Wednesday, January 18, 2017

Judge Love Orders Mutual Disclosure of Mock Trial or Focus Group and In Camera Inspection of Participants​

The court ordered the parties to disclose the identities of the participants in any mock trial or focus group prior to jury selection. "The parties are notified that if either party intends to conduct mock trials, focus groups, or similar studies in preparation for trial, the party who commissions such a study shall retain, to the extent practicable, the name and address of each participant in the study. Any party who commissions such a study shall advise the other party to the case, as well as the court, in writing, that such a study occurred. . . . Upon receipt of any jury list, the party who commissioned the study shall immediately cross-reference the jury list with the identities of the participants and advise the other party and the court of any prospective juror who participated in any study. Before jury selection, the party who commissioned the study shall provide the names and addresses of all participants in the study to the court in camera."

3rd Eye Surveillance, LLC v. The City of Fort Worth, Texas, 6-14-cv-00725 (TXED January 13, 2017, Order) (Love, MJ)

Tuesday, January 17, 2017

Transferring Venue: How Long Is This Gonna Take?

Filing a motion to transfer venue in a court case can be an important tool for a defendant who wants to move the case to home turf, as it were, or it may turn out to be more beneficial to all parties involved for discovery. But most legal teams are in the dark as to their chances of having such a motion to transfer venue approved by a judge, or how long they might have to wait in order to receive a judgment on such motions.

Data compiled using the patent litigation analysis tools available through Docket Navigator helps to shed some light on this situation. Overall, more motions to transfer venue have been granted than have been denied in recent years. For the eight-year period from 2008 until late-2016, a total of 1,079 motions to transfer venue have been granted in patent infringement suits being litigated in U.S. district courts. By contrast, 974 motions to transfer venue were denied during the same period of time. The following charts will look at district courts with ten or more motions to transfer venue filed during that time period.

Not every U.S. district court takes a friendly view of motions to transfer venue, and one of the places where more motions are denied than granted is the U.S. District Court for the Eastern District of Texas (E.D. Tex.). During the eight years that were surveyed, a total of 377 motions to transfer venue were denied in E.D. Tex. while the court only granted 279 such motions. These figures also point out the massive number of patent infringement cases playing out at E.D. Tex. Second to E.D. Tex. in terms of the number of motions either granted or denied is the U.S. District Court for the District of Delaware (D. Del.), where 107 motions to transfer venue were denied and 88 such motions were granted over an eight year period.



Although E.D. Tex. and D. Del. see the largest number of motions to transfer venue, other district courts take much longer to render a decision on those same motions. On average, it takes 283.7 days for a motion to transfer venue to be denied in the U.S. District Court for the Northern District of New York (N.D.N.Y.). Trailing N.D.N.Y. in this regard is E.D. Tex., which has an average pendency of 219.4 days from the date the motion is filed until it is denied, and D. Del., where the average pendency is 199.5 days. For motions to transfer venue which are granted, D. Del. (184.5 days) and E.D. Tex. (183.2 days) are at the top of the list for the longest average pendencies from the date the motion is filed. However, also in that mix is the U.S. District Court for the District of Colorado (D. Colo.), where the average pendency on a motion to transfer venue is 184.3 days for motions which are granted.



The fastest average pendencies on motions to transfer venue which are denied from the date that the motion was filed were seen in the U.S. District Court for the Central District of California (C.D. Cal.), where it took only an average of 51.7 days to deny such a motion. While C.D. Cal. also sees a quick average pendency period of 62.8 days to grant a motion to transfer venue, the quickest average pendency to granting a motion to transfer venue was 61 days in the U.S. District Court for the Eastern District of Virginia (E.D. Va.).



The data analytics available through Docket Navigator give any patent attorney better tools for forecasting a court’s activity, helping them deliver more value to their clients. Legal teams considering a change of court venue will get a much better idea of their chances to do so with this powerful data engine.


Charts made using Docket Navigator's data.
This guest post was written by Steve Brachmann.

Hastily Filed Declaratory Judgment Claim Did Not Violate Rule 11 in Light of PTAB Institution Decision​

The court denied a patentee-defendant's motion for Rule 11 sanctions because plaintiff's claims for declaratory relief of noninfringement and invalidity were not frivolous in light of the PTAB's decision to institute inter partes review of a related claim. "Although [defendant] criticizes [plaintiff] for not providing an attorney declaration testifying about what inquiry was conducted in the two days between the receipt of [defendant's] notice-of-infringement letter and the filing of [plaintiff's] complaint seeking declaratory relief, that failure is immaterial so long as [plaintiff's] complaint was not legally or factually baseless from an objective perspective. Here, [defendant] claims that . . . [plaintiff's] contention that claim 4 of the [patent-in-suit] was invalid was not factually supported. But that position cannot be sustained given the results of [a related] inter partes review. . . . [T]he PTAB's grant of review on claim 1 implicates the validity of claim 4, because claim 4 is, in effect, part of the process described in claim 1, only in reverse. [Defendant's] argument that 'dependent or multiple dependent claims [i.e., claim 4] shall be presumed valid even though dependent upon an invalid claim [claims 1-3],' does not establish [plaintiff's] challenge to claim 4 is frivolous."

Craigslist, Inc. v. EveryMD.com LLC, 3-16-cv-03421 (CAND January 12, 2017, Order) (Chen, USDJ)

No Stay of TC Heartland Pending Supreme Court Review​

The court denied defendant's motion to stay pending the Supreme Court's resolution of its appeal of the court's transfer order because the interests of justice, prejudice to plaintiff, and age of the case weighed against a stay. "I have decided all pending motions. . . . Even if the result of the Supreme Court's decision is a determination that this case must be transferred to another District, the case will still need to be tried. I have presided over the case since its inception. The directive . . . that I 'administer[]' this case (like all others) with a goal of 'secur[ing] [its] just, speedy, and inexpensive determination,' is far better served by me deciding the ripe motions rather than leaving numerous loose threads for (potentially) a judge in another District to have to untangle. . . . [T]hese parties are competitors. . . . [T]his case is already three years old. . . . It needs to go to trial soon."

Kraft Foods Group Brands LLC v. TC Heartland LLC et al, 1-14-cv-00028 (DED January 12, 2017, Order) (Stark, USDJ)

Friday, January 13, 2017

Step One of Alice Analysis Not Limited to Patent’s Novel Claims​

The court denied defendants' motion to dismiss on the ground that plaintiff’s agrochemical spraying system patents encompassed unpatentable subject matter and rejected defendants' argument that the court must focus its analysis of step one in Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014) to the novel claims of the patents-in-suit. "Defendants contend that the Federal Circuit’s admonition to consider the focus of the patents’ claimed advance over the prior art requires the court to narrow its Alice step-one inquiry to the [patents-in-suit’s] novel claims. The court disagrees. To adopt defendants’ method would require the court to import the novelty inquiry found under § 102 into the § 101 analysis. The Supreme Court has rejected this method many times. . . . In step one of the Alice test, the court simply considers the patent’s claims as a whole to determine what their focus is."

Capstan AG Systems, Inc. v. Raven Industries, Inc. et al, 5-16-cv-04132 (KSD January 11, 2017, Order) (Crabtree, USDJ)

Estoppel Does Not Apply to Grounds Not Raised in Petition for Inter Partes Review​

The court denied plaintiffs' motion to reconsider an earlier decision that defendant was not estopped from presenting a prior art combination at trial following inter partes review. "[M]y first look at the estoppel issue was incomplete . . . [E]veryone agrees that estoppel applies to grounds for invalidity upon which the Board instituted review in the IPR proceeding, whether or not the Board addresses those grounds in its final decision ('instituted grounds'). I believe that there likewise can be no dispute that estoppel does not apply to invalidity grounds that were raised by a petitioner in an IPR, but rejected by the Board as instituted grounds (i.e., 'noninstituted grounds'). Which leaves us with the situation at bar, where the invalidity ground at issue was never raised in the IPR, but reasonably could have been raised during the IPR ('litigation ground'). To the best of my knowledge, the Federal Circuit has not addressed this specific fact pattern. . . . [Plaintiffs'] reasoning leads to the conclusion that the PTAB is meant to be the invalidity arbiter of first resort and, therefore, a company that seeks an IPR must bring to the PTAB's attention every ground the company has reason to think might be relevant; otherwise, it will be estopped from pursuing that ground in litigation. That outcome appears to be inconsistent with all of the limitations imposed by the PTAB on IPR proceedings . . . and leaves for trial only those references initially rejected by the PTAB. . . . On the whole, since it is not my place to make policy decisions, I am not inclined to change my original decision, with the hopes that an appeal may clarify the issue for future judges in future cases. Therefore, [defendant] is not estopped from presenting [a prior art] combination at trial."

Intellectual Ventures I LLC et al v. Toshiba Corporation et al, 1-13-cv-00453 (DED January 11, 2017, Order) (Robinson, USDJ)

Thursday, January 12, 2017

Petitioner’s Inability to Cross-Examine Patent Owner’s Expert Justifies Motion to Strike Expert’s Declaration

​ During a conference call, the Board granted the petitioner authorization to file a motion to strike the declaration of the patent owner's expert because the expert was unavailable for deposition prior to the due date of the petitioner's reply. "We advised Patent Owner that, given Petitioner’s inability to cross-examine [patent owner's expert] prior to the due date for Petitioner’s Reply, the likely remedy would be to strike [the expert's] declaration. Patent Owner’s counsel indicated he understood the likelihood of that outcome, and that he had advised his client [the expert] of the likelihood of that outcome prior to the conference call. [Patent owner's counsel] nonetheless indicated that [the expert] was not available for deposition prior to the due date for Petitioner’s Reply, and that he was acting in accordance with [the expert's] instructions in that regard. Additionally, [patent owner's counsel] did not request an extension of time for Petitioner’s Reply to accommodate the rescheduling of [the expert's] deposition, and did not indicate [the expert] would be available for deposition at any time."

Petition for Inter Partes Review by 1964 Ears, LLC, IPR2016-00494 (PTAB January 10, 2017, Order) (Horvath, APJ)