Judge Lynn began the discussion by reporting that Chief Judge Fitzwater just issued Special Order No. 3-287 concerning the Patent Pilot Program. This Order provides that patent cases filed in or transferred to the Northern District of Texas on or after September 1, 2011 shall be assigned according to the civil case assignment procedure in effect in the division where filed. Within 7 days after a patent case is assigned to a district judge, the judge may decline to accept the case and direct that the case be randomly reassigned to a designated patent judge (Judge Lynn, Godbey or Kinkeade). The Order also notes that, except for the designated patent judges, all district judges in the Dallas Division will decline to accept patent cases for at least 1 year after the start of the Patent Pilot Program.

The judges then addressed several issues and questions that have been raised concerning the Patent Pilot Program.

• Uniformity and Predictability. The judges strive to have more uniformity among the designated patent judges in order to make patent cases more predictable as well as to encourage more patent cases to be filed in the Northern District. The judges welcome suggestions about how this might be achieved.

• Efficiency and Trial Timing. The judges noted that while the criminal docket still must take precedence, the designated patent judges plan to coordinate with one another to shuffle trials as needed to keep the patent cases moving and keep trial settings firm. The judges look for input from the attorneys about the time needed to get to trial and how much time will be needed at trial. The judges may be open to early claim construction, mediation, and/or motions for summary judgment as an effort to streamline a case.

• Program Success. The FJC will evaluate the Program by comparing the success rate (% reversal on appeal) for designated patent judges and courts to non-Program judges and courts handling patent cases.

• ND Texas Non-Dallas Divisions. The number of patent cases filed outside of the Dallas and Fort Worth Divisions is small. The judges in the Divisions outside of Dallas can refer any patent cases to a designated patent judge if they choose. Judges Means and McBryde of the Fort Worth Division have indicated that they will retain patent cases assigned to them. Judge O’Connor has been managing the Wichita Falls Division and does not presently intend to retain any patent cases filed in that Division.

• Funding. The judges hope to receive funding to hire an attorney to focus on Markman rulings; however, presently there is no Program funding to do so. Judge Kinkeade has proposed setting up a fund for citizens to anonymously contribute toward funding a patent-focused attorney for the Program.

• Case Management Conferences. The judges believe that Case Management Conferences (CMCs) are the exception rather than the rule and are not normally needed in patent cases.

• Special Masters and Technical Advisors. Special masters are not used that often, and technical advisors will continue to be used on a case-by-case basis.

• Stays Pending Reexamination. Judge Kinkeade noted that stays are being granted more often on the grant of the first reexamination in the Northern District; however, stays are less likely to be granted on additional reexaminations.

• Reliance on Other Courts’ Interpretations of Similar Patent Rules. The judges noted that they may look at how other courts (particularly, the Northern District of California and the Eastern District of Texas) interpret Patent Rules that closely track the Patent Rules of the Northern District but they may not always follow those interpretations.

• Meet and Confer Requirements. The judges noted that while the Northern District has not adopted strict meet and confer requirements prior to filing a discovery motion as the Eastern District has, the certificate of conference is important, and litigants must take their meet and confer obligation seriously. Leaving a message with opposing counsel just prior to filing is not sufficient.

• Markman Hearings. There remains no standard rule regarding the need for a live Markman hearing.

• Transfers to the Northern District. The judges are not aware whether patent cases transferred to the Northern District of Texas from other districts will by default be transferred to the Dallas Division.

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Hon. Jeff Kaplan, U.S. Magistrate Judge in the Northern District of Texas, Dallas Division, participated in a judges panel at the State Bar of Texas 7th Annual Advanced Patent Litigation course in San Antonio on July 14, 2011. Judge Kaplan addressed several subjects of interest:

Patent Pilot Program. Judge Kaplan touched on how the judges of the Northern District are excited about being part of the Patent Pilot Program. The patent docket in the N.D. Texas is steadily increasing, and they hope to see more filings. Judges Linn, Godbey and Kinkeade of the Dallas Division will be part of the Pilot Program, and they hope that the other judges of the Northern District will pass their patent cases to them as they are entitled to do in the Program. Judge Kaplan also anticipates that the judges in the Patent Pilot Program will adhere to the Patent Rules and conduct patent cases in a somewhat uniform manner.

Daubert Challenges. Judge Kaplan noted that Daubert challenges are becoming too common. Attorneys need to be careful about the number and type of points made in Daubert motions. Judge Kaplan described how he now holds a pre-Daubert motion conference to confirm which experts may testify at trial to more effectively narrow the amount and scope of expert testimony and informally examine the possible challenges. Judge Kaplan thinks this pre-Daubert motion conference may cause parties to think twice before filing Daubert motions.

Damages. Judge Kaplan discussed the need for patent trial attorneys to appreciate and master the art of proving damages. He suggested that patent attorneys seek out successful plaintiff’s attorneys for advice on proving damages effectively.

Trial. Judge Kaplan observed that attorneys are often too repetitive at trial.

Summary Judgment. Judge Kaplan noted that the summary judgment record in patent cases is often too long and includes much more than is necessary for the court to fully consider the motion. Do not bury important information in an overly long record – by doing so, parties run the risk of that information not being fully considered or that information may be obscured by less pertinent information.

Thanks to Magistrate Judge Kaplan as well as Hon. Lee Yeakel (Western District of Texas), Hon. Ron Clark (Eastern District of Texas), and Hon. Andrew S. Hanen (Southern District of Texas) for their participation in this interesting panel.

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Judges Lynn, Godbey and Kinkeade will be the 3 judges from the Northern District of Texas participating in the Patent Pilot Program. They have graciously agreed to participate in a panel discussion sponsored by the Dallas Bar Association at the Belo Mansion on July 26, 2011 at noon. This panel discussion is open to the public. During the panel discussion, the judges are expected to address some of the questions and concerns that have been raised about the Program.

Patent practitioners have been asked to provide comments and ask questions about this new Program and its implementation in the Northern District of Texas. If you have questions or concerns about the Program, those questions/concerns may be sent to the following email address: PatentPilotProgram@dbaip.com.

Make plans to attend the panel discussion on July 26 if you are interested in learning more about this Program. Also, if you have questions or concerns, please email them to the email address above for consideration by the judges. Questions/concerns should be sent prior to July 26 to allow for consideration by the participating judges before the panel discussion.

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As a participant in the Patent Pilot Program, patent cases filed in the N.D. Tex. will first be randomly assigned to all district judges, regardless whether such judges have been designated to hear patent cases. If a judge who is randomly assigned a patent case is not among the designated patent judges, then that non-designated judge may decline to accept the patent case. That patent case will then be randomly assigned to one of the N.D. Tex. district judges designated to hear patent cases.

In the Northern District of Texas, the district judges designated to hear patent cases are:

• Judge David Godbey (Dallas)
• Judge Ed Kinkeade (Dallas)
• Judge Barbara Lynn (Dallas)

In addition to the N.D. Tex., other districts selected to participate in the Patent Pilot Program are:

• Eastern District of New York
• Southern District of New York
• Western District of Pennsylvania
• District of New Jersey
• District of Maryland
• Northern District of Illinois
• Southern District of Florida
• District of Nevada
• Eastern District of Texas
• Western District of Tennessee
• Central District of California
• Northern District of California
• Southern District of California

To learn more about the Patent Pilot Program and selection of the Northern District of Texas, please see: “District Courts Selected for Patent Pilot Program”

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The Northern District of Texas is eligible for participation in the Patent Pilot Program because: (a) for calendar year 2010, the N.D. Tex. was one of the top 15 district courts in terms of number of patent infringement complaints filed; and (b) the N.D. Tex. adopted local patent rules in 2007. The Administrative Office of the U.S. Courts is expected to select the participating districts by June 4, 2011.

If chosen by the Administrative Office to be one of the six district courts participating in the Patent Pilot Program, Chief Judge Fitzwater will designate the following judges to hear patent cases:

• Senior Judge Royal Furgeson (Dallas)
• Judge David Godbey (Dallas)
• Judge Ed Kinkeade (Dallas)
• Judge Barbara Lynn (Dallas)
• Judge Terry Means (Fort Worth)

Procedurally, a patent infringement case would be randomly assigned to all district judges, regardless whether such judges have been designated to hear such cases. A judge who is randomly assigned a patent case and is not among the designated judges may decline to accept the case. In that circumstance, the case is then randomly assigned to one of the district judges designated to hear patent cases.

If selected to participate in the Patent Pilot Program, this is yet another indication that the Northern District of Texas will continue to solidify its prominence as a favored forum for patent litigation.

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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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