Judge Godbey Stays Patent Case Pending IPR, Pre-IPR Institution

Posted on April 9, 2020 by Steven Callahan

On January 23, 2020, Judge Godbey issued a decision in Uniloc 2017 LLC v. LG Electronics (available here). Nine months after Uniloc filed suit, LG filed a petition for inter partes review of the patent-in-suit. Although the PTAB had not decided whether to institute the IPR, the Court found that a stay was warranted, as: (i) the parties weren’t competitors, (ii) Uniloc did not seek a preliminary injunction which suggested that monetary damages could adequately compensate it, (iii) LG did not have a “dilatory motive” in filing the IPR (it filed the IPR within one month of receiving Uniloc’s infringement contentions) and filed the instant motion to stay ten days after filing the IPR petition, (iv) a stay could simplify the issues in the case (either claims could be invalidated such that they need not be litigated, or the claims would survive and LG estopped from asserting invalidity on any ground it raised or could have raised during the IPR), (v) the case was in the early stages of litigation (discovery had not closed, claim-construction briefs had not been filed, and no trial date had been set), and (vi) staying the case pending the IPR would reduce the burden parallel litigation would otherwise impose on the Court and the parties.

The result in Uniloc was similar to Judge Godbey’s earlier decision in MEC Resources v. Kemet Electronics Corp. (available here). In MEC, the defendant filed an IPR petition challenging all claims of the patent-in-suit three months after being sued. Judge Godbey granted a stay, even though the IPR had not been instituted.

Uniloc and MEC, however, can be contrasted with Judge Godbey’s decision in Netsoc v. Match Group (available here). In Netsoc, the case was nearly a year old when Match filed its motion to stay, and claim-construction briefing had been completed.

Posted in Judge Godbey (Chief Judge) | Comments Off on Judge Godbey Stays Patent Case Pending IPR, Pre-IPR Institution

Judge Kinkeade Denies Motion for Leave to Proceed Without Local Counsel

Posted on April 9, 2020 by Steven Callahan

On February 6, 2020, Judge Kinkeade denied a motion for leave to proceed without local counsel (minute order available here). Judge Kinkeade required the defendant to designate local counsel within 14 days and further provided that both local counsel and lead counsel must sign all documents filed in the case on an ongoing basis.

Posted in Judge Kinkeade | Comments Off on Judge Kinkeade Denies Motion for Leave to Proceed Without Local Counsel

Judge Pittman Dismisses Lawsuit Without Prejudice For Failure To Comply With Local Counsel Requirement

Posted on April 9, 2020 by Steven Callahan

On March 11, 2020, Judge Pittman entered an order (available here) in McDermott v. Salem Media Group. The Court has previously required the plaintiff to comply with Local Rule 83.10 (requiring local counsel) within fourteen days from February 25, 2020. But the plaintiff did not comply with the order. In view of the plaintiff failing to comply with the Local Rules, Judge Pittman dismissed the plaintiff’s case without prejudice pursuant to Federal Rule of Civil Procedure 41(b).

Posted in Judge Pittman | Comments Off on Judge Pittman Dismisses Lawsuit Without Prejudice For Failure To Comply With Local Counsel Requirement

Federal Circuit Finds That Retroactive Application Of IPR Proceedings To Pre-America Invents Act Patents Does Not Constitute An Unconstitutional Taking Under The Fifth Amendment

Posted on April 9, 2020 by Steven Callahan

On July 30, 2019, the Federal Circuit issued its decision in Celgene Corp. v. Peter (available here). The Federal Circuit held that the retroactive application of inter partes review proceedings to pre-America Invents Act patents did not constitute an unconstitutional taking under the Fifth Amendment. The Federal Circuit found that the validity of patents had always been subject to challenge in district court and, for the last forty years, patents have also been subject to reconsideration and possible cancellation by the Patent and Trademark Office. “Although differences exist between IPRs and their reexamination predecessors, those differences do not outweigh the similarities of purpose and substance and, at least for that reason, do not effectuate a taking of Celgene’s patents.”

Posted in Federal Circuit Court of Appeals | Comments Off on Federal Circuit Finds That Retroactive Application Of IPR Proceedings To Pre-America Invents Act Patents Does Not Constitute An Unconstitutional Taking Under The Fifth Amendment

Supreme Court Rules That States Cannot Be Sued For Copyright Infringement

Posted on April 5, 2020 by Steven Callahan

On March 23, 2020, the Supreme Court issued its decision in Allen v. Cooper (available here). At issue was Congress’ attempt to strip the States of their sovereign immunity for copyright infringement. In 1999, the Supreme Court struck down Congress’ attempt to strip the states of sovereign immunity in patent cases. See Florida Prepaid Postsecondary Ed. Expense Bd. v. College Savings Bank, 527 U. S. 627 (1999). The Supreme Court found that Florida Prepaid dictated the outcome with respect to the copyright statute—i.e., Congress did not validly override the States’ sovereign immunity. In dicta, the Supreme Court suggested that Congress could abrogate the States’ sovereign immunity if it passed a narrower statute, focused on only willful copyright infringement. But, for now, the State are free to commit all the copyright infringement they want without liability to copyright holders.

Posted in U.S. Supreme Court | Comments Off on Supreme Court Rules That States Cannot Be Sued For Copyright Infringement

Amendment to Local Rules

Posted on April 2, 2020 by Steven Callahan

Effective September 3, 2019, the Local Rules were amended (see Special Order No. 2-89, available here). The Court repealed L.R. 5.1 (specifying that the delivery of the notice of electronic filing constitutes service on each party who is a registered user of ECF), L.R. 11.1 (dealing with electronic signatures), and L.R. 62.1 (dealing with supersedeas bonds). The Court amended L.R. 7.2 to make it clear that briefs must be on 8.5 x 11 inch pages, with font 12 point or larger, text double spaced (other than for quotations more than two lines long, and headings and footnotes), and margins at least one inch on all four sides. Local Rule 7.4 was amended to make it clear that the Certificate of Interested Persons must be filed not only with an initial responsive pleading, but also a motion filed in lieu of a responsive pleading.

Posted in Local Rules | Comments Off on Amendment to Local Rules

Some Reasons Why Trade Secret Theft Isn’t Cool

Posted on March 21, 2020 by Steven Callahan

A bankruptcy, a $179 million arbitration award, and a prison sentence of up to 10 years = good reasons not to take your employer’s trade secrets on your way out the door. Here’s Anthony Levandowski plea agreement relating to Levandowski’s theft of Google’s self-driving car trade secrets.

Posted in Ethics, Non-N.D. Tex. Notable Decisions | Comments Off on Some Reasons Why Trade Secret Theft Isn’t Cool

Always Local Counsel Up

Posted on February 29, 2020 by Steven Callahan

If you file a Complaint in a court you’re not admitted in, you’re risking an Order to Show Cause why the Complaint shouldn’t be considered a nullity. Motto of story: retain local counsel to file the Complaint, then get yourself admitted to practice pro hac vice.

Posted in Non-N.D. Tex. Notable Decisions, Practice Tips | Comments Off on Always Local Counsel Up

What Not To Do When The Court Dismisses Your Case With Prejudice

Posted on February 27, 2020 by Steven Callahan

A lesson from W.D. Tex.’s Judge Albright: After the Court dismisses your claims with prejudice, the proper course of action is to file a notice of appeal, not a notice of dismissal without prejudice. Otherwise, expect to be ordered to pay the other side’s attorney’s fees and attend ethics classes.

Posted in Attorney's Fees, Sanctions | Comments Off on What Not To Do When The Court Dismisses Your Case With Prejudice

Fifth Circuit Concludes A Copyright Plaintiff’s Unreasonable Failure To Prevent Copyright Infringement Cannot Be A Complete Defense To Statutory Damages Under The Copyright Act

Posted on February 2, 2020 by Steven Callahan

On January 15, 2020, the Fifth Circuit issued its decision in Energy Intelligence Group, Inc. v. Kayne Anderson Capital Advisors (available here). In the case, the defendant infringed the plaintiff’s copyrights by improperly forwarding certainly daily newsletters to others outside of the scope of the defendant’s subscription. The defendant relied on a mitigation defense, pointing out that the plaintiff learned of the defendant’s infringement seven years before filing suit “but did nothing to investigate or dissuade [plaintiff]” and “knew that many of its subscribers improperly distributed its newsletters but consciously declined to crack down on such sharing because litigating copyright claims against large clients was more profitable.” The district court allowed the defendant to proceed with this mitigation defense.

At trial, the defendant persuaded the jury that the plaintiff could reasonably have avoided almost all of the copyright violations at issue (i.e., 1,607 out of 1,646 acts of infringement), and the defendant took nothing for those violations. This presented an issue of first impression on appeal—i.e., whether failure to mitigate can be a complete defense to liability for statutory damages under the Copyright Act. The Fifth Circuit held that failure to mitigate is not a complete defense to copyright statutory damages. Instead, the jury may appropriately consider mitigation in determining the amount to award in statutory damages.  

Posted in Fifth Circuit Court of Appeals | Comments Off on Fifth Circuit Concludes A Copyright Plaintiff’s Unreasonable Failure To Prevent Copyright Infringement Cannot Be A Complete Defense To Statutory Damages Under The Copyright Act