The Sunset

In an unusual move, the USPTO went to the Federal Register with a reminder on how to address prophetic examples. What does this guidance mean for those that rely heavily on translations?  And how will this standard work its way into District Court litigation?

 

More on Jenny Chen and Ewa Wojciechowska.

 

SPEAKERS

Ewa Wojciechowska, Wayne Stacy, Jenny Chen

 

Wayne Stacy  00:00

Welcome, everyone to today's episode of the Berkeley Center for Law and Technology's Expert Series podcast. This is Wayne Stacy, the Executive Director for BCLT. And today we're going to talk about some unusual guidance the USPTO issued on the use of prophetic examples. To help us through this discussion, we have two experts from McDermott Will & Emery, we have Jenny Chen, a partner in the Boston office specializing in life sciences, and really kind of all aspects of the the IP world and life in life sciences, including prosecution, counseling, and diligence work. We also have with us, Ewa Wojciechowska, the author of a recent article on prophetic examples, and part of the IP litigation group, it was actually her article that created a lot of interest in this topic and got it out in front of a lot of people probably got it out in front of more people than the actual Federal Register did. So with that in mind, let me start with the first question. And that's that the fact that the USPTO took the unusual step, and published a warning to patent prosecutors in the Federal Register. And you know, it's it's a pretty stark warning, with the language that's used, the USPTO is reminding applicants. And when I went back, and I looked through the Federal Register, that's not what they typically put out there. They don't remind applicants in this kind of formal way. So my question is, why did the PTO need to go down this path of a formal warning? And why now?

 

Jenny Chen  01:45

So I can share my thoughts on that the I assume there are more and more prophetic examples being presented in pan applications, specifically, after the law change back in 2013. I mean, prophetic examples have been used in pan applications over time, but in the past, the, when an applicant does not have real working examples, some of the many cases they will decide to push back the filing until they get enough data. However, after AIA, the law change on US is now also in the first inventor to file the ration. So really, the founding data does matter. And it's more like a race to file applications with the USPTO. And under this new, the the structure filing structure, people would tend to file early. And in that case, the inventors may not have enough time to collect enough data and present real world examples. So the alternative is really to present the prophetic examples. And during prosecution, I mean, prophetic is so like in the past that we don't see examiners question whether, you know, you have prophetical real working examples, and the examiners could rely on those to assess like a utility enablement requirement. However, when you have more working via the prophetic examples presented, it does raise the question as to whether the inventor actually had possession or had enabled the the invention they tried to claim. And if it's not clear to the examiner, whether you have real working example versus prophetic example, it will be hard for examiner to make decision on things like this.

 

Wayne Stacy  03:49

The PTO went further than the warning and gave some best practices, which I assume was a collection of examiner complaints about different applications that had bubbled up. Things like using the proper verb tense, which is a pretty speci

A pair of unusual cases gives us a roadmap for invalidity and inequitable conduct standards. Judge Albright shows us that he will hold parties to their promises. And we learn more about the boundaries of privilege waiver.

Texas is home to over 40% of all patent litigation. And with that many on-going cases, important changes happen weekly. To keep you updated, Michael Smith, author of the award winning edtexweblog.com, shares both his research and his local perspective about what's happening around the entire state.  

 

SPEAKERS

Wayne Stacy, Michael Smith

 

Wayne Stacy  00:00

Welcome, everyone to this week's episode for the Berkeley Center for Law and Technology Last Week in Texas. I'm Wayne Stacy, the Executive Director for BCLT. And we have with us today, Michael Smith, from Scheef and Stone and the author of the famous ED Tex Blog. So Michael, tell us what we need to know about Texas last week.

 

Michael Smith  00:25

Well, in the last week since we spoke last, we've actually had a couple of patent trials in Marshall. The first one was a repeat plaintiff. It's a plaintiff who had a trial a few years ago, and he had another case against a group of wireless providers. The defendants were AT&T, Sprint, Verizon, and T Mobile, and it had to do with their use of HTC phones. The jury and Judge Gilstrap for court found that the claims were valid, but that they were not infringed. And that was after a six day trial. The other martial jury verdict came shortly after that, and that was actually a retrial on damages. In the Panoptus case, that case was brought by Panoptus against Apple. And back in April Judge Gilstrap set aside the original damages verdict in that case, which was $506 million.

 

Wayne Stacy  01:23

So Michael, conventional wisdom is be careful when you ask for a retrial on damages when liability has already been determined. What what happened here that that gave somebody the boldness to seek a retrial?

 

Michael Smith  01:37

Well, actually, they didn't. This came from the court. I mean, of course, Apple, Apple had lost on liability, they had lost on damages. And they asked for that to be set aside and to have a new trial. That wasn't what was granted here. Judge Gilstrap set aside the damages verdict on his own, because of his concern, after watching the trial that the parties never addressed, what a fair and reasonable licensing, right would be. And he said in the order, I realized that both sides had tactical reasons for not bringing this up. But when we got to the end of the case, and I could see what the evidence was, I think you were you were missing a key part of the damages analysis when you're talking about patents that are supposed to be essential to technical standards, and the jury really didn't have what it needed. So it was Judge Gilstrap that said, I'm not setting aside a liability verdict, but we're going to have a retrial on damages. Now, you raise a very good point, it's very dangerous to have a damages only retrial. I had one of those with Judge Mazzant April of this year, and it was not fun experience at all, on the defense side, and we have had some other damages retrials and martial. And generally speaking, the defendant does works on a damages retrial. So this is a little little out of the norm, that the verdict against Apple dropped from 506 million to $300 million.

 

Wayne Stacy  03:02

Well, anything else out of the Eastern District of Texas last week?

 

Michael Smith  03:06

Well, yeah. Again, going back to the first case I talked about about the wireles

Arthrex grabbed headlines, but will it actually be a useful tool for PTAB oversight? Will the USPTO Director be willing to take a hard look at PTAB decisions? And what can we expect from a new Director?

 

More on Nimalka Wickramasekera and Juan Yaquian. 

 

SPEAKERS

Wayne Stacy, Juan Yaquian, Nimalka Wickramasekera

 

Wayne Stacy  00:00

Welcome to the Berkeley Center for Law and Technology's Expert Series podcast. I'm Wayne Stacy, the Executive Director for BCLT. And today we're talking about Arthrex. And what we can expect going forward. I'm here with two attorneys from the law firm of Winston & Strawn that are both leading experts in patent litigation and PTab litigation. We have Nimalka Wickramasekera, she's a senior IP trial litigator specializing in life sciences and the medical device sector. And also we haveJuan Yaquian. He's an IP litigator specializing in PTab, litigation and PTab practice. I want to thank you both for joining us today and helping us look into the future and figure out what Arthrex may mean for us. So starting with you, Juan, I wanted to ask you, does any of this make a difference? We've been fighting about arthrex for over a year. And the Supreme Court finally gave us an answer and gave us the director review process. But the real question is, does any of it matter?

 

Juan Yaquian  01:12

No. And I think that's that was, so the short answer is probably not there, this probably isn't going to make a big difference to the way parties approach the PTab and you know, probably isn't going to make a big difference. And one of the main reasons why probably doesn't make any difference to the way parties are going to approach PTab is because most parties and most people don't believe that this, what came out of the US Supreme Court's Arthrex decision is going to result in a big difference. A big difference being seen at the end of PTab proceedings. And I think that's the view probably there's a general view that most likely one we don't really see the director probably stepping in to overturn the board and we don't see the director being too involved. And so there's quite a few reasons why we probably see they're and they're really just practical reasons. I think, you know, if you look at this, there's a ton of activity going on at the IPR, there's hundreds of PTab judges alone, just to handle the entire PTab docket. And now to expect that one director is going to be able to go through with a fine, fine, detailed review and be able to identify issues to to pick up on review, I think nobody really expects that you would be able to do that. And at the same time know, the Supreme Court doesn't really even say that, the director has to do that the director just has to have the ability to review. And so just the volume alone of what's going on at the PTab we no one really expects the director to really be stepping in and cause any major disruption to the results of the what's going on at the PTab. And we also think about the the just the social aspects of the fact that the director is dealing with colleagues. And he doesn't also want to undermine his the the administrative pen judges of the USPTO. They want to support you know, the the staff, and all these administrative judges and the detailed work they do because in the riving edit boundary This is because we have to remember that really the the director review is only going to come into place after a final written decision. And to arrive at that final written decision. These PTab  judges spent a lot of time detailed consideration to arrive at these final room decisions hearings went

How far is too far when it comes to hiding the truth? Should companies be prohibited from reporting factual, public information? The differences between the EU and the US illustrate the fight for disclosure vs. the fight for privacy.

 

More on Ted Claypoole.

 

SPEAKERS

Wayne Stacy, Ted Claypoole

 

Wayne Stacy  00:00

Welcome, everyone to the Berkeley Center for Law and Technology's Expert Series podcast. This is Wayne Stacey. I'm the executive director for BCLT. And today we have Ted Claypool from the law firm of Womble Bond, Dickinson . Ted is based in Atlanta. And he's here today to talk to us about a really interesting concept and a set of phrasing that he's been using in the privacy world. So, with that in mind, Ted, thank you so much for joining us.

 

Ted Claypoole  00:32

Thank you for having me, Wayne, I appreciate it.

 

Wayne Stacy  00:35

Well, Ted, we've we've heard for a long time about the right to be forgotten. But you wrote an article that was really thought provoking that talked about the right to hide the truth, is what that really should be titled. Tell us tell us about that phrasing and how you came about it?

 

Ted Claypoole  00:54

Well, I've been thinking about the right to be forgotten for a long time, I'm a privacy lawyer, I do a lot of work in this space, both in Europe and and in the US and back and forth. And it's essentially a European concept, the right to be forgotten, that is starting to move over here. Although I'll be interested to see how much foothold it gains in the US, given our different laws and our different views on forgetting truthful things. The people that advocate for it, have always called it the right to be forgotten. I've also heard it as least when you're talking about business, the right to be deleted, from people's records. But the truth is, the way it is used is essentially the right to hide the truth from people. Now, I make that distinction because we have laws here just like they do in Europe, that say if people tell lies about you, online or elsewhere, you have a number of rights in order to pull those down to sue those people in defamation cases, and to make sure that you can prove to the world that those things are lies. However, this is a whole different discussion because what Europe has been looking at very closely here is the right to take something in your past that actually happened, and then remove it from the public record. Now, there's lots of us that would like to do that. I know that, you know, I'm very glad that I'm an old guy. And that when I was a teenager and a 20-something I wasn't on the internet. So there's not a lot of record of me, saying things that I probably shouldn't have been saying. And that would come back to haunt me later on. However, saying and doing things in the past, are are things that can come back on you. And we in this country in particular, think that it's important that people are able to get as much information as possible so they can make a decision about someone. And if somebody saw things I said or did in the past, and said, "Boy, Ted's an idiot." I mean, first of all, they may be right. And second of all they have in this country in general, they have the right to look at that information, and try and make that decision.

 

Wayne Stacy  03:30

Well, to put things in context, tell us how the this right to be forgotten, I'll use the the original name, how it came about, and kind of what the original facts were that that brought it to the public's attention?

 

Ted Claypoole  03:44

We

With the fall of Privacy Shield and the Safe Harbor program, what can we expect for the future of transatlantic data transfers? Can the EU and US work out a trade deal? 

 

More on Lothar Determann.

 

SPEAKERS

Wayne Stacy, Lothar Determann

 

Wayne Stacy  00:00

Welcome, everyone to the Berkeley Center for Law and Technology's Experts Series podcast. This is Wayne Stacy, the Executive Director for BCLT. And today we're going to talk about the future of transatlantic data transfers. And we have with is one of the great experts in the field, Dr. Lothar Determann. Doctor Determann or I'm gonna go with Lothar for now was or is a professor, I guess lecturer is the right title. But he's a lecturer since 2004 of computer law and data privacy at Berkeley Law. And since 1995, he's been a tenured professor in Germany. So he brings expertise on the academic side from both sides of the Atlantic, if you look at his publications, Determann's Field Guide to data privacy law in California privacy law, practical guide and commentary. He's actually teaching out of that this semester. And this semester, or next semester, he's got the California privacy law course that he'll be teaching at Berkeley Law. So actually, if you go through the whole list, we can spend the 15 minutes talking about the scope of all of his work, but I'll just leave it at this: he knows a lot about transatlantic data transfers. So thank you for coming today.

 

Lothar Determann  01:29

Thanks for inviting me, Wayne.

 

Wayne Stacy  01:31

So what I want to turn to first is the fact that there seem to be some large finds coming out of out of Europe these days, and a slow eroding, or maybe a fast eroding of some of the shields that we used to have. So the Privacy Shield went down, you saw the Safe Harbor program go down in 2015. And now you're starting to see these new standard contract contractual clauses coming out. The real question about all of this is people get nervous is what does this mean for transatlantic data transfers, and in what's the big picture going to look like over the next few years for for US companies.

 

Lothar Determann  02:14

For US companies, the biggest challenge has been that the general data protection regulation has extended and clarified the realm of applicability to some US companies, but also that European companies are under evermore pressure and transferring personal data to the US. European Union is a trade zone Originally, it was called the European Economic Community when they started looking at harmonizing data protection law. And the main goal was to make it easy for companies to cooperate within the bloc and transfer data across borders. So the official title of what is now often referred to as the Data Protection Directive was really about the free flow of data in Europe. And it was kind of a compromise to say, if we're all trusting each other with data, the Germans and the Spaniards and the French and the Brits at the time before Brexit, then we do need to have a prohibition from just transferring it onward somewhere else. And that was in the directive of 1995. That was there to allow more Corporation more sharing more flow within Europe. And this prohibition of transferring to the US wasn't a real big deal in the first years, because there was a general understanding that the US has privacy laws, too. And the commission worked out a compromise where US companies could sign up for a voluntary program, the Safe Harbor program, and commit to basically complying with the European rules. And then European companies could share data with them, just as if they were in Europe. But after the Snowd

The Federal government is joining the state attack on unfair non-compete agreements. With the FTC preparing to draft new rules limiting the use of non-compete agreements, what should companies be considering and how can they get involved in the rule-making process?

 

More on Christopher Cox and Joe Spoerl.

 

SPEAKERS

Wayne Stacy, Chris Cox, Joe Spoerl

 

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 today we're talking about why President Biden raised non compete clauses in his recent executive order. I'm here with two attorneys from Hogan Lovells that are both leading experts in trade secret litigation, both California and across the country. We have Chris Cox, and Joe Spoerl. Welcome to both of you. And thank you for joining us today.

 

Chris Cox  00:34

Thank you, Happy to be here.

 

Joe Spoerl  00:36

Thanks for having us.

 

Wayne Stacy  00:38

Well, let's start with the executive order itself. You know, President Biden's executive order asked the Federal Trade Commission to curtail the unfair use of non compete clauses and other clauses or agreements that may unfairly limit worker mobility. So with everything going on right now, why are noncompetes so interesting that the White House would get involved?

 

Chris Cox  01:04

If you listen to the Biden administration, the president from the very beginning of his administration has said that he's looking out for lower wage workers and blue collar workers so they could have good paying jobs. And if you look at the National landscape, non competes are a creature of state law. And when you look at the changes that have happened recently, most of the protections are for low wage workers and blue collar workers. So places like Maine, have instituted a threshold income for non competes to apply or not apply. And if you're below the threshold, you can't use a non compete. And that's a way to protect people who are in lower level jobs, who are striving to get promotions and get better jobs and non competes prevent them from doing that. And I my sense is that the Biden administration is trying to look out for the blue collar worker or lower wage worker to make sure that there are protections in place for those people.

 

Wayne Stacy  02:12

Well, you mentioned that there are states like Maine, and then we know California has already has restrictions on non compete clauses. I mean, is the issue so pervasive across the country, that the White House and the federal government needs to get involved?

 

Joe Spoerl  02:30

My concerned is that, I mean, if you look at the statistics, they sort of provide some numbers with this order. And so President Biden noted himself, that but you know, one in five American workers without a college degree, are subjected to non compete agreements. And the fact sheet that came out with the order stated that roughly half of private sector businesses require at least some employees to enter non compete agreements. And so they state that that affects some 36 to 60 million workers. And then separately, there was a 2019 report from the economic policy institute that stated that 31.8% of private sector businesses reported that all of their employees had to sign a non compete agreement, regardless of their job duties or compensation, which is, you know, kind of insane. It doesn't matter where you fall in the food chain.

Proving non-obviousness with secondary indicia is hard on the best of days.  It is even harder when the PTAB creates additional hurdles.  The Federal Circuit, in the Chemours case, had something to say about these new hurdles. 

 

More on Nitika Fiorella.

 

SPEAKERS

Wayne Stacy, Nitika Fiorella

 

Wayne Stacy  00:00

Welcome, everyone to the Berkeley Center for Law and Technology's Expert Series podcast. This is Wayne Stacy, the Executive Director for BCLT. And today I have Nitika Fiorella. From Fish and Richardson joining us. Nitika. Thank you for joining us today. And I wanted to lead off with the fact that you had a very successful Federal Circuit outcome. You'll be too modest to brag about it. But it was a it was an impressive win and a very interesting win. Before we talk about that, I think it's important to know who the client was and what that industry is. So would you please set the background for us?

 

Nitika Fiorella  00:41

Sure, happy to and thank you, Wayne, for having me on, very excited to be here. So our client in this case is Chemours, which is a global Chemical Company. It traces its roots back over 200 years, to the start of the DuPont company, actually, which is a relatively household name, especially here in the northeast. It's both Chemour and DuPont are headquartered in my hometown of Wilmington, Delaware. But since separating from DuPont, Chemours really created a name for itself as a world leader, in really a host of different industries, ranging from everything from automotive, paints, plastics, to things like electronics, energy, you know, the list goes on and on. They are, they're really a company of innovation through chemistry. And you know, that, for me has been something that's been very exciting to get to work with a client like that, you know, who's just so their technology is so important to so many things that are essential in society, you know, they, they do things like make semiconductors, but they also help to fight climate change. So it's really just a very exciting company. And it's a really exciting client for a patent litigator, you know, to really be involved with and help them protect their many inventions and innovations in a lot of fields.

 

Wayne Stacy  02:16

Well, in this particular case, the Federal Circuit reversed a PTAP finding, which is somewhat rare in itself. But in this case that the Federal Circuit didn't even remand, which is even even more rare. Federal Circuit goes through several different reasons. But the one I wanted to focus on today was the the secondary indicia portion of the Federal Circuit decision. And and to some degree, what the the PTAB had to say. I mean, as anybody that litigates patent, no patents knows, wins on secondary indicia are almost non existent these days. But this was a win on secondary indicia. So can you tell us how, how the case developed and why this was different?

 

Nitika Fiorella  03:03

Sure, yes. So I think it as you mentioned, getting the Federal Circuit to go against the PTAB is extremely difficult. So I I clerked at the Federal Circuit, you know, I've seen many of these cases come up. And as you mentioned, just just getting the Federal Circuit to disagree with the patent office is is hard. Getting it to reverse instead of remand is extremely rare. And getting it to do it on the basis of secondary considerations in particular, is is definitely something we were very excited to see. And I think can be a good guidance point, I guess, for future cases on secondary inicia. So So how we got here. Well, when we got the board decision, we really wanted to look at just like any good appellate l

When is winning an IPR a handicap in District Court litigation? One District Court issued—in its own words—a “counterintuitive” result allowing the patent owner to try claims invalidated by the PTAB in a FWD while prohibiting the accused infringer from challenging the validity of those same claims.

 

More on Travis Jensen.

 

SPEAKERS

Wayne Stacy, Travis Jensen

 

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's topic is the world of PTAB estoppel. And some of the odd outcomes that are impacting litigations with me to go over this topic is Travis Jensen, one of the country's top patent litigators from Orrick. So, Travis, thank you for joining us today. I look forward to hearing your thoughts on this odd case.

 

Travis Jensen  00:31

My pleasure. Thanks for having me.

 

Wayne Stacy  00:33

So the the case have been hinting at here is that the trust ID versus Next Caller case out of Delaware chat a little bit of write up and a little bit of head scratching. So tell us why this case is of any interest to people?

 

Travis Jensen  00:49

Well, I think it's because the case contrasts two aspects of PTAB related estoppel. And those are the statutory IPR estoppel provision and the equitable doctrine of collateral estoppel and it analyzed these in the same order and reached what the district court itself characterized as a counterintuitive result. It's something that I think a lot of practitioners kind of instinctively felt, you know, perhaps was unfair. And let me just read, I think, one statement from the the court's order that that highlights this, the court said, "The court understands that allowing plaintiffs to proceed at trial on claims that have been found by the PTAB to be invalid, while at the same time preventing defendant from asserting prior art defenses against these claims based on estoppel under 315 E2 seems counterintuitive. That said it is a permissible result that follows from the statute and relevant case law. So I think it's really the contrast of those two different types of estoppel that caught people's attention. Perhaps standing alone, you know, either of the court's rulings may not have been quite as interesting.

 

Wayne Stacy  02:07

So we're 10 years into the AIA and this estoppel provision, you know, doesn't seem to me that when Congress drafted the original estoppel provision, they were contemplating this particular result. Not sure what, what exactly they were contemplating on this interplay. But, but why are we still talking about estoppel, 10 years into this?

 

Travis Jensen  02:31

I think that's a fair question. And, you know, certainly the statutory estoppel provisions have received a lot of attention and airtime and have been, you know, the subject of numerous court decisions. But even those issues aren't fully resolved. Right, the Federal Circuit has yet to weigh in, at least in a definitive matter on the scope of the statutory estoppel. And, you know, what is reasonably could have raised mean, you know, on the collateral estoppel front here, the issue preclusion, you know, I think that's received a lot less attention for a few different reasons. You know, number one is, you know, in the early days, you know, the, the IPR's we're essentially validating a lot of patents, and so they wouldn't come back to the district court. Right, which is the only place or the primary place where this issue would would come up o

Big week for venue—Is Judge Albright criticizing district courts that stay cases pending IRP resolutions? And the Federal Circuit rules against common sense and judicial experience.

Texas is home to over 40% of all patent litigation. And with that many on-going cases, important changes happen weekly. To keep you updated, Michael Smith, author of the award winning edtexweblog.com, shares both his research and his local perspective about what's happening around the entire state.  

 

SPEAKERS

Wayne Stacy, Michael Smith

 

Wayne Stacy  00:00

Welcome, everyone. This is Wayne Stacey from the Berkeley Center for Law and Technology. And I'm here today again with Michael Smith, from his new firm of Scheef and Stone. Everyone knows Michael is the creator and curator of the material on the Eastern District of Texas blog or EDTexlawblog.com. And Michael is probably the foremost expert on what's going on all throughout Texas these days, not just the Eastern District. So Michael, thank you for joining us again today.

 

Michael Smith  00:35

W ell, thank you for having me. It's good to be here.

 

Wayne Stacy  00:39

Well, let's just start with the easy question. Tell us what happened in Texas last week?

 

Michael Smith  00:44

Well, we got some guidance from the Court of Appeals.

 

Wayne Stacy  00:49

Well, tell us tell us about that.

 

Michael Smith  00:51

Well, there's a couple of cases that I wanted to mention. The first comes out of the Eastern District of Texas. In an Eastern District case, the Fifth Circuit resolved a mandamus petition on whether documents that a district judge had ordered produced were protected by the attorney client privilege. In this case Judge Mazzant up in Sherman ordered the defendant to produce 53 documents that it contended were privileged, the defendant had filed a petition for writ of mandamus challenging that holding that 19 of the documents lacked attorney client privilege, and the other 34 were subject to the crime fraud exception. Now the Fifth Circuit upheld on the 19 documents, but it granted mandamus on the 34 crime fraud accepted documents.

 

Wayne Stacy  01:35

So Mike, I'm gonna ask a quick question that's kind of California related. But in California state court, judges don't actually look at these documents in camera. They they study the privilege log, because they don't want to be tainted by actually reading the attorney client privilege documents. What's the procedure, typically used by Judge Mazzant.

 

Michael Smith  01:57

The procedure with Judge Mazzant is typically that he will look at documents in camera and I know that in this case, he actually did he requested the documents, reviewed them in camera in the order that we're talking about was after he had reviewed them in camera and concluded which ones he thought were covered by the privilege which ones were not, and on which one the privilege had been waived.

 

Wayne Stacy  02:20

That's something important for California lawyers to remember that other judges do look at those documents. And even though they may not be produced, they can leave a little bad taste in the judge's mouth. So tell us why this particular mandamus was granted.

 

Michael Smith  02:37

Well, with respect to the crime fraud accepted documents, the pane

Texas is home to over 40% of all patent litigation. And with that many on-going cases, important changes happen weekly. To keep you updated, Michael Smith, author of the award winning edtexweblog.com, shares both his research and his local perspective about what's happening around the entire state.

This week, Michael walks us through bad meet-and-confer tactics, the impact that termination of the patent pilot program is having on the Northern District, and trial tactics during COVID.

 

SPEAKERS

Wayne Stacy, Michael Smith

 

Wayne Stacy  00:00

Hello, everyone, and welcome to the Berkeley Center for Law and Technology's expert series podcast. I'm Wayne Stacy, the Executive Director for BCLT. And with me today is Michael Smith, one of the nation's leading experts on federal court practice in Texas. He's well known for his blog, EDTexwebblog.com. But Michael knows all of Texas, not just the Eastern District. He's appeared in approximately 1000 civil cases in Texas, been instrumental in drafting local rules, and has been the editor of O'Connor's Federal Rules of Civil Trials, think since 1998. Michael, thank you for joining us today.

 

Michael Smith  00:44

Well, thank you for having me, Wayne, I'm really glad to be here.

 

Wayne Stacy  00:48

Well, Michael, I want to just walk through Texas as a whole. I know like you said, you're you're more than the Eastern District of Texas, and people need to know that. So why don't you catch us up on what happened in Texas last week?

 

Michael Smith  01:02

Well, probably the biggest thing that's going on in the IP litigation front in the last few days is we're all getting ready to head to Fort Worth tomorrow evening for the planning for the annual Eastern District Bench Bar. We're having a planning meeting tomorrow, not actually Friday morning. But having a dinner tomorrow night. And here's the amazing thing. We're expecting 112 people live at the dinner and 120 people at the planning meeting. So, we think people are really looking forward to getting out of their offices and coming down and having some good food and getting to socialize after a long time away in the pandemic.

 

Wayne Stacy  01:45

Well, anything happening in the local courthouses last week?

 

Michael Smith  01:48

Yeah, there was actually a very interesting order we actually got earlier this week. Magistrate Judge Roy Payne and Marshall denied an emergency motion that was alleging discovery violations in a patent case for failure to comply with the district's meet and confer requirement.

 

Wayne Stacy  02:08

That doesn't seem to happen often, does it?