Who's afraid of a design patent? An ex parte injunction demonstrates that we should all be paying attention. And how much is enough when it comes to claim charts? Judge Albright gives us meaningful guidance and a strong warning about second chances.

 

SPEAKERS

Wayne Stacy (BCLT), Michael Smith (Scheef & Stone)

 

Wayne Stacy  00:06

Welcome, everyone to the Berkeley Center for Law and technologies last week in Texas podcast. I'm your host, Wayne Stacey. And we are here once again with Michael Smith. You've heard me say it before. If it happened in Texas, and he doesn't know about it, it does does not matter. So with that in mind, Michael, why don't you take us to the the Eastern District of Texas?

 

Michael Smith  00:30

Well, thank you, Wayne, good to be here. Today, I want to lead off with a what appeared first blush to be pretty simple case, defendants came in and the case got settled. And they wanted to have their defenses dismissed without prejudice. It's kind of an unusual situation. You know how sometimes if you're a defendant, and it's a customer suit, the manufacturer, the customer will come in and say, hey, we'll be bound by whatever happens to the manufacturers case? Well, the defendant did that here. And it didn't work out so great. The parties went, they settled the case, they had an MOU, and they had an interesting provision there, they said, We're going to take 50 days to negotiate a final settlement agreement. If we can't do that, within 50 days, then the final settlement agreement will become a final and binding settlement agreement. And that provision said that all of the claims in the case will be dismissed with prejudice. So one of the defendants comes in who had kind of given control to the manufacturer to to resolve the claims and said, Oh, wait a minute. No, no, no, I want my affirmative defenses dismissed without prejudice. And the court said, No, you gave this other party when you were when you wanted your case stayed under under the customer suit exception. You said I'll be bound by any final judgment. So the court said no, you're stuck with how the Settlement Agreement got worked out here. Now, it's not clear that there was actually legal prejudice to that defendant. But it's I think it's an important reminder to us to be careful what you agree you'll be bound by and check the wording carefully on those mo use, because this could have been fixed at the MOU stage if someone had been paying attention to the exact language, probably at eight o'clock at night when they were trying to get a case settled the night before the pre trial conference.

 

Wayne Stacy  02:22

Well, and that's this is, I guess, the second week that we've had this kind of post settlement disputes where we had an agreement, but not quite. And it's it is a good lesson. But it goes back to one of my favorite provisions, letting the the mediator have baseball style arbitration for any disputed provisions. And it cleans things up a lot. Because you're not been there eight 910 o'clock at night before an opening arguments a hard time to make sure you got all the little, little issues like this closed up.

 

Michael Smith  02:56

Well, in the baseball style is a great way to go. There's there's another one I can suggest I had a couple of mediations last year with a magistrate judge in the Sherman division Eastern District Judge Christine Novak. And in her court, she did baseball style. But the other thing she did is as soon as she walked in to start the mediation, she handed you or she or she told you, I want you to start writing the settlement agreement. What