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.

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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.

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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.

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Johnson Investiture, Wichita Falls Docket Update

Posted on October 18, 2016 by Steven Callahan

Johnson Investiture. The Honorable Kimberly C. Priest Johnson was sworn in today as a magistrate judge in the Eastern District of Texas. The ceremony was well attended by area judges and luminaries, including Chief Judge Ron Clark (E.D. Tex.) and Chief Judge Barbara M.G. Lynn (N.D. Tex.). Judge Johnson has a long history with the Northern District. She served as an Assistant U.S. Attorney in Dallas and also served as a law clerk to Chief Judge Lynn. Congratulations to Judge Johnson!

Wichita Falls Update. At the investiture, Chief Judge Lynn announced that she will begin receiving a portion of her cases from the Wichita Falls Division, rather than receiving cases exclusively from the Dallas Division. This will not be the Chief Judge’s first experience with the Wichita Falls docket. In 2005, she presided over Johnson v. Wathen (No. 07:02-CV-87), a five-week civil-rights trial brought by the ACLU.

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Chief Judge Lynn Awards Attorney’s Fees to Microsoft and AT&T in Case Where Plaintiff Did Not Own Asserted Patents

Posted on September 28, 2016 by Steven Callahan

On September 2, 2016, Chief Judge Lynn issued a decision in Raniere v. Microsoft (available here) finding that AT&T and Microsoft were entitled to recover their attorney’s fees from the plaintiff under 35 U.S.C. § 285. Section 285 provides that, in patent cases, “[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party.” The fee award was based on plaintiff not owning the asserted patents and, according to the Court, engaging in deliberately misleading conduct:

Defendants challenged Plaintiff’s ownership of the asserted patents and pleaded lack of standing as an affirmative defense in their respective answers. The Court also questioned Plaintiff’s standing early in the litigation and gave Plaintiff multiple opportunities to establish his ownership interest in the asserted patents. Despite these opportunities, Plaintiff failed to establish that he owns the patents in suit. Further, the Court found that Plaintiff engaged in deliberately misleading conduct to obscure and complicate the standing issue.

Defendants estimated that they incurred over $1 million in fees and non-taxable costs. Chief Judge Lynn ordered Defendants to submit to the Court evidence of their reasonable attorney’s fees and non-taxable costs, and provided that the plaintiff could object to the specific amount of the requested fees.

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Dallas Court of Appeals Rules That Texas Does Not Recognize Patent Agent Privilege

Posted on September 28, 2016 by Steven Callahan

On August 17, 2016, the Dallas Court of Appeals, in In re Silver, 05-16-00774-CV, 2016 WL 4386004 (Tex. App.—Dallas Aug. 17, 2016, no. pet. h.), found that the State of Texas does not recognize a patent-agent privilege, because “[n]o Texas statute or rule recognizes or adopts a patent-agent privilege.” The Silver decision is contrary to the Federal Circuit’s recent decision in In re Queen’s University at Kingston, 820 F.3d 1287, 1301 (Fed. Cir. 2016), recognizing a patent-agent privilege. The net result of these two decisions is that the patent-agent privilege exists and applies in federal court in patent-infringement cases, while it does not apply in Texas state court cases.

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Judge Godbey Issues Order of Civil Contempt and Coercive Incarceration For Failure to Answer Discovery

Posted on August 27, 2016 by Steven Callahan

Here’s a good reason to answer discovery—if you don’t, the judge can throw you in jail until you do. In Denton v. Suter, Judge Godbey issued an Order of Civil Contempt and Coercive Incarceration (available here). In the case, plaintiffs sought post-judgment discovery from the defendant. The defendant failed to respond, and Magistrate Judge Horan entered an order (i) granting the plaintiffs’ motion to compel the defendant to respond to interrogatories and (ii) awarding the plaintiffs $27,605 for payment of reasonable and necessary fees under Rule 37(a)(5)(A). Defendant failed to comply, which resulted in plaintiffs filing a contempt motion, which Judge Horan granted, requiring the $27,605 to be paid within 10 business days. Defendant failed to answer the interrogatories or pay the $27,605. This resulted in plaintiffs filing a second motion for sanctions and contempt. Judge Horan certified facts to Judge Godbey that defendant’s conduct constituted civil contempt of the requirements of the Court’s orders.

Judge Godbey then held a show cause hearing; the defendant failed to attend. Judge Godbey then found the defendant in civil contempt, and ordered the defendant to be coercively incarcerated until he fully and completely responds to the interrogatories and pays the $27,605. Another $8,086.50 was tacked on for plaintiffs’ attorney’s fees incurred in connection with the proceedings before Judge Godbey.

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Supreme Court Clarifies When An Award Of Attorney’s Fees Is Proper Under The Copyright Act

Posted on August 27, 2016 by Steven Callahan

On June 16, 2016, the Supreme Court issued its unanimous opinion in Kirtsaeng v. John Wiley & Sons, Inc. (available here). Section 505 of the Copyright Act states that a district court “may . . . award a reasonable attorney’s fee to the prevailing party.” The Court held:

The question presented here is whether a court, in exercising that authority, should give substantial weight to the objective reasonableness of the losing party’s position. The answer . . . is yes—the court should. But the court must also give due consideration to all other circumstances relevant to granting fees; and it retains discretion, in light of those factors, to make an award even when the losing party advanced a reasonable claim or defense.

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Fifth Circuit Upholds Judge Lynn’s Decision Finding That Second Amendment Does Not Protect Machineguns

Posted on August 27, 2016 by Steven Callahan

On June 30, 2016, the Fifth Circuit issued its decision in Hollis v. Lynch (available here). The Fifth Circuit upheld Judge Lynn’s decision holding that machineguns are not protected by the Second Amendment. Notably, the Court found that “[t]he Second Amendment does not create a right to possess a weapon solely because the weapon may be used in or is useful for militia or military service.” Ultimately, the Court found that “[m]achineguns are dangerous and unusual and therefore not in common use. They do not receive Second Amendment protection[.]”

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Recent N.D. Tex. Patent Infringement Lawsuits

Posted on August 27, 2016 by Steven Callahan

There have been many new patent infringement cases filed over the last several months in the Northern District of Texas, including:

  1. RFJ Licensing, LLC v. Tait Radio, Inc. (complaint available here)
  2. Datamotion Texas, LLC v. Zix Corp. (complaint available here)
  3. Nautilus Hyosung Inc. v. Diebold, Inc. (complaint available here)
  4. Hawk Technology Systems, Inc. v. Amarillo Nat’l Bank  (complaint available here)
  5. Kyotocooling North America, LLC v. Nortek Air Solutions, LLC (complaint available here)
  6. Berman v. DirectTV, LLC (complaint available here)
  7. Blephex, LLC v. Pain Point Medical Sys., Inc. (complaint available here)
  8. Commscope Technologies LLC v. Dali Wireless, Inc. (complaint available here)
  9. RFJ Licensing, LLC v. Icom America, Inc. (complaint available here)
  10. RFJ Licensing, LLC v. Ritron Inc. (complaint available here)
  11. Youtoo Technologies, LLC v. Twitter, Inc. (complaint available here)
  12. Varidesk LLC v. Nortek, Inc. (complaint available here)
  13. Camatic Proprietary Limited v. Irwin Seating Co. (complaint available here)
  14. Reconstruction Holdings, LLC v. Ayasdi, Inc. (complaint available here)
  15. LakeSouth Holdings, LLC v. Kohl’s Department Stores, Inc. (complaint available here)
  16. LakeSouth Holdings, LLC v. Lowe’s Cos. (complaint available here)
  17. LakeSouth Holdings, LLC v. Tuesday Morning Corp. (complaint available here)
  18. Galderma Laboratories, L.P. v. Tolmar Inc. (complaint available here)
  19. AT&T Services, Inc. v. Berman (complaint available here)
  20. New World International, Inc. v. Ford Global Technologies, LLC (complaint available here)
  21. Securus Technologies, Inc. v. Global Tel*Link Corp. (complaint available here)
  22. Hawk Technology Systems, LLC v. W2007 MVP Dallas, LLC (complaint available here)
  23. T-Rex Property v. Intersection Media Holding (complaint available here)
  24. Galderma Laboratories, L.P. v. Akorn, Inc. (complaint available here)
  25. Blackberry v. Avaya (complaint available here)
  26. Galderma v. Taro Pharmaceuticals (complaint available here)
  27. R.D. Jones v. Intelligent Traffic Equipment Marketing (complaint available here)
Posted in New Lawsuits Filed | Comments Off on Recent N.D. Tex. Patent Infringement Lawsuits