New Cases

New This Week (February 26, 2021)

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

Scheduling/Case Management 

Central District of California (Southern Division—Santa Ana)

Senior District Judge Ronald S.W. Lew

UPL NA, Inc. f/k/a United Phospherus, Inc. v. Tide Int’l (USA), Inc., et al. – The U.S. District Court for the Central District of California’s Southern Division in Santa Ana found good cause to modify the case schedule after considering the parties’ Joint Stipulation Concerning the Case Schedule, requesting to “modestly” extend several case deadlines.  The extension of certain discovery deadlines was requested, in part, to accommodate one of the expert witnesses who was admitted to the hospital after recently being diagnosed with COVID-19, and has been unable to work. On February 16, 2021, the Court granted the parties’ Joint Stipulation to Extend extending certain fact and expert discovery deadlines, to accommodate the production after the close of fact discovery of test data generated by defendant’s expert, “who suffered a severe case of Covid-19 and several related health setbacks which have prevented him from working for several weeks.”  (Case No. 8:19-cv-01201; January 22, 2021 and February 16, 2021).

District of Delaware (Wilmington)

Chief District Judge Leonard P. Stark

American Axle & Manufacturing, Inc. v. Neapco Holdings LLC et al. – The U.S. District Court for the District of Delaware in Wilmington granted in part plaintiff’s Motion To Stay Pending Filing and Disposition of Petition for Writ of Certiorari, granting a stay of the proceedings until the Supreme Court issues a decision granting or denying the petition.  As part of its analysis of the relevant factors, including whether discovery is complete and a trial date has been set, the Court acknowledged that discovery is complete, but noted that no trial date has been set and “the combination of potential further appellate review and the ongoing impact of the coronavirus pandemic would render it imprudent to set a trial date at this time.”  (Case No. 1:15-cv-01168; February 17, 2021).

Eastern District of New York (Brooklyn)

District Judge Margo K. Brodie

Group One Ltd. v. GTE GmbH et al. – The U.S. District Court for the Eastern District of New York in Brooklyn denied a motion to dismiss the claims against one of the defendants pursuant to Rule 12(b)(5) for insufficient service of process. The Court found that plaintiff was not required to attempt service through the Hague Convention before seeking alternative service via email, and that service by email of documents written in the English language was authorized and comports with due process. As part of its analysis, the Court stated that “[t]he current global pandemic provides further reason to find that service via email satisfies due process, as it is the most efficient method to accomplish service.” (Case No. 1:20-cv-02205; February 3, 2021).

District of Utah (Central Division—Salt Lake City)

Magistrate Judge Jared C. Bennett

Connor Sport Court International, LLC v. Shijiazhuang Enlio Sports Goods Co., Ltd. d/b/a Enlio Sports Goods – The U.S. District Court for the District of Utah’s Central Division in Salt Lake City granted plaintiff’s motion for alternative service of a Chinese defendant by sending a summons, the complaint, and a copy of the order to the email address identified in the motion. The plaintiff had previously been granted leave to serve the summons and complaint by email and personal service on Defendant’s assumed legal counsel in China, however plaintiff’s counsel was unable to serve as intended because, despite numerous delays due to the COVID-19 pandemic, it eventually learned that the presumed counsel for defendant could not be confirmed as counsel for defendant. (Case No. 2:18-cv-00778, presiding before District Judge David Barlow; February 24, 2021).

District Judge Howard C. Nielson, Jr.

C.R. Bard, Inc., et al. v. Medical Components, Inc. – The U.S. District Court for the District of Utah’s Central Division in Salt Lake City granted the parties’ Joint Motion And Stipulation To Continue a hearing, currently scheduled for February 10, 2021, to a convenient time after counsel for defendant has recovered from COVID-19. The additional time was being sought to ensure defendant’s counsel, with one attorney recovering from COVID-19 and a principal attorney just diagnosed with COVID-19, could “focus on recovering and getting healthy and to present well-prepared arguments to the Court.” In a separate Order issued on February 11, 2021, the Court granted the  parties’ Stipulated Motion to Extend Certain Deadlines related to expert discovery, finding good cause for the requested extensions. (Case No. 2:17-cv-00754; February 3, 2021 and February 11, 2021).

Magistrate Judge Daphne A. Oberg

C.R. Bard, Inc., et al. v. Medical Components, Inc. – The U.S. District Court for the District of Utah’s Central Division in Salt Lake City granted the parties’ Stipulated Motion to Extend Certain Deadlines with respect to claim construction and associated dispositive motions, finding good cause for the requested extensions based on the representation that one of defendant’s attorneys is recovering from COVID-19 and a different principal attorney was recently diagnosed with COVID-19. (Case No. 2:12-cv-00032, presiding before District Judge Robert J. Shelby; February 11, 2021).

Western District of Washington (Seattle)

District Judge Richard A. Jones

National Products Inc. v. Innovative Intelligent Products, LLC d/b/a GPS Lockbox The U.S. District Court for the Western District of Washington in Seattle granted in part defendant’s emergency motion to for a continuance of all outstanding court due dates for 180 days due to the passing of one of defendant’s two principals.  The defendant estimated that a continuance of 180 days was appropriated based on Washington estate and probate law, noting among other things that COVID-19-pandemic related delays “may add a week or two for the appointment of a personal representative.” After considering the arguments raised by the parties, the Court found good cause to continue the due dates set forth in the case schedule by 120 days.  (Case No. 2-20-cv-00428; February 23, 2021).

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Discovery

Central District of California (Los Angeles)

District Judge John A. Kronstadt

Core Optical Technologies, LLC v. Nokia Corp. et al. – The U.S. District Court for the Central District of California in Los Angeles granted the parties Motion For Entry of Supplemental Protective Order Re Source Code. According to the supplemental order, access to the produced source code shall be provided on stand-alone computers located at the silicon valley offices of the producing party’s outside counsel. The producing party was required to make reasonable efforts to make the source code available during the COVID-19 pandemic, and if an office is otherwise closed or access restricted due to COVID-19 guidelines, or government health restrictions, then the parties must in good faith identify another mutually convenient California office of outside counsel for the stand-alone computers. (Case No. 8:19-cv-02190; February 17, 2021).

District Judge Mark C. Scarsi

Voltstar Technologies, Inc. v. Superior Communications, Inc. et al. – The U.S. District Court for the Central District of California’s Western Division in Los Angeles granted plaintiff’s motion to amend its Initial Infringement Contentions, finding that plaintiff had not demonstrated reasonable diligence but defendants would not be prejudiced if plaintiff was allowed to amend. In finding that plaintiff had not been diligent, the Court rejected plaintiff’s argument that its inadvertent omission of two dependent claims from its contentions was not discovered earlier because the plaintiff’s review of the defendant’s invalidity contentions was delayed due to COVID-19 related issues. The Court noted that defendants served plaintiff with their invalidity contentions on March 9, 2020, yet Plaintiff did not serve its amended infringement contentions until September 16, over six months later, but independent of when counsel conducted the review of the invalidity contentions, the concession that plaintiff inadvertently omitted the claims reflects a lack of diligence in discovering that it omitted them. In addition, the Court continued the date of the Claim Construction Hearing to March 22, 2021 at 9:00 a.m., and set the final pretrial conference date for November 1, 2021 at 2:00 p.m. and the trial date for November 16, 2021 at 8:30 a.m. (Case No. 2:19-cv-07355; February 23, 2021).

District of Delaware (Wilmington)

District Judge Richard G. Andrews

ViaTech Technologies, Inc. v. Microsoft Corporation  – The U.S. District Court for the District of Delaware in Wilmington granted defendant's motion to strike plaintiff’s new Doctrine of Equivalents (DOE) theories that were first raised in opening expert reports. As part of its analysis, the Court found that plaintiff did not give a convincing explanation for its failure to timely disclose its new DOE infringement theories. Plaintiff argued, in part, that it was only able to collect evidence to support its new DOE theories upon completing examination of source code provided by defendant, “a process that was delayed to October-November 2020 due to COVID-related challenges.”  (Case No. 1:17-cv-00570; February 19, 2021).

Western District of Pennsylvania (Pittsburgh)

Senior 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 granted defendant’s motion to compel updated damages discovery about a potential non-infringing alternative product for its lost profit and reasonable royalty analysis. The Court had previously granted partial summary judgement to prevent the defendant’s damages expert from using the product in the proposed manner based upon a lack of factual evidence in the record, which had been limited to the period prior to Q2 2018. The Court found that its prior decisions did not resolve the current motion, however, because the court’s summary judgment and Daubert decisions did not address supplemental damages discovery or the period post-Q2 2018. The Court noted that it is now three years after the close of fact discovery, and “unfortunately, due to the Covid-19 pandemic, the trial has been continued and is not imminent.” The parties were found to have a duty to supplement damages discovery, even beyond the close of fact discovery, and the existence of non-infringing alternative products is relevant to the damages analysis. The Court further found that there will be no real prejudice, given the “unavoidable delay of the trial, the parties’ resources, and their litigious approach to the litigation.” The Court ruled that neither party’s expert may refer to the product as a non-infringing alternative prior to Q2 2018, based on the Court’s prior determinations, but if the market has changed since then “damages should be based on economic reality; not a market arbitrarily frozen in time by the original close of fact discovery in [the] litigation.”  (Case No. 2:17-cv-01023; February 18, 2021).

Southern District of Texas (Houston Division)

Senior District Judge Nancy F. Atlas

Enventure Global Tech., Inc. v. Weatherford U.S., L.P. – The U.S. District Court for the Southern District of Texas’s Houston Division cancelled the parties’ March 25th discovery conference after the parties suggested the court decide the outstanding discovery issues on the arguments set forth in their letters and without oral argument, in light of the public health issues caused by COVID-19 and the Stay-At-Home orders issued for Houston and Harris County. On February 4, 2021, the Court granted defendant’s motion to amend its preliminary invalidity contentions, in part, because “the proposed amendments . . . are attributable in part to the fact that parties, their counsel, and their experts, as well as the Patent Office from which information had to be obtained, have been hampered by requirements that all employees work from home because of the highly contagious COVID virus and the related worldwide pandemic.” The Court further noted that any prejudice to the plaintiff may be addressed by a reasonable continuance, and “[i]n deference to the difficulties of litigation during the COVID pandemic and [plaintiff’s] need to respond” the Court indicated a willingness to grant an extension of deadlines of up to 90-days if timely requested by plaintiff.  (Case No. 4:19-cv-02397; March 24, 2020 and February 4, 2021).

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Patent Specific Hearings/Motions

Middle District of Florida (Orlando)

District Judge Gregory A Presnell

ED3D Technologies, Inc. f/k/a D3D Enterprises, LLC v. Microsoft Corporation – The U.S. District Court for the Middle District of Florida in Orlando denied defendant's motion to transfer venue to the Western District of Washington pursuant to 28 U.S.C. § 1404(a), finding that some factors weigh in favor of transfer but the overall balance requires the Court to honor the “strong presumption” supporting the plaintiff’s choice of forum. As part of its analysis, the Court considered the risks associated with travel during the ongoing COVID-19 pandemic but noted “[w]hether the case remains in Florida or is transferred to Washington, one of the parties will necessarily be bearing this burden of travel during the pandemic and that will present a risk to anyone.”  The Court declined to weigh the fact of pandemic travel in favor of or against transfer, because it was reluctant to make generalized assumptions about which party would face more risk.  (Case No. 6:20-cv-01699; February 4, 2021).

Southern District of Florida (Miami)

District Judge Paul C. Huck

Xiamen Baby Pretty Products Co., Ltd. v. Talbot's Pharmaceuticals Family Products, LLC – The U.S. District Court for the Southern District of Florida in Miami granted defendant's motion to transfer venue from the Southern District of Florida to the Western District of Louisiana pursuant to 28 U.S.C. § 1404, finding that the private and public factors weigh in favor of transfer.  As part of its analysis, the Court found that the convenience of the witnesses factor slightly favored transfer, in part, because if transferred defendant’s witnesses, especially those over the age of sixty, would not have to travel to Florida during the COVID-19 pandemic “and their personal and professional responsibilities would not be as disrupted if [the] case is transferred closer to where they live.”  The Court also indicated that the jury trial date is set for August 16, 2021, but indicated that “given the circumstances due to the COVID-19 pandemic, that is not a realistic date for jury trials to resume in this District.” (Case No. 1:20-cv-25010; February 17, 2021).

Southern District of Indiana (Indianapolis)

District Judge Tanya Walton Pratt

Somero Enterprises, Inc. v. Ligchine International Corporation – The U.S. District Court for the Southern District of Indiana’s Indianapolis Division granted defendant's motion to transfer venue from the Indianapolis Division to the New Albany Division of the Southern District of Indiana pursuant to 28 U.S.C. § 1404(a), finding that the location of material events, witness convenience, and the interest of justice favored transfer. As part of its analysis the Court noted that rather than demonstrating the burden that transfer would have on the witnesses— other than noting the 1.5-hour drive time difference—plaintiff argued that transfer to the New Albany Division would negatively impact counsel because he will need to drive approximately two hours more each way which would likely require counsel to fly and possibly stay overnight at a hotel, thus increasing his exposure to COVID-19. The Court indicated, however, that it may only consider the convenience of the parties and witnesses—not the convenience of counsel. (Case No. 1:20-cv-02356; February 10, 2021).

Western District of Texas (Waco)

District Judge Alan D. Albright

Kuster v. Western Digital Technologies, Inc.  – The U.S. District Court for the Western District of Texas in Waco denied defendant's Motion To Transfer Venue from the Western District of Texas to the Northern District of California pursuant to 28 U.S.C.§ 1404(a), finding that the defendant had not demonstrated that the Norther District of California is a “clearly more convenient” venue than the Western District of Texas. As part of its analysis of the relevant factors, the Court considered the defendant’s concerns regarding safety and travel precautions due to the COVID-19 pandemic. While sympathizing with defendant’s concerns, the Court noted that these same concerns apply across the board to the plaintiff, who would be traveling from Switzerland, and the third parties located in Texas. The Court further noted that it would be unrealistic to attempt to predict what the status of travel and the public health risk may be in November 2021, when the case is scheduled for trial, and if conditions improve or at least remain the same, the Western District of Texas is one of the few in the country to have successfully held a patent trial in the MV3 Partners LLC v. Roku matter, with witnesses and attorneys traveling from other states, including California. (Case No. 6:20-cv-00563; February 9, 2021).

Netlist, Inc. v. SK hynix America Inc. et al. – The U.S. District Court for the Western District of Texas in Waco denied defendants’ Motion to Transfer Venue to the Central District of California or alternatively to the Austin Division of the Western District of Texas, finding all factors weigh against transfer under the first-to-file rule and that it was not persuaded that trial in the Central District of California would be clearly more convenient than trial in the Western District of Texas. With respect to the intra-district request, the Court found defendant did not offer any persuasive showing that litigating the present actions in Austin would be clearly more convenient than in Waco. In finding that the case will move forward in Waco, the Court noted that the Austin courthouse is closed due to the COVID-19 pandemic and there is no indication that it will be open by the scheduled trial date. The Court re-set the Markman Hearing to take place on March 1, 2021, and the case is set for jury trial to begin on July 6, 2021. (Case No. 6:20-cv-00525; February 2, 2021).

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Mediation/Settlement Conferences

Eastern District of Michigan (Ann Arbor)

District Judge Judith E. Levy

Nanografix Corporation v. Pollard Banknote Limited – The U.S. District Court for the Eastern District of Michigan in Ann Arbor issued an Order For Mediation, ordering the parties to undertake mediation proceedings with Honorable Gerald E. Rosen (Ret.). The Court empowered Judge Rosen to make the following determinations regarding the mediation proceedings: (i) the format; (ii) the number of sessions; (iii) the appropriate persons who must attend, aside from counsel, it being understood that such representatives must include persons with full settlement authority and that attendance may be virtual due to the limitations created by the COVID-19 pandemic; (iv) the location or, if digital, the online platform to be used; and (v) all date(s). (Case No. 5:19-cv-10624; February 23, 2021).

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.” (Case No. 0:13-cv-00210, presiding before Senior District Judge Donovan W. Frank; March 17, 2020, January 13, 2021 and January 21, 2021).

Trial

Central District of California (Southern Division—Santa Ana)

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. (Case No. 8:19-cv-00835; February 24, 2021).

District of Delaware (Wilmington)

Magistrate Judge Christopher J. Burke

Finjan, Inc. v. Rapid7, Inc., et al. – The U.S. District Court for the District of Delaware in Wilmington held a hearing on January 15, 2021 in response to the parties’ joint letter seeking guidance from the Court “regarding whether, in light of the current situation surrounding the COVID-19 pandemic, there is any chance that the [February 22, 2021] scheduled jury trial can go forward.” The parties argued that “given the diminishing likelihood that jury trials will resume in February, it would be in the interest of the parties and the Court to postpone the trial in this matter until sometime in the fall, preferably September or October of 2021, at the Court’s convenience.” The Court ruled that the pretrial conference and jury trial will be rescheduled, and directed the parties to file a joint letter. On February 19, 2021, the Court held a telephone conference during which the pretrial conference was set for October 4, 2021 at 2 p.m. (EDT) and the six-day jury trial set to begin on October 25, 2021 at 9:30 a.m. (EDT), to be held before Magistrate Judge Burke which the parties had consented to previously.  (Case No. 1:18-cv-01519; January 15, 2020 and February 19, 2021).

Chief District Judge Leonard P. Stark

Align Technology, Inc. v. 3Shape A/S et al. – The U.S. District Court for the District of Delaware in Wilmington issued an Oral Order, after reviewing the parties' Joint Status Report, setting the first of plaintiff’s seven trials against defendant for April 12, 2021 before a jury with a bench trial on the equitable defenses to be held concurrently or immediately after the conclusion of the jury trial. The next trial to be held would be case initiated by the defendant to followed by the remaining trials initiated by the plaintiff.  Among the considerations cited by the Court in making its determinations was “the Court's highly constrained resources (especially with respect to its ability to conduct jury trials), particularly during the pandemic.” The Court also noted agreement with plaintiff’s position “that it would not be prudent ‘to burden the jury [in the first action] with an additional, unnecessary decision’ by requiring an advisory jury verdict on equitable issues.” On February 9, 2021, the Court sua sponte issued an Oral Order, in light of the ongoing impact of the COVID-19 pandemic, directing the parties to meet and confer and submit a joint status report providing their updated positions on whether trial should go forward in April as scheduled and, if so, what (if any) accommodations should be made. (Case No. 1:17-cv-01646; November 13, 2020 and February 9, 2021).

District of new mexico (Albuquerque)

Senior District Judge Joseph F. Bataillon

Applied Capital, Inc v. The ADT Corporation et al. – The U.S. District Court for the District of New Mexico in Albuquerque denied defendants' motion to continue trial, which is currently set to begin on April 5, 2021. The Court noted that it has been advised that the United States District Court for the District of New Mexico will resume conducting civil jury trials in March of this year, and having considered the parties’ positions it found that the motion to continue trial should be denied, without prejudice to reassertion if circumstances change, or if the district court does not resume civil jury trials in March 2021. (Case No. 1:16-cv-00815; February 12, 2021).

Southern District of Ohio (Cincinnati)

District Judge Douglas R. Cole

Ethicon Endo-Surgery, Inc. v. Covidien, Inc. – The U.S. District Court for the Southern District of Ohio Western Division in Cincinnati suggested, and the parties agreed, that the trial be continued until January 4, 2021, in response to defendants’ request for a continuance of the trial due to the COVID−19 Pandemic and related travel restrictions. The Court indicated that “the trial shall proceed in-person, if conditions at the time allow, or by video conference, if not.” On September 10, 2020, the Court set the final pretrial conference to be held by telephone on December 14, 2020 at 10 a.m.(EST) and set the bench trial to be held on January 11, 2021 at 9:30 a.m. (EST). In an Opinion and Order issued on December 1, 2020, the Court granted-in-part plaintiff’s motion in limine to exclude evidence of alleged non-infringing alternatives to the extent that it seeks to preclude admitting evidence of other non-infringing alternative devices as a basis for arguing that plaintiff is not entitled to lost profits for any time period prior to the time that defendant actually released those products to market, but denied-in-part the motion to the extent that defendant seeks to introduce such evidence for other permissible reasons. The Court noted that due to various delays, including two delays of the trial due to the COVID-19 pandemic, it appears that the defendant has released certain additional products and “the Court’s prior determination that the products were not available non-infringing alternatives at the time should not prevent [defendant] from arguing that after the products were released to the market they became available non-infringing alternatives, and thus presumably could terminate the time period during which lost-profit damages are available.” On February 5, 2021, the Court issued a Notice of Hearing resetting the bench trial for April 19, 2021 at 9:30 a.m. (EDT) by video conference. (Case No. 1:11-cv-00871; August 11, 2020, September 10, 2020, December 1, 2020 and February 5, 2021).  

Western District of Pennsylvania (Pittsburgh)

District Judge Cathy Bissoon

Cutsforth, Inc. v. Lemm Liquidating Co., LLC, et al. – The U.S. District Court for the Western District of Pennsylvania in Pittsburgh sua sponte stayed and administratively closed the case, postponed the jury trial from April 20, 2020 to October 26, 2020, and further amended the Pre-trial Scheduling Order. In a May 19, 2020 Text Order the Court stated “the COVID-19 pandemic continues to create barriers to resuming normal, in-person operations in our nation's courts. . . . [with no issue] more problematic than the resumption of jury trials . . . [because] there can be no doubt that from selection to deliberation, jury trials pose unique and potentially, unavoidable concerns during this pandemic.” The parties were ordered to file a joint notice, on or before June 15, 2020, indicating whether they jointly and voluntarily consent to waiving their right to a jury trial and to converting the case to a bench trial, without specifying who did or did not consent.  In a Second Amended Final Pretrial Order, the Court scheduled the 5 day jury trial for May 24, 2021, at 9:00 a.m. On February 11, 2021, the issued an Order, postponing the jury trial scheduled for Mary 24, 2021 until to January 10, 2022 at 9:00 a.m. (EST). The postponement was made in light of the COVID-19 pandemic and consistent with the "substance and tenor" of the Administrative Order Concerning Jury Trials And Certain Other Proceedings Relative To Covid-19 MATTERS issued on February 2, 2021 by the Honorable Judge Mark R. Hornak at Misc. No. 2:20−mc−394 (as updated), which ordered that all civil and criminal case jury selections and civil and criminal case jury trials in the Western District of Pennsylvania scheduled to begin before May 3, 2021 are continued pending further Order of the Court. The case was also stayed and administratively closed, until the Court resumes normal operations, and restrictions necessitated by the virus has have lapsed.  The Court further indicated that extensions of time to perform certain tasks will be granted liberally, particularly if such extensions are due in any way to illness or practical considerations caused by the COVID−19 pandemic. (Case No. 2:17-cv-01025; March 17, 2020, May 19, 2020, September 16, 2020 and February 11, 2021).

Lambeth Magnetic Structures LLC v. Seagate Technology Holdings Inc. et al. – The U.S. District Court for the Western District of Pennsylvania in Pittsburgh issued an Order, postponing the jury trial scheduled for June 21, 2021 until to February 7, 2022 at 9:00 a.m. (EST). The postponement was made in light of the COVID-19 pandemic and consistent with the "substance and tenor" of the Administrative Order Concerning Jury Trials And Certain Other Proceedings Relative To Covid-19 MATTERS issued on February 2, 2021 by the Honorable Judge Mark R. Hornak at Misc. No. 2:20−mc−394 (as updated), which ordered that all civil and criminal case jury selections and civil and criminal case jury trials in the Western District of Pennsylvania scheduled to begin before May 3, 2021 are continued pending further Order of the Court. The case was also stayed and administratively closed, until the Court resumes normal operations, and restrictions necessitated by the virus has have lapsed.  The Court further indicated that extensions of time to perform certain tasks will be granted liberally, particularly if such extensions are due in any way to illness or practical considerations caused by the COVID−19 pandemic. (Case No. 2:16-cv-00538; February 11, 2021).

Western District of Tennessee (Western Division – Memphis)

District Judge Jon Phipps McCalla

Plate, LLC v. RCTenn, LLC -The U.S. District Court for the Western District of Tennessee in Memphis issued a Status of Trial Court Location Availability to confirm two locations that are available for the in-person non-jury trial expert witness testimony to be held beginning on May 24, 2021. The first option, confirmed by the Deputy Clerk of Court in Nashville, is a smaller Senior Judge courtroom (Magistrate Judge courtroom), which “in compliance with COVID requirements, will accommodate only two attorneys for each side, a witness, a court reporter, courtroom deputy, judicial law clerk, and the judge.” The Court further indicated, that if this accommodation should be unavailable there is alternative courtroom availability in Memphis, which “is a large courtroom with COVID-19 spacing and other precautions.” The parties were instructed to “confirm their continued availability for conclusion of the evidentiary presentations in this non-jury trial during the week of May 24, 2021 at the primary location (Nashville) and the secondary location (Memphis).”  During prior proceedings the court and parties had discussed that the non−jury trial will proceed in two phases: remote hearings beginning on March 8, 2021 with follow−up in person technical proceedings in Nashville beginning on May 24, 2021. (Case No. 3:18-cv-00806; February 3, 2021 and February 8, 2021). 

Eastern District of Texas (Marshall Division)

 Magistrate Judge Roy S. Payne

GREE, INC v. Supercell Oy – The U.S. District Court for the Eastern District of Texas’s Marshall Division granted plaintiff’s motion to compel to enforce an agreement to present two witnesses for trial depositions by February 22, 2021, and denied defendant's motion to remove the agreement from the Pretrial Order to instead present the witnesses between February 24th and February 26th.  At the time the Pretrial Order was filed, the pretrial conference was scheduled more than a week before jury selection, but in response to an emergency weather situation, on February 15, 2021, the Court issued a Notice resetting the pretrial conference (with the concurrence of counsel for both sides) to February 23, 2021, less than a week before the trial date.  Rejecting defendant’s argument that the pretrial conference should happen before the depositions, the Court found there would be “minimal prejudice” to requiring the depositions to happen before the pretrial conference.  The Court noted that both parties “have been aware of the ongoing pandemic and that the Court’s schedule has responded flexibly to evolving circumstances”, and the Court found no compelling reason to disregard the negotiated agreement. Jury selection is set for March 1, 2021 at 9:00 a.m. (CST).  (Case No. 2:19-cv-00311, presiding before Chief District Judge J. Rodney Gilstrap; February 19, 2021).

Eastern District of Texas (Sherman Division)

District Judge Amos L. Mazzant, III

Wapp Tech Limited Partnership et al v. Micro Focus International PLC - The U.S. District Court for the Eastern District of Texas’s Sherman Division granted in part plaintiffs’ Motion To Strike and Exclude Undisclosed Witnesses, ruling that defendants were precluded from calling two witnesses at trial. Defendants argued that the disclosure of the two witnesses was timely because they were previously disclosed as persons of interest during depositions, and in addition they argued defendants should be allowed to replace witnesses “rendered unavailable by the pandemic.” The Court rejected the disclosure argument and found defendants do not need the two witnesses to replace others, because those other witnesses have presumably been deposed and may be called by deposition at trial, as is standard practice. (Case No. 4:18-cv-00469; February 5, 2021).

Western District of Texas (Austin)

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 Order Transferring Trial Venue, holding, pursuant to the Federal Rule of Civil Procedure 77(b) and the Court’s inherent authority, that if the Austin courthouse does not reopen with enough time to hold a January trial, the trial will be held in Waco. The Court noted that the Austin courthouse is currently closed and has been closed on a month-by-month basis since March 2020 while the Waco division reopened in September 2020 and has since successfully conducted three in-person jury trials. Because there is “no foreseeable end to the COVID-19 pandemic,” and therefore no foreseeable end to the closure of the Austin Courthouse, the Court believed it needed to consider moving the trial to an open courthouse in the district. As part of its analysis, the Court noted that the pandemic has created a backlog of trials such that delaying one trial further delays other trials and since “patents have a limited term, the Court does not believe it should unnecessarily delay a trial date, especially when an alternate venue is available.” After the Federal Circuit vacated the Order transferring the case to Waco, the Court granted plaintiff’s emergency motion to retransfer from Austin to Waco based on a re-evaluation its of 28 U.S.C. § 1404(a) analysis in light of the COVID-19 pandemic.  As part of its analysis, the Court noted that because the Austin courthouse is closed for the foreseeable future, but the Waco courthouse is open, this weighed in favor of transferring the case to Waco for a February trial. After analyzing all the factors, the Court found that “the pandemic has frustrated transfer by changing what was clearly more convenient pre-pandemic to what is not clearly more convenient mid-pandemic,” ruling it was appropriate to retransfer the case back to Waco pursuant to 28 U.S.C. § 1404(a).  On February 4, 2021, the Court issued an Order Setting Jury Trial, setting the jury trial regarding the ‘522 and ‘187 patents for April 12, 2021 at 9 a.m. (CDT), and setting the trial jury trial regarding the ‘485, ‘983 and ‘025 patents for June 7, 2021 at 9 a.m. (CDT) On February 10, 2021, in anticipation of the first trial set to begin on February 16, 2021, the Court issued a Notice of Trial Procedures setting forth the COVID-19 protocols to be employed to maximize safety and social distancing during trial. The protocol included measures such as pre-trial and daily testing, notification of COVID-19 positive test results, PPE and social distancing requirements, courtroom ventilation, the use of plexi-glass barriers, limits on the number of individuals inside the Courtroom, the use of an overflow room with a live video feed, 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. Pursuant to the sequestration order, while the jury is kept together and not allowed to separate, the reasonable cost of meals incurred by the jury during court recesses will be paid by the Clerk of Court. Jury selection in the first trial was rescheduled to begin on February 22, 2021 at 9:00 a.m. (CST), due to adverse weather conditions. (Case No. 1-19-cv-00977; November 20, 2020, December 31, 2020, February 4, 2021, February 10, 2021 and February 14, 2021). 

Attachment:
Trial Procedures - Covid Protocol - February 10, 2021

Western District of Washington (Seattle)

District Judge Thomas S. Zilly

Ironburg Inventions Ltd. v. Valve Corporation – The U.S. District Court for the Western District of Washington in Seattle issued an Order For Remote/Virtual Civil Jury Trial, ordering that the jury trial scheduled to commence on January 25, 2021 at 9:00 a.m. (PST) will be conducted entirely remotely, with the possible exception of jury deliberations, using the ZoomGov.com platform. All exhibits must be uploaded by counsel to the “Box.com” platform via one or more links that the Court’s law clerk will provide via email prior to the trial date. When an objection is made during trial, the Order indicates that the witness shall stop talking until the Court rules on the objection and if the objection requires a discussion outside the presence of the jury, the jurors will be placed in the virtual jury room. In an earlier conference, the Court asked if the parties would waive their rights to a jury and agree to try the case to the Court, but plaintiff declined to waive its right to a jury trial. During a pretrial conference held via ZoomGov.com on January 15, 2021, the Court cautioned the parties “to limit the number of attorneys whose cameras are activated during the trial to preserve the ‘real estate’ on the screen, particularly during the voir dire process, and to have microphones muted when not speaking.” The Court also directed the defendant to provide the Court, in advance of trial, with ten accused devices for its plan “of mailing an accused device to each juror, instructing jurors not to open the boxes or inspect the devices until told to do so.” The parties were further advised that they may use photographs of physical evidence or the "share screen" function in ZoomGov.com to show physical evidence to jurors. The Court will also show the Federal Judicial Center's video titled "The Patent Process - An Overview for Jurors" prior to opening statements, and will use the "share screen" feature in ZoomGov.com to show jurors, during the course of the video, the sample patent referenced in the video. On February 1, 2021, the Western District of Washington jury returned its verdict, finding that the patents were willfully infringed, and that plaintiff was entitled to damages of $4,029,533.93 on its claim of patent infringement. (Case No. 2-17-cv-01182; December 15, 2020, January 15, 2021 and February 1, 2021).

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