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New This Week (May 7, 2021)

Menu: Scheduling/Case Management | Discovery | Patent Specific Hearings/Motions | Mediation/Settlement Conferences | Trial

Scheduling/Case Management 

Central District of California (Western Division—Los Angeles)

District Judge Michael W. Fitzgerald

B/E Aerospace, Inc. v. C&D Zodiac Inc. et al. – The U.S. District Court for the Central District of California’s Western Division in Los Angeles issued an Order granting plaintiff’s Motion To Amend Complaint, after having read and considered the papers filed in connection with the Motion and holding a telephonic hearing on April 26, 2021, pursuant to General Order 21-03 arising from the COVID-19 pandemic. (Case No. 2:19-cv-01480; April 27, 2021).

Central District of California (Southern Division—Santa Ana)

District Judge John A. Kronstadt

Linksmart Wireless Technology, LLC v. Gogo Inc. et al. – The U.S. District Court for the Central District of California’s Southern Division in Santa Ana issued an Order advising counsel that the hearing set for April 26,2021 will proceed by telephone only, with no in-person appearances allowed, “in light of the current limitations in place during the COVID-19 pandemic.” (Case No. 8:18-cv-00654, case presiding before; April 22, 2021).

Southern District of California (San Diego)

District Judge Roger T. Benitez

Golden Eye Media USA, Inc. v. Trolley Bags UK Ltd. et al. – The U.S. District Court for the Southern District of California in San Diego issued an Order granting the Joint Motion To Telephonically Appear At The Status Conference, allowing counsel for defendants to telephonically appear at the upcoming status conference given the COVID-19 pandemic health crisis. (Case No. 3:18-cv-02109: April 19, 2021).

 

Southern District of Texas (Houston Division)

District Judge Andrew M. Edison

DynaEnergetics Europe GmbH et al v. Vigor USA, LLC – The U.S. District Court for the Southern District of Texas’s Houston Division issued an Order setting the initial scheduling conference for 9:30 a.m. on June 17, 2021. The Court noted that as a general rule, it requires counsel to attend initial scheduling conferences in person, but given the COVID-19 pandemic’s “devastating impact on our society, that general rule is obviously suspended for the June 17, 2021 initial scheduling conferences.” The Court further indicated that “in an effort to maximize modern technology, [it] will conduct the pretrial conferences by videoconference using the platform Zoom.” The counsel for the parties were also advised that they are not required to wear “formal courtroom attire during the videoconference . . .however, [they are] required to wear clothes.” (Case No. 4:21-cv-00283; April 29, 2021).

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Discovery

District of Delaware (Wilmington)

 

District Judge Colm F. Connolly

Taiho Pharmaceutical Co., Ltd. et al v. MSN Laboratories Private Ltd. et al. – The U.S. District Court for the District of Delaware entered a Stipulated Order extending the deadline for the completion of fact discovery for the limited purpose of allowing fact depositions of defendants to be completed. The parties had indicated that they are working to confirm these fact depositions that have been delayed as a result of the COVID-19 pandemic. (Case No. 1:19-cv-02342; April 19, 2021).

 

District of New Jersey (Trenton)

Magistrate Judge Douglas E. Arpert

Amgen, Inc. v. Sandoz, Inc., et al. – The U.S. District Court for the District of New Jersey in Trenton granted the parties’ Stipulation and Proposed Order Regarding Foreign Depositions, which permits corporate representatives under Rule 30(b)(6) as well as fact witnesses under Rule 30(b)(1) to appear for depositions by way of video, in light of travel restrictions resulting from “government orders and health concerns concerning the global COVID-19 pandemic.” A telephonic Status Conference is set for May 28, 2020 at 11:30 a.m. (EDT).  On April 19, 2021, the Court issued a Request For International Judicial Assistance (Letter of Request) - Permission Of Taking Of Evidence Under Hague Evidence Convention, requesting assistance of the Courts of Switzerland to compel oral testimony from an expert who submitted a report in the case. Trial is scheduled for June 14, 2021. The Letter of Request seeks the remote trial testimony of the expert pursuant to the Hague Convention, in the event that trial will be conducted remotely, or that the expert cannot travel to the United States due to COVID-19 pandemic related restrictions. (Case No. 3:18-cv-11026, presiding before District Judge Michael A. Shipp; April 23, 2020, May 22, 2020 and April 19, 2021).

Western District of Texas (Waco)

District Judge Alan D. Albright

H-E-B, LP v. Wadley Holdings, LLC, d/b/a nICE Coolers et al – The U.S. District Court for the Western District of Texas in Waco issued a discovery order requiring defendant to produce relevant requested discovery which is not privileged to the plaintiff within two weeks.  The discovery was originally thought to be on a U.S. server, but now believed to be in an office in China that has been shut down due to the COVID-19 pandemic. (Case No. 6:20-cv-00081; April 20, 2021).

District of Utah (Central Division—Salt Lake City)

Senior District Judge Clark Waddoups

Polar Electro Oy v. Suunto Oy et al. – The U.S. District Court for the District of Utah’s Central Division in Salt Lake City granted plaintiff’s Motion For Leave to Supplement a Technical Expert Report, finding that the supplementation was appropriate.  As part of its timeliness analysis, the Court found that the report was not untimely based on the totality of the circumstances including that the expert evaluated the report submitted on November 6, 2020, designed and conducted a test, and wrote a supplemental report by January 6, 2021 “despite his employment as a professor, COVID conditions, and intervening holidays for Thanksgiving, Christmas, and the New Year.”  (Case No. 1:17-cv-00139; April 9, 2021).

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Patent Specific Hearings/Motions

District of Delaware (Wilmington)

District Judge Maryellen Noreika

PureWick Corporation v. Sage Products LLC  The U.S. District Court for the District of Delaware in Wilmington denied defendant’s Motion for Partial Stay Pending Instituted Inter Partes Review, in which the defendant argued, in part, that the case was in a relatively early stage with trial “still more than a year away, even assuming there will be no delays due to the ongoing Covid-19 pandemic.” The defendant further argued that the pandemic will “likely” cause trial dates to be extended. (Case No. 1:19-cv-01508; May 4, 2021).

Northern District of Illinois (Eastern Division—Chicago)

Magistrate Judge Gabriel A. Fuentes

Ellenby Technologies, Inc. v. FireKing Security Group et al. – The U.S. District Court for the Northern District of Illinois’s Eastern Division in Chicago issued a Memorandum Opinion And Order denying defendants' motion to reconsider an earlier order denying without prejudice defendants' motion to stay pending their petition for inter partes review. As part of its analysis, the Court found that discovery should proceed given plaintiff’s interest in moving the matter closer to a determination of patent rights, despite the possibility that IPR may be instituted in August 2021, and “even though a trial date has yet to be set during pandemic conditions in which civil trial dates are commonly not set as promptly as they were before the pandemic.”  (Case No. 1:20-cv-02253, presiding before District Judge Steven C. Seeger; April 13, 2021).

 

Western District of Texas (Waco)

District Judge Alan D. Albright

Broadband iTV, Inc. v. DISH Network LLC -- The U.S. District Court for the Western District of Texas in Waco denied defendant’s Motion To Transfer Venue under 28 U.S.C.§ 1404(a) from the Waco Division of the Western District of Texas to the District of Colorado, or in the alternative, to the Austin Division of the Western District of Texas.  As part of its analysis of the factor regarding administrative difficulties flowing from court congestion, the Court considered the time to trial noting that the average time to trial in Colorado for patent cases was over 40 months (pre-COVID-19 pandemic) while the trial in Texas is anticipated to held about 52 weeks after the Markman hearing.  The Court also found that defendant did not provide any evidence that the scheduling of this case has been impacted by the COVID-19 pandemic, noting that the Markman hearing was held on November 13, 2020 in the middle of the pandemic, and the Court “has demonstrated its capability of conducting in-person jury trials in a safe and efficient manner in the COVID-19 pandemic . . . [holding] its first patent jury trial in October 2020 . . . [and] three more in-person jury trials in the first quarter of 2021.” And, without evidence that the District of Colorado is fully open to this date or is capable of safely holding in-person jury trials in the pandemic, the Court found that a transfer to the District of Colorado would cause greater delay. With respect to the alternative request for intra-district transfer, the Court denied the request without prejudice indicating that the Austin courthouse remains closed due to the Covid-19 pandemic, and it is not clear whether it will be open for jury trial in the near future. The Court did instruct defendant that it may refile its Motion to Transfer to the Austin Division if circumstances change when it comes close to the trial. (Case No. 6:19-cv-00716; April 20, 2021).

The California Institute of Technology v. HP Inc. f/k/a Hewlett-Packard Company The U.S. District Court for the Western District of Texas in Waco denied, without prejudice, defendant’s Opposed Motion For Intra-district Transfer Of Venue under 28 U.S.C.§ 1404(a) from the Western District of Texas in Waco to the Austin Division.  The defendant acknowledged that the Austin Division is not currently holding trials due to the COVID-19 pandemic, but argued that that the Austin courthouse should reopen well before the case reaches trial noting that the closure is scheduled only until April 30, 2021, vaccinations are already widely available in Texas, and the Court has continued to set trial dates in Austin since the pandemic. Defendant was instructed to re-file the motion “as trial approaches so the Court can evaluate if transfer is proper under §1404 and whether the Austin Courthouse will be open in time for this trial.” (Case No. 6:20-cv-01041; April 16, 2021).

EcoFactor, Inc. v. Ecobee, Inc. The U.S. District Court for the Western District of Texas in Waco denied defendant’s Motion To Transfer Venue under 28 U.S.C.§ 1404(a) to the Northern District of California, after considering the relevant factors and finding that defendant did not meet its significant burden to show that the Northern District of California is clearly more convenient. As part of its analysis of and determination that the public interest factor related to administrative difficulties flowing from court congestion weighed heavily against transfer, the Court said its default schedule would lead to a sooner trial date than the average time to trial in the Northern District of California.  The Court also noted that it is “fully open and equipped to safely conduct jury trials in the COVID-19 pandemic”, as shown by the Court having held its first patent trial in October 2020 and three other in-person jury trials in the first quarter of 2021, while the Northern District of California “suspended all criminal and civil jury trials until at least early 2021, and there is no evidence that any division in the NDCA is fully open to this date.” (Case No. 6:20-cv-00078; April 16, 2021).

EcoFactor, Inc. v. Google LLC f/k/a Google Inc. The U.S. District Court for the Western District of Texas in Waco denied defendant’s Motion To Transfer Venue under 28 U.S.C.§ 1404(a) to the Northern District of California, after considering the pertinent factors and finding that defendant did not meet its significant burden to show that the Northern District of California is clearly more convenient. As part of its analysis of and determination that the public interest factor related to administrative difficulties flowing from court congestion weighed heavily against transfer, the Court countered defendant’s argument that “the COVID-19 pandemic makes trial schedules even more speculative” by noting that the Court “has demonstrated its capability of conducting in-person jury trials in a safe and efficient manner in the COVID-19 pandemic.” The Court further noted that it held its first patent trial in October 2020 and has held three other in-person jury trials in the first quarter of 2021, while the Northern District of California “suspended all criminal and civil jury trials until at least early 2021, and there is no evidence that any division in the NDCA is fully open to this date.” (Case No. 6:20-cv-00075; April 16, 2021).

EcoFactor, Inc. v. Vivint, Inc. The U.S. District Court for the Western District of Texas in Waco denied defendant’s Motion To Transfer Venue under 28 U.S.C.§ 1404(a) from the Western District of Texas in Waco to the Northern District of California, after considering the relevant factors and finding that defendant did not meet its significant burden to show that the Northern District of California is clearly more convenient. As part of its analysis of and determination that the public interest factor related to administrative difficulties flowing from court congestion weighed heavily against transfer, the Court indicated that its default schedule “would lead to a trial date much sooner than the average time to trial in the NDCA . . . [and the Court] has demonstrated its capability of conducting in-person jury trials in a safe and efficient manner in the COVID-19 pandemic.” In particular, the Court noted that it held its first patent trial in October 2020 and has held three other in-person jury trials in the first quarter of 2021, while the Northern District of California “suspended all criminal and civil jury trials until at least early 2021, and there is no evidence that any division in the NDCA is fully open to this date.” (Case No. 6:20-cv-00080; April 16, 2021).

 

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Mediation/Settlement Conferences

District of Minnesota (St. Paul)

Magistrate Judge Tony N. Leung

Wilson, et al. v. Corning, Inc. – “In recognition of the current efforts locally and nationally to protect persons from unnecessary potential exposure to COVID-19,” the U.S. District Court for the District of Minnesota in St. Paul sua sponte ordered the parties’ in-person settlement conference scheduled for March 25, 2020, be conducted remotely. Due to the ongoing COVID-19 pandemic, the Court issued a Notice on January 13, 2021 stating that the settlement conference, currently set for February 10, 2021, will not take place in person.  Instead, the settlement conference “will take place by alternative means, such as participation by phone or video conference.” The Court further indicated that a party may request the conference be rescheduled if the party is not able “to participate by alternative means or have health concerns about such participation.” In an Amended Order For Settlement Conference, the conference was rest to be held on April 21, 2021 at 10:00 a.m. According to the Order each counsel who will actually try the case and each party, with settlement authority, must be physically present in the courthouse and “electronic availability shall not be deemed to be in compliance with [the] Order.” On March 19, 2021, the Court issued an Order indicating that due the COVID-19 pandemic the settlement conference will not take place in person but rather by alternative means. (Case No. 0:13-cv-00210, presiding before Senior District Judge Donovan W. Frank; March 17, 2020, January 13, 2021, January 21, 2021 and March 19, 2021).

Trial

District of Delaware (Wilmington)

District Judge Richard G. Andrews

ChanBond LLC vs. Cox Communications Inc. – The U.S. District Court for the District of Delaware in Wilmington issued an Order After Pretrial Conference adopting the Proposed Pretrial Order and indicating that the jury trial will begin on August 18, 2020 at 9:30 a.m. (EDT). The Court stated that “[t]he question of the viability of a civil jury trial a month and a half from now, complicated in this case by a multitude of witnesses being located within the United States but distant from Delaware, and the procedures that would be necessary should we be able to go forward, were left for another day.” In a July 15, 2020 Oral Order, the Court postponed the jury trial. In a October 13, 2020 Order, the jury trial was scheduled for May 17, 2021, at 9:00 a.m. The parties were instructed to submit a joint status report two months before the start of trial identifying any outstanding pretrial issues that need to be addressed, including whether they are having any witness availability issues. On April 19, 2021, the Court issued a docket entry resetting the jury trial to now begin on May 20, 2021.  The parties were also instructed to submit a joint letter regarding “the screening questions for the COVID questionnaires” and a letter regarding the number of attorneys counsel are requesting to be present in the courtroom. (Case No. 1:15-cv-00842; July 2, 2020, July 15, 2020, October 13, 2020 and April 19, 2021).

 

Middle District of Florida (Orlando)

District Judge Paul G. Byron

ParkerVision, Inc. v. Qualcomm Inc., et al. – The U.S. District Court for the Middle District of Florida in Orlando issued an Order indicating that “the Court’s trial calendar is congested with criminal trials through at least July 2021 with new indictments being returned every week . . . [and] cannot devote every remaining waking hour to this case since MDL cases have also returned to roost.” As such, the Court said it may take many months before the Court can adequately address “the deluge of motions filed” and  “it is extremely unlikely this case will be tried before November or December 2021, if then.”  On April 21, 2021, the Court issued a Notice cancelling the jury trial currently scheduled for the July trial term and the final pretrial conference scheduled for June 15, 2021, indicating they will be rescheduled at a later date. The (Case No. 6:14-cv-00687; March 26, 2021 and April 21, 2021).

 

Eastern District of Texas (Marshall Division)

Chief District Judge J. Rodney Gilstrap

Acorn Semi 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, summarizing the Court’s rulings from the bench made during the Pretrial Conference held on April 27, 2021.  As part of the Order, the Court granted-as-agreed the parties motion in limine that the parties will not make any pejorative references or statements about the defendant being a foreign or Korean company, or “make any suggestion that COVID originated from an Asian country.” Jury selection is set for 9:00 a.m. on April 30, 2021 and the jury trial is set for May 13, 2021 at 9:00 a.m. (Case No. 2:19-cv-00347, April 30, 2021).

Magistrate Judge Roy S. Payne

Team Worldwide Corporation v. Academy, Ltd. d/b/a Academy Sports & Outdoors – The U.S. District Court for the Eastern District of Texas’s Marshall Division granted in part the parties Joint Motion for Continuance seeking a 60-day continuance of the trial due to the COVID-19 pandemic. Among the reasons for the request, the parties expressed serious concern about the ongoing risk of COVID-19 infection and very few of the attorneys, staff, and witnesses are vaccinated, putting the majority of the trial teams at risk of infection from the travel necessary for both the pretrial conference and the trial. In addition, plaintiff noted that “the quarantine and testing requirements of all of the various states involved for [its] trial team – California, District of Columbia, Maryland, Texas, and Virginia – significantly complicate the ability of the trial team to travel at all for pretrial and trial at the current time . . . [and its] principal fact witness must travel from Taiwan and may face additional testing and quarantine requirements beyond that of the states involved.” The Court indicated it is prepared to continue the trial to the May jury term in order to facilitate the mediation and other issues raised in the motion, but that it was not prepared to grant a 60-day continuance. The pretrial conference currently scheduled for March 18, 2021 was continued to be reset during a telephone conference to be held on March 18, 2021. The Court issued an Order on March 16, 2021, setting jury selection for 9:00 a.m. on Friday, April 30, 2021. (Case No. 2:19-cv-00092, presiding before Chief District Judge J. Rodney Gilstrap; March 13, 2021 and March 16, 2021).

Eastern District of Texas (Texarkana Division)

District Judge Robert W. Schroeder, III

National Oilwell Varco, LP v. Auto-Dril, Inc. – The U.S. District Court for the Eastern District of Texas’s Texarkana Division denied Plaintiff’s Motion to Bifurcate, refusing to bifurcate the exemplary damages phase of trial from the liability and compensatory damages phase over concern of the potential prejudice from the jury hearing about plaintiff’s size compared to that of defendant. The Court found that bifurcation is not warranted because it would “not provide greater convenience for the Court or parties, particularly in light of the ongoing COVID-19 pandemic, enable the avoidance of prejudice, nor will it expedite and economize the trial.” On April 19, 2021, the Eastern District of Texas returned a verdict finding that plaintiff committed fraud by misrepresenting its ownership of a patent. The jury awarded damages of $5M to compensate for the harm that resulted from the fraud. (Case No. 5:15-cv-00027; April 8, 2021 and April 19, 2021). 

Western District of Texas (Austin)

District Judge Alan D. Albright

ESW Holdings, Inc. v. Roku, Inc. – The U.S. District Court for the Western District of Texas in Waco held a pretrial conference and issued an Order regarding trial procedure.  The Court indicated that it will seat 6 jurors and will allow 8 persons per side in the courtroom. In response to a request to issue a COVID-19 order, the Court said that it will not keep the testing component in the Order. The Court further noted that in a previous trial they had 4 air purifiers which were purchased by each side, stating that “if the parties in this case would like to do that it would be good.” On March 30, 2021, the Court issued an Amended Notice of Trial Procedures setting forth the trial procedures to be employed to “maximize safety and social distancing during trial.” The procedures included COVID-19 safety protocol such as the use of PPE and social distancing by party participants and safety procedures for the jury and other non-party participants, including temperature checks, a questionnaire and social distancing. The procedures also set forth additional proposed safety procedures such as the use of plexi-glass barriers, limits on the number of individuals inside the Courtroom (maximum of 8 party-affiliated trial participants per party), the provision of a live video feed accessible by certain party-affiliated individuals, the use of electronic exhibits with no physical exhibits handed to the jury without court approval and no bench conferences in the presence of the jury during trial.  The Court also issued an Order that the jury be sequestered, in light of the continuing response to the COVID-19 pandemic, from the time they report to the jury room each day until released by the Court at the end of each day. (Case No. 1-19-cv-00044; March 29, 2021, March 30, 2021 and April 1, 2021). 

Attachments:
WDTX 6:19-cv-00044-161
WDTX 6:19-cv-00044-ADA

 

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Western District of Texas (WACO)

District Judge Alan D. Albright

VLSI Technology LLC v. Intel Corporation – The U.S. District Court for the Western District of Texas in Waco issued an Amended Notice of Trial Procedures in anticipation of trial on April 12, 2021, including COVID-19 safety protocols to provide a safe environment for all parties and trial participants.  On April 21, 2021, the Western District of Texas jury returned its verdict, finding that the patents were not proven to be infringed. (Case No. 1-19-cv-00255; April 7, 2021 and April 21, 2021).

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