Supreme Court’s Life Technologies v. Promega Decision

Posted on April 5, 2017 by Steven Callahan

On February 22, 2017, the Supreme Court issued its Life Technologies v. Promega decision (available here). The Patent Act (Section 271(f)(1)) prohibits the supply from the United States of “all or a substantial portion” of the components of a patented invention for combination abroad. The question before the Court was whether a party that supplies a single component of a multicomponent invention for manufacture abroad can be held liable under § 271(f )(1). The Court held that that a single component does not constitute a substantial portion of the components that can give rise to liability under § 271(f )(1).

Notably, the Court did not consider how to identify the “components” of a patent or whether and how that inquiry relates to the elements of a patent claim. In the instant case, the parties agreed that the accused product contained five components and that all but one component was manufactured in the United Kingdom, so the issue did not present itself.

Posted in Developing Law, U.S. Supreme Court | Comments Off on Supreme Court’s Life Technologies v. Promega Decision

Northern District of Texas, Dallas Division, Seeking New Magistrate Judge

Posted on March 5, 2017 by Steven Callahan

The Northern District of Texas has announced a new magistrate judge opening for its Dallas Division. Details concerning the position, and application process, can be found here. The application deadline is May 5, 2017.

Posted in N.D. Tex. News | Comments Off on Northern District of Texas, Dallas Division, Seeking New Magistrate Judge

The Brick House and Court Reporting in the Northern District of Texas

Posted on March 5, 2017 by Steven Callahan

The New York Times has published a follow-up article (available here) concerning Judge Kinkeade’s recent Facebook trial. Bottom line: when it comes to technology and courtroom reporting, it’s best to check your individual judge’s rules and procedures as to what is and is not allowed.

Posted in Judge Kinkeade, N.D. Tex. News | Comments Off on The Brick House and Court Reporting in the Northern District of Texas

Jurors Award $500 Million In Damages in Zenimax v. Oculus Case

Posted on February 1, 2017 by Steven Callahan

Today, jurors in the Northern District of Texas rendered their verdict in Zenimax Media Inc. v. Oculus et al. (verdict available here). The case has been in the news recently, mainly because Facebook’s founder, Mark Zuckerberg, took the witness stand for the defense. (Another interesting article was recently published concerning the case and the Northern District of Texas’ rules concerning electronics and recording devices in courtrooms.)

The jurors found, among other things, that

  • none of the defendants (including Facebook) misappropriated plaintiffs’ trade secrets;
  • defendant Oculus infringed plaintiffs’ copyrights ($50 million in damages);
  • defendant Oculus committed breach of contract ($200 million in damages);
  • defendant Facebook did not tortiously interfere with plaintiffs’ contract with Palmer Luckey and/or Oculus;
  • defendants Facebook and Oculus did not engage in unfair competition against plaintiffs;
  • Oculus infringed ZeniMax’s trademarks (but Zenimax suffered no damages); and
  • defendants Oculus, Palmer Luckey and Brendan Iribe committed false designation (the jurors awarded $50 million against Oculus, $50 million against Luckey, and $150 million against Iribe).

Accordingly, the jurors awarded a total of $500 million in damages ($300 million against Oculus, a company recently acquired by Facebook; $50 million against Luckey; and $150 million against Iribe).

Judge Kinkeade is presiding over the case.

Posted in Judge Kinkeade, N.D. Tex. News | Comments Off on Jurors Award $500 Million In Damages in Zenimax v. Oculus Case

Chief Judge Lynn Orders Patent Plaintiff to Pay $440,000 in Defendants’ Attorney Fees

Posted on February 1, 2017 by Steven Callahan

On December 13, 2016, Chief Judge Lynn entered an Order (available here) in Rainere v. Microsoft & AT&T. The Court had previously decided the case in defendants’ favor, and found that the case was exceptional, justifying an award of attorney’s fees against the plaintiff. In this Order, Judge Lynn found that the plaintiff should pay defendants approximately $440,000 in attorney’s fees. Of note, the Court found that:

  • AT&T’s lead counsel’s hourly rates ranging from $375 to $1,030/hour were reasonable;
  • AT&T’s local counsel’s hourly rates ranging from $500 to $600/hour were reasonable; and
  • Microsoft’s lead counsel’s hourly rates ranging from $525 to $1,100/hour were reasonable.
Posted in Attorney's Fees, Judge Lynn | Comments Off on Chief Judge Lynn Orders Patent Plaintiff to Pay $440,000 in Defendants’ Attorney Fees

Amarillo Magistrate Judge Vacancy

Posted on January 31, 2017 by Steven Callahan

The Northern District of Texas has announced that it intends to seek applications for a June 2017 magistrate judge vacancy in Amarillo, as soon as approval is granted to refill the position. Additional details, as well as a copy of the application form, are available here.

Posted in N.D. Tex. News | Comments Off on Amarillo Magistrate Judge Vacancy

Goodbye, Federal Rules’ Extra 3 Days Due To E-Mail/Electronic Service

Posted on December 17, 2016 by Steven Callahan

On December 1, 2016, the Federal Rules of Civil Procedure were amended (amendments available here). Of most importance to civil federal-court practitioners is that the amendments eliminated the extra 3 days previously added onto a deadline for responding to discovery or pleadings when service had been made by e-mail or other electronic means (e.g., the court’s electronic-filing system).

According to the Committee Notes:

Rule 6(d) is amended to remove service by electronic means under Rule 5(b)(2)(E) from the modes of service that allow 3 added days to act after being served.

Rule 5(b)(2) was amended in 2001 to provide for service by electronic means. Although electronic transmission seemed virtually instantaneous even then, electronic service was included in the modes of service that allow 3 added days to act after being served. There were concerns that the transmission might be delayed for some time, and particular concerns that incompatible systems might make it difficult or impossible to open attachments. Those concerns have been substantially alleviated by advances in technology and in widespread skill in using electronic transmission.

A parallel reason for allowing the 3 added days was that electronic service was authorized only with the consent of the person to be served. Concerns about the reliability of electronic transmission might have led to refusals of consent; the 3 added days were calculated to alleviate these concerns.

Diminution of the concerns that prompted the decision to allow the 3 added days for electronic transmission is not the only reason for discarding this indulgence. Many rules have been changed to ease the task of computing time by adopting 7-, 14-, 21-, and 28-day periods that allow “day-of-the-week” counting. Adding 3 days at the end complicated the counting, and increased the occasions for further complication by invoking the provisions that apply when the last day is a Saturday, Sunday, or legal holiday.

Electronic service after business hours, or just before or during a weekend or holiday, may result in a practical reduction in the time available to respond. Extensions of time may be warranted to prevent prejudice.

Eliminating Rule 5(b) subparagraph (2)(E) from the modes of service that allow 3 added days means that the 3 added days cannot be retained by consenting to service by electronic means. Consent to electronic service in registering for electronic case filing, for example, does not count as consent to service “by any other means” of delivery under subparagraph (F).

Posted in Federal Rules, Practice Tips | Comments Off on Goodbye, Federal Rules’ Extra 3 Days Due To E-Mail/Electronic Service

Supreme Court Unanimously Reverses Federal Circuit’s $399 Million Decision in Samsung v. Apple

Posted on December 17, 2016 by Steven Callahan

On December 6, 2016, the Supreme Court issued its (unanimous) opinion in Samsung v. Apple (decision available here). The opinion involved the proper amount of damages for infringement of a design patent. Under 35 U.S.C. § 289, a person who manufactures or sells “any article of manufacture to which [a patented] design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit[.]” (emphasis added). Certain Samsung smartphones were found to infringe three Apple design patents, and the Federal Circuit upheld a damages award of $399 million (which represented the entire profit Samsung made from its sales of the smartphones-at-issue). According to the Federal Circuit, the “entire smartphone” was the only permissible “article of manufacture” for the purpose of calculating damages because “consumers could not separately purchase components of the smartphones.” The Federal Circuit rejected Samsung’s argument that “the profits awarded should have been limited to the infringing ‘article of manufacture’—for example, the screen or case of the smartphone—not the entire infringing product—the smartphone.” (certain quotations omitted).

The Supreme Court reversed the Federal Circuit, holding: “The term ‘article of manufacture,’ as used in §289, encompasses both a product sold to a consumer and a component of that product.” It is “simply a thing made by hand or machine.” The Supreme Court thus reversed the Federal Circuit’s decision, and remanded for the Federal Circuit to address any remaining issues on remand.

Posted in Developing Law, Federal Circuit Court of Appeals, U.S. Supreme Court | Comments Off on Supreme Court Unanimously Reverses Federal Circuit’s $399 Million Decision in Samsung v. Apple

Lesson From The Fifth Circuit – Don’t Wait To Spring Your Best Evidence On Your Opponent At A Deposition

Posted on December 17, 2016 by Steven Callahan

On December 12, 2016, the Fifth Circuit Court of Appeals upheld a district-court decision sanctioning two attorneys ($1,000 each) for “certifying that their clients’ initial disclosures under Federal Rule of Civil Procedure 26(a)(1) were complete and correct even though the disclosures failed to mention evidence that [the attorneys] later used during a deposition.” The decision (in Olivarez v. GEO Group) is available here. It contains an interesting discussion on whether evidence is “substantive” versus “impeachment” (as evidence used “solely for impeachment” is not subject to Rule 26’s mandatory-disclosure requirement). But the main lesson coming from the decision is that it’s best not to take your chances on whether Rule 26 requires you to disclose the evidence to your opponent without awaiting a discovery request—just produce it, instead of waiting until later in the case to spring it on your opponent.

Posted in Fifth Circuit Court of Appeals, Practice Tips, Sanctions | Comments Off on Lesson From The Fifth Circuit – Don’t Wait To Spring Your Best Evidence On Your Opponent At A Deposition

File Unjustified Motion for Protective Order Based on Motion to Dismiss, Pay Other Party’s Attorney’s Fees

Posted on November 28, 2016 by Steven Callahan

On September 27, 2016, Judge Godbey issued an Order (available here) in Nu-You Technologies v. Eltoweissy. The plaintiff filed a motion for attorney’s fees, seeking about $4,500 to compensate it for the fees incurred in responding to defendants’ motion for a protective order. Under Federal Rule 37, the Court can award attorney’s fees to the party who prevailed on a motion for a protective order, unless the motion was substantially justified. Judge Gobey wrote:

In this case, the Defendants’ motion for a protective order sought to stay the case until the Court ruled on the Defendants’ pending motion to dismiss. Courts have repeatedly rejected this argument. See, e.g., Glazer’s Wholesale Drug Co. v. Klein Foods, Inc., 2008 WL 2930482, at *1 (N.D. Tex. 2008) (“The court declines to stay discovery merely because defendant believes it will prevail on its motion to dismiss.”); Ford Motor Co. v. U.S. Auto Club, Motoring Div., Inc., 2008 WL 2038887, at *1 (N.D. 2008) (“such a stay is the exception rather than the rule”). Nor do the Defendants offer a compelling argument to the contrary. Thus, the Court finds that the Defendants’ motion for a protective order was not substantially justified.

The Court provided that Defendants had 30 days to pay the $4,500.

Posted in Attorney's Fees, Judge Godbey (Chief Judge) | Comments Off on File Unjustified Motion for Protective Order Based on Motion to Dismiss, Pay Other Party’s Attorney’s Fees