Speakers: Micheal Smith and Wayne Stacy

Wayne Stacy 0:06

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 0:30 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 2:22 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 2:56 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 she said we can be trading numbers, we can do that. But while that's happening, I want you both to be working on the language of the final settlement agreement. So when we get to the end of the day, if we reach agreement on the number, we've also got a completely finalized settlement agreement, so that we don't have to argue over the terms later. And that worked out great, because everyone had time to work on it, you had everyone's attention. The other

The litigation risks around data and privacy management continue to grow. Evolving class-action strategies, statutory damages, and new state laws create even more risks. Ian Ballon identifies a few of the biggest issues that we should be looking for in the next 12 months.

 

SPEAKERS

Ian Ballon, Wayne Stacy

 

Wayne Stacy  00:00

Welcome, everyone to the Berkeley Center for Law and Technology's Expert Series Podcast. I'm your host, Wayne Stacy, the Executive Director of BCLT. And today we're here to talk about what types of legal issues we should be thinking about when it comes to the internet. And today, we have Ian Ballon, from Greenberg, with, as many of you may know, Ian, he is one of the world's leading experts when it comes to internet law. It probably that's not an overstatement, he may be the world's leading expert. He's not the leading expert, at least in the top three or four. But what we know about Ian is that he's got incredibly broad practice. He's the Global Intellectual Property and Technology Practice Group lead at Greenberg, which is an enormous group. But what he brings to us is this breadth of knowledge about what we should be thinking about across internet law as a whole. So no matter what particular area you're in, Ian should have a little bit of input that you need to know today. So Ian with that, I wanted to say thank you for joining us.

 

Ian Ballon  01:06

Well, thank you. Thank you for that very generous introduction. You're very-- You're too kind.

 

Wayne Stacy  01:13

Well, tell your friends because other people that litigated against me for years have never said that about me so well, well, and we get I wanted to kind of showcase this Brett today and run through a grab bag of questions that people should be should be thinking about. So some of these don't necessarily relate to the question before. But let's just just run through a few things. So one of the issues that I've been looking at is the case act and voluntary copyright arbitration arbitration. So, you know, tell us what you think about the impact on that, should we be looking at it, studying it worrying about it?

 

Ian Ballon  01:52

I think it's really important for companies to to prepare for it because it is very much an under the radar issue. Everyone talks about how case act arbitration is voluntary. And so I think a lot of companies really aren't paying much attention. Because if it's voluntary, you can think about it when you need to. But it's only voluntary, if you don't opt out. So this is I think, one of the places where companies are going to run into trouble, which is if you are duly served with a case at complaint, you have 60 days to opt out, otherwise it's going to be binding. And I think it is important for companies to determine whether they want to be involved in case ACC proceedings or don't. There are three types of claims that can be brought one is infringement. One is non infringement, essentially, like declaratory relief, and one is for sanctions for misrepresentation in connection with a notification or counter notification under Section 512 F of the DMCA. So I think we will see a lot of complaints, particularly from individual copyright owners

Should patent owners be afraid of NDTX now that the patent pilot is over? And what can we learn from a preliminary injunction denial? Hint—a lot.

 

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 Stacey. And we're here once again with Michael Smith. Michael, thanks for joining us.

 

Michael Smith  00:12

Thanks for having me.

 

Wayne Stacy  00:14

Well, Michael, another another week and another set of interesting cases coming out of out of Texas.

 

Michael Smith  00:23

There sure were.

 

Wayne Stacy  00:25

Well, and some of these are beyond the normal, interesting cases. It shows a lot of a lot of behind the scenes maneuvering in courthouses. But before we get to the the fun things, let's talk about patents scheduling and Marshall.

 

Michael Smith  00:40

Yeah, this is helpful to kind of put a stake in the ground because it'll it's relevant to some things we'll be talking about later. Last week, we had our usual bimonthly patent scheduling conferences in Marshall affectionately referred to as the cattle call. And we all show up, go over there judge Gill strap goes through the cases, sees who consents to a magistrate judge and who doesn't and then gives the cases are Markman and jury trial settings. And the significant thing about this is Judge Gilstrap for the last 10 years, he always sets cases for trial at about the same time, 14 months from the scheduling conference, give or take 30 days, same thing here 13 To 15 months, the markets are a little bit later there, they were running seven to nine months from the scheduling conference, they're usually six to eight. But that just means that it affects the timing aftermarket ones just a few weeks. But anyway, it's always good to see people Judge Gilstrap will announce if there are any changes in procedures, and there weren't at this case. So we had about 14 cases heard one significant change over the years is of those 14 cases, only two had other cases consolidated into them. We used to have an average of six to 10 cases, consolidated with one lead cases, we're now down to like, I think 1.1 cases, because we only had to one had another case consolidated with it, another had three cases consolidated with it. So we don't see as many cases where a plaintiff sues multiple defendants. Some of that is certainly attributable to TC heartland, a plaintiff will file some cases in the Eastern District. They can't get Vinu on other defendants. So they'll file those in the western district or in Delaware, California somewhere.

 

Wayne Stacy  02:32

We also saw some some state motions that came out of martial that seemed to be

 

Michael Smith  02:38

if you want to dig a little deeper, seemed to have some some wonderful meaning behind them. Well, they did. There was a lot of interest in the state cases that we talked about in Waco last week. And it just so happened that when I was looking at cases out of Marshall, at the same time, I had four cases I could look at where Judge Gilstrap ruled on a motion to stay. And again, like snowflakes, every state was was different. In the vocal life case, the request was will judge give us a state because we're doing venue discovery. And there's another case up in front of the Federal Circuit involving the plaintiff a prior case. And the judge said, Well, under the facts of this case, venue, discovery is about to end. So I'm going to deny the mot

The Federal Circuit gave us a new case on pleading standards.  While it provides some clarity and some definite warnings, does it provide any clarity?  Or does it simply give judges the same discretion that they always had?

 

SPEAKERS

Wayne Stacy, Henry Huang

 

Wayne Stacy  00:00

Welcome, everyone to the Berkeley Center for Law and Technology's expert series podcast. This is the first of 2022. I'm the Executive Director of BCLT and your host, Wayne Stacy. And today we're here to talk about patent pleading forms. So 10 years ago, pleading forms for patent infringement, we're an incredibly hot topic. Nearly every case involves someone filing a motion for insufficient pleadings. But that issue cooled off, and people really stopped talking about it. But for anyone practicing in the Northern District of California, you knew that judge also hadn't forgotten about pleading forms, and he never stopped talking about it. So it's no surprise that a case from his court made it to the Federal Circuit, and is providing us with some fresh guidance on this old topic. So here to guide us through the discussion today. And the decision and its aftermath is Henry Huang from White and Case. So Henry, thank you for joining us today.

 

Henry Huang  01:01

Thanks, Wayne, and Happy New Year to you and to everyone as well. And as he said, This is an interesting topic. And I think roughly today, we wanted to sort of go through the pot and made versus Sony decision, as you mentioned, when they came out in July of last year, the first talk a little bit about the background, patent infringement pleading standards and the forms, as we just alluded to go through the case itself and some of the highlights of the Federal Circuit's decision. And then since it's been about six months, look at what some district courts have done in patent cases in terms of citing and applying bottom maids and how they've dealt with motions to dismiss patent claims. Since then.

 

Wayne Stacy  01:41

Well, and for anybody that doesn't think it's relevant. Judge Albright out of Waco issued an opinion, just I guess, yesterday, on this this issue, so it's, it's a hot topic?

 

Henry Huang  01:56

Yes, definitely. And we'll touch a little bit on that, then the decision that just that just came out as well. So if I may, I think I'll start a little bit with some of the background as you were talking about weighing from about a decade or a decade and a half ago, at some of the prior pleading standards for patent infringement plans. So this all goes to the basic question of how much do you need to plead in your complaint in district court to get a claim for patent infringement, and avoid dismissal under Rule 12 B six. So that leads to a lot of other sort of individual sub questions such as whether you need to plead all elements of a claim? Well, you need to identify all your dependent clans as well. And then also different standards for indirect infringement claims or doctrine of equivalents. So by way of background, and some of the more senior audience members recall, there used to be rules in the Federal Rules of Civil Procedure that talk specifically about how you could plead a sufficient plan for various causes of action. So there used to be rule 84 in the federal rules, which said that the forms in the appendix suffice under these rules and illustrate the simplicity and brevity that these rules contemplate. And that was referring, of course, to the appendix, which did have a series of forms for different causes of action, one of which was an infringement. And so that takes us to what used to be for meeting and also previously form 16. And that appendix for the federal rules. So since it's a

Judges Gilstrap and Albright provide guidance on trial procedures and remote hearings.  And a strong warning against Rule 33(d) games.

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. This is Wayne Stacy from BCLT. And once again, we're here with Michael Smith, as you know if it happened, he's the one to tell you about it.

 

Michael Smith  00:15

So certainly try.

 

Wayne Stacy  00:18

Well, except if it's worth knowing you're gonna, you're gonna know about it, Michael. So let's just kick this off and tell us what happened in Texas last week?

 

Michael Smith  00:28

Well, the the thing I wanted to start with is, we had some analysis out last week on filing trends in 2021. Scott Graham with ALM was analyzing United patents recent report of patent filings and gave us some numbers to kind of see what's happening numerically with the with the cases, we know that that patent infringement filings were essentially flat last year, at around not quite 3800 cases, the Western District of Texas had 25% of those cases, and Judge Albright had 23%. The other 2% were split between the other judges in the district. For those of y'all that want to know where he was last year, last year, he was at 20%. So clearly, that's leveling off. But Scott, notice something that wasn't in the report, but that if you look at the data throughout the year, you can tell by the end of the year, the filings and judge Allbright's court, were trending down a little bit. And the people he talked to it united said they think that's due to recent Federal Circuit venue opinions. And I think that's probably correct. Delaware came in second with 22%. And the Eastern District of Texas was third with 11%. Another trend towards the end of the year is that Judge Gilstrap share in Marshall in the western in the Eastern District was picking up a little bit, he was up to about 8% of all cases, nationally, the Delaware judges have all got four to 5%. So it looks like we'll know better. In another quarter or two, it looks like some patent plaintiffs are coming back to the Eastern District. Or that might simply be I saw a trend right the the on New Year's Eve, a plaintiff filed about a dozen cases in Marshall, and then kept filing the beginning of the year. So it may just be one filer. But anyway, that's what's happening with filing trends in the state so far.

 

Wayne Stacy  02:20

Well, it'll be interesting to see what happens long term, but notably, the Northern District of Texas is becoming almost irrelevant. Is that fair?

 

Michael Smith  02:33

Well, they have the problem that without the patent pilot district, you don't know which judge you're going to get. And for the last 10 years, the same three judges have handled all the patent cases. So you knew you were going to get judges

The Federal Circuit gave us important guidance with its recent Intel v. Qualcomm decision. What can we anticipate for Article III jurisdiction going forward? And is the Court quietly reviving the "gist" doctrine of old for claim construction?

Featuring Wayne Stacy (BCLT) and Seth Lloyd (MoFo).

 

SPEAKERS

Seth Lloyd, Wayne Stacy

 

Wayne Stacy  00:00

Welcome, everyone to the Berkeley Center for Law and Technology's Expert Series Podcast. I'm Wayne Stacy, the Executive Director for BCLT and your host today. Today we have Seth Lloyd from Morrison Forrester to walk us through a recent interesting ruling from the Federal Circuit. We have two heavyweights, Intel and Qualcomm fighting it out. And as often happens, when you have two heavyweights fighting it out, a lot of issues get brought to the surface, the Federal Circuit had to clean them up. So in light of what you saw with Intel, and Qualcomm, Seth, where do you want to kick off maybe Article Three, which is everyone's favorite New Year topic?

 

Seth Lloyd  00:45

Yeah, that seems like a good place to start and is where the Court starts to. So just to kind of set the stage a little bit here, as you said, we have two kind of heavyweights fighting it out in the the the forum that they were fighting it out in at least before the appeal was the the PTABs of the Patent Trial and Appeal Board. So Qualcomm owns a patent to kind of these multi multi processor systems. It had asserted that patent not against Intel, but against one of Intel's customers and Intel in in response to that and kind of related litigation, then went to the Patent Trial and Appeal Board and filed a petition for inter parties review on the patent. The process, the PTAB went forward, ultimately the the PTAB cancelled some of the claims that Intel had challenged, but not others. And Intel appealed the claims that were upheld. And that the Article Three issue came in at the appeal stage, which is sort of the kind of an interesting wrinkle that happens when you take this route from the PTAB to the Federal Circuit. And the reason, you know so in district court if there's an article three injury or issue that's generally going to be litigated in the District Court itself, and then you know, if the district court gets it right or wrong, people will fight about that on appeal, that the difference in the PTAB context is anybody right can go to the patent office and file a petition. I think the statutory language is basically anybody but the patent owner can file a petition for inter parties review. So there's no check out the PTAB. But once you try to invoke the the authority of an Article Three court by safe at filing your appeal, now your article three requirements are going to kick in.

 

Wayne Stacy  02:37

Well, we saw some of this with some hedge funds filing early on. But are we really seeing this as an issue popping up? When you have two actual manufacturing corporations like Intel and Qualcomm? Do you see this

The future of consumer and privacy protection may involve the broader concept of digital trust. Governments and companies both have a critical role to play—if they are willing.

SPEAKERS

Wayne Stacy, Stuart Brotman

 

Wayne Stacy  00:00

Welcome, everyone to the Berkeley Center for Law and technologies expert series Podcast. I'm the Executive Director of BCLT, and your host, Wayne Stacy. Today, we have another discussion with Professor Stuart Brotman. If you recall, Professor Brotman is a professor of Media Management and Law at the University of Tennessee, and also a Distinguished Fellow at the Media Institute. Professor Brotman is pioneering a new model for addressing privacy issues, and addressing the international interaction between the privacy rules that are developing. So Stuart, we've talked about the world gravitating toward an enforcement model for privacy. That really is stick based in a way from an incentive model. That's carrot based. And then we've talked about the issues that arise from multi jurisdictional oversight of privacy here in the US. So kind of in light of what we've already discussed, what do you think's the single biggest unaddressed issue in digital privacy policy today?

 

Stuart Brotman  01:05

Wayne, thanks for inviting me to be here today. So I think the probably biggest unaddressed issue, but one that I guess you could characterize as the forest instead of the trees, is the notion of digital trust. Ultimately, digital trust is the goal that I think digital privacy legislation or regulation is trying to achieve. But I think a lot of the discussion really focuses at the outset, on what are the regulatory or legislative approaches, as opposed to stepping back and looking at digital trust in a much more broad and holistic way. The other aspect that's interesting about digital trust, is that it's actually measurable. So we have a number of surveys that are being conducted by highly respected organizations, which help us track track perceptions of how consumers and users feel about the amount of trust they have for various digital services. So for example, Edelman, which is a worldwide public relations firm every year, they come out with a trust index. And that shows how various institutions including big tech is perceived by the public. And then also, the professional services firm KPMG, has conducted a series of war focused data privacy surveys that focus on this area of digital trust, I think net net, when you look at some of the surveys that are being done, you see that there is a large gap between the public terms of their perception of what they trust and how they trust. And obviously, on the other side, the commercial providers of digital services. So for example, the KPMG survey of 2020, which was the latest one, the majority of people in that survey, this trusted commercial provision of collection, storage and transmission of digital data. So we understand fundamentally, there is a trust problem. And when we talk about digital privacy, that tends to be ways that we try to address the problem. But I think the underlying issue really hasn't been focused on in the way that it should be.

 

Wayne Stacy  03:43

We'll to start I want to take a step back, because if you read the the average newspaper, it seems that the term digital privacy and digital trust are the terms digital privacy and digital trust are, are used interchangeably. And I don't think that's necessarily the correct way the industry is using those terms. So can you explain a little bit about the difference between digital trust and digital privacy?

 

Stuart Brotman  04:11

Well, I think digital trust, as I said, is really the broader term. And digital privacy

Judge Albright provides guidance for smooth patent trials and hints at distinctions in types of 101 motions.

More on Michael Smith and Wayne Stacy

 

 

Wayne Stacy 0:00 Welcome, everyone to the Berkeley Center for Law and Technology's last week in Texas podcast. Happy New Year. This is our first last week in Texas for 2022. And we are back once again with Michael Smith. Michael, welcome and Happy New Year.

Michael Smith 0:18 Happy New Year. It's good to be back, Wayne.

Wayne Stacy 0:20 Well, you started the year off in Waco already. So before we we take you there, though, we're trying to go to the Eastern District and look at some of the rulings from the end of 2021. And then the fun things that are coming out so far this year.

Michael Smith 0:36 Yeah, it reminds me of what I heard someone say at a pre trial with Judge Albright in Waco yesterday, he came over and looked at me and said, You know, I feel like I'm being unfaithful to judge Gill strap being here. I said "I understand." But so let's start with the Eastern District. We had a few interesting cases recently there. Last year, there was a damages retrial in a trade secret misappropriation case in front of Judge Moisan up in Sherman. And that was a case they had been tried in front of Judge shell several years ago, went up to the appellate court, and they provided an advisory opinion, reverse did on some damages issues, having to do with disgorgement and send it back and said retry the damages side of it. It is not fun being on the defense side in a retrial on damages. And this is the final order that came out of that were judgments and entered findings and conclusions, which agreed with the jury's advisory findings in that case, on some of these issues, they're for the court, but the court can seat and advisory jury and that's what he he chose to do. And he followed what the what the jury did in that case. So if you if you've got a case with trade, secret misappropriation, discouragement damages issues, it's a good opinion to look to, to see what are the factors and how do you effectively present that at trial?

Wayne Stacy 2:03 I think this is your right, this is a unique case to see damages separated from all of the other mudslinging and irrelevant damages issues that go with underlying liability. So for pure, pure pure damages case, I don't think you'll find one much better than this.

Michael Smith 2:21 Oh, yeah. It's it's yeah, there was a desperate need for some mudslinging. In that case. It's very difficult, because the thing that made it unusual was the prior jury had found intentional misappropriation. So you had the jury in this case, instructed that well, it's either gross negligence, or willful, or malicious. So you already had baked into what the new jury got the the bad conduct that the prior jury had found. So that that made it a very interesting case. But anyway, that's an interesting one to look at. Another thing we're finding out a little bit more about these days is mediation and mediation in the age of COVID. Every mediation is like a snowflake, it's different, who has to show up is different, how it's handled is different. And we had a couple of orders come out on a case here that is interesting. The parties identified some issues before mediation, we're kind of back to in person mediation. But what happened here is the two parties are over in different countries in Europe, and one of them ran into a travel restriction right before the mediation and said our guy needs to attend remotely. And the other party said, well, we want you to send some other people from the UK and judge Gill strap issued an opinion that said that, okay,

When do post-marketing tests required by FDA not indicate a reasonable expectation of success for a drug combination?  And, what is the interplay between reasonable expectation of success and disclosed ranges in prior art?  Allison Schmitt (BCLT) and Brian Matsui (MoFo) discuss the Teva v. Corcept decision (18 F.4th 1377 (Fed. Cir. 2021)).

 

Featuring Allison Schmitt (BCLT) and Brian Matsui (MoFo).

 

SPEAKERS

Brian Matsui, Allison Schmitt

 

Allison Schmitt  00:00

Hello and welcome to the Berkeley Center for Law and Technology's expert series podcast. My name is Allison Schmitt, and I'm the director of the life sciences project at BCLT. Today, Brian Matsui for Morrison and Forester is joining us for our podcast series beyond the holding a nuanced look at the Federal Circuit's patent decisions. Thanks for joining us again, Brian.

 

Brian Matsui  00:19

Thanks, Ellison.

 

Allison Schmitt  00:21

So today we're going to discuss the recent Life Sciences decision. Teva Pharmaceutical versus Corcept Therapeutics. This is an appeal from a p tag decision on obviousness from a post grant review. We'll go ahead and let Brian take it, take it away. Walk me through the decision.

 

Brian Matsui  00:36

Great. Yeah. So this is a decision that came out in December 7. And it's it's an interesting obviousness decision. It's one of those decisions where you you take a look at it. And I think the first reaction that a lot of people have is there was clearly strong motivation. And it's one of those cases where people think, well, the claims here really seemed like they might be obvious, just as a bit of background. This involves the patent owner Corcept. And basically, they did a clinical trial on a drug mifepristone for Cushing syndrome. And they basically found out from their clinical trial that there are good results for dosages of 300 to 1200 milligrams per day, and they, you know, submitted a new drug application to the FDA, which got approved, but during the approval, they FDA included some post marketing requirements. They basically require the patent owner to do a clinical trial to see if there was a drug to drug interaction between Mfu Crosstown and another type of drug like a strong CYP three a inhibitor, the FDA wanted to see if there's a safety risk if you use those together. So basically, they had to do this additional clinical study. But the drug was approved for 300 milligrams all the way up to 1200 milligrams. But there was a bit of a limitation on that, that you were only supposed to dose at 300 milligrams per day with that other drug that they wanted the patent owner to do a study on. And so this is where it got interesting because course up did a study. And they found out that you could tolerate up to 600 milligrams per day with this strong CYP three a inhibitor and they got a patent on that. And so basically, the FDA told them, you know, in what would be a prior art document that you need to do this, and they did it. And they ended up getting a patent on that. So as a result, Teva sought post grant review, and they thought they had a pretty strong obviousness case, I would think, because they basically had the FDA saying do the study to the patent owner, the patent owner does the study. And then that's what leads to the actual grant of the patent. Well,

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