The panel of ND Tex judges will include:

• Chief District Judge Sidney Fitzwater (facilitator)
• District Judge Sam Lindsay
• District Judge Jane Boyle
• Chief Bankruptcy Judge Barbara Houser
• Magistrate Judge Jeff Kaplan

In addition to the above, other judges and court officials will be in attendance.  The event, cosponsored by the Federal Bar Association and the Dallas Bar Association Judiciary Committee, is free except for the cost of lunch and parking.

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©2012 Snipe Hunting in the NDTX. All Rights Reserved.

Justice Lang used a series of audio and video excerpts to stoke the discussion, including a voicemail recording by an irate attorney, clips from the movie “The Rainmaker” featuring Matt Damon and Danny DeVito, a clip from the TV show “Ally McBeal,” and a few video clips from actual depositions. While the audio and video excerpts often drew laughs from the audience, the issues discussed were serious – including courtesy between lawyers, truthfulness, witness preparation, and harassment/obstructionist tactics.

Following is a brief summary of comments made by Judge Boyle:

Issue – Courtesy Between Lawyers

Basic courtesy is important both to comply with The Texas Lawyers’ Creed and for developing a successful practice. Attorneys are a “clubby” group, meaning that a poor reputation is easily formed and difficult to rehabilitate. Among other things, a poor reputation can decrease the likelihood of referrals from other attorneys and can adversely affect the attorney’s credibility with judges. For example, an attorney who loses his temper with opposing counsel will likely suffer a damaged reputation and may also subject himself to sanctions and/or damaged credibility.

Issue – “Experienced” Lawyer’s Advice to New Lawyer

According to Judge Boyle, one of the best pieces of advice she received as a new lawyer was from a more experienced lawyer working with her at the District Attorney’s Office in the early 1980’s. To paraphrase – always trust your gut if a strategy or tactic does not seem appropriate, regardless of who or how many approve of such strategy or tactic. In other words, if your instinct says a tactic is improper, don’t be afraid to stop and change course.

Issue – Harassment Tactics

Judge Boyle noted that she does have to deal with sanctions issues regarding attorney behavior on occasion. While she acknowledged that “righteous indignation” is sometimes appropriate under exceptional circumstances, her advice is to limit the frequency of moving the court for sanctions. Instead, both the lawyers and their clients are best served when the court does not perceive the issue as merely “two bickering lawyers.” Judge Boyle believes that the best way to avoid this perception is to live by the creed “what’s best for the client, at all times.”

Issue – Surprise Tactics

Over the years, Judge Boyle has had the opportunity to observe both the best attorneys and the most inexperienced. Her advice is that a lawyer should always have “thick skin” (at least outwardly) and should be unflappable (expect the unexpected). In Judge Boyle’s words, “the very best lawyers don’t lose their cool, no matter what.” Even when opposing counsel raises a surprise issue at trial that appears legitimate, know that judges often have latitude to apply a balancing test. In this circumstance, a persistent attorney who refuses to give up will often successfully persuade the judge to find a middle ground that avoids a harsh result.

Justice Lang wrapped up the panel discussion with a few words of wisdom:

– Honesty, integrity, and civility in the practice of law does not give you the short end of the stick; eventually, these character traits will allow you to overcome those who do not practice in this manner.

– Reputation is always on the line.

– Deeds, not words.

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©2012 Snipe Hunting in the NDTX. All Rights Reserved.

Local patent rules “are considered part of the Court’s scheduling order,” thus Patent Rule 3-7 permits amendment of preliminary invalidity contentions “only by order of the presiding judge upon a showing of good cause.”  In relevant part, Patent Rule 3-7 provides that “[g]ood cause for the purposes of this paragraph may include … newly discovered prior art references.  A party seeking amendment of the preliminary or final … invalidity contentions must include in its motion to amend a statement that the … newly discovered prior art references were not known to that party prior to the motion despite diligence in seeking out same.”  Accordingly, after noting that Defendant X10 Wireless had timely filed its Preliminary Infringement Contentions, the Court set out to determine whether X10 had shown good cause to amend the Scheduling Order.  “Good cause,” in turn, requires an evaluation both of the moving party’s diligence and potential prejudice to the non-moving party.

The parties disputed whether X10 had demonstrated the required diligence.  According to Judge Boyle:

The local rules do not require perfection in the search for prior art references; they do, however, require diligence and an absence of gamesmanship.  It is expected that through the course of discovery and evaluation by experts that additional sources may be found which support timely disclosed theories of invalidity.  P.R. 3-7 allows that good cause may include “newly discovered prior art references” so long as the moving party carries its burden of showing its search was diligent and that the reference was timely disclosed.  A party may not, however, delay in diligently searching for references or strategically withhold their prompt production as its opponent commits to a path.  A party seeking to amend its invalidity contentions must include P.R. 3-7’s required statement that the “newly discovered prior art references were not known to that party prior to the motion despite diligence in seeking out same,” and if its diligence is meaningfully challenged, it must respond with evidence.

Here, Judge Boyle concluded that X10 proved the required diligence by virtue of its continuous and broad prior art search, its timely disclosure of the newly found prior art references, and its prompt filing of a motion to amend upon receiving the plaintiff’s objection to the new references.  The Court also emphasized the thorough nature of X10’s preliminary and amended invalidity contentions.

The parties also disputed whether X10 had demonstrated the absence of unfair prejudice to Guardian.  Judge Boyle determined that Guardian did not present any particular evidence of prejudice:

X10′s proposed amendment does not drastically reframe the suit by inserting previously undisclosed theories of invalidity, and instead timely discloses newly discovered references to support its arguments.  More importantly, X10′s proposed amendment is made well in advance of the deadlines for expert reports and the close of discovery.  The schedule set in this case does not preclude a full and fair analysis of the additional proposed references.  While Guardian points to a potential impact on claim construction, it does not point to any claim language that would be affected by the addition and the Court does not find any potential need to revisit claim construction to be readily apparent.

The Court thus found that the potential for unfair prejudice did not provide sufficient basis to deny X10’s motion to amend.

Based on X10’s showing of diligence and an absence of unfair prejudice to Guardian, Judge Boyle granted X10’s Motion to Amend its Preliminary Invalidity Contentions.  The Court expressly reserved any decision regarding Guardian’s argument that the newly included references do not qualify as prior art.

FULL DISCLOSURE: Attorneys at Klemchuk Kubasta LLP represent X10 Wireless Technology, Inc., one of the Defendants in this patent infringement litigation.

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©2012 Snipe Hunting in the NDTX. All Rights Reserved.