When should you worry that too much advocacy feeds a fee motion? And is the Federal Circuit driving venue and convenience disputes to robust, early discovery?

 

SPEAKERS

Wayne Stacy, Michael Smith

 

Wayne Stacy  00:00

Welcome, everyone to the Berkeley Center for Law and Technology's Last W`eek in Texas podcast. I'm your host, Wayne Stacy, the Executive Director for BCLT. And we have Michael Smith with us once again to tell us everything we need to know about last week in Texas. Michael, thanks for joining us again.

 

Michael Smith  00:20

Good to be with you.

 

Wayne Stacy  00:22

Well, let's start with something that many people think is as a mythical animal. And that is a summary judgment of non infringement in the Eastern District of Texas.

 

Michael Smith  00:33

Well, it did catch my attention when it came out. What we got was a summary judgment of infringe of noninfringement or actually a report and recommendation for Magistrate Judge Roy Payne to Judge Gilstrap of noninfringement in a case that was getting ready to go to trial in the next few weeks and martial. But it's kind of an interesting case, it grows out of a case that I actually knew something about because back in the early part of the 2000s, we had multiple jury trials involving this one plaintiff in martial. And the plaintiff has another case getting ready to go to trial. And the defendants in that case pointed out that we had an appeal from that earlier case, where the Federal Circuit said, these claims are invalid. This is not infringement, and and so forth. So the issue here was the defendants came in and said, there's not a tribal issue for the jury, because under the federal circuit's prior decision, there, there's just not an issue. And judge Payne agreed with the defendants and said and pointed out that what the plaintiff was arguing here was, well, the Federal Circuit was wrong, you should disregard what the Federal Circuit said, This isn't what the Federal Circuit meant. So let us get to trial. And Judge Paine wasn't having any of it. He said that that argument is doomed to fail. He said, what you're telling me to do flies in the face of starry decisis, what you're doing is presenting me with a claim construction argument for the first time that should have been raised during claim construction. So he said, binding precedent for the Federal Circuit says that you have to show 1, 2, 3 in order to show infringement. And your evidence in this case, doesn't have 1, 2, and 3. So a very interesting case. And we're looking forward to seeing what judge Gilstrap does when the case gets to hit when the report and recommendation is passed on, which should happen in the next few weeks.

 

Wayne Stacy  02:30

Well, Michael, there was a phrase that Judge Payne used, that seems like it's just fuel for a fee motion later on to say this is exceptional case. But it what's the quote, "binding precedent establishes that such evidence is insufficient." That seems pretty harsh.

 

Michael Smith  02:49

I think you're reading that exactly right. He says repeatedly. And when I was studying this opinion, for my weblog, I kept having to put phrases in quotes, because he's using exactly that kind of language. He's saying, You're asking me to go against starry decisis, you're asking me to ignore binding precedent, you're not just telling me it doesn't apply? You're saying it's so wrong, you just need to not apply it. That's just you can't do that. So I think in that case, you may well be looking at all this feeding into a 285 motion. Now on the road, I think it is not using the term in its legal sense. It is a very exceptional case