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Patent Specific Hearings/Motions - Page 2
Western District of Missouri (Kansas City)
Senior District Judge Nanette Kay Laughrey
Wastow Enterprises, LLC v. TruckMovers.com, Inc., et al. – The U.S. District Court for the Western District of Missouri in Kansas City sua sponte ordered the April 7, 2020 Markman hearing be held via teleconference “without the need for visual representations other than those previously made available by the parties in the related patents and briefing.” (Case No. 4:19-cv-00249; March 16, 2020).
Eastern District of New York (Brooklyn)
Magistrate Judge Steven L. Tiscione
Autronic Plastics, Inc. d/b/a Clear-Vu Lighting v. Apogee Lighting, Inc. et al. – The U.S. District Court for the Eastern District of New York in Brooklyn denied plaintiff’s Motion To Stay pending Inter Partes Review (IPR), given “the articulated prejudice to Defendants, significant progress made in this case to date and the fact that a substantial portion of the claims in this matter are not involved in the action before the patent office.” As part of its arguments with respect to the potential prejudice to defendants, plaintiff pointed out that “in view of the COVID-related court closures and delays, which have forced and likely will continue to force rescheduling of the in-person Markman hearing, it is unclear whether a stay really will materially delay the district court proceedings in any event.” On July 15, 2021, the Court granted a Motion to Adjourn Conference, moving the Markman hearing from July 20th to August 23, 2021. The Court informed counsel that since the Court “has been increasing holding matters in-person, no further adjournments will be granted barring any extraordinary circumstances.” (Case No. 2:19-cv-06268, presiding before District Judge Margo K. Brodie; February 23, 2021 and July 15, 2021).
Southern District of New York (Manhattan)
District Judge K. Kevin Castel
MasterObjects, Inc. v. Amazon.com, Inc. – The U.S. District Court for the Southern District of New York in Manhattan granted defendant's motion to transfer venue to the Northern District of California pursuant to 28 U.S.C. § 1404(a), finding that the pertinent factors favor transfer. As part of its analysis, the Court found that the trial efficiency factor was neutral, in part, due to the COVID-19 pandemic. In rejecting the “doubtful” proposition that the Southern District of New York “is significantly faster” in patent cases than the Northern District of California, the Court noted that “in the COVID-19 era, predicting when [the] case . . . will be tried is a matter of speculation.” (Case No. 1:20-cv-03478; October 15, 2020).
Western District of New York (Rochester)
District Judge Elizabeth A. Wolford
Midwest Athletics and Sports Alliance LLC v. Xerox Corp. – The U.S. District Court for the Western District of New York in Rochester denied the parties motion to conduct the Markman hearing through a video/telephonic process to be held in late May or early June, during the COVID-19 viral outbreak. The Court indicated its preference to conduct the claim construction hearing in person “once the Court is able to resume more normal operations,” as opposed to the present situation in which “the Court and its staff are currently teleworking and primarily conducting proceedings remotely with a focus on criminal matters.” Based on its current schedule and “the current projections concerning the anticipated course of the pandemic” the Court requested the parties to provide a list of mutually available dates in August 2020 for the claim construction hearing, before the Court set the Markman Hearing date for August 11, 2020 in a May 7, 2020 Order. In response to a request by the parties that the August claim construction hearing be conducted by video conference, the Court acknowledged that “it would not be prudent to require an in-person court appearance on August 11, 2020, given the current circumstances related to the COVID-19 pandemic and counsel having to travel from California.” However, the Court decided instead to adjourn the Hearing, without a further date, because “it remains the Court's strong preference to handle the proceeding in person, particularly given its anticipated length.” The parties were instructed to confer and to submit a list of proposed alternative dates in September and October of 2020 for the proceeding. The Court did note that “[i]f the circumstances regarding COVID-19 continue to make travel inadvisable, the Court will be amenable to conducting the proceeding remotely in the fall, but at this juncture the Court prefers to adjourn the matter in an effort to allow for in-person appearances.” The Court was unable to accept the dates in September proposed by the parties because it is scheduled to be involved in a criminal jury trial during those dates. However, the Court directed the parties to confer and submit new proposed dates from October 14-31, 2020, since it just recently adjourned another criminal jury trial scheduled to be held during that time. The Court set the Markman hearing for October 27, 2020, at 2:00 p.m. (EDT). The Court indicated that it “intends to conduct the proceeding in person, but recognizes that the COVID−19 pandemic may require conversion of the appearance to a remote proceeding.” After reviewing the parties’ Joint Submission Regarding Claim Construction Hearing, and the concerns raised by defendant as to the feasibility of its counsel traveling from California to New York, the Court issued an Order that it will hold the claim construction hearing via Zoom for Government. While acknowledging that California is not on the list of states from which New York is restricting travel due to the COVID−19 pandemic, it recognized that there are “risks involved in traveling while the pandemic is ongoing.” The Court indicated that it will provide instructions to Counsel in advance for accessing the proceeding. (Case No. 6:19-cv-06036; April 28, 2020, May 7, 2020, July 8, 2020, July 17, 2020, July 24, 2020 and September 18, 2020).
Attachement:
Midwest Athletics and Sports Alliance LLC v. Xerox Corp. Order - May 7, 2020
District of New Jersey (Trenton)
District Judge Brian R. Martinotti
Batinkoff v. Church & Dwight Co., Inc. et al. – The U.S. District Court for the District of New Jersey in Trenton granted defendant’s Motion to Stay the Litigation pending the outcome of an Inter Partes Review recently instituted by the PTO. As part of its analysis regarding the potential for undue prejudice to the plaintiff, the court determined that the delay of less than one year was not long enough to outweigh the other factors and indicated that it did not “share Plaintiffs’ confidence regarding the potential for trial to begin before May 2021 amid a pandemic that already has introduced significant delays in the conduct of many of the Court’s proceedings.” (Case No. 3:18-cv-16388; September 21, 2020).
Melinta Therapeutics, LLC et al v. Nexus Pharmaceuticals, Inc. – The U.S. District Court for the District of New Jersey in Trenton granted in part and denied in part defendant’s Motion to Dismiss and to Transfer Venue, transferring all counts to the Northern District of Illinois pursuant to 28 U.S.C § 1404. The Court refused to invoke pendent venue over the two patent counts, as requested by the plaintiffs, further finding that plaintiffs failed to meet their burden with respect to the patent counts because they did not assert venue under § 1400(b). Plaintiffs’ non-patent count seeks declaratory judgment that defendant’s attempted delivery of a Notice Letter did not commence the 45-day window for plaintiffs to file suit to obtain a 30-month stay of FDA approval of defendant’s ANDA, because the COVID-19 pandemic had caused plaintiffs to close their corporate offices to the public and implement a remote work policy which led to a delay in the discovery of the notice by the general counsel. The Court acknowledged that the declaratory judgment count does relate to Hatch-Waxman and patent infringement, but found it is not, in fact, a patent infringement claim. After refusing to invoke pendent jurisdiction over the patent counts based on the declaratory judgment count, the Court decided to transfer the patent counts to the district of incorporation of the defendants and transfer the “closely intertwined” declaratory judgment there as well. (Case No. 2:21-cv-11198; November 5, 2021).
Oanda Corporation v. GAIN Capital Holdings, Inc. et al. – The U.S. District Court for the District of New Jersey in Trenton denied defendant’s Motion to Stay the Litigation pending completion of the CBM proceedings that were initially denied institution by the PTO, finding ““[t]he fact that the PTAB has issued its decision has a very important impact on the balance of factors” and that the four factors on balance disfavor a stay. The Court acknowledged that the PTAB’s denial to institute IPR/CBM does not necessarily moot a motion to stay pending resolution of the IPR/CBM, if a request for rehearing may be filed. As part of its analysis, the Court also considered the impact of the COVID-19 pandemic on the timing factor which the Court found favored a stay. (Case No. 3:20-cv-05784; March 30, 2021).
Northern District of Ohio (Akron)
Special Master Michael M. Vary
ASK Chemicals, LLC v. Novis Works, LLC – In accordance with Amended General Order 2020-5 ordering all Federal Courthouses in the Northern District of Ohio closed until May 1, 2020, Special Master Michael W. Vary sua sponte ordered the April 8, 2020 Markman hearing “go forward in electronic format ‘Zoom Meeting’, or its equivalent,” with a technically capable court reporter. In addition, plaintiff’s Daubert motion is held in abeyance pending the conclusion of the hearing. (Case No. 5:19-cv-01585, presiding before District Judge Benita Y. Pearson; March 31, 2020).
Southern District of Ohio (Dayton)
District Judge Thomas M. Rose
Sherwood Sensing Solutions LLC v. Henny Penny Corp. – The U.S. District Court for the Southern District of Ohio at Dayton granted defendant’s Motion to Stay the Action Pending Resolution of Inter Partes Review at the PTO. As part of its analysis, the court rejected plaintiff’s assertion that the COVID-19 pandemic will unnecessarily delay proceedings in the PTO, indicating that “[t]here is no reason to think this Court will be affected any less than the PTO.” (Case No. 3:19-cv-00366; April 28, 2020).
Eastern District of Pennsylvania (Philadelphia)
District Judge Mitchell S. Goldberg
Moskowitz Family LLC v. Globus Medical, Inc. – The U.S. District Court for the Eastern District of Pennsylvania in Philadelphia granted defendant’s Motion to Stay Pending Inter Partes Review, staying the case until the Patent and Trademark Appeals Board issues a decision as to whether to institute inter partes review. With respect to the status of the litigation factor, the defendant noted “there is no schedule in place for the case at all, and a schedule will not be set until at least the status conference . . . not to mention the delay in judicial proceedings nationwide caused by the COVID-19 pandemic.” (Case No. 2:20-cv-03271; September 25, 2020).
District of South Carolina (Rock Hill)
District Judge J. Michelle Childs
Wonderland Switzerland AG v. Britax Child Safety, Inc.– The U.S. District Court for the District of South Carolina in Rock Hill denied defendant’s Motion To Stay Litigation Pending Inter Partes Review. As part of its analysis, the Court concluded that the advanced stage of the proceedings weighed against a stay. It stated that the defendant was “severely mistaken that ‘due to the global COVID-19 pandemic (and its particular impact on civil trial dates), a stay may ultimately not have any meaningful impact on the trial schedule in this case.’” The Court noted that it conducted one civil trial and one criminal trial during the COVID-19 pandemic and “[g]iven the success of those trials and the extensive protocols the courthouse has in place, [it] intends to proceed with all hearings and trials as scheduled.” (Case No. 1:19-cv-02457; December 2, 2020).
Western District of Tennessee (Western Division – Memphis)
District Judge Jon Phipps McCalla
Avanos Medical Sales, LLC v. Medtronic Sofamor Danek USA, Inc. et al. -The U.S. District Court for the Western District of Tennessee in Memphis denied defendant’s Motion To Stay Litigation Pending Inter Partes Review. As part of its analysis, the Court found that the stage of litigation factor did not favor either party where the defendant argued that the “vast majority of work in [the] litigation remains to be done, so a stay has the potential to conserve significant judicial and party resources . . . [at a time when] courts are contending with complications from the COVID-19 pandemic.” (Case No. 2:19-cv-02754; November 24, 2020).
Eastern District of Texas (Marshall Division)
Chief District Judge J. Rodney Gilstrap
Capella Photonics, Inc. v. Fujitsu Network Communications, Inc. – The U.S. District Court for the Eastern District of Texas in Marshall denied defendant's Motion To Transfer Venue from the Eastern District of Texas to the Northern District of California pursuant to 28 U.S.C.§ 1404(a), finding that under no fair analysis is the Northern District of California clearly more convenient. With respect to the administrative difficulties factor, the plaintiff contended that the factor “weighs against transfer because cases go to trial materially faster” in the Eastern District of Texas as compared to the Northern District of California, where trials have not been conducted during the COVID-19 pandemic and there is “backlog of cases awaiting trial.” As part of its analysis, the Court found this factor weighed against transfer, in part because the case is currently set for jury selection in EDTX on August 2, 2021, whereas the related action in California does not yet even have a jury trial date assigned. (Case No. 2:20-cv-00076; February 1, 2021).
Infernal Tech., LLC v. Sony Interactive Entertainment America, LLC – The U.S. District Court for the Eastern District of Texas’s Marshall Division denied a motion to extend all post-Markman deadlines by six (6) months due to the COVID-19 outbreak, reasoning that it is “hopeful that things will have generally improved before” June 15, 2020, the current deadline for fact discovery. The Court later granted the parties’ Joint Motion to Amend the Modified Docket Control Order in light of the global health crisis related to the COVID-19 pandemic. The Second Amended Docket Control Order moved most dates approximately six weeks, including remaining fact, expert and pretrial dates, and it reset the trial date from November 2, 2020 to December 14, 2020. (Case No. 2:19-cv-00248; March 27, 2020 and June 22, 2020).
Japan Display Inc. f/k/a Hitachi Electronic Devices (USA), Inc. et al v. Tianma Microelectronics Co., Ltd. – The U.S. District Court for the Eastern District of Texas in Marshall denied defendant's Motion To Transfer Venue from the Eastern District of Texas to the Central District of California pursuant to 28 U.S.C. § 1404(a), finding that defendant failed to demonstrate that litigating in the Central District of California would be “clearly more convenient”. As part of it analysis in finding that the Administrative Difficulties Flowing from Court Congestion factor weighed against transfer, the Court noted defendant’s assertion that the trial date may be subject to change due to COVID-19 pandemic because of the “restrictions in Japan, which could postpone depositions that must be taken.” The Court pointed out, however, that it “has a faster time to trial compared to the Central District of California” and found that “the stage of the case has progressed to the point that a transfer would unavoidably extend the time to trial in this matter even further.” (Case No. 2:20-cv-00283; August 25, 2021).
Monarch Networking Solutions LLC v. Cisco Systems, Inc. et al. – The U.S. District Court for the Eastern District of Texas in Marshall denied defendant's motion to transfer venue from the Eastern District of Texas to the Northern District of California pursuant to 28 U.S.C.§ 1404(a), finding the relevant factors unpersuasive that trial in the Northern District of California would be clearly more convenient than trial in the Eastern District of Texas. As part of its analysis, the Court considered the latest statistics released by the Administrative Office of the U.S. Courts, showing trial times are consistently and significantly faster in the Eastern District of Texas than in the Northern District of California. Although the Court was “mindful that the statistics for the most recent reporting period may be skewed due to the COVID-19 pandemic.” (Case No. 2:20-cv-00015; January 15, 2021).
Quest NetTech Corp. v. Apple Inc. – The U.S. District Court for the Eastern District of Texas’s Marshall Division granted the parties’ joint motion to continue the Markman hearing scheduled for March 16, 2020 due to travel restrictions imposed in response to the coronavirus outbreak and further indicating that the parties were scheduled for telephonic mediation on March 20, 2020. The court rescheduled the Markman hearing for April 9, 2020. (Case No. 2:19-cv-00118; March 12, 2020).
The Chamberlain Group, Inc. v. Overhead Door Corporation et al. – The U.S. District Court for the Eastern District of Texas in Marshall denied defendant's Motion To Transfer Venue from the Eastern District of Texas to the Northern District of Texas pursuant to 28 U.S.C.§ 1404(a), finding that defendants failed to show that the Northern District of Texas was “clearly more convenient.” As part of its analysis, the Court found that the first public factor – the administrative difficulties flowing from court congestion – weighed against transfer, in part, based on evidence submitted by plaintiff that the median time between filing and trial is 748 days in the Eastern District and 971 days in the Northern District of Texas. The Court indicated that its “ability to address this motion at a point earlier in time” had been impacted by the fact that “[s]ince March 1, 2021 [the] Court has tried nine jury trials to verdict as a part of addressing the serious backlog caused by the COVID-19 pandemic.” (Case No. 2:21-cv-00084; September 10, 2021).
United Services Automobile Association v. PNC Bank, NA. – The U.S. District Court for the Eastern District of Texas in Marshall denied defendant's Motion To Transfer Venue from the Eastern District of Texas to the Western District of Pennsylvania pursuant to 28 U.S.C.§ 1404(a), ruling that defendant failed to establish transfer is clearly more convenient after finding one private interest factor weighed against transfer and all other factors were neutral. In finding the administrative difficulties flowing from court congestion factor to be neutral, the Court noted that “the Western District has only recently returned to conducting civil jury trials due to the pandemic . . . [while it] has tried 9 patent cases to a verdict since March 2021.” (Case No. 2:20-cv-00319; September 29, 2021).
Magistrate Judge Roy S. Payne
Clear Imaging Research, LLC v. Samsung Electronics Co., Ltd. et al. – The U.S. District Court for the Eastern District of Texas’s Marshall Division denied the parties’ Joint Motion to Hold Virtual Claim Construction Hearing, ruling that the Markman Hearing will take place in-person on October 14, 2020 at 9:00 a.m. Although the Court recognized that counsel reside in different areas of the United States and will need to travel to the Courthouse, it did not “believe at this time that this alone is sufficient to meet good cause.” In addition to the risk posed by counsel having to travel to the Courthouse during the COVID-19 pandemic, the parties also raised that “counsel will need to quarantine adequately prior to the hearing (and after the hearing) causing disruption.” (Case No. 2:19-cv-00326, presiding before Chief District Judge J. Rodney Gilstrap ; September 4, 2020).
Oyster Optics, LLC v. Infinera Corp., et al. – The U.S. District Court for the Eastern District of Texas in Marshall denied the parties’ Motion to Hold Claim Construction Hearing by Video due to the COVID-19 pandemic. The Court stated that, “[i]n view of the single-term dispute and the current motion, [it] is willing to waive the hearing and proceed on the briefs, unless the counsel prefer to attend the hearing as currently structured.” (Case No. 2:19-cv-00257, presiding before Chief District Judge J. Rodney Gilstrap; June 8, 2020).
Uniloc 2017 LLC, et al. v. Google LLC – The U.S. District Court for the Eastern District of Texas in Marshall granted defendant's motion to transfer venue to the Northern District of California because witness convenience and the availability of compulsory subpoena power favored transfer. In arguing that many of the witnesses are on the West Coast, while none are in Texas, defendant noted that the COVID-19 pandemic “increases the importance of witness location and convenience, stating ‘[t]he logic and purpose of the 100-mile rule has never been more sound and more important than it is today’ and that ‘the 100-mile rule is not simply one of convenience, it is the difference between those witnesses being able to appear for trial or not.’” (Case No. 2:18-cv-00504, presiding before Chief District Judge J. Rodney Gilstrap; June 8, 2020).
Eastern District of Texas (Sherman Division)
District Judge Sean D. Jordan
NextGen Innovations, LLC v. II-VI, Inc. et al. – The U.S. District Court for the Eastern District of Texas’s Sherman Division granted defendant's motion to transfer venue to the Northern District of California concluding it is the clearly more convenient venue to resolve this action rather than the Eastern District of Texas, after finding three of the eight private- and public-interest factors weigh in favor of transfer, four are neutral, and one—“the most speculative factor, court congestion”—weighs against transfer. As part of its analysis the Court rejected an argument that the catch-all factor weighs against transfer because of the potential for an indefinite trial date since the Northern District of California indefinitely suspended jury trials during the COVID-19 pandemic, in part because as of July 1, 2021 jury trial resumed in the Northern District of California. (Case No. 4:20-cv-00854; July2, 2021).
District Judge Amos L. Mazzant, III
KT Imaging USA, LLC v. HP Inc. – The U.S. District Court for the Eastern District of Texas in Sherman denied defendant's Motion To Transfer Venue from the Eastern District of Texas to the Northern District of California pursuant to 28 U.S.C.§ 1404(a), finding, after considering all the factors, that EDTX is more convenient for most of the parties and witnesses. As part of its analysis of the public interest factor, the Court noted that statistics about average speed and congestion among the districts should be taken with “a grain of salt” due to the “unpredictable nature” of the COVID-19 pandemic, and how it has impacted and continues to impact court dockets. “Still, the Court [noted] that during the pandemic EDTX has held over 20 jury trials . . . [and this] Court presided over 8 of those and anticipates no future interferences with its trial schedule.” (Case No. 4:20-cv-00337; February 25, 2021).
Eastern District of Texas (Texarkana Division)
Magistrate Judge Caroline M. Craven
Maxell, Ltd. v. Apple Inc. – The U.S. District Court for the Eastern District of Texas’s Texarkana Division ordered that a motion to compel be decided on the papers with additional briefing ordered, and deferred to a later date its decision on whether an in-person hearing on a sanctions motion is warranted. (Case No. 5:19-cv-00036; March 19, 2020).
District Judge Robert W. Schroeder, III
National Oilwell Varco, LP v. Auto-Dril, Inc. – The U.S. District Court for the Eastern District of Texas’s Texarkana Division denied Plaintiff’s Motion to Bifurcate, refusing to bifurcate the exemplary damages phase of trial from the liability and compensatory damages phase over concern of the potential prejudice from the jury hearing about plaintiff’s size compared to that of defendant. The Court found that bifurcation is not warranted because it would “not provide greater convenience for the Court or parties, particularly in light of the ongoing COVID-19 pandemic, enable the avoidance of prejudice, nor will it expedite and economize the trial.” On April 19, 2021, the Eastern District of Texas returned a verdict finding that plaintiff committed fraud by misrepresenting its ownership of a patent. The jury awarded damages of $5M to compensate for the harm that resulted from the fraud. (Case No. 5:15-cv-00027; April 8, 2021 and April 19, 2021).
Southern District of Texas (Houston Division)
Senior District Judge Nancy F. Atlas
Enventure Global Tech., Inc. v. Weatherford U.S., L.P. – The U.S. District Court for the Southern District of Texas’s Houston Division denied defendants' Motion To Stay Pending Inter Partes Review (“IPR”), without prejudice to defendant re-urging the Motion if and when the PTAB institutes IPR proceedings on any of the patents at issue. As part of its analysis the Court rejected defendant’s argument that a stay is appropriate, in part, because the COVID-19 pandemic has affected the parties ability to conduct discovery. The Court found that the COVID-19 pandemic does not weigh in favor of a stay, stating that the defendant gave no concrete examples of how the pandemic has delayed discovery and noting that “the parties have engaged in substantial motion practice and appear to have exchanged considerable discovery despite the pandemic.” (Case No. 4:19-cv-02397; December 11, 2020).
Western District of Texas (Austin)
District Judge Alan D. Albright
Align Technology, Inc. v. 3Shape A/S et al.- The U.S. District Court for the Western District of Texas in Waco denied defendants’ Motion To Transfer Venue under 28 U.S.C.§ 1404(a) from the Western District of Texas to the District of Delaware, finding that the defendants had not provided sufficient evidence that Delaware is “clearly more convenient” than the Western District of Texas. As part of its analysis, the Court found that the administrative difficulties flowing from court congestion factor weighed strongly against transfer, noting that the Delaware Court had “observed on multiple occasions that it has limited resources to devote to the many lawsuits between [the parties], particularly in light of the challenges posed by the pandemic.” (Case No. 6:20-cv-00979; July 2, 2021).
ESW Holdings, Inc. v. Roku, Inc. – The U.S. District Court for the Western District of Texas in Waco held a pretrial conference and issued an Order regarding trial procedure. The Court indicated that it will seat 6 jurors and will allow 8 persons per side in the courtroom. In response to a request to issue a COVID-19 order, the Court said that it will not keep the testing component in the Order. The Court further noted that in a previous trial they had 4 air purifiers which were purchased by each side, stating that “if the parties in this case would like to do that it would be good.” On March 30, 2021, the Court issued an Amended Notice of Trial Procedures setting forth the trial procedures to be employed to “maximize safety and social distancing during trial.” The procedures included COVID-19 safety protocol such as the use of PPE and social distancing by party participants and safety procedures for the jury and other non-party participants, including temperature checks, a questionnaire and social distancing. The procedures also set forth additional proposed safety procedures such as the use of plexi-glass barriers, limits on the number of individuals inside the Courtroom (maximum of 8 party-affiliated trial participants per party), the provision of a live video feed accessible by certain party-affiliated individuals, the use of electronic exhibits with no physical exhibits handed to the jury without court approval and no bench conferences in the presence of the jury during trial. The Court also issued an Order that the jury be sequestered, in light of the continuing response to the COVID-19 pandemic, from the time they report to the jury room each day until released by the Court at the end of each day. (Case No. 1-19-cv-00044; March 29, 2021, March 30, 2021 and April 1, 2021).
Attachments:
WDTX 6:19-cv-00044-161
WDTX 6:19-cv-00044-ADA
Netlist, Inc. v. SK hynix America Inc. et al. – The U.S. District Court for the Western District of Texas in Waco denied defendants’ Motion to Transfer Venue to the Central District of California or alternatively to the Austin Division of the Western District of Texas, finding all factors weigh against transfer under the first-to-file rule and that it was not persuaded that trial in the Central District of California would be clearly more convenient than trial in the Western District of Texas. With respect to the intra-district request, the Court found defendant did not offer any persuasive showing that litigating the present actions in Austin would be clearly more convenient than in Waco. In finding that the case will move forward in Waco, the Court noted that the Austin courthouse is closed due to the COVID-19 pandemic and there is no indication that it will be open by the scheduled trial date. The Court re-set the Markman Hearing to take place on March 1, 2021, and the case is set for jury trial to begin on July 6, 2021. (Case No. 6:20-cv-00525; February 2, 2021).
VLSI Technology LLC v. Intel Corporation – The U.S. District Court for the Western District of Texas in Waco issued an Order Transferring Trial Venue, holding, pursuant to the Federal Rule of Civil Procedure 77(b) and the Court’s inherent authority, that if the Austin courthouse does not reopen with enough time to hold a January trial, the trial will be held in Waco. The Court noted that the Austin courthouse is currently closed and has been closed on a month-by-month basis since March 2020 while the Waco division reopened in September 2020 and has since successfully conducted three in-person jury trials. Because there is “no foreseeable end to the COVID-19 pandemic,” and therefore no foreseeable end to the closure of the Austin Courthouse, the Court believed it needed to consider moving the trial to an open courthouse in the district. As part of its analysis, the Court noted that the pandemic has created a backlog of trials such that delaying one trial further delays other trials and since “patents have a limited term, the Court does not believe it should unnecessarily delay a trial date, especially when an alternate venue is available.” On February 4, 2021, the Court issued an Order Setting Jury Trial, setting the jury trial regarding the ‘522 and ‘187 patents for April 12, 2021 at 9 a.m. (CDT), and setting the trial jury trial regarding the ‘485, ‘983 and ‘025 patents for June 7, 2021 at 9 a.m. (CDT) On February 10, 2021, in anticipation of the first trial set to begin on February 16, 2021, the Court issued a Notice of Trial Procedures setting forth the COVID-19 protocols to be employed to maximize safety and social distancing during trial. The protocol included measures such as pre-trial and daily testing, notification of COVID-19 positive test results, PPE and social distancing requirements, courtroom ventilation, the use of plexi-glass barriers, limits on the number of individuals inside the Courtroom, the use of an overflow room with a live video feed, the use of electronic exhibits with no physical exhibits handed to the jury without court approval and no bench conferences in the presence of the jury during trial. The Court also issued an Order that the jury be sequestered, in light of the continuing response to the COVID-19 pandemic, from the time they report to the jury room each day until released by the Court at the end of each day. Pursuant to the sequestration order, while the jury is kept together and not allowed to separate, the reasonable cost of meals incurred by the jury during court recesses will be paid by the Clerk of Court. Jury selection in the first trial was rescheduled to begin on February 22, 2021 at 9:00 a.m. (CST), due to adverse weather conditions. On March 2, 2021, the Western District of Texas jury returned its verdict, finding that the patents were infringed, not shown to be invalid and that plaintiff was entitled to lump sum damages of $2.175 Billion on its claim of patent infringement. (Case No. 1-19-cv-00977; November 20, 2020, December 31, 2020, February 4, 2021, February 10, 2021, February 14, 2021 and March 2, 2021).
Attachment:
Trial Procedures - Covid Protocol - February 10, 2021
VLSI Technology LLC v. Intel Corporation – The U.S. District Court for the Western District of Texas in Waco issued an Order granting in part plaintiff’s Opposed Motion To Transfer Remaining Cases Back To Waco pursuant to 28 U.S.C. § 1404(a), finding that applying the Cragar decision and the Volkswagen II factors to the facts and circumstances presented, the public interest and the convenience of the parties and witnesses will be served by transferring the first action (-255) back to the Waco division, where it was originally filed. The Court incorporated by reference its prior findings regarding the venue issue from the lead matter between the parties that previously preceded to trial starting in February 2021 and reached a jury verdict on March 2, 2021. In that lead matter the Court had “found that the indefinite closure of the Austin courthouse due to COVID-19 was an unanticipatable event that frustrated the purpose of the Court’s prior order transferring the three related cases between the parties from Waco to Austin, and that under the facts and circumstances []presented before the Court, the interests of justice and the convenience of the parties and witnesses favor moving the lead case set for trial in February back to Waco.” The Court further noted that since making those findings in the lead case, the COVID-19 infection rate in Waco has improved materially, while the Austin courthouse closure has been extended and the Austin courthouse remains closed indefinitely for trials. In addition, since the Court transferred the lead case back to Waco, the Court and the parties have invested significant time and resources in developing and implementing COVID-19 safety protocols at the Waco courthouse. (Case No. 1-19-cv-00255; March 28, 2021).
District Judge Lee Yeakel
Media Chain LLC v. Roku Inc. - The U.S. District Court for the Western District of Texas in Austin granted defendants’ Motion To Transfer Venue under 28 U.S.C.§ 1404(a) from the Western District of Texas to the Northern District of California, finding the fact that plaintiff chose to file suit in Austin is not enough to outweigh the stated conveniences of litigating the case in the Northern District of California. The Court noted that it “does not find COVID-19 restrictions relevant to consider in determining whether transfer is warranted under Section 1404(a)” since they vary by jurisdiction and are in “a constant state of flux throughout the country.” (Case No. 1:21-cv-00027; December 7, 2021).
Western District of Texas (El Paso)
District Judge Frank Montalvo
Small Axe Enterprises, Inc. v. Helen of Troy Limited – The U.S. District Court for the Western District of Texas in EL Paso granted an unopposed motion to stay the proceedings pending resolution of an ex parte reexamination of the asserted patent at the U.S. Patent and Trademark Office (“PTO”). As part of its analysis of the undue prejudice factor relevant to deciding whether to stay a case pending a reexamination, the Court acknowledged that it is “presently operating at a reduced level and continuing proceedings as a result of the national health emergency declared by the President” while conversely noting that “the PTO has stated its reexamination process will be unaffected.” (Case No. 3:20-cv-00042; April 20, 2020).
Western District of Texas (Midland-Odessa)
District Judge Alan D. Albright
True Chemical Solutions, LLC v. Performance Chemical Company – The U.S. District Court for the Western District of Texas in Midland-Odessa granted defendant’s Emergency Motion To Transfer Venue under 28 U.S.C.§ 1404(a) from the Western District of Texas in Midland to the Waco Division, finding that three factors – cost of attendance, other practical problems and administrative difficulties from court congestion -- weigh in favor of transfer and only the factor of localized interest weighed against transfer, with all other factors being neutral. In finding that the “other practical problems” factor weighs in favor of transfer, the Court noted that trial in Waco is “likely to be safer”, primarily because nearly every third-party witness is farther from Midland than Waco requiring travel over “a greater distance in a time where such travel remains highly discouraged”, and trial will take place sooner than one in Midland. The Court agreed that a trial is necessarily more difficult to schedule in Midland due to competing courthouse calendars, therefore keeping trial in Midland would thus doubtless involve further delay in a case that has already seen no less than six trial postponements, including most recently when plaintiff obtained a continuance of trial based on its lead counsel’s COVID-19 diagnosis. The case was set for trial in the Waco Division on March 29, 2021. On March 26, 2021, the Court issued an Order cancelling the jury trial until further order of the court in light of plaintiff’s motions for sanctions against defendant based on discovery abuse and spoliation of evidence. On March 26, 2021, the Court issued an Order cancelling the jury trial until further order of the court in light of plaintiff’s motions for sanctions against defendant based on discovery abuse and spoliation of evidence. (Case No. 7:18-cv-00078; March 8, 2021 and March 26, 2021).
Western District of Texas (Waco)
District Judge Alan D. Albright
Ancora Technologies, Inc. v. LG Electronics, Inc. et al. – The U.S. District Court for the Western District of Texas in Waco granted plaintiff’s Motion for intradistrict transfer to transfer this case from the Austin Division of the District back to the Waco Division pursuant to 28 U.S.C. § 1404(a). The case had been transferred to the Austin division several months before the COVID-19 pandemic began. Due to the Covid-19 pandemic, the Austin courthouse has remained closed and no jury trial has been held there since then and it is still unclear when the Austin courthouse will be open for jury trial. As part of its analysis in deciding to transfer the case back, the Court found “the COVID-19 pandemic presents a quintessential ‘unusual and impelling circumstance’ that justifies transferring a case from a closed courthouse to an open one.” (Case No. 1:20-cv-00034; June 2, 2021).
Bluebonnet Internet Media Services, LLC v. Pandora Media, LLC - The U.S. District Court for the Western District of Texas in Waco denied defendants’ Motion To Transfer Venue under 28 U.S.C.§ 1404(a) from the Western District of Texas to the Northern District of California, finding that the defendant failed to meet its “heavy burden” of showing that the Northern District of California is a “clearly more convenient venue warranting transfer.” In finding the administrative difficulties public-interest factor to be neutral, the Court noted that “the trial backlog in NDCA caused by courthouse closures due to the COVID-19 pandemic beginning in March 2020 would make the time to trial for patent cases, and all cases in general, even longer.” It contrasted this to the Western District of Texas which conducted its first patent jury trial during the COVID-19 pandemic in October 2020, and has since conducted at least seven jury trials, six of which are patent jury trials including five patent jury trials in the Waco courthouse in the first half of 2021 alone. (Case No. 6:20-cv-00731; July 22, 2021 and October 21, 2021).
Broadband iTV, Inc. v. DISH Network LLC -- The U.S. District Court for the Western District of Texas in Waco denied defendant’s Motion To Transfer Venue under 28 U.S.C.§ 1404(a) from the Waco Division of the Western District of Texas to the District of Colorado, or in the alternative, to the Austin Division of the Western District of Texas. As part of its analysis of the factor regarding administrative difficulties flowing from court congestion, the Court considered the time to trial noting that the average time to trial in Colorado for patent cases was over 40 months (pre-COVID-19 pandemic) while the trial in Texas is anticipated to held about 52 weeks after the Markman hearing. The Court also found that defendant did not provide any evidence that the scheduling of this case has been impacted by the COVID-19 pandemic, noting that the Markman hearing was held on November 13, 2020 in the middle of the pandemic, and the Court “has demonstrated its capability of conducting in-person jury trials in a safe and efficient manner in the COVID-19 pandemic . . . [holding] its first patent jury trial in October 2020 . . . [and] three more in-person jury trials in the first quarter of 2021.” And, without evidence that the District of Colorado is fully open to this date or is capable of safely holding in-person jury trials in the pandemic, the Court found that a transfer to the District of Colorado would cause greater delay. With respect to the alternative request for intra-district transfer, the Court denied the request without prejudice indicating that the Austin courthouse remains closed due to the Covid-19 pandemic, and it is not clear whether it will be open for jury trial in the near future. The Court did instruct defendant that it may refile its Motion to Transfer to the Austin Division if circumstances change when it comes close to the trial. On September 3, 2021, the Court denied defendant’s Motion for Reconsideration which was filed after the Federal Circuit denied its petition for a writ of mandamus but suggested that the Court “should ‘reconsider its determination in light of the appropriate legal standard’ for transfer factors . . .” The Court reconsidered its previous Section 1404 transfer factor analyses in light of the Federal Circuit’s guidance in the Mandamus Order and appropriate legal standard as clarified in the Apple and Samsung cases, but still ruled that defendant did not meet its “significant burden” to show the District of Colorado is “clearly more convenient”, finding two factors strongly weigh against transfer, including court congestion, one factor strongly favors transfer, and the remaining factors were neutral. On October 21, 2021, the Court issued an Order transferring the case to the Northern District of California, pursuant to the Federal Circuit’s order granting defendant’s petition for writ of mandamus. On October 22, 2021, the Court issued an Order transferring the case to the District of Colorado, pursuant to the Federal Circuit’s order granting defendant’s petition for writ of mandamus. (Case No. 6:19-cv-00716; April 20, 2021, September 3, 2021 and October 22, 2021).
The California Institute of Technology v. Dell Technologies Inc. et al. – The U.S. District Court for the Western District of Texas in Waco denied, without prejudice, defendants’ Opposed Motion For Intra-district Transfer Of Venue under 28 U.S.C.§ 1404(a) from the Western District of Texas in Waco to the Austin Division. Defendant argued that although the Austin is not currently holding trials due to the COVID-19 pandemic, it should be open before trial because “the Austin courthouse’s closure is scheduled only until April 30, 2021, vaccinations are expected to be widely available in Texas this spring, and this Court has continued to set trial dates in Austin since the pandemic.” Defendants were instructed to re-file the motion “as trial approaches so the Court can evaluate if transfer is proper under §1404 and whether the Austin Courthouse will be open in time for this trial.” (Case No. 6:20-cv-01042; April 5, 2021).
The California Institute of Technology v. HP Inc. f/k/a Hewlett-Packard Company – The U.S. District Court for the Western District of Texas in Waco denied, without prejudice, defendant’s Opposed Motion For Intra-district Transfer Of Venue under 28 U.S.C.§ 1404(a) from the Western District of Texas in Waco to the Austin Division. The defendant acknowledged that the Austin Division is not currently holding trials due to the COVID-19 pandemic, but argued that that the Austin courthouse should reopen well before the case reaches trial noting that the closure is scheduled only until April 30, 2021, vaccinations are already widely available in Texas, and the Court has continued to set trial dates in Austin since the pandemic. Defendant was instructed to re-file the motion “as trial approaches so the Court can evaluate if transfer is proper under §1404 and whether the Austin Courthouse will be open in time for this trial.” (Case No. 6:20-cv-01041; April 16, 2021).
Demaray LLC v. Intel Corporation - The U.S. District Court for the Western District of Texas in Waco denied defendants’ Motion To Transfer Venue under 28 U.S.C.§ 1404(a) from the Western District of Texas to the Northern District of California, finding that the defendant failed to meet its “significant burden” of showing that the Northern District of California is “clearly more convenient” than the Western District of Texas. In finding that the administrative difficulties public-interest factor weighed “strongly” against transfer due to the “relative court congestion in NDCA”, the Court pointed out that the undisputed record showed “that for patent cases since 2016, the average time to trial in NDCA was 34.1 months – three times longer than the time to trial that remains in this case’s schedule.” In addition, the Court noted that the parties provided no evidence that courthouses in NDCA are fully open for jury trials, while the Western District of Texas has shown itself to be fully capable of conducting jury trials during the COVID-19 pandemic, including at least seven jury trials, six of which are patent jury trials with five patent jury trials held in the Waco courthouse in 2021 alone. (Case No. 6:20-cv-00634; July 1, 2021).
Demaray LLC v. Samsung Electronics Co., Ltd. et al. - The U.S. District Court for the Western District of Texas in Waco denied defendants’ Motion To Transfer Venue under 28 U.S.C.§ 1404(a) from the Western District of Texas to the Northern District of California, finding that the defendant failed to meet its “significant burden” of showing that the Northern District of California is “clearly more convenient” than the Western District of Texas. In finding that the administrative difficulties public-interest factor weighed “strongly” against transfer due to the “relative court congestion in NDCA”, the Court pointed out that the undisputed record showed “that for patent cases since 2016, the average time to trial in NDCA was 34.1 months – three times longer than the time to trial that remains in this case’s schedule.” In addition, the Court noted that the parties provided no evidence that courthouses in NDCA are fully open for jury trials, while the Western District of Texas has shown itself to be fully capable of conducting jury trials during the COVID-19 pandemic, including at least seven jury trials, six of which are patent jury trials with five patent jury trials held in the Waco courthouse in 2021 alone. (Case No. 6:20-cv-00636; July 1, 2021).
EcoFactor, Inc. v. Ecobee, Inc. – The U.S. District Court for the Western District of Texas in Waco denied defendant’s Motion To Transfer Venue under 28 U.S.C.§ 1404(a) to the Northern District of California, after considering the relevant factors and finding that defendant did not meet its significant burden to show that the Northern District of California is clearly more convenient. As part of its analysis of and determination that the public interest factor related to administrative difficulties flowing from court congestion weighed heavily against transfer, the Court said its default schedule would lead to a sooner trial date than the average time to trial in the Northern District of California. The Court also noted that it is “fully open and equipped to safely conduct jury trials in the COVID-19 pandemic”, as shown by the Court having held its first patent trial in October 2020 and three other in-person jury trials in the first quarter of 2021, while the Northern District of California “suspended all criminal and civil jury trials until at least early 2021, and there is no evidence that any division in the NDCA is fully open to this date.” (Case No. 6:20-cv-00078; April 16, 2021).
EcoFactor, Inc. v. Google LLC f/k/a Google Inc. – The U.S. District Court for the Western District of Texas in Waco denied defendant’s Motion To Transfer Venue under 28 U.S.C.§ 1404(a) to the Northern District of California, after considering the pertinent factors and finding that defendant did not meet its significant burden to show that the Northern District of California is clearly more convenient. As part of its analysis of and determination that the public interest factor related to administrative difficulties flowing from court congestion weighed heavily against transfer, the Court countered defendant’s argument that “the COVID-19 pandemic makes trial schedules even more speculative” by noting that the Court “has demonstrated its capability of conducting in-person jury trials in a safe and efficient manner in the COVID-19 pandemic.” The Court further noted that it held its first patent trial in October 2020 and has held three other in-person jury trials in the first quarter of 2021, while the Northern District of California “suspended all criminal and civil jury trials until at least early 2021, and there is no evidence that any division in the NDCA is fully open to this date.” (Case No. 6:20-cv-00075; April 16, 2021).
EcoFactor, Inc. v. Vivint, Inc. – The U.S. District Court for the Western District of Texas in Waco denied defendant’s Motion To Transfer Venue under 28 U.S.C.§ 1404(a) from the Western District of Texas in Waco to the Northern District of California, after considering the relevant factors and finding that defendant did not meet its significant burden to show that the Northern District of California is clearly more convenient. As part of its analysis of and determination that the public interest factor related to administrative difficulties flowing from court congestion weighed heavily against transfer, the Court indicated that its default schedule “would lead to a trial date much sooner than the average time to trial in the NDCA . . . [and the Court] has demonstrated its capability of conducting in-person jury trials in a safe and efficient manner in the COVID-19 pandemic.” In particular, the Court noted that it held its first patent trial in October 2020 and has held three other in-person jury trials in the first quarter of 2021, while the Northern District of California “suspended all criminal and civil jury trials until at least early 2021, and there is no evidence that any division in the NDCA is fully open to this date.” (Case No. 6:20-cv-00080; April 16, 2021).
Express Mobile, Inc. v. Atlassian Corporation PLC et al. - The U.S. District Court for the Western District of Texas in Waco denied defendants’ Motion To Transfer Venue under 28 U.S.C.§ 1404(a) from the Western District of Texas to the Northern District of California, finding that the defendants failed to meet their burden of showing that the Northern District of California is “clearly more convenient” than the Western District of Texas. As part of its analysis with respect to the availability of compulsory process to secure the attendance of witnesses, the Court considered a witness who provides consulting services in the San Francisco Bay area and would not be willing to travel voluntarily, in part, because he has limited his travel due to the COVID-19 pandemic. The Court found this witness to be negligible for this factor because he was a prior-art witness, which “do not sway the outcome”, and he did not say he is unwilling to testify at all, thus the subpoena power of the NDCA will not be needed. With respect to other travel concerns regarding the COVID-19 pandemic raised by the defendant for other witnesses, the Court noted that it “permits persons to appear at ‘hearing[s], deposition[s], mediation[s], or trial[s] . . . by teleconference, videoconference, or other method’” In finding that the administrative difficulties public-interest factor weighed “heavily” against transfer, the Court pointed out that “the time to trial for patent cases in this Division is almost twelve months shorter on average than in the NDCA” and the “trial backlog the trial backlog in the NDCA caused by courthouse closures due to the COVID-19 pandemic beginning in March 2020 would make the time to trial for patent cases, and all cases in general, even longer.” The Court noted that, despite having many cases pending it has been able to bring patent cases to trial approximately in accordance with its guidance in the Court’s Order Governing Proceedings—Patent Case (“OGP”), which sets patent cases for trial fifty-two weeks after Markman hearings. In addition, the Court noted that the Western District of Texas conducted its first patent jury trial during the COVID-19 pandemic in October 2020 and has since conducted at least seven jury trials, six of which were patent jury trials with five patent jury trials held in the Waco courthouse in 2021 alone. (Case No. 6:20-cv-00805; August 2, 2021).
Express Mobile, Inc. v. Expedia, Inc., et. al. – The U.S. District Court for the Western District of Texas in Waco granted defendants’ Motion For Transfer To The Austin Division under 28 U.S.C.§ 1404(a), finding that the defendant had shown that the Austin division is a clearly more convenient forum. As part of its analysis, the Court found the Administrative Difficulties Flowing from Court Congestion factor to be neutral noting that since the parties briefing, during which defendant argued “the Austin Division is slower because it has not had a jury trial since March 2020 and has a backlog of cases because of COVID-19,” the Austin Division has rescheduled and held jury trials. (Case No. 6:20-cv-00801; December 15, 2021).
Fintiv, Inc. v. Apple Inc. – The U.S. District Court for the Western District of Texas in Waco issued an Order transferring the case back to the Waco Division, after the case had previously been transferred from the Waco Division to the Austin Division pursuant to defendant’s motion to transfer under 28 U.S.C. § 1404(a). After the action was transferred to the Austin Division in December 2019, the COVID-19 pandemic began in the United Stated in March 2020, and jury trials in the Austin courthouse have largely been suspended since and “it remains uncertain whether the Austin courthouse will be open for jury trial in the foreseeable future.” The Court found that the intervening COVID-19 pandemic has frustrated the original purpose of transferring the action to the Austin Division. The Court further noted that “[i]f this case remains in the Austin Division, the jury trial will remain in limbo for an indefinite period of time.” On October 4, 2021, pursuant to the Federal Circuit’s October 1, 2021 Order, the Court ordered that the case be transferred to the Austin Division of the Western District of Texas. On November 16, 2021, pursuant to the Federal Circuit’s order granting defendant’s petition for writ of mandamus, the Court transferred the case to the United States District Court for the Northern District of California. (Case No. 6:20-cv-00805; August 2, 2021 and November 16, 2021).
