Federal Circuit Judge William Bryson Issues District Court Opinion Concerning 35 U.S.C. § 101 Challenge to Patentability

Posted on April 14, 2014 by Steven Callahan

On February 19, 2014, Federal Circuit Judge William Bryson, sitting as a district court judge in the Eastern District of Texas, issued a memorandum opinion and order (available here) denying a motion for summary judgment of invalidity premised on 35 U.S.C. § 101. Judge Bryson’s decision provides a good overview of the current patent law with respect to abstract ideas in the wake of CLS Bank v. Alice, which is currently on appeal to the Supreme Court. Judge Bryson ultimately found that the claims at issue were directed patent eligible under section 101.

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Good Reason to Use Local Counsel

Posted on April 14, 2014 by Steven Callahan

We came across a decision from the Western District of Texas that illustrates a good reason to use local counsel. In the Order (available here), the Court denied defendants’ motion to dismiss because the pleading exceeded the local rule’s page limitations.

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Judge Godbey Issues Claim Construction Order In Shire v. Neos Therapeutics

Posted on April 14, 2014 by Steven Callahan

On March 20, 2014, Judge Godbey issued an Order (available here) construing various terms of the patent in suit in Shire v. Neos Therapeutics. Of particular note is Judge Godbey’s decision not to limit the scope of the patent in suit’s claims based on the prosecution history of a related yet “substantively different patent.”

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Judge Lynn Denies Motion to Dismiss Premised On Alleged Lack of Patent-Eligible Subject Matter, Provides Summary Judgment Schedule With “Limited and Proportional Discovery”

Posted on March 11, 2014 by Steven Callahan

On February 28, 2014, Judge Lynn issued an order (available here) in Placemark Investments v. Prudential Investments. The defendants in the case had filed motions to dismiss asserting that the patent in suit did not claim patent eligible subject matter under 35 U.S.C. § 101. Judge Lynn found that the issue was more properly raised on a motion for summary judgment. As such, she indicated that she “will enter an order providing a schedule and details for such, to be filed and ruled upon, with limited and proportional discovery.”

As patent practitioners know, motions to dismiss based on allegedly ineligible subject matter have become more common in recent years, and the Supreme Court will provide further guidance on the inquiry in the presently pending Alice v. CLS Bank case.

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Judge Godbey Disqualifies Attorneys and Firm Representing Micrografx in Samsung Case

Posted on March 11, 2014 by Steven Callahan

On March 7, 2014, Judge Godbey issued an order (available here), in Micrografx v. Samsung. Samsung had moved to disqualify several of plaintiff’s attorneys and the attorneys’ law firm due to their past representation of Samsung. The disqualified attorneys had represented Samsung in several patent infringement lawsuits over the course of 10 years at their prior law firm, and, when they left that firm in 2011 to form their new law firm, they continued to represent Samsung. In 2013, Micrografx filed the instant lawsuit against Samsung.

Judge Godbey applied the “substantial relationship” test to determine whether a conflict of interest merits disqualification due to a former representation:

Under the “substantial relationship” test, a “party seeking to disqualify opposing counsel . . . must establish two elements: (1) an actual attorney-client relationship between the moving party and the attorney he seeks to disqualify and (2) a substantial relationship between the subject matter of the former and present representations.

Judge Godbey ultimately found that there was a substantial relationship between the subject matter of the prior representation of Samsung and the present case, and accordingly disqualified the attorneys and their firm. Judge Godbey stayed the case for 30 days to permit Micrografx time to obtain substitute counsel.

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Magistrate Judge Koenig Up for Reappointment

Posted on March 11, 2014 by Steven Callahan

The Northern District of Texas has issued a public notice (available here) regarding Magistrate Judge Koenig’s reappointment. Judge Koenig’s present term is due to expire on December 27, 2014. Her new term would be for eight years. The Clerk of Court is soliciting written comments from members of the bar and the public. Comments must be received by April 11, 2014.

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Magistrate Judge Frost

Posted on March 11, 2014 by Steven Callahan

Magistrate Judge Frost has been a magistrate judge in the Northern District of Texas since 2011. He is a 1984 graduate of Angelo State University, and a 1987 graduate of Texas Tech University School of Law.

He served as a law clerk for Judge Cummings for the Northern District of Texas, and previously worked at the law firm of McLean, Sanders, Price, Head & Ellis (1988-1990), and as an Assistant United States Attorney (from 1990-2011).

Judge Frost’s chambers are in Abiline.

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Supreme Court’s Medtronic v. Mirowski Decision

Posted on March 10, 2014 by Steven Callahan

On January 22, 2014, the Supreme Court issued its decision in Medtronic v. Mirowski Family Ventures (decision available here). The Supreme Court held that, where a licensee asserts a declaratory judgment claim against a patent holder, it is the patent holder’s burden to prove infringement, in the process reversing the Federal Circuit’s ruling to the contrary. The Supreme Court noted that the patentee ordinarily bears the burden of proving infringement, that the operation of the declaratory judgment act is only procedural (leaving substantive rights unchanged), and the burden of proof is a substantive aspect of a claim.

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New Trademark Infringement Cases Filed In Northern District of Texas

Posted on March 10, 2014 by Steven Callahan

There have been many new trademark infringement lawsuits filed in the Northern District of Texas over the last several weeks, including:

  • Gateway Buick v. Behlmann Automotive Services. (Complaint available here).
  • Gearbox Software v. Apogee Software. (Complaint available here).
  • Heinz v. Figueroa Brothers. (Complaint available here).
  • RE/MAX v. Meridian Business Centers. (Complaint available here).
  • Sprint Solutions v. Zoubi Imports and Exports. (Complaint available here).
  • TRB IP Holdings v. Twisted Root Restaurant & Bar. (Complaint available here).
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New Patent Cases Filed in the Northern District of Texas

Posted on March 10, 2014 by Steven Callahan

Over the last several weeks, there have been many new patent infringement cases filed in the Northern District of Texas, including:

  • Richmond v. Forever Gifts. The patent in suit claims technology relating to solar-powered garden lighting. (Complaint available here).
  • J.W. Pet Company v. Gramercy Products. The patents in suit relate to animal toys. (Complaint available here).
  • Smith’s Consumer Products v. Fortune Products. The patents in suit claim technology relating to abrasive sharpeners. (Complaint available here).
  • Summit 6 v. HTC, LG, Motorola, Apple, and Twitter. The patents in suit relate to web-based media submission tools. (Complaint available here).
  • Vehicle IP v. Basic Energy Services; Frozen Food Express; Oldcastle; Schneider National. The patents in suit claim technology relating to a method and apparatus for determining the tax of a vehicle. (Complaints available here, here, here, and here).
  • Super Resolution Technologies v. Nikon. The patents in suit claim methods relating to fluorescent nanoscopy. (Complaint available here).
  • Wingard v. Southwest Kia. The patent in suit claims technology relating to anti-theft devices. (Complaint available here).
  • Employment Law Compliance v. HRSmart. The patent in suit claims technology relating to employment law compliance, establishment, evaluation and review. (Complaint available here).
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