supreme Court rejected this argument.

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Judge Kinkeade Refuses to Disqualify Vinson & Elkins in Galderma Patent Infringement Lawsuit

Posted on March 4, 2013 by Steven Callahan

On February 21, 2013, Judge Kinkeade issued an Order (available here) denying Galderma’s motion to disqualify Vinson & Elkins in a patent infringement lawsuit pending in the Northern District of Texas.

Galderma retained V&E in 2003. V&E sent Galderma an engagement letter. “As part of the engagement letter, V&E sought Galderma’s consent to broadly waive future conflicts of interest, subject to specific limitations identified in the engagement letter.” The relevant provision of the engagement agreement read:

We understand and agree that this is not an exclusive agreement, and you are free to retain any other counsel of your choosing. We recognize that we shall be disqualified from representing any other client with interest materially and directly adverse to yours (i) in any matter which is substantially related to our representation of you and (ii) with respect to any matter where there is a reasonable probability that confidential information you furnished to us could be used to your disadvantage. You understand and agree that, with those exceptions, we are free to represent other clients, including clients whose interests may conflict with ours in litigation, business transactions, or other legal matters. You agree that our representing you in this matter will not prevent or disqualify us from representing clients adverse to you in other matters and that you consent in advance to our undertaking such adverse representations.

Starting in 2003, V&E represented Galderma in connection with employee issues and did so into July of 2012. In June 2012, while V&E was still advising Galderma on employment issues, Galderma (represented by DLA Piper and Munch Wilson) filed this lawsuit against Actavis. “At that time, V&E had already represented various Actavis entities in intellectual property matters for six years. Without any additional communication to Galderma, V&E began working on this matter for Actavis, and in July 2012, V&E filed Actavis’s answer and counterclaims.” Galderma then requested that V&E withdraw from representing Actavis. “On August 6, 2012, V&E chose to terminate its attorney-client relationship with Galderma rather than Actavis. On that same day, V&E stated that it would not withdraw from representing Actavis, because Galderma had consented to V&E representing adverse parties in litigation when it signed the waiver of future conflicts in the 2003 engagement letter.”

Galderma then filed the instant motion to disqualify.

Ultimately, in a thorough and impressive 32 page decision providing a detailed discussion of the relevant law governing disqualification, Judge Kinkeade found that Galderma gave its informed consent to V&E’s representation of clients directly adverse to Galderma in matters that were not substantially related to the V&E’s representation of Galderma. Accordingly, Galderma’s motion to disqualify was denied.

Of particular note was the following:

The Texas rule on conflicts of interest involving current clients is more lenient than the Model Rules. [The Texas] rule permits representing clients against current clients so long as the two matters are not substantially related or reasonably appears to be or become adversely limited. Under the Texas rule, there is no need for informed consent. A lawyer representing an enterprise with diverse operations may accept employment as an advocate against the enterprise in a matter unrelated to any matter being handled for the enterprise.

(Judge Kinkeade rejected the application of the Texas Rules, and found that the Model Rules and the authority related to them must control in determining Galderma’s motion to disqualify. The Model Rules permit a client’s waiver of future conflicts when the client gives informed consent.)

Galderma is represented by Michael Wilson, Daniel Venglarik, and Jamil Alibhai, all of Munck Wilson Mandala, LLP; and Aaron Fountain, Jeffrey Johnson, and Stuart Pollack, all of DLA Piper LLP.

Actavis is represented by Sean Kelly, Kristen Foster, and Stephen Hash, all of Vinson & Elkins LLP.

Vinson & Elkins was represented by Michael Lynn, Andres Correa, and Richard Smith, all of Lynn Tillotson Pinker & Cox LLP.

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Judge Solis Denies Motion to Enjoin and Motion to Dismiss in Excentus Patent In-fringement Lawsuit

Posted on March 4, 2013 by Steven Callahan

On February 5, 2013, Judge Solis issued an Order (available here) in Excentus v. CodePro, a patent infringement lawsuit pending in the Northern District of Texas.

Plaintiff (who had filed a declaratory judgment lawsuit against the Defendant after receiving a notice letter from the Defendant) had filed a motion to enjoin Defendant’s (later-filed) lawsuit filed in the Southern District of Texas. Judge Solis denied the motion to enjoin, as there were “two distinct lawsuits” at issue. For example, the only common party is Defendant, although each lawsuit involves the same patent. Judge Solis, however, allowed the issue to be raised again “in due course with proper cause.”

Judge Solis then denied Defendant’s motion to dismiss Plaintiff’s complaint. Judge Soli held that the plaintiff had adequately stated the elements for declaratory relief and had attached “smoking-gun style letters accusing it and its customers of patent infringement on a variety of theories.” Plaintiff had also shown that the Defendant “exhibits the propensity to sue over these patents as evidenced by past litigation.” Taken together, these circumstances triggered a case or controversy. In summary, the Court found that the Plaintiff had standing to bring suit in sufficiently pled claims for declaratory relief. 

Plaintiff Excentus is represented by Brett Govett, Karl Dial, and Michael Regitz, all of Fulbright & Jaworski.

Defendant CodePro Innovations is represented by Brett Johnson, Walton Webb, III, and Stephanie Wood, all of Farney Daniels P.C.

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Parallel Networks Files Petition And Motion To Vacate Arbitration Award Against Jenner & Block In Dallas County

Posted on February 20, 2013 by Steven Callahan

On January 29, 2013, Parallel Networks (a company that has filed a lot of patent infringement lawsuits) filed its Petition and Motion to Vacate Arbitration Award (available here) in Dallas County. In essence, Parallel Networks claims that an arbitrator exceeded his powers in awarding Jenner & Block (Parallel Network’s prior counsel in patent infringement litigation) damages.

The petition raises interesting issues concerning patent infringement contingency fee agreements, and is worth a read. Exhibit A to the petition is the contingency fee agreement at issue.

Parallel Networks is represented by Jamil Alibhai, Ryan Loveless, Jane Neiswender, and Kelly Chen, all of Munck Wilson Mandala, LLP.

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Cassidian Hits GN-911 With Patent Infringement Lawsuit

Posted on February 20, 2013 by Steven Callahan

On February 8, 2013, Cassidian launched its patent infringement lawsuit (complaint available here) against NG-911 in the Northern District of Texas. Cassidian claims that NG-911’s emergency communications systems infringe Cassidian’s U.S. Patent No. 6,774,858.

Cassidian is represented by Brett Govett of Fulbright & Jaworski L.L.P. and Denise De Mory, of Bunsow, De Mory, Smith & Allison, LLP.

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Federal Inmates Pleads Guilty to Threatening Judge Cummings

Posted on February 20, 2013 by Steven Callahan

On January 31, 2013, a federal inmate pled guilty to mailing a threatening communication to Judge Cummings, which expressed unhappiness with the inmate’s incarceration. The inmate faces a 10 year jail sentence and a $250,000 fine. More details are available at the Northern District of Texas’ US Attorney’s Office’s website, which is available here.

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Judge Ferguson Rules On Motions In Limine In Patent Infringement Case

Posted on February 4, 2013 by Steven Callahan

On January 25, 2013, Judge Ferguson issued an Order (available here) in Axcess International v. Savi Technologies that resolved various motions in limine. Key rulings from Judge Ferguson’s Order are as follows:

Presumption of Validity. “The Court is of the opinion that arguing that the patent is valid because a patent was issued can lead to jury confusion and prejudice [Defendant].” The plaintiff was therefore precluded from presenting evidence or argument regarding the presumption of validity. However, the plaintiff could still explain and argue that the defendant has a heightened burden of proof and that the defendant must prove invalidity by clear and convincing evidence.

Expert Testimony. The Court limited all expert testimony to the experts’ reports.

Embodying Products Lay Testimony. Defendant had requested a ruling that the plaintiff was prohibited from stating that the plaintiff’s products practice the patent- in-suit because the plaintiff had failed to present any expert opinions on the subject. The Court noted that the defendant cited no authority for the proposition that expert testimony is required to establish that the plaintiff’s products practice the patent-in-suit, nor did the defendant present and legitimate evidentiary reason for the defendant’s assertion that evidence that the plaintiff’s products practice the patent-in-suit should be excluded. The Court denied the motion in limine.

Indemnity Agreement. The Court granted the defendant’s motion in limine seeking to preclude the plaintiff from offering evidence that a third party was indemnifying defendant and paying for the defendant’s attorneys fees.

Axcess International is represented by Steven Aldous and Robert Varner, both of Braden Varner & Aldous; Charles Cantine, Vivian Luo, and Joseph Diamante, all of Stroock & Stroock & Lavan LLP; David Skeels, Glenn Orman, Michael Cooke, and Jonathan Suder, all of Friedman Suder & Cooke PC.

Savi is represented by Eric Pinker, Chistopher Schwegmann, and Mark Turk, all of Lynn Tillotson Pinker & Cox; Boris Matvenko, Marvin Gittes, Peter Snell, and Timur Slonim, all of Mintz Levin Cohn Ferris Glovsky & Popeo PC.

 

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Federal Circuit Issues In Re EMC Corp. Mandamus Decision, Offering Substantial Guidance To Judges And Patent Practitioners In The Northern District of Texas On Transfer Issues

Posted on February 4, 2013 by Steven Callahan

On January 29, 2013, the Federal Circuit issued its mandamus decision in In re EMC Corp. (available here). This decision, which applies in all patent infringement cases filed within the Fifth Circuit, such as in the Northern District of Texas, provides substantial guidance to judges handling patent cases, as well as patent practitioners.

While the entire decision is worth a read, two principles stand out. First, it is important that Courts address motions to transfer at the outset of litigation. “Congress’ intent ‘to prevent the waste of time, energy and money and to protect litigants, witnesses and the public against unnecessary inconvenience and expense,’ Van Dusen v. Barrack, 376 U.S. 612, 616 (1964) (internal quotation marks omitted), may be thwarted where * * * defendants must partake in years of litigation prior to a determination on a transfer motion.”

Second, “[m]otions to transfer venue are to be decided based on ‘the situation which existed when suit was instituted.’ Hoffman v. Blaski, 363 U.S. 335, 343 (1960) (quoting Paramount Pictures, Inc. v. Rodney, 186 F.2d 111, 119 (3d Cir. 1950) (Hastie, J., dissenting)). Any subsequent familiarity gained by the district court is therefore irrelevant.” However, “[w]hile considerations of judicial economy arising after the filing of a suit do not weigh against transfer, a district court may properly consider any judicial economy benefits which would have been apparent at the time the suit was filed.”

These principles, taken together, mean that a district court cannot rely on judicial economy principles that arise from the fact that the court had become familiar with the patent in the time the court took to decide the transfer motion. However, the district court need not ignore the fact that several patent infringement cases involving the same plaintiff and same patent had been filed in his or her court, or any familiarity gained from prior cases.

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Wireless Handover OY Hits AT&T With A Patent Infringement Lawsuit

Posted on February 4, 2013 by Steven Callahan

On January 31, 2013, Wireless Handover filed its lawsuit (complaint available here) against AT&T in the Northern District of Texas. Wireless Handover asserts that AT&T infringes United States Patent No. 7,953,407, which claims technology relating to centralized management of telecommunications parameters.

Wireless Handover is represented by Everett Upshaw and Craig Uhrich, both of the Law Office of Everett Upshaw, PLLC; and Arthur Navarro, of Navarro Law Office, PC.

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