What do you need to know about the new Magistrate Judge in Waco? And a textbook decision on seeking fees as a prevailing patent plaintiff.

 

SPEAKERS

Wayne Stacy, Michael Smith

 

Wayne Stacy  00:00

Welcome, everyone to the Berkeley Center for Law and Technology's "Last Week in Texas" Podcast. I'm your host, Wayne Stacy, the Executive Director of BCLT. And once again, we're here with Michael Smith. As you know, if it's happening in Texas, Michael is the person that can tell you about it. But a few little things about Michael because we haven't heard from him in a couple of weeks: Michael is now in addition to being an expert in Texas, has a master's in World War Two history. So he can tell you what happened to Texas and in World War Two. And that may be a different podcast, though. In addition to that, Michael and I got to spend some of the the week together, looking at UC Berkeley Stanford conference and looking at some of the top IP issues facing people around the country. Michael was a hit there. Everybody likes to know what's happening in Texas, because it seems to be the talk of the town. So with all of that we got a little catching up to do. Michael, you want to want to lead us through it?

 

Michael Smith  01:04

Certainly, Wayne, it has been an interesting few weeks, both personally and professionally, there's been a lot going on in the courts. And and I would kind of want to start with everyone likes to talk about 101 patentable subject matter. And we were in the middle of a panel last week at the seminar that you and I were at the Berkeley Stanford event. And we got some statistics on 101. But at the same time, we found out there were three new 101 cases out of the eastern and western districts of Texas last week. So I wanted to start with one of those. And that was from the Eastern District of Texas. Back in October, a plaintiff of terminal reality, lost a jury trial in Marshall. They were actually working out in my offices, so I was kind of hearing about what was going on the case. But Sony got a jury verdict of no infringement, the claims were invalid. And the jury was also asked that 101 factual predicate question. And they found the well understood question and the defendant's favor and I think you and I have talked about what juries are doing on that question.

 

Wayne Stacy  02:11

And from my look at the cases, it seems like it's a tremendous defense. So it seems like a pretty, pretty common result.

 

Michael Smith  02:20

I think so and I remember when the panel was talking about it last week, I mentioned that I'm, we've seen that submitted several times in the Eastern District Courts, and I don't recall ever seeing a plaintiff win on that. Juries always seem to find the activity well understood. And I can kind of understand that, because after an expert has explained it, well, then they can understand it. So even though there's little hindsight involved. There may be a bias on the jury's part to find for the definitive on that question. But what happened here was, the plaintiff loses on infringement, they lose on invalidity, they lose on everything. And then the defendant comes in, and they want the finding that it's not patentable subject matter as well. And Judge Gilstrap's opinion said, Well, we submitted Alice Step Two to the jury, and the jury found that they were well understood, but my job is to look at Alice step one. And looking at Alice step one, I find that the asserted claims weren't directed to an abstract idea, and therefore they didn't claim patent and eligible subject matter. So the plaintiff lost everything in front of the jury, but they were able to salvage the patentable subject matter question before Judge