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New This Week (January 12, 2022)

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Scheduling/Case Management 

Northern District of Illinois (Eastern Division—Chicago)

Magistrate Judge Susan E. Cox

Beijing Choice Electronic Tech. Co., Ltd. v. Contec Medical Systems USA, Inc., et al. – The U.S. District Court for the Northern District of Illinois’s Eastern Division in Chicago issued a Report and Recommendation recommending that plaintiff’s Motion For Sanctions should be granted, related to a witness whose availability “for a deposition was the central reason for an almost 18-month delay in the case.” The witness lived in Qinhuangdao, China and his deposition was significantly delayed due to the COVID-19 pandemic and accompanying travel restrictions. In addition, defendant’s counsel reported that the witness had a medical condition that made it “impractical” to travel during the pandemic. The Court specifically indicated that it did not delay the witness’ deposition “because it was impossible to travel from mainland China to Macau; it was a courtesy to the parties and [the witness], as well as a recognition of the lack of readily available vaccines and medical interventions for COVID-19 in 2020 and the first half of 2021.” After the Court found that conditions had changed sufficiently to allow the deposition it ordered the defendant to produce the witness for deposition, but instead of providing deposition dates in their next status report, the parties informed the Court that the witness had given notice six weeks earlier and would be resigning. In finding that the defendant violated a Court Order, the Court noted that there were periods of time when travel from mainland China and Macau was permitted and the witness could have traveled to Macau for his deposition, but “the Court exhibited significant patience and sensitivity to [the witness’] still-undisclosed medical condition in waiting to enforce the order requiring [the witness] to appear for his deposition.” This “patience and sensitivity was repaid by [defendant] hiding crucial information from the Court and failing to produce [the witness] for deposition.” The Court indicated that the moment defendant became aware that the witness was planning to leave the company, it was incumbent on defendant to alert plaintiff or the Court in a timely manner. Given the undisclosed willingness on the part of the witness to quit his job rather than travel, the Court found it “was a colossal waste of [plaintiff’s] time and an abuse of this Court’s patience and understanding for [defendant] and its counsel to continue to represent that there was any likelihood [the witness] would appear for a deposition at any time.” The Court recommended that sanctions be imposed, including barring defendants from calling the witness at trial or using any documents or communications authored by the witness in any motion, hearing or trial, ordering defendants to pay plaintiff’s attorney fees and costs for a number of related motions and hearings, and that defendant’s counsel be fined $2,500 payable to the Court.  (Case No. 1:18-cv-00825, presiding before District Judge Franklin U. Valderrama; December 17, 2021).

Magistrate Judge Heather K. McShain

RTC Industries, Inc. v. Fasteners for Retail, Inc. – The U.S. District Court for the Northern District of Illinois’s Eastern Division in Chicago granted defendant’s unopposed motion to reset the December 20, 2021 motion hearing due to defense counsel being unable to participate because of a personal matter. According to the motion, “[t]he spouse of the [defense] counsel who will be representing [defendant] in the hearing recently tested positive for COVID-19 and is in quarantine, and [defendant’s] counsel is unable to secure childcare such that he can participate in the December 22, 2021 hearing.” The telephonic motion hearing was reset for January 6, 2022 at 10:00 a.m. (Case No. 1:17-cv-03595, presiding before District Judge Martha M. Pacold; December 21, 2021).

Eastern District of Louisiana (New Orleans)

District Judge Jane Triche Milazzo

Xodus Medical Inc. et al v. Verlander – The U.S. District Court for the Eastern District of Louisiana in New Orleans granted defendant’s Motion To Stay, based on the first-to-file rule, pending the outcome of a litigation filed by plaintiffs asserting the same patents against the sole manufacturer of the accused product in the Northern District of Illinois. As part of its analysis, the Court found plaintiff’s alleged prejudice based on the Illinois Litigation progressing slowly due to docket backlog and COVID-19 restrictions unpersuasive. The Court noted that it “has not been immune to the effects of COVID-19 . . . [and there] is no guarantee of a speedier resolution here than in Illinois.” (Case No. 2:21-cv-00616; January 7, 2022).


Central District of California (Western Division—Los Angeles)

District Judge John A. Kronstadt

Valentino SpA v. Mario Valentino SpA et al. – The U.S. District Court for the Central District of California’s Western Division in Los Angeles denied defendants' Amended Joint Motion for a Protective Order to Stay the Parties' Discovery Obligations for Sixty Days, stating that “[a]lthough the COVID-19 pandemic may warrant continuances of discovery deadlines, it does not justify a complete stay of discovery at this time.” On August 10, 2020, the Court granted plaintiff’s Motions to Compels Discovery Responses from defendants, finding good cause and overruling defendants prior objections, except for those based on privileges.  Included among the objections specifically overruled was one seeking “[t]hat discovery should be stayed pending resolution of the COVID-19 crises.” On February 1, 2021, the Court issued a Request For International Judicial Assistance (Letter of Request) Pursuant To The Hague Convention On The Taking Of Evidence Abroad, requesting assistance of the Courts of Italy to compel oral testimony and document evidence. It was requested that the defendant representatives be permitted to attend and possibly participate in the deposition examination, or participate by video if it is not possible to attend in person due to travel concerns or restrictions resulting from the COVID-19 pandemic. On July 15, 2021, the Court issued a Request For International Judicial Assistance in conformity with Article 3 or The Hague Convention On The Taking Of Evidence Abroad, requesting assistance of the Appropriate Judicial Authority of the Republic of Singapore to compel oral testimony and document evidence. It was requested that Counsel be permitted to attend and, if possible, also participate directly in the examination of the deponent, but if not possible due to the current travel concerns/restrictions resulting from the COVID-19 pandemic that they be allowed to attend by “real time” electronic video link from within the United States, via SKYPE or an equivalent platform. On January 7, 2022, the Court issued a Request For International Judicial Assistance in conformity with Article 3 or The Hague Convention On The Taking Of Evidence Abroad, requesting assistance of the Appropriate Judicial Authority of Geneva to compel oral testimony and document evidence from two witnesses. It was requested that Counsel be permitted to attend via “real time” electronic video link if in-person attendance was not possible due to the current travel concerns/restrictions resulting from the COVID-19 pandemic. (Case No. 2:19-cv-06306; July 9, 2020, August 10, 2020, February 1, 2021, July 15, 2021 and January 7, 2022).

Northern District of California (San Francisco)

District Judge William Haskell Alsup

MasterObjects, Inc. v., Inc. The U.S. District Court for the Northern District of California in San Francisco granted in part and denied in part defendant’s motion to strike patent owner’s infringement contentions for failure to comply with Patent Local Rule 3-1, following full briefing and argument held telephonically due to the COVID-19 pandemic.  The Court found that the plaintiff merely parroted the language of the claim and provided eighteen pages of document screenshots that “lack any supporting commentary.”  It also found the citation to nine source code files, without specific source code citations, failed to provide an adequate level of specificity required by the local rule.  The challenged infringement contentions were stricken with leave to amend, and the Court ordered that plaintiff shall pay defendant’s reasonable attorney’s fees and costs incurred in bring the motion, up to a total of $15,000. (Case No. 3:20-cv-08103; December 17, 2021).

Magistrate Judge Donna M. Ryu

Google LLC v. Sonos, Inc. – The U.S. District Court for the Northern District of California in San Francisco issued a Notice of Reference And Order re: Discovery Procedures, referring the matter to the Magistrate Judge for resolution of all discovery matters. The Court noted for the parties that the Northern District of California has issued orders affecting courtroom procedures and motion practice in light of the COVID-19 pandemic, including General Order 78, and indicated that to “the extent that the procedures in this discovery order conflict with General Order 78 or future orders relating to the COVID-19 pandemic, the General Orders control.” (Case No. 3:20-cv-06754, presiding before District Judge William H. Alsup; January 10, 2022).

Western District of Missouri (St. Joseph)

District Judge Stephen R. Bough

Provisur Technologies, Inc. v. Weber, Inc. et al. – The U.S. District Court for the Western District of Missouri in St. Joseph issued an Order Concerning Depositions Of Foreign Citizens Resident In The European Union, providing agreed to procedures concerning depositions of foreign citizens resident in the European Union. In view of defendant’s representation that due to the ongoing COVID-19 pandemic they will not make certain witnesses available in the United States, in addition to certain legal restrictions on the taking of depositions in European jurisdictions, the parties agreed “that foreign citizens resident in the European Union, including in Germany, or elsewhere in the European Union, who have been noticed for deposition or are designated as witnesses in response to the Notices of Corporate Deposition in the captioned cases may voluntarily sit for videotaped live interviews in Frankfurt am Main, Germany.” The parties stipulated and agreed that the interview transcripts shall be understood as, and treated in the same way as, a “deposition” as that term is used in Fed. R. Civ. Pr. Rule 30. (Case No. 5:19-cv-06021; December 13, 2021). 

District of New Jersey (Camden)

Magistrate Judge Sharon A. King

Actelion Pharmaceuticals Ltd et al. v. MSN Pharmaceuticals Inc. et al. – The U.S. District Court for the District of New Jersey in Camden entered a Consent Order, granting an extension of fact discovery for the limited purpose of completing depositions that were previously noticed under Rule 30(b)(1) and 30(b)(6) and for a modest modification of the Scheduling Order. The defendant had served Rule 30(b)(1) and 30(b)(6) deposition notices seeking depositions of each of the named inventors and corporate designees of plaintiff, who reside in the country of Japan, where the ability to participate in depositions is subject the U.S.—Japan bilateral Consular Convention of 1963 and other applicable U.S. and Japanese laws and regulations and has been limited due to the health and safety risk associated with the COVID-19 pandemic. The plaintiff agreed to make one named inventor of the patent-in-suit available as a corporate representative for a deposition to occur on a mutually agreed-upon date in a manner that complies with the applicable U.S. and Japanese conventions and laws and regulations, and can protect the health and safety of the witness. (Case No. 1:20-cv-03859, presiding before District Renee Marie Bumb; December 15, 2021).

District of New Jersey (Newark)

Magistrate Judge Andre M. Espinosa

Razor USA LLC et al v. DGL Group, Ltd. – The U.S. District Court for the District of New Jersey in Newark entered a Stipulated Order Governing The Taking Of Remote Depositions, agreed to by the parties because COVID-19 “continues to affect the operation of the judicial system and to affect the ability of individuals to travel and to congregate . . . [and] limiting travel and promoting social distancing among witnesses and the attorneys in [the] case are legitimate reasons for remote depositions pursuant to Federal Rule of Civil Procedure 30(b)(4).”   (Case No. 2:19-cv-12939, presiding before District Judge John Michael Vazquez; December 28, 2021).


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Patent Specific Hearings/Motions

Western District of Texas (Austin)

District Judge Lee Yeakel

Media Chain LLC v. Roku Inc. - The U.S. District Court for the Western District of Texas in Austin granted defendants’ Motion To Transfer Venue under 28 U.S.C.§ 1404(a) from the Western District of Texas to the Northern District of California, finding the fact that plaintiff chose to file suit in Austin is not enough to outweigh the stated conveniences of litigating the case in the Northern District of California. The Court noted that it “does not find COVID-19 restrictions relevant to consider in determining whether transfer is warranted under Section 1404(a)” since they vary by jurisdiction and are in “a constant state of flux throughout the country.”  (Case No. 1:21-cv-00027; December 7, 2021).

Western District of Texas (Waco)

District Judge Alan D. Albright


Express Mobile, Inc. v. Expedia, Inc., et. al.  – The U.S. District Court for the Western District of Texas in Waco granted defendants’ Motion For Transfer To The Austin Division under 28 U.S.C.§ 1404(a), finding that the defendant had shown that the Austin division is a clearly more convenient forum. As part of its analysis, the Court found the Administrative Difficulties Flowing from Court Congestion factor to be neutral noting that since the parties briefing, during which defendant argued “the Austin Division is slower because it has not had a jury trial since March 2020 and has a backlog of cases because of COVID-19,” the Austin Division has rescheduled and held jury trials. (Case No. 6:20-cv-00801; December 15, 2021).

Ocean Semiconductor LLC v. Renesas Electronics Corporation et al. – The U.S. District Court for the Western District of Texas in Waco denied defendants’ Motion To Transfer Venue under 28 U.S.C.§ 1404(a) from the Western District of Texas to the Northern District of California, reserving its decision on the alternative motion to transfer to the Austin Division for a later time.  The Court found that three of the eight factors were neutral, two factors favored transfer and three factors disfavor transfer, concluding that defendants failed to meet their burden to show that transfer to Norther District of California is clearly more convenient. In finding that the administrative difficulties public-interest factor disfavored transfer, the Court noted that the trial backlog in NDCA caused by courthouse closures due to the COVID-19 pandemic beginning in March 2020 could make the time to trial in the NDCA longer than anticipated, while it had conducted its first patent jury trial during the COVID-19 pandemic in October 2020 and has since conducted at least nine patent jury trials and 11 jury trials in 2021 alone. (Case No. 6:20-cv-01213; December 3, 2021).

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Central District of California (Southern Division—Santa Ana)

District Judge David O. Carter

Pinn, Inc. v. Apple Inc. – The U.S. District Court for the Central District of California’s Southern Division in Santa Ana reset the jury trial for September 14, 2021 at 9:00 a.m. (PDT) and the pretrial conference for June 14, 2021 at 8:30 a.m. (PDT), after discussing with counsel the Court's schedule and the “expected availability of a jury venire.” On September 3, 2021, the Court continued the jury trial to September 28, 2021 at 8:30 a.m. During a status conference held on September 10, 2021, the Court continued the trial to October 26, 2021 at 8:30 a.m. On October 20, 2021, the Court issued a Scheduling Notice continuing the jury trial date to January 5, 2022 at 8:30 a.m. On December 12, 2021, the Court granted in part defendant’s motion seeking to exceed the scope of adverse direct with respect to three witnesses that plaintiff intends to call in its case in chief, so that the three defense witnesses can complete their testimony in one appearance at trial.  The Court denied the motion with respect to two of the three witnesses, noting that defendant did not articulate specific concerns related to those witnesses potentially traveling and testifying twice. With respect to the third witness the Court granted the motion, including consideration of the witness’ “concern regarding increased family health risks due to travel is exacerbated by the emergence of the newest COVID-19 variant.” On December 28, 2021, “[f]or the purpose of COVID precautions,” the Court continued the trial to March 22, 2022. On December 29, 2022, the Court held a status conference via teleconference during which the parties jointly stipulated that they were prepared to move forward with the jury trial starting on January 18, 2022 at 8:30 a.m. The parties agreed to work in good faith to accommodate any legitimate witness requests relating to COVID-19 concerns, including the ability to appear by video if necessary and that they will inform the Court of any further COVID-19 issues.  (Case No. 8:19-cv-01805; March 3, 2021, September 3, 2021, September 10, 2021, October 20, 2021, December 12, 2021, December 28, 2021 and December 29, 2021).

District Judge James V. Selna 

Fisher and Paykel Healthcare Limited v. Flexicare Incorporated – The U.S. District Court for the Central District of California in Santa Ana granted plaintiff’s motion to continue the current June 1, 2021 jury trial date until October 21, 2021, due to the COVID-19 pandemic.  The Court noted that Orange County is presently in the purple zone, and would have to move two zones to the yellow zone before the Court could begin conducting jury trials under the present General Order, which was deemed “unrealistic in light of the present trial date.” The Court also noted a number of other factors that “compel a continuance”: 1) criminal cases take priority under the Speedy Trial Act and since the Court has not tried a criminal case in over a year, there is a backlog which must be addressed once the Court opens for jury trials; 2) there are many civil cases older than this case to be tried and there is no basis to advance this case ahead of other civil litigants who have also been waiting; and 3) there is a seven-week lead time to summons a jury.  The parties were also advised that there is no assurance that the trial will proceed on October 21, 2021 for the same reasons. In accordance with the Court’s instructions at the parties’ August 9, 2021 status conference, the parties submitted a Joint Status Report Regarding Trial Scheduling after a meet and confer to discuss alternative dates for trial in view of current travel restrictions for both parties’ witnesses. The plaintiff advised the Court that several of its witnesses, including the named inventors, who are located in New Zealand could be impacted by “a current outbreak of COVID-19 infections in New Zealand, and there is no timeline or clarity from the New Zealand government as to when existing travel restrictions will be lifted or adjusted so that individuals could travel to California for trial and return home to New Zealand without disruption.” The plaintiff also indicated that New Zealand is moving towards a “phased reopening” that will be dependent on vaccination rates and the potential impact of additional variants of COVID-19, but that it expects to be able to proceed with trial in March of 2022. Likewise, defendant indicated it expects to proceed with trial in March 2022, but it continues to monitor COVID-19-related travel restrictions that may affect its witnesses located in the United Kingdom. On December 1, 2021, the Court denied plaintiff’s Motion To Strike Prior Art References. In the Order, the Court advised the parties to not use the “pandemic-related delay” to raise further preexisting issues and it encouraged the parties to meet and confer to resolve such issues, as informed by the Court’s prior rulings, with the goal of working toward efficient trial preparation. On December 6, 2021, the Court set the jury trial for March 22, 2022 at 8:30 a.m. (Case No. 8:19-cv-00835; February 24, 2021, October 15, 2021, December 1, 2021 and December 6, 2021).

Central District of California (Western Division—Los Angeles)

District Judge Andre Birotte, Jr.

Nomadix Inc. v. Guest-Tek Interactive Entertainment Ltd. – The U.S. District Court for the Central District of California in Los Angeles granted defendant’s Ex Parte Application to Permit Remote Trial Testimony of two witnesses. With respect to the first witness, the Court noted that the request was unopposed and “there is good cause to allow his remote testimony because [the witness] lives in Thailand and would face burdensome COVID-19 travel and quarantine restrictions if he traveled to Los Angeles for trial.” In the case of the second witness the plaintiff did oppose the request, but the Court decided to allow the remote testimony considering “the pandemic-related circumstances” that made the originally designated witness from Germany unavailable to testify, necessitating calling the second witness as an alternative witness, in combination with “the evolving circumstances of the COVID-19 pandemic, [the witness’] fall teaching schedule, and the ability of modern technology to facilitate [the] foundational testimony.” On December 8, 2021, the Central District of California jury returned its verdict finding that defendant breached the patent licensing agreement by failing to pay royalties, finding plaintiff was entitled to damages in the amount of $ 6,500,000 for that breach, but also finding that plaintiff was in breach of a separate Memorandum of Understanding, entitling defendant to damages of $ 2,500,000. (Case No. 2:16-cv-08033; August 30, 2021 and December 8, 2021).

District Judge John A. Kronstadt

Epistar Corp. v. Lowe's Companies Inc. et al. – The U.S. District Court for the Central District of California in Los Angeles held a Status Conference on October 7, 2021 via zoom in which the Court conferred with the parties about beginning the trial on October 19th instead of October 26,, 2021, which it indicated “will likely be unavailable due to the limited scheduling of jury trials during the pandemic.” During a Status Conference held by videoconference on November 9, 2021, the Court confirmed that the jury trial will start on November 16, 2021 at 8:30 a.m. On December 6, 2021, the Central District of California jury returned its verdict that the asserted claims of the patents-in-suit were proven to be willfully infringed and that the plaintiff was entitled to reasonable royalty damages of $2,121,000.00 as a one-time payment.  (Case No. 2:17-cv-03219; October, 2021, November 9, 2021 and December 6, 2021). 

Northern District of California (Oakland)

District Judge Jon S. Tigar

Droplets, Inc. v. Yahoo, et al. – The U.S. District Court for the Northern District of California in Oakland requested the parties to submit a Supplement To The Joint Pretrial Statement consistent with the rulings made at the pretrial conference held on August 13, 2021.  The Statement included a requirement that, unless excused by the Court, “all party-affiliated trial participants (including attorneys, staff, IT Specialists, consultants, party witnesses and party representatives) shall either: (1) be vaccinated for COVID-19 and provide proof of vaccine or (2) test negative for COVID-19 within five days prior to their first appearance at the courthouse (including appearance at voir dire or other proceedings) with confirmed negative results and provide confirmed negative results, prior to entering the courthouse.” Any unvaccinated participant would be required to be tested weekly throughout the trial and provide negative test results each week. The Statement also included the parties’ positions regarding vaccination of jurors, with the plaintiff stating that “the time to object to the impact of a vaccination requirement on the jury pool will be once data about the venire panel in attendance, from which the jury is to be selected, has been made available”, and the defendant agreeing with “the Court’s suggestion to excuse all unvaccinated jurors from jury service for this trial.” The defendant requested, alternatively, that should plaintiff object to sitting only vaccinated jurors that the Court “require any unvaccinated jurors to present a negative Covid-19 test either each week of jury service or until the Delta variant of Covid-19 subsides within the Oakland Division.” The jury trial is set to begin on September 13, 2021. On September 2, 2021, the Court issued an Order Continuing Trial And Setting Case Management Conference granting plaintiff’s unopposed motion for a continuance.  The Court indicated that in light of the ruling it “need not and does not now reach the other issues set forth in [plaintiff’s] motion regarding the composition of the jury or the presence of unvaccinated persons in the courtroom.” In particular, as part of its motion, the plaintiff argued that “proceeding now and excluding unvaccinated jurors would violate the Seventh Amendment and the Jury Selection Act.” The Court indicated that it intended to reset the trial for March 7, 2022 as requested by the parties. On December 22, 2021, entered the Proposed Order Memorializing Rulings From First Pretrial Conference that had been held on August 13, 2021. On January 3, 2022, the Court held a hearing in which trial procedures and trial viability were discussed, and the jury trial was vacated. The parties were ordered to meet and confer about the scheduling of a new jury trial. (Case No. 4:12-cv-03733; August 13, 2021, August 20, 2021, September 2, 2021, December 22, 2021 and January 3, 2022).

Southern District of California (San Diego)

District Judge Cathy Ann Bencivengo

NuVasive Inc. v. Alphatec Holdings Inc. – The U.S. District Court for the Southern District of California in San Diego issued an Order vacating the current trial schedule due to “the current state of the COVID-19 pandemic.” The jury trial had been set to begin on January 10, 2022. The parties were directed to provide the Court with a joint proposal for new trial dates and related deadlines. (Case No. 3:18-cv-00347; January 3, 2022).

District of connecticut (Bridgeport)

District Judge Stefan R. Underhill

Floodbreak, LLC v. Art Metal Industries, LLC et al.  – The U.S. District Court for the District of Connecticut in Bridgeport issued a Conference Memorandum and Order after holding a status conference, in part to address the impact of the omicron surge of the COVID-19 pandemic on the forthcoming jury trial. The Court advised the parties of its intent to continue the trial, which was currently scheduled to begin on January 11, 2022, due to the risk to public safety of spiking COVID-19 positivity rates in Connecticut. The Court indicated that, pursuant to the Court’s COVID-19 General Order re: Jury Selections and Trials, the jury trial is postponed until further order of the Court. (Case No. 3:18-cv-00503; January 5, 2022).

District of Delaware (Wilmington)

District Judge Maryellen Noreika

Chugai Pharma. Co., Ltd. a/k/a Chugai Seiyaku Kabushiki Kaisha v. Alexion Pharma., Inc. – The U.S. District Court for the District of Delaware in Wilmington granted the defendant’s request to continue the jury trial, currently scheduled to start on January 3, 2022, due to the COVID-19 pandemic. The defendant raised a number of “new developments” that occurred after the Court held a pretrial conference in the matter on December 14, 2021. In particular, the defendant noted that “[o]ver the last few days, scientists have recognized that the U.S. is experiencing a new outbreak of COVID-19, triggered by the new Omicron variant.” In order to protect the health of potential jurors, Court personnel, and witnesses and attorneys who are traveling all over the U.S., Europe, and Japan, the defendant requested that the Court postpone the trial since the Omicron variant is believed to be more transmissible than previous COVID strains and “the Center for Disease Control is predicting a surge in infections as soon as January.” The jury trial was postponed and reset to commence on either February 14th or 28th, 2022, provided the defendant did not ask for a later date. On January 5, 2022, the Court issued an Oral Order resetting the 5-day jury trial for February 14, 2022 at 9:30 a.m. (Case No. 1:18-cv-01802; December 27, 2021 and January 5, 2022).


District of Massachusetts (Worcester)

District Judge Timothy S. Hillman

Inline Plastics Corp. v. Lacerta Group, Inc. – The U.S. District Court for the District of Massachusetts denied defendant’s Motion To Continue the trial. The Court indicated that it will assess the COVID situation after the new year and then decide whether it will be safe to conduct the jury trial on January 31, 2022. Counsel were directed to confer with their clients to determine whether they have any objection to seating only vaccinated jurors. The Court further noted that if the case was continued the next available date is January 23, 2023. (Case No. 4:18-cv-11631; December 23, 2021).

Eastern District of Michigan (Flint)

District Judge Matthew F. Leitman

Ford Motor Company v. Versata Software, Inc., et al. – The U.S. District Court for the Eastern District of Michigan in Flint terminated motions in limine filed by both plaintiff and defendant because ”developments in the case” since their filing may necessitate revisions or supplements to the motions. The Court noted that it had allowed the defendant to file a supplemental expert report and permitted additional expert discovery that might result in additional motion practice.  It also recognized that, due to the COVID-19 pandemic, the Court has temporarily suspended all jury trials and adjourned all dates in this action and while it intends to schedule the case for trial at the first available opportunity, it does not know when it will be able to do so. The Court also indicated that it will hold a status conference with the parties to discuss a schedule for filing renewed motions in limine after completion of the additional discovery, and once the Court is in a better position to provide firm dates for a pretrial conference and trial. On December 10, 2021, the Court held a status conference during which the trial was set to commence on or about March 2, 2022. On December 22, 2021, the Court issued an Order Adjourning Trial Schedule And Addressing Future Trial Schedule, adjourning the trial date and other previously scheduled dates after being contacted by counsel for both parties jointly by email to request an adjournment of the scheduled trial date due to irreconcilable scheduling conflicts of critical expert witnesses and the parties’ lead trial counsels. The Court stressed to counsel that “it does not have any flexibility to pick a particular trial date for this matter (or any civil matter) that will be most convenient for the parties, witnesses, and counsel . . . [and], with respect to the next-assigned trial date, this case will proceed to trial on that date regardless of any scheduling conflicts that may exist with the parties’ counsel or witnesses.”  The Court further instructed the parties that they “should therefore have multiple lead trial counsels prepared to try the case on that date and be prepared to present witness testimony by video if witnesses have scheduling conflicts that prevent them from testifying live at trial.” (Case No. 2:15-cv-10628; February 25, 2021, December 10, 2021 and December 22, 2021).

District of Nevada (Las Vegas)

Chief Judge Miranda M. Du

Composite Resources, Inc. v. Recon Medical, LLC – The U.S. District Court for the District of Nevada in Las Vegas granted plaintiff’s motion to amend the pretrial order to allow the listing of a witness that was purportedly inadvertently omitted. The Court found that granting the motion would not cause substantial injury to defendant or inconvenience for the Court, and denying the motion would result in injustice because plaintiff would be unable to put on its damages expert at trial. As part of its analysis of the four factors to be considered, the Court found “allowing amendment will not adversely impact the trial, which has been rescheduled several times due to the COVID-19 pandemic and is currently set for November 29, 2021.” On October 22, 2021, the Court entered a Minute Order indicating that the Court is in the process of “resuming trials” and that as cases “resolve or move off the [the] trial stack, your placement on that stack will move up.” On November 8, 2021, the Court denied the defendant’s motion to dismiss the case under the anti-claim-splitting doctrine, deciding to move forward with the jury trial regarding the request for injunctive relief on the patent infringement claim as opposed to requiring plaintiff to seek the relief in bankruptcy court, after the trial had been delayed because of the COVID-19 pandemic during which time the defendant filed for bankruptcy protection. On December 2, 2021, the District of Nevada jury returned its verdict, finding that the accused products infringed any of plaintiff’s patents. (Case No. 2:17-cv-01755; June 7, 2021, October 22, 2021, November 8, 2021 and December 2, 2021).

District Judge Joy Flowers Conti

Sherwin-Williams Company V. PPG Industries, Inc.– The U.S. District Court for the Western District of Pennsylvania in Pittsburgh issued an Order continuing the jury trial, currently set for February 22, 2021, after defendant filed a Motion To Continue Trial Date. Defendant submitted that the COVID-19 pandemic continues to worsen and requires the trial to be continued “until jury trials can resume with safe and equitable procedures.” Defendant noted that it conferred with counsel for plaintiff regarding its motion, who indicated that “because this case has been pending for a very long time, it would like a resolution as soon as practical and safe . . . [but] defers to the Court with regard to whether that is on the currently scheduled date or some date thereafter.” On September 22, 2021, the Court issued an Order setting the jury trial for November 29, 2021 through December 10, 2021 at 9:30 a.m. The Court also set a telephonic status conference for September 30, 2021 at 11:00 a.m. to discuss scheduling matters and resolution of outstanding issues prior to trial. On September 30, 2021, the Court issued an Order rescheduling the jury trial for January 25, 2022 through February 11, 2022 at 9:30 a.m. On January 5, 2022, the Court granted defendant’s Motion To Continue Trial Date due to the Omicron variant of COVID-19 which defendant argued, based on the current rate of infection, “makes it almost certain that if the Court commences a jury trial on January 25, numerous persons important to the trial will contract COVID-19 and infect other persons involved with the trial.” The Court indicated that jury selection will proceed on February 22, 2022 with trial to follow, but the Court will try to move jury selection and trial to February 21, 2022, if possible. (Case No. 2:17-cv-01023; January 7, 2021, September 22, 2021, September 30, 2021, and January 5, 2022).

Eastern District of Texas (Marshall Division)

Chief District Judge J. Rodney Gilstrap

Garrity Power Services LLC v. Samsung Electronics Co. Ltd. et al. The U.S. District Court for the Eastern District of Texas’s Marshall Division issued an Order On Pretrial Motions And Motions In Limine, memorializing the Court’s rulings announced during the Pretrial Conference. In the Order there were a number of agreed upon motions in limine, including one related to suggesting fault of any party regarding timing of trial, jury service, inconvenience to jurors as related to the pandemic and another related to derogatory, pejorative or prejudicial statements about the defendant as a foreign company or the origins of COVID-19. On December 29, 2021, the Court granted the defendants’ Motion for Continuance, seeking a continuance of the January 3, 2021 trial date in light of their technical expert witness testing positive for COVID-19. The Court removed the case from its January 3, 2022 trial schedule and indicated that a future jury selection date will be set by a subsequent Order.  (Case No. 2:20-cv-00269, December 10, 2021 and December 29, 2021).

Western District of Texas (Waco)

District Judge Alan D. Albright 

USC IP Partnership, LP v. Facebook, Inc. The U.S. District Court for the Western District of Texas in Waco issued a Notice of Trial Procedures, including COVID-19 Safety Protocols, for the jury trial to be held on December 13, 2021.  In the Proposed Joint Final Pretrial Order, the parties stipulated that they would not “introduce any arguments or references to religious or political beliefs, race, ethnicity, gender, national origin, sexual orientation, or health (including COVID-19 vaccination status) of a Party, witness, or attorney, or commenting on related topics including political issues/leanings and/or the COVID-19 pandemic. The parties also set forth procedures for potential witness disruptions due to the COVID-19 pandemic, including agreement that “in the event any witness who is scheduled and disclosed to appear live to testify, becomes unable to do so due to COVID-19 illness or travel restrictions (whether imposed by the United States or by the witness’ country of origin) or otherwise, the witness may be called via live videoconference.” In a proposed jury instruction, the parties noted that “some of the video recordings of witnesses you see may be of lower quality because the witnesses had their depositions taken from home . . . due to COVID-19 restrictions in place at the time and . . . [that the jury] should not hold the quality of the video, the location of the witness, or any other circumstances arising from COVID-19 restrictions against either party.” On December 6, 2021, after hearing arguments during the final pretrial conference the Court determined that it would grant the defendant’s motion for summary judgement for patent ineligibility under 35 U.S.C. 101, and it cancelled the jury trial.  (Case No. 6:20-cv-00555; November 11, 2021, December 3, 2021 and December 6, 2021).

The United States Court of Federal Claims

Court of Federal Claims Judge Patricia E. Campbell-Smith

University of South Florida Board of Trustees v. United States of America – The U.S. Court of Federal Claims issued an Order on November 2, 2021 with respect to the pretrial conference which was previously scheduled to held on November 8, 2021.  The Court offered the parties the opportunity, due to the on-going COVID-19 pandemic concerns, to participate either in-person or virtually for the pretrial conference. The court noted that the parties should keep in mind that no more than ten people are permitted in the courtroom at any time, and the court requires three participants in the room. The court indicated that it does not oppose the virtual participation of multiple persons for each party at the pretrial conference, but will require any non-speaking virtual participants to turn off their video feed and ensure their microphone is muted unless called on by the court. The Court also informed the parties that the courthouse is currently closed to members of the public, due to the COVID-19 pandemic restrictions, and it “anticipates that there will be much material to cover during the pretrial conference to ensure a smooth trial in the hybrid courtroom and virtual environment that the court anticipates for the trial in this matter as a result of the restrictions” On November 9, 2021, the Court issued a Trial Management Order after holding a pretrial conference memorializing the discussion and understanding reached, including COVID-19 Protocols. The Court addressed the COVID-19 Protocols which include: 1) requiring  counsel of record for each party to orally certify at the beginning of each day of the proceeding that any in-person participants (their colleagues, staff, and clients) are asymptomatic for COVID-19; 2) a limitation that no more than ten people may be in the courtroom at any time, and since the court will require three people in the room, the parties may have between them a total of seven people in the courtroom at one time; 3) requiring counsel to submit, for contact tracing purposes, a list of in-person participants each day, including their names, titles, and contact information; 4) a mask requirement in the courthouse and the courtroom at all times; and 5) a limitation of four people at a time on the elevator. The Order also included Attorney Declaration and Participant Declaration attachments representing an acknowledgment of having read the trial management order and agreement to abide by the procedures, terms, and conditions as set forth therein. The Court also noted that it “will allow additional time beyond 5:00 p.m., if required and as possible, given the COVID-19 restrictions in place, for the continuity of witness testimony or another compelling reason.”  Trial will be held, with the parties presenting both virtually by Zoom for Government and in-person for five days, beginning on December 6, 2021. On December 2, 2021, the Court issued an Order concluding that proceeding with the trial virtually is prudent  “given the remaining uncertainty regarding when and if a funding arrangement will be finalized before next week and the lingering uncertainty regarding Covid-19 protocols caused by discovery of the omicron variant in the United States.” The Court further advised the parties that it was amenable to delaying the start of the trial to December 7, 2021, if the change to a virtual format complicates preparation for either party.  (Case No. 0:15-cv-01549; November 2, 2021, November 9, 2021 and December 2, 2021).

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