Patent Specific Hearings/Motions - Page 2

Eastern District of Texas (Marshall Division)

Chief District Judge J. Rodney Gilstrap

Capella Photonics, Inc. v. Fujitsu Network Communications, Inc. The U.S. District Court for the Eastern District of Texas in Marshall denied defendant's Motion To Transfer Venue from the Eastern District of Texas to the Northern District of California pursuant to 28 U.S.C.§ 1404(a), finding that under no fair analysis is the Northern District of California clearly more convenient. With respect to the administrative difficulties factor, the plaintiff contended that the factor “weighs against transfer because cases go to trial materially faster” in the Eastern District of Texas as compared  to the Northern District of California, where trials have not been conducted during the COVID-19 pandemic and there is “backlog of cases awaiting trial.” As part of its analysis, the Court found this factor weighed against transfer, in part because the case is currently set for jury selection in EDTX on August 2, 2021, whereas the related action in California does not yet even have a jury trial date assigned. (Case No. 2:20-cv-00076; February 1, 2021).

Infernal Tech., LLC v. Sony Interactive Entertainment America, LLC – The U.S. District Court for the Eastern District of Texas’s Marshall Division denied a motion to extend all post-Markman deadlines by six (6) months due to the COVID-19 outbreak, reasoning that it is “hopeful that things will have generally improved before” June 15, 2020, the current deadline for fact discovery. The Court later granted the parties’ Joint Motion to Amend the Modified Docket Control Order in light of the global health crisis related to the COVID-19 pandemic. The Second Amended Docket Control Order moved most dates approximately six weeks, including remaining fact, expert and pretrial dates, and it reset the trial date from November 2, 2020 to December 14, 2020. (Case No. 2:19-cv-00248; March 27, 2020 and June 22, 2020).

Monarch Networking Solutions LLC v. Cisco Systems, Inc. et al. – The U.S. District Court for the Eastern District of Texas in Marshall denied defendant's motion to transfer venue from the Eastern District of Texas to the Northern District of California pursuant to 28 U.S.C.§ 1404(a), finding the relevant factors unpersuasive that trial in the Northern District of California would be clearly more convenient than trial in the Eastern District of Texas. As part of its analysis, the Court considered the latest statistics released by the Administrative Office of the U.S. Courts, showing trial times are consistently and significantly faster in the Eastern District of Texas than in the Northern District of California. Although the Court was “mindful that the statistics for the most recent reporting period may be skewed due to the COVID-19 pandemic.” (Case No. 2:20-cv-00015; January 15, 2021).

Quest NetTech Corp. v. Apple Inc. – The U.S. District Court for the Eastern District of Texas’s Marshall Division granted the parties’ joint motion to continue the Markman hearing scheduled for March 16, 2020 due to travel restrictions imposed in response to the coronavirus outbreak and further indicating that the parties were scheduled for telephonic mediation on March 20, 2020. The court rescheduled the Markman hearing for April 9, 2020. (Case No. 2:19-cv-00118; March 12, 2020).

Magistrate Judge Roy S. Payne

Clear Imaging Research, LLC v. Samsung Electronics Co., Ltd. et al. – The U.S. District Court for the Eastern District of Texas’s Marshall Division denied the parties’ Joint Motion to Hold Virtual Claim Construction Hearing, ruling that the Markman Hearing will take place in-person on October 14, 2020 at 9:00 a.m. Although the Court recognized that counsel reside in different areas of the United States and will need to travel to the Courthouse, it did not “believe at this time that this alone is sufficient to meet good cause.”  In addition to the risk posed by counsel having to travel to the Courthouse during the COVID-19 pandemic, the parties also raised that “counsel will need to quarantine adequately prior to the hearing (and after the hearing) causing disruption.” (Case No. 2:19-cv-00326, presiding before Chief District Judge J. Rodney Gilstrap ; September 4, 2020).

Oyster Optics, LLC v. Infinera Corp., et al. – The U.S. District Court for the Eastern District of Texas in Marshall denied the parties’ Motion to Hold Claim Construction Hearing by Video due to the COVID-19 pandemic. The Court stated that, “[i]n view of the single-term dispute and the current motion, [it] is willing to waive the hearing and proceed on the briefs, unless the counsel prefer to attend the hearing as currently structured.” (Case No. 2:19-cv-00257, presiding before Chief District Judge J. Rodney Gilstrap; June 8, 2020).

Uniloc 2017 LLC, et al. v. Google LLC – The U.S. District Court for the Eastern District of Texas in Marshall granted defendant's motion to transfer venue to the Northern District of California because witness convenience and the availability of compulsory subpoena power favored transfer. In arguing that many of the witnesses are on the West Coast, while none are in Texas, defendant noted that the COVID-19 pandemic “increases the importance of witness location and convenience, stating ‘[t]he logic and purpose of the 100-mile rule has never been more sound and more important than it is today’ and that ‘the 100-mile rule is not simply one of convenience, it is the difference between those witnesses being able to appear for trial or not.’” (Case No. 2:18-cv-00504, presiding before Chief District Judge J. Rodney Gilstrap; June 8, 2020).

Eastern District of Texas (Texarkana Division)

Magistrate Judge Caroline M. Craven

Maxell, Ltd. v. Apple Inc. – The U.S. District Court for the Eastern District of Texas’s Texarkana Division ordered that a motion to compel be decided on the papers with additional briefing ordered, and deferred to a later date its decision on whether an in-person hearing on a sanctions motion is warranted. (Case No. 5:19-cv-00036; March 19, 2020).

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 denied defendants' Motion To Stay Pending Inter Partes Review (“IPR”), without prejudice to defendant re-urging the Motion if and when the PTAB institutes IPR proceedings on any of the patents at issue. As part of its analysis the Court rejected defendant’s argument that a stay is appropriate, in part, because the COVID-19 pandemic has affected the parties ability to conduct discovery. The Court found that the COVID-19 pandemic does not weigh in favor of a stay, stating that the defendant gave no concrete examples of how the pandemic has delayed discovery and noting that “the parties have engaged in substantial motion practice and appear to have exchanged considerable discovery despite the pandemic.”  (Case No. 4:19-cv-02397; December 11, 2020).

Western District of Texas (Austin)

District Judge Alan D. Albright

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).

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.” 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 Texas (El Paso)

District Judge Frank Montalvo

Small Axe Enterprises, Inc. v. Helen of Troy Limited – The U.S. District Court for the Western District of Texas in EL Paso granted an unopposed motion to stay the proceedings pending resolution of an ex parte reexamination of the asserted patent at the U.S. Patent and Trademark Office (“PTO”).  As part of its analysis of the undue prejudice factor relevant to deciding whether to stay a case pending a reexamination, the Court acknowledged that it is “presently operating at a reduced level and continuing proceedings as a result of the national health emergency declared by the President” while conversely noting that “the PTO has stated its reexamination process will be unaffected.”  (Case No. 3:20-cv-00042; April 20, 2020).

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).

EROAD Ltd., et al v. PerDiemCo LLC – The U.S. District Court for the Western District of Texas in Waco sua sponte ordered all Markman hearings scheduled between April 9, 2020 and May 1, 2020 shall inform the court by April 13, 2020 whether the wish to maintain their current hearing date or postpone it to the week of May 11, 2020.  The court will still provide its preliminary constructions by 5 p.m. the day before the Markman hearing is currently scheduled, even if the parties choose to postpone.  IF the parties postpone the hearing, they should meet-and-confer within 48 hours of receiving the court’s preliminary constructions to determine which claim terms still need to be raised at the Markman hearing and file a joint notice describing the accepted claim constructions and those they wish to hold arguments on.  (Case No. 6-19-cv-00026, presiding before District Judge Alan D. Albright; April 9, 2020).

Far North Patents, LLC v. ADVA Optical Networking SE – The U.S. District Court for the Western District of Texas in Waco sua sponte ordered all scheduled civil hearings to be conducted telephonically. With respect to Markman hearings, parties who wish to use PowerPoint presentation slides during the hearing are ordered to email said slides to the court within six (6) hours of receiving preliminary constructions from the court. With respect to non-Markman hearings, parties are ordered to email to the court the slides they wish to use at least two (2) hours before the hearing. This order was issued in accordance with Chief District Judge Orlando Luis Garcia’s Amended Order Regarding Court Operations Under the Exigent Circumstances Created by the COVID-19 Pandemic dated March 24, 2020. (Case No. 6:20-cv-00218; March 24, 2020).

The Standing Order has been docketed in the following patent cases before U.S. District Court for the Western District of Texas in Waco:

  • Brian Blazer v. Lowe's Companies, Inc., Case No. 6:20-cv-00276, presiding before District Judge Alan D. Albright; March 24, 2020;

  • Far North Patents, LLC v. Microchip Technology Inc., Case No. 6:20-cv-00221, presiding before District Judge Alan D. Albright; March 24, 2020;
  • Far North Patents, LLC v. NXP USA, Inc., et al., Case No. 1:20-cv-00397 (Waco), presiding before District Judge Alan D. Albright; March 24, 2020;
  • Ikorongo Texas LLC v. Bumble Trading Inc., Case No. 6:20-cv-00256, presiding before District Judge Alan D. Albright; March 24, 2020.

  • Sable Networks, Inc., et al. v. Cisco Systems, Inc., Case No. 6:20-cv-00288, presiding before District Judge Alan D. Albright; March 24, 2020;

  • VOIP-PAL.COM, INC. v. Facebook, Inc., et al., Case No. 6:20-cv-00267, presiding before District Judge Alan D. Albright; March 24, 2020.

STC.UNM v. Apple Inc. – The U.S. District Court for the Western District of Texas in Waco denied Apple’s motion to transfer the case to the Northern District of California but granted its alternative motion to transfer the case to the Austin Division of the Western District of Texas. Notably, the court found “any arguments relying on the impact of the COVID-19 virus too speculative at this time to weigh either for or against transfer. It was noted that the virus has had a substantially greater impact and has significantly slowed down the dockets in the NDCA, while conversely it was noted that the virus could also discourage air-travel from California to the WDTX. Because these factors look too far forward and speculate as to the uncertain impact of the virus, the Court declines to find that they weigh either for or against transfer when analyzing this factor.” (Case No. 6:19-cv-00428; April 1, 2020).

District of Utah (Central Division—Salt Lake City)

Senior District Judge Dee Benson

CAO Group v. GE Lighting, et. al. – The U.S. District Court for the District of Utah’s Central Division in Salt Lake City issued an Amended Order denying Plaintiff’s Motion to Reopen the Case and Lift Stay on the written submissions alone, “[g]iven the unique circumstances and social gathering restrictions brought about by the current global pandemic.” The court went further and dismissed the action in its entirety, without prejudice, due to lack of venue under the United States Supreme Court’s TC Heartland decision. (Case No. 2:11-cv-00426; May 12, 2020).

Attachement:
CAO Group v. GE Lighting, et. al. Amended Order - May 12, 2020

CadwaladerNews

CadwaladerSpotlight

Our latest podcast covers the legacy of the “Car Wash” investigation and how Brazil fits into the global landscape of white-collar crime enforcement.

To assist individuals in working from home during the coronavirus social-distancing period, Cadwalader is providing clients and friends free access to our legal research platform, the Cadwalader Cabinet.